Author
Geoff Adams  
Senior Associate (Pro Bono & Community Programs)

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Natalie Hickey  
Partner
T +61 3 9643 4156

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Sydney
Scott Bouvier  
  Maurice Gonsalves  
  Kim O'Connell  
  Katrina Rathie  
 

Melbourne
Robert Cooper  
  Cheng Lim  
  Wayne McMaster  
 

Brisbane
John Swinson  
 

Canberra
Adam Bartlett  
 

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Yesterday the Australian Parliament passed the Intellectual Property Laws Amendment Bill 2006. The Bill amends several pieces of intellectual property legislation, with some major changes to the Trade Marks Act 1995.

Key changes to the Trade Marks Act under the Intellectual Property Laws Amendment Bill

Revocation after registration

Previously, if a trade mark was registered in error, the Trade Marks Act did not have a simple and inexpensive administrative remedy. You had to go to court. Under the amendments, the Registrar of Trade Marks may revoke registration of a trade mark if satisfied that the mark should not have been registered and that it is reasonable to revoke registration taking into account all the circumstances. For example, revocation may occur where there has been an administrative error resulting in a mark being incorrectly registered.

The Registrar may only revoke a registered trade mark if the owner is notified within 12 months of the date of a mark’s registration. Owners of trade marks subject to proposed revocation have a right to be heard before revocation occurs.

Third parties will be able to inform the Registrar that, in their opinion, a mark should not have been registered. While the Registrar may consider third party submissions and subsequently seek to revoke registration of a mark, the Registrar will not be under a legal obligation to consider, or act upon, any such “tip off”.

The Registrar’s decision to revoke a registration may be appealed to the Federal Court. Rectification proceedings remain an option after 12 months from the date of registration.

This amendment raises potential problems where a trade mark owner has used a trade mark extensively after registration, and expended significant resources doing so, only to have the Registrar notify them of intended revocation. However, because the Registrar will be required to take into account all the circumstances (which include the owner’s interests), owners will be able to put forward evidence of use and associated costs as part of their argument as to why revocation would not be reasonable. While records of trade mark usage should be maintained for a couple of other reasons, these amendments make it more important to do so.

Access to documents

Under the amendments, many documents held by the Registrar relating to trade mark applications will be made publicly available, on a cost recovery basis, without needing to resort to the Freedom of Information Act 1982.

Some documents filed with the Trade Marks Office may contain sensitive business and financial information. The Registrar has the power to require these documents be held in-confidence in accordance with regulations. Depending on the form those regulations take, you may need to consider whether commercially sensitive documents are lodged in support of trade mark applications and oppositions. If such documents are filed with the Trade Marks Office, you may need to think about requesting confidentiality in accordance with the new laws. Despite the proposed procedures, it would still be possible to lodge an FOI request.

Revocation of acceptance prior to registration

The Registrar of Trade Marks will also have broader powers to revoke acceptance of a trade mark before it proceeds to registration, if satisfied that it is reasonable to do so taking into account all the circumstances. Under existing provisions, acceptance could generally only be revoked where there had been an “error or omission” in the course of examination.

As well as those outlined above, the Intellectual Property Laws Amendment Bill makes other more minor changes to the Act.

Commencement

Many of the major amendments under the Bill will come into force within six months of the Bill receiving Royal Assent. For advice about when particular provisions will come into effect, please contact one of the people listed above.

Further trade mark related legislation likely to be passed shortly

In addition to the amendments passed under the Intellectual Property Laws Amendment Bill, Parliament is currently considering the Trade Marks Amendment Bill 2006.

The Trade Marks Act has recently been reviewed by IP Australia. Various practical problems were identified, as well as a lack of clarity in some areas. To address these problems, the Trade Marks Amendment Bill proposes making amendments to the Act, including:

• inserting a new ground of opposition where a mark has been accepted because of prior use under section 44(4), but the opponent has accrued common law rights that pre-date those of the applicant;
• amending the ground of opposition based on well known marks in section 60 so that it will no longer be necessary to establish that the trade marks are substantially identical or deceptively similar;
• inserting a new section 62A to allow a person to oppose registration of a trade mark on the basis that the application was made in bad faith;
• the removal of the requirement that applicants to remove a trade mark must be an aggrieved person - now everybody will have the right to make an application;
• to provide certainty to buyers of trade marks or to those otherwise having an interest in a registered trade mark, a requirement that holders of such rights record their interest on the register if they want to restrict the ability of the trade mark owner to deal with the trade mark;
• the power for the Registrar to take court action on his or her own initiative, if it is in the public interest to do so;
• permitting multi-class series trade mark applications; and
• a reduction from 12 months to six months of the period, following expiry of registration, within which marks may be renewed - six months after registration has expired, the mark will be removed from the register.