The Trade Marks Amendment Bill 2006, which has recently been introduced into the Senate, contains 103 proposed changes to the Trade Marks Act 1995.
Below we highlight some of the most significant amendments:
- Adding as a ground of opposition that the trade mark has been applied for in bad faith.
- Allowing an application that has been accepted on the basis of use prior to the registration of a similar mark, to be successfully opposed on the basis of earlier use of a similar trade mark.
- Allowing for an opposition to be based on prior reputation in a mark that is not deceptively similar to the opposed mark, by removing the requirement that the opponent’s mark must be substantially identical or deceptively similar.
- Allowing a mark that has been successfully opposed on the basis of wrongful acceptance due to an erroneous amendment to be re-examined rather than refused.
- Clarifying the geographical indication ground of opposition, so that it only relates to goods for which the geographical indication is relevant.
- Allowing anyone to bring an application for removal for non-use by removing the requirement that an applicant needs to be "a person aggrieved".
- Clarifying that the Registrar has discretion not to remove a mark from the Register for non-use where there has been use of that mark on closely related, or similar, goods or services.
- Allowing multiclass filings for series applications (i.e. applications for two or more very similar marks) and the amalgamation of current multiple series registrations and applications.
- Limiting the variations permissible and therefore the range of different marks that will qualify as a series.
- Allowing the amalgamation of multiple trade mark registrations that, if filed now, could be filed as multiclass applications.
- Providing that where a series of divisional applications are filed, the priority date of the original application is maintained.
- Restricting divisional applications to applications for the same mark, rather than allowing parts of marks to be the subject of a divisional application.
- Increasing the renewal period for Customs Notices from two to four years.
- Allowing trade mark owners to provide a written undertaking as security, rather than cash or documentary security. Parties who have previously provided such security will be able to obtain its return in substitution for an enforceable undertaking.
- Reducing the grace period for renewals from 12 to 6 months.
- Providing that only third party registered rights will limit the power of a registered owner to deal with their registration.
The changes to the Customs Notices requirements are welcome and will ease the administrative procedures necessary to put those Notices in place and maintain them. Changes to the non-use removal proceedings should streamline those proceedings.
Changes to the grounds of opposition should alleviate some current difficulties, and changes to allow the filing of multiclass series applications will remove the unusual restriction that previously governed such applications.
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.