4. Convention documents

Date Published

Generally no documentation regarding the convention claim will be required. In the course of examining an application, the Registrar may require (in writing) that the applicant file a certified copy of any earlier application together with, if appropriate, a properly verified translation of the earlier application (subreg 4.11(1)). If this is done the examiner must make sure that the applicant is the same on the earlier application as on the convention application or that title has passed from one to the other.

Two situations where the Registrar may request such documentation are as follows:


4.1

Where an application claiming overseas priority constitutes a citation against another application made in Australia specifically because of the earlier priority date claimed. In these cases, the examiner must independently verify the claim. They may be able to do so by searching the on-line trade marks database of the relevant overseas office, and if so will copy the information to the file of the mark under examination. It will not be necessary to request documentation in this case. Otherwise, a request will be made to the owner of the application claiming a right of priority for the Convention documentation to be filed in order that the priority claim can be verified. However, if the cited mark is an international registration designating Australia (IRDA) then it is not necessary to verify the claim, as the Office of Origin has already verified it and it has been accepted by the International Bureau of WIPO.

The application which has had the citation taken against it should be examined and reported on as normal, with the report if necessary advising that verification of the claim to priority of the cited trade mark is being sought and that the applicant will be notified if the citation is withdrawn because the priority claim was not in order. The applicant should be given information on deferment options.


4.2

Where an opposition proceeding relates to an application in respect of which the applicant claims a right of priority. In such cases an opponent can request that the Registrar send the opponent a copy of the earlier application. Where this has been requested the Registrar will obtain certified copies (translated if necessary) from the file if the documents are on file, or from the applicant if the documents are not already on file. A copy of the documents will then be sent to the opponent (reg 5.18). Although the Registrar has no power to enforce this request, any inconvenience or extra extension fees borne by the opponent as a result of the applicant's non co-operation at this stage may be taken into account when costs are determined at the conclusion of proceedings.