Earlier this year, IP Australia announced significant updates to the Trade Marks Goods and Services list, aligning it with the Madrid Goods and Services lists. These changes took effect in March 2024. Additionally, the Intellectual Property Laws Amendment (Regulator Performance) Regulations 2024 (the Amending Regulations) introduced further modifications effective from 17 May 2024. These amendments aim to harmonize Australia’s trademark laws with the Madrid System and include significant changes to trademark class headings, the grace period, and TM Headstart Applications.
Key Changes Under the Amending Regulations
Grace Period – From 10 Months to 6 Months
Australian trademark holders were given a 10-month grace period to renew their trademarks after the initial 10-year registration period expired. From 17 May 2024, this grace period has been reduced to 6 months. This change emphasizes the importance for trademark holders to be vigilant about their renewal dates to avoid losing protection. The shorter grace period necessitates timely action to ensure continuous protection of trademarks.
Classes – NICE Class Headings
One of the most impactful changes is the amendment of the classes of goods and services within Schedule 1 of the Trade Mark Regulations 1995 (Cth). These classes have now been updated to align with the NICE Class Headings, which standardizes Australia’s trademark classification system with the Madrid System. This change simplifies the international trademark application process for Australian businesses and ensures consistency in the classification of goods and services.
TM Headstart – Extension
The TM Headstart service, which allows for a preliminary examination of a trademark application before formal filing, has also seen changes. Applicants can now request an extension to respond to an Examiner’s Assessment Report. This request must be made within two months of the original deadline and can only be granted under specific circumstances:
- An error or omission by the requester, the requester’s agent, the Registrar, or an employee;
- Circumstances beyond the control of the requester; or
- Special circumstances that justify the extension.
This extension option provides applicants with additional flexibility and ensures they have adequate time to address any issues raised in the Examiner’s Assessment Report.
Another significant update under the Amending Regulations is the removal of all references to the Official Journal of Trade Marks. Starting on 17 May 2024, IP Australia will publish relevant information on the IP Australia website and the Australian Trade Mark Search website. This shift enhances accessibility for the public, making it easier to access trademark information. This move is expected to be the first step towards linking all relevant correspondence to a specific trademark’s record on the Australian Trade Marks Register, streamlining the process and increasing transparency.
The changes introduced by the Intellectual Property Laws Amendment (Regulator Performance) Regulations 2024 mark a significant step towards modernizing and aligning Australia’s trademark system with international standards. By adopting the NICE Class Headings, shortening the grace period, and offering extensions for TM Headstart applications, these updates aim to enhance efficiency and clarity for trademark holders. Additionally, the move to publish information online increases public access and transparency, reflecting IP Australia’s commitment to improving the trademark system.
