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- Part 1 Introduction, Quality
- 1. Introduction
- 2. Quality Management at IP Australia
- 3. Monitoring and Measuring Quality at IP Australia
- 4. Examination Quality Standards
- 5. Practice Change Procedure
- Part 2 General Filing Requirements
- Relevant Legislation
- 1. How a document is filed
- 2. Filing of Documents - requirements as to form
- 3. Non-compliance with filing requirements
- 4. Filing Process (excluding filing of applications for registration)
- Part 3 Filing Requirements for a Trade Mark Application
- Relevant Legislation
- 1. Who may apply?
- 2. Form of the application
- 3. Information required in the application
- 4. When is an application taken to have been filed?
- 5. The reason for having minimum filing requirements
- 6. The minimum filing requirements
- 7. Consequences of non compliance with minimum filing requirements
- 8. Other filing requirements
- 9. Fees
- 10. Process procedures for non payment or underpayment of the appropriate fee
- 11. Process procedures for the filing of a trade mark application
- Part 4 Fees
- Relevant Legislation
- 1. Fees - general
- 2. Circumstances in which fees are refunded or waived
- 3. Procedures for dealing with "fee" correspondence
- 4. Underpayments
- 5. Refunds and or waivers
- 6. No fee paid
- 7. Electronic transfers
- 8. Disputed credit card payments/Dishonoured cheques
- Part 5 Data Capture and Indexing
- Part 6 Expedited Examination
- Part 7 Withdrawal of Applications, Notices and Requests
- Relevant Legislation
- 1. Withdrawal of an application, notice or request
- 2. Who can withdraw an application, notice or request?
- 3. Procedure for withdrawal of an application, notice or request
- 4. Procedure for withdrawal of an application to register a trade mark
- Part 8 Amalgamation (Linking) of Trade Marks
- Relevant Legislation
- 1. Amalgamation of applications for Registration (Transitional)
- 2. Amalgamation (Linking) of Trade Marks under the Trade Marks Amendment Act 2006
- Part 9 Amendments and Changes to Name and Address
- Relevant Legislation
- 1. Introduction
- 2. Amendment of an application for a registration of a trade mark - general information
- 3. Amendment before particulars of an application are published (Section 64)
- 4. Amendment after particulars of an application have been published (Sections 63, 65 and 65A)
- 5. Amendments to other documents
- 6. Amendments after registration
- 7. Changes of name, address and address for service
- 8. Process for amendments under subsection 63(1)
- Part 10 Details of Formality Requirements
- Relevant Legislation
- Introduction
- 1. Formality requirements - Name
- 2. Formality requirements - Identity
- 3. Representation of the Trade Mark - General
- 4. Translation/transliteration of Non-English words and non-Roman characters
- 5. Specification of goods and/or services
- 6. Address for service
- 7. Signature
- 8. Complying with formality requirements
- Annex A1 - Abbreviations of types of companies recognised as bodies corporate
- Annex A2 - Identity of the applicant
- Part 11 Convention Applications
- Relevant Legislation
- 1. Applications in Australia (convention applications) where the applicant claims a right of priority
- 2. Making a claim for priority
- 3. Examination of applications claiming convention priority
- 4. Convention documents
- 5. Cases where multiple priority dates apply
- 6. Recording the claim
- 7. Effect on registration of a claim for priority based on an earlier application
- Part 12 Divisional Applications
- Relevant Legislation
- 1. Divisional applications - general
- 2. Why file a divisional application?
- 3. Conditions for a valid divisional application filed on or after 27 March 2007
- 4. In whose name may a divisional application be filed?
- 5. Convention claims and divisional applications
- 6. Can a divisional application be based on a parent application which is itself a divisional application? What is the filing date in this situation?
- 7. Can the divisional details be deleted from a valid divisional application?
