Starting on April 15, 2013, there will be some significant changes made to intellectual property laws, including trademark laws, in Australia. These changes are coming about following the introduction of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“Raising the Bar Act”), which was passed in April 2012.
This article discusses some of the key changes made by the Raising the Bar Act, which will alter the way trademark matters are conducted in Australia. INTA’s Legislation & Regulation Committee has been actively engaging IP Australia on consultation drafts to the law since 2009. Many of INTA’s suggestions, detailed here
, have been adopted in the final draft.
More Efficient Trademark Opposition Processes
Currently, in Australia a contested trademark opposition can take several years to reach resolution. The Raising the Bar Act will amend the provisions in the Trade Marks Act 1995 that deal with trademark oppositions so that the opportunities for parties to delay are removed. There are also new steps introduced, which, if not taken, may result in the dismissal of the opposition proceedings.
The key changes being made to trademark oppositions (including oppositions to applications to remove trademarks from the Register) are set out below.
Changes to Time Periods
Changes to Documentation
- Time for filing of an opposition: The period in which an opposition can be filed is being reduced from three months to two months from the date of advertisement of acceptance of the application in the Official Journal of Trade Marks.
- Time periods for evidence preparation: At present, extensions of time for the preparation of evidence can be obtained very easily, at least for up to six months. As is the case now, after the changes come into effect, the opponent will have three months in which to prepare and serve its evidence in support. The Registrar will have discretion to grant extensions but is likely to do so only if the opponent demonstrates that circumstances exist that warrant an extension’s being granted; simply stating that more time is required will not be sufficient. The same policy will apply to the applicant’s time to present evidence in answer. The period within which evidence in reply must be prepared and served is being decreased from three months to two months.
- Notice of Opposition: The required form of the Notice of Opposition will be changed. The details of this will be specified in amendments to the Trade Marks Regulations 1995, which have not yet been published. However, it is likely that the notice will simply be a form stating that an application is being opposed and will not contain any reasons or grounds (because of the new Statement of Grounds and Particulars, discussed below). In addition, the opponent will no longer have to serve the Notice of Opposition on the applicant; the opponent must simply file it, and the Trade Marks Office will then send a copy to the applicant.
- Statement of Grounds and Particulars: An opponent will need to prepare and file a Statement of Grounds and Particulars within one month after the Notice of Opposition is filed. This is a new requirement. This document must specify the exact grounds on which the opposition will be argued and the material facts on which each ground is based. This new requirement is intended to change the current practice, where the Notice of Opposition simply states every possible opposition ground and the actual arguments being relied upon do not become clear until evidence is submitted, which is usually several months into the opposition process. It will be very difficult to amend a Statement of Grounds and Particulars, and if a Statement of Grounds and Particulars is not submitted, the Registrar will have the power to dismiss the opposition.
- Notice of Intention to Defend: If the applicant wishes to defend an opposition, it must file a Notice of Intention to Defend within one month of service of the Statement of Grounds and Particulars. This is a new requirement and is similar to existing requirements in trademark opposition systems in various other jurisdictions. The deadline for the filing the Notice of Intention to Defend cannot be extended, and if this document is not filed, the application will lapse and the opposition proceedings will come to an end.
These changes will have a significant impact on the way that trademark opposition matters are conducted in Australia. The new requirement for a Statement of Grounds and Particulars will mean that potential opponents will have to have “done their homework” and developed a good understanding of their possible opposition grounds and the facts that support those grounds before filing a Notice of Opposition.
As a result of the changes to grounds for granting extensions of time, parties to opposition proceedings and their legal advisors will need to work quickly on the gathering and preparation of evidence. While this may put additional pressure on all parties involved during the course of the opposition, it will have the positive effect of a resolution’s being reached much more quickly than currently is the case.
Another significant benefit of the changes is that uncontested oppositions will be disposed of quickly and without the opponent’s having to expend time and money preparing evidence, as the application will lapse if the applicant does not file a timely Notice of Intention to Defend. This is clearly a positive step forward from the current situation, where an opponent may have to go through all of the evidence stages, as well as submission preparation and a hearing, before a decision is reached.
