How Can Foreigners Apply for Australian Trade Marks?
If you are an overseas business owner wanting to trade in Australia, you should consider protecting your intellectual property (IP) in Australia. This includes your trade marks, as an existing trade mark in your home country will not be protected in Australia.
This article will take you through some key things to consider if you are a foreigner wanting to apply for trade mark registration in Australia.
Australia’s Trade Mark Rules
Before registering a trade mark in Australia, you must understand the rules and laws relating to trade mark registration in Australia. IP Australia, Australia’s trade mark office, oversees trade mark registrations in Australia.
Broadly speaking, you may have difficulty registering the following types of trade marks in Australia:
- offensive or likely to be offensive;
- geographical names;
- common surnames;
- commonly used words, phrases or imagery;
- acronyms, letters or numbers commonly used concerning the goods or services you provide.
Further to the above, there are several other restrictions on trade marks that stem from Australia’s international obligations. This includes restricted symbols such as the Red Cross symbol, national flags or the Olympic Rings.
Similarly, Australia’s legislation restricts the use of certain trade marks without explicit permission. For example, there are several restricted words and phrases relating to banking and financial services. These are reserved only for those with authorisation from the Australian Prudential Regulatory Authority (APRA).
Having a thorough understanding of Australia’s trade mark rules is an excellent starting point for applying for Australian trade mark registration.
Search for Trade Marks
In addition to the above restrictions for trade mark registration in Australia, your trade mark cannot be identical or too similar to an existing trade mark regarding similar goods or services.
The best way to ensure your trade mark meets this requirement is to conduct a thorough trade mark search. For example, the Australian Trade Marks Online Search System (ATMOSS) is a free search tool that will enable you to do this. ATMOSS has a number of filters that you can then use to ensure your search is as comprehensive as possible.
However, suppose your proposed trade mark is identical or too similar to an existing Australian trade mark. In that case, you receive an objection from either IP Australia or the trade mark owner. This may make it difficult to distinguish your trade mark from theirs for successful registration.
When filing an international trade mark application through the World Intellectual Property Organization (WIPO), you can either add Australia as a designated country at the time of filing or at a later date after registration. If this is the route you choose, the WIPO will forward your application to IP Australia for assessment.
Alternatively, you may choose to file a trade mark application with IP Australia directly. There are a few avenues for this, including:
- filing an online application using the eServices platform;
- applying by mail; or
- having the assistance of an IP professional.
Application Processes and Examination Procedures
Before applying for a trade mark in Australia, it is important that you understand the general processes and procedures. After submitting your application, IP Australia will examine your trade mark within about 3 to 4 months.
If there are any issues with your trade mark during this stage, IP Australia will send you an adverse examination report. This report will then outline the issues with your trade mark and provide you with an opportunity to rectify these issues. Depending on the objection raised, there may be several options available to address the issues, such as:
- filing legal arguments;
- amending your goods and services;
- providing evidence of use of your trade mark; or
- providing a letter of consent from the owner of the prior trade mark.
Once you resolve these issues (or if there are no issues), IP Australia will accept your application. At this time, your application will be advertised for two months, allowing third parties to oppose the trade mark if they have grounds to do so. After that, where no opposition occurs, your trade mark will officially be registered.
If you are an overseas business owner wanting to trade in Australia, you must protect your trade mark, as an existing trade mark in your home country will not have protection in Australia. Some things to consider regarding this include:
- Australia’s trade mark rules;
- search for trade marks;
- registration options; and
- application processes and examination procedures.
Frequently Asked Questions
If you are an overseas business owner wanting to trade in Australia, you should consider protecting your intellectual property in Australia. This includes your trade marks, as an existing trade mark in your home country will not be protected in Australia. Therefore, if you are applying for a trade mark in Australia, you must fulfil Australia’s trade mark requirements.
Having a trade mark registered in Australia is a great way to protect your brand assets and reputation if you plan on trading in Australia. This will allow you to expand your business to Australia while preventing other businesses from benefiting from your trade mark.