What is indexing?
Trade mark indexing is the process by which IP Australia allocates words to describe the defining features of the mark. When searching the trade marks database, you enter a word, and will retrieve marks that have that word as one of their indexing terms.
IP Australia prefers to keep the number of indexing terms to six per mark.
However, if a particular trade mark (or part thereof) can be interpreted in multiple ways, IP Australia may index it using multiple terms. There is a public interest in trade marks being indexed according to all possible reasonable interpretations, to ensure that members of the public can make business decisions based on all potentially relevant trade marks, and to ensure examiners are considering all possible grounds for rejection. See for example, trade mark application no. 2335972, which has 31 indexing constituents
Trade mark indexing is a manual process, and is not assisted by AI. IP Australia has no current plans to introduce AI into indexing. But, it is possible that this may occur in the future.
For now, trade mark indexing is performed by the Trade Mark & Designs Administration section at IP Australia. Within this section, there is one team responsible for indexing, meaning about two full time staff (comprised of 4 or 5 people transitioning in and out of the team) employed with the task of indexing trade marks.
The time taken to index a mark can vary from a couple of minutes for word marks up to 15 minutes for a complex device mark.
The indexers can communicate with each other over complex indexing, and junior staff members are supervised as they train. But it’s not a tiered process and there are no routine checks of indexing by a team leader or the like.
Examiners can send a mark back to indexing if they are concerned about the indexing. The examiner might see something that the indexer didn’t see. If there are different perspectives, they can index both. The bar to an obvious interpretation of a mark to include it as an indexing term is a low bar. The indexing team gets about 2 indexing queries from examiners a day.
Once indexed, there is no formal process for the applicant or their representative, or any interested third party, to request specific indexing or object to the indexing of a trade mark. Still, it is possible to ask.
While they do not keep statistics, IP Australia say that they “receive very few requests to amend the indexing of trade marks from applicants”.
If you ask for indexing to changed, the discretion and decision lies with IP Australia. Where there is disagreement regarding the indexing, IP Australia will make the final decision.
Generally, IP Australia is against removing indexing terms. There are some rare exceptions. For example, IP Australia removed term “grotesque” as an indexing term after there were a lot of complaints.
More often, in response to a request for a change, indexing added, not removed.
Why does indexing matter?
During searches, if a mark is under indexed, it will not come up in a search. This means that your mark may not be cited against relevant third party marks if it is not adequately indexed.
During examination, indexing is taken into account by the examiners (as it is evidence that somebody perceived a mark that way, so there may be a risk of confusion).
For revocation of acceptance, indexing is listed in the Trade Marks Examiner’s Manual as a possible basis for revocation of acceptance. See: “iv. an application is accepted because a citation was missed due to an indexing error”.
In oppositions and infringement actions, where a party is arguing deceptive similarity, it may be raised as evidence that the indexer perceived that the mark will be interpreted a particular way by a consumer.
Because indexing does play a significant role in complex trade mark matters, it may be worth looking at:
a) Whether there is anything you can do to influence the indexing, such as by including a business name in an application (if, say the business name indicates the interpretation that is intended, as a Social Tourist business name would suggest that a highly stylised mark might be interpreted as ST, whereas without the inclusion of the business name there would be no clues provided to the indexer or examiner that this is how the stylised mark is to be interpreted);
b) After filing, check how marks have been indexed, in case something is missed (as that will give your client the best chance of being cited and give their registration the broadest scope of monopoly).
c) If you notice something has been missed in the indexing process, request a change by general correspondence on eServices. If you are not satisfied with the outcome of that request, and really want the indexing changed, you can try to make an allowable amendment to the mark, which may alter the indexing.
At Tarr Law, we don’t just dabble in trade marks, we delve into all of the finer details, searching for every possible advantage and strategy that can assist our client’s to achieve the best outcomes. If you have any questions about trade mark indexing, Australian trade mark matters, or international trade mark filings and global trade mark portfolio management, book a time with Hayley Tarr today. To book, just email hayley@tarrlaw.com.au or call/text 0477 914 319.