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2004-2005-2006
THE PARLIAMENT OF THE COMMONWEALTH OF AUSTRALIA
SENATE
TRADE MARKS AMENDMENT BILL 2006
EXPLANATORY MEMORANDUM
(Circulated by authority of
the Parliamentary Secretary to the Minister for Industry, Tourism and Resources,
the Hon Bob Baldwin MP)
TRADE MARKS AMENDMENT BILL 2006
1 Outline
This Bill amends the Trade Marks Act 1995 (the Act) to implement a number of changes
subsequent to a review of the Act.
The Act commenced operation on 1 January 1996. IP Australia conducted a review to ensure the
Act and supporting Regulations continue to meet the needs of Australian business, including
users of the trade mark system.
The review identified a number of issues that had become apparent with experience since
commencement of the Act. Some of these issues arose from decisions of the Registrar of Trade
Marks and judicial comment which indicated that the original policy intent has not been captured
by the Act in some instances. The review also considered practical problems in the
administration of the Act, including a lack of clarity in some areas.
The amendments made by this Bill will clarify the operation of the Act where experience
suggests there is some doubt as to how the Act operates, implement changes in policy settings
due to experience since the Act commenced, and make a number of minor amendments.
The measures in the Bill increase the certainty of trade mark rights issued; increase predictability
of the trade mark system and clarity of the Act; reduce the regulatory and administrative burden
on trade mark applicants and owners; and improve transparency and align the Act with other
intellectual property legislation.
1.1 Financial Impact Statement
No additional cost to the Government is expected to result from the amendments contained in
this Bill.
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TRADE MARKS AMENDMENT BILL 2006
2 Notes on Clauses
2.1 Clause 1--Short title
1. Clause 1 is a formal provision specifying the short title of the Bill.
2.2 Clause 2--Commencement
1. Clause 2 provides for the commencement of the Act, setting out the commencement
information in a table. Parts 1 and 3 of Schedule 1 commence on the day the Act receives Royal
Assent. Part 2 of Schedule 1 commences on proclamation or within 6 months from Royal
Assent.
2.3 Clause 3--Schedule
1. This clause provides that each Act specified in a Schedule is to be amended or repealed
according to the relevant provisions of that Schedule. Any item in a Schedule has effect
according to its terms.
3 SCHEDULE 1--Amendments
4 Part 1-Amendments Commencing On Royal Assent
4.1 READER'S GUIDE
Section 6
1. The Reader's Guide aims to give readers of the Act a general idea of the purpose of the Act
and some information about its structure. It also explains briefly how the operation and
interpretation of the Act is affected by other Acts.
2. The Reader's Guide contains a "list of terms defined in section 6". This list does not contain
a number of terms that have either been added to the Act or been shown to need defining.
3. The Reader's Guide also contains a "Summary of this Act" in which the various parts of the
Act are identified and a brief explanation of their subject matter given. The Trade Marks
Amendment (Madrid Protocol) Act 2000 introduced Part 17A into the Act to give effect to the
Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks
(Madrid Protocol). Part 17A is not summarised in the Readers Guide.
4.1.1 Item 1
1. This item inserts a summary of the provisions relating to international applications under the
Madrid Protocol in Part 17A to the "Summary of this Act" in the Reader's Guide.
4.1.2 Item 2
1. This item amends the "List of terms defined in section 6" that is found in the Reader's Guide
to insert terms that have been added into section 6 of the Act but not included in the list.
4.2 PERIODS EXPRESSED IN MONTHS
Section 6A
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1. There are currently two different methods of calculating time periods expressed in months
relating to trade mark actions. The method found in the Acts Interpretation Act 1901 (the AI
Act) is applied to time periods found in the Act. The method found in the Madrid Protocol and
in regulation 2.2 of the Trade Marks Regulations 1995 (the Regulations) is applied to all other
time periods. This causes confusion for users of the trade mark system as users may be unsure
which method of calculation to use.
4.2.1 Items 3 and 4
1. These items insert a definition of "month" into section 6, and set out the method of
calculating time periods expressed in months to be used in the Act in section 6A. This ensures
that time periods are calculated consistently, regardless of whether the time period is set out in
the Act, the Regulations or in the Madrid Protocol. The new method of calculation is in
accordance with the method used under the Madrid Protocol. The note to section 6A gives an
example of the different results of the two methods.
4.2.2 Item 5
1. This is an application provision. The amendment to section 6A will apply to all periods
starting after Royal Assent and all time periods that started on or before that day that have not
ended by that day.
4.3 DEFINITION OF "ORIGINATE" IN RELATION TO WINE
Paragraph 15(a)
1. When the Trade Marks Act 1995 commenced on 1 January 1996, the definition in section 15
of `originate' in relation to wine was the same as the then definition in section 5D of the
Australian Wine and Brandy Corporation Act 1980 (the AWBC Act). Under paragraph 15(a) of
the Trade Marks Act 1995 the definition of `originate' in relation to wine is: 'a wine is taken to
have originated in a foreign country or Australia only if the wine is made within the territory of
that country or of Australia, as the case may be'. It is therefore possible that if grapes are
imported into Australia or a foreign country, and made into wine in Australia or that country, the
wine could qualify as originating in Australia or that country.
2. The definition in the AWBC Act has been amended for the purposes of clarification and the
words `from grapes grown' were inserted into paragraph 5D(a). Paragraph 5D(a) of the AWBC
Act now provides that 'a wine is taken to have originated in a foreign country or Australia only if
the wine is made from grapes grown within the territory of that country or of Australia, as the
case may be'.
4.3.1 Item 6
1. This item brings the definition in the Trade Marks Act into line with the definition in the
AWBC Act. It clarifies that wine originates from a foreign country or Australia if and only if the
wine is made from grapes grown in that country. The amendments will not have any labelling or
production consequences for Australian wine producers as they must already comply with the
requirements of the AWBC Act.
