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4. Examination Quality Standards

IP Australia recognises that the services it provides must comply with the requirements of the Trade Marks Act 1995 and Regulations, and meet expectations of quality from its customers. IP Australia’s Quality Policy is available on the IP Australia website.

To ensure that customer's expectations are met, a set of quality standards for trade mark examination has been developed using comments from our customers and in consultation with our staff.

The examination of an application is itself a quality assurance process on that application.  The quality standards apply to all aspects of trade mark examination carried out by IP Australia and provide us with benchmarks against which to assess the quality of these aspects of the examination process.

Achieving the standards for trade mark examination will ensure that the resulting registrations are entitled to a presumption of validity, which meets the customer's expectations. The Manual is fundamental to implementing the quality standards but must always be considered as a guide and interpreted in the context of the Act, Regulations and the relevant decisions of courts and tribunals.  

The quality standards support IP Australia's commitment to providing high quality trade mark regulatory services for the benefit of Australia.  These standards will be continually refined in the light of experience and comments from our customers.

Product Quality Standards (Printable Word Version)

 

TIER 1: includes Product Quality Standards (PQS) that relate to substantive matters which would adversely affect (or have the potential to affect) the validity of the IP Right.

PQS 1 - A correct search and research strategy is adopted  

1.1

Trade Marks database searching and general research is undertaken as required

 

1.1.1

Trade Marks database search strategy is appropriate.

 

 

1.1.1.2

Relevant precedent and conflicting trade marks are extracted.

 

 

1.1.1.3

Search documents are attached to file.

 

1.1.2

Research strategy is appropriate.

 

 

1.1.2.1

Research material and/or resources used are attached to file or identified as required.

PQS 2 - All relevant grounds for rejection are correctly taken

2.1

Relevant grounds for rejecting the trade mark are identified, raised and maintained when applicable

 

Grounds for Rejection

 

2.1.1

s39: signs that are not to be used as trade marks.

 

2.1.2

s40: trade marks that cannot be represented graphically.

 

2.1.3

s41: trade marks not capable of distinguishing.

 

2.1.4

s42: trade marks that are scandalous or contrary to law.

 

2.1.5

s43: trade marks likely to cause confusion.

 

2.1.6

s44: conflicting trade marks.

 

2.1.7

s177: certification trade marks not capable of distinguishing.

 

2.1.8

s187: defensive trade marks.

2.2

Incorrect grounds for rejection are not identified raised or maintained

 

Grounds for Rejection

 

2.2.1

s39: signs that are not to be used as trade marks.

 

2.2.2

s40: trade marks that cannot be represented graphically.

 

2.2.3

s41: trade marks not capable of distinguishing.

 

2.2.4

s42: trade marks that are scandalous or contrary to law.

 

2.2.5

s43: trade marks likely to cause confusion.

 

2.2.6

s44: conflicting trade marks.

 

2.2.7

s177: certification trade marks not capable of distinguishing.

 

2.2.8

s187: defensive trade marks.

2.3

Amendments

 

2.3.3

Amendments to overcome grounds for rejection are assessed and/or applied correctly.

2.4

Assessment of Evidence

 

2.4.1

Evidence is assessed correctly.

 

TIER 2: includes Product Quality Standards (PQS) that relate to matters which would require a considerable amount of rework and/or inconvenience to the applicant or IP Australia.

PQS 3 – All objections are taken

3.1

Relevant objections relating to the following issues are correctly identified raised and maintained when applicable:

 

3.1.1

Goods and services classification.

 

3.1.2

Divisional applications.

 

3.1.3

Convention applications.

 

3.1.4

Type of mark being claimed.

 

3.1.5

Ownership details.

 

3.1.6

Address for service.

 

3.1.7

Translations and transliterations.

 

3.1.8

Series applications.

 

3.1.9

Representation of mark.

 

3.1.10

Description of mark.

3.2

Amendments

 

3.2.1

Amendments to overcome relevant objections (issues listed above) are assessed and/or applied correctly.

PQS 4 – Reports are free of invalid objections

4.1

Invalid objections relating to the following issues are not identified raised or maintained:

 

4.1.1

Goods and services classification.

