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2001
THE
PARLIAMENT OF THE COMMONWEALTH OF
AUSTRALIA
HOUSE OF
REPRESENTATIVES
TRADE MARKS AND
OTHER LEGISLATION AMENDMENT BILL
2001
EXPLANATORY
MEMORANDUM
(Circulated by authority of
the Parliamentary Secretary to the Minister for Industry, Science and Resources,
the Hon Warren Entsch
MP)
ISBN: 0642 468524
TRADE MARKS AND OTHER LEGISLATION AMENDMENT BILL
2000
OUTLINE
This Bill amends the Trade Marks Act 1995 (‘the Trade Marks
Act’) to give effect to the recommendations of a post implementation
review of the trade marks legislation and to otherwise make minor and technical
amendments. This Bill also amends the Patents Amendment (Innovation Patents)
Act 2000 to correct several erroneous references in that Act.
The
Trade Marks Act commenced operation on 1 January 1996. Later that year, IP
Australia commenced a post-implementation review of that Act and the Trade
Marks Regulations 1995. A review team including members of the main interest
groups met in February 1998. It recommended that a number of changes were
necessary for the efficient and effective operation of the Act. This Bill gives
effect to the necessary changes.
In the interests of delivering better
service to Trade Marks Office customers, this Bill will repeal section 158 of
the Trade Marks Act—this provision currently makes it a strict liability
criminal offence for a Trade Marks Office employee to prepare, or help prepare,
a document to be filed under the Act or to search the Trade Marks Office
records, unless specifically authorised to do so. Its operation could prevent a
Trade Marks Office employee from helping a person fill in their trade mark
application or assist them with a search of the trade marks database. Its
repeal will enable the Trade Marks Office to consider new and innovative ways to
improve its customer service.
This Bill will also repeal paragraph
88(2)(d) of the Trade Marks Act—this provision enables a person to apply
to a court to cancel or amend a trade mark registration where the court would be
obliged to apply stricter criteria than would have been applied by the Registrar
of Trade Marks when accepting the trade mark for registration. The repeal of
this provision will remove the uncertainty inherent in this
difference.
This Bill also contains a series of amendments of a minor
nature intended to streamline procedures and remove anomalies and ambiguities
identified since the Trade Marks Act came into operation.
FINANCIAL IMPACT STATEMENT
No additional cost to the Commonwealth of Australia or any other person is expected to result from these amendments. There may be cost savings to users of the patent and trade mark systems from the increased legal certainty accorded to transactions under the legislation, but the size of those savings cannot be ascertained accurately.
NOTES ON INDIVIDUAL CLAUSES
Clauses 1 and 2 — Short title and commencement
1. Clause
1 provides for the Act to be cited as the Trade Marks and Other Legislation
Amendment Act 2001. Clauses 1, 2 and 3 and Part 1 of Schedule 1 to the Act
are to commence on the 28th day after the day on which the Act
receives the Royal Assent. Part 2 of Schedule 1 to the Act is to commence at the
later of: the time when Parts 4 to 10 of the Administrative Review Tribunal
Act 2001 commence; or the time immediately after the commencement of new
section 180A of the Trade Marks Act 1995. Schedule 2 to the Act
commences, or is taken to have commenced, immediately after the commencement of
the Patents Amendment (Innovation Patents) Act 2000.
Clause 3
— Schedule(s)
2. 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.
Schedule 1 — Amendment of the Trade Marks Act
1995
Part 1 — General Amendments
Item
1 Section 6 (definition of Commission)
3. This item amends the
definition of the term ‘Commission’ in section 6 of the Trade Marks
Act to refer to the 'Australian Competition and Consumer Commission'. Section 6
of the Trade Marks Act defines a number of expressions used in the Act. This
amendment is consequential on the commencement of Part 3 of the Competition
Policy Reform Act 1995, which replaced the Trade Practices Commission with
the Australian Competition and Consumer Commission.
