UPDATE TO AUSTRALIAN TRADE MARK LAW - October 2006
Introduction
Australian Trade Marks law is expected to undergo important changes brought by the Intellectual Property Laws Amendment Act 2006 ( "IP Laws Amendment Act") and Trade Marks Amendment Act 2006 ( "the Trade Marks Amendment Act"). The IP Laws Amendment Act was passed by the Parliament on 14 September 2006 and received royal assent on 27 September 2006 . The Trade Marks Amendment Act was passed on 12 October 2006 and will commence upon royal assent (except for Schedule 1, Part 2, which will commence on proclamation).
This article reviews the key changes to the Trade Marks Act 1995 ( "the Act") introduced by the IP Laws Amendment Act and the Trade Marks Amendment Act.
A. CHANGES MADE UNDER THE IP LAWS AMENDMENT ACT
The following amendments to the Trade Marks Act will commence on proclamation, or at least six months from the date the Act received royal assent.
Registrar of Trade Marks - Revocation Powers
The Registrar of Trade Marks will have increased powers to revoke accepted trade mark applications and registered trade marks in certain circumstances.
The existing sub-section 38(1) of the Trade Marks Act allows the Registrar, before registration of a trade mark, to revoke the acceptance of an application to register a trade mark where there has been an error or omission or other special circumstance. This section is repealed and replaced by the new provision that allows the Registrar before registration of a trade mark to revoke the acceptance of a trade mark application if satisfied that:
(a) the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew of their existence); and
(b) it is reasonable to revoke the acceptance, taking account all the circumstances.
The amendment to sub-section 38(1) of the Trade Marks Act will apply to trade mark applications made before and after the commencement of the provision.
Sub-section 84(1) of the existing Trade Marks Act only allows the Registrar to cancel the registration of a trade mark if the owner asks the Registrar to do so. The Act inserts a new section 84A into the Trade Marks Act, which expands the grounds under which the Registrar may revoke the registration of a trade mark. The Registrar may revoke the registration if satisfied that:
(a) the trade mark should not have been registered, taking into account all of the circumstances that existed when the mark was registered (whether or not the Registrar knew then of their existence); and
(b) it is reasonable to revoke registration, taking into account all the circumstances.
The circumstances to be taken into account by the Registrar include:
(a) errors or omissions leading to registration;
(b) Australia's obligations under international agreements;
(c) special circumstances;
(d) use of the trade mark;
(e) legal proceedings relating to the trade mark; and
(f) other action taken in relation to the trade mark.
The Registrar's power to revoke the registration of the trade mark is limited in time. The Registrar may revoke the registration only if the Registrar gives notice to registered owner and any party recorded as claiming a right or interest in, the trade mark, within 12 months of registering the trade mark. The Registrar cannot revoke the registration without giving the said parties an opportunity to be heard.
This added power of the Registrar to revoke the registration of trade marks provides a quicker and simpler method for administrative errors to be corrected and reduces the burden and expense of having to make an application to the Federal Court [1]. The Act includes a right of appeal to the Federal Court from a decision of the Registrar to revoke the registration of a trade mark [2]. However concerns have been expressed that the amendments could be used as a quasi opposition process, thus extending the period for opposing a trade mark registration.
Access to Information
The Trade Marks Act does not allow public access to information relating to trade mark prosecution of applications/registrations held by IP Australia. Unlike the Patents Act [3] and the Designs Act, [4] access to such information may only be obtained through applications made under the Freedom of Information Act 1982 (Cth).
Access to documents from IP Australia is usually requested to assess possible opposition to the registration of the trade mark or to determine the grounds of past acceptance or rejection of other trade marks in aid of registering another trade mark.
The Act amends the Trade Marks Act [5] by allowing public access to documents held by IP Australia relating to trade mark applications/registrations after a certain date. Documents of a sensitive and confidential nature, for example business information, are not subject to the public access amendments to the Act. The Act confers statutory power [6] on the Registrar to require that certain information be held in confidence [7].
B. CHANGES BROUGHT BY THE TRADE MARKS AMENDMENT ACT
The Trade Marks Amendment Act contains over 100 proposed amendments, many of which are of a minor technical nature. The following is a summary of the key amendments to the Act which will commence on royal assent or proclamation.
