Noel Kim 29 Oct 2020
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:
- 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.