Annual Technical Report on Trademark Information Activities in 2022 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. Current and recent economic shocks post-COVID, resulted in a decline in trademark applications. 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 being developed to search Madrid Goods and Services data more effectively. This search tool has enabled 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 and improve service offerings for our customers. 

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 Checker is an AI-assisted free trade mark registrability tool being developed. Released into pilot in September 2022, 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. TM Checker continues to be developed in 2023.  

Customer Value Program (CVP): The 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 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: 

• A modern, practical and informative corporate website  

• A modern, effective correspondence and notification platform   

• Streamlined and efficient processes and services for customers  

• 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 fell 11%. Trade mark registrations fell 1%, driven by a 5% decrease in resident filings. Further details will be found in IP Australia’s IP Report 2023, due for release 26 April 2023. 

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

Statistics: https://www.ipaustralia.gov.au/About-us/ip-australia-overview/our-research 

Annual Report 2022: https://www.ipaustralia.gov.au/tools-and-research/professional-resources/data-research-and-reports/australian-ip-report-2022 

Annual Report 2023 (release date 26 April 2023): https://www.ipaustralia.gov.au/tools-and-research/professional-resources/data-research-and-reports 

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

Trade marks Search System: 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/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 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/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

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 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 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 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 Official Journal of trade marks is available on-line, free of charge, via the IP Australia web site (https://www.ipaustralia.gov.au/trade-marks) 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/tools-and-research/Professional-resources/bulk-data-requests 

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) 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 supporting 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. 

Remote Access:  IP Australia continues to support remote work post pandemic, with a mix of office and remote work and flexible working arrangements. 

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/  

Cooperation with universities, technology and innovation support centers, 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 our target audience of start-ups and small to medium enterprises.  

We have identified and are targeting our engagement activities into the following groups: 

• Government departments and agencies – Commonwealth and State based programs that engage with our target audience. Often utilising a Business Advisor network. 
• Universities – early career researchers, undergraduate and industry collaborations 
• 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 – we provide webinars and resources designed for self-service on our website and promoted through social media and newsletters, aimed at the end-user/self-filer. 
• Indigenous – we have 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 

We engage 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: Using a human centred design approach, the new IP Australia website was launched late 2022 following customer feedback on the beta website launched earlier that year. The Digital Services Team is leading a continuous improvement program, listening to customers as they tell us what is working and where we can improve, as we undertake a further six months of continuous improvement to refine the website in response to customer feedback. 

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/small-and-medium-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

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 

The IP-Australia led ASEAN-Australia-New Zealand Free Trade Area (‘AANZFTA’) Enhancement of Trade Mark Quality Management Project has continued into Phase 3 scheduled to be delivered from July 2022 to July 2023. 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 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 which will continue to be delivered until April 2023. 

Assistance to developing countries

No comment provided. 

Other activities

No further information provided. 

VII. OTHER RELATED MATTERS

No further information provided.