Author
Natalie Hickey  
Partner

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Natalie Hickey  
Partner
T +61 3 9643 4156

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Sydney
Maurice Gonsalves  
Patrick Gunning  
Katrina Rathie  
Leslie Tilly  

Melbourne
Robert Cooper  
Natalie Hickey  
Wayne McMaster  

Brisbane
John Swinson  
If you have current series applications (in different classes) you may be able to merge the current applications into a single multi-class application (providing the applications are for the same series and were filed on the same day).

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The Trade Marks Amendment Bill 2006 (Cth) to amend the Trade Marks Act 1995 (Cth) was passed on 13 October 2006. It is expected to receive Royal Assent and come into force in the next couple of weeks. The changes are largely uncontentious, and offer practical changes which will streamline the trade mark application process.

As the Act and its supporting regulations have been in force for 10 years, a review of the trade marks system was in order. As a result of the review, amendments (many of them minor) were suggested to improve the workability of the trade mark system and to increase certainty for trade mark owners.

Some of the key changes are outlined below:

Key changes - application process

One welcome practical change permits series applications to be filed in multiple classes (rather than one class). If you have current series applications (in different classes) you may be able to take advantage of this change by merging the current applications into a single multi-class application (providing the applications are for the same series and were filed on the same day).

Recognising that the procedure for divisional applications was confusing, the process has been streamlined. Now, only specifications (no longer trade marks) can be divided. Further, parent and divisional applications will not be able to share goods or services in common. This is to avoid the potential for confusion which could occur from the register containing two identical trade marks, with the same filing date and the same specifications.

Key changes - administrative

Administrative matters have been amended to improve the workability of the system - eg some amendments can now be made by telephone.

Some other changes

• The grace period for the late renewal of a trade mark will be reduced from 12 to 6 months (sections 78 and 79).
• Holders of rights over a registered trade mark will be required to record their right on the register if they wish to restrict the right of the trade mark owner to deal with their registered mark. This change was driven by industry requests for buyers of trade marks to have more certainty about their rights (section 22(1)).
• Non-legal entities will no longer be able to apply for trade marks (section 27(2)).
• Customs notices will be extended from two to four years and a written undertaking to repay costs will replace the requirement to lodge a cash security (sections 132 and 133).
• The trade marks registrar has greater power to maintain the register and has new rights to initiate court action to expunge a trade mark from the register (sections 86, 87 and 88). This will enable the registrar to initiate action where, for example, a potential complainant with a justifiable grievance lacks the financial resources to bring an action in court. However, given that trade mark interests are considered private rights, it is doubtful whether a Government funded action would be brought unless exceptional circumstances applied.

Key changes - contentious procedure

Removal applications - Changes have been made to the process to remove a trade mark from the register on the basis of non-use. Applicants will no longer be required to establish that they are a person aggrieved (section 92). Owners of registered trade marks will also now be able to rely on their use of the trade mark for similar goods or closely related services (or similar services or closely related goods) rather than simply use for the registered goods and services, to defend such as application.

Oppositions - a new ground of opposition will enable the opposition of trade marks filed in bad faith. Also some grounds of opposition have been amended.

• The “applicant not the owner of the trade mark” ground of opposition (section 58) has now been expanded so that the first user of a trade mark can oppose a mark that was accepted under section 44(4). Previously, the first user of a trade mark could not oppose a trade mark under section 58 which was accepted under section 44(4). That section enables a mark to be accepted if the applicant can demonstrate use of the mark prior to the filing date of a similar mark.
• Under the the “applicant’s trade mark is similar to a trade mark that has acquired a reputation in Australia” ground of opposition (section 60 ), it will no longer be necessary to establish that the trade mark at issue is substantially identical or deceptively similar. In other words, if it can be shown that confusion is likely to arise because of the reputation of a particular mark, the ground of opposition will be satisfied.
• The “false geographical indication” ground of opposition has been clarified so that it is clear that a trade mark that contains a geographical indication can only be opposed if it is for goods that are associated with the geographical indication or because it would be likely to deceive or cause confusion. Previously, a trade mark possessing a geographical indication could be opposed irrespective of whether the mark in question was for the goods to which the geographical indication related. This change brings geographical indications more in line with trade mark principles generally.

If you would like specific advice on any of the changes to the Trade Marks Act, please contact us.