Part 2.3 Who may apply, and filing requirements for trade mark applications, notices and requests

2.3.1 Who may apply for a trade mark

Sections 27 and 28 provide that a person or persons may apply to register a trade mark for goods or services if they claim ownership and are using, intend to use, have authorised or intend to authorise use, or plan to assign the trade mark to a body corporate for use. 

An application, except for an application for a collective trade mark, must be filed by a person or persons having legal personality. Section 6 provides that a person includes a body of persons, whether incorporated or not. Where it does not appear an applicant or applicants have legal personality, this will be queried during examination.

Note: Ownership of a trade mark under common law can be a complex question. The Registrar does not verify claims to ownership at filing or during examination, other than querying whether an applicant has legal personality. The issue may be raised during opposition to registration and dealt with by the Registrar in that context. Correct ownership information is important, as mistakes may affect the validity of the trade mark and render it vulnerable to opposition or cancellation. The Registrar may also not be able to amend or correct some errors made by an applicant.

2.3.2 Minimum filing requirements and when an application is taken to be filed 

The Trade Marks Act and Regulations set out the requirements for filing a trade mark application. Specifically:

• Section 27(2)(a) provides that the application must be in accordance with the Regulations. 

• Reg 4.1(1) states that the application must be in an approved form. 

• Reg 4.1(2) states that any material that is intended by the applicant to form part of the application must be attached and is taken to be part of the application.

• Reg.4.2 states to be taken to be filed, an application for registration of a trade mark that is in an approved form must:

 (a)  state that the application is for registration of the trade mark, or contain a clear indication to that effect; and

 (b)  include a representation of the trade mark that is sufficient to identify the trade mark; and

 (c)  specify the goods and/or services in relation to which the application is made; and

 (d)  include sufficient information to enable the Registrar to establish the identity of the applicant; and

 (e)  contain sufficient information to enable the Registrar to contact the applicant.

Note: The Registrar as an administrative decision maker is entitled to rely on the information provided to them and to treat that information as accurate. However, if the Registrar becomes aware that an application has been or may have been filed in the name of a person who has not authorised the filing, the Registrar may decide that the application does not meet minimum filing requirements unless and until further information is provided that the person named as the applicant did in fact file the application or authorise the filing of the application on their behalf.  

2.3.2.1 Application form provided by the Registrar

The application form provided by the Registrar is the approved form. It provides guidance on the information that is required in an application for registration of a trade mark.  This includes:

• name

• address

• address for service

• type of trade mark - standard, collective, defensive, certification

• details of a series of trade marks (if a series of trade marks is being applied for)

• divisional application - number of parent application and goods/services remaining in the parent application

• claim(s) for convention priority (if being claimed):

• goods and/or services if more than one priority date applies 

• the date the application was first filed in a convention country

• the convention country

• if available, the convention application number

• representation of the trade mark

• kind of sign - if it is a shape, sound, scent or colour trade mark - a description of the trade mark

• specification of goods and/or services

• class number(s)

• if the representation of the trade mark contains non-English words and characters – their translation/transliteration.

Note: The requirements for filing a TM Headstart request are covered in reg 3A.3 and are similar to the minimum filing requirements for a standard trade mark application, though in the case of a headstart, payment of the fee is necessary for the application to be taken to have been filed.

2.3.2.2 Other filing requirements for an application to register a trade mark

The Act and Regulations specify additional requirements that an application for registration must meet. Even if an application does not fulfill these other requirements, it is still considered filed. The applicant will be notified of any such deficiencies during the examination process.

2.3.3 Requirements for filing documents

Section 213B provides that the Registrar may, by writing, give a direction specifying the form in which a document is to be filed under this Act.

Regulation 21.1 provides that where an applicant uses a form provided by the Registrar that contains directions for completing the form, the applicant must comply with those directions.

Regulation 21.2 provides that a document that is required to be in an approved form and that is filed must be in English and be legible. 

2.3.4 Documents requiring a signature

• Where an application, notice or request was filed by, or on behalf of, more than one person, a request for withdrawal of that application, notice or request must be signed by, or on behalf of, each of those persons (reg 21.9).

• A certificate of verification for a translated certified copy is required to be signed and dated (reg 4.11).

If any document requiring a signature is not signed, the action may not be processed until the document has been signed by all persons. The Office will use discretion to determine whether a request for withdrawal should be deemed to be signed on behalf of all persons. For example, a law or attorney firm who initially filed an application, notice, or request on behalf of multiple persons will be presumed to be acting on behalf of all those persons if requesting withdrawal of the application, notice, or request.

If the signatory has not indicated that they are the applicant or are acting on behalf of the applicant, the Office will assume that they are the applicant or are acting on behalf of the applicant and will not query the signature unless the Registrar has cause to doubt the signatory is the applicant or is acting on the applicant’s behalf.

2.3.5 Applicants etc. must supply an address for service 

Section 215 provides that a person making an application, notice or request or the owner of a trade mark, or a person whose claim to an interest or right in a trade mark is recorded in the Register must supply an address for service in Australia or New Zealand.  If an address in Australia or New Zealand has not been provided, the submitting party filing the application, notice or request will be required to provide the Registrar with an address for service in Australia or New Zealand. Failure to provide an address for service when specifically requested may result in the submitting party not receiving future correspondence from the Office until an address for service is provided.

• The address for service for a trade mark application is the address for service provided on the application for registration unless the Registrar has been notified of another address as the address for service. 

• The address for service of the owner of a registered trade mark is the last address for service given to the Registrar.  Once a trade mark is registered, the address for service carries over from the trade mark application to the registration, unless the Registrar is notified in writing of another address for service. 

2.3.6 Supporting documentation for an application, notice or request 

If a declaration is required to be filed with an application, notice or request, it should conform with the provisions of regs 21.6 and 21.7. Under the provisions of reg 21.4, any application, notice or request that is required to be accompanied by a supporting declaration under the Act or Regulations, and is not so accompanied, may be taken as not having been filed until the declaration is provided. Please also see Part 1.4.1 in relation to non-compliance.