Annual Technical Report on Trademark Information Activities in 2023 submitted by IP Australia

Please provide links to your website where the requested information can be found in English, French, or Spanish.  Alternately, you may provide text responses instead of URLs if desired.  If the information is not available on your website in an ATR language, then please provide text.

URLs in responses should meet the following requirements:

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

Information on the following topics is desired:

Outline of main policies and plans aimed at development of trademark information activities and expected time frames for their realisation: 

IP Australia’s vision is to deliver world leading IP services that are modern, effective and efficient to ensure all Australians benefit from great ideas, through administration of IP rights. Trade mark applications for 2023 increased by 7.2% on their level in 2022, which is a record volume exceeded only by filings in 2021. IP Australia has continued to improve service to our customers to help them avoid mistakes in their applications (see below), while focusing on critical activities that transform service delivery for the benefit of the IP Rights ecosystem. 

More information can be found in our Strategic Corporate Plan https://www.ipaustralia.gov.au/about-us/accountability-and-reporting/corporate-plan. 

New projects launched or resumed this year in the context of the policies and plans mentioned above, short description: aims, partners, tasks: 

The Trade Mark International Classification Service (TMICS) project was established to assist users in searching the Madrid Goods and Services (MGS) database more effectively and avoid mistakes in their applications. Leveraging Natural Language Processing technology, TMICS helps users find goods and services that not only match search terms, but are also semantically related. This capability will help to facilitate IP Australia’s adoption of the MGS and be used to analyse the similarities and differences between the Australian picklist and the MGS. The adoption of the MGS and implementation of this semantic search service will enable IP Australia to more closely align with international practice and improve customer service offerings. 

Trade Mark Precedent Identification (TMPI) project focusses on providing examiners with an easier and more efficient automated Register searching function. TMPI aims to boost quality, consistency and efficiency in register searching by automatically constructing search queries based on Natural Language Processing (NLP) techniques, captured business rules and well-defined logic. The results are presented in order of relevance for consideration by an examiner. The augmented searching function has been built in-house as a collaboration between Trade Mark subject matter experts and the cognitive computing developers within IP Australia. 

TM Checker is an AI-assisted free trade mark registrability tool. The intent of the tool is to help small businesses as yet unfamiliar or not confident about trade marks to consider whether a trade mark is appropriate for them and to equip them with the necessary information to make an informed decision. TM Checker had over 142,000 views and lead to 5,800 Part 1 applications in 2023. 

Customer Value Program (CVP): The CVP vision is to ensure all Australians benefit from great ideas by providing world-leading IP related digital services that are modern, efficient and effective. The CVP aims to transform IP Australia’s internal processes and capabilities and align them to a customer-centric and delivery-focused model. The program has delivered efficiencies for end-to-end IP rights administration and improve engagement and satisfaction for IP Australia’s customers. 

The Customer Value Program will deliver four key capabilities: 

1. A modern, practical and informative corporate website  
2. Modern and effective correspondence  
3. Streamlined and efficient processes and services for customers  
4. Digital experience personalisation and maturity  

IP Australia will continue to form and maintain partnerships with IP Offices, academia and other stakeholders to share progress on cognitive computing initiatives to share knowledge, learn from other organisations and leverage existing solutions in the development and use of AI for our agency and its customers. 

Main areas of trademark information activities and related information and communication technology (ICT) practices which were in the focus of attention last year: 

IP Australia’s internal administrative system for trade marks Rights In One (RIO) electronically receives, processes and monitors IP right cases and their related customer interactions. The system includes document management, correspondence generation and decision support functionality which span a complex array of quasi-legal business processes unique to the IP system. 

RIO is now in a continuous improvement stage, with high level backlog items being delivered each year, along with continuous improvement user prioritised sprints fixing bugs and delivering value to users. 

