Obtaining a preliminary assessment from the IP Office before filing a full trade mark application in Australia and New Zealand can be great way to assess how a potential application may fare during examination through the eyes of an examiner.
The IP Offices in both Australia and New Zealand offer preliminary assessments. IP Australia calls this service “TM Headstart”, whereas IPONZ calls its service “Search & Preliminary Advice (S&PA)”. The two services operate in much the same way – but do contain some crucial difference, which we have summarised in the table below:
|
|
Australia (TM Headstart) |
New Zealand (S&PA) |
|
Does the preliminary assessment provide a filing date? |
No |
No |
|
Are the results published? |
No, but may be discoverable under a Freedom of Information Act request. |
No, but may be discoverable under an Official Information Act request. |
|
What is examined? |
· Distinctiveness · Descriptiveness · Geographical names · Common surnames · Prohibited signs/Offensiveness · Third party marks |
· Distinctiveness · Descriptiveness · Geographical names · Common surnames · Prohibited signs/Offensiveness · Third party marks |
|
Official fees |
AU$200 per class |
NZ$50 per class |
|
Are there additional fees payable when transforming/filing the full application? |
AU$130 per class |
NZ$50 per class |
|
How long does it take to receive the results? |
5 working days |
5 working days |
|
Can the mark be amended if the results are unfavourable? |
Yes, the mark can be amended within 5 working days for a AU$150 Official fee. |
No |
|
What is the timeframe for filing (or converting to) the full application following the results of the preliminary assessment? |
5 working days |
3 months |
|
Are goods/services examined? |
No |
No |
|
Are the results contestable? |
No |
No |
|
Are unregistered rights covered? |
No |
No |
|
Will the results confirm if use of the mark will infringe an existing registration? |
No |
No |
If you are on the fence about whether a mark may be distinctive or descriptive, or you have a feeling someone else may have filed for something similar before you, then these preliminary assessments can help you decide whether to press ahead with a full application or to consider amending your mark before you fully commit.
Can I rely on the preliminary assessments in place of a full availability search?
No, see our article on the importance of conducting full availability searches here.
If you feel you can benefit from a preliminary application in Australia or New Zealand, contact one of our trade mark team.
