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Latest News: 02-22-2017 (Newsletter Issue 4/17)
New Search System Introduced
IP Australia informs that Australian Trade Mark Search replaces the current search system (ATMOSS). By searching trademarks quickly and efficiently owners can make informed decisions about their business.

The new system, Australian Trade Mark Search, introduces image recognition and machine learning technology that detects objects within an image and makes instantaneous comparisons across Australia’s entire trademark database. It also features advanced options including a real time search counter and the ability to text search across a range of goods and services.

Source: www.ipaustralia.gov.au


12-06-2016 (Newsletter Issue 22/16)
Comments on Proposed Legislation Changes Required
IP Australia is seeking input from interested parties about proposed changes to Australia’s IP legislation.

The aim of these proposed changes is to align and streamline the processes for obtaining, maintaining and challenging IP rights. Using similar processes for the different IP rights would make the IP system simpler and assist businesses dealing with more than one right.

Interested parties are invited to provide a written submission on the exposure drafts by January 22, 2017. Further information is available on the consultation page here

Source: www.ipaustralia.gov.au


08-30-2016 (Newsletter Issue 15/16)
Official Fees Increased
IP Australia has been changed its official fees.

As of October 10, 2016 the official trademark application fee for online filing will be AUD 250 per class with pick list and AUD 330 per class without pick list. There will be no registration fee anymore. The increase of trademark application fees per class intends to partially offset the removal of the AUD 300 registration fee.

Source: www.ipaustralia.gov.au


06-14-2016 (Newsletter Issue 11/16)
Madrid Fee Process Changed by IP Australia
IP Australia will stop collecting and forwarding Madrid Export fees under Rule 34(2) of the Common Regulations under the Madrid Agreement and will stop accepting select forms on behalf of WIPO as of July 1, 2016.

Customers will instead pay and file directly to the International Bureau through their portal, enabling them to interact directly with the office administering their request. In paying directly to the International Bureau customers can be assured the correct fee has been paid based on the exchange rate at the time.

For further information and to access the list of forms which now need to be lodged directly with WIPO, please click here

It should be noted that the process for filing new export applications through the Madrid e-filing system is still available through the IP Australia’s e-services.

Source: www.ipaustralia.gov.au


11-25-2015 (Newsletter Issue 18/15)
Electronic Certificates for TMs Available Now
IP Australia announced the introduction of electronic certificates for trademarks via the electronic channel.

Electronic channel customer will receive their trademark certificates electronically. Non-electronic channel customers will receive a printed copy of their certificates on plain paper. The Commissioner’s name and signature will no longer appear on the certificates.

The Australian Trade Mark Register will continue to be the authoritative source on the validity of your IP right. A note to this effect will appear in the footer of the certificate.

There is no fee associated with issuing of electronic certificates.

Source: www.ipaustralia.gov.au


03-31-2015 (Newsletter Issue 5/15)
New E-Filing for International Registrations Now Available
IP Australia informs that the new e-filing system for international trademark registration applications is now available.

The International Registration Process Integration (IRPI) is an e-filing application system for submitting international trade mark applications to the World Intellectual Property Organization.

The IP Australia eServices channel now includes access to IRPI, the World Intellectual Property Organization (WIPO) electronic filing facility, which offers the ability to securely apply and manage your applications for filing international registration applications (Madrid Protocol).

To find out more about the benefits of filing your application with IRPI please click here

Source: www.ipaustralia.gov.au


03-18-2015 (Newsletter Issue 4/15)
IP Laws Amendment Bill 2014 Passed
The Intellectual Property Laws Amendment Bill 2014 was passed by the Australian Parliament on February 9, 2015. The resulting Intellectual Property Laws Amendment Act 2015 received the Royal Assent on February 25, 2015.

The Act amends the Patents Act 1990, Trade Marks Act 1995, Designs Act 2003, and the Plant Breeder's Rights Act 1994 in order to:
- implement the Protocol amending the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property (TRIPS Protocol), enabling Australian medicine producers to manufacture and export patented pharmaceuticals to countries experiencing health crises, under a compulsory licence from the Federal Court
- extend the jurisdiction of the former Federal Magistrates Court, the Federal Circuit Court, to include plant breeder's rights matters
- allow for a single trans-Tasman patent attorney regime and single patent application and examination processes for Australia and New Zealand, as part of the broader Single Economic Market (SEM) agenda
- make minor administrative changes to the Patents, Trade Marks and Designs Acts to repeal unnecessary document retention provisions that are already adequately governed by the Archives Act 1983
- make minor technical amendments to the Patents Act to correct oversights in the drafting of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which was passed by Parliament in March 2012.

