By Ken Hamilton and Amanda Caldwell
The Intellectual Property Laws Amendment (Raising the Bar) Bill received Royal Assent from the Governor General on 15 April 2012.
The amendments relating to the Trade Marks Act 1995 will come into effect on 15 April 2013. The changes will apply primarily to:
- Section 41 has been re-drafted in an attempt to clarify that a presumption of registrability applies to distinctiveness objections raised under this section. A trade mark will now be deemed to be distinctive unless one of the exceptions listed in the section applies. The rewording of the section may have no practical effect.
- An applicant will be required to file a Notice of Intention to Defend an opposition to registration
- An opposed application will lapse if a Notice of Intention to Defend an opposition is not filed
- An extension of time will be available to file the Notice of Intention to Defend
- New Section 231(3) will allow the Trade Mark Regulations to be amended to prescribe matters relating to trade mark oppositions including:
- Rules about filing and serving documents in an opposition;
- rules about the amendment of documents filed in an opposition;
- the circumstances in which the Registrar may dismiss an opposition under the new Section 99A; and
- provision for review by the Administrative Appeals Tribunal of decisions of the Registrar made under the regulations.
- A decision of a delegate of the Registrar in opposition proceedings may be appealed to the Federal Magistrate's Court.
- Infringement of registered trade marks
- Section 126 has been amended to allow for the award of additional damages in trade mark infringement matters taking into account matters including:
- The flagrancy of the infringement;
- the need to deter similar infringements of registered trade marks; and
- the conduct of the party that infringed the registered trade mark that occurred.
- Changes to Customs Procedures
- Customs must give the trade mark proprietor a written notice identifying the goods seized, and may also provide information about the owner of the seized goods
- Customs may permit the trade mark proprietor to inspect the seized goods
- The owner of the seized goods may make a claim for the release of the seized goods before the end of the claim period
- The Customs CEO has the discretion to accept a late claim for release of the seized goods
- Customs must give trade mark proprietor notice of a claim to release seized goods
- Seized goods are forfeited to the Commonwealth if a claim for release is not made within the claim period, or if the goods are released by customs but the owner does not take possession of the goods within 90 days of release
- The penalties for offences relating to misuse of trade marks, including falsifying or removing registered trade marks, falsely applying registered trade marks, and possessing or selling goods with false trade marks, have been increased.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.