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Changes to Trademark Law

Almost a year ago we wrote about the IP Law Reform to be introduced in Australia and discussed some of the key features of the reform. This is set to come into place from 15 April 2013 so it’s time to get ready and understand some key changes. There will be legislative changes across most areas of intellectual property, including trademarks.

The changes to trademark law will include:

  • Currently, law dictates that if you file a notice of opposition against a trademark becoming registered you must also provide a copy of the notice to the person whose trademark you are opposing. From 15 April this will no longer be required. You will simply need to file your Notice with the Trademarks Office.  The Opponent will now need to file a Notice of Intention and a Statement of Grounds and Particulars, on which they intend to oppose the trade mark application. The particulars will describe the material facts and must be filed within 1 month of filing the Notice of Intention to Oppose.
  • Marks advertised as accepted, or removal applications advertised, from 15 April 2013 will be open to opposition for two months. This reduces the opposition period by a full month – making it more important than ever to monitor the trademarks database and enquire about opposing trademarks as soon as they are noticed. The Opponent must file their Notice of Intention to Oppose within 2 months, and then their full statement within one month thereafter.
  • Applicants, whose trademarks are opposed after 15 April must file a notice of their intention to defend against the opposition. If they do not do so, their application will simply lapse. This will allow some oppositions to be resolved much sooner than current procedures allow.

The reform will also see stronger protection against the importation of counterfeit products into Australia, including by way of:

  • Allowing Customs to provide trademark owners with the contact details of international parties that are shipping counterfeit products into Australia (where the trademark owner has lodged a notice of objection with the Customs office);
  • Allowing trademark owners who have lodged notices with the Customers office to inspect seized goods and take samples for the purpose of making accurate determinations as to whether the containers include infringing goods;
  • Increasing penalties and allowing the award (by a Court) of additional damages in connection with trademark infringement;

Changes are also being made to simplify the IP system, and remove doubt and uncertainty. In so far as trademarks are concerned, this includes:

  • Clarifying the presumption of registrability under Section 41 of the Trade Marks Act 1995. The changes will restructure existing provisions so that it is clearer as to the characteristics a mark must hold for it to be capable of distinguishing. Uncertainty on the Registrar’s behalf should now be resolved in the Applicant’s favour. (This is perhaps my favourite change!)

Most of the changes affecting trademark law in Australia relate to oppositions proceedings and time frames. You can review the full changes, as published by the IP Office in Australia here.

If you have any questions about how this reform might affect you/your business, don’t hesitate to contact us. If you have interest in opposing the registration of a trademark, or, your trademark has been opposed, you can find further information to assist here.

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