Item 2 Section 6
4. This item inserts into section 6 of the Trade Marks Act a new
definition of the expression working day that excludes days of the
weekend and public holidays in the Australian Capital Territory. The expression
working day occurs in several provisions relating to the seizure by the
Chief Executive Officer of the Australian Customs Service of imported goods
infringing Australian trade marks, and subsequent actions taken in respect of
those seized goods.
Item 3 Paragraph 26(1)(b)
5. This
item substitutes a new paragraph 26(1)(b) of the Trade Marks Act to provide that
an authorised user of a registered trade mark can bring an action for
infringement of the trade mark: at any time, with the consent of the registered
owner; or within the prescribed period, where the registered owner has refused
on any occasion in that period to bring the action; or after the end of the
prescribed period, if the registered owner has failed to bring the action during
that period. This amendment is necessary because prior to amendment paragraph 26
(1)(b) did not allow the authorised user to bring the legal action before the
end of the prescribed period — even with the consent of the registered
owner, or where the registered owner has refused to bring the action.
Item 4 Application of amendment—section 26 of the Trade
Marks Act 1995
6. This item provides for the application of the
amendment to section 26, made by item 3 above, so that it applies to a
prescribed period that begins at or after the commencement of this item —
the amended section does not apply to prescribed periods already running at that
time.
Item 5 Transitional—paragraph 26(1)(b) of the Trade
Marks Act 1995
7. This item is a transitional provision which
continues the effect of the regulations made for the purposes of paragraph
26(1)(b). As a result, the currently prescribed period will continue as if it
were prescribed in regulations made under the substituted paragraph 26(1)(b).
Item 6 Subsection 45(1)
8. This item amends section 45 of
the Trade Marks Act to allow a person who has become the applicant for
registration of a trade mark by assignment or transmission of the mark to file a
divisional application. Subsection 108(2) provides that the person to whom a
trade mark, which is subject of an application, is assigned or transmitted
becomes the applicant for registration from the time the assignment is recorded.
As worded prior to this amendment, section 45 allowed only the person who filed
the initial application to make a further ('divisional') application
claiming the filing date of the initial application.
Item 7 At the
end of subsection 45(1)
9. This item inserts two notes following
subsection 45(1) of the Trade Marks Act to indicate that the terms
applicant and pending used in that subsection, as amended by item
6, are defined in section 6 of the Trade Marks Act.
Item 8 At the end
of section 45
10. This item inserts a new subsection 45(3) of the
Trade Marks Act to put beyond doubt the effect of the amendment made to
subsection 45(1) by item 6. Subsection 45(2) provides that the initial
application is taken to be the application whose particulars have been published
by the Registrar. As those particulars include the name of the applicant as it
appeared in the initial application for registration, this might prevent the
person in whose name the initial application is proceeding from filing
divisional applications based on that initial application.
Item 9 Section 46
11. This item repeals
section 46 of the Trade Marks Act, which provides that a divisional application
may be made only if the initial application is pending. The amendment to
subsection 45(1) makes section 46 redundant.
Item 10 At the end of
subsection 52(2)
12. This item makes a consequential amendment to
subsection 52(2) of the Trade Marks Act to provide that a notice of opposition
may be filed in accordance with the new subsection 52(5) inserted by item
11.
Item 11 At the end of section 52
13. This item inserts
a new subsection 52(5) of the Trade Marks Act which details circumstances under
which an extension of time granted by the Registrar of Trade Marks to a person
to file a notice of opposition to registration of a trade mark, is taken to have
been granted to another person. This is to apply where the right or interest,
that the first person was proposing to rely upon to oppose the registration, is
transferred to the second person before the notice of opposition is filed.
Section 52 provides that a person may oppose the registration of a trade mark
that has been accepted for registration by the Registrar, by filing a notice of
opposition within the prescribed period or within that period as extended under
the regulations. The amendment is necessary to allow the transfer of the
proposed opposition proceedings, as section 53 allows once the notice of
opposition has been filed.
Item 12 Application of
amendments—section 52 of the Trade Marks Act
1995
14. This item provides for the amendments to section 52 to
apply only where rights or interests become vested in another person at or after
the commencement of this item.
