Skip to content
English
お問い合わせ

Practical Analysis of the Australian Trademark System | A Patent Attorney’s Comprehensive Explanation of Cancellation for Non-Use, Pham Global, ABF NOO, and the Latest Case Law Thr

Picture of 弁理士 杉浦健文

Gemini_Generated_Image_z3w5tpz3w5tpz3w5

The Australian trademark system is administered by IP Australia (the Australian Intellectual Property Office), and its legal framework is primarily based on the Trade Marks Act 1995 (Cth). At first glance, it appears to follow a first-to-file system; however, in practice, factors such as “who is the true owner,” “whether there was a genuine intention to use the mark at the time of filing,” and “whether there was prior use in Australia” carry significant weight. Therefore, it is risky to simply assume, based on the Japanese approach, that “filing first is sufficient.”In this article, a practicing patent attorney explains the core principles of Australian practice.

Key Points of This Article: The Australian trademark system is one where success is determined by “pre-filing name verification, class specifications, and searches” and “post-registration evidence of use and monitoring.” Even if you optimize the registration process, the system can collapse later due to errors in the registrant’s name, non-use, insufficient monitoring, or inadequate license management. You should design the filing, registration, and enforcement processes as a single portfolio management strategy.

1. Framework of the System and Application Requirements

The foundation of the Australian trademark system is the Trade Marks Act 1995 (Cth). This Act covers not only standard trademarks but also the following special types of trademarks:

Ordinary Trademarks Collective Trademarks Certification Trademarks Defensive Trademarks

Scope of Registrable Signs

The scope of signs eligible for registration in Australia is broad and includes the following. However, this does not mean “any sign is acceptable”; there are restrictions based on distinctiveness or statutory requirements.

  • Words, designs, logos
  • Colors, sounds, smells
  • Movements, three-dimensional shapes, and packaging designs

Trademarks Difficult to Register: Generic descriptive terms, geographical names, common surnames, ordinary colors and shapes, product photographs, and words or marks protected or prohibited by law are, in principle, likely to be problematic due to a lack of distinctiveness or legal restrictions.

Eligibility of the Applicant and Intent to Use

The applicant must be the person claiming to be the owner of the trademark and must have an intention to use it for the designated goods or services in one of the following ways.

  • Use by the applicant
  • Granting a license to a third party
  • Use through assignment to a company to be established

In other words, although Australia does not follow a “use-based” system, speculative applications lacking an intent to use are incompatible with the system.

2. Applicant, Type of Mark, and Designation Practices

Designation of Goods and Services (45 Nice Classes)

Goods and services are classified under the 45 classes of the Nice Classification, with Classes 1–34 covering goods and Classes 35–45 covering services. More important than the selection of classes itself is the level of specificity in the descriptions within each class. Overly broad designations are disadvantageous in terms of both examination and non-use risks.

Additional Requirements for Non-English Trademarks

If the trademark contains characters other than Roman letters or non-English terms, a translation or transliteration must be submitted. While this may appear to be a minor procedural issue, it affects subsequent assessments of distinctiveness and determinations of similarity, so it should be addressed at the outset.

Address for Service

The address for service, which serves as the contact address after filing and registration, must be located in Australia or New Zealand. If you do not wish to disclose your private address, you may use a P.O. box or similar service. In cases involving foreign clients, this is often the first practical bottleneck.

Summary of Minimum Requirements for Application Procedures

Item Key Practical Points
Eligibility of Applicant The person claiming to be the owner. This includes companies, individuals, and organizations with or without legal personality; however, it is crucial that the applicant is the true owner.
Requirements for Use Intent to use through personal use, licensing, or transfer to a company to be established. A sincere intent to use at the time of filing is required
Types of Marks Characters, figures, logos, colors, sounds, smells, movements, packaging, shapes, etc. Non-traditional trademarks are possible, but the burden of proof is heavy
Requirements for Filing Manner of display, description of goods and services, and translations or transliterations as necessary
Classification 45 Nice Classes (Classes 1–34 for goods, Classes 35–45 for services)
Address for service Address in Australia or New Zealand (caution required for cases involving foreign clients)
Distinctiveness Descriptive terms, geographical indications, common surnames, and ordinary shapes are generally weak (may be strengthened by evidence of use)

Practical Tip: Rather than simply filing a Japanese trademark as-is in Australia, it is important to determine how to separate and file the English version, logo, and common name. In particular, if the logo contains text lacking distinctiveness, it is more stable in later proceedings to register the word mark and the logo mark separately.