4.4 POWER OF REGISTERED OWNER TO DEAL WITH TRADE MARK
Section 22
1. The power of the registered owner of a trade mark to deal with their trade mark is limited by
any rights vested in another person. However, the power of a patentee (under section 189 of the
Patents Act 1990) or registered owner of a registered design (under section 12 of the Designs Act
2003) to deal with their patent or design is limited by any rights vested in another person that
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appear in the Register. The effect of this difference is that there is an incentive for people with
an interest in a patent or registered design to register their interest and have it appear on the
Register, because if they do not record their interest then the person recorded on the Register as
the owner can continue to deal with the patent or registered design. As the ability of a trade
mark owner to deal with their trade mark is limited by any right vested in another person,
whether or not that right has been recorded, there is no incentive for a person with an interest in
a trade mark to register their interest. This means potential purchasers of a trade mark do not
know if the registered owner of the trade mark is the sole owner of the trade mark, or in what
way the right may be encumbered.
2. Another difference is that there is no provision in the Act equivalent to subsection 189(3) of
the Patents Act or subsection 12(3) of the Designs Act. These provisions provide that equities in
relation to a right may be enforced against the right holder except to the prejudice of a purchaser
in good faith.
4.4.1 Item 7
1. This item inserts a new phrase into subsection 22(1) which makes it clear that the power of a
registered owner of a trade mark to deal with the trade mark is limited only by any rights
appearing in the Register.
4.4.2 Item 8
1. This is a transitional item applying to the amendment to section 22 and gives people time to
inform the Registrar of Trade Marks (the Registrar) of the details of any unregistered interest in
their trade mark. The amendment does not apply to rights vested in another person but not
appearing in the Register, until (six) 6 months after Royal Assent.
4.4.3 Item 9
1. This item inserts a provision at the end of section 22 which makes it clear that the equities in
relation to a registered trade mark may be enforced against the trade mark owner except to the
prejudice of a purchaser in good faith.
4.5 PERSONS WHO MAY OWN A TRADE MARK
Subsection 27(2)
1. A trade mark is a valuable property right and it is important that the owner is properly
recorded. Sections 27 and 58 of the Act work together to ensure that the person recorded as the
owner of a trade mark is the owner. A person applying for a trade mark must claim to be the
owner of the trade mark (paragraph 27(1)(a) of the Act). Another person can oppose the
registration of a trade mark on the grounds the applicant is not the owner (section 58 of the Act).
2. Section 6 of the Act defines a person as a body of persons whether incorporated or not.
However, groups such as trusts, business names, trading names and partnerships are not usually
able to own property. Ownership of property is usually limited to persons who have legal
personality. However, there has been some confusion as to who can own a trade mark, in
particular in relation to trusts and business names.
3. There is an exception to the definition of persons able to own a trade mark. International
agreements oblige Australia to allow an association to own a collective trade mark. The current
definition of association in section 6 excludes incorporated associations. Item 64 will remove
this restriction and allow incorporated associations to apply for collective trade marks.
However, in making this change the rights of unincorporated associations to own collective trade
marks are preserved.
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4.5.1 Item 10
1. This item amends subsection 27(2) of the Act to make it clear that only a person with a legal
personality can apply for a trade mark. This will make it clear that trusts, business names or any
other entity that does not have a legal personality cannot apply for a trade mark.
4.5.2 Item 11
1. This item is a savings and application provision to make it clear that the amendment made to
subsection 27(2) does not affect the validity of any registration that may have been registered
before Royal Assent, or any trade mark registered on or after Royal Assent as a result of an
application filed before that day.
4.5.3 Items 12 and 13
1. Item 12 sets out an exception to subsection 27(2) of the Act, which was amended by item 10.
This exception provides that any association, whether incorporated or not, may apply for a
collective trade mark. This change only applies to applications made after Royal Assent.
4.6 GROUNDS FOR REJECTION AND OPPOSITION ARE NOT ALL IN DIVISION 2
PART 4 AND 5
Numerous provisions
1. Numerous provisions and notes in the Act refer to Division 2 of Part 4 when identifying the
grounds on which a trade mark application may be rejected. Similarly numerous provisions refer
to Division 2 of Part 5 when identifying the grounds on which registration of a trade mark may
be opposed. For example, section 31 of the Act states that the Registrar must examine and report
on whether there are any grounds under Division 2 of Part 4 for rejecting the application.
However, there are other grounds for rejection and opposition set out in other parts of the Act,
for example those in Part 16 relating to certification trade marks, Part 17 for defensive trade
marks and Part 17A relating to applications received via the Madrid Protocol. Section 6 of the
Act states that the Act includes the Regulations. Regulation 4.15A sets out grounds for rejection
relating to applications that are identical or deceptively similar to trade marks protected under
the Madrid Protocol.
2. The references to Division 2 of Part 4 and Division 2 of Part 5 could mislead the reader that
the only grounds for rejection or opposition are in Division 2 of Part 4 or 5. All of those
references wherever they appear in the Act are amended to refer to "the Act" rather than to any
particular Division or Part of the Act.
4.6.1 Items 14-20, 22, 23, 27, 28, 40, 52-56
1. Items 14 to 19 amend paragraph 31(b), add a note to section 31, amend paragraph 33(1)(b)
and the note to subsection 33(1), amend paragraph 33(3)(b) and add a note to subsection 33(3) to
clarify that grounds for rejection may be found in places other than Division 2 of Part 4 of the
Act.
2. Item 20 is an application provision. The amendments made by items 16-19 will apply to
trade mark applications made after Royal Assent or pending but not accepted on that day.
3. Items 22, 23, 27 and 28 amend subsection 54(4), add a note at the end of subsection 52(4),
amend section 57 and add a note to section 57 to clarify that grounds for opposition may be
found in places other than Division 2 of Part 5 of the Act.
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4. Item 40 amends paragraph 88(2)(a) to clarify that grounds for amendment or cancellation
may be found in places other than Division 2 of Part 5.
5. Items 52, 54 and 55 amend the note to subsection 177(1), subsection 181(2) and the note to
section 187 to clarify that grounds for rejecting or opposing certification trade marks and
defensive trade marks may be found in places other than Division 2.
6. Items 53 and 56 repeal subsection 181(1) and section 188 as they have become redundant
because of other amendments listed above. Paragraph 88(2)(a) has been amended to make it
clear that all grounds under the Act apply, which includes the grounds applying to certification
and defensive trade marks.
