The Australian Federal Government introduced the Trade Marks and Other Legislation Amendment Bill on 4 April 2001. The Bill has passed the House of Representatives and is expected to pass the Senate without amendment when Parliament resumes in the southern Spring. Although the Bill does not address all the problems with the Trade Marks Act 1995, it does usefully clarify and streamline the following provisions:
- An authorised user of a trade mark will no longer have to wait for the expiration of two months before being able to commence proceedings for infringement of the trade mark or to give to the Customs Office a notice objecting to the importation of goods infringing the trade mark once the registered owner of the mark refuses to take such action or consents to the authorised user taking that action.
- Where a mark for which an application has been lodged is transferred, the new owner may file a divisional application. Similarly, where a right or interest supporting an opposition to a trade mark application is transferred, the new owner may proceed with the opposition without needing to file a new opposition.
- A trade mark which has not been registered by 10 years from the date on which it was filed, will be able to be renewed. This situation can arise where an application is delayed for a substantial time by oppositions and appeals, but the Trade Marks Act does not, at present, allow for renewal of these marks.
- A mark which was registered because it “was inherently adapted to distinguish the goods or services of the applicant … [and given] the intended use of the trade mark, the trade mark would distinguish those goods or services” will no longer be able to be struck off for the reason that in the period since filing (which must be at least 10 years), the mark “has not been used to an extent sufficient for it to distinguish, in fact, the goods or services of the registered owner from the goods or services of any other person”.
As the law currently stands, there is an anomaly because the practice of the Trade Marks Office is to not specify whether it has accepted a mark on this basis. It is also unclear whether the test for rectification would require the Court to apply a higher standard of use – “to distinguish, in fact” – than the Trade Marks Office. - It will be a defence to trade mark infringement, where the mark used by the defendant is substantially identical with, or deceptively similar to, the plaintiff’s mark, if the Court finds that the defendant would be able to obtain registration of its mark. At present, the drafting of the Trade Marks Act limits this defence to cases where the mark used by the defendant is identical to the plaintiff’s mark.
- Officers of the Trade Marks Office will be able to assist customers in preparing documents to be filed and to conduct searches. Currently, such assistance is prohibited by criminal sanctions!
- The transitional provisions of the Act will be improved. Section 254 currently provides that a person who, prior to commencement of the 1995 Act, engaged in conduct which did not constitute infringement of a mark registered under the old Act may continue to so act without being guilty of infringement under the 1995 Act. This will be extended to cover:
- Conduct which did not constitute infringement under the old Act can continue in relation to marks which were applied for under the old Act but were not registered under the old Act; and
- Conduct for which there existed a defence in relation to marks registered, or applied for, in Part B of the trade marks register maintained under the old Act. (Part B marks were marks which were not distinctive but were capable of becoming distinctive. The 1995 Act does away with this distinction.)
- Conduct which did not constitute infringement under the old Act can continue in relation to marks which were applied for under the old Act but were not registered under the old Act; and
None of these amendments will be retrospective.
It is hoped that there will be further review which will resolve other problems in the Act, including making it clear that an application to have a trade mark removed from the register for lack of intention to use may also be made before the mark is registered, and clarifying whether the registered owner of a trade mark may prevent parallel importation of goods to which the mark was applied during manufacture but which subsequently failed quality controls.
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.