29 Mar 2012

Australia's trade mark laws get a mini-makeover

by Deborah Polites, Melanie Keith, Richard Hoad

Trade mark applications, opposition and enforcement will all be streamlined

Australia's trade mark system is being made more user-friendly, with the passage of the Intellectual Property Amendment (Raising the Bar) Bill on 20 March 2012 (it is currently awaiting royal assent).

The Bill makes some important changes designed to streamline and improve processes for applying for a trade mark, opposing an application, and infringement proceedings.

Presumption of registrability for marks lacking inherent distinctiveness

Under Australian law, the Registrar of Trade Marks must accept a trade mark application unless the Registrar is satisfied that there are grounds for rejecting it. This is referred to as the presumption of registrability.

The Bill clarifies the position regarding when the presumption applies. In particular, the Registrar will be directed to apply the presumption when assessing the extent to which a trade mark is adapted to distinguish the designated goods or services. This should lead to fewer trade mark applications being rejected on the basis that the examiner considers that the trade mark is not inherently distinctive.

Faster alternative to the Federal Court

The Bill confers jurisdiction on the Federal Magistrates Court to hear and determine trade mark matters. This is intended to provide a trade mark owner with a cheaper and faster alternative to the Federal Court if the value of relevant sales is not extensive and the dispute is less complex.

Opposition proceedings

The Bill makes a number of changes to the current trade mark opposition procedures to streamline and reduce complexity in the opposition process.

The Trade Marks Office (rather than the opponent) will serve the Notice of Opposition on the applicant for the trade mark. This will streamline the process of commencing an opposition and enable the Trade Marks Office to control when the Notice of Opposition is served on the applicant.

Particulars of grounds of opposition

Under the existing law, an opponent is required to state the grounds on which the opposition is based, but not to set out the particulars of those grounds. Quite often, an opponent will include all the possible grounds of opposition, regardless of whether it intends to pursue all of them.

The Bill requires that, within a month of filing the Notice of Opposition, the opponent file a statement of the grounds of the opposition and particulars of those grounds. The particulars must include material facts in support of the grounds. The amendment will make the applicant aware at a much earlier stage what the grounds of opposition will be and the basis for relying on those grounds. This will have the effect of allowing the applicant to prepare its case more economically.

Notice of intention to defend opposition

Under the Bill, the applicant must file a notice of intention to defend the opposition, otherwise the application will lapse. This change means an uncontested opposition can be resolved quickly, and the opponent will not incur unnecessary costs in preparing evidence if that evidence will not be needed.

Seizure process for counterfeit goods

The current scheme allows the Australian Customs and Border Protection Service to seize goods bearing apparently infringing trade marks (often referred to as “counterfeit” goods). However, there are loopholes that enable importers of these goods to retain them in some circumstances (for example, if infringement proceedings are not commenced within a designated time).

It is also difficult for trade mark owners to obtain the information necessary to determine if they should institute infringement proceedings.

The Bill introduces amendments to the seizure process, with the effect that:

  • Customs will be able to release multiple samples of seized goods to trade mark owner, to assist the trade mark owner to determine if the goods are counterfeit goods; and
  • Customs will be able to give information about the designated owner, importer or exporter of the goods to assist the trade mark owner to enforce its rights; and
  • designated owners will not be able to reclaim any seized goods if they make themselves uncontactable to avoid infringement proceedings.

Customs will be able to collect more information about importers of counterfeit goods and pass this on to trade mark owners, making it easier for trade mark owners to commence infringement proceedings.

Additional damages for infringement

Under the Bill, a court may now award additional damages for trade mark infringement, if it considers it appropriate to do so. This aligns the remedies for trade mark infringement with those available for flagrant infringement of patents, registered designs and copyright. This is a substantial new weapon in the armoury of a trade mark owner.


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Clayton Utz communications are intended to provide commentary and general information. They should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this communication. Persons listed may not be admitted in all States and Territories.