Annual Technical Report on Trademark Information Activities in 2014 submitted by IP Australia
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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
Outline of main policies and plans aimed at development of trademark information activities and expected time frames for their realization
IP Government Open Data - On 7 October IP Australia launched the Intellectual Property Government Open Data (IPGOD) on www.data.gov.au. This data provides a comprehensive, flexible and reliable data set back to the early 1900s and includes all inventions, brands, designs and plant breeder's rights filed in Australia up to 31 December 2013, providing more than 350 million data points, matching IP rights to firm ABNs.
New projects launched or resumed this year in the context of the policies and plans mentioned above, short description: aims, partners, tasks
Main areas of trademark information activities and related information and communication technology (ICT) practices which were in the focus of attention last year
The RIO programme is a body of work currently being undertaken by IP Australia in an effort to build a system to manage workflow and IP right cases based on user centered design methodology. The RIO programme will see IPA harmonise its IP Rights through process reengineering, simplification of technology and processes and legislative requirements.
IP Australia is updating the outgoing correspondence systems and format for trade marks-related correspondence. The correspondence has been redesigned and is gradually being transitioned from paper to electronic channels. This means that customers who are registered with IP Australia will be able to receive their correspondence electronically, giving them fast and flexible access to notices and reports regarding their trade mark/s.
Back-capture of trade marks paper case files occurred during 2014. This involved scanning a large number of paper case files in order populate the trade marks electronic document management system with documents from the oldest trade mark case files. All live trade mark examination and application documents can now be accessed electronically from within the office, with the goal to eventually allow an application dossier in electronic form available to the public.
Statistics: changes in terms of application filings and registrations with respect to previous year; trends or areas experiencing rapid changes
Changes experienced in terms of application filings and registrations with respect to the previous year
(Please Note: AU provides for multi-class filings. Figures below are in classes)
Total TM Classes Filed
2013: 114,088
2014: 115,612
Percentage difference: TM applications increased by 1.3%
Madrid Applications Filed
2013: 24,830
2014: 23,552
Percentage difference: Madrid applications decreased by 5.1%
Total Registrations
2013: 87,626
2014: 79,336
Percentage difference: Registrations in classes decreased by 9.5%
Other matters and useful links (URLs): annual report of the Office, news page, statistics, etc.
Statistics
http://www.ipaustralia.gov.au/about-us/what-we-do/ip-statistics/
Annual Report
http://www.industry.gov.au/AboutUs/CorporatePublications/AnnualReports/Pages/default.aspx
(Refer part B for information on IP Australia)
Latest news
Latest news is featured on the home page of IP Australia's website:
http://www.ipaustralia.gov.au/
Trade Marks Search System
http://pericles.ipaustralia.gov.au/atmoss/falcon.application_start
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
Planning, administration, automation, security
IP Australia’s Contact Centre provides a central contact for customers to obtain information about a wide range of Intellectual Property issues. Customers contact the Call Centre via telephone, and online enquiry form with around 95% of matters of a general nature solved at the first point of contact.
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 94% 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.
URLs of web pages of the Office's website for electronic filing of trademark applications
Filing:
http://www.ipaustralia.gov.au/get-the-right-ip/eservices/
and
http://www.ipaustralia.gov.au/get-the-right-ip/eservices/
URLs of web pages of the Office’s website that provide information on business procedures such as: filing, publication, examination and registration procedures related to trademarks; opposition and appeal procedures related to trademarks; etc.
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:
URLs of web pages of the Office’s website that provide a description of information products and services offered by the Office (e.g., trademark search service(s) and trademark databases), as well as information on how to access and utilize them
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/
Availability of the application dossier in electronic form
As at 2014 IP Australia does not provide the application dossier in an electronic form.
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
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.
Obligation for applicants to use pre-defined terms of the classification applied
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.
Matters concerning processing of different types of non-traditional marks (e.g., three-dimensional, motion, hologram, color mark, etc.)
Other activities
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 Infiniti a document generation tool.
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 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/
Information products (coverage, medium, etc.) available to examiners, including external documentation and databases
Mass storage media and microforms used
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.
Word processing and office automation
Current standard desktop software includes Microsoft Windows 7 with Microsoft Office 2010. The Office uses a document generation tool to generate much of its outgoing correspondence including notices and examination reports.
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.
Techniques used for the generation of trademark information (printing, recording, photocomposing, etc.)
Bibliographic data (ADABAS as XEROX XICS output) and images from Unix are merged for Journal production.
Bibliographic data and processing
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.
Information products (coverage, medium, etc.) and services available to external users; conditions of access (e.g., free of charge, subscription, etc.)
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.
ATMOSS is free of charge and is not subscription based.
Legal status information (kind of information, coverage, medium, etc.)