4.7 TRADE MARKS NOT DISTINGUISHING APPLICANT'S GOODS OR SERVICES
Section 41(6)
1. A trade mark must be rejected if the trade mark is not capable of distinguishing the
applicant's goods or services from the goods or services of another trader. The first
consideration in deciding whether a trade mark is registrable requires an assessment of the
degree to which the trade mark is inherently adapted to distinguish. Provisions relating to the
possible differing degrees of inherent adaptation are separately addressed in subsections 41(5)
and 41(6) with subsection 41(6) applying in those cases where the trade mark is totally lacking
in inherent adaptation to distinguish.
4.7.1 Item 21
1. This item amends subsection 41(6) of the Act so the terminology used in subsection 41(5) of
the Act is used to describe the extent to which a trade mark is inherently adapted to distinguish
the goods and/or services of the trade mark applicant. This will clarify that subsections 41(5)
and (6) of the Act refer to gradations of the same test, and that subsection 41(6) applies only
where there is no inherent adaptation to distinguish.
4.8 AMENDMENTS CONTRARY TO THE ACT
Section 55
1. A person may oppose the registration of a trade mark where a trade mark application, or a
document filed in support of the application, was amended contrary to the Act (paragraph 62(a)
of the Act). Section 55 of the Act provides two outcomes for the opposition: the Registrar must
either refuse to register the trade mark; or must register the trade mark. However, in some cases
the offending amendment may be readily corrected, and even though an amendment contrary to
the Act has been made, it may not be appropriate to refuse to register the trade mark. In this
case, re-examination of the trade mark and re-advertisement of the changed details, to notify
other parties, is a more equitable course.
4.8.1 Items 24-25
1. These items amend section 55 to give the Registrar the discretion to revoke the acceptance of
an application and to re-examine an application where an application was amended contrary to
the Act.
4.8.2 Item 26
1. This is an application provision. The amendment to section 55 will apply to applications
made after Royal Assent and to applications pending but not accepted on that day.
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4.9 OPPONENT'S EARLIER USE OF SIMILAR TRADE MARK
Section 58A
1. A person may obtain acceptance and registration for a trade mark under section 44(4) even
though an earlier similar trade mark has been registered for similar goods and services. The
person must be able to show that they have used the trade mark before the filing date of the
earlier trade mark on those particular goods or services.
2. However the owner of the earlier trade mark may have used their trade mark before applying
for trade mark registration and accrued common law rights. As it stands the owner of the earlier
registered mark has no basis on which to oppose registration of a trade mark accepted under
subsection 44(4), even where their use pre-dates that of the accepted application.
3. The new section will provide a basis for the Registrar to give consideration to these issues in
opposition proceedings.
4.9.1 Item 29
1. This item creates a new ground of opposition in section 58A to enable the owner of a
registered trade mark to oppose registration of a similar mark accepted under the prior use
provisions of subsection 44(4). While other grounds may be relevant in a proceeding, the owner
of the registered mark will need to establish that their use of the mark predates the use of the
accepted application for an opposition to succeed under the new ground.
4.9.2 Item 30
1. This is an application provision. The amendment to section 58A will apply to trade marks
applications made after Royal Assent and applications that are pending but not accepted on that
day.
4.10 TRADE MARK SIMILAR TO TRADE MARK THAT HAS ACQUIRED A
REPUTATION IN AUSTRALIA
Section 60(a)
1. The intention of section 60 of the Act is to implement Australia's obligations to protect well-
known marks under the Paris Convention for the Protection of Intellectual Property and the 1994
World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS). The provisions have not been written so as to establish a new class of trade marks
("well-known" marks) or to prescribe a particular threshold of how well-known a mark must be.
Rather, the test has been written so that it can be applied to all marks. The test depends on the
extent of the reputation in Australia that has been acquired by a sign. In light of that reputation,
the question to be asked is whether the use of a subsequent trade mark would be likely to result
in deception or confusion. Section 60 is a ground for opposition to a trade mark application for
registration, which can also be used under section 88 as a basis for cancellation of a registration
by the courts.
2. Under the current arrangements the provisions of section 60 require that the applied-for mark
be substantially identical with, or deceptively similar to, the trade mark forming the basis of
opposition before consideration of any deception or confusion, resulting from the reputation of
the opponent's trade mark, can take place. Substantial identity and deceptive similarity are tests
undertaken in examination of an application before the opposition process, and have very well
established scope.
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3. There have been a number of instances where a trade mark has an established reputation in
Australia, and use of a subsequently applied-for trade mark would deceive or cause confusion,
even though the subsequent trade mark is not substantially identical with, or deceptively similar
to the original trade mark. However, because of the way paragraph 60(a) of the Act is written it
is not possible to currently use this provision to prevent registration of a mark which fails the
tests for substantial identity or deceptive similarity, but which nevertheless will cause confusion
or deception in relation to a well-known mark. The tests for deception and confusion are all well
established in judicial authority, and hinge on the question of whether or not a reasonable
number of people may be caused to wonder if a trade connection exists between the marks. By
removing the requirement for substantial identity or deceptive similarity from section 60, the
ground for opposition under section 60 can be used to oppose the registration of a trade mark
because of the possible deception or confusion arising solely from the reputation of a trade mark.
4. Under the amended provisions the consideration of oppositions would take into account the
extent of the reputation of the opposing mark at the time the opposed mark was applied for, and
the likelihood of deception and confusion occurring in the marketplace because of this.
4.10.1 Items 31-32
1. New paragraph 60(a) of the Act provides that a trade mark may be opposed where another
trade mark has a reputation, and the registration of the opposed mark will cause confusion or
deception in the market place, whether or not the reputation is built on a mark that is identical or
deceptively similar to the opposed mark.
4.11 TRADE MARK CONTAINING OR CONSISTING OF A FALSE GEOGRAPHICAL
INDICATION
Section 61(1)
1. The international definition of geographical indications is set out in Article 22 of the TRIPS
Agreement. `Geographical indication' is defined in section 6 of the Act. Geographical
indications are recognised signs indicating that goods originating from a particular locality have
a quality, reputation or other characteristic attributable to their geographical origin. Both
geographical indications and trade marks are signs which denote the origin of particular,
designated goods. Protection of the respective signs only extends to those goods, or closely
related goods, or to situations where use is likely to deceive or cause confusion. The existing
wording of the Act allows a person to oppose a trade mark that contains a geographical
indication where the goods to which the trade mark is applied are different from the goods to
which the geographical indication relates.