Trade Mark Application
Requirement for Legal Personality
The existing sub-section 27(1) of the Act provides that a person may apply for the registration of trade mark in respect of goods and/or services if the person claims to be the owner of the trade mark. A "person" is defined as including a body of persons, whether incorporated or not [8]. Under this definition, applicants for trade mark registration may include an individual, a company, an unincorporated club or association, a partnership or any group of persons in a business who jointly own a trade mark [9]. Although the Trade Marks Examiners Manual makes it clear that for the purpose of applications, a business name or trading style is not acceptable as the name of an individual because the former does not denote a legal entity, [10]the current Act does not clearly prohibit applications made in the name of trusts, business names or any other entities which are not separate legal entities capable of owning proprietary interest in trade marks.
The Trade Marks Amendment Act inserts paragraph 27(2)(c) into the Act which requires that the applications for trade mark registration must be made by a person (or persons) having legal personality. The amendment makes it clear that no application can be made in the name of a business, trust, unincorporated partnership or any other entity that does not have legal personality. This provision does not apply to collective trade marks, so that an application for registration of a collective trade mark need not be made by persons having legal personality [11].
The amendment will not prevent a trade mark application from being made in the name of a corporate or individual trustee, because it is the trustee who is the legal owner of the registered trade marks and as such who can deal with the registered trade marks for the benefit of other persons as beneficiaries of the trust. In the case of an unincorporated partnership or joint venture, the applications will have to be made by each of the individuals or corporate entities comprising such a partnership or joint venture.
Amendments to Trade Mark Application
The Trade Marks Amendment Act repeals the existing section 65 relating to amendment of application for registration of a trade mark after particulars of application have been published. The new section 65 maintains all the existing provisions and allows the further possibility to:
(a) remove one or more trade marks from the application made under section 51 of the Act in relation to series of trade marks (new sub-section 65(3)); and
(b) add a class or classes of goods after publication if the Registrar is of the opinion that it is fair and reasonable to do so (new sub-section 65(5)).
The Trade Marks Amendment Act also introduces the new section 65A which allows amendments to the application (other than those amendments made under the new section 65) to be advertised for opposition purposes [12].
Opposition to Registration
Introduction of Ownership Ground of Opposition
Ownership of trade mark is not only a prerequisite in trade mark applications, but also a key element in trade mark opposition proceedings. The Trade Marks Amendment Act introduces a new ownership ground of opposition which will enable the owner of an earlier registered trade mark to oppose the registration of a similar trade mark which was accepted on the basis of prior continuous use under sub-section 44(4) of the Act [13].
Under the existing sub-section 44(4) of the Act, an applicant may obtain registration for a trade mark ( "the s 44 trade mark") even if the s 44 trade mark is substantially identical with or deceptively similar to an earlier trade mark registered by another person in respect of similar goods and services, so long as the applicant can establish that they have continuously used their s 44 trade mark for a period beginning before the filing date of the earlier registered trade mark. The current Act does not provide a basis for the owner of the earlier registered trade mark to oppose the registration of the s 44 trade mark, even though the said owner may have commenced using their trade mark before they applied for trade mark registration and thus accrued common law rights [14].
The new ownership ground of opposition involves a comparison of the owner's first use of the earlier registered trade mark and the applicant's first use of the s 44 trade mark. In order to successfully oppose the registration of a s 44 trade mark, the owner of the earlier registered trade mark needs to establish that their first use of the trade mark in respect of similar goods and services predates the applicant's first use of the s 44 trade mark and that such use has been a continuous use [15].
Abolishing Requirement for Substantially Identical and Deceptively Similar [16]
Under the existing section 60 of the Act, a person may oppose the registration of a trade mark ( "the opposed trade mark") on the ground that the opposed trade mark is substantially identical with or deceptively similar to a trade mark which had, before the priority date for the registration of the opposed trade mark in respect of particular goods or services, acquired a reputation in Australia ( "well-known trade mark"), and that because of the reputation in the well-known trade mark, the use of the opposed trade mark would be likely to deceive or cause confusion.
As it stands, the current provisions under section 60 impose a threshold test which requires the opposed trade mark and the well-known trade mark to be substantially identical or deceptively similar. If the well-known trade mark is not substantially identical with or deceptively similar to the opposed trade mark, an opposition may fail even if the opponent's trade mark has an established reputation in Australia and that the use of the opposed trade mark would be likely to deceive or cause confusion [17].
The Trade Marks Amendment Act has abolished the threshold requirement for substantially identical and deceptively similar. Under the new paragraph 60(a) of the Act, it will be sufficient for the opponent to show that another trade mark (the well-known trade mark) has acquired a reputation in Australia and that the registration of the opposed trade mark is likely to cause deception or confusion, whether or not the well-known mark is identical or similar to the opposed trade mark.
