IP Australia adopts Madrid Goods and Services list for trademark applications
08 April 2024
On March 28, 2024, IP Australia officially adopted the Madrid Goods and Services list (Madrid List), replacing its previous trademark picklist, the Trade Marks Goods and Services list.
With more extensive goods and services descriptions, the Madrid List provides more options for trademark applicants. This is particularly useful for applicants filing TM Headstart applications, which require the use of the picklist, as IP Australia’s previous picklist was relatively limited.
Joanna Lawrence, Partner, Ashurst, Melbourne
TM Headstart is IP Australia’s pre-application service for first-time trademark applicants. It evaluates a first-timer’s trademark application before he or she proceeds with the formal application and provides feedback. With the feedback, TM Headstart allows applicants to revise their application to have greater chances of securing protection for their trademarks.
According to Joanna Lawrence, a partner at Ashurst in Melbourne, another important benefit is it will help ensure that Australia’s approach to classifying and describing goods and services is consistent with that of other countries using the Madrid List. “This means that trademark owners filing international Madrid applications based on an Australian application or designating Australia should face fewer classification and specification issues during examination and formalities checks,” said Lawrence.
The Madrid List may also assist with the challenge posed by inconsistent trademark examination practices. “It can be confusing for applicants of Australia trademarks when different examiners take inconsistent approaches to classification and specification issues,” explained Annika Barrett, senior expertise lawyer at Ashurst in Melbourne. “So the Madrid List will benefit both applicants and examiners by providing clearer guidance about such matters.”
IP Australia has also added a very handy semantic search tool for finding goods and services in the Madrid Goods and Services list. The search tool provides users with a list of terms or types of goods and services that are similar to the specific term they are searching for in the expanded list. Thus, this feature will enable a faster and more convenient search process for users.
“It is also worth observing that IP Australia’s official filing fees are lower for applications which use the picklist only – A$250 (US$164) rather than A$400 (US$263) per class,” added Lawrence.
- Espie Angelica A. de Leon
