08 Nov 2012

Raising the bar - Changes to the Trade Marks Act 1995

by Mary Still, Brett Doyle, Kate McElhone

The amendments to the Trade Marks Act 1995 should result in improvements in a number of areas of trade mark practice by streamlining processes, reducing delays and generally benefit trade mark owners.

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) makes significant changes to intellectual property law.

Amendments including those to the Trade Marks Act 1995 will come into effect on 15 April 2013.

The amendments aim to reduce delays in the trade mark process particularly in opposition proceedings. Other changes include clarifying the presumption of registrability, alterations to the customs seizure process, additional damages for infringement and increases in the penalties for misuse of trade marks.

We look at the main changes below.

Presumption of registrability

A new section 41 is intended to clarify that a presumption of registrability applies to a trade mark when it is being examined by the Registrar of Trade Marks. This means that the Registrar must accept a trade mark application unless there are grounds to reject it.

The intention is that if the Registrar is unsure whether a trade mark is capable of distinguishing, any doubt should be resolved in the Applicant's favour. This change will overcome some Federal Court decisions that held that the presumption in favour of the Applicant did not apply to all sections of the Act.

The new section should make it easier for Applicants to have their trade mark applications accepted.

Opposition process

Major changes to the opposition process aim to speed up the process and reduce opportunities for delay when someone opposes the registration of a trade mark after it has cleared the examination stage in the Trade Marks Office or when the trade mark owner opposes removal of its mark for alleged non-use. These changes include:

  • The opposition period shortened from three to two months following advertisement in the Official Journal of Trade Marks. This is a significant departure from long-established practice.
  • The “required form” of the Notice of Opposition will be simplified.
  • There is a new requirement for a Statement of Grounds and Particulars to be lodged within one month of filing the Notice of Opposition. The Statement must specify the exact grounds to be relied on in the opposition and include material facts in support of the grounds. It will be difficult to amend the Statement once it is filed.
  • The Opponent will no longer need to serve the Applicant with the Notice of Opposition. The Trade Marks Office will provide a copy to the Applicant.
  • To defend an opposition, the Applicant must file a Notice of Intention to Defend within one month of service of the Statement of Grounds and Particulars.
  • A new section 231(3) will allow for amendments to the Trade Mark Regulations to deal with Opposition matters including the filing and serving of documents and extensions of time. Tighter rules and regulations are expected to limit the number of allowable extensions for filing and serving evidence in oppositions.

Punitive damages for infringement

A new section 126(2) will allow a court to award additional (punitive) damages for trade mark infringement. Factors to be taken into account include, but are not limited to, the flagrancy of the infringement, the need to deter similar infringements of registered trade marks and the conduct of the infringer. A range of summary offences will be introduced for less serious matters.

Greater penalties for trade mark infringement

Penalties for indictable and summary trade mark offences will be increased. The offences include falsifying or removing registered trade marks, falsely applying a registered trade mark and possessing or disposing of goods bearing false trade marks. For indictable offences, the maximum penalties will increase to five years' imprisonment and fines of up to $60,500 for an individual and $302,500 for a corporation.

More matters to the Federal Magistrates Court

The Federal Magistrates Court will be given jurisdiction to deal with all trade mark matters including appeals from Registrar's decisions on acceptance, rejection, opposition, amendment, revocation and removal for non-use. Currently such appeals are handled by the Federal Court of Australia.

This will allow trade mark owners the option of a court where in some instances proceedings are resolved more quickly and more cheaply.

Customs seizures process simplified

The Act simplifies the customs seizure process.

When allegedly counterfeit goods are seized, the Australian Customs Service will have to give the trade mark owner details of the seized goods and may provide details of the owner of the seized goods or anyone involved in their importation.

The Customs Service will be able to release seized goods to trade mark owners to determine if the goods are counterfeit.

The onus will be on the importer to make a claim for the seized goods within a specified time and if no claim is made the goods will be forfeited and destroyed.

In making a claim for forfeited goods the importer will have to provide contact details making it easier for trade mark owners to enforce their rights.

These changes are likely to lead to a larger volume of counterfeit goods being seized and destroyed; and much more cost effectively than under present arrangements.

Privilege and foreign trade mark attorneys

Privilege will be extended to client communications between foreign trade mark attorneys who are not also lawyers. Currently privilege extends only to Australian non-lawyer trade mark attorneys.


The amendments to the Trade Marks Act 1995 should result in improvements in a number of areas of trade mark practice by streamlining processes, reducing delays and generally benefit trade mark owners.

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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.