IP Reform - Trade mark examination changes
12 Apr 2013
The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 comes into full effect on 15 April 2013. One of the areas that will see change is section 41 of the Trade Marks Act 1995. The Act repeals section 41 of the Trade Marks Act 1995 and substitutes it with a new section 41. The information below has been developed to help you to understand the changes and how they may affect the way you do business with us.
WHY HAS SECTION 41 BEEN CHANGED?
The new section 41 clarifies that the presumption of registrability, as provided for in section 33 of the Trade Marks Act 1995, does apply to section 41.
This intention is given effect by removing the reference to the step-by-step decision-making process and by framing the criteria for a trade mark's capacity to distinguish in the negative. The new section 41 focuses on the circumstances in which a trade mark is taken not to be capable of distinguishing.
To raise a ground for rejection under section 41, a Trade Mark Examiner must be satisfied on the balance of probabilities that the ground for rejection exists.
THE NEW SECTION 41
The new subsection 41(1) states that an application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's designated goods or services from the goods or services of other persons.
A trade mark is not capable of distinguishing if either subsection (3) or (4) applies. Trade marks that are prima facie capable of distinguishing will not fall under the new subsection (3) or (4).
Trade marks that are not to any extent inherently adapted to distinguish the designated goods or services will be rejected under the new subsection 41(3) if the applicant has not used the trade mark before the filing date, to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
Trade marks that are to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services will be rejected under the new subsection 41(4) if the trade mark does not and will not distinguish the designated goods or services with regard to the combined effect of:
- the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
- the applicant's use or intended use of the trade mark;
- any other circumstances.
WHEN DOES THE NEW SECTION 41 APPLY?
The new section 41 will apply to trade mark applications with a filing date on or after 15 April 2013.
The repealed provisions continue to apply to trade mark applications with a filing date before 15 April 2013.
WILL ENDORSEMENTS BE APPLIED IN RELATION TO THE NEW SECTION 41?
Currently, an endorsement is entered on the Register when a trade mark application is accepted on the basis of evidence of use, intended use and or any other circumstances.
This practice will apply in relation to the new section 41. Where a section 41(3) or 41(4) ground for rejection has been overcome by providing evidence and/or any other circumstances, one of the following endorsements will be used:
- Evidence provided under subsection 41(3); or
- Evidence and/or other circumstances provided under subsection 41(4).
Last Updated: 12/4/2013
