On March 2024, Australia is set to replace its existing Goods and Services pick list with the Madrid Goods and Services list (“MGS list”). Our current pick list is a searchable list of over 60,000 descriptions of goods and services used to describe what goods and services a trade mark is used for. The MGS list is used by numerous international trade mark offices as well as the World Intellectual Property Organisation which is the system used for filing marks in other member countries, notably, the United States Patent and Trademark Office and the European Union Intellectual Property Office. As it stands, the MGS contains claims with significant specificity when compared to IP Australia’s Goods and Services list, which often results in irregularity issues when clients are seeking to file their mark internationally using their base Australia application/registration.
What is the MGS List?
The MGS list is a database of terms like the Australian pick list which is used to classify goods and services for international trade mark applications. As of July 2023, over 40 countries have adopted the list. The MGS list ensures that when applying for a mark in another country which also uses the list, you can check whether the country will accept your list of goods and services.
Benefits
This change offers several benefits to prospective Trade Mark owners in Australia and owners who intend to register their marks overseas. This includes:
Enhanced Compatibility of your Mark Globally
By using international standards of trade mark classification, the adoption of the MGS list will simplify global trade mark registration and assist clients with protection and enforcement of their marks in other jurisdictions.
Currently, clients may apply for trade mark registration either through WIPO or applying directly to a country’s trade mark office. If an application is done through WIPO, once the mark is registered in WIPO’s International Register, the mark will be examined in the designated country for protection which would take 12 to 18 months. Given the significant time frame that may be expected from registering through WIPO, especially when an applicant is applying for registration in various countries, any discrepancy in the application, such as through errors in the description of the mark due to differing classification standards, may result in an irregularity notice being sent and the application process being delayed.
Given numerous countries as well as WIPO employ the MGS list, this ensures that little to no errors arising from discrepancies between the description of the mark between Australia and the designated country will appear. Hence, clients may expect a more expedient process for international registration and faster enforcement of their mark in other jurisdictions.
Wider Array of Descriptions
The adoption of the MGS list is also useful for clients with descriptive marks following IP Australia’s October 2023 specificity requirements. As a reminder, descriptive marks are marks which describe the goods and services provided by the mark’s owner. For example, a soap selling business that uses the mark “SOAP” has a descriptive mark and under s41 of the Trade Marks Act 1995, that mark is not to any extent inherently adapted to distinguish. What prospective mark owners should take this to mean is that the mark is significantly harder to register. In its October 2023 publication, IP Australia requires where the mark is descriptive, there must be capacity to distinguish for particular goods/services.
“Applications proceeding despite being not to any extent inherently adapted to distinguish require a demonstrated capacity to distinguish for particular goods/services. Therefore, the specification should be restricted to accord with the actual evidence of use. A wider specification is not acceptable (Our Emphasis)”
Interestingly, the MGS list offers a wider array of goods and service description which are far more specific than the Australian Pick list. If an applicant engages in selling goods online, under the Australian Pick list, they would likely choose to register under online retail services. For the MGS list, the applicant would have to specify what their online retail services relate to. E.g. “online retail services in relation to [must list goods i.e. cosmetics]”.
As a result, according more specific descriptions will lead to an easier application process for applicants with descriptive marks given this will comply with IP Australia’s specificity requirements for marks not inherently adapted to distinguish.
Semantic Search Feature
Given a wider array of descriptions are offered in the MGS list, potential applicants may be worried that the application process will be more difficult given that there are more descriptions and it would be tougher to identify the correct description for their desired mark.
However, IP Australia will introduce a semantic search function to assist applicants to find terms on the new list which have a similar meaning to the term that they are looking for. This is in stark contrast to the current application process where applicants manually search for the correct descriptions in the pick list. As a result, this feature will simplify the application process and ensures that the correct description will be accorded to your mark.
Shortcomings?
It should be noted that there are shortcomings to the Nice Classification system which the MGS list uses. Critics have often cited its inability to accommodate emerging industries with their new types of goods and services. This will often lead to applicants finding it difficult to classify some of their goods or services as. While the Nice system is regularly updated every 5 years with the most recent edition coming out in 1 January 2023, the manner in which emerging industries have been classified has remained relatively stagnant resulting in some classes of goods/services encompassing a broad range of goods/services.
For example, class 9 of the Nice system includes apparatus for scientific purposes as well as audio-visual and information technology equipment and safety and life-saving equipment. Unusually, goods like diving equipment will be under the same classification as scientific apparatuses. Hence, it may be appropriate for the Nice system to be reformed such that its framework may better reflect new and emerging industries through the addition of new classes or some classes such as class 9 being split up. However, this issue was also present in Australia Goods and Service list which also uses the Nice Classification System as a framework for its structure.
Takeaway
Despite this, the transition seems to promise a more efficient, accurate and better recognised system to register marks. Further, this change will help businesses which are seeking to expand their operations overseas through simplifying the process in which marks may be applied for overseas. We believe that this is a step in the right direction as our system becomes more harmonised with international standards and welcome these changes.
If you have any queries, please do not hesitate to contact David Mazzeo or Stefano Mazzeo of our Intellectual Property Law Team.
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