- 8. Divisional applications and late citations - additional fifteen months
- 9. Divisional Applications and the Intellectual Property Laws Amendment (Raising the Bar) Act 2012
- Annex A1 Divisional Checklist
- Part 13 Application to Register a Series of Trade Marks
- Relevant Legislation
- 1. Series of Trade Marks - Act
- 2. Material Particulars
- 3. Provisions of Paragraphs 51(1)(a),(b) and (c)
- 4. Applying Requirements for Material Particulars and Provisions of Paragraphs 51(1)(a), (b) and (c)
- 5. Restrict to Accord
- 6. Examples of Valid Series Trade Marks
- 7. Examples of Invalid Series Trade Marks
- 8. Divisional Applications from Series
- 9. Linking of Series Applications
- 10. Colour Endorsements
- Part 14 Classification of Goods and Services
- Relevant Legislation
- 1. The purpose of classification
- 2. The classification system
- 3. Requirement for a clear specification and for correct classification
- 4. Classification procedures in examination
- 5. Principles of classification and finding the correct class for specific items
- 6. Wording of the specification
- 7. Interpretation of specifications
- 8. International Convention Documents
- Annex A1 - History of the classification system
- Annex A2 - Principles of classification
- Annex A3 - Registered words which are not acceptable in specifications of goods and services
- Annex A4 - Searching the NICE classification
- Annex A5 - Using the Trade Marks Classification Search
- Annex A6 - Cross search classes - pre-June 2000
- Annex A7 - Cross search classes - June 2000 to December 2001
- Annex A8 - Cross search classes from 1 January 2002
- Annex A9 - Cross search classes from November 2005
- Annex A10 - Cross search classes from March 2007
- Annex A11 - Cross search classes from January 2012
- Annex A12 - Cross search classes from January 2015
- Annex A13 - List of terms too broad for classification
- Part 15 General Provision for Extensions of Time
- Relevant Legislation
- 1. When the general provision applies
- 2. When the general provision does not apply
- 3. Circumstances in which the Registrar must extend time
- 4. Grounds on which the Registrar may grant an extension of time
- 5. Form of the application
- 6. Extensions of time of more than three months
- 7. Review of the Registrar's decision
- Part 16 Time Limits for Acceptance of an Application for Registration
- Relevant Legislation
- 1. What are the time limits for acceptance of an application to register a trade mark?
- 2. Response to an examination report received within four (or less) weeks of lapsing date
- Part 17 Deferment of Acceptance
- Relevant Legislation
- 1. Deferment of Acceptance - introduction
- 2. Circumstances under which deferments will be granted
- 3. Period of deferment
- 4. The deferment process where the applicant has requested deferment
- 5. The deferment process where the Registrar may grant deferment on his or her own initiative
- 6. Termination of deferment
- 7. Transitional practice
- Annex A1 - Deferment of acceptance date - Grounds and time limits
- Part 18 Finalisation of Application for Registration
- Relevant Legislation
- 1. Introduction
- 2. Accepting an application for registration
- 3. Rejection of an application for registration
- Part 19A Use of a Trade Mark
- Relevant Legislation
- 1. Use of a trade mark generally
- 2. Use 'as a trade mark'
- 3. Use 'in the course of trade'
- 4. Australian Use
- 5. Use 'in relation to goods or services'
- 6. Use by the trade mark owner, predecessor in title or an authorised user
- 7. Use of a trade mark with additions or alterations
- 8. Use of multiple trade marks
- Part 19B Rights Given by Registration of a Trade Mark
- Relevant Legislation
- 1. The trade mark as property
- 2. What rights are given by trade mark registration?
- 3. Rights of an authorised user of a registered trade mark
- 4. The right to take infringement action
- 5. Loss of exclusive rights
- Part 20 Definition of a Trade Mark and Presumption of Registrability
- Relevant Legislation
- 1. Definition of a trade mark
- 2. Background to definition of a trade mark
- 3. Definition of sign
- 4. Presumption of registrability
- 5. Grounds for rejection and the presumption of registrability
- Part 21 Non-traditional Signs
- Relevant Legislation
- 1. Non-traditional signs
- 2. Representing non-traditional signs
- 3. Shape (three-dimensional) trade marks
- 4. Colour and coloured trade marks
- 5. "Sensory" trade marks - sounds and scents
- 6. Sound (auditory) trade marks
- 7. Scent trade marks
- 8. Composite trade marks - combinations of shapes, colours, words etc
- 9. Moving images, holograms and gestures
- 10. Other kinds of non-traditional signs
- Part 22 Section 41 - Capable of Distinguishing
- Relevant Legislation
- 1. Registrability under section 41 of the Trade Marks Act 1995
- 2. Presumption of registrability
- 3. Inherent adaptation to distinguish
- 4. Trade marks considered sufficiently inherently capable of distinguishing
- 5. Trade marks that have limited inherent capacity to distinguish but are not prima facie capable of distinguishing
- 6. Trade marks having no inherent adaptation to distinguish
- 7. Examination
- Registrability of Various Kinds of Signs
- 8. Letters
- 9. Words
- 10. Phonetic equivalents, misspellings and combinations of known words
- 11. Words in Languages other than English
- 12. Slogans, phrases and multiple words
- 13. Common formats for trade marks
- 14. New terminology and "fashionable" words
- 15. Geographical names
- 16. Surnames
- 17. Name of a person
- 18. Summary of examination practice in relation to names
- 19. Corporate names
- 20. Titles of well known books, novels, stories, plays, films, stage shows, songs and musical works
- 21. Titles of other books or media
- 22. Numerals
- 23. Combinations of letters and numerals
- 24. Trade marks for pharmaceutical or veterinary substances
- 25. Devices
- 26. Composite trade marks
- 27. Trade marks that include plant varietal name
- Annex A1 Section 41 prior to Raising the Bar
- Annex A2 Flowchart of "Capable of Distinguishing"
- Part 23 Overcoming Grounds for Rejection under Section 41 - including Evidence of Use
- Relevant Legislation
- 1. Introduction
- 2. Submissions in rebuttal, amendments and informal information
- 3. Evidence of use - general requirements
- 4. Examining evidence - general
- 5. Specific evidence requirements for trade marks with no inherent adaptation to distinguish
- 6. Endorsements for applications overcoming section 41 grounds for rejection
- Annex A1 - Information for applicants on the preparation and presentation of a declaration including model layout
- Annex A2 - Model layout for statutory declaration/affidavit
- Annex A3 - Model layout for supporting statutory declaration
- Annex A4 - How to supply evidence of use of a Trade Mark under subsection 41(5) - for trade marks with a filing date prior to 15 April 2013
- Annex A5 - How to supply evidence for use of a Trade Mark under subsection 41(6) - for trade marks with a filing date prior to 15 April 2013
- Annex A6 - How to supply evidence of use of a trade mark under subsection 41(4) - for trade marks with a filing date on or after 15 April 2013
- Annex A7 - How to supply evidence of use of a trade mark under subsection 41(3) - for trade marks with a filing date on or after 15 April 2013
- Part 24 Disclaimers
- Relevant Legislation
- 1. What is a disclaimer?
