Australian Trade Marks Attorney not always required

Australian Trade Marks Attorney not always required – 17 October 2016

Provisional refusal of International Trade Mark Registrations

With a recent drop in trade mark official filing fees, designating Australia in an international registration under the Madrid Protocol just became 40% less expensive. With a 13% drop in the Australian dollar against the US dollar between October 2014 and October 2016, official fees for US applicants are just half (51.4%), and for UK applicants are just two-thirds (66%), of what they were two years ago.

Sometimes you won’t even need an Australian attorney to deal with any provisional refusal (office action) of an international registration. If you like to give advice, rather than tell the client “hey look, an objection – do you want me to find out what we can do?”, please read on for simple answers on what can be done with provisional refusals in Australia.


Beware – the deadline in an Australian provisional refusal is the deadline to obtain acceptance of the mark, NOT a response deadline.

If you run out of time, you cannot file a divisional application from an IRDA.

You won’t need a local Australian trade marks attorney if:

  • The Examiner has not objected to commercially important goods / services:
    • wait 15 months for the non-objected goods / services to be accepted and reported through WIPO; or
    • lodge an amendment through WIPO to delete the objected goods / services. The non-objected goods / services will be accepted and reported through WIPO in a few months;
  • The client changes its name or address, or assigns the mark – record it though WIPO.

You will need a local Australian trade marks attorney to:

  • Notify the Examiner that a cited application has now lapsed;
  • Notify the Examiner that a cited registration has now expired (and is beyond the 6 month renewal grace period);
  • Submit arguments on inherent distinctiveness (descriptiveness) of a mark;
  • Lodge evidence of reputation in a mark alleged to lack inherent distinctiveness;
  • Submit arguments on similarity of marks, goods or services;
  • Lodge evidence of honest concurrent use, prior continuous use or other circumstances;
  • Extend the acceptance deadline for a maximum of 6 additional months (with fees, requested before the deadline);
  • Obtain an extension of time after the deadline;
  • Defer the acceptance deadline for either 6 months OR indefinitely** while:
    • a cited trade mark application is pending; or
    • a non-use removal action under section 92 or regulation 17A.48 against a cited trade mark is in progress; or
    • a cited trade mark is not renewed but is still within the 6 month grace period; or
    • proceedings to have the Register or the Record of International Registrations rectified in respect of the cited trade mark are in progress; or
    • seeking to establish honest concurrent use, prior use or other circumstances (maximum 6 months for this ground).
  • Make a non-use application against a cited mark;
  • Oppose registration of a pending cited application;
  • Record a licence to use a trade mark (authorised user) on IP Australia’s TM Register to ensure the licensee is notified of any attempts to record a change of owner;
  • Record a securities interest (financial interest in a mark or a financial interest in a licence to a mark) on both IP Australia’s TM Register and the Personal Properties Securities Register to ensure the interest holder is a) notified of and b) able to defeat the claims of, a bona-fide purchaser of the registration or a creditor should the registered owner sell or go into administration.

Contact us for our free detailed briefing note on responding to provisional refusal of an international resignations designating Australia (IRDA). You can then give your client an idea of what is possible and what those options are likely to cost, upfront.

** Deferment not available if extended fee paying period already entered.

Authored by

Belinda Wadeson

Trade Marks & Patent Attorney