 

4.1.2

Divisional applications.

 

4.1.3

Convention applications.

 

4.1.4

Type of mark being claimed.

 

4.1.5

Ownership details.

 

4.1.6

Address for service.

 

4.1.7

Translations and transliterations.

 

4.1.8

Series applications.

 

4.1.9

Representation of mark.

 

4.1.10

Description of mark.

4.2

Amendments

 

4.2.1

Amendments are not applied in relation to invalid objections (issues listed above).

PQS 5 – Reports are comprehensive and informative

5.1

Reports include sufficient detail

 

5.1.2

Reports provide sound reasoning as to why the ground(s) for rejection and/or objections preventing acceptance are appropriate.

 

5.1.5

Reports contain copies of research where appropriate.

 

5.1.6

Reports contain details of any conflicting trade marks.

 

5.1.7

Reports give any appropriate options without inappropriately dictating a specific action.

 

5.1.9

Further reports  address all outstanding issues and acknowledge and respond appropriately to all submissions.

 

5.1.10

Reports are attached to file.

 

TIER 3: includes Product Quality Standards (PQS) that relate to matters which are important in terms of quality of the product.

PQS 6 - Written formalities are complete and correct

6.1

Reports and written records are presented professionally

 

6.1.1

Reports and written records are free from frequent or serious spelling, typographical or grammatical mistakes.

 

6.1.2

Appropriate word processing codes are used, and tailored appropriately.

 

6.1.3

Reports are written in plain English and first person.

 

6.1.4

Reports are structured with appropriate headings and subheadings.

6.2

Complete and correct administrative actions

 

6.2.1

Examiner’s worksheet is filled out as required.

 

6.2.2

Database searches and extract lists are annotated as required.

 

 

6.2.2.1

Searches are identified as viewed as required.

 

6.2.3

The following documents are attached to file (not including requirements covered by Tier 1).

 

 

6.2.3.1

Database search is attached to file.

 

 

6.2.3.2

Research is attached to file.

 

6.2.4

Evidence.

 

 

6.2.4.1

Written evidence summary is prepared as required and attached to file.

 

 

6.2.4.2

Details of any additional research or material used to assist the evidence assessment is recorded.

 

6.2.5

All necessary endorsements are entered, and are worded correctly.

 

6.2.6

Courtesy letters to the owners of conflicting trade marks are attached to file as required, and contain correct information.

 

6.2.7

Records of conversations relevant to the examination outcome of the application are recorded on file.

 

6.2.8

E-mail correspondence relevant to the examination outcome of the application is attached to file.

 

6.2.9

Owner name searching is conducted as required.

Further information about IP Australia’s commitment to quality is found in the Quality Management Systems Manual.

Within the Quality Management Systems Manual is the IP Australia Quality Manual.  Included at 5.4.1 are the Quality Objectives for the Trade Marks and Designs Group.  These have been reproduced below:

Trade Marks

Quality Objective

Minimum performance undertaking

Trade Mark revocations will be less than 0.25% of total acceptances

<0.25%

Late raised grounds for rejections will be less than 0.5% of total Trade Mark acceptances

<0.5%

Trade Marks reports over 3rd will be less than 5% of total reports.

<5%

Less than 20 unexamined Trade Mark applications per month to be more than current time to examination plus four weeks

<30

Less than 2% of unexamined expedited Trade Mark applications per month to be more than one month old.

<2%

We will respond to your TM Headstart request within 5 working days of it being submitted

We will achieve this 95% of the time

We will examine and issue a report on your application for a trade mark within 13 weeks of receiving the application

We will achieve this 90% of the time

We will respond to correspondence relating to the examination of your application within 20 working days of receiving the correspondence.

We will achieve this 90% of the time

Oppositions and Hearings

Quality Objective

Minimum performance undertaking

We will issue our decision within 12 weeks of holding a hearing, unless we receive further submissions or evidence.

We will achieve this 90% of the time.

Corrective Action Records (CARs) as a result of a Quality Review Finding

Sometimes correction and/or issuance of another report is required as a result of a quality review Finding. Information about the appropriate action to take regarding corrective actions as a result of a quality review Finding can be found in the Quality Management System Manual.

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