CWS.ATR.TM.2013.AU

Annual Technical Report 2013 on Trademark Information Activities submitted by Australia (CWS/ATR/TM/2013/AU)

Where URLs are requested below, it is preferred that either URLs which are likely to remain stable over time (three years or more) are provided, or home (main) page URLs are provided with a short explanation of how to access the corresponding information.

I. GENERAL OVERVIEW OF RECENT DEVELOPMENTS IN TRADEMARK INFORMATION ACTIVITIES CARRIED OUT BY THE OFFICE

Statistics: changes in terms of application filings and registrations with respect to previous year; trends or areas experiencing rapid changes

(Please Note: AU provides for multi-class filings. Figures below are in classes)

Total TM Classes Filed
2012: 112,543
2013: 114,088
Percentage difference: TM applications increased by 1.4%
Madrid Applications Filed
2012: 21,261
2013: 24,830
Percentage difference: Madrid applications increased by 14%

Total Registrations
2012: 79,894
2013: 87,626
Percentage difference: Registrations in classes increased by 9%

II. SERVICES AND ACTIVITIES RELATED TO TRADEMARK INFORMATION CARRIED OUT BY THE OFFICE

Information and support provided by the Office to applicants regarding filing on paper and/or e-filing (instructions, seminars, etc.) – URLs

Information services are available on the IP Australia website.
Filing:
http://www.ipaustralia.gov.au/get-the-right-ip/eservices/
http://www.ipaustralia.gov.au/get-the-right-ip/trade-marks/trade-mark-application-process/Get-the-right-tm/
AND
http://www.ipaustralia.gov.au/get-the-right-ip/eservices/

Forms & Publications:
http://www.ipaustralia.gov.au/get-the-right-ip/trade-marks/trade-mark-forms/
AND
http://www.ipaustralia.gov.au/get-the-right-ip/trade-marks/trade-mark-publications/

Exam & Registration procedures:
http://www.ipaustralia.gov.au/get-the-right-ip/trade-marks/trade-mark-application-process/examination-process/

Examiners Manual
http://www.ipaustralia.gov.au/pdfs/trademarkmanual/trade_marks_examiners_manual.htm
IP Australia has released a new website. Any links to the previous site will be redirected to the new home page. Please contact IP Australia if you need assistance.
The application process for trade marks:
http://www.ipaustralia.gov.au/get-the-right-ip/trade-marks/apply-for-a-trade-mark/

Applying for International trade marks:
http://www.ipaustralia.gov.au/get-the-right-ip/trade-marks/international-trade-marks/

Trade mark searching
http://www.ipaustralia.gov.au/get-the-right-ip/trade-marks/search-for-a-trade-mark/

Matters concerning classifying
(i) Classification and reclassification activities; classification systems used, e.g., International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), International Classification of the Figurative Elements of Marks (Vienna Classification), other classification
(ii) Use of electronic classification systems and pre-defined terms of the classification applied

• Classification and reclassification activities; classification systems used, e.g., International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), International Classification of the Figurative Elements of Marks (Vienna Classification), other classification

Australia classifies goods and services according to the Nice Classification. Australia implemented the 10th Edition of Nice on 1 January 2012, with all applications filed on or after that date being classified according to the 10th Edition. No reclassification of applications/registrations filed prior to 1 January 2012 was undertaken.

Australia does not use the Vienna Classification scheme to classify the figurative elements of marks. Rather, figurative elements are classified (and searched) according to a glossary of device terms developed by the Office. For example, the WIPO device is indexed as follows:

1 ANNULUS 2 CONCENTRIC
3 HAND 4 PEN
5 BOOK,OPEN 6 GRAIN,EAR
7 VIOLIN 8 WHEEL,GEAR
9 MUSICAL-INSTRUMENT
10 CIRCLE+
11 ROUND 12 ROUND+

Each device term may then be used as a search criteria, either singularly or in combination, in order to locate marks with similar device characteristics.

• Use of electronic classification systems and pre-defined terms of the classification applied

Applicants are not obliged to use pre-defined classification terms. Checking of goods or services statements is performed manually where the statement is furnished by the applicant.
An on-line application form (e-form) allows selection of goods/services relating to a Trade Mark via a set of pre-defined classification terms (Pick-list). About 45% of electronic filers use the Pick-list functionality. Goods and services statements provided via the Pick-list functionality require no manual checking.

The terms in the Pick-list are also those which form the basis of the Goods and Services help within ATMOSS, the Trade Marks Office searchable database.
The Goods and Services help service also offers a matching service, where a list of goods or services (separated by semi colons) can be matched against the terms in the Pick-list.
There is no obligation for applicants to use pre-defined terms. As mentioned above, the Trade Mark e-form gives applicants the choice to use a pre-defined set of terms (Pick-list) at reduced cost or alternatively to specify their own goods/services.

