In brief

  • The government has recently released the Exposure Draft (17 December 2010) of the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (Bill). This Bill proposes a number of amendments to existing intellectual property laws, including the Trade Marks Act 1995 (Cth) (Act). This note looks at the trade mark provisions of the Bill only.
  • As the Bill is not yet in its final form, it is difficult to conclusively predict how the proposals will affect businesses and the trade mark profession.
  • However, in its current form the Bill will implement a number of reforms to simplify trade mark applications, oppositions and enforcement procedures, as well as making some key changes to the operation of the trade marks profession.  

Key trade mark changes and impact on businesses

Changes to opposition proceedings

Key changes

  • Parties filing an opposition to a trade mark registration (Opponents) will no longer have to notify the owner of the opposed mark (Applicant) of the opposition. This will be done by IP Australia.
  • Opponents will have to file a statement specifying the grounds for their opposition within one month of filing the opposition, which will be difficult to amend once submitted.
  • Applicants will be required to file a notice confirming their intention to defend their mark against the opposition.

What this means for businesses

  • Opposition proceedings should have greater certainty, as parties will be forced to consider their strategy for filing and/or defending oppositions at the outset of the proceedings.
  • Opponents will have to determine their specific grounds for filing an opposition upfront.
  • Applicants will have to decide at the outset whether they will file a notice to defend their trade mark against the opposition, otherwise their application will lapse. This change will save Opponents undue costs in preparing evidence in oppositions which Applicants do not intend to defend.

Introduction of the Federal Magistrates Court

Key changes

  • The Federal Magistrates Court will have jurisdiction to hear and decide trade mark matters, including appeals against decisions made by the Registrar and trade mark infringement proceedings.

What this means for businesses

  • The Federal Magistrates Court will not replace the role of the Federal Court, but will provide a cheaper, faster and more flexible forum for less complex disputes.  

Customs seizure

Key changes

  • Customs seizure processes will be simplified.
  • Customs will be able to release seized goods to trade mark holders, to determine if the goods are infringing a trade mark.
  • Designated owners of seized goods will have to file a claim with customs to have their goods returned; if no claim is made within a prescribed period, the goods will be forfeited.  

What this means for businesses

  • Trade mark holders should file customs notices to take advantage of Customs’ powers to police counterfeiters and seize infringing goods.
  • The changes will enable customs to collect more information about counterfeiters and pass this on to trade mark holders so that they may commence infringement proceedings.  

Trade mark offences

Key changes

  • The Bill provides for additional damages awards in trade mark infringement cases.
  • Summary offences will be added to the Act, which correspond with each indictable offence, to provide a more flexible two-tiered system of offence provisions.  

What this means for businesses

  • These proposed amendments, together with the new Customs seizure provisions, are a key achievement for anti-counterfeiting lobbies.
  • The proposed changes will give the court discretion to award punitive or exemplary damages in flagrant infringement cases. The amendment will enable the court to award additional damages to penalise serious infringers, and provide an effective deterrent to counterfeiting activities.
  • The addition of summary offences also will provide a more flexible system for punishment, to ensure both serious and less-serious infringers are adequately penalised.  

Other changes


  • Trade mark attorneys’ communications will attract the same privilege as legal professional privilege, which means that correspondence with both local and foreign agents may attract privilege.  

Presumption of trade mark registrability for marks lacking in distinctiveness

  • The Bill clarifies that the assumption of registrability applies to section 41 of the Act. This will mean that in instances where it is unclear if an Applicant’s mark is distinctive on the balance of probabilities, the Registrar must decide in an Applicant’s favour.  

A full note on the changes for patents will follow.