60.4.7 Examination of an IRDA

4.7.1  Relevant Legislation

Madrid Protocol

Article 5 Refusal and Invalidation of Effects of International Registration in Respect of Certain Contracting Parties

Trade Mark Regulations

Division 3 of Part 17A International registration designating Australia

4.7.2  General Description

Provisions for dealing with an IRDA are covered in Division 3 of Part 17A of the Trade Mark Regulations.  It must comply with the Trade Marks Act 1995 and its Regulations.

Provisional refusals may be based on grounds for rejection under sections 39 through to 44 of the Trade Marks Act 1995 as well as the provisions of Part 17A of the Regulations.

4.7.3  Section 39

Refusal may apply where the trade mark contains or consists of a sign that is specified in the Regulations as not to be used as a trade mark.  This includes:

• the words "Patent", "Patented", "By Royal Letters Patent", "Protected International Trade Mark", "Registered", "Registered Design", "Copyright" "Plant Breeder's Rights", "EL rights", or words or symbols to the same effect (including the symbols "©" and "®");
  
  It should be noted that the wording of section 39 (2) includes the word “may": which gives the Registrar discretion when it comes to rejecting trade marks under section 39(2). The Registrar has exercised her discretion not to reject IRDAs under section 39(2) .In practice, where an IRDA contains the © or the ® symbol a ground for rejection will not be raised under section 39(2). This is because Australia has an obligation to protect trade marks as they are recorded on the International Register. Requesting that the © or ® symbol be removed would result in the representation of the trade mark on the Australian Register differing from the representation recorded on the International Register. Additionally, the International Bureau does not allow for a trade mark recorded on the International Register to be amended in any way.

• the words "To counterfeit this is a forgery", or words to the same effect;

• a representation of the Arms, or of a flag or seal, of the Commonwealth or of a State or Territory;

• a representation of a mark notified by the International Union for the Protection of Industrial Property as not entitled to registration under international arrangements;

• a sign specified in Schedule 2, such as:

Austrade

Repatriation

Returned Soldier

C.E.S.

Returned Airman

Olympic Champion

Returned Sailor

4.7.4  Section 41

Refusal will apply where the trade mark is not capable of distinguishing the holder's goods and/or services in respect of which the trade mark is sought to be protected.  

If the holder of an IRDA has indicated that their trade mark is a:

• 3-dimensional mark, or

• colour mark, or

• sound mark,

the IRDA must meet the requirements of section 41. (See Part 21.3 to 21.4 and Part 21.6 respectively of Non-Traditional Signs.)

4.7.5  Section 42

Refusal will apply where:

a. the trade mark contains or consists of scandalous matter; or

b. use of the trade mark would be contrary to Australian law.  Words and symbols may be prohibited under other laws in Australia such as the Wine Australia Act 2013 and the Plant Breeder's Rights Act 1994.

4.7.6  Section 43

Refusal will apply where because of some connotation in the trade mark, its use on the goods and/or services claimed would be likely to deceive or cause confusion.  Trade marks which could fail under this section include those that erroneously imply that the goods and/or services have a certain character or nature, or that the trade mark is endorsed or licensed by a person or organisation.

4.7.7  Section 44

Refusal will apply where the trade mark:

a. is substantially identical with, or deceptively similar to:

i. a trade mark registered or protected by another person in respect of similar goods or closely related services; or

ii. a trade mark whose registration or protection in respect of similar goods or closely related services is being sought by another person; and

b. the priority date for the protection of the holder's trade mark in respect of the holder's goods is not earlier that the priority date for the protection or registration of the other trade mark in respect of the similar goods or closely related services.

4.7.8  Transliteration/Translation

International applicants are required by the IB to provide a transliteration of any non-Latin characters appearing in the mark.  This must appear in their international application. They are not however, required to provide a translation in the international application form.

A provisional refusal may be issued on an IRDA based on the need for a translation of any non-English words. The holder must provide a translation if requested to do so.

4.7.9  Formalities

There is no need for the examiner to check the applicant's name and address as this has been done by the Office of origin and the IB.

The classification of goods and services of international applications is checked by the IB before it is registered and designated countries are notified.  A provisional refusal may apply where an item in the specification of goods and/or services has been identified by the IB or IP Australia as being too vague for the purposes of classification or is incomprehensible or linguistically incorrect (See Reg 17A.14).

4.7.10  Colour Trade Marks

The Madrid Protocol provides for colour trade marks.  Any claim for colour as an essential feature on an international registration must also be present on the basic trade mark.

As a consequence, there is some uncertainty about the existence of a limitation as to colour, given the terms of section 70.  This is a matter that must be determined by the courts but, for the purposes of examination, examiners should treat any IRDA that claims colour as an essential feature as being limited to those particular colours.

4.7.11  Series of Trade Marks

The Madrid Protocol has no provision for series of trade marks.