Item 13 Subsection 63(2)
15. This item amends subsection 63(2) of the Trade Marks Act to allow the
Registrar to amend an application for registration of a trade mark so as to
ensure that the application is made in accordance with the Act and Regulations.
The Registrar will be able to take this action on his or her own initiative, but
must act in accordance with the Regulations which require the agreement of the
applicant before any amendment can be made. Subsection 63(2) already allows the
Registrar, on his or her own initiative, to amend an application for
registration of a trade mark in order to overcome any ground for rejection of
the application. The amendment is to allow the Registrar to amend an application
in either or both cases.
Item 14 Paragraph
68(1)(b)
16. This item substitutes a new paragraph 68(1)(b) of the
Trade Marks Act to provide that the Registrar of Trade Marks must register a
trade mark where there has been an opposition to registration of the trade mark,
but the opponent has withdrawn the opposition, or the opposition has been
dismissed by the Registrar under section 222 because an opponent who does not
reside or carry on business in Australia refuses to give security for costs.
These cases are to be additional to those already set out in paragraph 68(1)(b).
The amendment addresses an oversight in the legislation.
Item
15 Transitional—subsection 68(1) of the Trade Marks Act
1995
17. This item is a transitional provision to ensure that an
opposed application that the Registrar of Trade Marks purported to register
before the commencement of this item, where the opposition was withdrawn or
dismissed, is as valid as it would have been under subsection 68(1), as amended
by item 14 above.
Item 16 Section 73
18. This item makes
a consequential amendment to section 73 of the Trade Marks Act to provide that
registration of a trade mark ceases if the trade mark is removed from the
Register under the new section 80F inserted by item 24 below.
Item
17 Division 2 of Part 7 (heading)
19. This item substitutes a new
heading to indicate that Division 2 of that Part governs the general renewal of
registrations. This is consequential on the insertion by item 24 of a new
Division 3 that governs renewal of registrations that have been delayed for
10 or more years after their filing dates.
Item 18 Before section
75
20. This item inserts a new section 74A of the Trade Marks Act to
modify the application of Division 2 of Part 7 to make it clear that the
Division applies to registered trade marks entered into the Register of Trade
Marks within the period of 10 years after the filing date of the application for
registration, and to subsequent renewals of trade marks already renewed
under Division 3. The first renewal of registered trade marks entered
into the Register of Trade Marks after the end of that 10 year period is done
under Division 3 inserted by item 24 below.
Item 19 Section
78
21. This item makes a consequential amendment to section 78 of the
Trade Marks Act to provide that the reference in that section to a trade mark
registration being unrenewed is to a registration that has not been renewed
under section 77. This is to ensure that section 78, which sets out the
consequences of that failure to renew, only applies to unrenewed registrations
caught by the general renewal provisions set out in Division 2 of Part 7, not
those set out in new Division 3 inserted by item 24
below.
Item 20 Paragraph 80(a)
22. This item
makes a consequential amendment to paragraph 80(a) of the Trade Marks Act to
provide that the reference in that section to a trade mark registration being
renewed is to a registration that has been renewed under section 77 or 79. This
is to ensure that section 80, which provides for the status of unrenewed trade
marks, only applies to unrenewed trade marks caught by the general renewal
provisions set out in Division 2 of Part 7, not those set out in new Division 3
inserted by item 24 below.
Item 21 Paragraph 80(b)
23. This
item amends paragraph 80(b) of the Trade Marks Act to provide that an unrenewed
trade mark continues as a ground for rejection of later applications made during
the term of the registration or up to the end of the 12 month period following
expiry of the registration. As worded prior to this amendment, section 80 does
not provide for an unrenewed trade mark to be taken to be a registered trade
mark in respect of later applications made during the term of the registration.
This amendment is intended to address that shortcoming in the
legislation.