See "In House Systems" and above.
Other sources
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
TRACS –TRACS is an electronic document management and basic workflow system which manages the trade marks related documents and workflow for examiners, administrative staff and hearing officers.
ATMOSS - The ATMOSS database allows users to search for similar trade marks and provides the most important details of trade marks. The search results include words, images, owner details and goods and services claimed. It is available to the public and free to use.
Hardware used to supporting business processes of the Office
In-house systems (online/offline)
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.
External databases
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.
Equipment used (hardware, including the types of terminal and network used, and software), carriers used
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.
The current SOE includes Windows 7 with Office 2010 Professional Plus, IE 9.0 and Microsoft Outlook
Internal databases: coverage, updates, interlinks with external sources
The primary business system is the ADABAS Natural mainframe application. TRACS - the Trade mark Records, Applications and Correspondence System, TMARK, running on IBM zOS. 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.
Establishment and maintenance of electronic search file: file building, updating, storage, documents from other offices included in the search file
File building
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.
Updating
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.
Storage, including mass storage media
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)
See "In-house Systems", "Internal Databases" and "Information products…"
Other matters
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.
Information services available to the public (including computerized services and search files contained in libraries remote from your Office and trademark information posted by your Office on the World Wide Web)
Information services are available on the IP Australia website - http://www.ipaustralia.gov.au/
Publications related to different business procedures and trademark information sources available to users, for example, books, brochures, Internet publications, etc.
IP Australia provides lots of useful links and topics on a wide range of business procedures and Trade Mark information external to IPA through navigation of our website.
http://www.ipaustralia.gov.au/
Cooperation with universities, technology and innovation support centers, etc.
Education and training: training courses, e-learning modules (URLs), seminars, exhibitions, etc.
Exporters
Our partnership with the Export Council of Australia is designed to equip our stakeholders and customers with the tools and information they need when trading, or preparing to trade overseas to ensure they’re protecting their ideas, inventions, services or products.
Accountants:
IP Australia has teamed up with CPA Australia, an accounting body with more than 150 000 members, to deliver a long-term, tailored information campaign to help accountants understand the benefits of identifying and protecting IP assets. With an increased understanding of IP and its role in building business value, accountants will be better equipped to ensure their client’s IP is properly recognised, protected and managed.
Engineers:
IP Australia has been engaged with Engineers Australia since 2014 to promote IP messages to its members via a range of channels. With more than 100 000 members embracing all disciplines of engineering, Engineers Australia is the largest and most diverse professional body for engineers in Australia.
SMEs:
A pilot program, IP for Start-ups, was run in March 2015 to help start-ups and small business understand the basics of IP before starting a business. Focussing on patents and trade marks, ten sessions were hosted around Australia. Future program enhancements will include refinements to the content, industry specific case studies and a workshop for creative business.
Vocational Education and Training (VET)
Future managers and leaders look set to be more IP-savvy following IP Australia’s successful bid to have IP included in core units in a new Diploma of Leadership and Management in the Vocational Education and Training (VET) sector.
Universities
IP Australia delivers an annual presentation to students enrolled in the WIPO-Queensland University of Technology Master of Laws in Intellectual Property.
Stakeholder engagement
Different types of engagement currently occur across the agency and include formal consultation activity required as part of regulatory or procedural reviews, structured activities such as the IP Forum and the Executive Visits Program and more informal engagement by staff attending conferences and trade shows and giving presentations.
IP Stakeholders Forum (IPSHF)
This is the principal forum for consultation, discussion and information exchange on IP matters with the attorney profession and industry.
IP Forum (IPF)
The IPF is a bi-annual event which draws together attendees from industry, academia, and government to discuss and share information on IP issues of strategic importance.
Executive Visits Program (EVP)
The EVP was established to provide engagement opportunities between IP Australia’s executive and senior representatives from industry associations and private enterprise IP rights filers. By engaging proactively with these stakeholders, through IP Australia initiated consultations, the agency can demonstrate its commitment to seek out views and opinions on IP matters of strategic importance.
Indigenous Stakeholder Engagement
IP Australia continues to promote Dream Shield, a suite of information that helps to raise Aboriginal and Torres Strait Islander business owners’ awareness and understanding of IP. In 2014-15, IP Australia delivered a series of IP Master-classes in collaboration with National Museum of Australia’s Warakurna travelling indigenous Art Expo.
State -based Events
State-based events targeted a diverse range of business and industry sectors including SMEs, students, researchers and exporters.
Other activities
eServices and B2B
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 90,000 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 transacting with us via B2B however do not use the B2B system for all IP right submissions.
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.