2. For example "Hilltops" is a geographical indication for wine produced around the town of
Hilltops in Southern New South Wales. Under the terms of section 61 of the Act, it is possible
to oppose a trade mark containing the word "Hilltops" for kites made in Perth, even where there
is no association between the Hilltops wine region and kites, and even though kites and wine are
unrelated goods.
3. This was never the intention of the Act. The intention was that it would be possible to
oppose a trade mark that contains a geographical indication where use of the trade mark may
lead consumers to believe the goods are associated with the geographical indication.
4.11.1 Item 33
1. This item adds a qualification to subsection 61(1) so that it is only possible to oppose a trade
mark containing a geographical indication where the goods specified by the trade mark are
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similar to those covered by the geographical indication or would otherwise be likely to deceive
or cause confusion.
4.11.2 Item 34
1. This item is an application provision. The amendment to subsection 61(1) will apply to trade
mark applications made after Royal Assent, and applications pending but not accepted on that
day.
4.12 APPLICATION MADE IN BAD FAITH
Section 62A
1. The Act allows removal of a trade mark on the basis that there was no intention in good faith
to use, authorise use of, or assign the trade mark. However, current opposition grounds do not
cover instances in which a person has deliberately set out to gain registration of a trade mark, or
adopted a trade mark in bad faith. There have been several instances in which trade mark
applicants have deliberately set out to gain registration of their trade marks, or have adopted
trade marks, in bad faith. Some examples of these include:
ˇ a person who monitors new property developments; registers the name of the new property
development as a trade mark for a number of services; and then threatens the property
developer with trade mark infringement unless they licence or buy the trade mark;
ˇ a pattern of registering trade marks that are deliberate misspellings of other registered trade
marks; and
ˇ business people who identify a trade mark overseas which has no market penetration in
Australia, and then register that trade mark with no intention to use it in the Australian
market and for the express purpose of selling the mark to the overseas owner.
2. When such situations occur, there is very little third parties can do to prevent registration of
this type of trade mark, because existing grounds for rejection and opposition do not allow the
Registrar to take these facts into account.
4.12.1 Item 35
1. This item inserts section 62A into the Act. This provision enables a person to oppose the
registration of a trade mark on the basis that the trade mark applicant set out to register their
trade mark in bad faith.
4.12.2 Item 36
1. This is an application provision. The amendment to section 62A applies to trade mark
applications made after Royal Assent, and applications pending but not accepted on that day.
4.13 THE REGISTRAR MAY INITIATE COURT ACTION
Sections 86, 87, and subsection 88(1)
1. Sections 86, 87 and 88 of the Act each provide that an aggrieved person may apply to a
prescribed court for certain actions to be taken. Under the Trade Marks Act 1955 (the 1955 Act)
it was possible for the Registrar to apply to a prescribed court for these actions to be taken. This
was not included in the current Act as the Registrar had never made an application under the
provisions of the 1955 Act. Since the commencement of the current Act, it has become apparent
that there may be occasions where it is in the public interest for the Registrar to take court action
to have the Register amended, or a trade mark removed from the Register. However, before
making application to the court, the Registrar will need to be satisfied that an appropriate ground
exists for doing so. The Registrar will review the facts of the matter, to the extent they are
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available, and consider the existence or otherwise of aggrieved parties and their inclination or
capacity to take action on their own behalf.
4.13.1 Items 37-39, 43-45
1. Items 37-39 amend sections 86-88 to allow the Registrar to take court action on his or her
own initiative. There is a limiting factor to this discretion set out in section 88A (item 43).
2. Item 43 inserts a new provision, section 88A, that sets limits upon when the Registrar may
initiate or partake in court action. The Registrar may only initiate court action if it is desirable in
the public interest.
3. Items 44 and 45 are consequential to the amendments made by amendments to section 86
and subsections 87(1) and 88(1).
4.14 AMENDMENT OR CANCELLATION -- OTHER SPECIFIED GROUNDS
Section 88
1. A trade mark can be removed from the Register due to grounds existing at the time the trade
mark application was filed, or due to grounds arising after the trade mark was filed.
2. A trade mark right can be renewed in perpetuity. There are trade marks on the Register that
were filed and registered under the Trade Marks Act 1905 as well as under the 1955 Act.
However, the continued existence of a trade mark relies upon the current Act irrespective of the
Act under which it was registered.
3. Paragraph 88(2)(c) of the Act allows removal of a trade mark due to grounds that exist at the
time the application to remove the trade mark is made. Paragraph 88(2)(c) of the Act is drafted
so that it refers to sections of the Act on which an application could have been opposed or
rejected. This style of drafting fails to recognise that some trade marks were registered under
previous Acts and so could never have been opposed or rejected on grounds found in the current
Act. Consequently, it is not clear that trade marks registered under a previous Act can be
removed from the Register due to grounds that have arisen since they were registered.
4.14.1 Item 41 and 42
1. These items amend paragraph 88(2)(c) to make it clear that any trade mark may be removed
from the register, irrespective of the Act under which it was registered, if it is likely to deceive or
cause confusion to consumers at the time an application to remove it from the Register is made.
4.15 REMOVAL OF TRADE MARK FROM REGISTER FOR NON-USE
Section 92
1. A condition of registration of a trade mark is that it must be used or intended to be used.
Where a trade mark has not been used for the required period, it can be removed from the
Register so that other traders may use the trade mark. The current provisions require that a
person must be aggrieved in order to seek removal of a trade mark from the Register due to non-
use. In recent years there have been a number of instances where a trade mark has not been used
for the required length of time, but the application for removal due to non-use has failed because
the person who made the application did not, often because of ignorance or a procedural failure,
show they were a person aggrieved. Any person concerned enough to make an application to
remove a trade mark due to non-use should have standing to make that application.
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4.15.1 Items 46 and 47
1. These items amend section 92 so that anyone, not just a person aggrieved, may make an
application for a trade mark to be removed from the Register due to non-use.
