The Intellectual Property Laws Amendment (Raising the Bar) Act (“the Act”) received Royal Assent on 15 April 2012 and introduces various amendments to the Trade Marks Act 1995.

The implementation of the reforms introduced by the Act will occur over the course of the next year, with the majority of amendments not taking effect until 15 April 2013. Notwithstanding this delay, coming to terms with the impact of these amendments should be of priority to owners of existing trade marks and those looking to develop trade marks for their business in the near future as the amendments will impact upon all aspects of trade mark practice, from application to enforcement.

Summary of Key Amendments

Presumption of Registrability:

s41 of the Trade Marks Act is to be repealed and replaced by a new section which inserts a statutory presumption of registrability on the basis of “distinctiveness” whereby trade marks the subject of applications for registration will be deemed to be capable of distinguishing the applicant’s goods or services in respect of which registration of the trade mark is sought unless one of the exceptions stated in the section applies

New Opposition Procedures:

The Act seeks to streamline oppositions to registration of trade marks by expediting the necessary procedures and requiring both parties to an opposition to actively engage in the process.  

While persons opposing registration will no longer be required to serve notice of the opposition on the applicant, they will now be required to include detailed particulars of the basis of the opposition. Applicants will also be required to file a notice of intention to defend the opposition proceedings within the prescribed timeframe. A failure by an applicant to lodge such a notice will result in the automatic lapsing of the opposed application.  

New Jurisdiction:

The Act empowers the Federal Magistrates Court to deal with trade mark matters which were previously vested solely in the Federal court of Australia. In practice, this will enable greater and more efficient access to the courts for determination of disputes between parties and of appeals against decisions made by the Registrar of Trade Marks under the Trade Marks Act.

Court May Order Additional Damages:

Courts will now be empowered to award additional damages to trade mark owners whose rights have been infringed in certain circumstances. The scope of this ability is quite broad; however the Act specifies that this power may apply where:

  • the infringement is deemed to be flagrant;
  • there is a perceived need to deter similar infringements of registered trade marks; or
  • the conduct of the party that has infringed the registered trade mark is such as to warrant the imposition of additional damages, such as continued infringement after the infringing party becomes aware of the infringement.

Seizure of Infringing Goods:

Importers of goods seized by customs owing to the infringement of a registered trade mark will now be required to provide identification details to customs officers, which will then be passed onto the trade mark owner. Importers will also be liable to having the infringing goods destroyed upon seizure.

Impact for Trade Mark Owners

The increase in fines and penalties for infringement of registered trade marks will be of some relief to trade mark owners facing an uphill battle to prevent infringement of their rights.

The deterrent effect of these amendments coupled with the additional seizure powers in relation to imported goods is intended to provide trade mark owners with the ability to proactive protection from infringement by making the identities of counterfeiters known.

For trade mark owners not as likely to encounter counterfeiting, the new trade mark opposition procedure provides some comfort in that an opposition properly made will now require an active response from an applicant in order for their application to proceed. This is intended to have the effect of requiring applicants to effectively prove that the trade mark being applied for does not conflict with a pre-existing trademark.