Filing
Australia follows the International Classification system. Goods and services are grouped into classes. There are 34 classes for goods and 11 classes for services.
When filing an application the goods and/or services for which registration is desired must be specificed and grouped by class.
An application may specify goods and/or services that fall in multiple classes.
The application and registration costs depend on the number of classes specified.
Examination
An Australian trade mark application is automatically examined by the Trade Marks Office about 3 to 5 months after filing the application.
The Trade Marks Office will search existing registrations and applications which have an earlier priority date for the same or similar marks in respect of the same or similar goods or services to those specified on the application. If the examiner finds overlapping applications or registrations then an objection shall be raised. These may be overcome by argument or by amending the goods or services specified in the application, or both. The examiner will also consider whether the mark is objectionable due to being directly descriptive, geographical or otherwise objectionable. If such objections cannot be overcome by argument then, if there has been use of the mark, they may be overcome by demonstrating that the use of the mark has rendered the mark to be distinctive.
The applicant has 15 months from issue of the first report to obtain acceptance, otherwise the application lapses. Up to 6 months of extensions may be obtained in advance upon payment of fees. If acceptance cannot be obtained, rights may be maintained by filing a divisional application for some of the goods or services.
Acceptance
If no objections are raised or any objections are overcome the application is accepted and published as accepted in an official journal. Third parties have two months from the date of publication of acceptance to oppose to the registration of the mark. Opposition is relatively rare and if no opposition is filed, the application proceeds to registration subject to payment of registration fees.
Registration
After acceptance and expiry of the opposition period, the application will be registered once registration fees are paid.
There is a fee for each class in the application and must be paid within 6 months of the date of publication of acceptance.
If the registration fees are not paid then the application lapses.
Duration
A trade mark is registered for 10 years from the filing date of the application. The registration may be renewed indefinitely with renewal fees being due every 10 years. If the renewal fees are not paid then the registration ceases.
Renewal fees may be paid up to 6 months late but with additional fees.
Non Use
A trade mark registration may be removed totally or partially if it has not been used on goods or services specified in the registration for a continuous period of three years ending one month before the filing of an application for removal.
An application may not be made until 5 years after the filing date so effectively there is an initial period of 5 years.
If use ceases for more than 3 years and then recommences, then a registration is no longer vulnerable to removal for non use, so long as a non use action did not commence less than one month before use recommenced.