3. Application, Examination, and Registration Process

Four Application Routes

Route Estimated Government Fees Practical Comments
Domestic Standard Application Minimum AUD 250 We recommend checking the latest price calculator for a detailed breakdown
TM Headstart Step 1: AUD 200 per class, minimum total AUD 330 per class, optional amendments AUD 150 per class A preliminary evaluation system useful for cases where you want to identify risks early
Madrid Application (Australia → Overseas) Base fee: 653 CHF (903 CHF for color) + individual fees for designated countries Be mindful of identity of subject matter and the 5-year dependency period
Designation of Australia in an international registration 217 CHF per class (effective April 12, 2026) In Australia, a decision on whether to issue a provisional refusal notice is made within 18 months

Claiming Priority

Deadlines that must be strictly observed: To claim priority, the Australian application must be filed within 6 months of the filing date in the contracting state, and the priority claim itself must be made at the time of the Australian filing or within 2 business days thereafter. Neither deadline is extendable. Applications claiming priority are processed for examination more quickly than standard applications.

Overall Flow to Registration

  1. Application Preparation → Determination of Applicant, Prior Art Search, and Designation of Goods and Services
  2. Filing → Via IP Australia online (or TM Headstart)
  3. Examination → Formal and substantive examination (ss 39–44)
  4. Acceptance or Adverse Report → Response to grounds for refusal (within 15 months)
  5. Acceptance and Publication → Publication in the Australian Official Journal
  6. Opposition Period (2 months) → Period for third parties to file oppositions
  7. Registration → Registration after no oppositions or resolution of oppositions

Summary of Key Deadlines

Phase Deadline/Duration Practical Implications
Claim of Convention Priority 6 months / 2 business days Cannot be extended
Minimum Registration Period At least 7 months Shortest timeframe for no response or no opposition
Handling of adverse reports 15 months Main period for evidence of use, amendments, deferments, and hearing preparation
Opposition period following publication 2 months Occurs immediately upon acceptance
Appeal against the Registrar’s decision Usually 21 days Appeal to the Federal Court / FCFCOA Div 2

4. Major Grounds for Rejection and Response Strategies

The main bottlenecks to grant can be broadly categorized into the following four:

Section 41: Distinctiveness

Descriptive, geographical, or common surnames, etc. Can be overcome with evidence of use

Section 44: Conflict with Prior Trademarks

Address through narrowing the scope of goods/services, consent agreements, or "honest concurrent use," etc.

s 60: Reputation of Another

Grounds for opposition based on well-known status in Australia and likelihood of confusion

Section 62A: Bad faith

A strong ground for opposition against applications filed in bad faith or to pass off

Five strategies for responding to grounds for refusal

  1. Minor Amendments: Amendments to Trademark Designation or Designated Goods
  2. Evidence of Use: Submission of sales records, advertisements, and sales data in Australia
  3. Deferment: Securing time to pursue strategies such as a non-use attack against prior registrations
  4. Division: Isolating Issues Through a Divisional Application
  5. Hearings and Appeals: Meetings with examiners and proceeding to higher-level reviews

5. Publication, Opposition, Invalidity, and Cancellation

Differences from Japanese Practice: It is safer not to directly apply the Japanese-style “trial” system to Australia. Practical disputes should be understood as falling into the categories of opposition, non-use hearings, and ex parte hearings at IP Australia, followed by court appeals or reviews.

Grounds for Opposition (Broad Scope)

Anyone may file an opposition within two months of the publication of the grant. The grounds are broad, as follows.

  • s 58: applicant not owner (the applicant is not the true owner)
  • s 58A: prior use of a similar mark
  • s 59: Lack of intention to use
  • Section 60: Reputation in Australia (Confusion due to well-known status)
  • Section 61: false geographical indication
  • Section 62: Unlawful amendments or false evidence
  • Section 62A: Bad faith

Timeline for Opposition Proceedings

Standard Schedule for the Evidence Phase:

  • Evidence in support: 3 months
  • Evidence in answer: 3 months
  • Evidence in reply: 2 months
  • Cooling-off / suspension: Up to 6 months initially, up to 1 year in exceptional cases

While Australian opposition proceedings may appear to be “short-term battles,” they are often conducted as medium-term battles that incorporate settlement negotiations.

Cancellation for non-use (most critical issue)

Very important: Anyone can file a non-use application.For applications filed on or after February 24, 2019, a trademark may become subject to Section 92(4)(b) three years after entry in the register. If there was no genuine intention to use the trademark at the time of filing and no use occurs within the prescribed period thereafter, Section 92(4)(a) may also become an issue. If filing a broad application in Australia, you should work backward from the start to determine whether you can maintain this designation three years later.

