At MBIP our attorneys have been working closely with IP Australia for a decade (some even longer) and so we know the ins-and-outs of how the Trade Marks Office works. 
We appreciate the time Examiners have taken to discuss applications and objections, and we understand that maintaining a fair and balanced IP protection system is mutually beneficial to applicants, attorneys and IP Australia.
However, in recent times IP Australia seems to have shifted its trade marks focus from administering IP rights. Rather, articles and interviews published on its website may indicate to some that the Office is attempting to boost the number of applications being filed. To others it may appear as if they are trying to act as mentors to self-filing trade mark applicants.
By its own assertion, IP Australia cannot provide applicants with information on:
- Whether the trade mark is the most apt for a business;
- Whether an applicant will be infringing another trader’s common law rights;
- How a business can make the best strategic use of a trade mark;
- Whether a trade mark provides the optimum coverage for a business, in terms of the goods and/or services specified; or
- Strategies for protecting the trade mark and enforcing protection.
Yet despite this, the Government Agency continues to incorporate new ways for self-filing trade mark applicants to attempt to navigate the process without the assistance of a qualified Trade Marks Attorney. This is leading to an increase in the quantity of applications being filed, although the quality of those applications may be suffering.
Recently, our Attorneys have experienced a number of frustrations with IP Australia, including;
- Extended processing times for standard applications of around six months;
- Extended processing times for expedited examination of up to three months;
- Unanswered phone calls; and
- Answered phone calls only to find that one, two, three and even five people who may be able to assist are all unavailable.
Given the clear issues IP Australia is having processing the increased number of trade mark applications being filed, is it time the Office re-focussed its efforts on ensuring the integrity of the Register, rather than attempting to boost the number of applications being filed?
If there is anything that attorney firms can do to help alleviate these issues and streamline processes, we would love to hear from IP Australia.
For people filing directly with IP Australia, we want to know how you have found the experience. If there is anything we can do to assist you with trade mark filings, please contact us on 07 3369 2226 or mail@mbip.com.au.