There are two approaches to acquiring trademark protection in Australia; 1.) apply for an Australia national trademark, or 2.) apply or extend an international trademark to Australia using Madrid system.
If you want to use a trademark only in Australia, a national registration in Australia is a good start. The application for national Australia Trademark has to be filed before the IP Australia (the official Australian Government agency). On the other hand, if you are a multinational company, an International trademark under Madrid system is highly suggested because it is cost-effective and convenient to apply, maintain and renew across many jurisdictions. However, international trademark under Madrid system is limited to only members of the Madrid system.
An Australia trademark protection includes the Chrismas Island, the Cocos (Keeling) Islands and Norfolk Islands (NF). In addition, under Australian Trademark Act, both traditional and non-traditional sign such as word, logo, smell, 3D mark, or color could be registered as a trademark.
An applicant (both national and international) who has a valid address in Australia can file an Australia trademark application without any representative. During the registration process, the authority will examine an application in respect of formalities, classification, descriptiveness, distinctiveness, deceptiveness and conflict with an earlier Australian trademark. To overcome this complexity, a professional trademark representative is recommended. A good representative will assist you to fulfill the requirements, perform a search to avoid conflict with earlier trademark and warn you of any risk in advance.
Once the authority’s requirements have been fulfilled and all required documents have been submitted, the Australia trademark application will be published in the Australian Official Journal of Trademarks for opposition purpose. This opposition period will last for 3 months starting from the publication date. During the opposition period, any third party who has a valid ground could oppose the registration. If there is no successful opposition the mark will be registered. The duration of an Australia trademark is 10 years from the date of application and can be renewed for a period of 10 years.
After registration, putting the symbol “®” after your trademark to show other parties of your Australian trademark registration is recommended. On the other hand, unregistered trademark should use the symbol “TM” instead. In Australia, putting ® after unregistered trademark is illegal.
After obtaining an Australia trademark, the trademark owner has to use the trademark with all class items inside the territory of the Australia (includes the Chrismas Island, the Cocos (Keeling) Islands and Norfolk Islands (NF)). If the Australia trademark has not been used within 5 years from the registration date or, later, has not been use for 3 consecutive years, the Australia trademark may be subject to (partially or completely) cancelation.
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