How Long Does It Take To Get a Trademark Approved in Australia?
The term ‘approved’ is not a technical term in trademark speak in Australia. However, the minimum timeframe between filing a trademark application and getting a registration, if everything goes smoothly, in Australia, is about seven and a half months. You can get a notice of acceptance from the trademarks office in a much shorter timeframe. If you expedite examination of your trademark application (either by filing through the Headstart process, or specifically seeking expedited examination of a standard application based on commercial reasons) you might get a notice of early acceptance within four weeks or so. If you do file through the Headstart application process, which is basically a pre-filing assessment, you could have an indication of likely acceptance very, very quickly – typically within around 5 business days. The actual registration of the trademark, even with those early positive results, takes a lot longer, and that’s because Australia, like a great many countries, is a party to international agreement that provides for international priority claims for a 6-month period.
Essentially, there’s a six-month period in which a trademark applicant can claim priority from their application in one country in another country. So, for example, if you file a trademark application today in Australia, on say the 12th of November, you have six months within which to file the same trademark covering the same goods or services in other countries and claim priority back to this date, the 12th of November, and because of those potential priority claims from other countries, the Australian trademarks office and the other trademarks offices have to wait for these possible priority claims. So, it’s not possible for a trademark to be registered unless that priority claim period has passed.
Does It Ever Take Longer for a Trade Mark to Be Approved?
There are circumstances that can mean it takes longer for your trade mark to be accepted for registration by the office. A standard application (not using the Headstart system) in Australia at the current time is examined at around 6 months. So, unless seeking to expedite examination, it may be at least that amount of time before hearing the trademark has been approved. Further, if there are obstacles presented during examination this can impact the time-frame to gain acceptance. For example, an examination that suggests your mark conflicts with an earlier mark, or for some other reason is not deemed acceptable, that is likely to delay acceptance. And in some cases, it will prevent acceptance totally. So it depends on the nature of the objection. If it’s a simple objection, if it’s a formality, like the name of the applicant, or the description of the services might be unclear, or the classification might be incorrect, those formalities can be addressed quickly, but if a serious objection is raised, for example, if your trademark is very descriptive of the goods or the services, or is a laudatory term, like fantastic, or wonderful, or great, or premium, you’re going to have a lot of difficulty overcoming that sort of objection and it may not be possible to do so. It’s quite a case by case situation to determine whether receiving an examiner’s report of objections leads to a delay or impossibility of the mark being accepted and ultimately registered.
Another obstacle that might come in the way of a trademark application, and therefore it’s time frame to be approved, is a potential opposition by a third party. Even if your trademark is accepted by the examiner, there is (in Australia) a 2-month window of opportunity after acceptance is advertised for third parties to oppose registration of the trademark. Opposition proceedings can take a long time to play out if the parties don’t settle the issues quickly. It could be over and done with within a period of a couple of months because the parties have settled, or if not settled and neither party withdraws from the proceeding it could play out over 18 months at a minimum, sometimes over years.
This is because of all the steps an opposition proceeding must go through, starting with the opponent filing a notice of intention to oppose and then a statement of grounds and particulars setting out the grounds of the opposition and the particulars that they intend to rely upon. And then the applicant must file a notice of intention to defend, and then there are evidentiary stages to go through and often a hearing prior to a decision being issued.
For those concerned about the delays or stages involved with an opposition proceeding, we previously published this post as a comprehensive guide to trade mark opposition proceedings in Australia.
Oppositions are certainly lengthy processes, and as suggested likely a minimum of 18 months for a contested opposition, with the current backlog of decisions that the trade marks office has to make, it’s taking a particularly long time for oppositions. Getting to a hearing and/or decision stage, after evidence has been filed by both parties, we are seeing this time frame delayed even further.
I’m Surprised It Takes So Long!
Often our clients are surprised with how long it takes but if you are not familiar with the trademark office procedures, or legal type proceedings generally, it makes sense you wouldn’t necessarily expect it to take such a long time. The reality is that it does take that long if a dispute cannot be settled earlier. A part of that is because of all of the evidence stages have to be completed. Another factor in there is that, IP Australia, the government body that handles these opposition proceedings, has limited resources, and so they can’t decide all the trademark oppositions that are on their files at the same time so things do up in a queue.
Is It Possible to Get My Trade Mark Opposition Decided Quicker?
Unfortunately, no unless the parties reach a party to party settlement. If they can’t or don’t then there’s no way to expedite an opposition proceeding with IP Australia. We try to work with our clients to achieve the best outcome for them, and if it appears that there can be a settlement reached that is in both parties interests, then we’ll try and achieve that settlement as quickly as possible as clients don’t want to go through a very time consuming opposition procedure, which can be costly, unless they absolutely have to. Unfortunately, sometimes there’s no alternative.
Final Thoughts
Be mindful that the time frame to get a trade mark approved will vary from country to country. That six to seven month timeframe is really a minimum worldwide because of the convention that the countries are a party to, but the length of time can vary dramatically from country to country. Some countries can take several years from filing to hearing anything about the outcome of examination and whether your mark is approved or not.
