Australian trademark law
Encyclopedia
Australian trade mark law is based on the Trade Marks Act 1995 (Cth), which is administered by IP Australia
, an Australian government
agency within the Department of Industry, Tourism and Resources.
Amongst other things, the Trade Marks Act defines trade marks (including certification mark
s and collective marks
), what constitutes trademark infringement
and defences and exceptions thereto, and (together with the Trade Marks Regulations) sets out procedures for registration and other proceedings before the Registrar of Trade Marks. The legislation does not codify the law of trade marks in Australia; as a common law
jurisdiction, a trade mark owner may also (for example) seek to protect its rights through legal proceedings
for passing off.
Section 17 of the Trade Marks Act defines a trade mark as "a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person".
The procedure to register a trade mark in Australia is much the same as other countries. A completed application is filed with IP Australia
(either by delivery to one of its regional offices or electronically) and checked ("examined") by an examiner of trade marks for compliance with formalities and substantive requirements (e.g. registrability, and lack of confusing similarity
with a conflicting trade mark). The Australian Trade Marks Office Manual of Practice and Procedure is an official publication produced by IP Australia
, which provides detailed information to examiners and applicants on the practices and procedures relating to the filing, examination, and registration of a trade mark in accordance with the provisions of the Trade Marks Act 1995 (Cth). If an application is accepted, it will be published for opposition purposes for three months, during which time third parties may oppose registration on certain grounds. If there are no oppositions, or any oppositions are overcome, a certificate of registration will issue.
The term of registration in Australia is 10 years, which may be extended for additional periods of 10 years. Failure to use a registered trade mark for a period of three years or more may expose the registration to cancellation on the grounds of non-use.
IP Australia
The Australian Patent Office is a division of IP Australia which is an agency of the Australian Department of Innovation, Industry, Science and Research. APO issues patents for inventions. APO was established in 1904 by the Commonwealth of Australia and since 1998 has been located in one building,...
, an Australian government
Government of Australia
The Commonwealth of Australia is a federal constitutional monarchy under a parliamentary democracy. The Commonwealth of Australia was formed in 1901 as a result of an agreement among six self-governing British colonies, which became the six states...
agency within the Department of Industry, Tourism and Resources.
Amongst other things, the Trade Marks Act defines trade marks (including certification mark
Certification mark
A certification mark on a commercial product indicates five things:* The existence of a legal follow-up or product certification agreement between the manufacturer of a product and an organization with national accreditation for both testing and certification,* Legal evidence that the product was...
s and collective marks
Collective trade marks
A collective trade mark or collective mark is a trademark owned by an organization , whose members use them to identify themselves with a level of quality or accuracy, geographical origin, or other characteristics set by the organization.Collective trade marks are exceptions to the underlying...
), what constitutes trademark infringement
Trademark infringement
Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees...
and defences and exceptions thereto, and (together with the Trade Marks Regulations) sets out procedures for registration and other proceedings before the Registrar of Trade Marks. The legislation does not codify the law of trade marks in Australia; as a common law
Common law
Common law is law developed by judges through decisions of courts and similar tribunals rather than through legislative statutes or executive branch action...
jurisdiction, a trade mark owner may also (for example) seek to protect its rights through legal proceedings
Lawsuit
A lawsuit or "suit in law" is a civil action brought in a court of law in which a plaintiff, a party who claims to have incurred loss as a result of a defendant's actions, demands a legal or equitable remedy. The defendant is required to respond to the plaintiff's complaint...
for passing off.
Section 17 of the Trade Marks Act defines a trade mark as "a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person".
The procedure to register a trade mark in Australia is much the same as other countries. A completed application is filed with IP Australia
IP Australia
The Australian Patent Office is a division of IP Australia which is an agency of the Australian Department of Innovation, Industry, Science and Research. APO issues patents for inventions. APO was established in 1904 by the Commonwealth of Australia and since 1998 has been located in one building,...
(either by delivery to one of its regional offices or electronically) and checked ("examined") by an examiner of trade marks for compliance with formalities and substantive requirements (e.g. registrability, and lack of confusing similarity
Confusing similarity
In trademark law, confusing similarity is a test used during the examination process to determine whether a trademark conflicts with another, earlier mark, and also in trademark infringement proceedings to determine whether the use of a mark infringes a registered trade mark.In many jurisdictions...
with a conflicting trade mark). The Australian Trade Marks Office Manual of Practice and Procedure is an official publication produced by IP Australia
IP Australia
The Australian Patent Office is a division of IP Australia which is an agency of the Australian Department of Innovation, Industry, Science and Research. APO issues patents for inventions. APO was established in 1904 by the Commonwealth of Australia and since 1998 has been located in one building,...
, which provides detailed information to examiners and applicants on the practices and procedures relating to the filing, examination, and registration of a trade mark in accordance with the provisions of the Trade Marks Act 1995 (Cth). If an application is accepted, it will be published for opposition purposes for three months, during which time third parties may oppose registration on certain grounds. If there are no oppositions, or any oppositions are overcome, a certificate of registration will issue.
The term of registration in Australia is 10 years, which may be extended for additional periods of 10 years. Failure to use a registered trade mark for a period of three years or more may expose the registration to cancellation on the grounds of non-use.