On the evening of 26 March 2024, IP Australia will replace its current list of goods and services for trade mark applications (including its AU picklist) with the Madrid Goods and Services list (MGS).
The MGS is a database of terms used to classify goods and services for trade mark applications in the Madrid System. The MGS is used by the World Intellectual Property Organization (WIPO) when examining an application for an International Registration and is used by many international trade mark offices.
The change should
- align Australia's goods and services descriptions with WIPO;
- reduce irregularities reports from WIPO; and
- reduce costs to business.
Along with the adoption of the MGS, IP Australia will introduce a 'semantic' search tool allowing users to search for terms to find acceptable MGS terms. The tool will help ease the transition from the AU picklist and ensure correct selection of the more precise terms offered under the MGS.
What does this change mean for applicants, and their agents?
The change should bring clarity to the scope of existing registrations: the MGS terms can be specific and adoption of these terms by applicants will allow those viewing the register to better understand the scope and area of interest of an existing right, rather than viewing broad terms. This could in time lead to a reduction in prior marks being cited due to less of an overlap between broader goods and service terms.
However lengthier, more precise specifications will be needed: IP Australia’s picklist contains broad descriptions of goods and services, which in turn provides broad trade mark protection without the need for specificity. While the MGS does offer a wider range of terms than the AU picklist, these are often precise, or qualified terms. Care will need to be taken to ensure suitable coverage is captured by the precise terms.
For example, the term "retail services" will no longer be acceptable as the term is absent being MGS. Instead, applicants will need to specify the nature of the goods being retailed.
The team at AJ Park is very familiar with these changes, and comparable practice in other jurisdictions. If you need advice, or assistance with adapting or drafting specifications for filing in Australia, please reach out to one of our experts.
