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The Intellectual Property Laws Amendment (Raising the
Bar) Bill received Royal Assent from the Governor General
on 15 April 2012.
The amendments relating to the Trade Marks Act 1995
will come into effect on 15 April 2013. The
changes will apply primarily to:
Registration
Section 41 has been re-drafted in an attempt to clarify that a
presumption of registrability applies to distinctiveness objections
raised under this section. A trade mark will now be deemed to be
distinctive unless one of the exceptions listed in the section
applies. The rewording of the section may have no practical
effect.
Oppositions
An applicant will be required to file a Notice of Intention to
Defend an opposition to registration
An opposed application will lapse if a Notice of Intention to
Defend an opposition is not filed
An extension of time will be available to file the Notice of
Intention to Defend
New Section 231(3) will allow the Trade Mark
Regulations to be amended to prescribe matters relating to
trade mark oppositions including:
Rules about filing and serving documents in an opposition;
rules about the amendment of documents filed in an
opposition;
the circumstances in which the Registrar may dismiss an
opposition under the new Section 99A; and
provision for review by the Administrative Appeals Tribunal of
decisions of the Registrar made under the regulations.
A decision of a delegate of the Registrar in opposition
proceedings may be appealed to the Federal Magistrate's
Court.
Infringement of registered trade marks
Section 126 has been amended to allow for the award of
additional damages in trade mark infringement matters taking into
account matters including:
The flagrancy of the infringement;
the need to deter similar infringements of registered trade
marks; and
the conduct of the party that infringed the registered trade
mark that occurred.
Changes to Customs Procedures
Customs must give the trade mark proprietor a written notice
identifying the goods seized, and may also provide information
about the owner of the seized goods
Customs may permit the trade mark proprietor to inspect the
seized goods
The owner of the seized goods may make a claim for the release
of the seized goods before the end of the claim period
The Customs CEO has the discretion to accept a late claim for
release of the seized goods
Customs must give trade mark proprietor notice of a claim to
release seized goods
Seized goods are forfeited to the Commonwealth if a claim for
release is not made within the claim period, or if the goods are
released by customs but the owner does not take possession of the
goods within 90 days of release
Penalties
The penalties for offences relating to misuse of trade marks,
including falsifying or removing registered trade marks, falsely
applying registered trade marks, and possessing or selling goods
with false trade marks, have been increased.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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