Change in practice for international registrations filed from Australia
Where an application for the international registration of a trademark under the Madrid Protocol is filed from Australia, it must be based on one or more Australian applications or registrations owned by the same applicant for that exact trademark (known as the 'basic trademark'). The international application may be for some or all of the goods and/or services covered by the basic trademark, but no broader.
These requirements are checked by IP Australia when international applications are lodged with it as the office of origin. Once an international application is found to be compliant, IP Australia certifies the application and forwards it to the International Bureau of the World Intellectual Property Organization (WIPO) for further examination and processing.
Under the previous practice, if an Australian applicant wished to claim in its international application the exact same specification of goods and/or services as that of its Australian basic trademark, it was still required to list those goods and/or services specifically in the official application form for international registrations, known as Form MM2(E).
Under the new practice, an Australian applicant seeking to claim in its international application the exact same specification of goods and/or services as that of its Australian basic trademark can now simply indicate so on the international application form.
If the international application is based on more than one application or registration for that basic trademark, IP Australia recommends that the relevant number of the basic application or registration be also included.
The new practice is intended to streamline IP Australia's checking process. The new practice should also assist applicants by:
- simplifying the completion process of the application form; and
- reducing the risk of applicants inadvertently omitting goods and/or services when copying specifications from their basic trademarks onto the international application form.
Lisa Ritson and Eugene Ford, Blake Dawson, Sydney
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