Is the Madrid Protocol always the right approach for foreign trade mark applicant/s in Australia?

Maybe Not. Here is a case study based on the experience of a foreign trade mark applicant who approached one of our Trade Mark Attorneys for assistance.

Kellie Jukkola was recently approached by an overseas Associate representing a foreign applicant to review objections against an International Registration Designating Australia (IRDA).  The examination report raised several issues, including distinctiveness objections against goods in class 18, as well as an earlier registration cited as a barrier to acceptance of the underlying client’s class 25 goods.

An initial review of the objections led us to advise our Associate that the class 18 objections could be easily overcome by specification amendment. However, the citation affecting class 25 was more problematic.

Our Associate advised that their client was looking to launch its products (particularly the class 18 goods) in Australia as soon as possible.

Our brief searches suggested that the brand, the subject of the cited registration may have remained in use, albeit in a different form to its registration.  This ‘incorrect’ form of use raised the possibility of instituting non-use proceedings, either in conjunction with or as an alternative to seeking consent from the prior owner. In either case, it was clear that the class 25 objections would likely not be dealt with quickly.

 Given that the client’s intent to launch their class 18 goods in Australia as soon as possible was imminent, our advice in this case was to remove class 25 from the IRDA and file a fresh, national application for the class 25 goods. This approach would allow protection of the client’s class 18 goods to be extended into Australia, providing the client with a degree of comfort when launching its class 18 goods. Moreover, the client would have some additional time to deal with the outstanding issues in respect of the class 25 goods without holding up registration of the class 18 goods which were to be launched soon.

 Unfortunately for the foreign applicant in this case, it is not currently possible to file divisional applications in respect of IRDAs. The availability of this option would have avoided the need to file a fresh application for the client’s class 25 goods.

Proposed changes to Common Regulations under the Madrid Agreement will come into force in early 2019, as a result of which IP Australia will be obliged to amend the Trade Marks Act 1995 and related regulations to allow for the division of IRDAs.

IP Australia has indicated an intention to make the necessary changes before the end of 2020. In the meantime, where a client has strict commercial deadlines, it may be prudent to file a national application in Australia to ensure the full breadth of options for dealing with potential objections is available, including the filing of divisional applications without a loss of priority.

What should you do?

If you are a foreign trade mark applicant (or a foreign associate with a client) who is looking to protect a trade mark in respect of goods that are due to be launched in the immediate future, then filing directly into Australia may be more preferable than an IRDA.

Please do not hesitate to contact our trade mark attorneys should you require any additional information, or email [email protected].



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