Comparison of Key Attack and Defense Procedures

Procedure Key Deadlines Government Fees
Opposition to Registration 2 months after publication (Evidence: 3/3/2 months) NIO AUD 250
Cancellation for Non-Use 3 years after entry in the register Application fee AUD 350
Opposition to a non-use petition After publication Hearing fees are separate
Rectification / Cancellation Primarily court Requires individual verification
Appeal against the Registrar’s decision Usually 21 days Proceeding will be followed

6. Post-registration management and transactions

Renewal

The basic term of registration is 10 years from the filing date. Even for applications claiming priority, the starting point for calculating the renewal period is the Australian filing date. Renewal is possible within one year prior to expiration, and there is a six-month grace period after expiration.

Renewal Procedure Fees
Online AUD 400 per class
Other Methods AUD 450 per class
Late renewal AUD 100 per class for each month or fraction thereof

Assignment and Licensing

Assignments are conducted on a contractual basis, after which the change of ownership is reflected in the registry. IP Australia is responsible for updating the registry upon submission of proof of title, such as a deed of assignment, sale agreement, merger certificate, or probate.

While licensing is not subject to a “registration required for validity” requirement, recording a claimed interest or right allows you to receive certain notifications from IP Australia.

Importance of Authorized Use: In Australia, authorized use is treated as use by the owner. License agreements should include, at a minimum, provisions for quality control, the obligation to submit samples, evidence retention, territory, and management of online sales. In a non-use defense, the key factor is not just the contract itself, but whether you can demonstrate that the mark was actually used under your control.

Market Monitoring and Tax Cooperation

Market surveillance is entirely the responsibility of the rights holder. IP Australia also explicitly states that infringement prevention, surveillance, and enforcement are the rights holder’s own responsibility. Combine the following measures:

  • Australian Trade Mark Search
  • TM Checker
  • WIPO Global Brand Database
  • Monitoring of Major E-commerce Platforms, Social Media, and Domains
  • Cooperation with Australian Customs (ABF) = Notice of Objection

7. Infringement, Enforcement, and Dispute Resolution

Civil Infringement Litigation

In infringement disputes based on registered trademarks, the primary remedies are injunctions issued by the court and, at the plaintiff’s discretion, damages or an account of profits. Furthermore, additional damages may be awarded based on considerations such as the egregious nature of the infringement, the need for deterrence, conduct following a warning, and profits derived from the infringement.

Border Measures (Australian Border Force NOO)

A powerful, free tool: Rights holders can file a Notice of Objection with the Australian Border Force at no cost, enabling the temporary detention or seizure of suspected imported goods. At the same time, a Deed of Undertaking is submitted to prepare for the costs associated with storage, transportation, and disposal. This is highly effective against counterfeit goods and parallel imports.

Criminal Penalties

Types of Offenses Penalties
Falsification or Removal of a Registered Trademark Imprisonment for up to 5 years or a fine of 550 penalty units, or both
Acts relating to goods bearing false trademarks Imprisonment for a term not exceeding 12 months or a fine of 60 penalty units, or both

Although Australia does not treat “trademark infringement” as purely a civil matter, the standard approach to brand disputes typically centers on a combination of civil and customs enforcement.

8. Key Case Law (including the latest 2026 case)

① Cantarella Bros v Modena Trading [2014] HCA 48

The High Court emphasized that, in assessing the distinctiveness of a foreign-language mark, the focus is on how the ordinary signification of the term is understood by relevant consumers in Australia. The mere fact that a term is descriptive in a foreign language does not automatically lead to refusal; rather, it is crucial to prove the ordinary understanding of the term in the Australian market.

② Pham Global v Insight Clinical Imaging [2017] FCAFC 83

The court held that a defect arising from filing an application under the wrong owner’s name cannot be easily cured by a subsequent assignment or amendment. This sends a strong message that, in Australian cases, the filing entity should be verified against the corporate diagram before filing.

③ E&J Gallo Winery v Lion Nathan Australia [2010] HCA 15

A precedent that interprets “use of a trade mark” and infringement determinations from a practical, commercial perspective. The use of “BAREFOOT RADLER” was treated as infringing the “BAREFOOT” wine trademark, opening the door to damages and an account of profits. Even if the classes differ, there is a risk due to product proximity and similarity of the marks.

④ Self Care IP Holdings v Allergan Australia [2023] HCA 8

A major recent case regarding the role of deceptive similarity, consumer confusion, and reputation. It demonstrates that infringement and similarity determinations must be made through a dispassionate comparison based on the registered mark and actual usage, indicating a trend where even well-known brands cannot automatically prevail based on reputation alone.

★ Latest: Taylor v Killer Queen LLC [2026] HCA 5

In a March 2026 High Court case, the IP Australia Manual was updated to reflect this precedent. It clarified that the “reputation” under s 60 must be “the reputation of the trade mark in relation to specific goods or services.” This reflects the recent trend in practice that the fame of a celebrity or well-known brand does not automatically translate into reputation for all goods.

