In the following, we explain changes to the Australian trade marks system which will come into effect on 15 April 2013. The changes to the system will result from a combination of amendments to the Trade Marks Act 1995 (the Act) which have already been passed by the Australian Parliament in the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 and changes to the Trade Marks Regulations 1995 (the Regulations) which have not yet been released. Therefore, in the discussion below, we explain what we expect the combined changes to the Act and the Regulations to result in, but there may be some further modification depending on the final form of the Regulations. We expect a draft of the Regulations to be made public in the next couple of months.
Registrability - Distinctiveness
Section 41 of the Trade Marks Act has been amended to clarify that a presumption of registrability does exist with regard to distinctiveness. In other words, a trade mark will be considered capable of distinguishing goods or services unless one of the exceptions listed in Section 41 applies.
When the Trade Marks Act was initially introduced in 1995, it was intended that this presumption of registrability would exist. However, due to a court decision in 1998, the presumption of registrability was only considered to exist in certain circumstances. The amendment is intended to restore the presumption of registrability while making no other changes.
With regard to oppositions, as indicated above, the Act has been amended in preparation for the introduction of changes to the Regulations which are intended to speed up opposition procedures.
In general, it is expected that the amendments to the Act and the Regulations will establish a regime which includes the following:
A Notice of Opposition must be filed with 2 months of acceptance of a trade mark application.
The opponent will not be required to serve the Notice of Opposition on the applicant. The Trade Marks Office will send the Notice of Opposition to the applicant.
A Statement of Grounds and Particulars must be filed by the opponent within 1 month of the Notice of Opposition.
Amendment of the Notice of Opposition and Statement of Grounds and Particulars will only be possible in limited circumstances.
The applicant must indicate via a Notice of Intention to Defend the opposition that the applicant intends to defend the opposition. If a Notice of Intention to Defend is not filed, the application will lapse. The opponent is not required to file evidence until after a Notice of Intention to Defend is filed by the applicant.
Other changes are expected in order to expedite opposition procedures and to reduce delays.
The provisions with regard to trade marks attorney privilege have been broadened to include within the meaning of registered trade marks attorney a foreign individual authorised to do trade marks work under the law of another country or region. This means that privilege will extend to communications between an applicant or their Australian trade marks attorney and a foreign intellectual property professional who is authorised to perform trade marks in their own country.
Trade Mark Enforcement
Under the changes to the Act and the Regulations, it expected that the following system for dealing with suspected infringing products imported into Australia will be introduced.
Where a trade mark owner suspects or knows of the importation of infringing products, the trade mark owner will be able to lodge a Notice of Objection in regard to the imported goods with Customs.
If the goods are seized by customs and the importer requests that the goods be released, the importer will have to provide certain information (for example, contact information of the importer and contact information of the foreign supplier) before release of the seized goods will be considered.
The trade mark owner will also be able to inspect and obtain samples of the imported product to assist in determining whether or not there is infringement.
The information obtained from the importer will be made available to the trade mark owner in order for the trade mark owner to initiate legal proceedings against the importer.
If legal proceedings are not initiated or a court determines that the goods do not infringe, then the seized goods will be returned to the importer.
If the importer of the goods does not request release of the seized goods, the goods will be forfeited to the Australian Government.
In addition, to the above, the penalties for existing offences under the Act will be increased and the courts will have the discretion to award additional damages.
The Trade Marks Act has been amended to give the Federal Magistrates' Court jurisdiction to hear trade mark matters. The Federal Magistrates' Court is a lower tier court and this change is intended to make it easier and less expensive to initiate proceedings in court related to trade mark matters.