In January 2019, IP Australia released a draft of proposed amendments to the Trade Marks Regulations 1995 for public consultation. The changes are designed to enable overseas businesses using the Madrid Protocol system to divide any Australian designations of International applications, the same way that national applications can currently be divided.
The proposed changes contain:
- (1) regulations allowing for ‘divisional applications’ of International Registrations Designating Australia; and
- minor changes that clarify existing regulations in relation to the protection of international trademarks.
Division of IRDAs
Currently the applicant of a national Australian trademark application, is able to divide the application into two or more applications, should they chose to do so. For instance, if you file a trademark application covering three classes, and the trademark is acceptable for registration in respect of two of the classes but has hit a problem in one of the classes, then the applicant can divide the application so the two accepted classes proceed to registration, and the one ‘problem’ class is dealt with separately. At present, an applicant that files an International Registration Designating Australia (IRDA) through the WIPO/Madrid system, is not able to divide the IRDA in the same way.
The proposed amendments to the regulations would allow those who have filed for an IRDA to divide a pending application in much the same way as applicants of locally filed Australian applications can divide their application.
As indicated above, a divisional application essentially splits an initial (‘parent’) trademark application into two separate applications. The benefit of a divisional application over re-filing, or filing a subsequent designation, is that a successful divisional application retains the same priority date as the parent application (i.e. the date on which the parent application was filed), regardless of when the divisional application was filed.
The proposed process for dividing a pending IRDA application lodged with WIPO is:
- a holder of the pending IRDA applies to IP Australia to divide its application and pays the relevant IP Australia fees;
- IP Australia checks that the request for division is acceptable and complies with Australia’s national IP laws;
- if the divisional application does not meet requirements, the applicant is given time to address any issues;
- if the divisional application is acceptable, IP Australia passes the request to WIPO;
- the applicant will then be required to pay the relevant WIPO fees; and
- WIPO will process and create the divisional IRDA and notify IP Australia of the same.
Once the divisional IRDA is created by WIPO, the application
will go through the same process as any other application and will
be examined by IP Australia.
The benefit of the proposed changes is that applicants of International filing would have the same options available to them as applicants of national filings. International applicants would have the ability to obtain a registration of their trademark in respect of uncontested goods and services without delay, without having to delete the objected goods and services entirely, and without either the parent or the divisional applications losing their priority date, something which can be most valuable to a business.
Other proposed amendments
The proposed draft regulations also include other minor and technical amendments, such as in relation to the ability to correct an error of reference and to make the Trade Marks Regulations clearer and more compliant with current practices.
Timings to note
Submissions in relation to the draft regulations can be submitted until 1 March 2019. The draft regulations are proposed to be introduced sometime in 2019. If the proposed changes are accepted, applicants of IRDAs would be able to file applications for divisional IRDAs 6 months after the regulations are registered.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.