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

Trade mark applications increased by 7.2% in 2023 on their level in 2022, driven by a 9.8% increase in resident filings. Trade mark registrations fell by 9.9%. Further details will be found in IP Australia’s 2024 Australian IP Report.  

Other matters and useful links (URLs): annual report of the Office, news page, statistics, etc.: 

Latest news: 

https://www.ipaustralia.gov.au/news-and-community/news 

Statistics: https://www.ipaustralia.gov.au/tools-and-research/professional-resources/data-research-and-reports 

Australian IP Report: https://www.ipaustralia.gov.au/tools-and-research/professional-resources/data-research-and-reports 

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

Information on the following topics is desired:

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

IP Australia provides information on its website to support applicants filing. If required, IP Australia provides further support through our contact centre or online enquiry channels.  

https://www.ipaustralia.gov.au/trade-marks/how-to-apply-for-a-trade-mark 

Availability of the application dossier in electronic form: 

Trade marks Search System: https://search.ipaustralia.gov.au/trademarks/search/quick 

Matters concerning classifying: 

1. 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 
2. Use of electronic classification systems and pre-defined terms of the classification applied 

Australia classifies goods and services according to the Nice Classification. Australia updated the 12th Edition of Nice (2023 Update), with all applications filed on or after that date being classified according to the 12th Edition. 

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. 

Applicants are encouraged but not obliged to use pre-defined classification terms. Checking of goods or services statements is performed manually where the statement is free text furnished by the applicant. 

An online form (e-form) allows applicants to choose from a pre-defined selection of classification goods/services terms (the Pick-list) relating to a trade mark application, or otherwise specify their own goods/services. In 2023, work commenced to functionally align the Australian Pick-list to the WIPO Madrid Goods and Services list. Approximately 50% of electronic filers use the Pick-list functionality. Goods and services statements provided via the Pick-list functionality do not require manual checking. 

Matters concerning processing of different types of non-traditional marks (e.g., three-dimensional, motion, hologram, colour mark, etc.): 

No comment provided here. 

Other activities: 

No comment provided here. 

III. SOURCES OF TRADEMARK INFORMATION PROVIDED BY THE OFFICE

Information on the following topics is desired:

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

The Australian Trade Mark Search (ATMS) is available on-line, free of charge, via the IP Australia web site (https://search.ipaustralia.gov.au/trademarks/search/quick) and contains both bibliographic text and images. ATMS recently replaced the Official Journal of Trade Marks and makes information available in a flexible, modern and user-friendly way, while preventing potential confusion and reduce redundancies. ATMS is a more reliable, searchable and up-to-date single source of information for crucial dates and other required information relating to trade marks.  

Information that is not provided on the ATMS online search portal (for example where information is general rather than related to individual trade marks) is generally made available on IP Australia’s website, for example as an Official Notice or a non-legislative instrument: https://www.ipaustralia.gov.au/news-and-community/official-notices  

https://www.ipaustralia.gov.au/about-us/ip-legislation-in-australia  

Examination Reports are generated electronically and are issued to customers online via IP Australia’s online portal: https://portal.ipaustralia.gov.au/login  

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

In 2023, trade mark filings, acceptances and registrations were published in the Australian Official Journal of Trade Marks, updated daily. The online journal contains editions dating from 12 November 2018 and is available here: https://search.ipaustralia.gov.au/trademarks/journals . Weekly journals published before 12 November 2018 are available for download in PDF format (https://pericles.ipaustralia.gov.au/ols/epublish/content/olsTrademarkPDFs.jsp).  

Information includes: 

- Applications Filed 

- Applications Accepted for Registration 

- Amendments, Changes and Corrections 

- Applications Lapsed, Withdrawn and Refused 

- Trade marks Registered 

- Assignments, Transmittals and Transfers 

- Cancellation of Entries in Register 

- Extensions of Time 

- Renewal of Registration of trade marks 

- Opposition Proceedings 

The IP Australia website also provides access to a variety of forms and publications, including IP legislation, official notices, hearings decisions, practice & procedure manuals, etc. 

