One Federal Court decision clarifies what is considered as “authorised use” of a trade mark wherein the trade mark user is not the trade mark owner but a subsidiary of the owner’s company.
Trade mark registration process
In Australia, the trade mark registration process involves several steps commencing with a search and extending beyond registration.
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At application, an identical trade mark search is carried out in order to identify any obvious impediments to trade mark registration. Applicants can do their own search of the register, however a trade mark attorney will use more advanced strategies in conducting these searches.
This first step in the trade mark process involves the applicant filing a trade mark application. Application involves the preparation of the application, submitting the application and payment of the required fees.
Importantly, in the preparation step, the required information in the application should be complete and correct because only limited changes can be performed after filing. Incorrect or incomplete information may result in rejection or a narrow range of protection for the trade mark.
After submission of the application to the Trade Marks Office (IP Australia), the trade mark examiner, who is a delegate of the Commissioner of Trade Marks, will assess the application and an examination report will be issued to the applicant. In the case that the application does not meet the legislative criteria set by IP Australia in light of the Trade Marks Act 1995, an adverse examination report will be issued to the applicant.
The applicant can then provide arguments to support their application within a certain time frame (which is 15 months in Australia) or alternatively the applicant can amend the application.
The Trade Marks office will then decide based on the presented evidence and/or amendments whether to accept or refuse the trade mark application.
Upon acceptance of the trade mark application, IP Australia publishes the trade mark in the Australian Official Journal of Trade Marks, which can be seen by the public. Publication of the trade mark commences a two-month opposition period in which any third party can oppose the registration of the trade mark.
Based on the similar grounds for the rejection of trade marks, a trade mark opposition can be lodged by any third party. A trade mark opposition can result in either a registered trade mark or a refused application.
Trade Mark Registered
Once registered, the trade mark owner has sole rights to the use of the trade mark and to its benefits. The owner is also responsible for maintaining and enforcing their trade mark and for ensuring that renewal fees are paid every 10 years. A trade mark can be renewed indefinitely.