Annual Technical Report on Trademark Information Activities in 2021 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:

• Link to pages with information in English, Spanish, or French
• The URL will remain stable over time (at least three years, preferably more)
• Goes to the specific information requested, not to a general homepage
• If the URL goes to a long PDF document such as an annual report, please indicate which sections or pages contain relevant information.
• Provide additional instructions for using the URL if needed. For instance, if the page requires the user to login first, or if the requested information requires selecting certain options or filters on the page that can not be included in the URL. 

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 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. The world watched the disruptions of COVID-19 affect daily life, travel, business and health, however the crisis brought forward challenges to adapt the way we live and work. IP rights facilitate creativity, innovation and diffusion of ideas, and in 2021 record numbers of patents, trade marks and designs were filed in Australia (see IP Report). IP Australia has continued to provide excellent service to our customers, while focusing on critical activities that transform service delivery for the benefit of the IP Rights ecosystem. 

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

Cognitive Futures - IP Australia has collaborated broadly with several international IP Offices on various aspects of the implementation of cognitive computing applications in the IP ecosystem.  IP Australia has participated in the WIPO conversations on Intellectual property and Artificial Intelligence, with these meetings bringing together various agencies and stakeholders to discuss the policy and technical impact of AI on Intellectual Property in the future. 

The Trade Mark International Classification Search (TMICS) is a semantic search tool developed to search Madrid Goods and Services data more effectively. This search tool will enable IP Australia to analyse the similarities and differences between the Australian picklist and the Madrid Goods and Services database. Semantic search functionality is an important part of our goal to more closely align with international practice. 

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 and efficiency in register searching by automatically finding and extracting relevant trade marks for consideration by an examiner. The assisted searching function is being built in-house utilising a combination of examiner knowledge, search APIs and machine learning. 

TM Embed is an AI-assisted free trade mark availability check being developed to embed in willing third party must-use business services and platforms (such as e-commerce platforms, domain registries, business accounting, legal services, etc.). The intent 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 that is right for them. This is currently a pilot activity. 

Customer Value Program (CVP): The new CVP program 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 will drive 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: 

• A modern, practical and informative corporate website  

• A modern, effective correspondence and notification platform   

• Streamlined and efficient processes and services for customers  

• New operating model for customer experience 

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

The Transactional Digital Services (TDS) program has resulted in large-scale digital transformation of our customer facing transactional platforms, making applying for and managing IP Rights easier for domestic and international customers.  This program is discussed in more detail later in this report. 

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 grew 9%. Trade mark registrations rose 10%, driven by a 15% increase in resident filings. See IP Australia’s IP Report 2022. 

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 (IP Report): https://www.ipaustralia.gov.au/files/ip-report-2022  

Latest news: Latest news is featured on the home page of IP Australia's website:  http://www.ipaustralia.gov.au/  

Australian Trade Mark Search:  https://search.ipaustralia.gov.au/trademarks/search/quick 

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=  

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/ 

Availability of the application dossier in electronic form

Australian Trade Mark Search: https://search.ipaustralia.gov.au/trademarks/search/quick 

Matters concerning classifying

a. 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

b. 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 (2022 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). Approximately 50% 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 made.

Other activities

No comment made.

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 Official Journal of Trade Marks 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: 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.

Journals dated from 08 June 2021 to 03 December 2021 are a PDF version of the Australian Official Journal of Trade Marks as previously provided online via Australian Trade Marks Search (ATMS) and can be accessed via: 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 bibliographic 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 (Replacing eServices) is a 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 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. 

Hardware used to supporting business processes of the Office

IP Australia uses commercial laptops with Windows 10 Operating system and MS365 office productivity tools. Migration to Windows 11 if planned in the near future. 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. 

Working from home 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, IP Australia 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 Rights In One (RIO) which runs in an environment which is being migrated to the cloud. 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 made.

Other matters

No comment made. 

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. 

IP Australia’s internal library service does not manage IP rights data that are used for search and examination purpose. The library service does provide a curation of IP Australia’s historical publications, documents and ephemera including digitising this material to make it easily accessible to the organisation and the wider community.

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. 

