IP Australia to adopt Madrid Goods and Services List

In January of this year IP Australia announced that it will adopt the internationally recognised Madrid Goods and Services list (Madrid List).

The Madrid List is expected to take over the existing Trade Mark Goods and Services list in March 2024. The change will bring IP Australia’s classification of goods and services for the purposes of trade mark applications in line with other intellectual property offices around the world, including the World Intellectual Property Organisation (WIPO).

Why are the changes being made?

Trade marks are registered in respect of the goods and services that are specified in the application. IP Australia’s adoption of the Madrid List means that the way those goods and services are able to be described will now conform to the more widely accepted Madrid List.

Streamlining the international protection of Australian trade marks

IP Australia says that the changes will make it easier for Australian exporters to protect their trade marks in other countries. This is true in the sense that Australian trade mark applications will now contain descriptions of goods and services that are more readily acceptable in other major markets without significant amendments being required.

The Madrid List will provide trade mark applicants with a more complete list of goods and services that can be covered in a trade mark application. IP Australia will also be introducing a ‘semantic’ search function, so that the relevant Madrid List classification of a good or service can be found just by searching for something which has a similar meaning to that classification.

Over time, the adoption of the Madrid List will mean that Australian trade mark registrations can be converted into registrations in other countries around the world more seamlessly.

The downside to the changes

Whilst the adoption of the Madrid List will bring Australia in line with international best practice, it will mean that the current Trade Mark Goods and Services list – which contains very broad descriptions of goods and services relative to the Madrid List – will be replaced.

This will remove the ability for applicants to register their trade marks in respect of broad goods and services and necessarily restrict the scope of protection afforded to trade mark owners to those specific goods and services they use their mark for.

For example, under the existing list, an applicant could register its trade mark in respect of ‘retail services’. This would mean that the owner of that mark has the exclusive right to use it in respect of all retail services, no matter what goods might be retailed. However, under the Madrid List, the applicant would be required to specify the goods in respect of which they are providing retail services, so the trade mark would be registered in respect of ‘retail services in relation to [list of all goods]‘.

It will therefore be more important for Australian trade mark owners to ensure that their future trade mark applications are drafted to comprehensively cover all of the goods and services they use, or intend to use, their marks for, rather than relying on the broad descriptions available under the existing Trade Mark Goods and Services list.

If you need further advice on how the Madrid List will impact your business’ trade mark portfolio, or need assistance with registering your trade marks, please get in touch with the Gadens Intellectual Property and Technology team.

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Authored by:

Savannah Hardingham, Partner
Josh Firmin, Associate