Recent changes to the Trade Marks Act 1995 — Key practice issues
24 April 2007The Trade Marks Amendment Act 2006
New and amended grounds of opposition
There are two new grounds of opposition and changes to two existing grounds.
The ‘absolute first use rule’
A new section 58A in the Trade Marks Act introduces the ‘absolute first use rule’. Owners of prior registered trade marks can seek to establish that their first use of the trade mark pre-dates that of a mark accepted on the basis of prior continuous use.
Applications made in bad faith
A new section 62A introduces a ground of opposition where the application to register the trade mark was made in bad faith. For example, this ground may be relied on where the applicant has a history of applying for trade marks that are deliberate misspellings of other registered trade marks.
Trade marks which have acquired a reputation in Australia
The owner of a well known mark no longer needs to show that the respective marks are substantially identical or deceptively similar. The owner is only required to show that their mark has a reputation in Australia and because of that reputation the use of the accepted mark is likely to cause confusion or deception in the marketplace.
Geographical indications
The existing ground of opposition concerning trade marks containing or consisting of a false geographic indication has been qualified. The ground only applies to applications for goods for which the geographical indication is relevant.
Changes to non-use provisions
There are significant changes regarding removing a registered trade mark for non-use.
Changes to standing requirements
Removal applications can be made by any person. It is no longer a requirement that the removal applicant be a person aggrieved.
Localised use of a trade mark
A trade mark will not necessarily be removed where non-use is established in a particular region. The registrar has the flexibility to restrict the use of the trade mark to places in which the mark is used.
Use of trade marks on closely related goods establishing use
The registrar can consider use of a trade mark on closely related goods or services in deciding whether a trade mark should be removed for non-use.
Changes also confirm that use of the relevant trade mark by a user authorised by the registered owner is deemed as use of the trade mark by the registered owner.
Changes to ownership
A series of amendments alter trade mark ownership:
Need to record trade mark rights on the register
The rights of the owner of a registered trade mark to deal with the trade mark are only limited by any third party rights in the mark appearing on the trade marks register.
Previously the rights of a registered owner were more broadly limited by rights vested in another person.
The amendment creates an incentive for third parties to record on the trade marks register any interests they may hold over a registered or pending trade mark, for example, under a licence agreement.
Trade mark owner must be a legal person
It is a requirement that a trade mark owner be a legal person. This clarifies that entities which do not have a legal personality—such as trusts and business names—cannot own trade marks.
This change does not affect trade marks registered or applied for prior to 23 October 2006.
An exception to the requirement that an applicant have a legal personality is made for an application for registration of a collective trade mark.
Other amendments
Other amendments effected by the Trade Marks Amendment Act include:
Amendments contrary to the Act
Where a trade mark was the subject of an opposition, previously the registrar had the power to either refuse or permit registration. The registrar will now also be able to revoke the acceptance of the application and send it back to examination.
New provisions for divisional applications
The provisions for divisional applications are simplified. Where a series of divisional applications are filed, the priority date will be the date of the original application.
New provisions for trade mark series applications
Multi-class series applications are permitted. Further, if current applications or registrations meet the requirements for a series, they may be amalgamated.
Change to period for renewal
For trade mark registrations falling due for renewal on or after 27 March 2007, the grace period for renewal will be six months after expiry. This is a reduction of the previous 12 month grace period.
Customs notices
The period for customs notices is increased from two to four years. Further, the trade mark owner can provide a written undertaking as security, rather than cash. Any cash previously paid as security will be returned in exchange for a written undertaking.
The Intellectual Property Laws Amendment Act 2006
Revoking registration of trade marks
Where a trade mark should not have been registered—and it is reasonable to do so—the registrar has the power to revoke registration. The registrar can only revoke registration of a trade mark if notice of the proposed revocation is given to the registered owner within 12 months of registration.
Availability of documents regarding trade marks
Previously documents held by the Trade Marks Office could only be made publicly available through applications under the Freedom of Information Act. Documents prescribed by regulations will be made publicly available on a cost recovery basis.
This article was written by Ruth Horvai, Special Counsel, Freehills Patent & Trade Mark Attorneys.
For more information please contact
Title : Partner
Office : Sydney
Phone : +61 2 9225 5512
Fax : +61 2 9322 4000
Email : frances.drummond@freehills.com
