Australia’s Raising the Bar reforms: changes to trade mark registrations, oppositions and enforcemen
On 15 April 2012, the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 ("Amending Act") received Royal assent. The legislation, which takes effect on 16 April 2013, constitutes the most significant amendment to intellectual property laws in Australia for nearly 20 years.
This article summarises the changes arising from the Amending Act to the trade mark registration, opposition and enforcement procedures. The Amending Act also amended Australian patent legislation.
Much of the detail, particularly with respect to the changes to the opposition processes, will appear in amendments to the Trade Marks Regulations 1995 ("the Regulations") which are yet to be drafted. These are expected to be released in draft form in the third quarter of 2012. We will provide a detailed analysis as soon as these are published, but note that many of the changes have been foreshadowed in the Explanatory Memorandum ("EM") to the Amending Act.
The major changes are outlined in turn below:
Oppositions and removal proceedings
The changes to the opposition proceedings have been mirrored as appropriate into the provisions relating to non-use removal proceedings. Accordingly, the comments on the specific changes apply to both types of proceedings.
The new opposition period is intended to be shortened from 3 to 2 months.
Notice of Opposition and Statement of Grounds and Particulars (“SGP”)
The Notice of Opposition will no longer need to be served on the Applicant / Owner, but merely filed with the Trade Marks Office who will forward a copy of the Notice to the Applicant / Removal Applicant. The Notice is likely to be a simple form stating that a party opposes registration or removal of a trade mark.
The EM states that 1 month after filing the Notice of Opposition, the Opponent must lodge a SGP detailing each ground of opposition and the material facts on which the Opponent intends to rely. 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. According to the EM, this is intended to be a "tick box" type document, with no associated official fee. Failure to file the Notice will result in the trade mark application lapsing in opposition proceedings. It is not presently clear if a Notice of Intention to Defend will need to be lodged in removal proceedings.
Dismissal of oppositions
The Amending Act introduces power to make Regulations to prescribe circumstances in which an opposition may be dismissed. It is likely that failure by the Opponent to meet critical deadlines, such as lodging the SGP will lead to dismissal of the opposition.
Amendment of Notice of Opposition or SGP
Amendments to the new Notice of Opposition and SGP are intended to be tightly controlled. It is not presently clear as to the circumstances in which they will be able to be amended, but this is presumably only where grounds of opposition and/or related facts have subsequently come to the opponent's attention, or to correct obvious errors.
General regulation making power
The Amending Act includes a broad power for the Trade Marks Office to make Regulations to further change aspects of the operation of opposition and removal proceedings, including in relation to:
- serving and filing opposition documents;
- amendment to opposition documents;
- dismissal of an opposition; and
- provision for review by the Administrative Appeals Tribunal of decisions of the Registrar.
Periods for lodging evidence
It is intended that the Regulations will reduce the time-frames for the parties to prepare and serve their evidence. The new time frame is likely to be 3 months to lodge evidence-in-support or evidence-in-answer. If further time is required, then the relevant party must seek a direction from the Registrar to extend the deadline. It is not presently clear as to the circumstances in which an extension will be granted. The period for lodging evidence-in-reply is to be reduced from 3 to 2 months.
The Regulations are intended to formally provide for a 6 month cooling off period with the consent of the parties, extendable to 12 months.
Extension of privilege and incorporated trade marks attorneys
The Amending Act has expanded attorney/client professional privilege to accord with the privilege afforded to lawyers, thereby extending rights of privilege to cover communications with overseas attorneys.
It will also be possible for a company to be registered as a trade marks attorney provided the company has at least one trade marks attorney as a Director, has given notice of its intention to act as a trade marks attorney and meets any other prescribed requirements. A series of offences and penalties have been created in relation to false representations by companies that they are a trade marks attorney.
New Customs seizure provisions
The Amendment Act brings customs seizure provisions in the Copyright and Trade Marks Acts substantially into accord and significantly strengthens the position of rights holders.
A trade mark owner will have the ability to access multiple samples of seized goods and to remove such goods for inspection. Further, the importer of the goods must now make a claim for return (which will include providing prescribed information) in order to have the seized goods returned or, otherwise, the goods will be forfeited to the Commonwealth which will have the power to dispose of the goods. This will prevent the importer being able to avoid action thorough the inability of the trade mark owner to contact the importer.
The Trade Marks Act will include provisions for additional damages in infringement proceedings, bringing the Trade Marks Act into line with the Copyright Act. Additional damages are determined with regard to:
- the flagrancy of the infringement;
- the need to deter similar infringements;
- the conduct of the infringing party after the act constituting the infringement or after the infringer was informed of the alleged infringement;
- any benefit which accrued to the infringer as a result of the infringement; and
- any other relevant matter.
The Amending Act introduces summary offences that correspond with the indictable offences in the Trade Marks Act. These summary offences have the lower fault element of negligence and the lower maximum penalty of 12 months imprisonment and/or 60 penalty units.
Increased maximum penalties for indictable offences
The maximum penalties for indictable offences will be increased to a maximum of five years imprisonment and 550 penalty units, which aligns them with penalties for similar offences in the Copyright Act. The fault element is not mentioned in the section and, therefore, the default fault elements in Division 5.6 of the Criminal Code Act 1995 of intention or recklessness apply as appropriate.
Expanded jurisdiction of the Federal Magistrates Court
The Federal Magistrate's Court will have jurisdiction to hear matters arising under the Trade Marks Act including appeals from oppositions. This is to give effect to the recommendations of the Advisory Council of Intellectual Property.1
Presumption of registrability
The Amendment Act repeals and replaces section 41 to clarify that the presumption of registrability, as provided for under Section 33, does apply to section 41. Section 41 is no longer expressed by reference to the decision making process, but instead focuses on the characteristics that a mark must possess to be capable of distinguishing.
- ACIP, Should the jurisdiction of the Federal Magistrates Service be extended to include patent, trade mark and design matters?, 2003 (available at www.acip.gov.au) p 6