For more information, please check here

Source: www.ipaustralia.gov.au


01-28-2015 (Newsletter Issue 2/15)
New E-Filing System for Trade Marks Madrid Export Applications
A new e-filing system called International Registration Process Integration (IRPI) has been developed by the World Intellectual Property Organisation (WIPO) in association with IP Australia for filing Trade Marks Madrid Export applications.

This system will cater for all new applications filed online under the Madrid Protocol. It is anticipated to go live on March 14, 2015. IRPI will be available through IP Australia’s eServices portal and will replace the current option which is located within the General eServices request form.

Source: www.ipaustralia.gov.au


04-01-2014 (Newsletter Issue 6/14)
New International TM Application Form
IP Australia announced on its website that they have published a new Australian International Trade Mark Application Form. This form is for applicants who are electing to file a Trade Mark through the Madrid Protocol with IP Australia being the office of origin.

The form is an adaption of the Official WIPO Madrid Agreement MM2 Form, taking into account the specific requirements for Australian users.

Source: www.ipaustralia.gov.au


10-15-2013 (Newsletter Issue 15/13)
General eService Introduced
On 31 August 2013, IP Australia introduced the "General eService" functionality to its online services.
This latest enhancement allows the ability to submit over 150 of the remaining transaction/service request types including amendments, assignments, extensions of time, opposition matters and responses to examination reports for all IP right types.

IP Australia is due to complete all inbound transactions in late 2013. To support this improved functionality, work is underway to develop a solution to provide these services during maintenance periods or outages.

In light of increasing customer demand for eServices, IP Australia anticipates considering the ongoing operational viability of the traditional transaction channels, including assist e-mail, over the phone payments and corporate fax. It is anticipated that a transition from these channels is likely to occur in early to mid-2014.

Source: www.ipaustralia.gov.au


04-15-2013 (Newsletter Issue 5/13)
Revised TM Law Amends Opposition Period
The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (Act) came into effect on 15 April 2013. It represents a significant revision of Australian trade marks law. In particular, the Act seeks to strengthen and streamline the trade mark enforcement system.

The most significant aspects of the trade mark law reforms brought in by the Act are:
- a revised process for the opposition of trade mark applications with a strong focus on recuding potential delays (the opposition period is reduced from 3 to 2 months after the publication for acceptance in the "Australian Official Journal of Trade Marks");
- the inclusion of a presumption of registrability for marks with respect to descriptiveness;
- a strengthened customs seizures regime; an increased variety of options for the enforcement of trade mark rights; and
- an extension of attorney-client privilege to fully embrace trade mark attorneys.

For more information, please check the article of K&L Gates here

Source: K&L Gates, Australia


11-19-2012 (Newsletter Issue 17/12)
Amendments to Trade Mark Act
The Intellectual Property Laws Amendment (Raising the Bar) Bill received Royal Assent from the Governor General on 15 April 2012.

The amendments relating to the Trade Marks Act 1995 will come into effect on 15 April 2013. Some of the changes are:

1) Oppositions
- An applicant will be required to file a Notice of Intention to Defend an opposition to registration.
- An opposed application will lapse if a Notice of Intention to Defend an opposition is not filed
- An extension of time will be available to file the Notice of Intention to Defend
- New Section 231(3) will allow the Trade Mark Regulations to be amended to prescribe matters relating to trade mark oppositions including: a) Rules about filing and serving documents in an opposition; b) Rules about the amendment of documents filed in an opposition; c) The circumstances in which the Registrar may dismiss an opposition under the new Section 99A; and d) Provision for review by the Administrative Appeals Tribunal of decisions of the Registrar made under the regulations.
- A decision of a delegate of the Registrar in opposition proceedings may be appealed to the Federal Magistrate's Court.