- 2. Request for a voluntary disclaimer
- 3. Effect of a disclaimer on registration
- 4. Effect of a disclaimer on examination
- 5. Amendment of disclaimers
- 6. Revocation of disclaimers
- Part 26 Section 44 and Regulation 4.15A - Conflict with Other Signs
- Relevant Legislation
- 1. Introduction to section 44 and regulation 4.15A
- 2. Presumption of registrability and the application of section 44
- 3. Cross Class Search List
- 4. Similarity of goods and services
- 5. Similarity of trade marks
- 6. Factors to consider when comparing trade marks
- 7. Trade marks with the same priority/filing date
- 8. Assignment of applications and registrations
- 9. Grounds for rejection when the citation is in its renewal period
- Annex A1 - Citing multiple names
- Part 27 Overcoming Grounds for Rejection under Section 44
- Relevant Legislation
- 1. Introduction
- 3. Amending the goods and/or services of the applicant's specification
- 4. Negotiation with owner/s of conflicting trade mark/s
- 5. Filing evidence of honest concurrent use, prior use or other circumstances
- 6. Removal of the conflicting trade mark
- 7. Dividing the application
- Annex A1 - An example of a letter of consent
- 2. Legal submissions
- Part 28 Honest Concurrent Use, Prior Use or Other Circumstances
- Relevant Legislation
- 1. Introduction
- 2. Honest concurrent use - paragraph 44(3)(a)
- 3. Examining evidence of honest concurrent use - the five criteria
- 4. Other circumstances - paragraph 44(3)(b)
- 5. Conditions and limitations to applications proceeding under subsection 44(3)
- 6. Prior use - subsection 44(4)
- 7. Examining evidence of prior use
- 8. Endorsements where the provisions of subsection 44(3) or 44(4) and/or reg 4.15A are applied
- Annex A1 - Information sheet for trade mark applicants - Evidence of honest and concurrent, prior use or other circumstances
- Part 29 Section 43 - Trade Marks likely to Deceive or Cause Confusion
- Relevant Legislation
- 1. Trade marks likely to deceive or cause confusion
- 2. Connotation
- 3. Deception and confusion as a result of a connotation within a trade mark
- 4. Descriptions of goods/services
- 5. International Non-Proprietary Names and INN Stems
- 6. Names of Persons
- 7. Phonewords and Phone Numbers
- 8. Internet Domain Names
- 9. Geographical References
- 10. Claims to Indigenous Origin
- Annex A1 - Table of INN stems
- Part 30 Signs that are Scandalous and Use Contrary to Law
- Relevant Legislation
- 1. Introduction
- 2. Scandalous signs
- 3. Use contrary to law
- Annex A1 - Examples of Legislation which may trigger the provisions of section 42(b)
- Annex A2 - Official notice re copyright in the Aboriginal Flag
- Annex A3 - Defence force prohibited terms and emblems
- Annex A4 - Major Sporting Events protected words
- Part 31 Prescribed and Prohibited Signs
- Relevant Legislation
- 1. Prohibited signs - subsection 39(1)
- 2. Prescribed signs - subsection 39(2)
- 3. When does a ground for rejection exist under subsection 39(2)?
