We have recently been receiving a high volume of queries from overseas IP firms who have received a notice from IP Australia asking for an Address for Service in Australia or New Zealand.
This is occurring when your client’s mark is protected in Australia or New Zealand via the Madrid Protocol, even if no objections have been raised during the Examination Stage and equates to a formality request that was not previously required.
We have been informed by IP Australia & IPONZ that the Notice is simply a reminder of the obligations of a holder pursuant to Regulation 17A.37(3) of the Australian Trade Mark Regulations 1995 (the Regulations) which provides that:
As soon as practicable after receiving notice that a trade mark is a protected international trade mark, the holder must notify the Registrar, in writing, of the holder’s address for service in Australia or New Zealand.
If an Address for Service is not provided, there are no specific sanctions prescribed in our current legislation as to lack of compliance. However, IP Australia & IPONZ is now sending out the Notices simply to encourage trade mark holders to provide such an Address for Service to ensure compliance as the Regulations state that the Registrar should be notified “as soon as practicable”.
There are multiple benefits to appointing a local Australian or New Zealand Address for Service and Marquette IP remains happy to assist if required. In the spirit of expanding our cooperative commercial relationships with international firms:
Marquette IP adopts a practice of assuming responsibility for your client’s marks in Australia & New Zealand at no cost, including all ongoing maintenance and management advice. This includes ongoing advice regarding Australian & New Zealand law updates that might impact the IP Rights and IP Portfolio & Structuring Advice on regular incremental bases.
We take this opportunity to further detail the benefits of appointing Marquette IP as your client’s local Australia & New Zealand agent, including our value-add service.
Benefits of Appointing a local Agent as Address for Service
There are many benefits associated with appointing a local agent as Address for Service for your client’s IRNs:
- Direct & Immediate Point of Contact for Contentious Matters: appointing a local Address for Services ensures that in circumstances whereby your client’s mark in Australia or New Zealand becomes the subject of a contentious dispute, immediate and timely contact can be achieved, including notifications from IP Australia & IPONZ. A local Address for Service therefore facilitates an immediate point of communication with the Registrar and any relevant third parties, positioning you to ensure that your client can promptly respond and address any contentious issues that may arise.
- Safeguard Against Non-Use Removal: Australian & New Zealand trade mark laws are evolving when it comes to registered trade marks. In recent years, we saw a decrease in the non-use removal provision that applied to marks registered in Australia since February 2019. More recently, we have experienced developments whereby non-use removal laws no longer recognise ‘affiliated entities’ within a complex corporate structure and instead moving to a more literal interpretation of ‘approved use’ laws whereby express IP License Deeds are required between registered trade mark owners and those entities using the mark. In circumstances where adequate ‘control’ has not been able to be demonstrated between the ‘trade mark owner’ and ‘approved users’ in the form of an explicit IP License Deed, corporations with complex structures have unfortunately fallen foul to non-use removal attack by reason of disconnect between registrant and user. Ensuring a local Australian or New Zealand Address for Service is listed against your client’s mark and those marks appear in our database provides for ongoing and timely updates in terms of changes in legislation that may impact the validity and maintenance of your clients IP Rights.
- Portfolio Maintenance & Monitoring: Adequate portfolio maintenance and monitoring requires a holistic approach and overseeing a client’s portfolio collectively can ensure value-add in terms of service and advice provided at a local level. Marquette IP adopts a practice of regular IP Portfolio audits and safe-checks. Therefore, placing your clients’ Australia & New Zealand marks in our firm’s hands ensures we can adopt complete and full oversight, safeguarding your clients IP rights in Australia & New Zealand, for best outcome.
Why Choose Marquette IP for Australian & New Zealand Matters?
At Marquette IP, we understand the importance of staying abreast of international developments which flow to impact your client’s IP rights globally. Our team is dedicated to providing you and your clients with the necessary support, guidance and ongoing regular legislative and practical law updates to navigate these challenges and ensure the highest quality of services.
Marquette IP’s portfolio monitoring and maintenance service includes regular legislative updates and audits on a per annum basis to ensure avoidance of issues and highest quality value-add service.
Take advantage of a no-cost Australia or New Zealand portfolio take-over and complimentary IP Portfolio Opinion & Assessment for your client’s marks.
Our team remains available to advise and support you in relation to any Australian & New Zealand matters. Please do not hesitate to contact us if we can be of assistance.
* “My Country”: Artistic Credit, Kudditji Kngwarreye (Australian Aboriginal Artist)
