Lilia J. Don (Author and Trademark & IP Lawyer – Australia and South Africa)
www.ljdon.com
www.ljbattorneys.co.za
Dr. Daniel Dimov (Triple Licensed Attorney – California, Belgium, and Bulgaria) www.dimov.pro
1. Introduction
In the era of AI, one can find an immense volume of AI-generated information about trademarks and trademark procedures. This brief article does not aim to contribute to the AI-generated flood of information. Instead, it aims to provide entrepreneurs and IP practitioners with some important information about the trademark processes in the aforementioned four jurisdictions.
Each of the authors is licensed in two of the four jurisdictions and, therefore, this article is not a product of academicians or copyrighters, but a work of legal practitioners. Although we will put reasonable efforts to provide correct information, this article is for general information only and cannot be relied on as legal advice as legal advice can be provided only on the basis of the specific situation of the client. We thank you for reading this contribution and hope that it will be helpful.
We begin our analysis with Australia (Section 2) whose trademark system has some similarities with English law as both jurisdictions are based on common law (a legal system originating in England). Next, we proceed with the European Union (Section 3). Please note that our analysis will focus on the trademark procedures before the European Union Intellectual Property Office (EUIPO) and not on the trademark procedure before the individual EU countries. In the EU, trademarks can be obtained not only at EU level, but also at national level. Next, we focus on South Africa (Section 4) which is also a system based on common law. At the end of the article, we examine some aspects of the procedures before the United States Patent and Trademark Office (USPTO)(Section 5).
2. Australia
Australia offers something most practitioners do not think to use until they need it, and by then, the moment has often passed. Before a trademark is formally lodged, IP Australia allows applicants to submit a pre-filing request for a preliminary examiner assessment, paying a reduced fee to get a read on registrability within days. The catch, and it is a meaningful one, is that rights only crystallise from the date of formal filing, not the pre-filing request, so a competitor who files during that window of deliberation simply wins. Those who know this factor it into the decision-making calculus, not treat it as a safety net.
Equally instructive is how Australia handles objections once an application is in: where only some goods or services are problematic, the application can be split, letting the uncontested portion proceed to registration while the contested elements buy additional time without losing the original filing date. The savvy move is drafting the specification with this possibility already in view. Australia also accepts broader goods and services specifications than most comparable systems, which sounds advantageous until the same specification hits a US or European examiner and attracts immediate formality objections.
3. European Union
One unique feature of the EU trademarks is the ability to convert an EU trademark into national trademarks. For example, if one applies for an EU trademark and that is rejected due to an earlier national trademark in one EU country or for another reason, the applicant can convert the rejected EU application into national applications in other EU countries (different than the EU country in which the trademark was rejected). The converted applications will have a filing date (and priority, if applicable) of the converted EU application. Conversion of EU applications is often needed because EU trademarks are registered on the principle of “all or nothing”, which means that, if an EU trademark cannot be registered in any of the EU countries, it is not going to be registered at all. Many trademark applicants are not aware of the conversion option and merely abandon their rejected EU applications while in fact those rejected applications may serve as a strong basis for national applications within the EU.
4. South Africa
South Africa’s trademark system has a way of surprising those who approach it through the lens of more familiar jurisdictions, and not always pleasantly. The most striking feature is that the law protects well-known marks that are neither registered nor in use locally – a global brand with no South African presence, no local registration, and no local goodwill can still block a newcomer, provided its reputation has reached South African consumers through media or travel. Courts have upheld this on the strength of international exposure alone. Beneath that sits an anti-dilution provision allowing owners of well-known registered marks to act against similar marks across entirely unrelated goods and services, with no confusion required. What makes the clearance picture even more complex is that South Africa is a first-to-use jurisdiction, not first-to-file, meaning unregistered rights built through prior use can exist and surface as an obstacle, even where a registration has been secured, though registration itself carries prima facie proof of ownership and remains the stronger position to hold.
The Companies and Intellectual Property Commission (CIPC) online database is known to be incomplete, so a search that returns clear results is not the same thing as a clear position. Then, there is the procedural reality that each class requires its own separate application, which catches applicants used to multi-class filings off guard when the invoices arrive. And once the office issues a Notice of Acceptance, the clock starts on a six-month window within which the applicant must actively submit it for publication: the office does not do this automatically, and missing that step abandons an application that has already cleared examination. South Africa also accepts broader specifications than the US or Europe will tolerate, so what passes here without a murmur may need meaningful reworking before it is filed elsewhere.
5. United States
The US trademark law has some specifics which are rarely found in other countries. For example, the losers of trademark opposition or cancellation proceedings before the USPTO do not have to pay the attorney and other costs of the winners. This is because the USPTO follows the so-called American rule for sharing costs according to which each party bears its own costs. This is in sharp contrast with countries such as the UK and Australia where the rule “the costs follow the event” applies and the loser usually needs to pay both the governmental fees paid by the winner and the lawyer’s fee which are capped based on a scale.
Another feature of the United States system is that commonly US trademark applications are filed either on the basis of (i) intention to use or on the basis of (ii) use in commerce. If a trademark is filed on the basis of intention to use, the applicant will receive a notice of allowance later after the examination and will be required to submit evidence of use of the trademark in commerce and will need to pay a fee for filing this evidence. The evidence is filed in the form of “Statement of Use.” If the applicant chooses to file a trademark based on current use in commerce, the applicant will need to file evidence of use of the trademark together with the application. It can be, for example, in the form of a screenshot of a website demonstrating the sale of the goods/services in commerce. Only a few countries follow the US model and require trademark applicants to file evidence of use.
6. Conclusion
Trademark registration procedures have some common building blocks, e.g., filing an application, examination, publication for opposition, and registration. However, the procedure of each jurisdiction has its own specifics and the awareness of those specifics can make an enormous difference for entrepreneurs and trademark practitioners. This is precisely why the choice of practitioner matters as much as the decision to file: the value of trademark protection is only fully realised when it is guided by professionals who bring not just local knowledge, but the cross-jurisdictional perspective, professional networks, and strategic breadth to anticipate what the register alone will never reveal.