2) Infringement of registered trade marks
Section 126 has been amended to allow for the award of additional damages in trade mark infringement matters taking into account matters including:
- The flagrancy of the infringement;
- The need to deter similar infringements of registered trade marks; and
- The conduct of the party that infringed the registered trade mark that occurred.

3) Penalties
The penalties for offences relating to misuse of trade marks, including falsifying or removing registered trade marks, falsely applying registered trade marks, and possessing or selling goods with false trade marks, have been increased.

There have been changes to Customs Procedures as well.

Source: Spruson & Ferguson, Australia


11-01-2012 (Newsletter Issue 16/12)
New Transactions through eServices
IP Australia announced the second release of its eServices. eServices is a secure electronic business portal that allows to register, login and conduct selected transactions.

The following transactions are introduced with the second release:
Applications for all IP rights; TM Headstart applications; examination requests for patents; user administration for businesses.

All transactions through eServices can be paid by Visa or MasterCard. Transaction history can be accessed any time. Built-in checks, pre-populated fields and informative help text will assist in completing transactions easily and efficiently, saving time and money.

Over the coming months IP Australia will be adding more transactions and services to the portal.

Source: www.ipaustralia.gov.au


09-27-2012 (Newsletter Issue 14/12)
Official Fees Increased
IP Australia announced that the second stage of the fee review implementation has taken place on October 1, 2012. The majority of fee changes occurred on July 1, 2012, with the exception of new IP right application filing fees.

As from October 1, 2012, the official trademark application fee for online filing is AUD 120.00 per class with pick list. The official trademark application fee for filing (electronic or paper) is AUD 200.00 per class without a pick list.

Source: www.ipaustralia.gov.au


05-29-2012 (Newsletter Issue 9/12)
Official Fees Soon Increased
IP Australia announced an increase of its official fees. The majority of fee changes will occur on July 1, 2012, with the exception of new application filing fees changing from October 1, 2012.
To access the new trademark fee structure, please check here

Source: www.ipaustralia.gov.au


05-15-2012 (Newsletter Issue 8/12)
eServices Launched
IP Australia announced the launch of its eServices to register, login and conduct selected transactions.

In the first release of eServices customers can renew all IP rights, submit trade mark registrations electronically and pay for them online using VISA or MasterCard. New features such as the option to save your requests can be accessed as well. Furthermore, the eServices transaction history can be seen and the details can be updated.

The services and transactions within eServices have built-in checks and pre-populated fields to save you valuable time and help ensure the accuracy of the information.

Over the coming months IP Australia will be adding more transactions and services to the portal.

Source: www.ipaustralia.gov.au


02-21-2012 (Newsletter Issue 3/12)
New Business Names Registration Service
IP Australia announced that States, Territories and the Australian Government are going to introduce a new National Business Names Registration Service.

The new Registration Service will replace the current state/territory services, so that businesses only need to register their name with a single register nationally. The new service will be expected on May 28, 2012.

The new service will be managed by the Australian Securities and Investments Commission (ASIC).

Source: www.ipaustralia.gov.au


07-01-2010 (Newsletter Issue 12/10)
Changes to Trademark Renewal Reminder Notices
IP Australia issues the Renewal Reminder Notice on two separate occasions effective from May 20th, 2010.
This notice will be issued at 4 months and again at 2 months prior to the Renewal Due Date, if payment for renewal has not been received.

A new Final Renewal Reminder Notice will also be issued at the beginning of the 6 month grace period (when the due date for payment of the renewal fee has passed).


