What is the Trade Mark Examiners Manual?
The trade mark registration process can seem difficult and confusing, and the thought of a trade mark examiner reviewing your application even more so. Luckily, IP Australia has prepared a manual that is publicly available to help. You can review the Trade Mark Examiners Manual to better understand what a trade mark examiner considers before deciding on your trade mark application. This article will explore some of the key considerations to think about before you lodge a trade mark application and discuss how the Manual can help.
What is the Purpose of the Trade Mark Examiners Manual?
IP Australia created the Manual to enable trade mark examiners to apply the provisions of the Trade Marks Act. While examiners still use the manual, it is also a useful tool to help you understand the complex trade mark registration process.
You can access the Manual here.
What is in the Trade Mark Examiners Manual?
The Manual sets out specific processes and procedures concerning how trade mark examiners review an application. It also contains information on carrying out the filing of an application and the subsequent registration of a trade mark. In addition to these procedures, it contains the examination standards that the examiners will consider.
For example, if you lodge a trade mark application, the trade mark examiner will decide whether the application met the formal requirements set out in the Manual. The examiner would then review the application against the examination requirements in the Manual. They would also consider the classification matters set out in Part 3 of the Manual.
When Should I Use the Trade Mark Examiners Manual?
You can use the Manual to help:
- file a trade mark application;
- respond to an adverse examination report; or
- determine what class is suitable for your trade mark.
Additionally, the Manual consists of three broad categories. Part One discusses formalities, Part Two discusses examination, and Part Three discusses classification.
Under each of these three broad categories, there are many subcategories that the trade mark examiners look at during a trade mark application. The Manual is very descriptive and wide-ranging and covers nearly all of the matters that a trade mark examiner would consider. Therefore, if you want to get inside the mind of the trade mark examiner that will review your trade mark application, you should familiarise yourself with the Manual.
The formalities section covers the formal requirements of a trade mark application. It discusses what is required before you lodge an application and what you need to include in it. It sets out:
- what classifications are;
- what statements of entitlement mean; and
- how to assess whether a trade mark application meets the requirements for consideration against the trade mark rules.
The examination section found in Part Two deals with the process the trade mark examiners must follow to examine a trade mark application. Further, it sets out the requirements for requesting extensions of time and how to manage disputes. It also deals with:
- how to register a trade mark formally; and
- how IP Australia manages prohibition orders.
Part Three discusses each of the classifications in detail. It is an exhaustive list of what goods and services are covered by each classification. Like many other intellectual property bodies, IP Australia classifies trade mark applications using the International Design Classification (IDC). You may also see the IDC referred to as the Locarno Convention, named after the Swiss town where the IDC was invented.
Before deciding whether to lodge a trade mark application, you should look at the Manual and consider whether you have:
- met all the formal requirements in the Manual;
- satisfied the examination criteria for your specific application; and
- chosen the correct classification.
Frequently Asked Questions
The three categories are formalities, examination and classification.
The Manual sets out how a trade mark examiner is supposed to consider a trade mark application.
The Manual was released in 1996 to administer the Trade Marks Act.