III. SOURCES OF TRADEMARK INFORMATION PROVIDED BY THE OFFICE

Main types of publications in the field of trademark information, outline of the content and medium (on paper, on CDs, online – URLs)

The Australian Official Journal of Trade Marks (the Trade Marks Journal) is published weekly. There are 50 issues per year - the Easter and Christmas weeks being excluded. The Journal is available on-line, free of charge, via the IP Australia web site and contains both bibliographic text and images.

Standard Notices and Letters are produced via the Trade Marks mainframe business application as XEROX XICS output.

Examination Reports are generated in Microsoft Word format

The Australian Official Journal of Trade Marks can be accessed at the following URL:
http://www.ipaustralia.gov.au/about-us/publications-listing/journals/

Information on IP Australia’s Bulk Data Products can be found at:
http://www.ipaustralia.gov.au/about-us/corporate/bulk-data-products/

Official Gazettes: main types of announcements, frequency of publication, medium (on paper, on CDs, online, URL), etc.

The Official Journal contains the following announcements:
- Applications Filed
- Applications Accepted for Registration
- Amendments and Changes
- Applications Lapsed Withdrawn and Refused
- Trade Marks Registered
- Assignments, Transmittals and Transfers
- Cancellation of Entries in Register
- Renewal of Registration of Trade Marks
- Opposition Proceedings
- Removal for Non-use Proceedings
- Official Notices

The IP Australia web site also provides access to a variety of forms and publications, IP Legislation, Official Notices, Hearings Decisions, Practice & Procedure Manuals, etc

The Office's bibliographic data is maintained on an ADABAS Natural (zOS) mainframe. Trade Mark images (devices) are stored in a Unix file directory. The Office also utilises an e-case (Electronic Document Management System) repository which contains all documentation relating to the prosecution of applications.

IV. ICT SUPPORT TO SERVICES AND ACTIVITIES RELATED TO TRADEMARK INFORMATION CARRIED OUT BY THE OFFICE

Specific software tools supporting business procedures within the Office: general description, characteristics, advantages, possible improvements

Current standard desktop software includes Microsoft Windows 7 with Microsoft Office 2010 .

The Office's publication system is partially mainframe based and produces:
- camera ready copy of the Australian Official Journal of Trade Marks;
- trade mark certificates and original register entries; and
- notices for trade mark applicants or their agents.

Bibliographic data (ADABAS as XEROX XICS output) and images from Unix are merged for Journal production.

The current SOE includes Windows 7 with Office 2010, and IE 8.0Microsoft Outlook.

Hardware used to supporting business processes of the Office

The Canberra Office has an ethernet-based LAN providing high speed bandwidth for each user desktop connection. A DMZ-based, DSD approved firewall using IAN ports (Internet IEFT Assigned Numbers) provides the secure means to allow access from internal systems/users to external entities such as the Internet or public/private organisations.

Internal databases: coverage, updates, interlinks with external sources

Searching for conflicting trade marks can be conducted via the mainframe application or ATMOSS. All searching by examiners is conducted through ATMOSS with search extracts then forming part of the search file in TRACS.

The Office has developed a simple utility to search a number of external databases - principally dictionaries, gazetteers, reference titles, etc - so as to streamline distinctiveness searching. Examiners routinely search the Internet for the same purpose.

Establishment and maintenance of electronic search file: file building, updating, storage, documents from other offices included in the search file

Bibliographic data is stored against each trade mark application in the ADABAS Natural business administration system. Transaction history records are created as this data is updated during the life-cycle of the trade mark. The business administration system allows access to this data via a variety of search utilities. Data from the ADABAS Natural system is carried in real time to the Australian Trade Marks On-line Search System (ATMOSS) – a mid-range ORACLE web-server application. ATMOSS allows both internal and public access to bibliographic data, and trade mark images, via the IP Australia web site, and most customers now use this application in preference to the mainframe.

The EDMS e-case file is established for each trade mark application on filing. The EDMS has been developed in-house using a proprietary Australian EDMS product, Objective. The system is known as TRACS - the Trade mark Records, Applications and Correspondence System.

The TRACS e-case file is updated (added to) as correspondence is received from the applicant/agent or third party, and additionally, as it is generated by the Office. TRACS also contains the search material considered by the examiner during the course of substantive examination, and will also contain information relating to Opposition matters if the application proceeds along this path.
The TRACS case file stores a variety of Word, Adobe PDF and XML files.

Administrative management electronic systems (register, legal status, statistics, and administrative support)

The primary business systems are the ADABAS Natural mainframe application, TMARK, running on IBM zOS and TRACS - the Trade mark Records, Applications and Correspondence System, TMARK interfaces to a number of satellite applications, eg Word for production of reports, XICS for publishing output, a couple of mid-range applications for EDI under the Madrid Protocol, an automated data capture utility (ADC) for capturing data received electronically, and ATMOSS. Document management is handled via TRACS.