9. Practical Checklist

In Australian practice, the areas most prone to errors are not complex legal arguments, but rather the four key points of ownership, classification, evidence, and monitoring. These are the items that should be verified at the start of a case.

  1. Who is the true owner? Determine in advance whether to file in the name of an individual, an Australian subsidiary, a Japanese parent company, a sales company, or a trustee. Name registration errors of the “Pham Global” type are difficult to rectify later.
  2. What should be separated into separate applications? Do not combine text, logos, colors, series, or non-English designations into a single application; divide them by enforcement unit.
  3. Are the designated goods and services too broad? Design the application by dividing them into the current scope of use, the scope of use over the next 12–36 months, and the scope for future licensing. Will it withstand a non-use attack three years from now?
  4. Are you conducting a two-tier pre-filing search? Australian Trade Mark Search + WIPO Global Brand Database + company name + domain names + e-commerce/social media
  5. Are you preparing the body of evidence to prove distinctiveness in advance? Organize data chronologically: date of first use, sales figures, advertisements, media coverage, trade shows, web traffic from Australia, and packaging photos
  6. Have exit strategies prepared for Section 44 challenges? Simultaneously evaluate narrowing the scope of goods and services, consent, deferment, honest concurrent use, prior continuous use, and non-use attacks against the opponent’s mark
  7. Is license quality control included in the contract? A simple letter of authorization is insufficient
  8. Have monitoring and customs strategies been designed separately? Separate register watch from market watch, and prepare ABF NOO early for counterfeit-prone brands
  9. Have you considered costs and the impact of disclosure before filing an opposition or non-use claim? In Australia, the opposing party’s costs are a practical concern

10. Frequently Asked Questions

Q. Can I file an Australian application based on a Japanese application?
A. Yes, it is possible. There are two routes: (1) filing a direct application in Australia within six months by claiming priority under the Paris Convention, or (2) designating Australia in a Madrid international application. The Madrid system allows for consolidated filing in multiple countries, making it cost-effective; the individual fee for designating Australia is 217 Swiss francs per class effective April 12, 2026.
Q. What are the practical tips for avoiding cancellation due to non-use?
A. Applications filed in 2019 or later may be subject to cancellation three years after entry in the register. The basic strategy involves: ① Continuously collecting sales records, invoices, advertisements, photos of packaging, and web screenshots; ② In the case of a license, preserving evidence of “authorized use” for quality control purposes; and ③ Not designating classes that will not be used from the outset.
Q. Should I use TM Headstart?
A. It is useful for cases where there are concerns about distinctiveness or ownership, or where there is uncertainty regarding the description of goods and services. By receiving a preliminary assessment from IP Australia in Step 1 (AUD 200 per class) and making amendments as necessary before proceeding to the formal application, it helps identify risks early on. On the other hand, for cases with a clear likelihood of success, a standard application is generally more cost-effective.
Q. How can I avoid Pham Global-style errors in the name of the applicant?
A. Before filing, you must confirm: (1) whether an Australian subsidiary exists, (2) the assignment of rights under sales and licensing agreements, (3) the group’s IP holding structure, and (4) any planned future M&A or business transfers. Then, determine the filing entity by referring to the corporate diagram. Since it is difficult to correct errors later, it is most important to make the correct decision from the outset.
Q. What should be done first to address counterfeit goods?
A. First and foremost, consider submitting a Notice of Objection (free of charge) to the Australian Border Force. This enables a temporary suspension of imports. Concurrently, design a strategy combining: (2) market surveillance (online and physical stores), (3) collection of infringing product samples, and (4) injunctive relief and claims for additional damages in the Federal Court.
Q. Can the objection period (2 months) be extended?
A. The objection period itself can only be extended under limited circumstances. However, during the evidence phase following the filing (3/3/2 months), you can secure negotiation time (up to 6 months initially, or 1 year in exceptional cases) through cooling-off periods or suspensions. In practice, it is advisable to treat Australian objections as a mid-term strategy based on the premise of settlement negotiations.

Consultation on Australian Trademark Applications

At the intellectual property firm EVORIX, we provide comprehensive support in collaboration with local agents, covering everything from Australian trademark applications, renewals, and infringement responses to Madrid Protocol international applications. We offer
strategic support ranging from brand name and designated goods planning to defense against cancellation for non-use and responses to ABF Notices of Objection.

Free 60-minute initial consultation / Response within 1 business day

📞 06-7777-1884 / ✉ contact@evorix.jp / Contact Form

Related Articles & Services