Changes to Australian trade mark law take effect from 15 April 2013
The changes to Australian trade mark law arising from the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 take effect from 15 April 2013. The Regulations implementing these changes have been finalised and detailed information is available from the IP Australia website at http://www.ipaustralia.gov.au/ .
The more significant changes are briefly summarized below:
Trade mark applications entitled to presumption of registrability
This amendment is intended to make it clear there is a presumption in favour of registration at the time of considering a trade mark’s capacity to distinguish. An objection should only be raised if the Registrar is satisfied, on the balance of probabilities, there is a ground for rejecting an application. This change is unlikely to have a material impact on current practice, but may assist in a borderline case.
Changes to trade mark opposition procedures
Oppositions filed on or after 15 April 2013 are regulated under an entirely new regime designed to expedite the opposition process. This applies to oppositions to applications for registration and oppositions to non-use removal applications. The Registrar will also be given power to give directions to streamline the resolution of procedural oppositions to amendments and extensions.
The opposition period is reduced from 3 to 2 months and the Notice of Opposition is in two parts, namely a (i) Notice of Intention to Oppose and (ii) Statement of Grounds and Particulars. An opponent will need to clearly specify the grounds being relied upon and the material facts to support those grounds. There will be limited opportunity to amend these documents.
An applicant will need to file a Notice of Intention to Defend. Otherwise the trade mark application will lapse or the non-use removal application will fail.
The time for filing the opponent’s evidence in support and the applicant’s evidence in answer remains at 3 months, but the time for filing the opponent’s evidence in reply is reduced from 3 to 2 months. There is no longer any opportunity to file further evidence.
Extensions are available, but they will be tightly controlled.
If the parties wish to negotiate, they may request a cooling off period for an initial 6 months with provision to extend this by a further 6 months. Once the maximum cooling off period of 12 months has expired, the opposition proceedings are to resume. Extensions based on negotiations are no longer available.
The Registrar has a discretion to conduct hearings orally or by written submissions. The parties are required to file an outline of their submissions before the hearing.
There are transitional provisions for oppositions already underway before 15 April 2013. Significantly, the new tighter extension requirements will gradually apply to these cases.
Changes to Customs and Border Protection
Owners of registered trade marks who lodge a Notice of Objection permitting Customs to seize potentially infringing goods will be able to obtain more information before deciding whether or not to commence court proceedings. Significantly, the importer of the seized goods must make a claim for their return, or they will be forfeited to the Commonwealth. This claim process is to assist the trade mark owner obtain information about the importer and exporter.
Incorporation of patent and trade mark attorneys
Patent and trade mark attorneys may conduct their business under a company structure. This brings them into line with incorporated legal practices. A director of such a company must also be a registered patent and/or trade mark attorney and there is a requirement to have professional indemnity insurance.
Patent and trade mark attorneys will also have the benefit of privilege equivalent to a lawyer attaching to communications and documents made for the dominant purpose of providing intellectual property advice to clients. This privilege will also extend to foreign professionals authorised to provide such advice.
Other changes include increased penalties for indictable offences and Courts will have discretion to award additional damages for flagrant trade mark infringement.
The Federal Circuit Court is also given jurisdiction to hear certain trade mark matters.