All processing relating to the life-cycle of a trade mark (apart from financial processing) is conducted within this environment. The Trade Mark Office, along with the Patent and Design Offices in IP Australia is in the process of transitioning its business applications from the mainframe to our strategic server infrastructure environment. This environment includes Sun Solaris, Oracle RDBMS, J2EE, BEA Weblogic, and Objective EDMS.

Datacom on behalf of IP Australia provides a central contact for customers to obtain information to support their decisions about a wide range of Intellectual Property issues.
Increasingly, IP Australia is using its web site as a means of providing an alternative means of public access to these services, such as electronic filing (currently approximately 99% of trade mark applications are filed online), registrations, renewals and trade mark searching via ATMOSS.

IP Australia is currently implementing a system to support business-to-business data exchange of patents, industrial designs and trade marks transactions with its high volume clients (Patents and Trade Mark Attorneys). This system will be consistent with WIPO electronic filing and National e-commerce standards.
All Australian Trade Mark records/documents are handled in accordance with Office procedures set down under Australian Law and archiving practices.

V. PROMOTION ACTIVITIES AIMED TO SUPPORT USERS IN ACCESS AND EFFICIENT USE OF TRADEMARK INFORMATION

Key promotional activities in 2013:

Wallace and Gromit's World of Invention exhibition
IP Australia has sponsored the Australian tour of "Wallace and Gromit's World of Invention", an exhibition originally developed by the UK Intellectual Property Office, Aardman Animation and the Science Museum in London. Following a successful preliminary season in Melbourne at Scienceworks in 2012 (attracting close to 104,000 visitors), the exhibition was on show at the Powerhouse Museum, Sydney from December 2012 to May 2013 (attracting over 84,042 visitors).

World IP Day
The inaugural Intellectual Property Report 2013 was launched on World IP Day via the IP Australia website. This report, which will be produced annually, presented a comprehensive overview of Australia's IP system and how we compare globally.

IP Reform
On 15 April 2013, the IP Laws Amendment Act 2012 came into force. The impact of the new legislation was regularly promoted to stakeholders, customers and the public via digital channels including the IP Australia website.

Vocational Education and Training (VET)
IP has been recommended as a core competency in proposed new Leadership and Management qualifications in the Vocational Education and Training sector. A decision by the VET Regulator on the new qualifications is expected in late 2014.

E-Services
Since October 2011 IP Australia has progressively delivered new online services across two channels.

B2B (business-to-business) is a software product IP Australia provides high volume customers to use that enables the direct transmission of large numbers of service requests directly into IP Australia internal systems.

eServices is IP Australia's web-based self-service portal that is widely used by individuals and attorney firms. There are currently over 50,000 registered eServices users.
Customer responses from annuity firms, attorney firms and self-filers have been very positive. The B2B system has been adopted by the four major annuity firms (by volume) resulting in the majority of renewal transactions being processed automatically. As at December 2013, two Australian-based attorney firms had fully adopted B2B to file the transactions available. A further two are in the final stages of implementation.

The first significant release across both channels was in October 2012 when all new applications for all IP right types were implemented in both channels. IP Australia envisaged a gradual take-up of the new eServices/B2B. The aim was to reach about 80 per cent take-up two years after the release. These aims have been well exceeded.

Subsequent releases have seen improvements to the channels based on customer feedback, as well as improvements to support Raising the Bar legislative changes.

In late 2013, IP Australia introduced the "General eService" functionality and "Make a Payment". These latest enhancements allow users to submit the remaining transaction/service request types including amendments, assignments, extensions of time, opposition matters, international services, invoice payments, and responses to examination reports.

Audience specific activities

Exporters:
IP Australia continues supporting the Export Council of Australia with relevant news, information and seminars for its members. A key highlight for 2013 was an increased promotion of the Madrid Protocol and it benefits for exporters managing international trade mark portfolios.

Accountants:
IP Australia is working with Certified Practising Accountants (CPA) Australia to provide an information campaign on intellectual property for CPA members built on the success of our collaboration with the Institute of Chartered Accountants.

A Working Group of industry experts has been formed to guide and support this work. The group met recently and identified IP topics to be presented during the next twelve to eighteen months.

Engineers:
IP Australia has begun collaboration with Engineers Australia. Opportunities for a closer working relationship would ultimately result in greater access to distribution channels, thus improving IP Australia's ability to directly promote the value and benefits of intellectual property to this sector. Early drafting is underway for a joint IP educative program agreement that will target Engineers during 2014 and beyond.

SMEs:
IP Australia continued to work with AusIndustry and Enterprise Connect to extend efforts to promote IP to regional centres across Australia through a range of workshops and seminars.

