The Australian Government has introduced a number of legislative reforms to the IP system in relation to trade marks.  These changes commence on 15 April 2013 and the main changes are summarised below.

Applications

The presumption of registrability should now apply to distinctiveness objections under section 41 of the Trade Marks Act.  This will hopefully result in speedier examination of applications for less distinctive marks.

Oppositions

The proposed changes aim to streamline and speed up opposition proceedings. The new procedure involves:

  1. the opponent filing a notice of intention to oppose an application within 2 months of the advertisement date instead of the current 3 months. It will be difficult to extend this deadline;   
  2. the opponent then has 1 month to file a statement of grounds and particulars. This new procedural step is aimed at narrowing the issues in dispute at the outset and prior rights will need to be specified;
  3. the applicant has 1 month to file a notice of intention to defend the opposition, failing which the application will automatically lapse. This is a new step and avoids cost and delay to opponents where the opposition is uncontested;
  4. the usual timeframe follows for filing evidence in support (3 months) and evidence in answer (3 months) and an abbreviated time frame for evidence in reply (2 months).  Extensions of time will only be available in extraordinary cases and there is no longer any provision for filing further evidence (which currently can be filed if the Registrar gives leave to do so);
  5. the Registrar (rather than the parties) will decide whether the matter is to be heard in person or decided on the papers filed. For a hearing in person, parties need to file submissions in advance of the hearing and failure to do so may have costs consequences.

Service of all notices and evidence is to IP Australia which will then be responsible for service on each party, and this will trigger timeframes and deadlines.  All evidence is to be filed electronically.

A cooling off/suspension period up to a maximum of 12 months is available once an opposition has commenced if both parties agree. Previously parties could suspend for much longer timeframes.

Trade Mark Infringement

Under these reforms, the jurisdiction of the Federal Circuit Court (previously the Federal Magistrate’s Court) has been expanded.  Brand owners will now be able to:

  1. sue for trade mark infringement alone in the Federal Circuit Court of Australia which should reduce litigation costs.  Previously trade mark infringement proceedings had to be coupled with misleading or deceptive conduct claims to allow claims to be filed in this court;
  2. seek additional damages for flagrant infringement (as is the case for copyright infringement);
  3. appeal adverse opposition decisions to the Federal Circuit Court which will also reduce the costs of administrative appeal.

Customs Notices

Under the new system, once goods are seized under a customs notice, the onus for action will be on the importer of the goods rather than the brand owner. The importer must make a claim for return of the goods and provide contact details so the brand owner can make further enquiries or institute proceedings for infringement as necessary.  If the importer fails to request the return of the goods, they are forfeited to the Commonwealth and can then be disposed of. This default position removes the previous onus on the brand owner to commence proceedings within a very short timeframe and also overcomes the issue where importers provided false contact information to stymie legal action.

Further action

We recommend:

  • monthly watches of the Trade Marks Register to ensure marks of interest are identified within the 2 month opposition period;
  • deciding opposition grounds before the notice of intention to oppose is filed.  Details of prior rights/registrations, allegations of bad faith or descriptiveness claims should be provided with opposition instructions;
  • keeping electronic records of trade mark use so evidence can be prepared quickly in an appropriate form;
  • reconsidering the option of customs notices given the default mechanism for confiscation of seized goods;
  • contacting us if you wish to consider litigation options in enforcing your trade marks.