Anita Brown, Phillips Ormonde Fitzpatrick

The Bill for Australia’s IP Laws Amendment (Raising the Bar) Act 2011 is awaiting debate in the Senate. Although it was hoped it would be passed before the end of 2011, it is unlikely it will get through both houses of the Australian Parliament until at least the 2012 Autumn Session.

As the legislation does not start for 12 months after royal assent, it seems unlikely it will come into effect before April 2013.

The Bill amends the Trade Marks Act 1995 as well as other laws and alters the way opposition proceedings are conducted. The Bill’s explanatory memorandum states that the proposed changes are to better streamline and reduce complexities in the trade marks opposition process.

Proposed opposition procedure

• An opponent has two months to oppose an application following acceptance;
• Opponents are required to file a notice of opposition with the office but are not required to serve a notice on the applicant;
• The opponent must file a statement of particulars of the grounds on which they intend to oppose within one month of filing the notice of opposition;
• If the statement of particulars is not filed, the registrar has the power to dismiss the opposition;
• The registrar has the power to allow amendments to the notice of opposition and the statement of particulars, however, amendments will be only allowed in tightly controlled circumstances;
• If a trade mark applicant wishes to defend the opposition, the applicant must file a notice stating their intention to do so within one month of service of the statement of particulars. An extension is available if the deadline to do so is missed;
• If no notice of the intention to defend is filed, the application will lapse; and
• A similar process is to be adopted for an opposition to removal of a trade mark from the register.

Regulations will be enacted to explain the procedural requirements.

Further amendments to the Trade Marks Act 1995 of note are as follows:

Stronger enforcement mechanisms

• Customs will give the party lodging a notice of objection with Customs information about the designated owner of seized goods and the exporter or importer of those goods;
• The objector will be permitted to inspect or obtain multiple samples of seized goods which will assist them if there has been an infringement; and
• Maximum penalties for existing indictable offences will be increased and corresponding summary offences will be added.

Presumption of registrability

The Court decision of Blount Inc v The Registrar of Trade Marks [1998, 40 IPR 398] found that the presumption of registrability did not apply to the operation of s 41 of the Trade Marks Act 1995, which sets out the steps the registrar must follow in registering a trade mark that is inherently adapted to distinguish, is to some extent inherently adapted to distinguish or has no inherent adaptability to distinguish.

According to the explanatory memorandum, it is contrary to the intended policy of the Trade Marks Act 1995, which replaced the Trade Marks Act 1955, for the presumption of registrability to not apply to the operation of s 41. The Act will be amended so that the section focuses on the characteristics a trade mark must possess to be capable of distinguishing. This means that if the registrar is unsure if the mark is or is not capable of distinguishing, the doubt will be resolved in favour of the trade mark applicant.

Additional damages for infringement

The court will have discretion to award additional damages, also known as punitive or exemplary damages, consistent with the remedies available in cases of patent, design and copyright infringement. According to the explanatory memorandum, this will permit the court to provide a substantial deterrent and to mark its disapproval of flagrant infringements. In exercising its discretion, the court must have regard to all relevant matters as well as to a list of specific factors which will assist in determining whether an award of additional damages is appropriate.

Privilege and jurisdiction

Privilege will be extended to client communications between registered trade marks attorneys and foreign attorneys and will be attached to some documents prepared by a third party.

The jurisdiction of the Federal Magistrates Court will be expanded to cover trade mark matters. This is intended to enable trade mark owners to pursue actions for trade mark infringement, in appropriate cases, more quickly and cheaply than in the Federal Court.