News & Insights

Earlier this year we discussed that IP Australia was replacing the Trade Marks Goods and Services list with the Madrid Goods and Services lists. This came into effect in March 2024. Additionally, many other aspects relating to the transition to align Australia’s trade mark laws with the Madrid System are being implemented by the Intellectual Property Laws Amendment (Regulator Performance) Regulations 2024 (the Amending Regulations) as from 17 May 2024.

The three most significant changes are to the trade mark class headings, the grace period and to TM Headstart Applications.

Classes – NICE Class Headings

The classes of goods and services, which are contained within Schedule 1 of the Trade Mark Regulations 1995 (Cth) have been amended to be consistent with the NICE Class Headings and aligns Australia with the Madrid System.

Grace Period – From 10 months to 6 months

Historically, if you didn’t renew your Australian trade mark before it expired after 10 years, in certain circumstances you were afforded a 10 month grace period during which you could renew your trade mark. From 17 May 2024, this 10 month grace period has been standardised to 6 months.

The shorter grace period means that you will need to be on top of when your trade marks are due for renewal and promptly file renewal applications to ensure your trade marks remain protected.

TM Headstart – Extension

It will now be possible to request an extension to respond to an Examiner’s Assessment Report. The request for an extension must be made within 2 months of the deadline to respond to the Examiner’s Assessment Report. The request can only be sought on the following grounds:

• An error or omission by the requester, the requester’s agent, the Registrar, or an employee;
• Circumstances beyond the control of the requester; or
• Special circumstances which justify the granting of an extension.

Further, the Amending Regulations will remove all references to the Official Journal of Trade Marks. From 17 May 2024, IP Australia will instead publish the information on the IP Australia website and the Australian Trade Mark Search website, making the publications much more accessible to members of the public. We anticipate this is the beginning of making all correspondence of relevance to a certain trade mark linked to its recordal on the Australian Trade Marks Register.

For more information on how the Amending Regulations may impact you or where to find publications from IP Australia, please contact our Intellectual Property Team today.

The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.