A welcome and a warning in response to recent reforms from IP Australia

A respected trade marks attorney has cautioned business owners who file their own trade mark applications to be ultra careful with the accuracy of their submissions following the recent reforms implemented by IP Australia.

Jacqui Pryor of Mark My Words Trademark Services was commenting on the recent change from IP Australia's own 'pick list' for classifying goods and services for trade mark applications to the internationally recognised Madrid Goods and Services database. The changes came into effect on March 27 2024 and also included updates to the search function.

She said the reforms brought Australia's classification of goods and services for trade mark applications in line with international best practice and may streamline the process for Australian businesses filing trade marks in other countries.   However, she warned applicants that the reforms brought a heightened need for vigilance in respect of the accuracy of their submissions as well with regards to the semantics.

The new list is used by the World Intellectual Property Organisation (WIPO) (and many other countries) for all international trade mark applications filed under the Madrid Protocol. Australia is a signatory to this international treaty which provides a convenient and cost-effective way for parties to register and manage their trade marks in different countries. 

Whilst there are many changes to the new list of goods and services, and, the new system contains a much wider range of goods and services, one of the most notable changes of the new system relates to retail services. 

'Prior to the implantation of the Madrid Goods and Services list is that the old Australian Goods and Services list allowed for very broad claims with regards to a lot of goods and services, whereas the new Madrid list contains some far more specific items,' Ms Pryor said. For example:   'Historically, a retailer could own a trade mark which gave them exclusive rights in respect of all retail services, whereas under the Madrid List, they now have to specify the goods that they are selling - or intend to sell.'

'Applicants will now have to ensure that their applications accurately reflect all of the goods and services they use, or intend to use, their trade marks for, rather than relying on the broad descriptions that were previously available.

'Once a trade mark application has been filed for certain goods or services, the scope of coverage cannot be expanded.   People would need to file an entirely new application which may be costly - plus there's no guarantee of success. In the context of retail services, for example, applicants will need to consider the goods they may sell in the future as well as those to be sold immediately.' 

The search function also now allows users to search for an 'exact' match to their search term for goods or services as well as search for those that may be 'similar or related'.   Pryor said it was unlikely that applicants would need to select everything that the system auto-suggested in order to ensure adequate coverage, but that they would need to ensure that their selections weren't too narrow.

She envisaged long-term benefits for Australian businesses and trade mark owners as a result of the reforms, but said she was anticipating some short-term pain. 

'Ultimately, use of the Madrid List will make it easier and simpler for Australian trade mark registrations to be converted into registrations in other countries. However, the fact remains that people doing their own DIY trade mark registrations need to be hyper-vigilant to ensure that their selections cover all of the goods and services they currently offer, or that they intend to use.  Inaccuracies and oversights can be costly and may not even be rectifiable, leaving businesses and brands vulnerable.'