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Australia Trade marks Law
Australia’s intellectual property office, IP Australia (www.ipaustralia.gov.au), and New Zealand’s intellectual property office, IPONZ (www.iponz.govt.nsw), are their respective countries’ intellectual property rights administrative agencies. IP Australia and IPONZ administer applications for trade marks and handle oppositions to intellectual property rights. They also process other administrative work such as renewal, transfer and cancellation of trade marks. Australia/ New Zealand laws allow trade marks for characters, numbers, figures and combinations of these, and trade marks can also include smell, sound and colour. A registered trade mark is valid for 10 years, and upon payment of renewal fees, may be renewed on a 10-year basis. However, even a registered trade mark, if not used for a certain period, may be cancelled by opposition from a third party. Trade marks can be registered in one of two ways: the first is to register the trade mark internationally through the Madrid Protocol; the second is to register through IP Australia/IPONZ. A product or service to be trade marked must be classified in accordance with the International NICE classification which lists 1 to 45 classes. The procedure to register trade marks in Australia and New Zealand are as follows: Investigation of previous trademarks. - A review of possible infringement and registration of the same or similar trade marks. 2. Trade mark application - The applicant’s English name, address, trade mark and designated products/services. - Details of priority right if claiming under a treaty. - English translation of the trade mark if not written in English. - For applications in New Zealand - whether the trade mark will be used in New Zealand. 3. Assessment of the trade mark application - Takes up to 4-5 months from the date of application (can apply for expedited examination in cases of emergency). - For applications in New Zealand, takes 3-4 weeks from the date of application. - Review whether there have been conflicts with prior trade marks, distinguishing features of the trademark, etc. - If any reason for rejection has been identified, an initial report of the examination will be issued and the applicant will have 15 months from the date of the report to respond to that. - For application in New Zealand, the applicant must respond to the rejection within 12 months from the date of the initial report. - When applying for a trademark in Australia/New Zealand through the Madrid Protocol, if an examination report has been issued, an agent must be appointed in Australia/New Zealand for the purpose of responding to the rejection. 4. Application notice and objection - Upon the satisfaction of all requirements, notification will be advertised on the public notice board for two months. - For applications in New Zealand, the public notice will continue for 3 months. - If an objection is filed within the deadline, a separate objection procedure will be carried out. 5. Registration of trade mark - If there is no objection, the registration of the trade mark will be completed and a certificate of registration will be issued electronically (in a PDF format). - The validity of the trade mark is for 10 years (can be renewed every 10 years). An owner of a registered trade mark is entitled to the exclusive use of the trade mark in Australia/New Zealand. Furthermore, it is necessary to conduct an investigation for existing trade marks to avoid infringing on others’ trademark rights when entering the Australian/New Zealand market. If the trade mark you wish to use is registrable, it is best to register it as soon as possible in order for it to be protected. Registering a trade mark will prevent future infringement on the trade mark rights by other competitors. In addition, upon the registration, customs in Australia and New Zealand can seize products being imported if a registered trade mark is infringed. Registered trade marks can use the ® symbol which gives consumers an exclusively protected brand image. Subsequently, a registered trade mark is a property asset which can be renamed, transferred and licensed. Finally, when attracting investment funds from international banks, investors or governments, there are often cases in which it would be advantageous to register your trade mark in the respective country you are considering entering the market in.
知识产权
IP Australia Fee Changes from 1 October 2020
IP Australia’s 2019-2020 fee review has resulted in changes to various official fees within the Australian Government Charging Framework. The aim of the changes is to ensure the recovery of fees from the administration of intellectual property rights systems. The changes are effective 1 October 2020. The key changes are summarised as follows. Trade marks Standard Trade mark applications are subject to fee increases depending on the type of application. Applicants filing a new non-pick list application using the preferred filing method will be charged $400 for a standard trade mark application and $550 for series trade mark application, both of which are increased by $70 from the old fees. Non-pick list applications are those with classifications that are not from a collection of pre-approved goods and services created by IP Australia. A new single fee of $400 for all hearing requests will be introduced. The single fee applies notwithstanding the type of hearing. Each day of the hearing will also attract fees ranging from $400 to $800 per day, depending on how the hearing is conducted (e.g. by written submissions or in-person). This fee will be offset by the hearing request fee. Patents The changes to the patent fee structure will be three-tiered. Firstly, new excess claim fees have been introduced for the following categories: Standard Patents: 21 to 30 claims $125 Standard Patents: 31+ claims $250 Secondly, renewal/maintenance fees for patents exceeding 5 years will increase significantly, particularly for extended pharmaceutical patents. Standard Patent Renewal/Maintenance Fee Old fee New fee 5th Anniversary $300 $315 6th Anniversary $300 $335 7th Anniversary $300 $360 8th Anniversary $300 $390 9th Anniversary $300 $425 10th Anniversary $550 $490 11th Anniversary $550 $585 12th Anniversary $550 $710 13th Anniversary $550 $865 14th Anniversary Renewal $550 $1050 15th Anniversary Renewal $1250 $1280 16th Anniversary Renewal $1250 $1555 17th Anniversary Renewal $1250 $1875 18th Anniversary Renewal $1250 $2240 19th Anniversary Renewal $1250 $2650 Pharmaceutical Patent Renewal/Maintenance Fee Old fee New fee 20th Anniversary $2550 $4000 21st Anniversary $2550 $5000 22nd Anniversary $2550 $6000 23rd Anniversary $2550 $7000 24th Anniversary $2550 $8000 Finally, and on a brighter note, preliminary search & opinion fees will be reduced significantly from $2,200 to $950. Designs Both application and renewal fees will increase for registered design applications. A new design application which is not submitted via preferred means will cost applicants $450 (previous fee $350). Subsequent designs within the same application will also attract a new fee. Preferred Methods If applicants use filing methods other than IP Australia’s preferred method, higher fees will be attracted. The obvious aim is to incentivise online filing methods for efficiency purposes. It is also to encourage users to make use of trade mark pick lists. Finally, applicants should expect further changes in relation to awards of cost in opposition and non-use removal proceedings. The changes will be released once relevant stakeholder submissions and additional consultations have been assessed. A full list of the fee changes can be viewed on IP Australia’s website. For any enquiries, please contact us at ip@hhlaw.com.au.