Australian Trade Mark Picklist Updated
Written By Ben Hibbert
In March 2024 IP Australia abandoned its existing ‘picklist’ of approved goods and services descriptions which could be used in low-cost Australian trade mark applications, replacing it with the Madrid Goods and Services List.
Australia’s existing picklist contained some very broad descriptions of goods and services which were increasingly at odds with international trends favouring more specific descriptions. Holders of registered Australian trademarks seeking protection for their marks in foreign jurisdictions frequently encountered refusals based on the lack of specificity in their claims for things like ‘apparel’, ‘business services,’ and ‘retail services’. While these refusals could usually be overcome by refining their specification (either widely or on a jurisdiction-by-jurisdiction basis), they meant a longer and more costly process, often involving the need to find and appoint local agents in multiple foreign jurisdictions.
The Madrid Goods and Services List is relatively widely accepted in foreign jurisdictions, so should help to smooth the foreign protection process for holders of Australian trade marks applied for after 26 March 2024. It won’t help if your Australian trade mark was applied for before that. If you’re in the latter camp and about to embark on some foreign applications via the World Intellectual Property Organisation, you might consider amending the specification of your Australian trade mark before starting your applications. Provided you are using narrower terms wholly within the scope of the broad terms you are replacing, it may save you a lot of cost and time down the line. However, be aware: if you are narrowing the scope of your Australian specification overall, then you may be narrowing your brand protection moat!
This change has few apparent benefits for new applicants for Australian trade mark registration who have no foreseeable need to protect internationally. Australia’s broad goods and services descriptions made it very easy to apply for a registration with a wide brand protection moat. New applicants will now need to spend longer identifying and claiming the specific goods and services they do or will supply under the mark. Over time, one would expect that conflict refusals might reduce as existing registrations with broader descriptions start to disappear from the register, but it will be a slow process for that benefit to emerge.
