Recent Changes to the Trade Marks Act 1995

This article first appeared in The Watermark Journal Vol 24 No 2 (June 2007)

Trade mark owners should be aware that significant amendments to the Australian Trade Marks Act 1995 (“the Act”), outlined in the Trade Marks Amendment Act 2006, have now come into effect.

The purpose of the Amendment Act is to clarify the operation of the Act and to implement changes in areas where issues have arisen since its implementation in January 1996. There are 103 items included in the Amendment Act. While some are minor administrative changes, others address issues of clarity in the Act and reduce regulatory and administrative burdens on trade mark owners. The Amendment Act also introduced provisions which strengthen the rights of trade mark owners, including new and amended grounds of opposition. The major changes are outlined below.

Grounds of Opposition
Rejection or opposition to a trade mark may now occur based on any ground contained anywhere in the Act. New grounds of opposition have been created which apply to applications filed after 23 October 2006 and pending applications which were not accepted on that day.

• One of the most important new grounds expressly permits opposition to registration of a trade mark on the ground that the application was made in bad faith. This would cover situations of “Register squatting” on trade marks of overseas owners. This change brings Australian law more into line with that of important trading partners.
• Where an application is accepted under the prior continuous use provisions, it may now be opposed on the basis of earlier and continuous use of a substantially identical or deceptively similar mark in respect of similar or closely related goods or services.
• Well known and famous mark applications have been given better protection through the new provisions. A trade mark may be opposed where one trade mark has a reputation and the use of the other mark will cause confusion or deception in the marketplace. There is no longer any requirement for the respective trade marks to be substantially identical or deceptively similar. The amendments recognise that market deception or confusion may still occur even where the respective trade marks are not substantially identical or deceptively similar. This change is in line with the international trend to better protect well known and famous marks.
• An opposition based on geographical indication has been clarified so that it only applies where the goods specified in the opposed application are similar to those produced in the relevant geographical region or, where the goods are different, would otherwise be likely to deceive or cause confusion.
• The Registrar is given the discretion to revoke acceptance and to re-examine an application where an opponent can establish that the application was amended contrary to the Act.

Removal from the Register for Non-use

• The requirement that an applicant in a non-use removal action be an “aggrieved person” has been removed. Any person will be deemed to have sufficient standing. This will apply to non-use actions filed after 23 October 2006.
• The Act has been clarified to indicate that the Registrar may take into account use of the trade mark on similar or closely related goods or services when deciding whether or not to remove a trade mark due to non-use.
• The Registrar’s ability to allow a mark to remain on the Register with a restriction to a particular geographical area to reflect the actual use made of the registered mark has been clarified.

Series marks
Multi-class series applications will be allowable, but the definition of what constitutes a “series” has been significantly narrowed. Existing pending series applications for the same marks filed on the same day in different classes can be linked so they can be dealt with as a single application. Existing registrations for series trade marks may also be linked to a single multi-class registration only if lodged on the same day for the same mark prior to 1 January 1996. The new provisions for series applications apply only to those filed after commencement of the Trade Marks Amendment Act, 23 October 2006.

Divisional Applications The new provisions allow a divisional application of a divisional application to maintain the filing date of the original parent application. The Act now makes it clear that a divisional application may only be filed for the same trade mark in respect of some of the goods and/or services in the pending parent application. Where there is a chain of divisional applications, the filing date of any divisional will be the filing date of the earliest application in the chain. Prior to this change the priority date could only have been obtained from the actual filing date of the previous divisional application.

Grace Period
A very important amendment to take into account is the reduction of the grace period for renewing a trade mark, there is now only six months (reduced from 12 months) in which to effect renewal after the trade mark expires. If a registration is not renewed in the six month period the trade mark is removed from the Register. This brings the grace period into line with that relating to renewal of patents in Australia.

Customs Provisions
The term of Customs Notices of Objection has been increased from two years to four years. The requirement for a cash security has been replaced with a requirement for an undertaking to be given to repay any expenses incurred by the Australian Customs Service. Trade mark owners or authorised users who presently have lodged cash securities or bank guarantees may replace such security with an undertaking. For further information on the Customs Provisions amendments please refer to the article “No to Counterfeiting and Piracy”, Watermark Journal, Volume 24, No 1.

Other Amendments
The power of a registered owner of a trade mark to deal with the trade mark is limited only by rights appearing in the Register, not unregistered rights. This will provide an incentive to persons such as licensees with a claim to an interest or right to a registered trade mark to record their interest on the Trade Marks Register, and enables potential purchasers of a trade mark to rely on the Register to ascertain any encumbrances.
A full and detailed list of all of the changes can be found in the Explanatory Memorandum to the Trade Mark Amendment Bill 2006, which can be viewed at http://www/aph.gov.au/ParlInfo/BillsNet/main.htm under “Old Bills”.
If you believe your trade mark may be affected by the new amendments please contact one of our attorneys.