- 4. Practice regarding the signs prescribed under subsection 39(2) appearing in subreg 4.15
- 5. Other information relevant to examining trade marks that contain a prohibited and prescribed sign
- Part 32A Examination of Trade Marks for Plants (in Class 31)
- Relevant Legislation
- 1. Introduction
- 2. Examination of Plant Trade Marks
- 2.1 Section 42: Contrary to Law
- 2.2 Section 39: Prescribed Signs
- 2.3 Section 41: Capacity to Distinguish
- 2.4 Section 43: Deception and Confusion
- 2.5 Section 44: Comparison of Trade Marks
- 2.6 Non-Roman characters (NRC) and transliterations in class 31 plant examination
- Annex 1 - Applicable Section of the PBR Act
- Annex 2 - Applicable Sections of the UPOV Convention
- Annex 3 - Applicable Sections of the ICNCP
- Annex 4 - An Example of a PBR Letter of Consent
- Annex 5 - Case Law Summaries
- Annex 6 - How to Supply Evidence of Use of a Trade Mark for Plants and/or Plant Material
- Part 32B Examination of Trade Marks for Wines (in Class 33)
- Relevant Legislation
- 1. Introduction
- 2. Examination of Wine Trade Marks
- 2.1 Section 42: Contrary to Law
- 2.2 Section 43: Deception and Confusion
- 2.3 Section 41: Capacity to Distinguish
- 2.4 Section 44: Comparison of Trade Marks
- 3. Protected Terms in Specifications of Goods
- Part 33 Collective Trade Marks
- Relevant Legislation
- 1. What is a collective trademark?
- 2. Application of Act
- 3. Application for registration
- 4. Limitation on rights given by registered collective trade marks
- 5. Assignment or transmission of collective trade marks
- 6. Infringement of collective trade marks
- Part 34 Defensive Trade Marks
- Relevant Legislation
- 1. Australian trade marks law and defensive trade marks
- 2. Requirements for the filing of a defensive trade mark
- 3. Section of the Act NOT applying to defensive trade marks
- 4. Registrability of defensive trade marks
- 5. Grounds for rejection under Division 2 of Part 4 of the Act
- 6. Grounds for rejecting a defensive application under section 187
- 7. Evidence required for defensive applications
- 8. Rights given by defensive registration
- 9. Grounds for opposing a defensive registration
- 10. Cancellation of defensive trade marks
- Part 35 Certification Trade Marks
- Relevant Legislation
- 1. What is a certification trade mark?
- 2. Certification trade marks and geographical indications (GIs)
- 3. Sections of the Act NOT applying to certification trade marks
- 4. The registrability of certification trade marks
- 5. Rights given by, and rules governing the use of, certification trade marks
- 6. Assessment by the Australian Competition and Consumer Commission (ACCC)
- 7. Opposition to the registration of a certification trade mark
- 8. Variation of rules
- 9. Assignment of registered certification trade marks
- 10. Assignment of unregistered certification trade marks
- 11. Transmission of certification trade marks
- 12. Rectification of the Register and variation of rules by order of the court
- Annex A1 - Certification Trade Marks flow chart
- Part 38 Revocation of Acceptance
- Relevant Legislation
- 1. What is revocation of acceptance?
- 2. Reasons for revocation
- 3. Revocation process
- Part 39 Registration of a Trade Mark
- Relevant Legislation
- 1. Overview of registration
- 2. Particulars of registration
- 3. Format of Certificate of registration
- 4. Timing
- 5. Date and term of registration
- 6. Registration fees
- 7. Registration process
- 8. Notification of Protection process for International Registrations Designating Australia
- Annex A1 - Certificate of Registration
- Part 40 Renewal of Registration
- Part 41 Cancellation of Registration
- Relevant Legislation
- 1. What is the effect of cancelling a registration?
- 2. Why is a registration cancelled?
- 3. Cancellation process
- Part 42 Rectification of the Register
- Relevant Legislation
- 1. What is rectification?
- 2. What part does the Registrar play in rectification actions brought by a person aggrieved?
- 3. Rectification procedures
- Annex A1 - Flow chart of rectification procedure
- Part 43 Assignment and Transmission
- Relevant Legislation
- 1. What is assignment and transmission?
- 2. Timing for assignment
- 3. Application to record assignment etc
- 4. Process for assigning all goods and/or services (full assignment)
- 5. Process for assigning only some goods and/or services (partial assignment)
- 6. Process for assignment of certification trade marks
- 7. Transmission of certification trade marks
- Part 44 Claim of Interest or Rights in a Trade Mark
- Relevant Legislation
- 1. Background
- 2. Effect of recording the claim
- 3. When can the interest be recorded?
- 4. Recording the claim
- 5. Amending the record of a claim
- 6. Cancelling the record of a claim
- Part 45 Copies of Documents
- Relevant Legislation
- 1. Documents copied by the Office
- 2. Types of copies requested
- Annex A1 - Flow chart of production of copies/certified copies
- Part 46 Grounds for Opposition to Registration or Protection
- Relevant Legislation
- References used in this part
- 1. What is opposition to registration or protection?
