If you manage international trade mark portfolios, you’ll know the pattern well. A client files through the Madrid Protocol, designates Australia, the application sails through examination, and IP Australia issues a statement of grant of protection. Everyone moves on. The Australian designation sits quietly on the register, apparently safe, and nobody gives it another thought.
That’s usually where the problem starts.
Buried in the paperwork that accompanies the grant of protection is a requirement that many overseas holders and their attorneys never act on: the obligation to record an address for service in Australia or New Zealand. There’s no penalty for ignoring it, so a large number of international registrations designating Australia (IRDAs) sit on the register with no local contact recorded at all. And while that might look like a harmless administrative gap, it leaves the registration exposed in a way that can cost the owner the mark entirely.
What the regulations actually require
Regulation 17A.37(3) of the Trade Marks Regulations 1995 (Cth) requires the holder of an IRDA to notify IP Australia of an address for service in Australia or New Zealand as soon as practicable after the statement of grant of protection issues. IP Australia flags this in the cover letter that accompanies the statement.
Here’s the catch: the regulation has no teeth. There’s no fine, no lapsing provision, no formal consequence for non-compliance. So in practice, compliance is patchy at best. Thousands of protected international registrations on the Australian register list nothing more than the holder’s WIPO-recorded representative overseas.
Rights holders often read “no penalty” as “no problem.” That’s the mistake.
The real exposure: non-use removal actions
Australia has one of the more accessible non-use removal systems in the world. Under section 92 of the Trade Marks Act 1995 (Cth), any person can apply to remove a registered trade mark on the basis that it hasn’t been used in Australia for a continuous three-year period. There’s no need to show standing or a competing interest. Anyone can file.
Non-use applications are a routine clearance strategy in Australia. When a new applicant runs into a cited prior mark during examination, one of the first questions their attorney asks is whether the cited mark is actually being used here. If there’s any doubt, a removal action is a cheap and effective way to clear the path.
Once a non-use application is filed, the registered owner has two months from the date of IP Australia’s notice to file a notice of intention to oppose. Miss that window and the outcome is automatic: the removal succeeds and the registration comes off the register. There’s no hearing, no assessment of the merits, no second chance built into the process. The deadline does all the work.
How notices are served when there’s no local address
This is where the missing address for service turns from a technicality into a genuine threat.
When an IRDA has a local address for service recorded, IP Australia notifies the local agent electronically. The agent sees the notice the day it issues, diarises the deadline, and advises the client. Routine.
When there’s no local address, IP Australia sends the notice by ordinary, untracked international post to the holder’s WIPO-recorded representative. Service is deemed effective on the date of posting, not the date of receipt. Whether the letter takes six weeks to arrive, lands on the desk of someone who no longer handles the file, or never arrives at all, the two-month clock is already running.
Experienced filers know this. An IRDA with no local address for service is, frankly, a soft target. A third party who wants a cited mark out of the way can file a removal action knowing there’s a real chance the notice will be delayed, misrouted or missed, and that the registration will fall away unopposed. The owner often finds out only when the mark has already been removed, at which point the options are limited, expensive and uncertain.
A small step that closes the gap
The fix is about as simple as trade mark housekeeping gets: appoint an Australian agent and record their address for service against the IRDA. Once that’s done, every notice from IP Australia, including any non-use removal notice, goes to the local agent electronically. Deadlines get diarised. Nothing travels by surface mail. The two-month opposition window becomes a manageable timeframe rather than a trap.
For foreign attorneys, recording a local agent at the time protection is granted is a low-cost service that materially protects the client’s rights. It also puts someone on the ground who can act quickly if a dispute, opposition or renewal issue arises later. Waiting until something goes wrong means the local agent’s first job is damage control instead of prevention.
Frequently asked questions
Is an address for service in Australia mandatory for Madrid Protocol designations?
Technically yes. Regulation 17A.37(3) requires it once protection is granted, though there is no penalty for non-compliance, which is why so many holders never record one.
Can a New Zealand address be used?
Yes. The regulations permit an address for service in either Australia or New Zealand.
What happens if a non-use action is filed and we never receive the notice?
The deadline runs from the date IP Australia posts the notice, not from receipt. If the two-month period passes without a notice of intention to oppose, the registration is removed automatically.
Can a removed registration be restored?
Restoration is not straightforward. Extensions of time may be available in limited circumstances, but they are discretionary, contested and far more expensive than the appointment of a local agent would have been.
How Mills IP can help
We act as the Australian address for service for overseas rights holders and their attorneys, and we manage Australian and New Zealand trade mark portfolios on behalf of foreign firms. If you have Madrid Protocol designations of Australia on your books without a local agent recorded, get in touch and we’ll take care of it. It’s a five-minute fix for a problem you don’t want to discover after the deadline has passed.