Overview
Applications for registration of trade marks filed in Australia by applicants based in other countries are:
- Paris Convention Application based on one or more Priority Applications
- Non-Convention application
Australia is also a member of the Madrid Protocol and can be designated in an international trade mark application. We can assist with any requirements that may arise during the examination stage in Australia.
Minimum Filing Requirements
| Information and Documents Required | Paris Convention Application | Non-Convention Application |
|---|---|---|
| Applicant Name and Address | At Filing | At Filing |
| Trade Mark (1 sample) | At Filing | At Filing |
| English Translation of any non-English words appearing in the Trade Mark | Normally Not Required (1) | Normally Not Required (1) |
| English Transliteration of any non-English alphabet characters appearing in the Trade Mark | At Filing | At Filing |
| Goods and Services | At Filing | At Filing |
| Classes | At Filing | At Filing |
| Priority Application Details (country / number / filing date) | At Filing | N/A |
| The goods/services of each class of the priority application | Normally Not Required (2) | N/A |
| Certified Copy of Priority Application | Normally Not Required (3) | N/A |
| Verified English Translation of Priority Application | Normally Not Required (4) | N/A |
Filing Notes
- N/A = Not Applicable to this type of application.
- An English translation is only required if requested by the Trade Marks Office during examination or other proceedings.
- The goods/services of each class of the priority application(s) is required when the goods/services specification of the Australian application differs from, or is broader than, the priority application; or when a claim to more than one priority application is made.
- A Certified Copy of the Priority Application is only required if requested by the Trade Marks Office during examination or other proceedings.
- A Verified English Translation of a Priority Application, which is not in English, is required only if requested by the Trade Marks Office during examination or other proceedings.
Application for a Series of Trade Marks
The Australian Trade Marks Act permits the filing of an application to register a series of trade marks. A series of trade marks consists of two or more trade marks that resemble each other in material particulars, and differ only in respect of one or more of the following:
- statements or representations as to the goods or services in relation to which the trade marks are used or are intended to be used
- statements or representations as to number, price, quality or names of places
- the colour of any part of the trade mark.
If the Trade Marks Office determines that the trade marks in a series application do not constitute a valid series, it will be necessary to delete one or more of the trade marks from the application.
Whilst it is possible to file divisional trade mark applications in Australia, it is not possible to file a divisional application for a trade mark that is deleted from an invalid series trade mark application. Accordingly, we recommend that our advice is sought whenever a series trade mark application is contemplated.