Trade Marks Act changes
Changes made by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 relevant to the Trade Marks Act 1995
Schedule 1 - Raising the quality of granted Patents
Schedule 1 is not applicable to the Trade Marks Act 1995.
Schedule 2 - Free access to Patented inventions for regulatory approvals and research
Schedule 2 is not applicable to the Trade Marks Act 1995.
Schedule 3 - Reducing delays in resolution of Patent and Trade Mark applications
| Change | Description |
|---|---|
| Trade Marks oppositions - Notice of Opposition and Statement of Grounds & Particulars | Section 52 - allows for the Trade Marks Regulations 1995 to prescribe additional requirements for the commencement of opposition proceedings. The changes remove the requirement that the opponent serves a Notice of Opposition on the Trade Mark applicant. The opponent will file the Notice of Opposition with the Trade Marks Office, which will send a copy of the notice to the applicant. The Trade Marks Regulations 1995 will specify that an opponent is required to file a statement of grounds and particulars, on which they intend to oppose the Trade Mark application. The particulars will describe the material facts and must be filed within 1 month of filing the Notice of Opposition. Section 54 - provides the Registrar with the power to dismiss an opposition proceeding in prescribed circumstances. The Trade Marks Regulations 1995 will specify that the power to dismiss exists where an opponent does not comply with their obligation to file a statement of grounds and particulars. Section 66 - provides that the general amendment power conferred by section 66 does not apply to notices of opposition. The notice of opposition and statement of grounds and particular will a prescribed document under section 52. The Regulations will only permit amendment of these documents under tightly controlled circumstances. This will ensure that complete information relevant to the opposition proceedings is provided early. Section 96 - amends the provisions relating to filing of notices of opposition to allow for Regulations to prescribe the manner, form and timing of filing a notice of opposition. The changes only apply to oppositions before the Registrar. Oppositions before a court will continue to follow existing court procedures and court rules. The changes will align the processes for opposing the removal of a Trade Mark with the processes for opposing an application to register a Trade Mark under section 52. |
| Trade Marks oppositions - Notice of Intention to Defend & the lapsing of Trade Marks applications | Section 52A - introduces a new requirement for trade marks applicants to file a notice stating their intention to defend their application in the opposition proceedings. The penalty for not filing a notice will be the application lapsing under new section 54A. This allows an uncontested opposition to be resolved sooner. Section 54A - allows for the lapsing of Trade Marks application where a Trade Marks applicant fails to file a notice of intention to defend under new section 52A. If an applicant inadvertently fails to file a notice of intention to defend, they will be able to seek an extension of time to file that notice under the Trade Marks Regulations 1995. Section 55 - consequential amendment to ensure that 'lapsed' applications, under new section 54A, are treated in the same way as discontinued or dismissed applications. Section 68 - clarifies that the Registrar is obliged to register a Trade Mark application where the opposition has been dismissed under section 54. Also inserts a 'note' that an opposed application will lapse where a notice of intention to defend is not filed. Section 11 - consequential amendment to include reference to 'lapsing' under new section 54A. |
| Trade Marks oppositions - Non-use & removal of a Trade Mark from the Register | Section 99A - provides the Registrar with the power to dismiss an opposition to a non-use application in prescribed circumstances. The Trade Marks Regulations 1995 will specify that the power to dismiss exists where an opponent does not comply with their obligation to file a statement of grounds and particulars. Section 97 - consequential amendment clarifying that the Registrar must remove a Trade Mark from the Register of Trade Marks if an opposition to an application to remove the Trade Mark from the Register for non-use has been dismissed under section 99A. |
| Regulation making powers | Section 231 - introduces a new broader power to make regulations in respect of opposition proceedings, which is consistent with the current opposition regulations making power in the Patents Act 1990. |
| Application provisions | The changes to Trade Mark oppositions proceedings relate to oppositions commenced on or after commencement. |
Schedule 4 - Assisting the operations of the IP profession
| Change | Description |
|---|---|
| Registration of Trade Marks attorneys - for individuals & companies | Section 228A - introduces provisions for a company to be registered as a Trade Marks attorney. This will give greater flexibility to Trade Marks attorneys by allowing them to practise through a corporate structure. The Trade Marks Regulations 1995 will specify additional registration requirements for both individual and incorporated Trade Marks attorneys. A key requirement for a company registered as a Trade Marks attorney is that a director of the company must be a registered Trade Marks attorney. Consequential changes are also made to ensure that certain registration requirements for individuals will continue to only apply to natural persons. |
| Client-attorney privilege | Section 229 - allows for the client-attorney privilege to cover communications between clients and foreign intellectual property professionals who are authorised to perform work similar to the work done by their Australian counterparts. |
| Disclosure of information to the Australian Securities and Investment Commission (ASIC) | Section 229A - allows the Designated Manager to provide information about incorporated Trade Marks attorneys to ASIC. The information must be relevant to the functions of ASIC, such as allegations of fraud on the part of the incorporated Trade Marks attorney or company. |
| Offences & sanctions under the Trade Marks Act 1995 | Section 156 - permits a company to use the title 'Trade Marks attorney', if it is a registered incorporated Trade Marks attorney. Similarly, incorporated Trade Marks or Patent attorneys and incorporated legal practices will be permitted to use the title 'Trade Marks agent'. However, it will continue to be an offence for any other company to use these titles. The existing offence provisions for individuals and partnerships have been re-structured to make them clearer. Section 157 - introduces sanctions for incorporated Trade Marks attorneys that fail to meet their registration requirements to have a registered Trade Marks attorney director. It is intended to prevent the provision of Trade Marks services where no qualified attorney is in charge. The scheme also provides powers for the Designated Manager to appoint a Trade Marks attorney director to an incorporated Trade Marks attorney, where the company has lost its Trade Marks attorney director in unforseen circumstances. |
