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Understanding Trademark Statuses in Australia

When you submit an application to register a trademark to the body who oversees the process – IP Australia – it will pass through a number of stages before you will get notification that the trademark has been registered, if this is the outcome of the application.  At the time of writing, it is taking around 4 months for IP Australia to examine standard filed applications. If your application is accepted it is then published in the official journal (around 5 months after filing, at the earliest). The advertisement in the journal commences a 2 month opposition period, allowing any other person a chance to object to the registration of your trademark.

Once this period is up, and if no oppositions have been filed then your trademark will be registered and you will receive a certificate of registration accordingly. Your certificate will be issued at about 7.5 months if your application has enjoyed a straightforward and smooth process.

When you’re checking the status of your application on the IP database, you will notice the different terms which will represent the varying stages it is at.  Let’s look at some of the more common status terms that you may come across.

TRADEMARK STATUS NOTIFICATIONS

INDEXING APPROVED

This is one of the first status notifications that you might see when checking your application online, and falls into the category of a pending application.  If you see ‘Indexing approved’ this means that IP Australia has received your application, it has been filed and its details have been indexed into the database so that it can be made available for searching online.

ACCEPTED – AWAITING ADVERTISEMENT / ACCEPTED

If you see either of these then you know that your application has passed the examination stage and IP Australia has accepted the trademark for registration. The status of Accepted – Awaiting Advertisement indicates an early notice of acceptance has been issued by IP Australia but not enough time has passed for it to be published in the journal for the purpose of the opposition period. A simple status of ‘Accepted’ indicates the notice confirming advertisement dates has been issued and that the mark is entering or is in the 2 month opposition period.

UNDER EXAMINATION

If you see ‘Under examination’ this means that your trademark application has been examined but a report has been issued as problems were found with it.  It is during this phase that the examiners will be looking for any kinds of mistakes that you may have made on the application or to ensure it meets all the necessary legislative requirements.  Mistakes can be as basic as putting your trademark under the wrong class.  More often it will be a case that the examination has found that the trademark is not acceptable in current form as it conflicts with earlier filed trademarks or that perhaps the mark is too descriptive to register.

The examiner’s report will set out the problems in detail so that you can determine whether you are in a position to overcome those issues and gain acceptance.  The report will provide the applicant a period of 15 months to respond, so whilst it’s in this status the database will notify you that it is under examination and extension fees are not required. In some cases, depending on the problem that is set out in that report, an applicant might actually be able to defer the acceptance of their mark beyond that 15 month period and in which case, we would see a status of ‘under examination-deferred’.

UNDER EXAMINATION EXTENSION FEES REQUIRED

Close to the end or at the end of the 15 month period that IP Australia gives you to respond to any issues they may have discovered, the status of the trademark might change to ‘under examination extension fees required’, meaning that more time is required to respond to the report and relevant request document and extension fees will need to be paid in order for this to happen.

OPPOSED

In this case, the application has been accepted and has passed through the examination phase, however once it has been opened up for opposition during the 2 month period a third party has filed an opposition to it. IP Australia will notify applicants if a third party files a notice of its intention to oppose the registration such that the applicant has a chance to defend that opposition. Opposition proceedings are complex and advice should be sought if you find this status against your trademark application.

NON-USE ACTION PENDING

This generally applies to registered trademarks and in this case it signifies that a third party has sought the removal of the trademark on the belief it is no longer in use, or occasionally that they believe there was never an intention to use the mark in good faith. If this occurs, the trademark owner may choose to oppose the removal of their mark.

REGISTERED/PROTECTED

This means that your trademark application has gone through all the necessary steps and has been successful.  You now have all the rights, responsibilities and protections of a registered trademark.

NEVER REGISTERED/LAPSED

This status broadly describes marks that for one reason or another never eventuated in registration. Usually this status will be followed by a sub-status to further describe the reason it was never registered. For example, it could be that during examination it was discovered to have issues, which were not overcome during the 15 month response period, and there was not an extension of time.  It could be that the mark was accepted at the time, but final fees were not paid in order to complete the registration. (There are no longer final fees applicable to register a trademark, however there used to be such fees, which if not paid will have resulted in lapsed applications).

EXPIRED OR REMOVED

You may come across a status of ‘Expired’ if the trademark has come due for renewal but has not been renewed  by the final date. It will show as expired for a 6 month period, being a grace period in which the owner may still renew the trademark. ‘Removed’ will signify that the trademark was not renewed within the 6 month period and has now been removed altogether from the register.

WITHDRAWN

In this case a withdrawn status where the party actually actively withdraws their trademark application (rather than simply allowing it to lapse). This can happen in the case of somebody filing something in error or settling an opposition for example.

USE THE TRADEMARK PROFESSIONALS

The process for trademark applications can be straightforward and work smoothly, if you have done your research and understand exactly what is required by the Trademark Office for a successful result.  Once you have been granted a successful trademark registration, you will then have all the rights and responsibilities that go along with the trademark for a period of ten years (assuming there are no attacks on the trademark during that time), with can be renewed once this time is up.

We recommend that you contact us before submitting a trademark application to avoid any potentially costly and time-consuming delays, as we can help ensure no mistakes in the application as well as help you navigate issues such as legislative compliance.  We can also help you if there do happen to be any issues raised following examination by IP Australia. We are also experienced in defending or resolving oppositions by third parties if there do happen to be any against your application.

Contact Mark My Words today for professional, independent and experienced assistance with all trademark application matters, trademark disputes, infringements and non-use concerns.

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