Requesting Trade Mark Documents From IP Australia

Authors: Zeinab Farhat & Gianluca Pecora, Progressive Legal

If you are looking to oppose a trade mark, or need information to assist in the registration of your own trade mark – you may need to request documents from IP Australia. There is quite a process involved in requesting documents, so understanding how to request certain documents is important to prevent unnecessary delay and costs. 

Generally speaking, there are two ways in which documents can be accessed, these are: 

1. under section 217A of the Trade Marks Act 1995 (Cth) (“the Act”); or  
2. under the Freedom of Information Act 1982 (Cth) (“FOI Act”).

What is section 217A of the Act?

Section 217A provides the following:  

(1) The Registrar must make available for public inspection prescribed documents that relate to a trade mark while they are held in the Trade Marks Office at or after the time particulars of the application for registration of the trade mark are published under section 30. 

(2) A document may be prescribed for the purposes of subsection (1) wholly or partly by reference to the fact that it does not contain information covered by a requirement under section 226A. This does not limit the ways in which documents may be prescribed for those purposes.  

Is section 217A or an FOI application better for requesting trade mark documents?

Requesting trade mark documents with a section 217A request

If you have an IP Australia account, you can request copies of trade mark documents under Section 217A of the Act.  

Which documents can and can’t be accessed?

Most documents relating to trade marks can be made available for public inspection under a Section 217A Request.  

Regulation 21.11A(1) of the Act provides that each document which is held by the Registrar that relates to a trade mark application is prescribed, unless it falls within a document excluded under regulation 21.11A(2) of the Act.  

Documents that will not be made available for public inspection and are exceptions to regulation 21.11A(1) of the Act, include documents: 

1. That would be privileged from production in legal proceedings on the ground of legal professional privilege. 
2. That are subject to an order of a court or tribunal that prohibits disclosure of the documents or information in the documents. 
3. Whose production IP Australia has required and that IP Australia is satisfied should not be made available for public inspection. 
4. That solely contain evidence of the use or proposed use of a trade mark. 
5. That are declarations stating the reasons for a request for expedited examination. 
6. Filed by an applicant for an extension of time in relation to an application. 
7. Filed in the course of opposition proceedings other than the notice of opposition. 
8. Containing any information in a document that has been filed that IP Australia requires to be held confidentially. 
9. Prepared by IP Australia that contain information obtained from a document to which the paragraphs above apply, where that information is the reason that document can not be made available for public inspection. 

 In cases where the document is likely to be excluded by this list, the applicant should consider an FOI Application instead. 

What are the fees for a section 217A request?

IP Australia’s fee is $50 to make a Section 217A Request for a copy of a trade mark document. Requesting a copy of 4 or more trade mark documents from the same file costs $200. 

It can be difficult to identify whether the trade mark documents you are seeking will be rejected in a Section 217A Request so it is a good idea to contact a lawyer.

Progressive Legal’s trade mark lawyers have seen what types of documents require which type of request. Contact us on 1800 820 083 or request our advice below to receive advice on how to request documents, and oppose or register trade marks. 

Requesting trade mark documents with a FOI request

The FOI Act gives you the right to request: 

1. access to copies of documents IP Australia hold – excluding exempt documents;  
2. changes to your personal information, if it is incomplete, out of date, incorrect or misleading; and 
3. a review of a decision that IP Australia has made to deny access to a document, defer access to a document or refuse to amend or annotate personal information. 

Such requests are subject to refusal for reasons like legal privilege of documents and protecting the confidentiality and interests of third parties. 

How to make a FOI Application?

FOI applications are made via a formal request using IP Australia’s FOI Application Form.  

Applications must: 

1. be made in writing; 
2. state that your application relates to the FOI Act; 
3. provide enough detail about the information or document you seek so IP Australia can identify and locate it; and 
4. include an address (email or post) for reply. 

To submit an FOI application, there are three different ways in which you can do so, these are: 

1. submitting the FOI Application via online services; 
2. submit the FOI Application via email at: FOIrequests@ipaustralia.gov.au; and  
3. posting the FOI Application to IP Australia’s address.

What are the Fees of a FOI application?

It is free to make an FOI application, request review of a decision and access documents containing only your personal information. Once an application has been accepted, the following charges can apply to an FOI request: 

1. search and retrieval =  $15 per hour; 
2. decision-making = $20 per hour (first 5 hours are free); 
3. delivery = the cost of postage or delivery; 
4. photocopying = 10 cents a page; 
5. supervised inspection = $6.25 per half hour; or 
6. transcript = $4.40 per page. 

Appeal

You may seek review of a decision of IP Australia to refuse access to all or part of a document, defer access to a document, impose a charge or refuse to change or annotate personal information that is claimed to be incomplete, incorrect, out of date or misleading. 

Applications for internal review must be done within 30 days of the dissatisfying decision. A new decision will be made within 30 days. 

Another option for appeal is via external review by the Office of the Australian Information Commissioner who can reconfirm, change or substitute a decision. 

Administrative access and requesting trade mark documents

Some information held by IP Australia can be accessed under administrative access arrangements. These can be requested via IP Australia’s online services upon making an account and submitting a request.

Alternatively, applicants may call IP Australia’s FOI coordinator on 02 6283 2447, email FOIrequests@ipaustralia.gov.au, or send a request by post. 

Administrative access may be sought to request: 

1. your personal information; 
2. non-confidential research or statistical data that might be requested by journalists, researchers or academics; 
3. general information that can be released without adversely affecting others; 
4. documents that would be released in full if the request had been made via an FOI application; or 
5. documents regarding an application for registration of a trade mark made prior to 27 March 2007, which would otherwise have been made available for public inspection under a Section 217A Request. 

Requesting trade mark documents through publicly accessible information

In some cases, the trade mark document you need from IP Australia will already be published under IPGOD, the Information Publication Scheme or FOI Disclosure Log. 

IPGOD

The Intellectual Property Government Open Data contain 100 years of information on IP rights applications, including trade marks, it can be accessed here. 

Information Publication Scheme

IP Australia’s information publication scheme refers to all information about IP Australia – who they are, what they do, their annual reports, consultation process and hearing decisions that are publicly available on the IP Australia website. 

FOI Disclosure Log

IP Australia’s FOI Disclosure Log publishes what has already been disclosed under previous FOI requests. 

Most trade mark documents disclosed by FOI requests do not get published on the FOI Disclosure Log because they are made by private entities and contain the applicant’s business information that would be unreasonable to publish. 

For the FOI Disclosure Log from 2022 – present, press here. 

For the FOI Disclosure Log from 2014 – 2022, press here. 

For the FOI Disclosure Log before 2014, press here. 

Key Takeaways

If you wish to request trade mark documents, you can either submit a Section 217A Request, or a FOI Application. If the trade mark document was filed before 27 March 2007, or contains commercial sensitive information, then a FOI application is recommended.

In all other cases, you should submit a Section 217A Request. In some circumstances, Administrative Access can be granted by IP Australia for trade mark information that is held by IP Australia.  

You can avoid additional fees for a failed application by getting Progressive Legal’s intellectual property department to make the application for you. We understand which documents can and can’t be requested, and the best way to make those requests. Contact us on 1800 820 083 or request our advice below. 

Need Trade Mark Advice?

Please get in touch with us today via phone or the contact form on this page.

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