We have recently been receiving 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 happening when their client’s mark is protected in Australia via the Madrid Protocol, even if no objections have been raised during the examination process, when this has not been previously required.
We have been informed by IP Australia 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 legislation but IP Australia is now sending out the notices simply to encourage trade mark holders to provide such an address to ensure compliance as the Regulations state that the Registrar should be notified “as soon as practicable”.
Wrays would be happy to assist in providing an address for service if required.