3.11. Process procedures for the filing of a trade mark application

The processing of new applications and the fees vary depending on the method of filing.  Applications filed in paper will require a more stringent check in relation to fees paid and minimum filing requirements whereas electronically filed applications (including Headstart) do not.

An application for registration of a trade mark will be treated as having been filed on the day it is received unless it does not meet the minimum filing requirements or the appropriate fee has not been paid.

Each new application will follow the below process:

11.1  Application check

• Has the appropriate fee been paid
• Does the application contain:
  • Name of the applicant
  • A contact
  • A statement or indication that is an application for registration of a trade mark
  • A clear representation of the trade mark
  • Specification of the goods and/or services

11.2  Application capture

If an application meets the automated application check requirements it is then filed in RIO. The application is then “Published” at which time it is queued to be published in Australian Trade Mark Search.  A standard notice is also generated containing the Trade Mark number allocated and the application details that have been captured. This notice is dispatched to the  online services account (for any applications filed online) or via post to the Address for Service (for any other approved means). It is important for the applicant to check the details that have been captured and to inform the office of any discrepancies.

11.3

International Registrations Designating Australia (IRDAs) are received from WIPO and downloaded electronically.  They do not need to go through the fee or minimum filing check, but when captured they follow the same process as a standard domestic application.

11.4

TM Headstart service requests are processed in the same way as standard applications except the request is not considered ‘Filed’ and therefore are not given a filing date or published until after the Part 2 fee is paid at which time they follow the same process as a standard application.

11.5  Applications that do not meet the minimum filing requirements but the appropriate fee has been paid

11.5.1

The Registrar will notify the applicant of any deficiency in the filing requirements of the application.  Notification of the requirements to be met must be given to the applicant (subreg 4.2(2)).  If an applicant is given any verbal notification regarding filing requirements or the fees for an application for registration (other than where the applicant is in a position to immediately respond to the notification), notification of the requirements to be met must be confirmed in writing.

11.6  Applications that meet minimum filing requirements but the fee is not paid or underpaid

11.6.1

The Registrar will notify the applicant of the deficiency in the fees.

Notification of the requirements to be met must be given to the applicant (reg 21.23).  If an applicant is given any verbal notification regarding the fees for an application for registration (other than where the applicant is in a position to immediately respond to the notification), notification of the requirements to be met must be confirmed in writing.

The checking of fee deficiencies and minimum filing requirement deficiencies occur at separate times. The fee is checked first. If the fee is underpaid, a notice of underpayment will be issued. Once the fee deficiency is rectified the application will be sent to RIO where the minimum filing requirement check will be actioned.   If there are any fee and/or minimum filing requirement deficiencies, the application will not be processed until all deficiencies have been rectified.

When the deficiencies are rectified, the application will be given the filing date of the day on which the correspondence rectifying the final deficiency is received. The application is then captured as per 11.2 above.

If the fee deficiency is not rectified within 10 days and/or the minimum filing requirements deficiency is not rectified within two months of the date of the letter notifying them, the application will be deemed not filed and a refund of the filing fee will occur. The deadline is not extendible (paragraph 21.28(1)(a)).

If a response is received from the applicant during the time allowed, but the deficiency is not satisfactorily rectified, the applicant should be notified, verbally if possible, in an attempt to resolve the matter quickly.