Information products (coverage, medium, etc.) available to examiners, including external documentation and databases: 

The primary business system used by trade marks examiners is RIO. This system maintains the data relating to trade marks, including bibliographic data and documents, and is used for electronically receiving, processing and monitoring IP right cases and their related customer interactions.  

Once a trade mark is indexed an examination task is created and assigned to a queue for examination. This task is used to launch the examination dashboard, where substantive examination is performed. 

The examination dashboard is a suite of specialist tools for trade mark examiners that allow them to manage their own search and research work in support of their examination decisions. The tools include a new trade mark search system optimised for the needs of examiners, some automated research tools that inform examiners about facts of the trade mark (geographical location, dictionary meaning, common surname, etc.), tools to capture internet research, assess whether goods and services are acceptable, and allow examiners to raise objections and capture objection reasons in a ‘case based’ dashboard. 

Correspondence is created within the examination task. RIO retrieves any issues identified during examination from the examination dashboard and prepares the appropriate template for examiners to author. 

Information products (coverage, medium, etc.) and services available to external users; conditions of access (e.g., free of charge, subscription, etc.): 

The following databases and information are available through the IP Australia and the Australian Government Data website:   

Australian Trade Mark Search (ATMS)- Web-based interface or API providing a searchable database of Australian Trade Marks from 1906 to present, with searchable bibliographic data. Images are available but not searchable. It is free of charge and is not subscription based. https://search.ipaustralia.gov.au/trademarks/search/quick  https://portal.api.ipaustralia.gov.au/s/communityapi/a082w000000LObMAAW/developersaustraliantrademarksearchapihttps://portal.api.ipaustralia.gov.au/s/communityapi/a082w000000LObMAAW/developersaustraliantrademarksearchapi 

Trade Mark Journal - Daily publication that provides a summary of lifecycle events on Trade Mark applications: https://search.ipaustralia.gov.au/trademarks/journals 

Bulk Data Products - The catalogue of bibliographic data on trade marks can be purchased from IP Australia. Information on IP Australia’s Bulk Data Products can be found at: 

https://www.ipaustralia.gov.au/tools-and-research/Professional-resources/bulk-data-requests 

IP RAPID — Intellectual Property Automated Product for Information and Data is a publicly available data set that provides access to over 100 years of information from IP Australia on IP rights applications (free of charge). https://www.ipaustralia.gov.au/tools-and-research/Professional-resources/Data-research-and-reports/Open-IP-data 

IPLORD - Intellectual Property Longitudinal Research Data is the annual snapshot of the stocks and flows of intellectual property (IP) rights for 477,463 Australian and 330,552 international applicants over 20 years (free of charge). https://data.gov.au/dataset/ds-dga-41383895-e0ea-4904-b3e1-ae5b938e82a5/details?q=  

Subscription-based mailing lists - https://www.ipaustralia.gov.au/news-and-community/news 

Legal status information (kind of information, coverage, medium, etc.): 

Australian Trade Mark Search (ATMS) is used by external users to search for trade marks and their bibliographic information, including legal status information. It is free of charge and is not subscription based. 

Other sources: 

No comment provided.

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

Information on the following topics is desired:

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

Online Application portal  Bespoke interactive cloud-based website for self-filers to file applications and manger existing IPRs:  https://portal.ipaustralia.gov.au/login  

B2B API channel allows professional IP service providers to submit applications and manage IPRs via APIs: https://www.ipaustralia.gov.au/tools-and-research/Professional-resources/APIs 

Order Management Workbench (OMW) is an internal web-based interface which allows formalities staff to enter paper-based applications and manually correct issues and errors with filings. It is a bespoke java application. 

Rights In One (RIO) is the primary business system for trade marks administration and examination. It runs on a PEGA Case Management system. 