Item 22 At the end of section 80
24. This item
amends section 80 of the Trade Marks Act to make it clear that an unrenewed
trade mark ceases to be a ground for rejection of later applications at the end
of the 12 month period following expiry of the registration. As worded prior to
this amendment, section 80 does not make it clear that where the unrenewed trade
mark is removed from the Register at the end of the grace period — because
it has not been renewed in that period — it is no longer a ground for
rejection of any application. This amendment is intended to remove any
ambiguity.
Item 23 Transitional—Division 2 of Part 7 of the
Trade Marks Act 1995
25. This item is a transitional provision
to ensure that all renewals effected under Division 2 of Part 7 before
commencement of the item are valid. The item applies to renewals of
registrations that were entered in the Register of Trade Marks under section 69
after the end of the period of 10 years after the filing date of the relevant
applications for registration. That is to say, it applies to all such renewals,
whenever the request for renewal was made, provided that the particulars of
registration were entered into the Register after the end of that 10 year
period. The item validates those renewals purported to be made under section 77
or section 79 by modifying the operation of subsection 75(1) and section 79, so
that the request for renewal under either of those provisions could have been
made at any time. Any renewals of registrations entered after the end of the
period of 10 years from the filing date, outstanding at commencement of this
item, will be made under the new Division 3 of Part 7 inserted by item 24
below.
Item 24 At the end of Part
7
26. This item inserts new Division 3 of Part 7 into the Trade Marks
Act (new sections 80A, 80B, 80C, 80D, 80E, 80F, 80G, 80H) to provide adequate
statutory basis for renewal of trade marks which have not been registered within
the period of 10 years from their filing date. The new sections provide a
modified procedure for ceasing and renewal of a trade mark that was entered into
the Register of Trade Marks after the end of the period of 10 years after the
filing date of the application for registration.
27. It is uncommon for
an application to still be pending after the end of 10 years from its filing
date. These applications are most often held up by opposition proceedings or
legal actions. On very rare occasions, as a result of extremely protracted
litigation, a trade mark may not be registered until after 20 or more years from
its filing date. These provisions provide the necessary basis for renewal of the
registration of such marks, and ensure that the owners of such trade marks have
the same flexibility in renewing their registrations as the owners of trade
marks that are registered within ten years from their filing
dates.
28. At registration of the trade mark, the registration is taken
to have ceased effect at the expiry of 10 years after the filing date (new
section 80B) — this is just the first period of registration that all
unrenewed registrations enjoy. If no action is taken to renew the registration,
this remains the case.
29. New section 80C provides that as soon as
practicable after the day that the trade mark is entered in the Register
('Register entry day'), the Registrar of Trade Marks must notify the registered
owner that a request may be made for renewal of the registration. The registered
owner may only ask the Registrar to renew the registration during the prescribed
period (new section 80D), which commences on the Register entry day (new
subsection 80A(3)). The request must be made in accordance with new section 80D,
including the regulations to be made under that section specifying the payment
of fees. Under new section 80E, if the request complies with new section 80D,
the Registrar must renew it accordingly, and notify the registered owner of the
renewal in accordance with the regulations. New section 80E is analogous to
section 77 in Division 2 of Part 7.
30. The request must nominate at
least the first potential renewal period (new subsection 80D(2)). This is the
period of 10 years that runs from the end of the period of 10 years after the
filing date to the end of 20 years after the filing date (new paragraph
80A(2)(a)). If the Register entry day fell in that period, (e.g. registration
occurs 10 years and 6 months after the filing date), this is the sole period
that may be nominated under new section 80D.
31. Less commonly,
registration will occur in a later potential renewal period: a successive period
of 10 years that commences before the trade mark is entered in the Register (new
paragraph 80A(2)(b)). In that case, the registered owner may nominate continuous
potential renewal periods, starting with the first potential renewal period
(subsection 80D(3)).
32. The effect of the renewal will depend on the
potential renewal period(s) nominated. Where the registered owner nominates each
of the potential renewal periods (i.e. the first renewal period and all
subsequent potential renewal periods up to the 10 year period in which the
Register entry day fell) then the registration is taken never to have ceased
effect, and continues in effect until the expiry of the current renewal period.