Source: www.ipaustralia.gov.au

Legal basis is the Trade Marks Act 1995, in force since January 1, 1996.
The Trade Marks Act 1995 is based on the principles of "common law“, i.e. official and juridical decisions are rendered on the basis of prior decisions and judgements on similar cases comparing all facts and merits of a case and taking into consideration all different common grounds. The proof of infringement, however, is easier than in other “common law states”.
Australia is a member of the Madrid Protocol.
Trademark protection is obtained by registration. Non-registered trademarks can also be enforced under the Competition and Consumer Act 2010 or the common law tort of passing off if they have sufficient public recognition. Enforcing a registered trademark is easier than enforcing an unregistered 'common law' trademark.
Australian trademarks are also protected on the Christmas Island, the Cocos (Keeling) Islands and Norfolk Islands (NF).
Nice classification, 10th edition
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, combinations or shades of colours, the three-dimensional form of a good or its packaging, sound marks and smell marks and any combination of the mentioned signs as well as movement and holograms.
The following trademark types are registrable: trade marks, service marks, collective marks, defensive marks and certification marks.
The application is filed at the Australian Government Agency responsible for administering patents, trademarks, designs and plant breederʼs rights (IP Australia).
Multiple-class applications are possible. However, additional fees are payable if an application is to cover more than one class.
Foreign applicants do not need a local agent. An address for service in Australia is sufficient.
A power of attorney is not necessary.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The processing time from first filing to registration is approximately 8 to 24 months. The first office action is taken after approx. 3 months. An expedited examination is possible.
Applications filed claiming convention priority generally will automatically have their examination expedited.
If accepted for registration, the trademark application is published in the “Australian Official Journal of Trade Marks”. Full details of the application are normally available online from the Trade Marks Office database within 2 or 3 days of filing. If no opposition is filed, the trademark will be registered against payment of registration fees.
National:
The opposition period is 2 months after publication for acceptance in the "Australian Official Journal of Trade Marks".

Opposition against designation of IR Mark
2 months from the national publication date
A trademark registration is valid for 10 years from date of application.
The registration is renewable for periods of 10 years.
The grace period is 6 months from the expiration date of the trademark. 

Further practical details are available in our publication on this topic here
If a trademark has not been used within any continuous period of 3 years, the registration is vulnerable to cancellation upon request of a third party. An application for cancellation due to non-use over a continuous 3 year period cannot be lodged until at least five years after the filing date of the trademark. However, an application for removal can be filed during the first 5 years if the non-use applicant claims the trade mark applicant had no genuine intention to use the trade mark at the time of filing and that the trade mark has not subsequently been used.

Further practical details are available in our publication on this topic here
The official trademark application fee for online filing is AUD 120 per class with pick list. The official trademark application fee for online filing is AUD 200 per class without pick list, or for paper filing it is AUD 220 per class without pick list. The registration fee is another AUD 300 per class and AUD 300 for additional classes.

As of October 10, 2016 the official trademark application fee for online filing will be AUD 250 per class with pick list. The official trademark application fee for online filing is AUD 330 per class without pick list, or for paper filing it is AUD 350 per class without pick list. There will be no registration fee anymore.

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Practical details on licensing procedures, requirements and effectiveness are available in our publication on this topic here.
Search type First class Add. class
Word Mark Search (availability) 170,00 € 40,00 € 
Word Mark Search (identical) 90,00 € 0,00 € 

The Prices above are SMD Group Search Fees
Further practical details are available in our publication on this topic here
Country Index is a free service of SMD Group. We thank the following law firms for their assistance in updating the information provided.

Country Survey
05-19-2016
K&L Gates, Melbourne, Australia

03-11-2015
Cullens Patent & Trade Mark Attorneys, Brisbane, Australia

02-13-2015
K&L Gates, Melbourne, Australia

11-06-2014
K&L Gates, Melbourne, Australia

04-14-2013
K&L Gates, Melbourne, Australia

07-13-2012
K&L Gates, Melbourne, Australia

08-09-2011
Gadens Lawyers, Sydney, Australia



K&L Gates

525 Collins Street
VIC 3000 Melbourne
Australia (AU)

Trademark.Ventures

42 Claremont Street
3141 Melbourne
Australia (AU)

Phillips Ormonde Fitzpatrick

Level 16, 333 Collins Street
3000 Melbourne
Australia (AU)

IP Australia
Ground Floor, Discovery House
47 Bowes Street
Phillip ACT, 2606
Canberra
Australia
Tel +61 2 62 83 29 99
Fax +61 2 62 83 79 99
www.ipaustralia.gov.au
Mailing address:
PO Box 200
Woden ACT, 2606
Canberra

World Intellectual Property Organization (WIPO)
34, Chemin des Colombettes
1211 Geneva 20
Switzerland
Tel +41 22 33 89 11 1
Fax +41 22 73 35 42 8
www.wipo.int