Madrid e-filing is WIPO’s online platform for international applications. Australian customers can submit international applications using the platform. Access to the platform is integrated with the Online application portal.  

Hardware used to support business processes of the Office: 

IP Australia uses commercial laptops with Windows 11 Operating system and MS365 office productivity tools. MS Teams and SharePoint have been introduced as our primary collaboration technologies. 

Online and B2B via API IPR application and management tools are all cloud based. 

IP Australia’s legacy systems have been moved off premises and moved into offsite, commercial shared data centres and high available containerised architecture has been applied to majority of critical business applications. 

Internal databases: coverage, updates, interlinks with external sources: 

The primary business system is Rights In One (RIO) which runs in a cloud environment. Further information on RIO is provided elsewhere in this document. 

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

File building:  The primary business system for trade marks is Rights in One (RIO). This system maintains the data relating to trade marks, including bibliographic data and documents. A RIO case is established for each trade mark application on filing. This has an automated workflow that captures, files, publishes and sends notices to the relevant parties.  

Updating: RIO creates cases as user requests (correspondence) are received from customers via the digital transactional channels. Each case has a specific workflow and assessment criteria to assist users in the processing of the task. 

RIO adds documents to the database and prepares structured data (if submitted) within the relevant workflow for a user to action (e.g., apply an amendment) or reject (e.g., not apply an amendment if the requirements for amendment are not met). 

RIO also contains the search material considered by the examiner during substantive examination, and information relating to Opposition matters if the application proceeds along this path. 

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

No comment provided. 

Other matters: 

No comment provided. 

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

Information on the following topics is desired:

Office's library (if deals with trademark information): equipment, collection management, network of libraries in the country, cooperation with foreign libraries: 

All Australian trade mark records/documents are handled in accordance with Office procedures set down under Australian Law and archiving practices. 

Publications related to different business procedures and trademark information sources available to users, for example, books, brochures, Internet publications, etc.: 

IP Australia provides useful links and information on a wide range of information related to intellectual property via IP Australia’s website (http://www.ipaustralia.gov.au/) including: 

https://www.ipaustralia.gov.au/tools-and-research/professional-resources/data-research-and-reports 

https://www.ipaustralia.gov.au/tools-and-research/business-resources 

https://www.ipaustralia.gov.au/trade-marks/what-are-trade-marks 

Cooperation with universities, technology and innovation support centres, etc.: 

Small business outreach: IP Australia takes a strategic approach to engagement with small business by establishing a partnership network across government, universities and industry associations, leveraging their networks and the credibility they have in IP Australia’s target audience of start-ups and small to medium enterprises.  

Engagement activities have been identified and targeted into the following groups: 

• Government departments and agencies – Commonwealth and State based programs that engage with IP Australia’s target audience. Often utilising a Business Advisor network who have been trained in an ‘Introduction to IP’. 
• Universities – early career researchers, undergraduate and industry collaborations, working with accelerator programs, undergraduate innovation courses, and higher degree programs. 
• Peak Industry bodies – industry associations that represent small and medium enterprises; providing objective information that can be channelled through the associations, leveraging any Business Advisor network they have, 
• Direct – IP Australia provides webinars and resources designed for self-service on IP Australia’s website and promoted through social media and newsletters, aimed at the end-user/self-filer. 
• Indigenous – IP Australia has a dedicated set of resources including videos, fact sheets and a call back service – Yarnline – to support Indigenous business owners engaging with the IP system. 

Overview of primary engagement activities: 

Train the Trainer Program 

Piloted in 2022, this program is designed for Business Growth / Accelerator Mentors in Government funded programs. It aims to uplift the fundamental intellectual property (IP) knowledge and the capability to have meaningful conversations on IP with their cohorts. 