Introduction of New "Bad Faith" Ground of Opposition [18]
Use or intention to use the trade mark in relation to the specified goods and/or services is an important prerequisite in an application for trade mark registration. The current Act allows opposition to registration of a trade mark on the ground that the applicant does not intend to use the trade mark in respect of goods and services specified in the application. The Act also allows removal of a trade mark from the Register for non-use on the basis that the applicant had no intention in "good faith" to use, authorise use of, or assign the trade mark when the said application was made.
The Trade Marks Amendment Act now introduces a new section 62A which allows an opposition to a trade mark registration to be made on the ground that the application was made in "bad faith". The Explanatory Memorandum to the Trade Marks Amendment Act has identified 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 of the examples of bad faith given in the Explanatory Memorandum include: [19]
(a) 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 license or buy the trade mark;
(b) a pattern of registering trade marks that are deliberate misspellings of other registered trade marks; and
(c) 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.
The new bad faith ground of opposition will apply to applications for registration of trade marks made after the commencement of the Trade Mark Amendment Act, and applications which are pending but not accepted at commencement.
Registration
Reduction of Grace Period for Renewal After Registration Expires
The Trade Marks Amendment Act has reduced the grace period for renewal after expiry of a registration from 12 months to 6 months [20]. The amendment will make the Act consistent with the Patent Act, the Designs Act and the Madrid Protocol, all of which allow 6 months for renewal of an expired registration, before removal from the Register. The amendment will require trade mark owners to take immediate action to renew any expired registration in order not to lose their exclusive right in the exploitation of their registered trade marks [21].
No consequential amendment was made to the existing section 224 of the Act. Therefore, the current section 224 applies in relation to extension of time by the Registrar for doing a relevant act which is required by the Act to be done within a certain time.
Removal of Trade Marks for Non-use
The Trade Mark Amendment Act has abolished the "person aggrieved" standing which is currently required of an applicant for removal of a trade mark. The standing of a person to apply for removal of a trade mark for non-use will be extended from an aggrieved person to "any person" [22]
The amendment also allows the Registrar to take into account the use of the trade mark on similar or related goods and services, when deciding not to remove a trade mark from the Register due to non-use [23]. An example given in the Explanatory Memorandum is that of a trade mark owner who has a registration for computer software goods. Rather than developing computer software for commercial and retail sales, the trade mark owner found that their business has specialised in the provision of custom developed software systems. The amendment will make it clear that the Registrar is able to take into account whether custom development of computer software is seen as closely related services and goods [24].
**Written By Linda Huan.
[1] The Parliament of Commonwealth, Intellectual Property Law Amendment Bill 2006 Explanatory Memorandum
[2] Intellectual Property Laws Amendment Act 2006 s 84D
[8] Trade Marks Act 1995 (Cth): s 6
[9] Trade Marks Office Manual of Practice and Procedure: Para 1of Part 10
[10] Ibid at para 1.1.1 of Part 10
[11] Trade Marks Amendment Act: Schedule 1, Part 1, Item 12 (new s 27(2A) of the Trade Marks Act 1995)
[12] Trade Marks Amendment Act: Schedule 1, Part 2, Item 77 (new ss 65 & 65A of the Trade Marks Act 1995). These amendments commence on Proclamation.
[13] Trade Marks Amendment Act: Schedule 1, Part 1, Item 29 (new s 58A of the Trade Marks Act 1995)
[14] The Parliament of Commonwealth, Trade Marks Amendment Bill 2006 Explanatory Memorandum at [4.9]
[15] Trade Marks Amendment Act: Schedule 1, Part 1, Item 29 (new subs 58A(2) of the Trade Marks Act 1995)
[16] Trade Marks Amendment Act: Schedule 1, Part 1, Item 31 (new para 60(a) of the Trade Marks Act 1995)
[18] Trade Marks Amendment Act: Schedule 1, Part 1, Item 35 (new s 62A of the Trade Marks Act 1995)
[20] Trade Marks Amendment Act: Schedule 1, Part 2, Items 80-81, Item 84 (new ss 78 and 79, new subs 128(1))
[21] This amendment will commence on Proclamation.
[22] Trade Marks Amendment Act: Schedule 1, Part 1, Item 46 (new subs 92(1) of the Trade Marks Act 1995)
[23] Trade Marks Amendment Act: Schedule 1, Part 1, Item 49 (new s 101 of the Trade Marks Act 1995)