33. New paragraph 80F(a) provides that where the registered owner
nominates some of the potential renewal periods (i.e. the first potential
renewal period and none (or some) of the subsequent potential renewal periods),
then the registration is taken to have ceased prior to its Register entry day,
at the end of the last potential renewal period nominated.
34. New
paragraph 80F(b) provides that in the event that the registered owner fails to
renew the registration, or does not nominate each of the potential renewal
periods, the Registrar must remove the trade mark from the Register 10 months
after the end of the prescribed period. This provision is analogous to paragraph
78(b) in Division 2 of Part 7. After removal of the mark, its registration
cannot be renewed.
35. New section 80G provides for renewal where the
registered owner has failed to renew the registration under new section 80E
within the prescribed period. This new section provides a grace-period running
for 10 months from the end of the prescribed period and terminating when the
mark is removed from the Register under new paragraph 80F(b). The provision is
analogous to section 79 in Division 2 of Part 7.
36. New section 80H
provides that a trade mark that has not been renewed under new sections 80E or
80G (an unrenewed trade mark) continues to be treated as a registered trade mark
for the purposes of examining an unrelated application for registration of a
trade mark made during the term of the registration, or up to the end of the 10
month period following expiry of the registration. The unrenewed trade mark
ceases to be a ground for rejection of the unrelated application when it can no
longer be renewed under 80G (i.e. when it has been removed from the Register
under new paragraph 80F(b)). The provision is analogous to section 80 in
Division 2 of Part 7.
Item 25 Paragraph 88(2)(d)
37. This
item repeals paragraph 88(2)(d) of the Trade Marks Act.
Item 26 After
section 96
38. This item inserts a new section 96A into the Trade
Marks Act to provide that where a person has filed a notice of opposition to an
application for removal of a trade mark registration for non-use, the opposition
can proceed in the name of another person. This substitution will only occur
where the right or interest that the first person relied on to file the notice
of opposition is transferred to the second person. Generally, the second person
must notify the Registrar in writing that the right or interest has vested in
that person. Where the opposition proceedings are before a court, the court must
be notified of the vested right or interest. The second person may also choose
to withdraw the opposition, in which case there is no further
proceeding.
39. The proposed amendment is necessary to allow the transfer
of the opposition where the right or interest has been transferred. Prior to
this amendment, where the registered owner commences the opposition proceedings,
and then assigns the registered trade mark to another person, there is no
provision in the Act for the new registered owner to take over the opposition.
This is anomalous, since subsection 92(5) provides that an application for
removal based on a particular right or interest can be taken over by another
person to whom that right or interest has been transferred.
Item
27 After paragraph 122(1)(f)
40. This item inserts new paragraph
122(1)(fa) of the Trade Marks Act to extend a defence to an action for
infringement of a trade mark already provided in paragraph 122(1)(f). Paragraph
122(1)(f) provides that a registered trade mark is not infringed by a person
using that trade mark, where the court considers that the person could obtain
their own registration of that trade mark. The new paragraph extends that
defence to apply to a trade mark that is substantially identical with, or
deceptively similar to, the registered trade mark. Section 10 states that a
trade mark is taken to be 'deceptively similar' to another trade mark if it so
nearly resembles that other trade mark that it is likely to deceive or cause
confusion. It is an inherent characteristic of the trade mark, and does not
relate to a person's conduct.
Item 28 Paragraph
127(b)
41. This item amends section 127 of the Trade Marks Act, by
substituting a new paragraph 127(b) to ensure that the provisions of section 127
apply whether the application for removal of the trade mark for non-use was
filed directly with the court, or was referred to the court by the Registrar of
Trade Marks. Section 127 applies where a court finds that a defendant has
infringed a trade mark. Where the court also finds there are grounds for
removing the trade mark from the Register of Trade Marks for non-use, the
plaintiff is not entitled to damages or an account of profits in respect of any
infringement during the period for which the court finds the registered trade
mark was not used in good faith by its registered owner. As worded prior to this
amendment, this defence is limited to the case where the defendant applies
directly to the court under subsection 92(3) for removal of the trade mark, and
does not include the case where the application for removal was made to the
Registrar under subsection 92(1), but was referred by the Registrar to the court
under section 94. To remove this unintended anomaly, the new paragraph 127(b)
includes both cases.
