Foreign entities wishing to register an Australian trademark should be aware that Australia is a ‘first-to-use’ jurisdiction. This means that the owner of a trademark is the first user of that trademark.

First to File

In some jurisdictions, the entity that is the first to file an application to register a particular trademark is the owner of that trademark. In a first to file jurisdictions the applicant will generally be the owner of the trademark regardless of whether the applicant has used the trademark prior to making an application for registration, and regardless of whether another entity (that has not previously applied to register the trademark) is already using it.

Arguably, a first-to-file system is easier to manage. Generally, in a first-to-file country, the only step the relevant IP Office needs to take to establish ownership of a trademark is to determine who was the first to file an application to register the relevant trademark.

First to Use

However, in Australia, priority is given to the entity that is the ‘first to use’ a particular trademark ‘as a trademark’ in relation to goods and services.

This means that if an entity has not registered its trademark in Australia, it could generally still rely on the Australian Consumer Law (which prohibits misleading and deceptive conduct and conduct that is likely to mislead or deceive consumers) or the Australian common law tort of ‘passing off’ to protect their trademark, provided that they were the first to use the trademark as a trademark in relation to goods and services in Australia.

Further, if the owner of an unregistered trademark decides to apply to register that trademark and receives an objection from the relevant examiner on the basis of a prior registered mark, the owner of the unregistered trademark may (as a general rule) be able to overcome that objection if it can show that:

• use of the applicant’s trademark commenced in Australia before the priority date of the cited trademark; and
• their use as a trademark has been continuous at least up until the priority date of the cited trademark.

Use “as a Trademark”

Use as a trademark generally means that the trademark has been used as a ‘badge of origin’, for example, to show the source of the goods or services to which it relates. This was provided for in Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, in which the Full Bench of the Federal Court of Australia held that the use of a mark as a ‘badge of origin’ (“in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods”) is used ‘as a trademark’.

The Full Court remarked in their judgement – “that is the concept embodied in the definition of ‘trade mark’ in s 17 [of the Trade Marks Act 1995 (Cth)] – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.”

One way to determine whether a mark is being used ‘as a trademark’ is to consider whether the mark is descriptive which would mean that it is unlikely that it has been used as a badge of origin and therefore, unlikely that it has been used ‘as a trademark’.

Notwithstanding that Australia is a ‘first to use’ jurisdiction, it is still extremely important that trademark owners seek to register their trademark. Having a registered trademark will make it quicker, easier, and cheaper to stop a third party from using an infringing mark in relation to the same goods and services. However, foreign entities should be aware that third parties may have rights to the same or a similar trademark in respect of the same goods or services.