After a long time in the making, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Amending Act) came into full effect on the 15th April 2013.

The Amending Act, which amends both the Trade Marks and Patents legislation, constitutes the most significant amendment to Australian Intellectual Property law in 20 years.

The Amending Act makes several significant changes to the Trade Marks Act 1995 (TM Act), including registration, opposition and enforcement procedures.

This article summarises the major changes made and highlights the practical effects of these changes.

Examination – Distinctiveness of Trade Marks

It is commonly known that the purpose of a trade mark is to distinguish the trade mark owner’s goods or services from those of other traders.

The TM Act has long contained a provision that a trade mark application must be rejected if the mark is not capable of distinguishing the applicant’s goods or services.

This basic premise has not been changed by the Amending Act.

However, the Amending Act repeals and replaces Section 41 to focus on what characteristics a mark must possess to be ‘capable of distinguishing’.

As a result, it is now clear that the presumption of registrability of trade marks (found at Section 33 of the TM Act) does apply to section 41.

Applicants can now be confident that their mark will be presumed to be registrable, unless the examiner is satisfied that there are grounds in the Act for rejecting the application. These grounds include if the trade mark is not capable of distinguishing the applicant’s goods.

The new section will apply to trade mark applications made on or after 15 April 2013. For all applications made prior to the effective date, the repealed section 41 will continue to apply.

Opposition

No Need to Effect ‘Service’

For parties intending to oppose registration of a Trade Mark, or for parties against whom opposition proceedings are commenced, it will come as a welcome change that there is no longer a requirement for parties to serve evidence and documents upon each other.

IP Australia will undertake the responsibility of providing all parties with copies of the documents and evidence submitted by both sides in trade mark opposition cases.

Parties will now be required to submit their evidence and documents electronically, and physical evidence will only be accepted in exceptional circumstances.

This change is also applied for patent and design opposition procedures.

Time Frame for Opposing Registration Now Reduced

The opposition period for trade mark applications is now 2 months, down from 3 months previously.

For trade marks advertised as accepted by IP Australia before 15 April 2013, the opposition period will remain as 3 months.

This change is a great benefit to applicants, as they will know sooner whether it will be necessary to defend opposition proceedings against their trade mark application.

Parties who may have an interest in opposing a registration should be careful to ensure that their opposition is filed within this 2 month time frame.

New Process for Filing an Opposition

Parties intending to file an opposition to registration of an accepted trade mark should be aware that the Notice of Opposition now has two components:

  • Notice of Intention to Oppose; and
  • Statement of Grounds and Particulars.

The new process for opposing registration (and its timeline) is set out briefly below:

  • Notice of Intention to Oppose (to be filed by Opponent) – within 2 months of IP Australia advertising acceptance for registration

This notice will no longer need to be served on the applicant by the opponent. IP Australia has now assumed that responsibility.

  • Statement of Grounds and Particulars (to be filed by Opponent) – within 1 month of filing the Notice of Intention to Oppose

Failure to file this statement in time may result in the dismissal of the opposition.

  • Notice of Intention to Defend (to be filed by the Applicant) – within 1 month of receiving the Statement of Grounds and Particulars

Failure to file this notice in time will cause the trade mark application to lapse. Applicants must therefore be very careful to observe this time frame.

*This filing process is also applicable for trade mark owners who wish to oppose an application which has been made to remove their trade mark from the register.

Following the filing of documents, the evidence stage of the opposition process remains largely the same.

However, opponents should also take care to note that the time for filing Evidence in Reply has now been shortened from 3 months to 2 months for opposition proceedings commencing on or after 15 April 2013.

Extensions to time frames in the opposition process will only be granted in limited circumstances.

Given the consequences of failing to meet the time limitations now placed on the opposition process, both opponents and applicants should be careful to ensure that the due dates under the Act are carefully observed.

Cooling Off for Oppositions

The Amending Act has also introduced into the Trade Marks Regulations 1995, a cooling off period of 6 months.

This cooling off period, which can be extended by mutual agreement for a further 6 months, allows for the temporary suspension of the opposition process.

Expanded Jurisdiction for the Federal Magistrates Court

The Federal Magistrates Court has now been granted jurisdiction to hear matters arising under the TM Act. This will include appeals from oppositions.

Enforcement – New Penalties and Offences Introduced

Additional/Punitive Damages for Trade Mark Infringement

Previously, trade mark owners could apply to the court for an injunction and damages or an account of profits.

Section 126 of the TM Act has now includes a second paragraph allowing the court to award additional or punitive damages for infringement.

Additional damages may be ordered by the court if it is considered appropriate to do so, having regard to:

  • The flagrancy of the infringement;
  • The need to deter similar infringements of registered trade marks;
  1. The conduct of the party that infringed the registered trade mark that occurred:
  2. After the act constituting the infringement; or
  • After the party was informed that it had allegedly infringed the registered trade mark;
  • Any benefit shown to have accrued to the party because of the infringement; and
  • All other relevant matters

The introduction of this new section brings the TM Act more into line with the remedies available under the Copyright Act.

Given the potential for punitive damages, traders should perhaps exercise heightened diligence to avoid infringing another trade mark owner’s rights.

New Summary Offences

The Offence provisions for trade mark infringement at sections 145-149 of the TM Act have been repealed and replaced with new sections.

The indictable offences remain substantially identical to the offences previously existing in the TM Act with increased penalties. However, new summary offences have also been introduced to mirror the indictable offences.

The summary offences have a lower fault element of negligence, and carry maximum penalties of 12 months imprisonment or 60 penalty units.

Comments

Of the changes made to the Trade Marks Act by the Intellectual Property Amendment (Raising the Bar) Act 2012, perhaps the most important from a practical perspective are those relating to the opposition process.

Parties should ensure that they are prepared to make electronic submissions of both documents and evidence in opposition proceedings.

Additionally, the strict time frames for responding should ensure that trade mark opposition proceedings are dealt with in a timely and efficient manner.