So, just because you’ve filed a trade mark internationally under the Madrid Protocol, it doesn’t mean your mark is automatically protected in Australia. Like every other country that’s a party to the Protocol, Australia has the right, and the legal duty, to examine an International Registration Designating Australia (IRDA) under local laws. And yes, that means your IRDA can be refused here, just like any national application.
That refusal, known as a provisional refusal, is one of the most misunderstood parts of the IRDA process. Many brand owners are caught off-guard when they receive one. So let me walk you through exactly what a provisional refusal of an IRDA is, why you might receive one, and, most importantly, what steps you can take to overcome it.
What Is a Provisional Refusal?
When you file an international trade mark through the Madrid System and designate Australia, IP Australia still examines your IRDA as if it were a local application. They apply Australian trade mark laws, primarily the Trade Marks Act 1995 and its Regulations, to ensure your mark meets all the requirements for protection in Australia.
If IP Australia finds any legal obstacles to registration, for example, that your mark conflicts with existing trade marks, lacks distinctiveness, or includes prohibited signs, they issue a provisional refusal.
A provisional refusal is basically an official report telling you, the holder of the IRDA, that your mark (as filed) cannot yet be accepted for protection in Australia. It’s not the end of the road; you still have the opportunity to respond and address the issues raised. Think of it as a “yellow light”, not a red one.
Basis for Provisional Refusal
Here’s what’s happening behind the scenes. Under the Madrid Protocol (Article 5) and Madrid Protocol Regulations (Rule 17), each country, including Australia, has the right to notify the International Bureau of a provisional refusal within 18 months of being notified of the IRDA.
In Australia, this process is governed by Division 3 of Part 17A of the Trade Mark Regulations.
Common grounds for provisional refusal include:
- Objections under sections 39-44 of the Trade Marks Act
- Issues with the specification of goods/services
- Need for a translation of non-English terms
- The mark being a certification trade mark (which requires additional approval from the ACCC)
What’s in the Provisional Refusal Report?
If IP Australia issues a provisional refusal, the report (sent to both the International Bureau and you as the holder) will clearly set out:
- The identity of the office (IP Australia)
- The IRDA number
- The specific grounds for refusal
- Citations of any conflicting trade marks
- Details of the affected goods and/or services
The requirement to provide an address for service in Australia or New Zealand if you want to respond
How Can You Respond?
This is where having a skilled IP attorney on your side makes all the difference. As the holder of an IRDA, you have 15 months from the date of provisional refusal to overcome the objections.
During this period, you can:
- Submit arguments or evidence to persuade the examiner that the refusal is not justified
- Amend your specification to address classification issues
- Limit the scope of the goods/services to avoid conflict with earlier marks
One point to remember: If you need more time to prepare your response, IP Australia’s standard extension of time provisions apply. But because there are no extensions under the Madrid Protocol itself, acting promptly is always your best bet.
What Happens If You Don’t Respond?
If no response is received within the 15-month period, IP Australia will notify the IB with a final decision:
- Confirmation of refusal for the affected goods/services
- Protection granted only for the goods/services that weren’t refused
In other words, if you miss the window to respond, you lose the chance to argue your case. Thus, your mark may only be protected in Australia for part of the original specification, or not at all.
What If You Overcome the refusal?
If your response successfully addresses the grounds for refusal, great news, IP Australia will notify the international bureau that protection is now granted for the IRDA. The international bureau will then update the International Register to reflect that the trade mark is protected in Australia (for some or all of the goods/services originally filed).
Final Thoughts
Don’t panic if you receive a provisional refusal, it’s a common step in the IRDA process. Many objections can be resolved with the right legal arguments or adjustments to the specification. But time is of the essence, and you need to respond properly within the 15-month period.
Working with an experienced IP attorney ensures you’ll have a clear strategy for responding. That is the best chance of securing protection for your mark in Australia.
If you’ve received a provisional refusal of an IRDA, or if you’re preparing to designate Australia under the Madrid Protocol and want to avoid common pitfalls, our team is here to help.
Contact us to learn more about how LexGeneris can assist you with all your intellectual property needs. You can also schedule a no-cost consultation with our team of expert IP Attorneys Australia, IP Attorneys India, and IP Attorneys New Zealand.
