2024 appears to be a year of change in the Australian Intellectual Property realm, with the adoption by IP Australia of the Madrid Goods and Services List and the introduction of the Intellectual Property Laws Amendment (Regulator Performance) Act 2023.

Here’s a concise summary of the key updates to Australian IP law for 2024:

1. Adoption of the Madrid Goods and Services List (MGS List):

In March 2024, IP Australia will transition from the current Trade Marks Goods and Services List to the MGS List. This change aligns Australia’s classification with international standards set by the World Intellectual Property Organization (WIPO).

The new list requires more specific classifications for trade mark registrations. For instance, ‘Wholesale Services’ will now need specific listing of goods, necessitating more precise applications to cover all relevant goods and services.

This adjustment will simplify the process for Australian exporters to protect their trade marks internationally, thanks to consistent goods descriptions with the MGS List.

2. Intellectual Property Laws Amendment (Regulator Performance) Act 2023:

The Intellectual Property Laws Amendment (Regulator Performance) Act 2023 received the Royal Assent on 17 November 2023. Several of the amendments in the Act have now commenced, while others will commence on 17 May 2024.

The Act amends 3 pieces of intellectual property legislation: Olympic Insignia Protection Act 1987, Trade Marks Act 1995, and the Patents Act 1990. These amendments refine and enhance the legal processes associated with trade mark and patent administration, and the protection of the Olympic insignia.

The Act is divided into the following 6 parts: 

Part 1 – Trade marks that contain, or consist of, Olympic motto etc.

Part 1 of the Act clarifies that only the Australian Olympic Committee (AOC) and the International Olympic Committee (IOC) are authorised to register Olympic insignia as trade marks in Australia.

The amendments reinforce the government’s authority to reject trade mark applications not filed by the AOC or IOC, enhancing the protection of the Olympic brand.

Part 2 – Renewal of registration

Aligns minor inconsistencies contained within trade mark renewal grace period conditions. While registrations generally have a renewal grace period of six months, the legislation used to provide a 10-month grace period for trade mark applications that are pending beyond 10 years. With the amendment, the relevant grace period payments were aligned to a consistent six-month duration.

Part 3 – Revocation of registration

Requires that the registration of a trade mark be revoked in circumstances where a component of a notice of opposition to registration of the trade mark by a third party was overlooked by IP Australia during the registration process.

Part 4 – Restoration of trade marks to the Register

Part 4 of the Act allows, in certain circumstances, for a trade mark registration to be restored onto the Trade Marks Register when it had been removed as part of a non-use action. It permits restoration of a removed trade mark where an extension of time is granted to file evidence in support of an opposition to trade mark removal. This means an owner can continue to defend their registration if they miss a due date but are eligible for an extension of time.

Part 5 – Official Journal etc.

This section removes direct references to the Official Journal of Trade Marks, allowing the government to adapt the format used to communicate trade mark decisions to changing technologies and customer behaviour. This amendment reflects a commitment to staying agile and responsive in the digital age.

Part 6 – Spent provisions

Repeals the transitional and savings provisions in the Patents Act 1990 that have had no effect since February 2022. This proposal is procedural in nature with no impact on the administration of Australia’s patent system.

Corresponding changes to regulations

Amendments to the Trade Mark Regulations and Patents Regulations are expected to take place to support the changes made in the Act. The corresponding Intellectual Property Laws Amendment (Regulator Performance) Regulations are anticipated to be in place by 17 May 2024.

The dual role of trade marks – the Full Court has its say in Halal Certification Authority v Flujo Sanguineo Holdings:

Key Points:

The Full Federal Court clarified what constitutes trade mark use in Halal Certification Authority v Flujo Sanguineo Holdings.

Use of a sign may be both descriptive and indicative of origin, qualifying as trade mark use.

Businesses should carefully consider the implications of third-party signs or branding to avoid trade mark disputes.