The Australian dollar is the currency of the Commonwealth of Australia, including Christmas Island, Cocos (Keeling) Islands, and Norfolk Island, as well as the independent Pacific Island states of Kiribati, Nauru, and Tuvalu. After the 2006 merger of the Australian Stock Exchange and the Sydney Futures Exchange, the Australian Securities Exchange is now the 9th largest in the World.
Who May Apply?
A person may apply for registration of a trademark if he or she
claims to be the owner and he or she is using or intends to use the
mark in relation to particular goods or services, has authorized or
intends to authorize another person to use the mark, or intends to assign
the mark to a corporate body.
What Can Be Registered?
A trademark may be registrable if it is capable of distinguishing the
applicant's goods or services from those of another.
What Cannot Be Registered?
The following are some of the grounds for rejection. An application
must be rejected if it cannot be represented graphically. The
trademark must distinguish the applicant's goods or services and,
therefore, for example, directly descriptive or laudatory marks may be
, rejected. Evidence of use may overcome such an objection. An application
must be rejected if the trademark contains or consists of "scandalous
matter" or its use would be "contrary to law."
An application will be rejected if it conflicts with an earlier application
or registration. An application will be rejected if there is a "connotation"
in the trademark which, when the mark is used in connection
to the relevant goods or services, would be likely to deceive or
An application may be rejected if the trademark contains or consists of a prescribed sign or a sign or nearly resembling such a sign.
Prescribed signs include, for example, the words "Patent," "Patented"
and "By Royal Letters Patent." Also prescribed are the words "To
counterfeit this is a forgery" or words to the same effect.
The following acts do not constitute infringement of a trademark:
(1) the person uses in good faith the person's name or the name
of the person's place of business or the name of a predecessor in
business of the person or the name of the predecessor's place of
(2) the person uses a sign in good faith to indicate the kind, quality,
quantity, and intended purpose, value, geographical origin, or
some other characteristic of goods or services or the time of production
of goods or of the rendering of services;
(3) the person uses the trademark in good faith to indicate the
intended purpose of goods (in particular as accessories or spare
parts) or services;
(4) the person uses the trademark for the purposes of comparative
(5) the person exercises the right to use a trademark given to the
person under this Act;
(6) the Court is of the opinion that the person would obtain
registration of the trademark in his or her name if the person were
to apply for it; or
(7) the person uses a sign in a manner that does not (because of
the condition or limitation subject to which the trademark is .
registered) infringe the exclusive right of the registered owner to
use the trademark.
In addition, there is a defence relating to the use of a part of the
mark that is the subject of disclaimer. There is a defence arising from
the situation where the registered owner has consented to the use of
the mark in relation to the goods or services.
In certain circumstances the use of an unregistered mark that is
substantially identical with, or deceptively similar to, a registered
trademark will not infringe where such use has occurred continuously
since a time prior to the date of registration of the registered mark, or
prior to the use of the registered mark by the registered owner.
The trademark must be able to be represented graphically and
therefore in the case of sound trademarks, cassette tapes of the sound
may also be required. An actual sample of the trademark may be
required for three dimensional shape trademarks. For marks consisting
of, or containing, a color, scent, shape, sound, or aspect of packaging,
the application must also be accompanied by a concise and accurate
description. Such descriptions will be entered as endorsements
and, taken together with the graphic representation, will help to
define the scope of the registration.
The size of the representation of the trademark should, where
practical, be no larger than 8 cm x 8 cm.
Evaluation & Review
Upon receipt of an application, an examiner reports whether the application
is as prescribed and the trademark is capable of registration.
A search is conducted. The applicant may amend to remove any objections,
but if he does not do so the registrar may direct that the application
be amended to his satisfaction within such times as he allows.
The registrar may accept the application with conditions or
limitations or refuse the application. Acceptance can be withdrawn.
Divisional applications may be lodged for: the registration of a part
only of the trademark in respect of all or any of the goods andlor services
originally applied for; the registration of the mark in respect of
some only of the goods and/or services; or, if the initial application has
been amended to exclude some of the goods andfor services for which
registration was sought in the first place-for the registration of the
mark in respect of any or all of the goods and/or services that have
been so excluded. A divisional application is taken to have the same
filing date as the initial application
Registration of a trademark is for a period of 10 years from the date
of application and may be renewed for 10-year periods. Application for
renewal should be made within the 12-month period before the expiration
of the last registration.
A mark may be removed from the register if:
(1) the mark was registered without an intention in good faith to
use it (including intention to use by a body corporate to be formed
or a proposed registered user if registration secured on the basis of
their intention to use), and in fact there has been no use in good
faith earlier than one month before the application for removal; or
(2) that up to one month before the date of the application for removal,
a continuous period of not less than three years had elapsed
during which the mark was registered and was not used in good
Nonuse may be excused if the registered proprietor can establish
that the mark was not used because of circumstances (whether affecting
traders generally or only the registered owner of the trademark)
that were an obstacle to the use of the trademark during the relevant
period. Use of the trademark with additions or alterations not
substantially affecting the identity of the trademark may be accepted
as equivalent to use of the trademark. There is a general judicial
discretion to refuse removal. Use must be genuine and commercial
use. An application for removal of a trademark on the grounds of
three years of continuous nonuse may not be made before a period of
five years has passed from the filing date in respect of the mark for
which cancellation is sought.
The Australian Custom Service may seize goods bearing a trademark
substantially identical with or deceptively similar to a registered
mark, following an objection filed by the registered proprietor. Goods
that are imported for the personal use of the importer and that are
not intended to be dealt with or provided in the course of trade may
not be seized. A person lodging a notice for seizure must also provide
security to cover any costs that the Australian Custom Service may
incur as a result of seizing the goods. After seizing any suspected
infringing goods, the Australian Custom Service will issue a formal
notification to the objector who then has ten working days, from the
date the notification is given, to begin court proceedings for infringement
and to notify the Australian Custom Service that such proceedings
have been commenced. One extension of time of 10 working days
is obtainable. If proceedings are not commenced within the prescribed
time, the Australian Custom Service is required to release the seized
goods to the importer. Furthermore, if after three weeks from the day
on which such action was brought, there is not in force at any time an
order of the court preventing the goods from being released, the Australian
Custom Service must release the goods to the importer.