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Getting a Headstart on Trade Mark protection in Australia

Gina Tresidder, Kate Littlewood and Michael Cassidy

Do you have clients who wish to obtain trade mark protection in Australia? 

Australia’s trade mark system is quite unique to other jurisdictions in that it allows an Applicant to opt to have their application pre-assessed before it is formally filed. In other words, it allows an Applicant to ‘test the waters’ on registrability and obtain a preliminary view from the Examiner within a few days. This pre-application is known as a Trade Mark Headstart Request (TM Headstart Request). New Zealand has a similar system.

Key Points

  • When filing trade mark applications overseas it is always a good idea to have your local agents conduct clearance searches to confirm the mark is available for registration. However, this can be cost prohibitive when you are dealing with a large portfolio or multiple marks.
  • Australia has a unique system whereby applicants can file a draft of their application - known as a TM Headstart Request – along with a reduced ‘part one’ fee to have their application pre-assessed for registrability issues.
  • If no issues are raised, the draft application can be transformed into a standard application on payment of the ‘part two’ fee. Overall costs are similar to simply filing a standard application, but the applicant gets the benefit of the Examiner’s preliminary assessment in a few days, rather than waiting months for a standard application.

What is a TM Headstart Request?

The TM Headstart Request process is a very useful preliminary tool that allows an applicant to file a draft trade mark application with IP Australia, in order to obtain the Examiner’s preliminary views on the registrability of an Applicant’s trade mark before committing to filing a formal application (i.e. the standard application).

It does not guarantee registration and is not necessarily a faster path to registration, but will assist the applicant in identifying any possible issues that may arise from the outset, without going to the expense of having a clearance search conducted.

In fact, with expected examination times of around three months, we are increasingly seeing clients opting to use the TM Headstart Request service so they can get an early indication of their prospects for registration.

As with all processes there are some pros and cons to note.

The pros:

  1. Turnaround time
    The Examiner’s advice on the TM Headstart Request is usually provided in around 5 business days, whereas, under a formal application, an applicant could be waiting up to around 3 months to find out whether there are any defects with the trade mark application.

  2. Costs
    The IP Australia application fees are similar regardless of whether the TM Headstart Request service is used or the Applicant commences with a formal application. Whilst the TM Headstart Request process is not necessarily cheaper, the fees are paid in two parts – the first part when you file the TM Headstart Request (which is non-refundable), and the second part when the TM Headstart Request is transformed into a formal application. If the Applicant decides not to proceed with transforming the TM Headstart Request into a formal application, the Part 2 fees are not payable.

  3. Ability to amend Application
    Applicants are given the flexibility to amend the application, including the trade mark, if potential defects are identified by the Examiner in the preliminary report. Most amendments attract a fee as they involve additional assessment by the Examiner. However, this is still preferable to allowing the trade mark to proceed to the formal application process with these defects, where the opportunity for amendment is much more limited, and in some cases the formal application would need to be re-filed as a fresh application to correct defects or change the mark.

  4. Confidential
    The process is confidential and therefore other traders in the marketplace will not see the Applicant’s proposed trade mark until it is transformed into a formal application.

  5. Level of comfort on registrability
    If the results of the preliminary report are favourable, the Applicant can take a level of comfort that the trade mark is sufficiently distinctive, does not conflict with earlier marks and meets all other requirements of registration. However, the Applicant does not have the benefit of statutory protection until the trade mark has been registered. It is relevant to note that Examiners are not bound by the preliminary report but adverse or differing results during examination of the formal application are rare. 
The cons:
  1. Descriptions are limited
    The scope of protection afforded by a trade mark application is defined by the goods and services listed in the application, which are categorised in 45 internationally recognised classes. However, if the TM Headstart Request service is utilised, the goods and services must be chosen from IP Australia’s ‘picklist’ of acceptable terms. 

  2. Only standard trade marks 
    The TM Headstart process can only be used for standard word or logo trade marks. It cannot be utilised for certain trade marks including:
    (a) Special kinds of signs;
    (b) Series trade marks;
    (c) Certification trade marks;
    (d) Defensive trade marks; or
    (e) Divisional applications.
    Only the standard application process is available for these types of trade marks.

  3. Priority Date
    Trade mark rights date from when the TM Headstart Request is transformed into a formal application, not from when the TM Headstart Request is filed. If a third party files a trade mark application for a similar mark while the Applicant is still considering the Examiner’s comments, the rights of the third party will prevail.

  4. Identification of issues 
    The preliminary report only considers pending or registered trade marks on the Trade Marks Register that may pose an obstacle to registration. The Examiner will not conduct any common law searches or advise the applicant as to whether use of the new brand might infringe the unregistered rights of any third parties.

  5. Time limits
    Once the preliminary report has been issued, an applicant has 5 business days within which to pay the part two fee and convert the TM Headstart Request to a formal application. This timeframe cannot be extended.

How we can help

Please contact Russell Kennedy’s expert IP team members Gina Tresidder, Kate Littlewood or Michael Cassidy for advice on all aspects of trade mark protection in Australia.

If you’d like to stay up to date with Russell Kennedy Alerts and Events, you can subscribe to our mailing list here.

The information contained in this Insight is intended as general commentary and should not be regarded as legal advice. Should you require specific advice on the topics or areas discussed please contact the Russell Kennedy lawyers listed above.

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