In Australia, trade mark registration operates on a “first-to-use” basis, which means that the owner of a trade mark is the first entity to use that trade mark in connection with goods and services. This system differs from “first-to-file” jurisdictions where the entity that files the first trade mark application becomes the owner, regardless of prior use.

Registering a trade mark in Australia is highly recommended in order to secure stronger legal protection and avoid any potential disputes with similar trade mark owners.

Here are our top six tips to consider before filing your trade mark in Australia for entry into the Australian market.

First-to-use applies

Australia follows a first-to-use system for trade mark ownership. The entity that first uses a trade mark in connection with goods and services is considered the owner, regardless of whether or not the trade mark is registered.

Protection without registration

If your trade mark is unregistered, you may be able to protect the trade mark in Australia through the Australian Consumer Law or common law concept of “passing off” provided you were the first to use the trade mark as a trade mark in connection with goods or services in Australia.

Challenging registered trade marks

If you have an unregistered trade mark and apply to register your trade mark in Australia and face objections due to a prior registered trade mark, you may be able to overcome the objection. This will require you to prove that that you used your trade mark in Australia before the priority date of the prior trade mark and maintained honest and concurrent continuous use up to that date.

Use as a trade mark

To establish use as a trade mark, it is important that the trade mark is used as a “badge of origin” in Australia to indicate the source of goods or services in the course of trade. In other words, descriptive marks may not be considered “use as a trade mark”.

Value of registration

Even in first-to-use jurisdictions like Australia, registering your trade mark is crucial. It offers a quicker, easier, and more cost-effective way to prevent third parties from using an infringing trade mark for the same goods and services. A trade mark registration ultimately provides stronger legal protection.

Competing trade marks

Be aware that in Australia third parties may have rights to use a similar or identical trade mark for the same goods or services. Registering your trade mark early can help in avoiding potential conflicts.