4.7.12  Defensive Trade Marks

The Madrid Protocol has no provision for defensive trade marks.

4.7.13  Scent Trade Marks

The Madrid Protocol has no provision for scent trade marks.

4.7.14  Collective Trade Marks

4.7.14.1 Relevant Legislation

Madrid Protocol Regulations

Rule 9 Requirements Concerning the International Application

Trade Mark Act 1995

Part 15 Collective trade marks

Trade Mark Regulations

Regulation 17A.49 Collective trade marks

Trade Marks Office Manual of Practice and Procedure

Part 33 Collective Trade Marks

4.7.14.2 General Description

The international application form contains a single box for indicating if a trade mark is a collective mark, certification mark or guarantee mark (see 2.2.3 Requirements for the International Application Form).  IRDAs which have this box checked will be identified on Australian Trade Mark Search and RIO as certification marks until the holder advises the type of trade mark under Australian law.

Collective trade marks have different purposes and requirements in different Protocol countries.  Neither the Madrid Protocol, nor the Guide to the Madrid Agreement and the Madrid Protocol provide a definition of a collective mark.  

Any IRDA that claims to be a certification or collective mark will have a full provisional refusal issued, and the information brochure Certification, Collective and Guarantee Trade Marks will be sent to the holder.  This brochure explains what certification and collective trade marks are according to Australian legislation, and the requirements that apply.

4.7.14.3 Process for Collective Trade Marks

When IP Australia receives an IRDA which states that it is a collective, certification or guarantee trade mark, the IRDA is entered on the Trade Marks Office database as a certification mark.  This is because certification marks have the most stringent conditions and require consent of the Australian Competition and Consumer Commission (ACCC) before acceptance can occur.  The IRDA cannot then be inadvertently accepted.

After examination a full provisional refusal will be issued with the information brochure entitled Certification, Collective and Guarantee Trade Marks attached.

4.7.15  Certification Trade Marks

4.7.15.1 Relevant Legislation

Madrid Protocol Regulations

Rule 9 Requirements Concerning the International application

Rule 9.4(x) Indicating Certification Marks on the Application Form

Part 16 Certification trade marks

Trade Mark Regulations

Regulation 17A.50 Certification trade marks

Trade Marks Office Manual of Practice and Procedure

Part 35 Certification Trade Marks

4.7.15.2 General Description

The Madrid Protocol includes provision for certification marks.  The IB does not require a copy of the regulations governing the use of the certification mark but recognises that designated contracting parties might.

Holders who are claiming certification marks are advised by the IB to send such documents direct to the offices of designated countries.  The regulations and rules governing a certification mark can therefore arrive at IP Australia at the same time as, or before, the IRDA.  

The requirements for international certification trade marks are the same as for a national application for a certification trade mark.  The holder must provide the rules governing the use of the certification mark, and IP Australia forwards these rules to the ACCC for assessment.

Any IRDA which claims to be a certification mark will have a full provisional refusal issued on the basis that IP Australia does not have the ACCC's consent and the holder will be sent a copy of the information brochure Certification, Collective and Guarantee Trade Marks.

4.7.15.3 Process for Certification Trade Marks

The IRDA is examined in the normal manner. A full provisional refusal is issued together with a request for the rules, and an address for service within Australia or New Zealand, if they have not already been provided. A copy of the brochure Certification, Collective and Guarantee Trade Marks is attached to the provisional refusal.

When ACCC notifies approval of the rules the IRDA will be accepted.

4.7.16  Convention Claims

4.7.16.1 Relevant Legislation

Madrid Protocol

Article 4 Effects of International Registration

Madrid Protocol Regulations

Rule 9.4(iv) Requirements Relating to claims for Priority

Rule 14 Registration of the Mark in the International Register

Rule 21 Replacement of a National or Regional Registration by an International Registration

Trade Marks Act 1995

Section 225 Convention countries

Trade Mark Regulations

Reg 5.18 Copy of earlier application to be available to opponent

Reg 21.29 Convention countries

17A.15 Claim for priority

17A.19 Examination - additional requirements

Trade Marks Office Manual of Practice and Procedure

Part 11  Convention Applications

4.7.16.2 General Description

Convention claims are permitted under the Madrid Protocol.

When filing the international application, the holder must:

• state they have a convention claim on the application form (see 2.2.3 Requirements for the International Application Form)

• provide the name of the country where the earlier application was filed

• provide the date of filing the earlier application

• provide, if available, the trade mark number of the earlier application

• if the convention priority date is not for all of the goods and/or services in the international registration, list those to which it applies.

If for some reason the number of the earlier application has not been provided, the examiner must request it in a provisional refusal.

4.7.16.3 Subsequent designations and Convention Claims

Where Australia is subsequently designated it is unlikely that convention priority will apply.  To be entitled to the convention priority date of the international registration, the request to subsequently designate Australia would have to be have been made within 6 months of the first filing of the trade mark.