Improved Customs Processes
IP practitioners have had concerns for years about how the customs seizure process works in Australia, and in particular the fact that, in practice, it is difficult for trademark owners to prevent counterfeit goods from being imported without having to incur the cost of instituting court proceedings. The changes that will result from Raising the Bar Act should make the customs seizure process in Australia much more effective.
The key changes being made in this area are as follows:
- Shifting the onus to the importer: A key change to the customs processes is the shift of onus to the importer to make a claim for the seized goods within a specified period. If a claim is not made in time, the goods will be automatically forfeited and destroyed. In addition, when making a claim for the forfeited goods, the importer must provide contact details, including an address for service of legal documents. Until now, it has been the trademark owner who has had to institute proceedings or otherwise persuade the importer to forfeit the goods, in order to prevent the goods from being released. It has also been difficult to obtain accurate contact details for the importer.
- Details of exporter to be released: Customs will be able to provide the trademark owner with details of the exporter or any other person that was involved in the importation of the seized goods. Previously, this information could be obtained only by a court order.
- Release of samples of seized goods: The trademark owner will be able to inspect and take possession of multiple samples of the seized goods for closer inspection. Currently, the trademark owner is able to obtain a single sample only. Having access to multiple samples will give the trademark owner greater ability to determine whether the seized goods are counterfeit, especially when some shipments of goods seized contain both genuine and counterfeit goods.
Once these changes come into effect, it is likely that a much higher number of seized counterfeit goods will be forfeited and destroyed, at a much lower cost to trademark owners. In addition, if trademark owners do take action for infringement, they will be more likely to do so against the correct parties, with the correct contact details, so that court documents and any resulting judgments can be properly served.
Strengthened Enforcement Mechanisms
In Australia, the penalties and remedies available for trademark infringement have not been as strong as those available for copyright, design and patent infringement matters. The Raising the Bar Act will make the following changes to address those differences and improve enforcement mechanisms and remedies:
- Maximum penalties increased: The maximum penalty for indictable trademark offenses will be increased to five years’ imprisonment and 550 penalty units (which currently converts to A$60,500 for an individual and A$302,500 for a body corporate). The applicable offenses include falsely applying a registered mark and importing goods into Australia bearing a trademark that was applied without the trademark owner’s permission.
- Additional damages: A court will be permitted to award additional damages (as a punitive measure) in trademark infringement matters where there was flagrancy involved. Currently, additional damages are not available in trademark infringement matters.
- Summary offenses: A range of summary offenses will be introduced that mirror the existing indictable offenses. These offenses will have lower penalties.
- Extension of jurisdiction of the Federal Magistrates Court: The jurisdiction of the Federal Magistrates Court will be extended to cover trademark matters. Currently, such matters generally are heard in the Federal Court of Australia.
These changes will ensure that trademark owners have the same remedies available to them in infringement proceedings that have been available to copyright, design and patent owners and, it is hoped, will provide a greater deterrent to would-be trademark infringers. In addition, the extension of jurisdiction of the Federal Magistrates Court to trademark matters will give trademark owners the ability to pursue trademark infringement matters in a forum that is generally much quicker and cheaper.
Extension of Privilege to Communications with Overseas Attorneys
IP matters, including trademark matters, often transcend borders and involve parties and attorneys from all around the globe. The Raising the Bar Act will extend attorney-client professional privilege in Australia so that it also covers communications between parties in Australia and foreign attorneys. It will also be clarified that advice given by a trademark attorney has the same privilege as advice given by a lawyer to a client.
While much of the detail of these changes is still to come in the form of changes to the Trade Marks Regulations 1995, it is clear that the changes that will be made to trademark law in Australia will be “raising the bar” and improving many aspects of trademarks practice in Australia, to the benefit of trademark owners. INTA’s Anticounterfeiting, Legislation & Regulation, and Trademark Office Practices Committees are continuing to weigh in on the law by drafting comments to the implementing regulations.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2012 International Trademark Association