Changes to the Australian Trade Marks Act 1995
Since June 2009, IP Australia has been working towards reforming case management for trade mark oppositions. The Bill contains a number of proposed changes in relation to trade mark opposition proceedings and other provisions in the Trade Marks Act (1995) although much of the detail has been left to be included in the Regulations which are yet to be published.
The consultation process began with a paper in June 2009 titled “Resolving Trade Mark Opposition Proceedings Faster”. This was followed by a subsequent paper in November 2009 “Towards a Stronger and More Efficient IP Rights System” which dealt with trade marks as well as with other forms of IP including copyright, design and patents. In March this year, IP Australia released a draft Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (“the Bill”) together with an Explanatory Memorandum (“EM”).
The major changes are summarised below:
- Opposition Period – this has been shortened from 3 to 2 months.
- Notice of Opposition – while the exact form of the Notice is to be specified in the Regulations, the intention appears to be that the Notice simply be a form stating opposition to an application which will not contain any detail such as grounds or particulars.
- Statement of Grounds and Particulars (“SGP”) – within 1 month from the Notice of Opposition, the opponent must lodge a SGP in respect of each ground of opposition. Failure to do so may result in the opposition being dismissed.
- Notice of Intention to Defend – Within 1 month of service of the SGP an applicant must file a Notice of Intention to Defend the opposition (similar to a counter-statement in other jurisdictions). The EM indicates that there will be no fee associated with this action. Failure to file a Notice will result in the trade mark application lapsing.
- Periods for Lodging Evidence – The opponent will have 3 months within which to lodge evidence-in-support of opposition. If further time is required then the opponent must seek a direction from the Registrar. Extensions will not be allowed as of right. The same is likely to apply for evidence-in-answer. The period for lodging evidence-in-reply has been reduced from 3 to 2 months.
- Suspension – The Bill provides for a 6 month cooling off period with the consent of the parties.This may be extended to 12 months.
- The Bill seeks to extend attorney/client professional privilege to communications with overseas attorneys.
- The Bill provides a trade mark owner with the ability to have access to multiple samples of seized goods and to remove such goods for inspection. There is currently no provision in the Trade Marks Act for this.
- The Bill provides that the designated owner of the seized goods must make a claim for return (which will include proscribed contact information) in order to get the seized goods back. This will stop the importer being able to avoid an action thorough the inability of the trade mark owner to contact the importer.
- The Bill allows a court to make an award of additional damages for flagrant breaches. This brings the Trade Marks Act in line with the Copyright Act.
- The Bill introduces summary offences that correspond with indictable defences in the Act. These summary defences have lower fault requirements and will attract lower penalties.
Maximum Penalties for Indictable Offences
- The Bill raises the maximum penalties for indictable offences to align them with penalties for similar offences in the Copyright Act.
Presumption of Registrability
- The Bill repeals and replaces section 41 to clarify that the presumption of registrability, as provided for under Section 33, does apply to section 41. This objective is achieved by removing the reference to the decision making process in section 41, and instead focussing on the characteristics that a mark must possess to be capable of distinguishing.
IP Australia hopes to have the Bill tabled in the June/July sittings of Parliament. Accordingly, the earliest these changes will be introduced is January 2012. Some of the detail above may change when the Regulations are released so look out for the next instalment later this year.