- 2. The Registrar’s role in an opposition
- 3. When registration or protection can be opposed
- 4. Grounds for opposition to registration of national trade marks
- 5. Grounds for opposition to protection of international trade marks
- Part 47 Procedures for Opposing Registration or Protection
- Relevant Legislation
- 1. Filing a notice of opposition
- 2. Request to amend a notice of intention to oppose or a statement of grounds and particulars
- 3. Filing a notice of intention to defend
- 4. Opposition may proceed in the name of another person
- 5. Making Convention documents available to opponent
- Part 48 Removal of a Trade Mark from the Register for Non-use
- Relevant legislation
- References used in this part
- 1. What if a trade mark is not used?
- 2. Application for removal/cessation of protection for non-use
- 3. Opposition to a non-use application
- 4. Application for extension of time to oppose the non-use application where the trade mark is already removed
- 5. Grounds on which a non-use application may be made
- 6. Burden on opponent to establish use of a trade mark
- 7. Authorised use by another person
- 8. Use by an assignee
- 9. Localised use of trade mark
- 10. Circumstances that were an obstacle to the use of a trade mark
- 11. Where there is no evidence in support of the opposition
- 12. Registrar's discretion in deciding an opposed non-use application
- 13. Registrar to comply with order of court
- 14. Right of appeal
- 15. Certificate - Use of a trade mark
- Part 49 Non-use Procedures
- Relevant legislation
- 1. Application for removal or cessation of protection of a trade mark for non-use
- 2. Opposition to non-use application
- 3. Amendment to notice of intention to oppose or statement of grounds and particulars
- 4. Notice of intention to defend
- 5. Opposition may proceed in the name of another person
- 6. Opposition proceedings
- Part 51 General Opposition Proceedings
- Relevant Legislation
- 1. Evidence
- 2. Extension of the period for filing evidence
- 3. Cooling-Off Period
- 4. Suspensions
- 5. Hearing of the opposition
- 6. Dismissal or discontinuance of proceedings
- 7. Award of costs
- 8. Rights of appeal
- 9. Period in which a trade mark can be registered/protected
- 10. Guidelines for Revocation of Acceptance of Opposed trade marks
- 11. Unilateral Communications with Hearing Officers
- Part 52 Hearings, Decisions, Reasons and Appeals
- Relevant Legislation
- References used in this Part
- 1. What is a decision?
- 2. What is a hearing?
- 3. Is a hearing always necessary?
- 4. Role and powers of the Registrar in hearings
- 5. Rights of appeal from decisions of the Registrar
- 6. Appeals from decisions of the Federal Court etc.
- 7. Implementation of decisions
- 8. Service of documents on the Registrar
- Part 54 Subpoenas, Summonses and Production of Documents
- Relevant Legislation
- 1. Subpoenas
- 2. Summonsing a witness
- 3. Production of documents
- Annex A1 - Consequences of mishandling a subpoena
- Annex A2 - Format of a summons to witness
- Annex A3 - Format of notice requiring production
- Part 55 Costs
- Relevant Legislation
- 1. Legislative Basis
- 2. Award of costs
- 3. Applications for an award of costs
- 4. Determination of the amount of costs
- 5. Full costs where certificate of use of a trade mark provided to removal applicant
- 6. Costs recovery
- 7. Security for costs
- Annex A1 - Taxing of costs in "multiple" oppositions relying on same evidence
- Part 60 The Madrid Protocol
- Relevant Legislation
- Glossary
- 1. Introduction
- 2. International Applications
- 2.1 General Description
- 2.2 International Application Form
- 2.3 Data Entry
- 2.4 Certifying Process
- 2.5 Fees for International Applications
- 2.6 Renewal
- 3. The Basic Application or Basic Registration (Basic Trade Mark)
- 4. International Registrations that have Designated Australia
- 4.1 General Description
- 4.2 Record of International Registrations
- 4.3 Filing/Data Capture/Allocation of Australian Trade Mark Number
- 4.4 Indexing
- 4.5 Expedite
- 4.6 Classification of Goods and Services
- 4.7 Examination of an IRDA
- 4.8 Reporting on an IRDA
- 4.9 Provisional Refusal
- 4.10 Amendments
- 4.11 Deferment of Acceptance
- 4.12 Extension of Time
- 4.13 Final Decision on Provisional Refusal Based on Examination
- 4.14 Acceptance
- 4.15 Revocation of Acceptance
- 4.16 Extension of Time to File Notice of Opposition to Protection
- 4.17 Opposition to Protection
- 4.18 Protection
- 4.19 Cessation or Limitation of Protection
- 4.20 Cessation of Protection because of Non-Use
- 4.21 Opposition to Cessation of Protection because of Non-Use
- 4.22 Renewal
- 4.23 Claim to Interest in, or Right in Respect of a Trade Mark
- 4.24 Change in Ownership of an International Registration
- 4.25 Transformation
- 4.26 Replacement
- 4.27 Customs
- Part 61 Availability of Documents
- Relevant Legislation
- 1. Availability of Documents
- 2. Accessing Documents
- 3. Documents to be made Available for Public Inspection (API)
- 4. Information that the Registrar of Trade Marks will Not Accept in Confidence
- 5. Confidential Information in Correspondence
- 6. Policy in relation to TM Headstart
- Part 62 Revocation of Registration
- Relevant Legislation
- 1. What is revocation of registration?
