Watermark

On 9 November 2007, IP Australia and IPONZ, the government bodies responsible for patents, trade marks and designs in Australia and NZ respectively, published a brief report in relation to the outcomes of stage 1 of their joint project to align trade mark examination practices in Australia and New Zealand.

Stage 1 involved a comparison of 200 applications examined during 2005 in Australia and NZ, for similarities and differences in outcomes. The comparison revealed that 75.3% of examination outcomes were the same in both countries. In a further 21.5% of cases, it was determined that the same outcome could have been achieved if discussion had taken place between the two Offices during examination. In 5% of cases the different outcomes were attributable to either legislative or classification differences between Australia and NZ.

A number of practice differences that emerged during stage 1 have now been aligned, including the practices of IP Australia and IPONZ in the examination of slogan marks, the use of NICE class headings in specifications, and practices in relation to restricting goods to accord with any descriptive element in a mark.

Additional work is currently being undertaken to further align examination practices, including in relation to the use of letters of consent to overcome citations, alignment of cross-class searching, and the development of a common A-Z practice guide.

Work has now progressed to stage 2, which will involve the concurrent examination of 300 applications, completion of a paper considering common examination considerations, and the establishment of a permanent consultation process between IP Australia and IPONZ. Stage 2 is expected to be completed by April 2008.

Watermark's trade mark attorneys are presently able to file and prosecute trade mark applications in both Australia and NZ, and the outcomes of the joint examination project presently underway are expected to make it easier for trade mark owners to protect their marks in both Australia and New Zealand.