Item 29 Section 128
42. This item
makes a consequential amendment to section 128 of the Trade Marks Act to provide
that the reference in that section to a trade mark registration being renewed is
to a registration that is renewed under section 79, in Division 2 of Part 7.
This is to ensure that subsection 128(1) does not apply to registrations that
are renewed under new section 80G in Division 3, inserted by item 24 above. New
subsection 128(2) inserted by item 30 below will apply to those trade marks.
Section 128 restricts the bringing of a legal action for an infringement of a
trade mark that occurs between the expiry of the registration and before its
renewal during the grace period of 12 months following the expiry.
Item 30 At the end of section 128
43. This item amends
section 128 of the Trade Marks Act by inserting a new subsection 128(2) that
makes similar provision to the current section 128, which provides for certain
renewals under section 79 in Division 2 of Part 7. The new subsection applies
where a trade mark registration is renewed under new section 80G in Division 3,
inserted by item 24 above: the trade mark has not been renewed within the
prescribed period following its registration, but is instead renewed within the
grace-period of 10 months following the end of the prescribed period. In that
case, the new subsection restricts the bringing of a legal action for an
infringement of the trade mark that occurs between the end of the prescribed
period and before its renewal during the grace period.
Item
31 Subsection 132(3)
44. This item substitutes a new subsection
132(3) of the Trade Marks Act to allow an authorised user of a registered trade
mark to give a notice to the Chief Executive Officer of the Australian Customs
Service (‘Customs CEO’) objecting to the importation of goods that
infringe the trade mark: at any time, with the consent of the registered owner;
or within the prescribed period, where the registered owner has refused on an
occasion in that period to comply with the request to give that notice; or after
the end of the prescribed period, if the registered owner has failed to give
that notice during that period. The new subsection is necessary because the
current subsection does not provide for the authorised user to give the notice
before the end of the prescribed period — even with the consent of the
registered owner, or where the registered owner has refused to give the
notice.
Item 32 Application of amendment —section 132 of the
Trade Marks Act 1995
45. This item provides for the
application of the amendment to section 132, made by item 31 above, so that it
applies to a prescribed period that begins at or after the commencement of this
item — the amended section does not apply to prescribed periods already
running at that time.
Item 33 Transitional—subsection 132(3) of
the Trade Marks Act 1995
46. This item is a transitional
provision which continues the effect of the regulations made for the purposes of
subsection 132(3). As a result, the currently prescribed period will continue as
if it were prescribed in regulations made under the substituted subsection
132(3).
Items 34 and 35 Subsection 137(5)
47. These items
amend subsection 137(5) of the Trade Marks Act to extend the period in which a
person who objected to the importation of infringing goods ('objector') must
obtain a court order to prevent the Chief Executive Officer of the Australian
Customs Service (‘Customs CEO’) from releasing seized infringing
goods to their designated owner under the
Customs Act 1901.
48. Item 34 amends subsection 137(5) to increase that period from 3
weeks to 20 working days to allow additional time for the objector to obtain the
necessary court order.
49. Item 35 amends subsection 137(5) to
make it clear that the court order referred to in that subsection is to be
directed at the Customs CEO, not to the designated owner.
Items 36 and
37 Section 138 (note 3)
50. Item 36 amends note 3 following section
138 of the Trade Marks Act, to correct an erroneous reference to the
non-existent paragraph 26(b) by substituting it with a reference to paragraph
26(1)(b).
51. Item 37 makes a consequential amendment to note 3.
Following the amendment to paragraph 26(1)(b) by item 3 above, an authorised
user may bring an action for infringement of the trade mark in a number of
circumstances: where the registered owner consents to the authorised user
bringing an action for infringement; where the registered owner refuses to bring
the action for infringement; or where the registered owner fails to bring the
action for infringement. The note is amended to reflect those
circumstances.