- 2. Prerequisites to revocation of registration
- 3. Factors to be taken into account before deciding whether revocation of registration is reasonable
- 4. Circumstances under which registration may be revoked
- 5. Mandatory revocation
- 6. Right of appeal: revocation of registration
- 7. Extension of time
- 8. Amendment or cessation of protection by Registrar of Protected International Trade Marks (PITMs)
- 9. Registrar must notify Customs if protection of a PITM is revoked
- 10. Right of appeal: cessation of protection
10.3. Representation of the Trade Mark - General
Under the terms of paragraph 27(3)(a) of the Act, of the Act, the application must include a representation of the trade mark. Additionally, in the case of a trade mark that consists of or contains a sign that is a colour, scent, shape, sound, aspect of packaging or other kind of non-traditional sign, the application must include a concise and accurate description of the trade mark (subreg 4.3(7)).
3.1 A graphical representation is required
As a trade mark must be able to be represented graphically to be registrable (section 40) the Registrar will, as a matter of practice, require that the representation of the trade mark that is included in the application be a graphical representation. In the case of sound trade marks, recordings of the sound (e.g. compact disc or digital sound file) will also be required. An actual sample of the trade mark may be required for three dimensional shape trade marks. Each trade mark consisting of, or containing, a colour, scent, shape, sound, aspect of packaging or other non-traditional sign must also be accompanied by a concise and accurate description of the trade mark. Such descriptions will be entered as endorsements and, taken together with the graphical representation, will help to define the scope of the registration. The onus remains with the applicant to provide a suitable representation of the trade mark.
3.1.1
The size of the representation of the trade mark should, where practicable, be no larger than 8cm x 8cm (subreg 4.3(1)).
3.1.2
Where a series of trade marks is applied for and the representations of the trade mark are together more than 8cm x 8cm then the representation of each trade mark in the series should, where practicable, be no larger than 8cm x 8cm and must be attached to the application (subregs 4.3(2) and 4.3(9))
3.1.3
Oversized representations must be attached to the application (subreg 4.3(9)).
3.1.4
The representation must:
- show all the features of the trade mark clearly,
- be of a quality that ensures all the features of the trade mark will be preserved over time, and
- be suitable for reproduction (subreg 4.3(10)).
3.2 Shape (3-dimensional) trade marks
3.2.1
The applicant must state on the application form that the application is for a shape trade mark. If this is not stated but it is fairly clear, eg because the trade mark has been depicted in a three-dimensional (3-D) perspective drawing, then the examiner should query whether or not the trade mark is in fact a shape trade mark.
3.2.2
The representation of a shape trade mark or a trade mark containing a shape should, where practicable, be in the form of a perspective or isometric drawing that clearly shows all the features of the trade mark (subreg 4.3(3)(a)). The parts of the configuration claimed to constitute the trade mark should be shown in solid lines, while the unclaimed parts, if any, should be shown in broken lines. The representation must be accompanied by a concise and accurate description of the trade mark (subreg 4.3(7)). This description will be entered as an endorsement of the registration and will thereby serve to define the scope of the registration. There should be no discrepancy between the representation and the description. In most cases the features of the mark should be clear from the representation and the description serves to make clear exactly what is being claimed as the trade mark.
- Part 21 - Non-traditional signs
2.1 Description endorsement
3.1 Representations and descriptions of shape trade marks
3.2.3
If it is not possible for the applicant to provide a perspective or isometric drawing of the trade mark, the applicant should furnish as many views of the trade mark as will sufficiently show all the features of the trade mark (subreg 4.3(3)(b)).
3.2.4
Where more than one view of the trade mark is filed, each representation of the trade mark should, where practicable, be no larger than 8cm x 8cm and must be attached to the application (subregs 4.3(1) and 4.3(9)).
3.2.5
If the representation of the trade mark provided by the applicant does not show clearly all the features of the trade mark, the Registrar may require up to 6 further views of the trade mark (subreg 4.3(4)).
3.2.6
If the description or representation of the trade mark is not satisfactory in that it does not demonstrate the nature of the trade mark sufficiently or show each feature of the trade mark sufficiently, the applicant may be requested to provide a description or further description of the trade mark and a specimen of the trade mark (subreg 4.3(8)). If the description is suitable it will be entered as an endorsement of the registration. The onus lies with the applicant to provide an adequate graphical representation of their trade mark - if they cannot then the application must be rejected.
