IP Australia offers two (2) options for filing a trade mark application in Australia: (i) a standard trade mark application; and (ii) a trade mark Headstart application. This article will outline the procedure and benefits of the trade mark Headstart service.
One of the major advantages of the trade mark Headstart service is that IP Australia undertakes a pre-assessment of the registrability of your trade mark before filling a trade mark application. This allows an Applicant to obtain an initial opinion from the Trade Marks Office as to whether or not the trade mark is registrable.
It is important to note that the following types of trade marks are excluded from the trade mark Headstart service:
- special kinds of signs
- series trade marks
- certification trade marks
- collective trade marks
- defensive trade marks
- divisional applications.
The Headstart procedure involves two parts. In Part 1, a draft application is filed. Within 5 business days, an examiner will provide an initial opinion as to the registrability of the trade mark.
A feature of the Headstart procedure is that Part 1 uses a drop-down list when choosing the description of goods and/or services that will accompany the application. Therefore, it is not possible to be specific in connection with the goods and/or services to which the mark is to be applied. However, once a positive response is received from the examiner, it is possible to request an amendment to specify the goods/services. Provided that the amended goods and/or services fall within the general description of the goods/services selected from the drop-down list, the amendment should be allowed.
The application can be abandoned if a negative response from the examiner is received, noting that the application is not published during Part 1. Alternatively, you can decide to argue the matter when the formal examination report issues.
Note that the examiner does reserve the right to issue an adverse examination report even if the initial opinion from Part 1 indicates that the trade mark can be registered.
There is a non-extendable period of 5 days from the issuance of the initial opinion to make any amendments, and pay the Part 2 fee.
Rights in a registered trade mark commence from the filing date of the trade mark. The trade mark application is considered filed as soon as the Part 2 fee is paid. Therefore, the filing date of the trade mark application is the date that the Part 2 fee is paid. Once the Part 2 fee is paid, the application reverts to a standard trade mark application, and is examined accordingly. The examiner will also conduct a supplemental search for any potential conflicting mark/s filed from the period between the initial opinion and payment of the Part 2 fee.
Once the Part 2 fee is paid, the details of the application will be published, and any amendment to the application cannot substantially affect the identity of the trade mark, or broaden the scope of goods and/or services. Therefore, any amendment to the application to address obstacles to registration of the trade mark should be made prior to payment of the Part 2 fee.
Although IP Australia explicitly states that the Headstart procedure “does not provide a faster or cheaper path to trade mark registration”, the procedure may be advantageous for use in particular situations. For example, if there is any form of uncertainty regarding registrability of the proposed trade mark, the Headstart procedure provides a rapid, initial assessment of the registrability of the trade mark, and allows the Applicant to implement changes to the trade mark and/or the associated goods or services in order to overcome any potential barriers to registration.