Annual Technical Report on Trademark Information Activities in 2020 submitted by IP Australia

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

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

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 including trade marks. While focus on innovation and being a leader in digital services will continue, demand for IP rights was expected to fall across the globe due to COVID-19. As a result of the projected impacts of the COVID-19 pandemic, IP Australia chose to reduce capital investment budget in 2020-21 and focus on critical activities that transform service delivery for the benefit of our customers, including on tools to support trade mark examination and administration.

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

IP Australia continues to develop the trade mark database, TM-Link.  TM-Link enables matching of trade marks across jurisdictions and already includes more than 10 million trade marks from Australia, Canada, the European Union and the United States. TM-Link utilises a neural network to identify equivalent trade marks in different jurisdictions and assign them a common identification marker which is then used to link trade marks across jurisdictions. Trade marks are first identified as potential matches by considering similar trade mark text, applicant names and Nice classes. Work is underway to automate the regular updates of data and to expand the dataset to include countries within the Asia-Pacific region.

IP Australia has developed the Australian Trade Mark Search API which provides users with an API alternative to the in-depth Australian Trade Mark Search user interface. It allows users to search for trade marks using a range of fields and filters.

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 has recently delivered the Rights In One (RIO) internal administrative system. 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.

Since online transactions now account for more than 98 per cent of IP Australia’s approximately 850,000 customer service interactions each year, the RIO Program has delivered better customer service delivery and improved internal efficiencies.

RIO has enabled the decommissioning of more than twenty legacy systems including a thirty year old mainframe with commensurate maintenance and operational savings.

The capture, filing, publishing and correspondence for a trade mark application is fully automated. The first step for a user is the indexing process, which has been partially automated for word trade marks.

RIO includes a suite of new 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.

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.

Key points for 2020

• Continued automation of simple rules-based processes to deliver value to customers and users.
• Dedicated extension of time (case management) functionality.

Improvements in providing data to the public for analytical purposes and for internal reporting

The Data Front Door & Analytics team was established as the single point of contact for data services. The team develops open data products for release, provides information for operational, corporate and strategic planning processes and provides analytics and data services tailored to internal and external audiences. The team also plays a role in supporting IP Australia’s Senior Executives with evidence-based advice to guide strategic and business decisions.

IP Government Open Data (IPGOD) is an open dataset that covers each of the four types of IP rights administered by IP Australia (Patents, Trade Marks, Designs and Plant Breeder’s Rights) and captures information on the application process and its results. This is updated annually.

Data extraction methods have continued to be improved to maximize the accuracy, reliability and data coverage of the IPGOD product. Notably, IP Australia has improved its approach to entity resolution, providing a consistent identifier for filing activities of entities and organisations across all four IP rights. To enable this, organisation name variations have been batched and consolidated, so where applicants have provided variants of their name, such as P/L, Pty Limited and Pty Ltd, these variations have been grouped together as a single applicant.

Intellectual Property Longitudinal Research Data (IPLORD) is an Australian snapshot of the IP rights that Australian and international applicants file for each year and accumulate over time. Recently, we have expanded the coverage of the data to include the filing activities of applicants over the history of the Australian IP Right System.

We have revised our IPLORD product to work with IPGOD’s enhanced entity resolution algorithm. It also expands on previous editions to now include over 200 fields. The updated IPLORD dataset will be available in late 2021. 

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

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

Statistics

https://www.ipaustralia.gov.au/about-us/research-and-data

Annual Report

https://www.ipaustralia.gov.au/about-us/research-and-data/australian-ip-report

Latest news

Latest news is featured on the home page of IP Australia's website:

http://www.ipaustralia.gov.au/

Trade marks Search System

https://search.ipaustralia.gov.au/trademarks/search/quick 

TM Link

https://www.tmlink.net.au

Trade mark data sources

IPGOD - Intellectual Property Government Open Data—is a publicly available data set that provides access to over 100 years of information from IP Australia on IP rights applications.

 https://www.ipaustralia.gov.au/about-us/research-and-data/ip-government-open-data

