What The Recent Reforms To the Trade Mark Classes Mean For Business Owners

Recent reforms to  the classes of goods and services in Australia make it more important than ever for business owners to be vigilant and accurate about the categories of goods and services they select when filing a trade mark application and to plan their brand protection strategy for the long term.

To recap, IP Australia has replaced its ‘pick list’ for classifying goods and services for trade mark applications with the internationally recognised Madrid Goods and Services (MGS) database.  This change came into effect on 27 March 2024.

This new list is the same one used by the World Intellectual Property Organisation (WIPO) for all determining the accuracy of classes in international trade mark applications filed under the Madrid Protocol.   Australia – along with nearly 130 other countries – is a signatory to this international treaty which provides a convenient and cost-effective way for parties to file trade mark applications in a number of countries through a single application. 

This change brings our classification of goods and services for trade mark applications in line with international best practice and should ultimately streamline and improve the process for Australian business owners looking to file trade marks in other countries.  

There have also been changes to the search function for goods and services to allow users to search for ‘exact’ matches as well as those that may be ‘similar or related’ to their original search term.

While the Madrid Goods and Services list is not new, it does represent a fairly significant change for any party filing a trade mark application in Australia. 

So, what do these changes mean and is there is anything that must be done differently when filing applications?  Let’s take a look.

What the new Madrid Goods and Services list means to Australian businesses filing trade mark applications

The previous Australian Goods and Services list allowed for very broad claims with regards to goods and services, whereas the new Madrid list is often far more specific. Or, where broad claims still exist they can be harder to locate among the many new specific items found.  

A lot of trade mark submissions now have to accurately reflect all of the goods and services that business owners currently offer, and/or any that they intend to use in the future.  In a variety of industries, business owners can no longer rely on legal protections from the broad descriptions that were previously available to them – they now have to make selections based on the precise terms offered under the MGS.  Further, the MGS contains much lengthier lists of goods/services, often including repetitive claims just with slightly different wording. For example, we now see the ability to claim milk-based beverages flavoured with coffee, cocoa, chocolate or tea as well as milk-based beverages flavored with coffee, cocoa, chocolate or tea. The difference being the spelling of “flavoured” versus “flavored”.

Users can also now use the search function to search for an exact match to the keyword/s they have used for goods or services.  They can also search for goods or services that may be similar or related.   Under the previous system, applicants had to search manually for the correct descriptions in the pick list, but this feature is intended simplify the process.

And while it is unlikely that applicants would ever need to select everything that the Madrid system auto-suggests, it’s crucial that they don’t make their selections too narrow which could lead to issues down the line.  It is also advisable not to select repetitive terms. This offers no weight to the protection, and, including a specification that is unduly lengthy could lead to issues in the future. Where a trade mark contains unusually long descriptions of goods/services, logic suggest the owner may not be using the trade mark for all those things, which may make it vulnerable to removal attacks in the future.

In order to ensure adequate coverage for a registered trade mark, business owners must think about their future growth strategy so that they ensure appropriate coverage if they decide to expand their product line or venture overseas.  Extra care in terms of the accuracy and coverage of their submissions is crucial to ensure comprehensive brand protection into the future.

An example of how the Madrid Goods and Services List differs from the old ‘pick list’

One of the most notable differences in the two lists relates to retail services claims. 

Historically, it was possible for a retailer in Australia to own a trade mark which gave them exclusive rights in respect of all retail services.  Under the new classification list however, they now have to specify the exact goods that they are selling – or that they intend to sell in the future.  The list of retail services available for selection is long, and retailers have to be very specific. It has long been the practice of many foreign offices to require a specific description of goods being sold, so, this is a new development for Australia.

Let’s use the example of a retailer selling branded furniture.  They would need to consider the exact items they are selling or intending to sell – as well as consider any ‘similar’ goods or services that the new system’s semantic search function suggests eg retailing of branded soft furnishings or other homewares. 

Once a trade mark application has been filed for certain goods or services, the scope of coverage cannot be expanded.   Business owners have to file an entirely new application if there are any errors or omissions – and that can be costly in more ways than one.  There’s no guarantee that a follow-up application will be successful as the intended trade mark may no longer be available for the new or additional goods or services.

Getting things right first time is imperative.

Benefits of the new list

We are confident there will be long-term benefits for Australian businesses and trade mark owners as a result of the reforms, but there may be some issues in the short-term.  Ultimately, the changes will result in a more efficient and accurate system for the registration of trade marks and will simplify the process for businesses seeking to expand their operations overseas. 

A last word on the reforms to the Australian trade mark registration process

If you are doing your own DIY trade mark registration, we encourage you to be hyper-vigilant and focused when making your selections from the new goods and services list.  You need to cover all of the goods and services you currently offer, or that you intend to use in order to secure the necessary coverage and protections to achieve your long-term business objectives.

Inaccuracies and oversights can be costly and may not even be rectifiable, and business owners who don’t get it right the first time could find their brand identities and their hard-fought market share in a vulnerable position.

Our experts at MMW Trademark Services are well aware of these changes and we can help you navigate the system to achieve comprehensive protection for your valuable IP assets.  We can also help you achieve international protection for your trade mark in the most efficient and cost-effective way possible.

If you need any advice or assistance with your current trade mark registration or guidance on your IP strategy going forward, we invite you to get in touch for an obligation-free chat.  Find us on 03 8288 1432 or get in touch via our website.  We’re here to help!

Jacqui Pryor

Jacqui is a registered trade marks attorney with the Trans-Tasman IP Attorneys Board and is the founder and owner of Mark My Words Trademark Services Pty Ltd.

After being introduced to the world of trade marks in one of her first jobs after high school, Jacqui discovered she had a deep passion and interest for all things to do with protecting brands and intellectual property. She completed a Graduate Certificate in Trade Mark Law and Practices as well as a Diploma in Business Management and then set up her own business in 2011.

Her motivation for starting Mark My Words was to support SMEs which typically couldn’t afford such a service and while the company has grown in both size and reputation over the years, she has remained true to her founding principles of providing professional, friendly, reliable and affordable trade mark services to all.

Mark My Words now has a client list that spans businesses of all sizes across a range of industries. It provides advice and assistance on all types of complex trade mark registrations, infringements and opposition matters both in Australia as well as overseas.

Jacqui’s wealth of experience, broad range of professional qualifications and her ongoing participation in industry forums and networking platforms keeps her at the forefront of developments in the global trade mark arena. Her expertise in her field has also led to several nominations as a top individual trademark attorney by the World Trademark Review - the world’s leading trademark intelligence platform.

To keep up to date with the latest in the field of trade marks, follow Jacqui and MMW Trademark Services on Facebook.

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