Hybrid Presentations and Workshops (30-45 minutes) 

Live sessions hosted by IP Australia Public Education staff which include; 

• Pre-sessions survey (to understand audience profile)  
• Welcome and introduction 
• Short, pre-recorded presentation by a subject matter expert (experienced IP examiner) 
• Q&A  
• Links to relevant online education resources 
• Post sessions survey (to understand attendee satisfaction and areas for improvement) 

Social media and newsletter 

IP Australia engages with our audiences via digital platforms to support IP Australia policy and consultation activities, IP trends and analysis report publications, to highlight and correct misconceptions and to educate. Platforms include LinkedIn, Facebook, Twitter, Instagram and email newsletter (monthly). 

Event attendance 

Participation at relevant industry and government events for face-to-face engagement with small business owners and professional services individuals supporting small businesses. 

• Trade stand / booth 
• A5 and business card size collateral with QR codes linking to online education resources 
• Presentations and panel participation to demonstrate relevance of IP for business, IP within the innovation ecosystem, IP analytics for Government policy development, IP trends to support small business growth (success) 
• Working with incubation hubs, accelerator programs and relevant conferences/expos, IP Australia provides information and demonstrates relevance of IP for start-ups and early-stage businesses.  
• Developing new content targeted at educating start-ups and early-stage business on commercialisation, exporting and IP protection for digital innovations/inventions. 

Ongoing promotion is conducted via social media, email subscription newsletters and proactive message multiplier networks such as peak industry bodies and other government organisations.  

Digital experience: The new IP Australia website was launched in late 2022. Following this, in 2023 the Digital Services Team has been leading a continuous improvement program over six months, listening to customers as they tell us what is working and where we can improve.  

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

’Upskill’ is IP Australia’s online e-learning program that helps small business understand the basics of trade marks. This five-step education program is designed to support self-filers in developing and submitting their trade mark application. https://www.ipaustralia.gov.au/tools-and-research/business-resources/trade-mark-basics-course 

Please also refer to comments in previous section. 

Other activities: 

No comment provided. 

VI. INTERNATIONAL COOPERATION ACTIVITIES IN THE FIELD OF TRADEMARK INFORMATION

Information on the following topics is desired:

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

International exchange of information can be facilitated using IP Australia’s trade marks bulk data products: https://www.ipaustralia.gov.au/tools-and-research/Professional-resources/bulk-data-requests. 

IP Australia in engaged with the Committee of WIPO Standards (CWS) and participates in the development and application of standards for IP Offices to exchange data in automated, machine-readable ways. 

Participation in international or regional activities and projects related to trademark information: 

Madrid Webinar Series with WIPO 

In collaboration with WIPO, IP Australia delivered a series of webinars on trade mark protection overseas targeting Australian small and medium enterprises. The webinar series included information on the options available for filing overseas and how to file an application for an International Registration using the Madrid e-Filing system.  

Aligning default goods and services terms with WIPO 

IP Australia commenced a two-staged process  to adopt WIPO’s Madrid Goods and Services list (MGS list) as IP Australia’s list of pre-approved classification terms.  The first stage, completed in September 2023, involved removing broad terms from Australia’s existing picklist.  The second stage commenced mid-2023, and has involved preparations to ingest the MGS list into all IP Australia systems.  

AANZFTA TM Quality Project 

Phase 3 of the IP-Australia led ASEAN-Australia-New Zealand Free Trade Area (‘AANZFTA’) Enhancement of Trade Mark Quality Management Project was delivered from July 2022 to July 2023. This is a cooperation project with ASEAN IP offices looking to develop and enhance quality management systems for trade mark examination. The project commenced in 2021 with the participation of all ten ASEAN Member States and has delivered a number of outputs including a gap analysis activity, three workshops hosted by IP Australia sharing experiences of various IP offices in applying quality concepts and principles relating to trade mark examination, as well as tailored mentoring sessions between January and April 2023. 

Assistance to developing countries: 

No comment provided. 

Other activities: 

No further information provided. 

VII. OTHER RELATED MATTERS

No further information provided.