Do you have clients seeking trademark protection in Australia?
Australia’s trademark system is quite unique to other jurisdictions in that it allows an applicant to opt for a pre-assessment of their application before it is formally filed. In other words, it allows an applicant to “test the waters” on registrability and obtain a preliminary examiner’s opinion within days. This pre-request is known as a Trade Mark Headstart Request (TM advance request). New Zealand has a similar system.
- When filing trademark applications abroad, it is always a good idea to ask your local agents to carry out clearance searches to confirm that the mark is available for registration. However, this can be prohibitively expensive when dealing with a large portfolio or multiple brands.
- Australia has a unique system for applicants to submit a draft of their application – known as a TM Headstart Request – as well as a reduced fee for the first part to have their application pre-assessed for data issues. recordability.
- If no issues are raised, the draft application can be turned into a standard application upon payment of the “second party” fee. The overall costs are similar to simply filing a standard application, but the applicant benefits from the examiner’s preliminary assessment within days, rather than waiting months for a standard application.
What is a TM advance request?
The TM Headstart Request process is a very useful preliminary tool which allows an applicant to file a draft trademark application with IP Australia, in order to obtain the examiner’s preliminary opinion on the registrability of the trademark. an applicant before committing to filing a formal application (i.e. standard application).
It does not guarantee registration and is not necessarily a faster path to registration, but will help the applicant identify any issues that may arise upfront, without having to have an authorization search performed.
In fact, with expected review times of around three months, we are seeing more and more clients opting to use the TM Headstart Request service so they can have an early indication of their registration prospects.
As with all processes, there are pros and cons to note.
- Completion time Examiner’s opinion on the TM advance application is usually provided within about 5 working days, whereas under a formal application an applicant may wait up to about 3 months to find out if there are defects in the trademark application.
- Costs IP Australia’s request fee is similar whether the TM Headstart Request service is used or the requestor begins with a formal request. Although the TM Advance application process is not necessarily cheaper, the fee is paid in two parts – the first part when you file the TM Advance application (which is non-refundable) and the second part when the TM advance request is transformed into an official request. If the applicant decides not to proceed with the transformation of the TM Advance Application into a formal application, the Part 2 fee is not payable.
- Possibility to modify the request Applicants have the option of amending the application, including the trademark, if potential defects are identified by the examiner in the preliminary report. Most modifications incur a fee as they involve additional review by the reviewer. However, this is still preferable to allowing the brand to proceed with the formal application process with these defects, where the possibility of modification is much more limited and, in some cases, the formal application would have to be refiled as a new one. demand. to correct defects or change the brand.
- Confidential The process is confidential and therefore other traders in the market will not see the applicant’s proposed trademark until it has been turned into an official application.
- Recordability comfort level If the results of the preliminary report are favourable, the applicant can be assured that the mark is sufficiently distinctive, does not conflict with prior marks and satisfies all other conditions for registration. However, the applicant does not enjoy legal protection until the mark has been registered. It is pertinent to note that reviewers are not bound by the preliminary report, but unfavorable or divergent results when reviewing the formal application are rare.
The inconvenients :
- Descriptions are limited The scope of protection afforded by a trademark application is defined by the goods and services listed in the application, which are classified into 45 internationally recognized classes. However, if the TM Headstart Request service is used, the goods and services must be chosen from IP Australia’s ‘selection list’ of acceptable terms.
- Only standard brands The TM Headstart process can only be used for standard wordmarks or logotypes. It cannot be used for certain marks, including: (a) Special types of signs; (b) serial marks; c) Certification marks; d) Defensive marks; or (e) divisional applications. Only the standard application process is available for these types of marks.
- Priority date Trademark rights date from the time the TM Advance Application is made into a formal application, not from the time the TM Advance Application is filed. If a third party files a trademark application for a similar mark while the applicant is still reviewing the examiner’s comments, the rights of the third party will prevail.
- Identifying problems The preliminary report only examines trademarks that are pending or registered in the trademark register that may prevent registration. The examiner will not perform any common law search or advise the applicant whether use of the new mark might infringe the unregistered rights of third parties.
- Time limit Once the preliminary report has been released, an applicant has 5 business days to pay the Part 2 fee and convert the TM advance application into a formal application. This deadline cannot be extended.