4.16 LOCALISED USE OF A TRADE MARK
Section 92(4)
1. Part 9 of the Act deals with removal of a trade mark from the Register for non-use. A person
may apply to the Registrar or to a court to have a trade mark removed because that trade mark
has not been used in Australia. If there has been no use, the Registrar or the court may then
decide to either remove the trade mark, or decide not to remove the trade mark, if it is reasonable
to do so. A further possible outcome, where the trade mark has only been used in a restricted
area, such as a particular city or state, is to limit the use of the trade mark to that place.
2. An example of this is where a registered trade mark for restaurant services has only been
used in Western Australia with no intention to use the trade mark anywhere else. Another
applicant may have, in good faith, begun using the same trade mark for a café in NSW. In order
to gain protection, the NSW applicant may need to take non-use action against the Western
Australian trade mark owner. Section 102 potentially allows the Registrar to restrict the two
trade marks to their geographical locales, Western Australia and NSW or the East Coast
respectively.
4.16.1 Item 48
1. This item adds a note to subsection 92(4) making it clear that where non-use of a trade mark
has been established in a particular place or locale, it may not be necessary to remove the trade
mark from the Register but merely restrict use of the trade mark to those places it is currently in
use.
4.17 USE OF TRADE MARK ON SIMILAR OR RELATED GOODS WOULD REBUT
ALLEGATIONS OF NON-USE
Section 101
1. When non-use action is taken, the owner of the trade mark may rebut those allegations by
showing that their trade mark has been used on the goods and/or services for which it is
registered. However, it is not uncommon for owners to use their trade mark on goods and/or
services that whilst not those on the registration, nevertheless are closely related. Currently, it is
not clear that the Registrar is able to take use on closely related goods or services into account,
when deciding whether to exercise his or her discretion not to remove a trade mark from the
Register.
4.17.1 Item 49
1. This item amends section 101 and makes it clear that the Registrar may take into account use
of the trade mark on closely related goods and services, when deciding not to remove a trade
mark from the register due to a non-use.
2. An example of this may be where a trade mark owner has a registration for computer
software goods, but rather than developing computer software for commercial and retail sales,
they have found instead their business has specialised in the provision of a custom development
of software systems service. The new provision will clarify that the Registrar is able to take into
account whether custom development of computer software and computer software are seen as
closely related services and goods.
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4.18 NOTICE OF OBJECTION TO IMPORTATION
Section 132
1. Part 13 of the Act sets out how a trade mark owner (or authorised user) may object to the
importation of goods infringing their trade mark. The registered owner of the trade mark must
give the Customs CEO a notice objecting to the importation of goods (notice of objection) that
infringe the trade mark. Currently, notices of objection lodged with Customs must be re-lodged
every two years (subsections 132(4) and (5)). Although there is no fee for lodging these notices,
the cost to the objector of preparing and lodging the notices can be significant, particularly
where the number of trade marks notified pursuant to a notice is large. There can be a
significant administrative burden on objectors in re-submitting the required paperwork and
evidence.
2. The Olympic Insignia Protection Act 1987 also includes provisions relating to seizure of
imported goods. That Act provides for a notice of objection to cease after four years. Costs to
the trade mark owner or authorised user will be reduced by extending the period in subsections
132(4) and 132(5) of the Act from two to four years.
4.18.1 Items 50
1. This item amends subsections 132(4) and 132(5) so that notices of objection remain in force
for four years. This will ease the administrative burden upon and costs to trade mark owners
utilising the Customs seizure provisions.
4.18.2 Item 51
1. This is an application provision. The amendment to subsections 132(4) and 132(5) will
apply only to notices of objection given under section 132 after Royal Assent.
4.19 POWERS OF FEDERAL COURT
Section 197(a)
1. When a person appeals a decision of the Registrar to the Federal Court, the Act allows the
Federal Court to "admit further evidence". As the Federal Court hears a case de novo, the
inclusion of the word "further" is confusing. The Federal Court, in Soncini v Registrar of Trade
Marks [2001] FCA 333 (30 March 2001), has expressed uncertainty about the meaning of
"further".
4.19.1 Item 57
1. This item deletes the word "further" from paragraph 197(a) to make it clear that the Federal
Court may admit any evidence on hearing an appeal against a decision of the Registrar, even if
that evidence was not filed previously with the Registrar.
4.20 PUBLICATION OF OFFICIAL JOURNAL OF TRADE MARKS
Section 226
1. The Registrar of Trade Marks must issue, at regular intervals, an Official Journal of Trade
Marks. Currently the Registrar must sell copies. In practice, the Registrar makes the Official
Journal available free of charge on a web-site. The number of paid subscribers to the paper copy
has diminished markedly and IP Australia wishes to discontinue the sale of paper copy and only
provide a free on-line service.
13
4.20.1 Items 58-60
1. These items amend section 226 by inserting the words "electronically or otherwise" so that
the Official Journal may be available in a format as determined by the Registrar and by removing
the requirement that the Registrar must sell of copies of the Official Journal.
4.21 CERTAIN PROCEEDINGS DO NOT LIE
Section 226B
1. The Act requires that all trade mark applications be published on filing. Therefore if a
person applies for a scandalous or defamatory trade mark, it will be published irrespective of its
content. Only later when the application has been examined will the fact that it is for a
scandalous or defamatory trade mark be identified and registration refused. It is not possible for
the Registrar to remove a trade mark from the trade mark database or Official Journal once it has
been published. Even if a trade mark application lapses or is refused, it will still be published.
Increased usage of electronic media has made the publication of scandalous or defamatory marks
more problematic.
4.21.1 Item 61
1. This item inserts a provision that confirms that the Registrar is not subject to civil or criminal
liability in relation to publishing, communicating, or distributing any material as authorised by
the Act or Regulations if that action is undertaken reasonably and in good faith. This provides
protection from legal action for the Commonwealth for actions the Act mandates.
4.21.2 Item 62
1. This is an application provision. The new section 226B will apply to information published
or otherwise made available after Royal Assent. This is to avoid any retrospective effect.
