New e-filing system for Trade Marks Madrid Export applications

Published: 
14 January 2015

This system will cater for all new applications filed online under the Madrid Protocol. It is anticipated to go live on 14 March 2015. Madrid e-filing will be available through IP Australia’s eServices portal and will replace the current option which is located within the General eServices request form.

IP Australia will bring you regular updates leading up to the release. Stay tuned for more news as we progress.

Why are we doing this?

  • Our customers will have a better experience with filing Madrid Export applications through IP Australia
  • To provide a simple and hassle free fee paying mechanism for our customers
  • To improve the overall efficiency of IP Australia's internal processes in relation to Madrid Export applications
  • To provide a robust process ensuring end-to-end data tracking and improved quality of data submitted to WIPO
  • To reduce the number of "unable to certify notices" issued to applicants by IP Australia as a result of improved data validation during data entry
  • To pave the way for decommissioning outdated IP Australia IT systems
  • Contributes to better alignment with WIPO's strategic direction for Madrid Export applications processing.

Background

The Madrid Protocol is the primary international system for facilitating the registration of trade marks in multiple jurisdictions around the world. Madrid Exports refers to applications for which IP Australia acts as an Office of Origin. In this system, owners of Australian trade marks can apply to extend protection of their marks to other countries. Approximately 1,500 Madrid Export applications are lodged with IP Australia every year.

WIPO has been trialling Madrid e-filing with Benelux, Portugal and the Office for Harmonization in the Internal Market (OHIM) to provide electronic filing of Madrid Export applications in these countries. The trial has proved to be successful. IP Australia commenced work with WIPO last year to develop the Madrid e-filing system for Australian filers seeking registration of their trade marks in other jurisdictions under the Madrid Protocol.

Madrid e-filing will be available through IP Australia’s eServices portal and will replace the current option, which is located within the General eServices request form.

Madrid e-filing Functionality

Customers will login through IP Australia’s eServices and upon selecting the option to file Madrid Export application they will be navigated to the Madrid e-filing eForm hosted by WIPO. The customer will be able to track the progress of their application and provide responses to office communication including unable to certify notices though Madrid e-filing eForm. At this stage Madrid e-filing will only be used for new Trade Mark Madrid Export filings.

Subsequent Designations:

WIPO currently provides a separate web service for filing subsequent designations. This is currently available through IP Australia’s website and will be made available through the eServices portal as part of Madrid e-filing implementation in March 2015.  

Processing of fees with Madrid e-filing:

Customers will pay the application fee and the application handling fee in Swiss Francs in one single transaction through Madrid e-filing.

Applications not filed through Madrid e-filing:

As of 14 March 2015, Madrid e-filing will be IP Australia's preferred channel for submission of Madrid Export applications. However, IP Australia will continue to allow applications to be filed through our paper channel. Fee processing for applications that are not filed through Madrid e-filing will be carried out as per the current process. This will include applications filed via paper or applications filed through the alternate lodgement service (ALS) when eServices is unavailable.