Filing a trade mark application in Australia requires compliance with specific local filing requirements that may differ from other jurisdictions. It is important to consider these requirements at the outset to avoid unnecessary objections, delays and added expense.
The checklist below summarises the key requirements and practical considerations to keep in mind.
Applicant Details
- The full legal name and address of the applicant must be provided.
- The applicant may be an individual(s), a company, an incorporated association or other legal entity.
- For corporate entities, the exact legal name of the company must be provided including the appropriate company type abbreviation (eg. LLC, Ltd, AG etc.)
- For individuals, a given name and a family name will be sufficient but not only an initial and a family name. For joint owners, the full names of each owner must be provided.
Address for Service
- An address for service in Australia (or New Zealand) must be provided.
Power of Attorney?
- A power of attorney is not required.
Trade Mark Details
- A graphical representation of the mark is required.
- For a standard word mark, the trade mark can be typed in standard letters, preferably all capitals (eg. MADDERNS).
- If the trade mark is in stylised form, or consists of a logo, an image of the mark must be provided. There is no requirement to include a written description of a stylised or logo mark, nor is it necessary to include a colour claim to restrict/limit the mark to a certain colour(s).
- For non-traditional trade marks (such as shape and colour marks), a clear concise written description of the mark must be provided along with an image(s) which clearly shows the features of the mark.
Translation/Transliteration:
- If a trade mark includes characters that are not Roman letters (eg. Chinese or Japanese characters), a transliteration of the characters into Roman letters must be provided along with a translation of the word(s) into English. Certified documentation of the translation is generally not required.
- If the trade mark includes foreign words in Roman letters (such as French or German), a translation into English does not need to be submitted at the time of filing but this may be requested during examination.
Specification of goods/services
- Broad general claims such as “computer software”, “clothing” and “business advisory services” are allowed in Australia; however, wording such as “all goods in class 25” and “all services in class 42” are prohibited.
- Unqualified claims for “parts and fittings” or “accessories” are unlikely to be accepted. Such claims should identify the specific goods of interest, for example, “parts and fittings for motor vehicles”.
- Claims for class headings are acceptable, but a class heading claim will not be interpreted to cover all of the items in the class.
- Unrealistically broad specifications incorporating many diverse items may be questioned.
- A list of the Australian Trade Marks Office’s approved terms can be reviewed here: https://tmgns.search.ipaustralia.gov.au/
Convention filings
- A convention claim must be made at the time of filing the Australian application or within two working days of filing the application.
- The following details are required to make the claim: the application number and filing date of the earlier application and the name of the Convention country.
- Generally, no supporting convention documentation is required; however, an Examiner may request a copy of the convention application during examination.
Basis for filing?
- There is no requirement to state whether the Applicant has, or has not, commenced use of the mark and no evidence of use or declaration of intention to use is required to be submitted at the time of filing.
Understanding these requirements will assist foreign brand owners to efficiently manage their trade mark filings in Australia and avoid unnecessary complications