5 Part 2-Amendments Commencing on Proclamation
5.1 INCORPORATED ASSOCIATIONS MAY OWN A COLLECTIVE TRADE MARK
Section 6
1. A Collective trade mark is a trade mark that is used, or intended to be used, by members of
an association to distinguish the association's goods or services from goods or services provided
by other traders. The particular requirements of a collective trade mark are set out in Part 15 of
the Act. Under the current provisions the definition of an association only includes
unincorporated bodies (section 6). This means that many associations would not be able to own
a collective trade mark because most associations are now incorporated.
5.1.1 Items 63 and 64
1. Item 63 omits the term "association" from the list of terms defined in section 6 in the
Reader's guide. Item 64 repeals the definition of association from section 6. This allows a
broader meaning of association and enables any association, whether incorporated or not, to own
a collective trade mark.
5.2 CHANGE OF DEFINITION OF DATE OF REGISTRATION
Section 6
14
1. Amendments to the Act in this Bill (item 92), provide owners of trade marks registered under
the 1955 Act to link their registrations (section 239A). This simplifies the administration of
trade mark rights by enabling owners to deal with a number of registrations as one. In order to
accommodate these changes, the definition of date of registration in section 6 must be amended
to include reference to the newly linked registrations.
5.2.1 Item 65
1. This item repeals the definition of `date of registration' in section 6 and replaces it with a
new definition for the `date of registration' of a trade mark that inserts a reference to the new
provisions in section 239A to enable calculation of a date of registration to be made for those
newly linked marks.
5.3 DEFINITION OF FILING DATE
Section 6
1. Amendments to the Act in this Bill (item 68) provide a new system for divisional
applications. The filing date of divisional applications is dependant, not upon the date that the
new application was filed but the date on which the parent application, or potentially the earliest
application in a chain of divisional applications, was filed. This calculation is not taken into
consideration in the current definition of filing date in section 6.
5.3.1 Item 66
1. This item repeals the definition of filing date in paragraph 6(b) and replaces it with one that
takes into consideration the calculation of filing dates for divisional applications. Where there is
a chain of divisional applications, the filing date of any divisional application will be the filing
date of the earliest application in the chain.
5.4 DIVISIONAL APPLICATIONS
Sections 45 and 46
1. Division 3 of Part 4 of the Act sets out a process whereby a trade mark applicant may file a
new trade mark application (divisional application) as a continuation of their current application
(parent application) under certain circumstances. This is allowable provided the goods or
services of the divisional application are a sub-set of the parent application. The current
provisions set out a number of different ways a sub-set can be formed based on parts of the trade
mark and/or some of the goods and services. Each of these variations has different requirements
and different time limitations. The current provisions are unnecessarily complex and have
caused considerable confusion, leading to a number of divisional applications not being valid
because they do not meet the criteria. A new system for divisional applications is required that
meets the needs of customers and conforms to international treaty obligations.
2. The new system incorporates the most commonly used variation and the longest time frame
currently available. An applicant may, whilst the parent application is pending, file a divisional
application for the same trade mark as the parent application and thereby maintain the same
filing date. The parent application may itself be a divisional of an earlier trade mark application.
3. The applicant must divide the goods and/or services of the parent application between the
parent application and the divisional application by specifying clearly which goods or services
the divisional application relates to, and which goods and services are to remain in the parent
application. It is not possible to specify goods or services to be included in the divisional
application that were not in the parent application.
15
4. The applicant needs to divide the goods or services between the two trade marks because it is
not in the public interest to have the same trade mark in two different applications with the same
filing date, and relating to the same goods and services. There is a potential for confusion in the
marketplace should the owner at a later date choose to sell one of the trade marks to a third
party. If however, the parent application lapses after the divisional application is filed but before
the Registrar can amend it, this situation is avoided, and the Registrar need not amend the parent
application.
5.4.1 Item 68
1. This provision repeals Division 3 of Part 4 and replaces it with a new section 45 and section
46. The new provisions set out the conditions that have to be met in order to file a valid
divisional application. These are:
ˇ the trade marks must be the same; and
ˇ the divisional application must be made whilst the parent application is pending; and
ˇ the parent application may itself be a divisional application; and
ˇ the applicant must specify the goods and services to which the divisional application relates;
and
ˇ the applicant must specify the goods and services to remain in the parent application; and
ˇ the Registrar must amend the goods or services of the parent application, unless it has
already lapsed. The specification by the applicant of the goods and/or services in the
divisional and the goods and/or services to remain in the parent will provide sufficient
information for the Registrar to make the necessary amendment.
5.4.2 Item 69
1. This is an application provision. The amendments to section 45 and 46 apply only to
divisional applications filed after commencement. This is to give time for education and for
administrative details to be finalised.
5.5 APPLICATION FOR REGISTRATION OF SERIES OF TRADE MARKS
Section 27, Section 51, Section 51A and Section 82A
1. Trade mark owners often use their trade mark in the course of trade with minor variations.
When this occurs some trade mark owners want certainty that their trade mark is protected for
every variation used. Series trade mark applications, which are defined in section 51 of the Act,
provide this protection.
2. Paragraphs 51(1)(a)-(c) of the Act clearly identify what are acceptable variations in the trade
mark in a series trade mark application. Acceptable variations are statements and representations
of goods or services, number, price, quality, name of places and colour of the trade mark or part
thereof. However, paragraph 51(1)(d) allows for any matter that is not inherently adapted to
distinguish and does not substantially affect the identity of the trade mark to be an allowable
variation. This creates uncertainty as to what a series application can include and is not
consistent with the policy objective of allowing series applications only for minor and obvious
variations. It also causes people to make many defective series trade mark applications as they
do not understand the provisions.
3. Currently subsection 27(5) and subsection 51(1) work together to ensure that series trade
mark applications can only be made for similar goods and/or services in a single class. This
differs from normal trade marks which may be applied for in multiple classes (multi-class
applications). In order to bring series trade marks into line with other trade marks, multi-class
applications will now be allowable. This will reduce the administrative burden on series trade
16
mark owners who will only need to maintain one series application across multiple classes,
rather than a separate series application for each class for which they wish protection.
4. As multi-class series trade marks will now be allowable, provision is made in items 73 and
83 for owners of trade mark applications or registrations to link their trade marks to form a
single multi-class trade mark provided they are for the same series of trade marks and were filed
on the same day.
