Trans-Tasman harmonisation project

IP Australia (IPA) and IPONZ (“the Offices”) have agreed to undertake a trial to recognise, where appropriate, the previous examination decisions made by each office, not only to further align and enhance the quality and consistency of trade mark examination, but also to assess the feasibility of a future model of mutual recognition in examination between the New Zealand and Australian IP Offices. This trial will commence on 1 February 2010.

Background

The trial is part of an ongoing initiative for increased harmonisation in trade mark examination outcomes between New Zealand and Australia.

The first stage of the project commenced in May 2006, involving both a comparison of trade mark law and practice across the Offices and a retrospective comparison of 200 applications filed in both countries. Stage one of the project resulted in the alignment of several examination practices and a retrospective examination comparison confirmed that trade mark examination systems are reasonably aligned on a majority of issues, with 73.5% of examination of outcomes being the same, which would have increased to 95% had discussion between the Offices occurred at the time.

Based on the strong outcomes achieved in the initial phase of the project a concurrent examination of 159 applications was undertaken. Concurrent examination included examiners of both offices communicating with each other in relation to examination outcomes, and where examination outcomes differed, the examiners attempted to reach a common consensus where the respective office’s legislation and practices permitted. The differences in examination outcomes, due to difference of practice or opinion, reduced dramatically from 21% in Stage 1 to 8% in stage 2. Furthermore, a consultancy report supported the view that recognition of prior examinations of one office by the other (and vice versa), would be an effective way of bringing about consistent examination outcomes.

Stage 3 trial

In light of connectivity, both in terms of examination practices and the alignment of examination outcomes to date, it is logical that clients seeking a trade mark in both Australia and New Zealand should generally speaking receive the same examination outcome. Harmonisation of examination outcomes, where practical and possible, also makes sense against the backdrop of ever-strengthening economic relations between the two countries and broader objective of both governments to advance a single economic market (SEM). Connectivity in the business environment is apparent by the fact that Australia is the second largest source of trade mark applications made in New Zealand by foreign owners, and New Zealand is the fourth largest source of trade mark applications filed in Australia by foreign owners (based on 09-10 filings data).

Trial objectives

Stage 3 of the project has now been set in motion, where each office will seek to recognise the trade mark examination by the other, where appropriate. Trial objectives therefore include the alignment of the following: examination decision-making (within the ambit of respective legislative regimes), mutually acceptable quality assurance standards and audit processes, and operational practices.

Commencement of the trial

To achieve the trial objectives, IPONZ and IPA are undertaking a pilot, commencing on 1 February 2010, under which each office will recognise prior examination decisions made in the other office (where this is possible having regard to local requirements).

Who can participate in the trial?

Any applicant who has filed a trade mark in one country who then files an application for the same mark in the other country can opt into the trial.

How to participate in the trial

To facilitate the project both IPA and IPONZ have amended their respective forms to include a tick box so that applicants can agree to participate in the trial.
Both Offices are well advanced in making the necessary changes to their respective application forms and although the tick box option will be available in each jurisdiction as soon as the functionality is developed, the project will formally commence on 1 February 2010.
Application forms will require trade mark applicants to actively acknowledge both participation in the trial and to consent to disclosure of personal and examination information to IPA. In Australia, only applications filed electronically will be part of the project. In New Zealand, paper filings will also be part of the project.

Why become involved in the trial?

• We envisage that applicants taking part in the trial will experience greater satisfaction arising from increased consistency, quality and predictability of examination outcomes for the same applications filed in Australia and New Zealand, providing greater certainty for the trade mark owner and resulting spin-off benefits for consumers.
• The trial will also act to preserve the gains in consistency made in previous stages of cooperation between the Offices, and further consolidate the prevention of divergence in the treatment of applications due to operational procedure and practice.
• The trial will promote greater levels of communication and accord between the Offices, and contribute information and data upon which the two Offices can jointly make an informed, evidence-based decision on the future of recognition of prior work across the Offices.