IP Australia - TM Office - Change of Practice & Procedure Notice

IPRoo - Australian IP News: International TM Registration - Application for International Registration Governed by the Madrid Protocol designating Australia

On 22 April 2008 IP Australia released an Official Notice detailing changes to the practice and procedure in relation to Provisional Refusals and limitations of International
Registrations Designating Australia (IRDAs).

The notice explains the practice in relation to Provisional Refusals and limitations of International Registrations Designating Australia (IRDAs).

As a result of the examination or hearings process a provisional refusal may raise matters which can be overcome by a limitation to the goods or services. Previously, IP Australia required the holder to request these changes as limitations through the International
Bureau of WIPO. Requests for limitation of goods and services which are the subject of a provisional refusal may now be sent directly to IP Australia for consideration and processing, providing they allow the IRDA to proceed.

The new practice allows a holder, who receives a provisional refusal, to agree to limit the goods and services, and IP Australia will apply the limitation, so long as it would allow the IRDA to proceed. This may only happen through an address for service in Australia.
Additionally, examiners, after consideration of a holder’s response to a provisional refusal based on examination, may propose another way to limit the goods or services for which an IRDA could be accepted. Following direct confirmation from the holder’s address for service in Australia, the examiner will then accept the IRDA for those agreed goods and services. In due course, IP Australia will notify the IB of the goods and
services for which protection has been granted.

In matters of provisional refusal based on opposition, in the course of proceedings including hearings, the holder may agree to limit the goods or services, and this may now be handled directly by IP Australia. The Office will process…


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