How to Find Out if a Trade Mark Registration Has Lapsed
The process of registering a trade mark may seem complicated at first, especially considering the different deadlines during the application process. Missing a deadline could mean that your trade mark application lapses, and you may have to reapply for trade mark protection. This article outlines the deadlines involved in the trade mark application process and any potential notifications you may receive throughout this process, to help prevent you from being unaware that your trade mark application has lapsed.
After You Have Submitted Your Application
Once you submit your application for a registered trade mark, IP Australia will examine your application. This process usually takes three to four months from the date that you submitted your application. However, this depends on the volume of applications that IP Australia must assess at any given time.
Once IP Australia has reviewed your application, they will notify you in writing or via online services. If IP Australia accepts your application, they will advertise your trade mark as ‘accepted’ on the Register.
Once Your Trade Mark is Registered
Within the first two months of having your trade mark registered, a third party can file a notice of intention to oppose your application. This can occur in a number of instances, mostly where a third party believes that they own a similar trade mark to the trade mark you have applied for. If you wish to defend the opposition, you then have one month from the date you receive the notice of opposition to file your intention to defend your application.
Defending an opposition can be a complex process with different evidentiary requirements. Therefore, it is wise to seek legal advice in the instance where you receive a notice of intention to oppose.
However, if you do not receive a notice of opposition within two months of your trade mark application’s acceptance, IP Australia will register your trade mark. Australian trade mark law protects your trade mark for 10 years from its filing date.
Receiving an Adverse Examination
If your trade mark application does not meet the legislative requirements for trade mark registration, you will receive an adverse examination report. This will arrive after the three to four months IP Australia usually takes to review your application. This report will outline:
- why the examiner rejected your application; and
- any options you could take to overcome the issues that led to your rejection.
You have 15 months to respond to the adverse examination report from the date you receive the report. During this time, you can respond to the report and have the examiner reconsider your responses. This may lead to a successful trade mark application.
Suppose you fail to respond to the adverse examination report within the 15-month period. In that case, there is a chance that you can apply for an extension of time. However, to avoid further costs for extending time, it would be wise to respond within the 15 months.
Trade Mark Renewal
The law says that a registered trade mark gives trade mark owners 10 years of protection. Within 12 months of your trade mark’s expiry date, you can renew your trade mark protection. There are no limits to the number of times that you can renew your registered trade mark. However, it is your responsibility to renew your trade mark on time. Once you apply for trade mark renewal, the Registrar will notify you that the trade mark has been renewed.
If you forget to renew your trade mark registration before its expiry date, there is a six-month grace period after your trade mark expires where you may still be able to renew your trade mark. However, you should note that you do not enjoy the exclusive rights to use, license, and sell your trade mark during this grace period after your trade mark expires. If this six-month grace period has lapsed and you have not paid your renewal fee, IP Australia will remove your trade mark from the Register.
You should also be wary of any unsolicited invoices associated with trade mark renewal. Since the trade mark registry is available for public viewing, unofficial third parties will often scan the registry and determine when trade mark applications are due for renewal. These organisations will then send you invoices directly and demand that you pay fees well above the renewal fees prescribed by IP Australia. To avoid these scams, you should only respond to invoices sent by IP Australia.
To avoid your trade mark application lapsing, you must follow the registration process carefully. Once you submit your trade mark application, you can expect a reply from IP Australia, usually within three to four months of lodging your application. If IP Australia accepts your application, there is a two-month period in which third parties can oppose your application. You should respond to these notices promptly. If IP Australia rejects your application, you have 15 months to respond and attempt to get your application approved. If this period has lapsed then you then IP Australia might remove your trade mark. Overall, Australian trade mark law protects registered trade marks for 10 years, and you can renew your trade mark 12 months before its expiry date.
Frequently Asked Questions
Trade mark registration can cost between $250 and $600, plus renewal fees.
No, after the six month grace period from the expiry of your trade mark has lapsed, it is taken off the Register, and you cannot renew it.
Filing a notice of intention to oppose typically costs $250. You can find a full breakdown of opposition fees on IP Australia’s website.