Stakeholder engagement
In 2013, IP Australia undertook a range of engagement activities with both business and non-business aligned stakeholder interests. The underlying objective of these engagement activities, and the target audience/s, varied subject to the intended strategic or operational outcomes sought. This may have included policy and/or legislative consultations, public education and awareness (PE&A), or intellectual property (IP) advocacy more broadly.
IP Australia's three primary engagement mechanisms are outlined below:

IP Professionals Forum (IPPF)
The IPPF is IP Australia's principle round table meeting for consultation, discussion and information exchange on IP matters that relate to IP professionals and practitioners. IP Australia hosted two of these forums in 2013.

IP Forum (IPF)
The IPF is a bi-annual event which draws together attendees from industry, the attorney profession, government and media. The IP Forum is structured around a topical theme relating to the registered IP system. It serves three key functions for IP Australia: Firstly, it provides delegates with a unique opportunity to network broadly, and in particular, with key executive staff from IP Australia. Secondly, matters discussed at these IP Forums are used by IP Australia to help improve the registered IP system. Lastly, the IP Forum is used as a key communication channel to promote the positive contribution that IP makes to the Australian economy.
IP Australia hosted two of these forums in 2013. The event themes included:
• The future of IP practice in Australia
• Making ideas make money - the nexus between innovation, collaboration and commercialisation

Executive Visits Program (EVP)
The EVP is a comprehensive program of face-to-face meetings with chief executives (or equivalent) concerning IP issues that IP Australia wishes to seek views and feedback on. The EVP provides the agency with a valuable opportunity to learn how users of the IP system maximise the value of their intangible assets.

In 2013, IP Australia met with 28 companies, across a broad mix of industry sectors.

Indigenous Stakeholder Engagement
IP Australia has continued to attend workshops and events around Australia to promote Dream Shield, a program to raise awareness of intellectual property rights to Indigenous Australia. Events of note included the 6th Indigenous Economic Development Conference in Alice Springs Northern Territory, where IP Australia presented on the theme of ‘taking care of business'. Development is underway to expand the scope of Dream Shield to include important aspects of Copyright and Moral rights following lobbying from representatives of the Indigenous creative industries sector.

State Office Events
There were approximately 70 events undertaken in 2013 by the State Marketing Managers. These events targeted a wide range of audiences including SMEs, students, legal practioners and exporters

Other events of note
In August 2013 IP Australia in partnership with WIPO hosted the ‘Doing Business Internationally' breakfast seminars. Four of WIPO's senior staff addressed IP professionals about some of their key initiatives. The presenters specifically discussed: WIPO's Programs and Services for Business, including Global Databases, Global infrastructure and World Reference; the latest developments in the PCT and the Changing Face of Innovation; using the Madrid system to the best advantage; and WIPO's approach to Alternative Dispute Resolution.

The seminars, which attracted approximately 150 delegates, were held in Perth, Melbourne and Sydney.

Education and training: training courses, e-learning modules (URLs), seminars, exhibitions, etc.

IP Australia presented at the following seminars and workshops in 2012:

• The IP Public Education and Awareness Community of Practice Workshop in Thailand in May 2013. The goal of this AANZFTA project is to develop a sustained and strategic approach to IP public education and awareness in order to maximise the effective use of the IP system by businesses and creators in the region. The beneficiaries should be not only regional innovators but the economies of ASEAN Member States.

VI. INTERNATIONAL COOPERATION ACTIVITIES IN THE FIELD OF TRADEMARK INFORMATION

International exchange of trademark information in machine-readable form (e.g., Official Gazettes)

Largely restricted to the Official Journal which is available to all users on-line.
SGML/XML (MECA) exchange between IP Australia and the International Bureau.

Assistance to developing countries

• Through the WIPO Funds-in-Trust theme of developing the IP system, IP Australia has supported the following activities in 2013:
• Facilitation of accession to the Madrid Protocol in the ASEAN region for Cambodia, Indonesia and Laos – participation of WIPO official - Phnom Penh, Cambodia
• National Workshop on IP and Technology Management for Universities and Research and Development Institutions – Jakarta, Indonesia (May 2013)
• National Workshops on IP valuation - Hanoi and Ho Chi Minh City, Viet Nam (June 2013)
• National Training on “Successful Technology Transfer” – Bangkok, Thailand (May 2013)
• Expert mission on trademark examination – Laos July 2013
• Expert mission on trade mark examination Cambodia June 2013
• International Forum on IP valuation in Malaysia in November 2013
• National Advanced Training Program on Successful Technology Licensing in Thailand (November 2013)
• Development of national IP strategies – Cambodia, Solomon Islands, Vanuatu & Tonga

VII. OTHER RELATED MATTERS

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