From 26 March 2024, IP Australia has implemented the internationally recognised Madrid Goods and Services list (Madrid List), replacing the AU Goods and Services Picklist.[1] The adoption of the Madrid List comes as Intellectual Property Australia (IP Australia) seeks to align the Australian classification standards with the other intellectual property offices around the world.[2]
Adopting the Madrid List
The Madrid List is an internationally recognised database of terms used to classify goods and services for trademark applications.[3] 114 members from 130 countries representing eighty percent (80%) of world trade are party to the Madrid Protocol,[4] with approximately 486,308 trademark applications being made under the Madrid system annually.[5]
By adopting the Madrid List, IP Australia is harmonising Australian classification standards with the globally recognised norms of trademark classifications. This change provides Australian trademark applicants and owners a more comprehensive classification standards (from 60,000 to 130,000 terms)[6] and the streamlining of the registration of Australian trademarks.
Benefits to Australian trademark applicants and holders
According to IP Australia and WIPO, the adoption of the Madrid List offers the following benefits to Australian trademark applicants and owners:
- Efficiency boost: The Madrid List’s standardised classification system reduces ambiguity, speeding up trademark registration.
- International reach: Australian businesses can protect their trademarks across multiple countries through a single application where the classes of goods and services are the same.
- Global consistency: Aligning with the Madrid system ensures Australia’s trademark classification standards are consistent with international norms. According to WIPO this promotes smoother cross-border trade and enhances Australia’s competitiveness in the global market.[7]
Consideration post-Madrid List implementation for trademark applicants and owners
While the Madrid List offers 70,000 additional terms compared to the AU Goods and Services Picklist, this doesn’t inherently lead to broader claims within each class. International trademark offices under the Madrid system, typically require more specific and narrow descriptions for goods and services seeking trademark protection. In November 2023, IP Australia in collaboration with WIPO, released a classification update revealing that approximately forty percent (40%) of international trademark applications originating from Australia received irregularity notices, with around eighty percent (80%) attributed to specific issues with the AU Goods and Services Picklist.[8]
Consequently, under the Madrid system, trademark applicants and owners must adopt a more comprehensive and deliberate approach to cover all goods and services associated with their marks, given the specific and narrow description requirements.
Takeaways
The adoption of the Madrid List aligns IP Australia with the international classification standard, streamlining the international process for registering Australian trademarks. Given the changes to the classification standards, Australian trademark applicants and owners should opt to implement a more thorough and intentional strategy in securing their marks.
Links and further references
Legislation
Further information about the Madrid List
If you need advice on how the Madrid List affects your business, contact us for a confidential and obligation-free discussion:
Malcolm Burrows B.Bus.,MBA.,LL.B.,LL.M.,MQLS.
Legal Practice Director
T: +61 7 3221 0013 (preferred)
M: +61 419 726 535
E: mburrows@dundaslawyers.com.au
Disclaimer
This article contains general commentary only. You should not rely on the commentary as legal advice. Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.
[1] IP Australia, ‘Madrid Goods and Services list’ (Web Page, 26 March 2024) https://www.ipaustralia.gov.au/international-ip/international-cooperation/the-madrid-system accessed 7 May 2024.
[2] IP Australia, ‘Adopting the Madrid Goods and Services List’ (Web Page, 26 March 2024) https://www.ipaustralia.gov.au/news-and-community/news/Madrid-Goods-and-Services-list accessed 7 May 2024.
[3] IP Australia, ‘Madrid Goods and Services list’ (Web Page, 26 March 2024) https://www.ipaustralia.gov.au/news-and-community/news/Madrid-Goods-and-Services-list accessed 7 May 2024.
[4] World Intellectual Property Organization, “Madrid System – Members” (Web Page) https://www.wipo.int/web/madrid-system/members/index accessed 7 May 2024.
[5] WIPO, ‘WIPO Intellectual Property Statistics: Trademark Data Search’ (Search query, WIPO Intellectual Property Statistics) https://www3.wipo.int/ipstats/ips-search/search result?type=IPS&selectedTab=trademark&indicator=32&reportType=11&fromYear=1980&toYear=2022 accessed 8 May 2024.
[6] WIPO, ‘Madrid Goods and Services List: Roundtable Discussion on Australia’ (21st Meeting of the Working Group on the Legal Development of the Madrid System, Topic 3) https://www.wipo.int/edocs/mdocs/madrid/en/mm_ld_wg_21/mm_ld_wg_21_roundtable_topic_3_australia.pdf accessed 7 May 2024.
[7] World Intellectual Property Organization, ‘WIPO Magazine – Madrid System: “A Good Investment” (Web Page, 2016) https://www.wipo.int/wipo_magazine/en/2016/04/article_0002.html accessed 7 May 2024.
[8] Ibid.
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