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.

If you have any questions about how this reform might affect you/your business, don’t hesitate to contact us. We can also help you with further information on opposing the registration of a trademark, or, your trademark has been opposed.

Jacqui Pryor

Jacqui is a registered trade marks attorney with the Trans-Tasman IP Attorneys Board and is the founder and owner of Mark My Words Trademark Services Pty Ltd.

After being introduced to the world of trade marks in one of her first jobs after high school, Jacqui discovered she had a deep passion and interest for all things to do with protecting brands and intellectual property. She completed a Graduate Certificate in Trade Mark Law and Practices as well as a Diploma in Business Management and then set up her own business in 2011.

Her motivation for starting Mark My Words was to support SMEs which typically couldn’t afford such a service and while the company has grown in both size and reputation over the years, she has remained true to her founding principles of providing professional, friendly, reliable and affordable trade mark services to all.

Mark My Words now has a client list that spans businesses of all sizes across a range of industries. It provides advice and assistance on all types of complex trade mark registrations, infringements and opposition matters both in Australia as well as overseas.

Jacqui’s wealth of experience, broad range of professional qualifications and her ongoing participation in industry forums and networking platforms keeps her at the forefront of developments in the global trade mark arena. Her expertise in her field has also led to several nominations as a top individual trademark attorney by the World Trademark Review - the world’s leading trademark intelligence platform.

To keep up to date with the latest in the field of trade marks, follow Jacqui and MMW Trademark Services on Facebook.

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