3.2.7
Black and white or colour photographs of shape trade marks which have been mounted or printed on good quality A4 size paper will be acceptable as representations of the trade mark. They must, however, be able to be reproduced for the purposes of publication.
3.2.8
Trade marks consisting of or containing a shape will be indexed as the kind of sign “shape” and therefore, all shape trade marks will come up on a search of the “shape” kinds of signs. Where a trade mark contains or consists of a non-traditional sign this will also be identified on the first screen in the enquiries facility.
3.3 Sound trade marks
3.3.1
The applicant should state on their application that the trade mark is a sound trade mark.
3.3.2
Trade marks consisting of or containing a sound will be indexed as the kind of sign “sound” and therefore all sound trade marks will come up on a search of the “sound” kinds of signs. Where a trade mark contains or consists of a non-traditional sign this will also be identified on the first screen in the enquiries facility.
3.3.3
The onus lies with the applicant to ensure that the trade mark is adequately represented. A graphical representation of the trade mark is required, and also a concise and accurate description of the trade mark (subreg 4.3(7)). In some cases the description and the graphical representation will be the same if there is no other form of graphical representation. The description will be entered as an endorsement of the registration and will thereby help define the scope of the registration. The representation of the trade mark may consist of a written description of sounds if the sign is not a musical-type sound. For example the graphical representation of the trade mark might be the words “CLIP, CLOP, MOO” and a concise and accurate description of the trade mark might be along the lines “The trade mark consists of the sound of a cow taking two steps on pavement, followed by the sound of a cow mooing as recorded on the compact disc accompanying the application form”. A sign consisting of a musical sound might be most appropriately represented in the form of musical notation, however, this will depend on the trade mark. An example of a representation of a musical sign may be that the trade mark will be represented graphically by the score of the tune and the description will be along the lines “The trade mark consists of the tune represented on the application form played on a trombone as recorded on the compact disc accompanying the application form”.
- Part 21 Non-traditional signs - 5. "Sensory" trade marks - sounds and scents
3.3.4
In most cases the applicant will need to file a copy of the actual sound being claimed as the trade mark. This copy should be provided on a medium which allows for easy copying, storage and replaying of the sound. CDs, DVDs and digital sound files are all suitable media.
If it is not possible to provide the actual sound at the time of filing, for example, when the applicant experiences difficulties in attaching a sound file to an electronically filed application, the medium incorporating the sound should be sent to the Office as soon as possible after the application is filed.
3.3.5
If the description or representation of the trade mark is not satisfactory in that it does not demonstrate the nature of the trade mark sufficiently or show each feature of the trade mark sufficiently, the applicant may be requested to provide a description or further description of the trade mark and a specimen of the trade mark (subreg 4.3(8)).
3.4 Scent trade marks
3.4.1
The applicant should state on their application that the trade mark is a scent trade mark.
3.4.2
Trade marks consisting of or containing a scent will be indexed as the kind of sign “scent” and therefore, all scent trade marks will come up on a search of the “scent” kinds of sign. Where a trade mark contains or consists of a non-traditional sign this will also be identified on the first screen in the enquiries facility.
3.4.3
The onus lies with the applicant to ensure that the trade mark is adequately represented. The application must include a graphical representation of the trade mark (eg. “the scent of apple blossoms”) as well as a concise and accurate description of the trade mark (eg. “The scent of apple blossoms applied to car tyres”). In some cases the description may also be used as the representation where there is no other form of graphic representation. The description will be entered as an endorsement of the application (subreg 4.3(7)) and will thereby help to define the scope of the registration. A precise word description of the trade mark would be a satisfactory representation of a scent trade mark, however the results of analytical techniques would not be as they would not be readily understood by the ordinary person searching the Register.
- Part 21 Non-traditional signs - 7.1. Representations and descriptions of scent trade marks
3.4.4
If the description or representation of the trade mark is not satisfactory in that it does not demonstrate the nature of the trade mark sufficiently or show each feature of the trade mark sufficiently, the applicant may be requested to provide a description or further description of the trade mark (subreg 4.3(8)). The office does not usually request a specimen of the scent, but it would be acceptable in these circumstances to request an example of the scent in use on the goods claimed.
3.5 Colour trade marks
3.5.1
If the applicant is claiming colour, or a combination of colours, as applied to the goods or their packaging or as used in relation to their services, as a trade mark, they should claim this by identifying the trade mark as a colour trade mark on the application form. As well as supplying an example of the colour itself, the applicant must provide a concise and accurate description of the trade mark on the application (subreg 4.3(7)). The description, which should state precisely what the mark consists of and how the colour is to be used as a trade mark, will be entered as an endorsement of the registration and will thereby help define the scope of the registration.