Item 38 Section 158
52. This item repeals
section 158 of the Trade Marks Act.
Items 39, 40 and 41 Section 159
and at the end of section 159
53. Items 39, 40 and 41 amend section
159 of the Trade Marks Act to make it clear that a person other than the
Director of Public Prosecutions can apply for orders forfeiting tainted property
to the Commonwealth (forfeiture orders) under the Proceeds of Crime Act
1987, where that person has instituted proceedings for the prosecution of an
indictable offence under Part 14 of the Trade Marks Act.
54. Section 159
modifies the operation of Division 2 of Part II of the Proceeds of Crime Act
1987 such that if a person other than the Director of Public Prosecutions
has instituted proceedings for the trial of another person in respect of an
indictable offence under Part 14 of the Trade Marks Act, a reference in that
Division to the Director of Public Prosecutions includes a reference to the
person who has instituted proceedings. Part 14 of the Trade Marks Act sets out a
number of offences.
55. Item 39 replaces the reference in section 159 to
proceedings for the trial of another person with reference to proceedings
for the prosecution of another person.
56. Items 40 and 41 amend
section 159 to make it clear that a person other than the Director of Public
Prosecutions can apply for forfeiture orders under the Proceeds of Crime Act
1987. The amendment extends the modification made by section 159 of the
Trade Marks Act to include not only Division 2 of Part II of the Proceeds of
Crime Act 1987, but also Division 1 of Part II of that Act to the extent
necessary.
Item 42 Section 170
57. This item makes a
consequential amendment to section 170 of the Trade Marks Act to omit reference
to paragraph 88(2)(d), which is repealed by item 25 above.
Item
43 After section 180
58. This item inserts a new section 180A into
the Trade Marks Act to provide that the consent of the Australian Competition
and Consumer Commission is required for the assignment of certification trade
marks that have not yet been registered, just as the Commission's consent is
required for the assignment of registered certification trade marks under
section 180. The new section will operate in the same fashion as section 180,
and will provide for the Commission's refusal to give consent to be reviewable
by the Administrative Appeals Tribunal.
59. The requirement for the
Commission's consent will arise once the Registrar of Trade Marks has sent a
copy of the application and prescribed documents to the Commission under
subsection 174(1) for the Commission's consideration of the applicant, any
approved certifiers and the rules governing the use of the mark. This is to
ensure that the Commission's consideration of those matters is not stymied by a
change in the identity of the applicant and any approved certifiers. Prior to
the Registrar sending those documents to the Commission, the consent of the
Commission to any assignment is unnecessary — the Commission will have the
opportunity to consider the new applicant and approved certifiers, when the
documents are sent to it.
Item 44 Section 186
60. This item
makes a consequential amendment to section 170 of the Trade Marks Act to omit
reference to paragraph 88(2)(d), which is repealed by item 25 above.
Item 45 Paragraph 222(a)
61. This item amends paragraph
222(a) of the Trade Marks Act to provide that the Registrar cannot require a
security for costs from a person opposing an application for removal of a trade
mark registration for non-use. This is done by specifying the other opposition
proceedings that can be brought under the Act: opposition to registration of a
trade mark under section 52; and opposition to an extension of time of more than
3 months for doing an act.
62. Section 222 enables the Registrar to
require security for costs from a person who neither resides nor carries on
business in Australia, and where that person: opposes registration of a trade
mark; opposes an extension of time of more than 3 months for doing an act;
applies for a trade mark to be removed from the Register for non-use; or opposes
such an application for removal of a trade mark. Generally speaking, security
for costs is required from a person instituting proceedings, to protect the
position of the person defending the proceedings.
63. An opponent to an
application for removal of a trade mark for non-use is merely defending an
existing registration. As section 100 places on the opponent the burden of
proving that the trade mark has been used by the registered owner, it is
inappropriate that the opponent should be required to provide security for the
applicant's costs. The proposed amendment will remove this
anomaly.
