Filing for a trade mark is a crucial step for any business aiming to protect its brand identity and gain exclusive rights to use a particular mark. However, a comprehensive trade mark strategy before filing the application can save costs and avoid lengthy opposition proceedings.

An application to register the trade mark was filed under application number 2099988 on July 6, 2020. The application covered services in classes 35 and 44, including business management and medical advisory services. Acceptance of the trade mark was advertised on December 7, 2020, leading to an opposition notice filed by the Australian Traditional Medicine Society Ltd (ATMS) on February 3, 2021.

The ATMS, represented by Baxter Patent Attorneys Pty Ltd, opposed the registration on several grounds, primarily under sections 41 and 43 of the Trade Marks Act 1995 (Cth), arguing that the trade mark "" was not capable of distinguishing applicant’s services from those of other traders. The opposition highlighted that the terms "accredited" and "nutritionist" are commonly used and descriptive, thus lacking distinctiveness.

The Hearing Officer concluded that the trade mark was indeed descriptive and lacked the inherent adaptation to distinguish applicant’s services from those of other traders. The decision emphasised that a combination of descriptive words, even with a design element, does not necessarily qualify for trade mark protection, if the mark does not sufficiently distinguish the services. As a result, the application was refused, and applicant was ordered to bear the costs of the proceedings. Baxter Patent Attorneys Pty Ltd successfully stopped a descriptive mark from being registered, protecting the interests of ATMS.

A strategic approach to trade mark registration involves a number of considerations. A first is that a mark must be distinctive. Descriptive marks that merely describe the product or service's characteristics are unlikely to be registered unless they have acquired distinctiveness through extensive use.

Secondly, the mark should be considered by a Trade Mark attorney who has a thorough understanding of local trade mark law and how it might apply to the proposed mark.

If you're facing a potential trademark dispute, please contact our Trade Mark Attorneys to discuss strategy.

Filing a trade mark? Don't skip the strategy! A case study reveals the importance of distinctiveness & legal advice to avoid opposition. Protect your brand with expert tips.

Australian Traditional Medicine Society Ltd - A case highlighting the Importance of Trade Mark Filing Strategy

As of the end of March 2024 IP Australia will begin using the Madrid Goods & Services list of terms for new applications

What is the Madrid Goods and Services Classification (MG&S)?

The Madrid Goods and Services Classification (MG&S) is essentially a subset of the broader Nice Classification system. The Nice Classification is an international system used to classify goods and services for the registration of trademarks.

IP Australia's adoption of the new Madrid goods and services terms is significant for businesses and trademark owners seeking international protection and will affect both domestic Australian applications as well as international applications made by Australians.

The Madrid System simplifies the process of protecting trademarks across multiple countries by allowing applicants to file a single application via the World Intellectual Property Organization (WIPO), which is then filed in any number of the 130 countries or territories who are members of the Madrid Protocol.

An application filed in an applicant’s home country is extended without having to apply directly to the national trade mark office or through a local attorney. As a result a brand can be protected internationally far more conveniently and at significantly less cost than a series of individual applications.

Under the Madrid trade mark system an applicant may apply to extend their national trade mark for the same list of goods and services which are claimed in their ‘home’ application or registration. A term, or description of a product or service must be well defined to ensure that the parameters and the rights conferred can be identified and so the goods or services filed for are examined as thoroughly as the trade mark itself.

IP Australia, the official Australian body charged with the examination and processing of most Australian intellectual property rights, had, until recently, its own set of approved terms.

As of March 2024 IP Australia has replaced the old list of accepted goods and services with the Madrid Goods and Services.

What does this mean for Australian applications?

Australian applicants will now have a differing list of goods and services to choose from in order to define the business activities of their brand.

In some cases the Madrid Goods and Services (MG&S) classifications will broaden the options available under the pick-list. The MG&S includes some terms which were not previously available. In these instances an Australian domestic applicant could save in the official fees charged by IP Australia as they will be able to locate their goods or service from within the pick-list and pay the $250 per class fling fee, whereas new terms which were previously not under the pick-list would have cost $400 per class to include in an application.

The MG&S terms are in some instances more precise and as such limit the ability of an applicant to include broad, sweeping terms such as ‘retail’. Whereas previously an applicant could file their trade mark for ‘online retail services’ and benefit from being covered fro all manner of goods which might be sold through their platform, they will now be necessarily restricted to ownership of their mark for a specific type of online retail, for example ‘Online retail services in the field of women’s footwear.’


What does this mean for international applications?

International applicants, who are either designating their Australian rights to other countries and territories, for example via the Madrid Protocol, stand to gain the most benefit under the new system.

Fewer office actions based upon imprecise terms are going to be raised by the domestic offices who have adopted the MG&S classification system. Since the terms will be the harmonised descriptions of goods and services taken from the MG&S list will by definition correlate with the terms which the office can accept without further clarification or examination.

Not only will this save time and delays in the application process once it reaches the local office, but where countries require that amendments be completed by local attorneys, there will be a sizable saving on both official and professional fees which are accrued in making specification amendments.


The semantic search functionality of the Madrid Goods and Services system allows the user to search not just by words but also by association. This is excellent for broadening a search to include fuller and more accurate descriptions of a brand's goods and services, which may not immediately come to mind.

Which international trade mark offices use the MG&S classification?

At present the Madrid Goods & Services list of terms has been adopted by:

The terms are available to translation into 17 languages, including; Arabic, Korean, Chinese, Norwegian, Dutch, Portuguese, German, Russian, Hebrew, Serbian, Italian, Turkish, Japanese and Ukrainian.

Considering filing an international application?

If you are interested in protecting your brand overseas and would like to find out more or receive a quote please reach out to us and a member of our team will be happy to advise and assist.

Starting March 2024, IP Australia will adopt the Madrid Goods & Services list for trademark applications, enhancing protection and simplifying processes for both domestic and international filings. Discover the benefits and practical considerations of this pivotal change in our latest blog.

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