An example of a suitable form of description for a trade mark which consists of a combination of colours applied to a pharmaceutical capsule would be:
The trade mark consists of a maroon colour applied to one half of a capsule at one end, and a gold colour applied to the other half, as illustrated in the representation on the application.
- Part 21 Non-traditional signs - 4.1 Representations and descriptions of colour marks
3.5.2
If the description or representation of the trade mark is not satisfactory in that it does not demonstrate the nature of the trade mark sufficiently or show each feature of the trade mark sufficiently, the applicant may be requested to provide a description or further description of the trade mark and a specimen of the trade mark (subreg 4.3(8)).
3.5.3
Trade marks represented in colour/colours. If a trade mark does not consist of a colour or colours but is simply a trade mark which is always used in particular colours, a different form of endorsement would be required.
This situation is most likely to occur when a trade mark which is lacking in inherent adaptation to distinguish is shown through evidence of use to be capable of distinguishing when used in particular colours. Acceptance for registration may then be allowed on the basis of a limitation to colour. This endorsement will be as follows:
Registration of this trade mark is limited to the colours ____________, ________ and _________ as shown in the representation of the trade mark attached to the application form.
If an applicant chooses to limit to colour during examination, this same form of endorsement would be the appropriate one.
Occasionally an applicant will include a description of the trade mark and its colours at the time of filing. In those cases, the following descriptions will be taken as an indication of a restriction or limitation to a specific colour or colours:
- “The trade mark is restricted to the colours green and blue as shown in the representation attached to the application form.”
- “The trade mark is limited to the colours green and blue as shown in the representation attached to the application form.”
- “The colours green and blue are claimed as a distinctive feature of the trade mark as shown in the representation attached to the application form.”
- “The applicant claims the colours green and blue as a distinctive feature of the trade mark”.
- “The colours green and blue are a distinctive feature of the trade mark”.
- “Colour claimed as a distinctive feature: green and blue”.
- “Colour claimed: green and blue.”
- “The applicant claims the colours green and blue as an essential feature of the trade mark.”
It should be noted that this does not imply a claim to rights in the colour or colours themselves, but is a limitation on the rights of registration under section 70 of the Act. See also the note at the end of paragraph 4.1 of Part 21 in respect of colour endorsements.
In some situations, the applicant's description included at filing will not be considered as a restriction or limitation to colour. The following are examples of such descriptions:
- “The trade mark is depicted in the colours green and blue as shown in the representation attached to the application form.”
- “The trade mark is presented in the colours green and blue as shown in the representation attached to the application form.”
- “The trade mark is represented in the colours green and blue.”
While not affecting the trade mark in any way, it is acceptable to leave these descriptions as entered in accordance with the applicant's wishes.
Only if the description is unclear should it be queried.
3.6 Moving Images, holograms and gestures
3.6.1
The applicant should state on their application whether the sign they are claiming as a trade mark is a moving image, hologram or gesture.
These applications will be indexed according to their content. For example, a moving image which consists of a three dimensional animal performing certain actions will be indexed as “shape” as well as the description of the animal. A moving image which consists of a two dimensional animal performing actions will not be indexed as a shape but as the animal only.
3.6.2
The applicant must include a clear description of the sign which is the subject of the application. This description must be precise and clearly identify exactly what the trade mark consists of.
The description of a hologram must clearly describe each view formed by the hologram when it is moved about. Representations of each view must also be provided.
The description of a gesture claimed as a trade mark must also precisely describe the gesture.
3.6.3
Although it is theoretically possible for a written description by itself to sufficiently describe these kinds of signs, it is unlikely that this will often be the case. For each of these signs, the applicant should expect to have to provide a copy of the actual trade mark, in the form of a video clip for a movement mark or gesture, or an actual example of a hologram. Alternatively, the applicant could provide sufficient still representations of the movement or gesture to demonstrate the full range of the claimed movement. At the time of examination, the examiner may need to request additional information from the applicant in order to clearly define the scope of the trade mark, keeping in mind the requirements of section 65.
- Part 21 Non-traditional signs - 9. Moving images, holograms and gestures
3.7 Other kinds of non-traditional signs
Overseas jurisdictions have received applications for tastes and textures as trade marks. These kinds of applications must meet the same requirements as any other trade mark application. They will be indexed according to the content of their descriptions.
3.7.1
If the applicant is claiming a texture as a trade mark, this must be made clear on the application form. An example of the actual texture claimed must be provided as well as a clear description of the texture and how it is to be used as a trade mark.
3.7.2
If the applicant is claiming a taste or flavour as a trade mark, an actual example will not be required. As with scent trade marks, the applicant will need to provide a clear description that identifies the taste in terms which are easily understood by the average buyer, and which describe how the taste is to be used as a trade mark.
- Part 21 Non-traditional signs - 10. Other kinds of non-traditional signs
Amended Reasons
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