60.2.4 Certifying Process

2.4.1  Relevant Legislation

Madrid Protocol Regulations

Rule 2 Communication with the International Bureau

Trade Mark Regulations

Regulation 17A.8 Functions of the Registrar

Regulation 17A.9 Time limit for Registrar to send Application to the International Bureau

2.4.2  General Description

IP Australia must certify the date on which the international application was received by IP Australia. Where the international application is certified and forwarded to the IB within two months of receipt, the date of receipt in Australia will be the date recorded for the resulting international registration. Regulation 17A.9 states that the Registrar must take all reasonable steps to ensure the international application is received by the IB within 2 months.

The Office of origin must also certify that the details on the international application accord with those on the basic trade mark(s).  When forwarded to the IB the international application must include the certification of the Office of origin.  Certification by IP Australia as the Office of origin will mean that:

• The applicant(s) for the international application is the same as the owner(s) of the basic trade mark(s).

• The mark is identical to the mark covered by the basic trade mark(s).

Note:  If the basic trade mark application or registration consists of a series of trade marks, the applicant should select one of the trade marks in the series to be the subject of the international application.

• If the basic trade mark is a colour mark, a three-dimensional mark, a sound mark, a collective mark or a certification mark, the mark on the international application will be of the same type.

• Any written description or endorsement on the basic trade mark that clarifies the scope of an application or registration should also appear on the international application.  The goods and/or services claimed in the international application are the same as, or less than, the goods and/or services claimed in the basic trade mark(s) at the time the international application is certified.  The exact wording need not be used, however the goods and/or services claimed in the international application must be either specifically included in the basic trade mark or fall within the scope of a broader claim.

• When the international application is based on two or more basic trade mark(s) the office must be able to certify that the applicant, the mark, the type of mark, any relevant written description or endorsement included on any of the basic trade marks appears on the international application. The combined goods and/or services of the basic trade mark(s) must cover all the goods and/or services claimed in the international application.

2.4.3  Process

• An international application is filed with IP Australia through WIPO eFiling, accessed via the the online services page. Physical MM2 forms are only accepted where there is maintenance being performed with IP Australia’s or WIPO's systems.

• The international fees are paid directly to WIPO.

• All sections of the international application must have been completed. Where the US has been designated, a signed and dated form MM18 (Declaration of intention to use the mark [United States of America]) should accompany the international application. In the event that a completed MM18 form is not included, this will not prevent certification but will be identified to the applicant should other formalities issues need to be raised. The applicant should be advised if all sections of the application form (or form MM18) have not been completed.

• The date of receipt on the international application should be recorded.

• The international application should be allocated a MAN reference number if received via ALS.

• For ALS applications, the application form is saved to the workfile in Objective.

Note: This information is not included in RIO or on Australian Trade Mark Search.  Australian Trade Mark Search is the searchable trade marks database on IP Australia's web site.

• It should be checked to ensure that the applicant(s) has completed the Entitlement to File section of the form.  The applicant must have Australian nationality, live in Australia, or have a real and effective commercial or industrial establishment in Australia.  Where entitlement to file is based on real and effective commercial or industrial establishment, the address of that establishment must be given.  Where the entitlement to file is based on the applicant living in Australia, the address of residence must be given if the address given under the Applicant's Details on the form is not an Australian address.

• It should be checked to ensure that the basic trade mark(s) and international application details are in accord.  Where the details are not the same, the applicant or their representative should be notified urgently.

The details to be checked are that:

• the owners are the same

• the addresses are the same or the differences explained  

  • If it is obviously the same owner, they or their representative can be contacted and advised to bring the addresses into accord.  Certification will not be delayed in this instance.

  • If there is doubt that it is the same owner, the applicant or their representative is to be advised that certification will not occur until the reason for the different addresses has been explained and, where necessary, corrected.

• the marks are identical

  • If the marks are not identical, the applicant or their representative is to be advised that certification cannot occur.  If the mark on the international application is incorrect, it may be corrected and certification can occur.

  • Where the basic trade mark is a series of trade marks, the applicant should select one of the series for the international application. Should the applicant wish to seek protection for any other marks in the series, a new international application will need to be filed for each mark.

• the goods/services claimed on the international application are the same as, or less than those covered by the basic trade mark

  • If the basic trade mark has not yet been accepted, the specification of the basic trade mark(s) should be checked to ensure it is in the correct class. Although IP Australia only has to certify that the goods and/or services cover those specified in the international application. If the specification on the basic trade mark is not in order, the applicant or their representative can be notified so that the classification on the basic trade mark can be corrected. The same amendment may be needed on the international application.

• certain indications appearing on the international application may also appear on the basic trade mark(s)

  • This includes colour restrictions, colour claims and descriptions of shape and sound marks. If they are not the same, the applicant or their representative must be advised that certification cannot occur until they are in accord.

• the applicant’s entitlement to file must be stated

  • If the applicant does not meet the requirements (i.e. state that he/she is an Australian national, domiciled in Australia, or has a real and effective commercial or industrial enterprise in Australia) the application cannot be certified and forwarded to the IB. The applicant or their representative must be advised. Joint applicants must all state the nature of their entitlement to file. This need not be the same criterion for each person.  
    
    It will be necessary to use a Continuation Sheet if there is insufficient space on the form. The heading for the additional information should read Item 3 Entitlement to File continued. This applies only to ALS applications.

• If the international application cannot be certified, the applicant(s) or their representative should be contacted urgently via letter (for ALS applications) or email (for eFiling applications). The letter/email should include:

  • suggestions to resolve the problems if possible (ALS letters only),

  • a reminder that the filing date of the international application will be lost if both the international application and the Office’s certification are not received by the IB within two months of the date the application was lodged.

• Once certification is approved on the system, a notice is sent to the representative, address for correspondence or applicant as applicable.

• The international application and the Office’s certification are forwarded to the IB electronically.

  • eFiling applications are automatically transmitted to WIPO in the system once the application is certified.

  • ALS applications are uploaded to WIPO via MOP.

• If the IB notifies IP Australia of irregularities on the international application IP Australia will:

  • determine if the Office must rectify the irregularities or if it is the applicant's responsibility.

  • contact the applicant(s) about the irregularity where necessary.  

  • if the Office is responsible for rectifying the irregularity, ensure the rectification is received by the IB within the specified 2 or 3 month period.

  • If rectification of irregularities is received during the prescribed period, the international application retains the original priority date.

  • If rectification of irregularities is not received during the prescribed period, the international application is considered abandoned.

• After the international registration is recorded in the International Register by the IB, the IB sends the Certificate of Registration to the applicant who is then known as the holder.  The IB also advises the Office of origin of the IR number.

• The international registration number and registration date are entered electronically into RIO.