Hola Amigos! – IP Australia harmonises with the International Classification of Goods and Services
By Samantha Ludemann | Associate
In March 2024 IP Australia replaced their old Goods and Services list (the AU picklist) with the Madrid Goods and Services (MGS) list.
Fewer specification issues in Madrid Protocol applications and foreign country applications
The MGS list is the classification tool that is used by the World Intellectual Property Office (WIPO) to classify goods and services in international applications under the Madrid Protocol.
Every year since 2012, over a third of all Madrid Protocol applications from all member states have been classified as irregular1, meaning they require further communication from WIPO. With IP Australia now using the same classification system as WIPO, fewer specification irregularities should be issued by WIPO for international applications based on Australian trade marks.
The MGS list is also the goods and services classification tool used by various other international trade mark offices. Because of this, the specifications that are now accepted in Australia under the MGS list are better aligned with international standards of specification examination used by other international trade mark offices.
Further clarification required of goods and services previously accepted by IP Australia
Although adopting the MGS list expands the options of goods and services previously offered by the IP Australia picklist, the MGS requires further clarification of some specifications previously accepted by IP Australia. This includes services previously classified by IP Australia as retail services in class 35.
Indeed, using the MGS list means applicants in Australia will now have to further clarify this term and specify the goods for which they are seeking to provide retail services, for example retail services in relation to sports equipment and sporting articles.
This will necessitate more specifically worded and detailed specifications Applicants in Australia may need to spend more time identifying the specific goods and services for which they seek protection, and which are now not broadly accepted by IP Australia.
To help applicants with this, IP Australia have introduced a semantic search function to their classification tool. This function will return results that contain your search terms and terms which the search tool identifies as being ‘conceptually similar’. Using the sport example above, when searching for retail services for sport under the semantic function, the tool will return anything it sees as conceptually similar to this, including, for example: retail services relating to sports bags; retail services in relation to games; retail services for footwear.
This tool can help applicants to be sure that they have included all relevant goods and services in their specification.
If you are needing help identifying goods and services for your specification, the team at XVII Degrees can assist you in coming up with a specification that is both accepted under the MGS list and that covers the goods and services that you or your company provide.