Item 46 After section 254
64. This item inserts
new sections 254A, 254B and 254C into the Trade Marks Act to remedy shortcomings
in transitional provisions in the Act.
65. On 1 January 1996, the
Trade Marks Act 1955 was repealed, and the current Trade Marks Act came
into effect. To ensure that the new legislation did not disadvantage someone
acting lawfully under the repealed Act, section 254 was included. That section
provides that a person engaging in conduct before 1 January 1996 which did
not constitute infringement of a trade mark registered under the repealed Act,
but which constitutes infringement under the current Act, may continue in that
conduct without infringing the mark, provided that the activity has continued
without interruption since 1 January 1996. Trade marks registered under the
repealed Act which had not ceased by that date ('existing registered marks'),
were automatically registered under transitional provisions in section 233 of
the current Act.
66. Section 254, as currently worded, is inappropriately
limited to trade marks that had been registered under the repealed Act, and
should also be extended to trade mark applications filed, but not registered
under the repealed Act. Such applications could only be registered under the
transitional provisions of the current Act. Once registered, the registrations
would have effect back to their filing dates (ie. prior to 1 January 1996), and
the registered owners could take legal action under the current Act for
infringements occurring after the relevant filing date. As a result, conduct
that was continued in the mistaken understanding that it was still lawful,
because it had been lawful under the repealed Act, could be actionable under the
current Act.
67. Accordingly, new section 254A is to protect a person
who engaged in conduct before
1 January 1996 that did not constitute
infringement of a mark applied for under the repealed Act, and who continued
engaging in that conduct, although it constitutes infringement of that mark
registered under the current Act. By virtue of this section, that conduct will
not infringe the registered trade mark.
68. Under the repealed Act the
old Register of Trade Marks was divided into several parts. A trade mark
registered in Part B of the old register was subject to the so-called
‘Part B defence’ — providing that an injunction or other
relief would not be granted in an action for infringement of that mark, where
the court was satisfied that the defendant's conduct was not likely to deceive
or cause confusion. Section 254, as currently worded, does not continue the
'Part B defence' for existing registered marks formerly registered in Part B of
the Register, or for registered trade marks that were the subject of
applications under the repealed Act for registration in Part B of the old
register. This is because that section requires that the conduct did not
constitute an infringement of the mark under the repealed Act. The 'Part B'
defence is a limitation on relief given to a plaintiff, which presupposes that
the court has found that infringement occurred.
69. Accordingly,
proposed new section 254B applies the ‘Part B defence’ in respect of
existing registered marks that were registered in Part B of the old register.
New section 254C applies the ‘Part B defence’ in respect of
registered trade marks that were the subject of applications under the repealed
Act for registration in Part B of the old register. The new sections will
protect a person who engaged in infringing conduct before 1 January 1996, and
who has continued that infringing conduct without interruption since then.
Although such conduct is not strictly lawful, it is appropriate that such
persons continue to enjoy the benefit of 'Part B' defence that was previously
extended to them under the repealed Act.
70. Although the new sections
address shortcomings in the transitional provisions originally included in the
current Act, they will not have any retrospective effect.
Part 2
— Amendment relating to the Administrative Review
Tribunal
Item 47 Subsection 180A(4)
71. This item
amends the reference to the Administrative Appeals Tribunal in new subsection
180A(4) of the Trade Marks Act to refer to the Administrative Review Tribunal
instead. This amendment will only have effect should the Administrative Review
Tribunal Bill 2000 be enacted — see clause 2 above.
Schedule
2 — Amendment of the Patents Amendment (Innovation Patents) Act
2000
Items 1 and 2 Schedule 2 to the Patents Amendment
(Innovation Patents) Act 2000
72. These items amend subitem 2(2)
and item 7 of Schedule 2 to the Patents Amendment (Innovation Patents) Act
2000 to correct several erroneous references to items in Schedule 1 to that
Act.