What is trade mark indexing?
Have you ever stopped to ponder the importance of trade mark indexing? That sentence may sound absurd to many, but to a trade marks attorney, it actually means something. Trade mark indexing is the steps taken to make a trade mark searchable on the trade marks database. That is, indexing determines what marks an examiner finds when examining your mark, and thus whether you get a certain citation or not. Indexing determines whether you find a mark when conducting your freedom to operate searches, and thus whether you launch into infringement or not. And indexing determines whether your mark is cited against a third party application, and thus blocks them or not. In trade marks, indexing is key.
What is the process of indexing?
The Australian Trade Marks Examiner’s Manual (the Manual) states:
“Indexing involves identifying the elements that make up a trade mark. These elements are known as the indexing terms of the trade mark. They are recorded in the electronic database so that the trade mark can be found when a search is done.
Indexing is a fairly straightforward process in the case of trade marks which consist of words. The indexing of complex pictorial trade marks is a much more difficult task. The available terms are limited to those published by the Registrar in the Glossary of Image Descriptors.”
The Manual does not mention about stylised marks.
The Manual also minimises the implications of indexing. It states “Applicants should note that the image descriptors used for a trade mark are purely administrative and have no effect on the nature of the trade mark nor on the applicant’s rights in it.”
It states that “Indexers follow detailed instructions for determining the indexing terms, and enter these terms into the database.” Those detailed instructions are not published. Trade mark applicants do not have transparency over who or how their trade marks are indexed.
Can the indexing be changed?
The Manual states that “The constituent particulars that are originally captured sometimes need to be changed at a later stage. This process is termed re-indexing.
Re-indexing may be required if:
- an important particular of the trade mark has been overlooked
- a substitute representation of the trade mark is provided, or
- when a trade mark is amended”
- The second and third listed triggers for indexing are self-explanatory and initiated by the trade mark owner, but the first listed trigger for indexing, namely that “an important particular of the trade mark has been overlooked” is not expounded.
The Manual does not provide any explanation of the circumstances by which IP Australia might decide that an important particular of the trade mark has been overlooked. Can an owner request this?
Indexing is not mentioned in the Trade Marks Act or the Trade Marks Regulations.
How does this compare with the rest of the world?
In the US, the applicant is consulted about the indexing. In Australia, the applicant has no input and no legislated means of influencing, amending or appealing the indexing applied by IP Australia. This leads to many instances where trade marks are indexed differently in the US than in Australia. This can lead to different outcomes in one country versus the other.
Similarly, the Manual states “The IB indexes trade marks which contain figurative elements or device elements using the Vienna Classification System. When an IRDA is received in Australia it will include the Vienna Classification indexing. The indexing team will re-index IRDAs using IP Australia’s existing indexing terms. This will allow IRDAs to be searched using current practices.” This means that Australian trade marks will be indexed (aka searched and discovered) differently to international registrations indexed by WIPO, and the many of their designations.
Australia has recently adopted the Madrid Goods and Services List, as a wonderful step towards international uniformity. It has reduced the classification issues that trade mark applicants were encountering, when their Australian classification was not acceptable to WIPO or many designations.
And yet the inconsistency in indexing practices remains. Is it time for more steps towards uniformity?
Does it matter?
The consequences of incorrect indexing can be dire for the trade mark owner. For example, it is a ground for revocation of acceptance that “an application is accepted because a citation was missed due to an indexing error”. That is, IP Australia may unilaterally mis-index your mark or a third party mark, you receive notice that your mark is accepted, and later have that acceptance revoked because IP Australia realises it has made an error. None of this is in your control.
Contrary to what the Manual states, indexing has profound implications on trade mark rights. It is time we paid more attention, sought more transparency, and took back some control.