In a long-overdue effort to align Australia with international trade mark standards, IP Australia has confirmed that from March 2024, it will adopt the Madrid Goods and Services List (the MGS List) for classifying goods and services for the purposes of trade mark applications, and will do away with the current Trade Mark Goods and Services List (the AU Picklist).
The Madrid System for International Registration of Marks (the Madrid System) is administered by the World Intellectual Property Organisation (WIPO). The Madrid System allows one to file a trade mark application in a number of countries via a single application. Australia is a signatory member of the Madrid System.
This move to adopt the MGS List signals a clear understanding from IP Australia of the evolving trade mark landscape within Australia and the need for Australian businesses to have access to a streamlined approach to protecting their trade marks, both in Australia and internationally.
The MGS List, established under the Madrid System, is a database of terms used to classify goods and services for trade mark applications. This system is used by WIPO and many other international trade mark offices. Adopting the MGS List will align the Australian classification standards with international best practice. This change will make it easier for Australian businesses toto protect their trade marks in other countries and will provide clarity and consistency in selecting appropriate categories for trademarks.
The change offers a number of benefits for Australian businesses:
- Streamlining the application process: applicants will be able to more readily interact with the process of trade mark registration. Small and medium enterprises, in particular, stand to benefit from the simplified process, as it reduces administrative burdens and lowers barriers to protecting their intellectual property assets;
- Compatibility with international standards: exporters seeking trade mark protection in countries other than Australia will not have to navigate different classification systems with each trade mark office as the terms will be standardised. As businesses increasingly operate on a global scale, having a standardised classification system ensures cohesion across jurisdictions. This move not only benefits Australian businesses seeking trade mark registration but enhances Australia’s attractiveness to overseas businesses as a destination for foreign investment and trade; and
- Comprehensive classification: while the current AU Picklist allows for broad claims, the adoption of the MGS List means that there is greater precision in protecting one’s brand; for example, listing the goods or services provided in a particular category rather than just the category itself. The MGS List also provides a pre-defined list of categories and as a result, applicants can easily identify and select the appropriate classification for their goods and services. This simplification reduces the likelihood of errors or discrepancies (including irregularity notices) and will lead to faster processing times and improved overall efficiency.
The adoption of the MGS List by IP Australia represents a significant step forward in Australia’s trademark registration processes. By embracing international standards, streamlining processes, and enhancing accessibility, this move not only benefits local businesses but also strengthens Australia’s position in the global marketplace. As businesses continue to expand across borders, a harmonised trademark registration framework is essential for protecting intellectual property rights and driving economic growth.
While we understand that this change is not going to impact current trade mark registrations, IP Australia’s roll out is a work-in-progress. Watch this space for further updates following IP Australia’s launch of the MGS List in March 2024 and what this means for your pending and future trade mark registrations.
Written by: Emma Yazbek, Lawyer
