Summary of recent amendments to the Trade Marks Act 1995 (Cth)

Summary of recent amendments to the Trade Marks Act 1995 (Cth)

Summary of recent amendments to the Trade Marks Act 1995 (Cth)

The Trade Marks Amendments Act 2006 (Cth) and Intellectual Property Laws Amendment Act 2006 (Cth) have introduced significant changes to the Trade Marks Act 1995 (Cth). The main changes are outlined below.

Filing

Multi-class series applications are now allowable (section 51A and 82A). The effective date of this change is 27 March 2007. The requirements for series trade marks are clarified so that only minor and obvious variations are allowable. In addition to the requirement that the marks must resemble each other in material particulars, the only acceptable variations are:

  • statements or representations as to the goods or services being claimed.
  • statements or representations as to the number, price, quality or names of places.
  • the colour of any part of the trade mark.

Series applications and registrations filed prior to 27 March 2007 may be linked. Two or more series applications or registrations filed in respect of single classes prior to 27 March 2007 may be linked to form single multi-class applications or registrations.

Incorporated associations can now own collective trade marks (section 6). The effective date of this change is 27 March 2007.

A divisional application of a divisional application can now maintain the filing date of the original parent application (section 60). The effective date of this change is 27 March 2007. The definition of “filing date” is amended to allow the most recent application in “chain” of divisionals to receive the filing date of the oldest trade mark in the chain. The new provision set out the conditions that have to be met in order to file a valid divisional application. These are:

  • the trade marks must be the same
  • the divisional application must be made while the parent application is pending
  • the parent application may itself be a divisional application
  • the applicant must specify the goods and services which the divisional application relates
  • the application must specify the goods and services to remain in the parent application
  • the Registrar must amend the goods or services of the parent application, unless it has already lapsed (after the divisional application was filed).

Trade Mark Oppositions

An application may now be opposed on the ground that the application was made in bad faith (section 62A). This is likely to assist in particular with spill over reputation type cases. The effective date of this change is 23 October 2006.

A trade mark accepted under the prior continuous use pro visions can now be opposed by the owner of a prior registered trade mark which has been used prior to the applicant’s first use date (section 58A). The effective date of this change is 23 October 2006.

The requirements for an opposition based on a trade mark with a reputation in Australia have been made less restrictive by removing the requirement that the opposed mark must be substantially identical with or deceptively to the trade mark with the reputation in Australia (section 60). The effective date of this change is 23 October 2006.

An opposition based on geographical indication has been clarified so that it only applies where the goods specified in the opposed mark are similar to those covered by the geographical indication or, where the goods are different, would otherwise be likely to deceive or cause confusion (section 61(1)). The effective date of this change is 23 October 2006.

Non use removal actions

The requirement that an applicant in a non use removal action be an “aggrieved person” has been removed. Anybody can now apply to remove a trade mark for non-use (section 92). The effective date of this change is 23 October 2006.

Revocation of Acceptance

Previously under the Trade Marks Act 1995 (Cth), acceptance of a trade mark application could only be revoked if the Registrar is satisfied that either:

  • an error or omission occurred during examination; or
  • special circumstances exist.

Now the Registrar may revoke acceptance of an application if the Registrar is satisfied:

  • the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew of their existence); and
  • it is reasonable to revoke the acceptance, taking account of all of the circumstances.

The effective date of this change is 27 March 2007.

Revocation of registration

Previously under the Act, only the Federal Court had the power to order the cancellation of a trade mark registration. Now the Registrar has the power to revoke a trade mark registration for up to twelve (12) months post registration. The effective date of this change is 27 March 2007.

The circumstances in which the Registrar could revoke registration are twofold:

  1. The Registrar must revoke a registration if an opposition was filed or an application to extend the deadline for filing an opposition was filed and the Registrar failed to take account of the opposition or application being filed.
  2. The Registrar may revoke a registration upon application by a third party. In this case, a trade mark registration may be revoked if the Registrar is satisfied that:

    • the trade mark should not have been registered, taking into account all of the circumstances that existed when the trade mark became registered (whether or not the Registrar knew of their existence); and
    • it is reasonable to revoke registration, taking into account all of the circumstances.

The circumstances to be taken into account include:

  • errors (including errors of judgement) leading to registration;
  • Australia’s obligations under International agreements;
  • special circumstances;
  • use of the trade mark;
  • legal proceedings relevant to the trade mark;
  • other action in relation to the trade mark.

A practical consequence is that a trade mark registration is therefore vulnerable to revocation for at least twelve (12) months post registration. Also, a third party seeking revocation can now apply both directly to the Federal Court and to the Registrar.

Change to the Renewal Grace Period

The grace period for renewing a trade mark after the renewal date has been reduced from twelve (12) months to six (6) months (sections 78, 79 and subsection (128(1)). The effective date of this change is 27 March 2007.

Access to documents

Previously all documents lodged with the Australian Trade Marks Office could only be released for public inspection upon an application filed pursuant to the Freedom of Information Act (Cth). The person who lodged the documents the subject of the request has the opportunity to object to the release on certain grounds.

Now “prescribed” documents are available for public inspection. A document will be “prescribed” unless the Registrar requires to document to be held confidentially. The effective date of this change is 27 March 2007. The Trade Marks Office has issued a Notice stating the Registrar will accept in confidence the following types of documents:

  • Documents that solely contain evidence of use of a trade mark or proposed use of a trade mark.
  • Declarations accompanying requests for extensions of time.
  • Declarations accompanying requested for expedited examination.
  • All opposition documents filed in the course of opposition proceedings except for notices of opposition.
  • Documents and information that are not held in confidence will be available to parties upon request and payment of a fee. The Trade Marks Office has indicated that documents and information not held in confidence will include:

    • Applications for registration.
    • Responses to examination reports.
    • Assignment documents.
    • Notice of opposition.
    • Applications for expedited examination.
    • Applications for extensions of time.
    • Names and address of trade mark applicants.
    • Names and business addresses of Declarants.
    • Details of a Declarant’s office of position, or length of service within a firm, company or business.
    • Declarant’s signatures.
    • Details of witnesses to a Declaration.
    • Examples of past marketing activities that have been made publicly known, for example newspaper or Internet advertisements.
    • The year or years in which goods or services were sold or advertised under the trade mark.

Custom Seizure Provisions

The Customs Seizure provisions under the Australian Trade Marks Act 1995 (Cth) allow Customs to seize and deal with infringing goods or apparently infringing goods when the trade mark owner has filed a Notice of Objection. Before the amendments to the Trade Marks Act, it was necessary to lodge security of AU$10,000 with Customs when lodging your Notice of Objection. The security was intended to repay any expenses incurred by Customs as a result of seizing counterfeit goods. Customs could refuse to seize the infringing goods if the security had not been provided. The requirement to lodge AU$10,000 security meant that some trade mark owners were unable to take advantage of the Customs Seizure provisions.

Notices of Objection lodged after 27 March, 2007 can now be lodged with a written undertaking to repay any expenses incurred as a result of seizures of counterfeit goods. There is a transitional provision to deal with Notices of Objection already in place prior to the amendments where security has been lodged. In those circumstances, where the trade mark owner subsequently provides a written undertaking to Customs the trade mark owner can make a written application to have the security paid refunded or the balance of the security paid refunded (if some of the amount has already been used toward Customs’ expenses in seizing counterfeit goods) (section 90 of the Trade Marks Amendment Act).

The period that a Notice of Objection will now be in force has been extended to four years from the date of acceptance (previously the Notice was only valid for two (2) years). The effective date of this change is 23 October 2006.