Electronic Correspondence
In September 2014, IP Australia introduced electronic patent correspondence for eServices and B2B customers. This major release represented a first for the agency and assisted us to further streamline our processes and reduce our reliance on physical resources such as paper. We are currently working hard on our capability to deliver Trade Marks and Designs correspondence electronically and we anticipate the initial staged delivery of electronic Trade Mark correspondence will be introduced by late September 2015. Designs electronic correspondence will then follow in early 2016.
IRPI Functionality
IRPI is now available through IP Australia’s eServices portal and will replace the current option, which is located within the General eServices request form. After logging in to eServices and selecting the option to file ‘Application for International Registration (Madrid Protocol)’, you will be taken to the IRPI eForm hosted by WIPO.
You can track the progress of the application and provide responses though the IRPI eForm. At this stage IRPI will only be used for new international registration applications (Madrid Protocol).
Fee calculator hosted by IP Australia website is static and does not reflect current conversion rate. IRPI system fee calculator is live.
VI. INTERNATIONAL COOPERATION ACTIVITIES IN THE FIELD OF TRADEMARK INFORMATION
International exchange of trademark information in machine-readable form (e.g., Official Gazettes)
International or regional cooperation in the exchange of trademark information, e.g., in the form of official gazettes
Largely restricted to the Official Journal which is available to all users on-line.
Exchange of machine-readable information
SGML/XML (MECA) exchange between IP Australia and the International Bureau.
Participation in international or regional activities and projects related to trademark information
IP Australia presented at the following seminars and workshops in 2014
- Delivery of GI training (Singapore May 2014). This workshop aimed to assist Singapore with the implementation of a national system for the protection of Geographical indications.
- 28th Annual Intellectual Property Society of Australia and New Zealand (IPSANZ) Conference (September 2014). IPSANZ is an independent society whose principal object is to provide a forum for the dissemination of information and discussions about IP issues among a wide range of stakeholder groups.
- WIPO National Workshop on the Financial and Human Resource Management of an IP Office (November 2014), the objectives of the workshop were to provide the designated staff of the Ministry of Science and Technology in Myanmar on financial and human resource aspects of managing an IP office.
- WIPO National Workshop on Trademark Filing and Registration Management (November 2014). This activity sought to assist the Government of Myanmar to finalise new trade mark legislation and plan for its implementation.
- IP Statistics for Decision Makers (Tokyo, November 2014), this annual event is the peak conference on the use of data, statistics and economic evidence in IP policy.
- Training of ASEAN Trademark Examiners and Legal Officers on Madrid Protocol Phase II (December 2014). This activity aimed to assist ASEAN nations with their implementation of the Madrid Protocol.
- OECD conference on Entrepreneurship, Innovation and Enterprise Dynamics and Working Party on industry Analysis (December 2014). IP Australia was invited to present its work on the IP Government Open Data project and related economic work.
Assistance to developing countries
Through the WIPO Funds-in-Trust theme of developing the IP system, IP Australia has supported the following activities in 2014:
- Study visit in support of accession to the Madrid System (for Cambodia, Indonesia, Laos to IPONZ) (February 2014)
- Study visit of Trademark and Patent Examiners from IPOPNG to IP-Australia (February/March 2104)
- Sub-regional Workshop on Copyright, Creativity and Development for Decision Makers of South Pacific Countries (march 2104)
- National Training on Successful Technology Licensing (STL) (Philippines) (May 2104)
- National Training on Successful Technology Licensing (Indonesia) (June 2014)
- Training Program on Financial and Human Resource Management of a National IP Office (Myanmar) (November 2014)
- Training Program on Trademark Filing and Registration Management (Myanmar) (November 2014)
- WIPO / FIT Australia National Training Program on Advanced Successful Technology Licensing (STL) (Philippines) (September 2014)
- WIPO / FIT Australia National Workshop on Successful Technology Licensing (STL) (Vietnam) (December 2014)
- Development of national IP Strategies – Cook Islands, Solomon Islands, Vanuatu, Tonga
Other activities
VII. OTHER RELATED MATTERS
URLs of web pages of the Office’s website that:
Provide information on legislation related to trademarks
Trade Marks Act: http://www.timebase.com.au/IPAust/index.cfm?id=tmact
Trade Marks Regulations: http://www.timebase.com.au/IPAust/index.cfm?id=tmreg
Intellectual Property Laws Amendment (Raising the Bar) Act 2012
http://www.comlaw.gov.au/Details/C2012A00035
Contain the Annual Report of the Office
Annual Report
http://www.industry.gov.au/AboutUs/CorporatePublications/AnnualReports/Pages/default.aspx
(Refer part B for information on IP Australia)
Contain trademark-related news regarding the Office
Latest news:
Latest news is featured on the home page of IP Australia's website:
http://www.ipaustralia.gov.au/
Subscription-based mailing lists
http://www.ipaustralia.gov.au/about-us/news-and-media/