Why a local agent is critical for Madrid applications designating Australia

Australian trade mark regulations require holders of Madrid Protocol applications designating Australia to record an address for service in Australia or New Zealand after protection is granted. In the absence of any penalties for non-compliance, many rights holders leave Australian designations registered without a local address for service.

Foreign attorneys managing Australian trade mark rights on behalf of their clients should always record a local agent with IP Australia, even when an application proceeds smoothly to registration with IP Australia.

Do you need to appoint a local agent?

The Trade Marks Regulations 1995, at regulation 17A.37(3), specifies that the holder of an international registration designating Australia (IRDA) must notify IP Australia of their address for service in Australia or New Zealand as soon as practicable after a statement of grant of protection has been issued. This requirement is referenced in IP Australia’s cover letter when issuing the statement to the holder.

While this is a technical requirement of the regulations, there are no specified penalties for holders that fail to comply. As such, we see countless IRDAs listed on the Australian trade marks register with no local address for service.

Why should you always appoint a local agent?

The main benefit of this relates to receiving notices about possible non-use removal actions filed against an IRDA.

In Australia, anyone can file an application to remove a registered trade mark for non‑use with IP Australia, which is typically on grounds of the registered mark not being used in Australia during the previous three years. This is a common strategy used by trade mark applicants to remove cited trade marks preventing registration of their own, where non-use in Australia is suspected.

Once a non-use action is filed, the trade mark holder has two months from the date of IP Australia’s notice to indicate their intention to oppose the action with IP Australia (via filing a “notice of intention to oppose”). If this deadline is missed, the non-use action automatically succeeds, and the relevant registration is removed. Therefore, missing the non-use opposition deadline has serious implications for rights holders.

In practice, where an IRDA has no address for service in Australia or New Zealand, IP Australia serves the non-use removal notice by ordinary untracked post to the WIPO-recorded representative of the holder only. Service is deemed effective on the date of posting by IP Australia, irrespective of when (or if) the notice is received in the post.

Given the way IP Australia serves non-use removal notices, opportunistic third parties may target an IRDA missing a local address for service with a non-use removal action, suspecting reasonable chances that the action will simply not be opposed in time because the notice form IP Australia is delayed, missed or never received. On the flipside, if a local agent has been appointed to the IRDA, IP Australia will notify the agent about the non-use action electronically.

How can we help?

Appointing a local agent is the simplest way to protect IRDAs from avoidable loss due to missed non-use action notices.

We assist foreign attorneys with managing trade mark portfolios for their clients in Australia and New Zealand. Please reach out to us if you need assistance with appointing a local agent for any IRDA.