IPLORD - Intellectual Property Longitudinal Research Data is the annual snapshot of the stocks and flows of intellectual property (IP) rights for 362,990 Australian and 253,285 international applicants over 20 years. 

https://data.gov.au/dataset/ds-dga-41383895-e0ea-4904-b3e1-ae5b938e82a5/details?q=

IP NOVA - IP Nova is a visual immersive search engine that helps users discover registered patents, trade marks, designs and plant breeder’s rights from IP Australia’s database.

 https://ipnova.ipaustralia.gov.au/#/  

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

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/managing-your-trade-mark/international-trade-marks 

Availability of the application dossier in electronic form

Trade marks Search System

https://search.ipaustralia.gov.au/trademarks/search/quick

Bulk Data

Bulk Data service is available here:

https://www.ipaustralia.gov.au/about-us/doing-business-us/bulk-data-products

The bulk data trade mark offering underwent some improvements in 2018. Details are here:

https://www.ipaustralia.gov.au/files/importantchangestoipaustraliastrademarkbulkdataproductdocx

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

No comment provided.

(ii) 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 11th Edition of Nice (2021 update), with all applications filed on or after that date being classified according to the 11th 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 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 46% 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 Australian Trade Mark Search, the trade marks Office searchable database.

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.

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

No comment provided here.

Other activities

No comment provided here.

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 Official Journal is now the Australian Trade Marks Search (ATMS). This Journal is available on-line, free of charge, via the IP Australia web site (https://search.ipaustralia.gov.au/trademarks)  and contains both bibliographic text and images.

A consolidated version of The Australian Official Journal of trade marks was published until the 8^th of June, 2021. This version of the Journal is available on-line, free of charge, via the IP Australia website and contains both bibliographic text and images.

https://search.ipaustralia.gov.au/trademarks/journals

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.

It has replaced the journal that was produced as a daily pdf since November 2018.  The link is still active here: https://search.ipaustralia.gov.au/trademarks/journals.

PDFs produced before November 2018 are still available here: http://pericles.ipaustralia.gov.au/ols/epublish/content/olsTrademarkPDFs.jsp  

Information included:

- 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, IP Legislation, Official Notices, Hearings Decisions, Practice & Procedure Manuals, etc.

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/about-us/doing-business-us/bulk-data-products

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.)

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

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 legal status information.

Other sources

No comment provided here.

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

Online Application portal (Replacing eServices) 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/api-transaction-channel

Order Management Workbench (OMW) is a 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.

Hardware used to supporting business processes of the Office

IP Australia uses commercial laptops with Windows 10 Operating system and MS365 office productivity tools. MS Teams and SharePoint are being 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

Remote Access: Since the beginning of the Covid-19 pandemic, lockdowns required most staff to work from home (WFH) for an extended period. Reliance on, and capability for remote access matured quickly. IP Australia implemented a Future Ways Of Working program in 2019 to facilitate more geographically diverse staff, allowing more staff to work from home more often. As this capability was established prior to the pandemic, IPA was able to pivot to WFH during lockdowns as compared to other organisations without remote working capability.

Internal databases: coverage, updates, interlinks with external sources

The primary business system is RIO which runs in an environment which is being migrated to the cloud.

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 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

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

Collection management, preservation

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/

The Transactional Digital Services (TDS) Program has successfully transformed IP Australia’s digital business model. TDS developed a contemporary and customer centric API-led platform which allowed IPA to reimagine the transactional experience for our customers. Leveraging this modern API ecosystem, the program completely redeveloped our B2B service offering for progressive customers and released this channel into production in 2019. The program recently delivered IP Australia’s new online services website experience. By utilising customer led delivery, the platform has significantly reduced red tape and made accessing the IP system simpler for all Australians. The completion of the program has now cemented IP Australia at the forefront of digital government services.

IP Australia maintains  Trade Mark Assist, as part of the Business.gov.au service to Australians to help them start a business. Trade Mark Assist is an online tool using machine learning to provide real-time information specific to user circumstances and reduces complexity and common applicant errors in trade mark applications. TM Assist was launched in 2017 and the promotion campaign called ‘build your business from the brand up’ featured case studies from Australian businesses.

