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Australian Non-Convention Trade Mark Application 

Filing Requirements

  • No deadline to file.  

  • To file the Application we will require: 

    • A representation of the trade mark. 

    • A list of the goods and services to be covered. 

    • Full name and address of the Owner. 

  • No formal documents are required.

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Examination 

  • The Application is generally examined within 3-6 months from filing. If objections are raised, an Examination Report will issue. 

  • Deadline to Obtain Acceptance – 15 months from the issue date of the Examination Report.  

  • NB THE DEADLINE IS NOT A RESPONSE DEADLINE. An Examiner will require at least 4 weeks to consider any response lodged.  

  • The deadline can be easily extended by up to 6 months upon payment of monthly extension fees.  

  • Deferment can also be requested in certain circumstances.  

 

Acceptance 

  • Upon Acceptance the Application is advertised for a two-month period, during which a third party may oppose the Application. 

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Registration 

  • If no opposition is filed, the Application will proceed to Registration and the Certificate of Registration will issue (in electronic form only).  

  • The initial term of registration is 10 years from the filing date. The Registration can be renewed every 10 years, indefinitely.

  • The Registration may be vulnerable to removal for non-use, upon application by a third party, if the mark has not been used for a continuous period of 3 years following the date the mark was entered in the Register. 

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Australian Convention Trade Mark Application 

Filing Requirements 

  • Deadline to file – 6 months from the filing date of the first filing in a Convention country.  

  • For the Application we will require: 

    • A representation of the trade mark. 

    • A list of the goods and services to be covered. 

    • Full name and address of the Owner. 

    • The country, trade mark number and filing date of the first filing.  

  • No formal documents are required.

  • A copy of the priority document is not required.

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Examination 

  • The Application is generally examined within 1-2 months from filing. If objections are raised, an Examination Report will issue. 

  • Deadline to Obtain Acceptance – 15 months from the issue date of the Examination Report.  

  • NB THE DEADLINE IS NOT A RESPONSE DEADLINE. An Examiner will require at least 4 weeks to consider any response lodged.  

  • The deadline can be easily extended by up to 6 months upon payment of monthly extension fees.  

  • Deferment can also be requested in certain circumstances.  

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Acceptance 

  • Upon Acceptance the Application is advertised for a two-month period, during which a third party may oppose the Application. 

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Registration 

  • If no opposition is filed, the Application will proceed to Registrations and the Certificate of Registration will issue (in electronic form only).  

  • The initial term of registration is 10 years from the filing date. The Registration can be renewed every 10 years, indefinitely.  

  • The Registration may be vulnerable to removal for non-use, upon application by a third party, if the mark has not been used for a continuous period of 3 years following the date the mark was entered in the Register.

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Australian Trade Mark Opposition

Filing Opposition

  • Deadline - a Notice of Intention to Oppose must be filed within two months of the advertisement date. 

  • Within one month from the date the Notice of Intention to Oppose is lodged, the Opponent must file a Statement of Grounds and Particulars. 

  • The Applicant then has one month to file a Notice of Intention to Defend. If this is not filed, the opposition is successful.

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Evidence 

  • If a Notice of Intention to Defend is filed, the Office will set a deadline of three months for the Opponent to lodge Evidence in Support. 

  • The Applicant is then given three months to lodge Evidence in Answer. 

  • The Opponent is then given two months to file Evidence in Reply.

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Hearing 

  • Once the evidence phase is complete, the parties are invited to request a Hearing. The Hearing Options are: 

    • To be heard in person/via video conference.

    • To be heard via written submissions only (and not appear at the Hearing).

    • Request a decision without a Hearing.

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Decision

  • Following the Hearing, the Office issues a formal written decision. This decision can be appealed to the Federal Court. 

  • Costs are generally awarded against the unsuccessful party. These are determined by a set scale.

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