Do You Need a Local Representative for International Registrations Designating Australia?
If you have designated Australia under an International Registration (IR) and IP Australia raises objections in a provisional refusal, you will need to provide an address for service in Australia or New Zealand to respond to the refusal. However, you may wonder if you need a local address for service if your Australian Designation has not received any objections and if it is protected?
Do international trade marks in Australia need a local address for service?
What Does the Regulation Say?
According to Regulation 17A.37(3) of the Australian Trade Marks Regulations 1995, holders of protected international trade marks designating Australia are required to notify IP Australia of an address for service in Australia or New Zealand “as soon as practicable” after receiving notice that their trade mark is protected.
Now, while this sets a legal requirement for all International Registration Designating Australia, there are presently no penalties if you do not comply with the requirement. IP Australia has actively issued reminders to parties to encourage compliance, emphasizing the importance of providing an address for service. But that has been the extent of enforcement so far.
Benefits of a local address for trade mark registrations in Australia
1. Ensuring Timely Receipt of Critical Notices
Even if your trade mark has been registered without objections, important correspondence from IP Australia may arise later. This includes:
- non-use removal applications, which can result in the cancellation of your trade mark if not opposed within strict deadlines;
- notification about revocation proceedings initiated by third parties;
- notifications regarding any recordals against the designation.
Relying solely on the WIPO-designated contact for correspondence can result in delays, especially if international mailing timelines affect your ability to respond within Australian deadlines.
2. Risk of Non-Use Cancellation
Under Australian law, trade marks can be removed from the register for non-use if the holder fails to provide evidence of use within the required timeframe. Without a local address for service, notifications about non-use applications may not reach you in time, leaving your trade mark vulnerable to cancellation.
3. Simplified Communication with IP Australia
Having a local address for service ensures streamlined communication with IP Australia. Local representatives are familiar with regulatory requirements and can act quickly, reducing the risk of missed deadlines or compliance issues.
How to Appoint a Local Address for Service?
Appointing a local address for service is straightforward. This does not require powers of attorney and is typically a cost-effective solution.
Key Takeaways
- Regulatory Compliance: Under Australian law, holders of International Registrations Designating Australia must provide an address for service in Australia or New Zealand. Whether the Designation is protected without objections or oppositions, this requirement has not been strictly enforced.
- Avoid Risk: A local address ensures timely receipt of critical notices, reducing the risk of trade mark cancellation or loss of rights.
- Efficient Communication: Local representatives can navigate Australian trade mark regulations seamlessly, providing peace of mind.
Halfords IP specializes in managing International Registrations designating Australia and New Zealand. For further information or assistance, contact Aparna Watal.
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