protecting your trademarks abroad Series - Australia

Photo by Joey Csunyo on Unsplash

This week’s guide focuses on protecting your trademarks in Australia.

The information in this guide has been provided by the Canadian Department of Industry. Please note that this guide does not constitute legal advice and is merely intended to act as an aid if you are considering global expansion.

Where is IP registered?
IP Australia (Australia's IP office) is the Australian government agency responsible for granting patents, trademarks, designs and plant breeder's rights.

Trademarks

Filing System: Australia follows a "first-to-use" system for trademark rights; whoever can prove significant use of a trademark first in the Australian marketplace will own the rights to it even if the mark is not registered. However, you should still consider registering your trademark with IP Australia, as registered trademarks are easier to enforce and have a number of other important advantages over trademarks that are not registered.

Registration Period: In Australia, a trademark is registered for 10 years and may be renewed every 10 years. 

Non-Use: If you are not regularly using your trademark in the Australian marketplace, it may be subject to a dispute or challenged for non-use. 

Madrid Protocol: As a member of the Madrid Protocol, Australia can be designated in an international application filed via the Madrid System.

IP Enforcement
There are numerous ways to enforce your rights against unauthorized use of your IP in Australia:
·       The Australian government Department of Home Affairs helps prevent counterfeit and pirated goods from entering Australia. Owners of IP rights can file a customs notice known as a Notice of Objection, which enables the Department of Home Affairs to seize and detain imported goods that violate Australian IP rights.

·       IP owners have many options when they suspect infringement of their IP rights, such as sending a letter of demand, which is often the first step taken. In cases where a letter of demand is not sufficient, it may be best to seek legal action.

·       Australia also provides the option of ADR, which encompasses mediation, arbitration, and expert determination. ADR processes are generally more informal, less adversarial, cheaper and settlement focused. They can be used before or as an alternative to going to court.

​Interested in expanding your trademark protection into Australia? Contact us today.