Examination of Australian applications under the Madrid Protocol: formalities

In word of warning to our foreign clients, Watermark has become aware that IP Australia is issuing provisional refusals against International Registrations Designating Australia (‘IRDAs’) which raise grounds of rejection that are not in fact applicable to IRDAs.

Under Australian legislation, IRDAs are examined under different regulations compared with standard (i.e. national) applications. For example, only certain formality objections can be raised against an IRDA, including where:

  • the International Bureau has identified a term as being too vague for the purposes of classification, incomprehensible, or linguistically incorrect;
  • the Holder of an IRDA has used the expression ‘all goods’, ‘all services’, ‘all other goods’ or ‘all other services’ to specify the goods or services; or
  • the trade mark includes non-English words, and no translation has been provided.

However, Australian examiners have issued provisional refusals against IRDAs citing grounds of refusal that do not apply to IRDAs, such as where:

  • the Australian examiner considers that a certain term in the description of goods/services is too vague for the purpose of classification, although the International Bureau has not raised a corresponding objection; or
  • the application does not comply with Regulation 4.3, which requires (among other matters) that all features of a shape mark be depicted in the view(s) provided.

Neither of the above formality objections should be raised against an IRDA, and strictly speaking such objections should be withdrawn if they have been erroneously raised.

Watermark attorneys have been in contact with IP Australia to raise concerns regarding this issue, and we understand that the matter is being given official attention.

In the meantime, we encourage our clients to contact us upon receipt of any provisional refusal from IP Australia, so that we may advise whether the grounds for rejection have been properly raised.