The Intellectual Property Laws Amendment (Raising the Bar) Act (‘the Act’) will introduce significant changes to intellectual property law. Most amendments introduced under the Act will come into effect on 15 April 2013.
Whilst the majority of the amendments in the Act amend the Patent Act 1990, it also reforms the Trade Marks Act 1995, Copyright Act 1968, Designs Act 2003 and Plant Breeder’s Rights Act 1994.
The purpose of the reforms is to improve processes, reduce delays and create consistency between Australia intellectual property law and other major intellectual property jurisdictions. The changes are intended to promote a more reliable intellectual property enforcement system, including increased penalties for infringement of intellectual property rights.
Amendments to Trade Mark Law
The main changes to the Trade Marks Act are summarised below:
Opposition Reform
In an attempt to reduce the delays associated with the opposition of trade mark applications and removal of trade marks for non-use, numerous changes have been made to the opposition process.
Amendments include:
- The removal of the requirement for the opponent to serve a Notice of Opposition on the trade mark applicant. The Trade Marks Office will send a copy of the Notice to the applicant;
- An opponent to the registration of a trade mark will be required to file a statement of grounds and particulars on which they intend to oppose the trade mark application within 1 month of filing a Notice of Opposition, which will be difficult to amend once submitted;
- Trade mark applicants must file a notice stating their intent to defend their mark against the opposition within 1 month of being served with the opponents’ statement of grounds and particulars, failure to do so may result in the application lapsing;
- An extension of time to file a statement of grounds of particulars or intention to defend the opposition may be granted only on the basis of an error or omission, and/or circumstances beyond the control of the party.
- The opposition period in which to oppose a trade mark application will be reduced from to two months (currently three months) from the date of advertisement of the trade mark in the Official Journal of Trade Marks;
- Simplification of opposition form; and
- Increased power of the Registrar to dismiss an opposition to a non-use application in prescribed circumstances, including where an opponent fails to file a statement of grounds and particulars.
Customs Regime
The Act will simplify the Customs seizure processes. Where a trade mark or copyright owner have a Notice of Objection in place with the Australian Customs Service, Customs may seize goods suspected of infringing intellectual property rights before they come into the Australian market.
Under the Act, where Customs seize allegedly infringing goods subject of a Notice of Objection, the Australian Customs Service may provide details about the imported goods and other relevant information about the Australian importer and foreign supplier.
The Act will allow Customs to permit a trade mark owner to inspect or remove multiple samples of the goods in order to allow the parties to make a more accurate determination of whether the consignment contains infringing goods.
The amendments shift the onus onto the importer to make a claim to Customs to release the seized goods. The claim must specify contact information which would enable a trade mark owner to enforce their rights and contact the designated owner. If a claim by the importer or designated owner is not made within the specified time, the goods subject of the seizure will be forfeited to the Commonwealth.
An equivalent provision will apply in respect of the Copyright Act seizure regime.
Presumption of Registrability
Where the Registrar of trade marks is equally uncertain about whether a mark is or is not capable of distinguishing the applicant’s good and services, the Registrar must resolve the doubt in favour of the applicant. This amendment may ultimately result in making it easier for applicant’s to have their application accepted by the Registrar unless there are grounds to reject it, however this is not certain given the Registrar must still determine whether a mark is inherently adapted to distinguish the applicant’s goods and/or services.
Increased Penalties and Damages
Trade Mark owners will have the opportunity under the Act to obtain additional (punitive) damages for trade mark infringement in certain circumstances, including where there is a flagrant infringement, the conduct of the infringer or where there may be a need to deter similar infringers.
Summary offences have been added to the Trade Marks Act, corresponding with the indictable offences. The introduction of these offences will provide a two-tiered system of offence provisions.
Penalties in respect of indictable and summary trade mark offences will also be increased under the Act. The maximum penalties for indictable trade mark offences have been increased to 5 years imprisonment or fines up to $60,500 for an individual or $60,500 for a corporation, or both.
Jurisdiction – Federal Magistrates Court
The Act will extend jurisdiction to allow the Federal Magistrates Court to hear and decide trade mark matters, including appeals against decisions made by the Registrar regarding rejection, amendment, removal for non-use and trade mark infringement proceedings. The Federal Court of Australia currently hears such appeals and proceedings. The expense of instituting these actions will be less costly in the Federal Magistrates Court and may also allow proceedings to be resolved sooner.
Conclusion
The amendments to Australian intellectual property laws will allow for a more simplified intellectual property system. Strengthened penalties and customs regime will provide additional protection for trade mark and copyright owners. In order to protect your trade mark and brand from the importation of counterfeit or pirated goods and trade mark infringement, you should consider availing yourself to the customs seizure regime, and trade mark registration.
If you would like to know more about the reforms coming into effect, or intellectual property generally then please contact David Mazzeo of our office on 03 9614 7707.
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