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

IP Australia works with universities, government agencies and industry bodies to uplift capability in the understanding and application of intellectual property rights, from knowledge creation to commercialisation. We have worked with a broad cross section of universities, from accelerator programs developed for Indigenous business owners through to post-graduate researchers in various disciplines. We can customise content and provide subject matter experts.  

IP Australia provides a contemporary website with rich digital content including on-demand webinars, video case studies, written case studies, an Education and Resources page to help users navigate information on the website and direct them to relevant resources depending on their particular interest.   

Social media has emerged as a key channel, a focus on this throughout 2021-2022 has seen significant increase in engagement and an uplift in trust and credibility demonstrated by the richer level of comment and queries received through social channels. This year we launched on Instagram and found high levels of engagement with an average of 2000 views per reel (video). This is much higher than other channels. 

We continue to partner with peak bodies, leveraging their networks to reach a broader audience – particularly for Exporters, Small to Medium Sized Enterprises (SMEs) and indigenous business. 

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. 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 and is available to ensure education resources are contemporary and relevant. 

For Indigenous business, IP Australia has developed customised products and an Indigenous Knowledge IP Hub – specifically designed to provide information to Aboriginal and Torres Strait Island business owners, and any other business that wants to engage with Indigenous Knowledge in their business – including guidance on how to navigate sensitivities and work respectfully. We have launched ‘Yarnline’ a call back enquiry service for Indigenous business owners, and those who wish to engage with Indigenous knowledge in their business. We have trained examiners, some Indigenous, some non- Indigenous, to engage appropriately with this key audience. 

Instagram has emerged as an effective channel in reaching indigenous business communities in urban, rural and remote areas. By partnering with Aboriginal Arts foundations, other government agencies and university programs, IP Australia leverages networks to share the content that is available via multimedia (videos and animations) and fact sheets etc. 

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

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’ program has been piloted with outstanding results. The program has demonstrably uplifted capability and confidence for business facilitators within AusIndustry’s Entrepreneurs Program, with excellent feedback from the business facilitators and their clients alike.  

Ongoing evaluation will provide qualitative and quantitative data. The program will be rolled out across more teams in the Entrepreneurs Program and will also be made available to other partners by the end of 2022 calendar year, and be available as on-demand product. 

Information is delivered through a variety of channels to meet the needs of diverse audiences, this includes information sessions (virtual and face to face), on demand webinars, case studies and working collaboratively to develop web content and links. Much engagement has come by way of referral, reflecting an appetite for IP information across sectors and channels. Demand for virtual (VC) information sessions is strong and sustained. 

The Education and Resources page helps users navigate the website and find the information they are looking for quickly and easily. A new website is under development and will provide an even more streamlined user experience. 

’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. 

Other activities

No comment made.

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

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

MyIPO Examination Guidelines  

Australia recently assisted the Malaysian Intellectual Property Office (“MyIPO”) to develop a new set of guidelines for trade mark examination. These guidelines provide guidance with examples of three key areas of examination: distinctiveness, non-traditional marks and conflicts with earlier registered marks. 

AANZFTA TM Quality Project 

IP Australia has participated in the ASEAN-Australia-New Zealand Free Trade Area (‘AANZFTA’) Enhancement of Trade Mark Quality Management Project. This is a capacity building project for ASEAN IP offices looking to develop and enhance quality management systems for trade mark examination. The project commenced in 2021, consisting of virtual workshops hosted by IP Australia sharing experiences of various IP offices in applying quality concepts and principles relating to trade mark examination. 

IP Australia is also currently developing the next phase of this project, expected to be delivered by July 2023. 

Assistance to developing countries

WIPO Funds-in-Trust 

IP Australia provides assistance to developing countries through WIPO Funds-In-Trust (FIT). Due to the global COVID-19 pandemic and related travel restrictions, some activities under FIT 3 were cancelled and the program was extended to December 2021. Funds for cancelled activities were pivoted and where possible activities were delivered virtually. The FIT 3 program is now complete and successfully achieved a 78% spend of available funds during a global pandemic. 

Other activities

No comment made.

VII. OTHER RELATED MATTERS

No comment made.