Cooperation with universities, technology and innovation support centers, etc.

IP Australia works with universities, government agencies and industry bodies to reach businesses across Australia. IP Australia provides a contemporary website with rich digital content, on-demand webinars, video case studies, written case studies, a customised portal for small and medium enterprises and social media messaging to increase awareness and understanding of IP rights information.

2020-2021 efforts have been hindered by COVID-19 and there has been a ‘pivot’ or shifting of priorities to deliver information via virtual channels. IP Australia has increased the number of on-demand webinars and have a robust plan in place to keep developing new material. The use of social media channels has increased, in particular LinkedIn and Facebook, with an emphasis on directing businesses to the content on the website and to the on-demand webinars and virtual sessions run with partners.

Exporters, Small to Medium Sized Enterprises (SMEs) and indigenous business are three areas where IP Australia is focusing efforts.

For exporters, IP Australia maintains an ongoing relationship with the Export Council of Australia (ECA), providing IP materials that assist Australian businesses when exporting. IP Australia and the ECA cross-promote events, programs and speaking opportunities. IP Australia has also partnered with universities, supporting exporting programs with virtual presentations and showcase relevant material via the website. The appointment of a new IP Counsellor in China provides expertise to guide and connect Australians with the China innovation system. This IP Counsellor helps Australian companies make the most of their IP in China and other international markets. The counsellor has recorded on –demand webinars and facilitated information sessions and webinars for exporters.

For SMEs, IP Australia launched a customised ‘SME Portal’ enabling business to navigate the broad range of resources easily, providing easy links to toolkits, on-demand webinars, case studies, fact sheets and other relevant information, streamlining the customer experience. IP Australia has partnered with regional business chambers and enterprise centres, delivering virtual sessions to showcase via the SME Portal. IP Australia have continued strong engagement with other government agencies, leveraging grant and support programs. Where these programs have business facilitators who work ‘on the ground’ with SMEs, a ‘train the trainer’ product is being introduced to enable them to speak about IP with confidence, increasing reach and impact.

For indigenous business, IP Australia is developing customised products and identifying relevant channels that will achieve maximum impact and reach into indigenous business communities in urban, rural and remote areas. By partnering with Aboriginal Arts foundations, other government agencies and university programs, IP Australia is able to leverage networks to further knowledge regarding IP. A bespoke indigenous business portal is being developed on the website and is developed to be fit for purpose, with customised education products.

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.

IP Australia is working in partnership with AusIndustry’s Entrepreneurs Program, AusTrade, CSIRO, state-based innovation networks, university innovation hubs and a broad range partners, facilitating webinars and information sessions on the foundations of intellectual property and providing access to fact sheets, on-demand webinars. Information sessions are run with subject matter experts from the examination group.

The ‘SME Portal’ is a one-stop web page for business to quickly navigate the range of resources, toolkits, case studies and information.

Other activities

No comment provided.

VI. INTERNATIONAL COOPERATION ACTIVITIES IN THE FIELD OF TRADEMARK INFORMATION

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

International exchange of patent information can be done using IP Australia’s trade marks bulk data products: https://www.ipaustralia.gov.au/about-us/doing-business-us/bulk-data-products.

IP Australia in engaged with the Committee of WIPO Standards (CWS) and participates in the development 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

In 2020, IP Australia held a technical cooperation workshop with EUIPO, with the IP Office of New Zealand also attended. The focus was on trade marks and designs classification.

IP Australia also completed a virtual examiner exchange with China National Intellectual Property Administration (CNIPA) and the focus was on China’s trade mark classification system, the Madrid Protocol, new types of trade marks and Chinese character trade marks.

Assistance to developing countries

WIPO Funds-in-Trust

IP Australia provides assistance to developing countries through WIPO Funds-In-Trust. Due to the global COVID-19 pandemic, FIT activities were paused for most of 2020. The program has now been extended to December 2021, and due to ongoing travel restrictions, activities have been redesigned where possible to be delivered virtually.

Other activities

No comment provided.

VII. OTHER RELATED MATTERS

No comment provided.