5.5.1 Item 67
1. This item is a consequential amendment to item 70. It amends subsection 27(5) by removing
the exception to that provision and now allows series applications to be filed in multiple classes.
Subsection 27(5) sets out that an application may be made in respect of goods and services in
one or more classes provided for under the regulations.
5.5.2 Item 70
1. This item amends subsection 51(1) by omitting the requirement that series trade mark
applications be for "similar goods or similar services within a single class" This enables trade
mark applicants to apply for multi-class series of trade marks.
5.5.3 Item 71
1. This item repeals paragraph 51(1)(d), so that only minor and obvious variations are
allowable in a series of trade marks.
5.5.4 Item 72
1. This is an application provision setting out that the new provisions for series applications
apply only to those filed after commencement.
5.5.5 Item 73
1. This item adds a new provision, section 51A, that enables applicants to apply to link series
applications made before the commencement of this provision provided they meet the conditions
of linking. The conditions are that the applications must be for exactly the same series of trade
marks and must have been filed on the same day. The trade mark applications will then be dealt
with as if they were one trade mark application.
2. Example: Karen makes 2 applications. The first is for the registration of trade mark 1 and
trade mark 2 in class 32. The second is for the registration of trade mark 1 and trade mark 2 in
class 33. The filing date of each of those applications is the same. Karen can apply to the
Registrar to have the applications dealt with as a single application for the registration of trade
marks 1 and 2 in classes 32 and 33.
5.5.6 Item 83
1. This item adds a new provision, section 82A, to enable trade mark owners who own series
trade marks registered prior to commencement to apply to link their trade marks provided they
meet the conditions of linking. These conditions are that the registrations must be for exactly the
same series of trade marks and that the trade marks must have the same filing date. The trade
mark registrations will then be dealt with as if they were one registration for a series.
17
5.6 CHANGE DETAILS BY TELEPHONE
Section 63 and section 66
1. Currently section 63 of the Act sets out which amendments to applications may be made and
how they must be made. Section 63 states that the Registrar may, at the written request of an
applicant or his or her agent, amend an application for the registration of a trade mark subject to
section 64 and section 65. Sections 64 and 65 set out the amendments that may be made.
2. Section 66 sets out which amendments may be made to other documents. Both of these
provisions state that the request must be made in writing. Amendments included in these
sections include administrative amendments, such as correction of typographical errors or minor
changes to personal details. This is a cumbersome process for both the applicant and the office
as many of the amendments are simple and straightforward, and do not in any way affect the
rights granted to the applicant. Many applicants request these amendments over the telephone,
and become frustrated when informed that the request must be in writing.
3. It is anticipated, however, that not all of these requests will be able to be made by the
Registrar on the authorisation of a telephone conversation. If the Registrar is of the opinion that
the amendment is of a complex nature, he or she will still be able to specify that the amendment
request be made in writing.
5.6.1 Item 74-76 and 78
1. These items amend subsection 63(1) and subsection 63(2)(b) and section 66 by deleting the
word "written". This allows that requests for minor amendments, such as corrections of
typographical errors or minor changes to personal particulars need not be in writing.
5.6.2 Item 79
1. This item inserts new section 66A giving the Registrar the discretion to require a request be
in writing if the requested amendment is not minor.
5.7 AMENDMENT AFTER PARTICULARS OF APPLICATION HAVE BEEN
PUBLISHED
Section 65 and section 65A
1. Section 65 of the Act provides for the circumstances in which amendments to trade mark
applications can be made after particulars of the application have been published.
Subsection 65(3) of the Act provides that an amendment may be made to correct a mistake of
fact or an error in the classification of any goods or services specified in the application. The
way in which these two circumstances have been defined in the Act confuses many trade mark
applicants.
2. In particular, there are occasions where the applicant has nominated an incorrect class, or
where the applicant has nominated goods in one class but clearly intended to seek protection in
all the classes in which the goods of that kind are classified. For example, the applicant has
applied for "blinds of all kinds" in class 20. The classification system for trade marks also lists
blinds in classes 6, 22 and 24 depending upon their construction. This amendment clarifies that
it is possible to add those extra classes.
3. An additional issue that has caused confusion is whether an amendment to a series trade
mark can be made to delete inappropriate or invalid representations of the mark. Whilst section
65 of the Act provides for circumstances in which amendment to trade mark applications can be
18
made after publication, subsection 65(2) provides that an amendment may only be made if it
does not substantially affect the identity of the trade mark. At present it is not clear that the
amendment of "series" applications by deletion of one or more trade marks not part of a valid
series is allowable. If the amendment is not allowable, it means that the application is not
permitted to move forward to acceptance, as it cannot meet the requirements of section 51.
4. The Registrar has the discretion under section 66 to make amendments to correct a clerical
error or an obvious mistake, or where the Registrar is of the opinion that it is fair and reasonable
in all the circumstances of the case to do so. However, section 66 specifically excludes
amendments to applications for the registration of a trade mark. A provision is being added to
allow applicants an opportunity to correct clerical errors or obvious mistakes in their application.
5. Some amendments to correct clerical errors or obvious mistakes may have more potential
impact upon the rights of others, because they may expand the scope of protection of the trade
mark. In order to alleviate any concerns that may be held about the scope of allowable
amendments, the new provision section 65A includes some checks and balances. The Registrar
may only make an amendment under this provision, if it is fair and reasonable to do so, taking
into account the possible impact of the amendment on any third parties. Any amendment made
under section 65A must also be advertised in the Official Journal and an opportunity provided
for the amendment to be opposed.
5.7.1 Item 77
1. This item amends section 65 of the Act. It maintains the current provisions and adds two
more examples of errors or mistakes that should be allowable. These are:
ˇ the ability to add a classes or classes of goods after publication if the Registrar is of the
opinion that it is fair and reasonable to do so (new subsection 65(5)); and
ˇ the ability to delete representations from a series application if they do not form part of a
valid series (new subsection 65(3)).
