60.4.9 Provisional Refusal

Date Published

4.9.1 Relevant Legislation

Madrid Protocol

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

Madrid Protocol Regulations

Rule 16 Time Limit for Notifying Provisional Refusal Based on an Opposition

Rule 17 Provisional Refusal

Rule 18ter Final Disposition on Status of a Mark in a Designated Country

Trade Marks Act 1995

Section 31, 33

Trade Mark Regulations

Reg 4.12 Periods after which applications lapse

17A.20 Examination of IRDA - report to holder

17A.17 Examination - holder's response to report

4.9.2  General Description

Australia has the right to refuse protection of an international registration. This must be based on Australian trade mark legislation.  A full refusal can be based on objections under sections 39 to 44 of the Trade Marks Act 1995, classification matters, a request for translation or the fact that the trade mark may be a certification trade mark which requires ACCC approval.

A provisional refusal is the same as an examiners adverse first report, although the wording is a little different.  If there are grounds for issuing a provisional refusal, the IB must receive the provisional refusal from IP Australia within 18 months from the date on which the IB notified Australia of the international registration.  The provisional refusal will be sent to the International Bureau and will contain advice that the holder must provide an address for service in Australia or New Zealand if they wish to respond to the provisional refusal.

The refusal must contain the information as listed in Rule 17(2) of the Madrid Protocol Regulations. This includes the following:

  • The identity of the Trade Marks Office as the office concerned.

  • The number of the international registration.

  • All grounds for refusal; with copies of the legislation.

  • Details/extracts of any cited trade marks.

  • Statements about any conflicting goods and/or services.

  • An indication of the goods and/or services that are affected by the refusal.

  • Advice that the holder must acquire an address for service within Australia or New Zealand if they wish to respond to the provisional refusal.

The IB will not consider a provisional refusal that is sent to them after the prescribed time limit, i.e. more than 18 months after notification of the IRDA, or if it does not include all the relevant information.

Amended Reasons

Amended Reason Date Amended

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