Early Trade Mark Assessment - TM Headstart Pros and Cons

September 2019

CATHERINE CHANT | Special Counsel


TM Headstart is a pre-application service offered by IP Australia, whereby an applicant submits their trade mark application, as a pre-application, and it is examined by IP Australia within about 5 days or so. There are obvious advantages to this process which we discuss below, together with disadvantages.


Advantages


Speed


The obvious advantage of TM Headstart is that the pre-application is examined quickly. Within 5 days or so, IP Australia will contact the Applicant or their agent and advise whether the application is likely to attract grounds for rejection and, if so, the nature of those grounds for rejection. An applicant has early notice of registerability of their trade mark.


If there are no grounds for rejection foreshadowed by IP Australia, or there are but the Applicant nevertheless wishes to proceed with the application, they can then convert the pre-application into a formal trade mark application (within 5 days of obtaining the TM Headstart results) and it will be processed by IP Australia as normal. The trade mark application will still undergo formal examination[1] but this is expedited so that an examination report or notice of early acceptance will issue soon after.


Limiting Costs


If IP Australia foreshadows grounds for rejection at the pre-application stage and the Applicant decides not to pursue protection of the trade mark, the application may be abandoned at the pre-application stage, thereby limiting the Applicant’s costs. The Government fees for submitting a TM Headstart request, in one class, are AU$200 while the Government filing fees for one class of a standard trade mark application are AU$330 (where the Applicant does not choose goods/services from the IP Australia picklist).


An additional fee of $130 is only payable in respect of the TM Headstart request, in one class, if the pre-application is converted into a formal trade mark application.


Ability to Amend


Another benefit of TM Headstart is that if IP Australia foreshadows grounds for rejection of an Applicant’s trade mark, the Applicant can amend the TM Headstart request (within 5 days of obtaining the TM Headstart results), including the trade mark itself, and have it reassessed. Amendments to a trade mark are often not allowed in respect of standard trade mark applications.


Government fees for an amendment to a trade mark the subject of a TM Headstart request are AU$150 per class.


Confidentiality


The TM Headstart request is not published. Therefore, third parties will not know about the request unless it is converted to a standard trade mark application. Publication occurs at that time.



Disadvantages


Limited Descriptions of Goods/Services


One of the main disadvantages of TM Headstart is that the Applicant must identify its goods/services using an IP Australia picklist (Picklist). They cannot use terminology which is not included in the Picklist. Therefore, it is important to ensure that the terminology chosen from the Picklist is broad enough to cover the Applicant’s goods/services. For example, the specific goods “pet treats” are not listed in the Picklist. Therefore, other goods, such as, pet food or animal food stuffs would have to be selected from the Picklist.


Not Applicable for some Trade Marks


TM Headstart cannot be used for certain trade marks. These are:

- special kinds of signs

- series marks

- certification trade marks

- collective trade marks

- defensive trade marks

- divisional trade mark applications.


The normal method of applying to register such trade marks must be used.


Priority Date


As previously noted, the TM Headstart request is not published unless it is converted into a standard trade mark application. Therefore, if the earliest priority date is required for a trade mark, filing a standard trade mark application is preferable to a TM Headstart request.


TM Headstart offers a means of obtaining a fast early assessment of a trade mark from IP Australia. However, standard trade mark filing may be preferred where there is a lengthy specification of goods and/or services not covered by the Picklist, where the procedure does not apply to the trade mark, such as, a series mark, or where the earliest possible

priority date is required.


For further information about TM Headstart contact Catherine Chant at Catherine.chant@halfords.com.au, Geoff Davidson at Geoff.Davidson@halfords.com.au or Huon Shields at Huon.shields@halfords.com.au.

[1] IP Australia does not guarantee that the results of formal examination will be the same as the TM Headstart results but, to date, we have not seen any discrepancies.

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