Mark reg’ streamlined, protection strengthened

Significant IP law amendments coming into operation

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 and its associated regulations come into effect on Monday 15 April 2013, introducing important amendments to the legislation and regulations relating to trade marks, patents, copyright, designs and Plant Breeders Rights.

Below we discuss the key amendments to the Trade Marks Act 1995 (Act), which introduce some significant changes to the trade mark process.

Section 41 and the presumption of registrability

Section 41 of the Act deals with applications where the Registrar considers that a trade mark does not distinguish the applicant’s goods or services from those of other persons. The amendments to this section are intended to clarify that a presumption of registrability applies where the Registrar is unsure as to whether the trade mark is sufficiently distinctive.

Any doubt on the part of the Registrar will now be resolved in the applicant’s favour. Further, trade marks that are “sufficiently” inherently adapted to distinguish on their own would not fall within new section 41(3) or (4) and could not be rejected under section 41.

Section 41 has also been rearranged and the tests reformulated in the negative. Sections 41(2) and (3) replace the current sections 41(3) and (6), and now state that a trade mark is taken to be not capable of distinguishing if:

  • The trade mark is “not to any extent inherently adapted to distinguish” the designated goods or services from those of others; and
  • The applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.”

Additionally, sections 41(2) and (4) replace current sections 41(3) and (5), and now state that a trade mark is taken to be not capable of distinguishing if:

  • The trade mark is “to some extent, but not sufficiently, inherently adapted to distinguish” the designated goods or services from those of others; and
  • The trade mark does not and will not distinguish the designated goods or services as being those of the applicant, having regard to the combined effect of the following:

–   Extent of inherent adaption to distinguish

–   The use or intended use of Trade Mark by applicant

–   Any other circumstances.

These amendments, which aim to bring the section into line with the presumption of registrability already established under section 33, will greatly assist applicants in borderline cases, where the Registrar is uncertain as to the distinctiveness of a trade mark.

No longer will the applicant have to convince the Registrar that that trade mark should be accepted, rather the balance of probabilities will decide in the applicant’s favour.

Opposition proceedings

A party wanting to oppose the registration of a trade mark now has only 2 months to file a notice of intention to oppose the application after the trade mark is advertised for acceptance (reduced from 3 months).

The new section 52 of the Act introduces a prescribed form notice of opposition. Further, it will now be up to the Registrar to advise the applicant of the opposition.

An opponent will then have one month to file particularised grounds of opposition, also in approved form. If the opponent fails to do so, the Registrar can dismiss the opposition. Once filed, these grounds of opposition may only be amended in limited circumstances.

An applicant will then have one month to file notice that it intends to defend the opposition (new section 52A). If the applicant fails to do so, the trade mark will lapse (new section 54A).

Further, the timetable for the filing-of-evidence stages of opposition proceedings has been tightened up, and it will be harder to get extensions of time.

These changes should both hasten and increase certainty around the opposition process. Parties will now have to decide their approach at an earlier stage. Applicants will likely have narrower issues to respond to as a result of opponents having to particularise their grounds of opposition before filing their evidence.

And the fact that the applicant is now required to confirm early on whether it will defend the opposition means the opponent is less likely to spend time and money preparing evidence for an opposition that ultimately goes undefended.

Flagrancy damages

Under the new section 126(2) the court now has the power to award additional damages for trade mark infringement. Matters to be weighed include the flagrancy of the infringement, the need to deter similar infringements and the infringer’s post-infringement conduct.

This new power (together with increased penalties for existing indictable offences for counterfeiting, and the introduction of corresponding summary offences) increases the court’s discretion to impose a varying range of punishments, depending on the severity of the infringement or offences. The prospect of “flagrancy damages” may therefore deter serious and deliberate infringements.

Federal Magistrates Court

The Federal Magistrates Court now has the jurisdiction to deal with all trade mark matters. This includes appeals from Registrar’s decisions on acceptance, rejections, opposition, revocation and removal for non-use – all previously only handled by the Federal Court – and is in addition to the jurisdiction already vested in the Federal Court.

As a result, less complex trade mark matters will be able to be resolved more quickly and cheaply in the Federal Magistrates Court, as opposed to running a trial in the Federal Court.

Customs seizure powers

The amendments to the Act simplify the seizure process for the Australian Customs and Border Protection Service (Customs) and expand its powers.

Previously Customs could only seize and hold imported goods that potentially infringed registered trade marks if the trade mark owner (Objector) had lodged a notice of objection. Now, however:

  • Customs has new powers to give the Objector information about the imported goods, their importer, and the foreign supplier/exporter;
  • An Australian importer of seized goods wanting to reclaim them must submit a “claim for return” notice to Customs. The Objector may then contact the importer and take legal proceedings. The seized goods will be released only if the Objector consents or does not institute proceedings, or a court ultimately holds that the seized goods are not infringing;
  • The Objector can inspect or take samples of the seized goods, enabling a more accurate determination as to whether the goods do infringe; and
  • Seized goods can be forfeited to the Commonwealth, and Customs can dispose of them, if an importer does not, within specified timeframes, “claim for return” or collect the seized goods.

These changes strengthen trade mark enforcement mechanisms and protection, and are likely to lead to a larger volume of counterfeit goods being seized and destroyed, much more cost effectively.

For more information, please contact:
Sandy Donaldson

Sandy Donaldson
p.  +61 8 8124 1954
e.  Email me

This communication provides general information which is current as at the time of production. The information contained in this communication does not constitute advice and should not be relied upon as such. Professional advice should be sought prior to any action being taken in reliance on any of the information. Should you wish to discuss any matter raised in this article, or what it means for you, your business or your clients' businesses, please feel free to contact us.

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