| Assessing the conduct of Trade Marks attorneys | Section 231 - clarifies that registered Trade Marks attorneys are legally bound by professional standards set by the Professional Standards Board for Patent and Trade Marks Attorneys (PSB). The Trade Marks Regulations 1991 will refer to the required professional standards as a Code of Conduct, which may be updated from time to time. |
| Updating defined phrases | Readers Guide - inserts a number of phrases to the list of definitions. These phrases are necessary for the changes to the Trade Marks Act 1995 that are mentioned above. Section 6 - inserts definitions for the new phrases listed in section 3. The new definitions are for: 'company', 'Designated Manager', 'incorporated legal practice', 'incorporated Trade Marks attorney', 'intellectual property advice', 'Professional Standards Board', 'Trade Marks attorney director' and 'Trade Marks work'. Section 228A - repeals definitions of phrases that have now been included in section 6. |
Schedule 5 - Improving mechanisms for Trade Mark and Copyright enforcement
| Change | Description |
|---|---|
| Notice of Seizure and Claim for Release of Goods | Section 134 - allows Customs to give a Trade Mark owner (objector), who lodges a Notice of Objection about imported goods, contact and other relevant information about the Australian importer (designated owner) and foreign supplier or exporter of the goods. Sections 136 to 136E - revises the scheme for dealing with goods seized under a Notice of Objection. A designated owner who wants the seized goods back must make a 'claim for return' to Customs. The Trade Marks Regulations 1995 will specify that the claim for return will include information which would enable an objector to contact the designated owner and instigate legal proceedings for infringement. The seized goods will only be released to the designated owner if the objector consents, or does not institute legal proceedings, or a court finds that the seized goods are not infringing. Section 137 - consequential amendments to align the section with the revised 'claim for return' scheme. |
| Inspection of seized goods | Section 134A - allows Customs to permit the objector to inspect or remove multiple samples of the seized goods. This is to provide a representative sample of the goods in question and allow the parties to make a more accurate determination as to whether the consignment contains infringing goods. |
| Forfeit & disposal of seized goods | Section 136A - provides that where no claim for release is made by the designated owner of the seized goods, under section 136, then the goods are forfeited to the Commonwealth. Section 136E - provides that where a designated owner makes a claim for release but fails to collect the goods within 90 days, then the goods are forfeited to the Commonwealth. This ensures that Customs is not required to store goods indefinitely. Section 139 - allows Customs to deal with forfeited goods by disposing of them and ensures that designated owners of non-infringing goods can be compensated if their goods are disposed of by Customs. Introduces a 30 day holding period before forfeited goods can be disposed of. This time period ensures that designated owners of seized goods have adequate time in which to make a claim for their goods. |
| Trade Marks Offences & additional damages for Trade Mark infringement | Sections 145 to 149 - increase the penalties for existing indictable offences and re-structure the elements of the existing offence provisions to make them clearer. Introduces new corresponding summary offences after each indictable offence. Summary offences have lower fault elements and lower penalties. Section 126 - provides the court with the discretion to award additional damages in infringement proceedings. Consistent with the approach in the Patents Act 1990, there is a list of specific factors to assist the courts as to when it may be appropriate to award additional damages. |
| Updating defined phrases | Readers Guide - inserts a number of phrases to the list of definitions. These phrases are necessary for the changes to the Trade Marks Act 1995 that are mentioned above. Section 6 - inserts definitions for the new phrases listed in section 6. The new definitions are for: 'action period', 'claim period' and 'personal information'. |
Schedule 6 - Simplifying the IP system
| Change | Description |
|---|---|
| Presumption of registrability | Section 41 - clarifies that the presumption of registrability, as provided for in section 33, applies to section 41. Changes restructure the existing provisions to place the focus on the characteristics that a mark must possess for it to be capable of distinguishing goods or services. If the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant's favour. The amendments are not intended to alter the concepts of 'inherently adapted to distinguish', 'capable of distinguishing' and 'does or will distinguish'. |
| Jurisdiction of the courts | Sections 35, 56, 67, 83, 83A, 83D, 104, 190 to 197 - provide the Federal Magistrates' Court with the jurisdiction to hear and decide Trade Marks matters. |
| Trade Marks Office & sub-offices | Sections 199, 213 and 223 - remove the requirement that there must be a sub-office of the Trade Marks Office in each State. This provides flexibility to the Registrar to discontinue sub-offices in the future when e-business channels are sufficiently reliable and having sub-offices becomes redundant. Changes also clarify that 'prescribed means' is not limited to filing only at a sub-office but applies more generally and includes filing at the Trade Marks Office. Section 27 - consequential amendment which clarifies that there need not necessarily be sub-offices. |
| Updating defined phrases Removal of Treaty text & list of convention countries | Section 6 - revises the definition of 'convention country' and removes the requirement that countries be individually listed in the Trade Marks Regulations 1995. Instead the Trade Marks Regulations 1995 will refer to internet addresses where authoritative lists of convention countries may be sourced. Section 225 - consequential repeal due to change in definition of 'convention country' in section 6. |
More Information
- Consultation papers for IP reforms
- Consultation papers for IP regulations
- Patents Act changes
- Designs Act changes
- Plant Breeder's Rights Act changes
- Copyright Act changes
Last Updated: 18/1/2013