2. This item also adds a new section 65A, allowing amendments to correct a clerical error or
obvious mistake, but only if the Registrar believes that it is fair and reasonable in the
circumstances of the case to make the amendment. Because these amendments may extend the
right, third parties have the ability to oppose the amendment. However, it is not necessary to
publish an application for amendment under section 65A, if the Registrar would not allow the
amendment even if there was no opposition. This will prevent applicants and opponents
expending resources unnecessarily on oppositions in cases where the amendments would not be
allowed anyway.
5.8 RENEWAL WITHIN 6 MONTHS AFTER REGISTRATION EXPIRES
Section 78 and section 79
1. A trade mark is registered for 10 years (subsection 72(3) of the Act), and this term may be
extended indefinitely in 10 year intervals upon renewal, which requires payment of renewal fees.
If the renewal fee is not paid, the trade mark expires. Section 78 allows twelve months after the
trade mark has expired before the trade mark is removed from the Register. This is inconsistent
with the Patents Act, the Designs Act and the Madrid Protocol, which all allow six months after
renewal is due, before removal from the relevant register. Such inconsistencies of approach can
create confusion for users who own multiple types of intellectual property. Considerable
uncertainty is also created as other trade mark owners must wait twelve months after the trade
mark has expired to know whether the trade mark owner intends to renew the registration or
whether the trade mark has been abandoned.
19
5.8.1 Items 80-81
1. These items amend subsection 78(b) and section 79 by omitting twelve months and replacing
it with six months, giving a trade mark owner six months after the trade mark expires in which to
renew the registration, before the trade mark is removed from the register.
5.8.2 Item 82
1. This is an application provision. The amendment to paragraph 78(b) and section 79 will
apply to trade marks whose registration expires at least twelve months after commencement.
This is designed to give trade mark owners plenty of notice, so that their renewals may be paid in
a timely manner.
5.8.3 Item 84
1. This is a consequential amendment to the changes made to paragraph 78(b) and section 79
(items 80 and 81). It amends subsection 128(1), replacing it with a provision giving a trade mark
owner 6 months after the renewal fee is due in which to pay the fee before the trade mark is
removed from the Register.
5.8.4 Item 85
1. This is an application provision. The amendment to subsection 128(1) will apply to all trade
marks whose registration expires at least twelve months after commencement. This is designed
to give trade mark owners plenty of notice so that their renewals may be paid in a timely manner.
5.9 CUSTOMS CEO MAY SEIZE GOODS WHICH INFRINGE TRADE MARKS
Part 13
1. Part 13 of the Act sets out provisions allowing the Customs CEO to seize and deal with goods
that are imported into Australia if the importation infringes, or appears to infringe, a registered
trade mark. In order to gain protection under this part a trade mark owner (or an authorised user
of the trade mark) must file a notice of objection to importation (notice of objection) with the
Customs CEO (section 132 of the Act). The Customs CEO may then seize the goods unless he or
she is satisfied that there are no reasonable grounds for believing the trade mark is infringed
(section 133). Subsection 133(3) allows the Customs CEO to decide not to seize the goods if he
or she has not been given by the objector security, in an amount that he or she considers sufficient
to repay the Commonwealth any expenses that may be incurred.
2. In practice all objectors lodge the security at the time of applying for the notice of objection.
The Customs CEO currently requires a security of $10,000. The requirement for a security to be
paid at the time of filing a notice of objection may discourage trade mark owners from lodging
notices because of the financial and administrative burden placed on business, particularly small
business.
3. Currently the Customs CEO holds a considerable amount in cash securities, far in excess of
the amount recovered for expenses incurred in seizing the goods. Normally expenses recovered
reflect storage of the goods at non-customs premises, transport, handling and disposal of goods.
There is a considerable administrative burden on the Customs CEO to manage the cash and
documentation of securities lodged under the Act.
20
5.9.1 Items 86-88
1. These items repeal subsection 133(3) and replace it with new provisions whereby a written
undertaking to repay an expense is provided to the Customs CEO, instead of a cash security.
This will save businesses a significant expense at the time of lodging a Notice of Objection.
New subsection 133(3A) allows the Customs CEO to require a security only in cases where the
objector has previously defaulted on an undertaking to repay expenses. This is additional to any
action taken under the provisions in item 89 to recover expenses.
5.9.2 Item 89
1. This item adds section 141A, and sets out what actions are available to the Customs CEO if
there is a failure by an objector to comply with an undertaking. It sets out that if a person signs
an enforceable undertaking, and subsequently fails to make payment in accordance with the
undertaking, the Customs CEO is not obliged to seize any further goods under the notice of
objection until payment has been made in full. If the amount is not paid or is insufficient to meet
the expenses incurred then the amount outstanding would be a debt due by the objector (or
objectors jointly) and may be recovered by an action in a court of competent jurisdiction.
5.9.3 Item 90
1. This item is a transitional provision that allows for a person who has previously lodged a
notice of objection to be able to seek the return of their existing security, and provide an
enforceable undertaking instead, without the need to file a new notice of objection. The
Customs CEO will be able to call on the existing security until the enforceable undertaking is in
place, and only then will return any unused portion of the security to the objector.
5.10 LINKING (AMALGAMATION) OF TRADE MARKS REGISTERED UNDER THE
1955 ACT
Section 239A
1. Section 27 states that an application may be made in respect of goods and services of one or
more of the classes provided for in the regulations. The 1955 Act allowed for only single class
applications. When the 1995 Act commenced, provision was made in section 243 for trade mark
owners who had applications for the same trade mark filed on the same day and pending on
1 January 1996 to link their trade marks. The applications could then be dealt with as one multi-
class trade mark application. This provision did not apply to trade marks registered before
1 January 1996.
2. It is administratively convenient for both the trade mark owner and the Registrar if those
trade marks could be linked and dealt with as one registration. This is in line with the
amendments to section 82A which provide for the linking of registered series trade marks.
5.10.1 Item 92
1. This item amends Division 2 of Part 22 adding a new provision, section 239A, which allows
the registered owner who owns more than one registration, lodged on the same day for the same
trade mark prior to 1 January 1996, to link the registered trade marks so that they are treated as
one trade mark registration.
21
6 Part 3 - Minor and technical amendments
6.1.1 Items 93-103
1. These items make a number of minor and technical amendments consequential upon other
amendments made in the Bill.
22
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