Important Changes to the Australian Trade Mark Application Procedure

Author: Riet van den Ende, Progressive Legal

On Tuesday 26 March 2024, IP Australia will replace its current picklist of pre-approved trade mark goods and services with the Madrid Goods and Services list (“MGS List”).

The MGS List is a database of pre-approved terms, used to classify goods and services for international trade mark applications. This change will align IP Australia’s classification of goods and services for local trade mark applications with the standard international practices of the World Intellectual Property Organization (WIPO), and many overseas trade mark offices.

This article will discuss what this change entails for Australian business owners. 

More pre-approved goods and services

The good news for all Australian trade mark applicants is that the MGS List contains tons more pre-approved terms than the current picklist of pre-approved goods and services used by IP Australia. With this expansion, more business owners will be able to identify their goods and services under pre-approved terms, even when those are not commonplace.

Benefits of this change include that more applicants will be able to pay less government fees to file an application, as the filing fees are lower when only pre-approved terms are used. Additionally, using only pre-approved terms from the MGS list will lower the risk of receiving an objection during the examination process that follows.

The adoption of the MGS List will also allow more Australian and overseas business owners to utilise IP Australia’s brilliant TM Headstart procedure, which allows applicants to get their trade mark pre-assessed by an examiner during the application procedure at minor additional cost, but does restrict an applicant to the use of pre-approved terms only.

With the implementation of the MGS List comes an expansion of those pre-approved terms, and as such, an increased accessibility for business owners to file through the TM Headstart procedure. 

Further clarification of goods and services required

Adoption of the MGS List will also require trade mark applicants in Australia to be savvier when preparing a new trade mark application. As a registered trade mark will only grant exclusivity to the use of a trade mark for the goods and services listed in the registration, it is imperative that this list of goods and services is carefully prepared, preferably by a trade mark specialist.

Up until now, a trade mark applicant was able to register a trade mark for goods and services that had a very broad meaning (i.e. “retail services”) covering the retail of everything. Upon introduction of the MGS List, trade mark applicants will be required to further specify how this trade mark will be used in trade, and will need to specify this in the goods and services when filing the application (i.e., “retail of [insert relevant list of goods or services]” or “retail services provided in relation to [insert relevant list of goods or services]”).

It will be more important than ever for business owners applying for a trade mark to carefully draft a trade mark application and ensure all parts of their business are protected once the trade mark is registered. If trade mark details are not properly drafted, a business will risk leaving a chunk of its valuable IP assets unwarranted for, which increases vulnerability by potentially losing those assets to another trade mark owner and incurring a higher risk of infringement in trade.

However, IP Australia will introduce a semantic search function that will help trade mark applicants to find terms on the MGS List that have a similar meaning to the previously pre-approved terms, making searching the MGS List easier. It aims to ensure a seamless transition from the old to the new system with this useful tool. 

Easing global trade mark strategies 

Further good news for trade mark applicants is that, with the adoption of the MGS list, it will become much easier for Australian applicants to apply for trade mark protection overseas, either by using the Madrid Protocol or by filing directly into other countries our firm’s database of trusted local agents.

This is because Australia will now directly implement WIPO’s international classification of goods and services, which is used and recognised by many IP offices globally.

IP Australia ensures that implementation of the MGS List will help reduce the numbers of issues for Australian trade mark applicants when this trade mark application is used as basis for filing internationally, as there are more pre-approved terms to choose from, and those will be more likely to be approved in other jurisdictions.

Vice versa, the change to the MGS List will also make it easier for any overseas traders to enter its trade marks on the Australian trade marks register. As a result, we could be expecting a rush on new trade marks being filed from overseas entities this year.

Considering hundreds of trade marks are already being filed at IP Australia each day already, best to get your trade marks reflected on the Australian trade marks register as a matter of priority to prevent nasty trade mark disputes from arising. 

Key takeaways 

Globalisation is constantly changing the landscape of IP protection worldwide, and IP Australia’s decision to adopt the MGS List is allowing IP Australia to keep up with the latest trade mark trends.

Effects of this change include that Australian business owners will need to become extra meticulous when preparing and filing a new trade mark application, but on the positive side, using pre-approved terms from the MGS List will ease the process of applying for international trade mark protection.

It is crucial to ensure all details of a trade mark application are correct and cover all of your business activities, otherwise you’re missing some valuable trade mark protection in trade, which can risk nasty complications.

We highly recommend engaging a recognised trade mark lawyer or attorney to assist in the application process, so you can take comfort in knowing that your business is properly protected and can grow in any direction with ease.

Contact our experienced team of trade mark lawyers, attorneys and specialists today on 1800 820 083 or by requesting our advice below.