Changes to the Trade Marks Act

/ Madderns / Important Updates

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 was passed into law by the Australian Parliament on 15 April 2012. The provisions of the new laws will come into force on 15 April 2013. Changes to the Trade Marks Act primarily involve the opposition and customs seizure provisions of the Act, as outlined below.

Opposition Period

The opposition period is to be shortened from 3 months to 2 months.

Notice of Opposition

The Notice of Opposition will merely need to be filed with the Trade Marks Office and it is likely to be a simple form stating that a party opposes registration of a trade mark.

Statement of Grounds and Particulars

One month after filing the Notice of Opposition, the Opponent must lodge a statement of grounds and particulars detailing each ground of opposition and the particulars on which the Opponent intends to rely.

Notice of Intention to Defend

Within one month of the statement of grounds and particulars, an Applicant will need to file a Notice of Intention to Defend the opposition. Failure to file the Notice will result in the trade mark application lapsing in opposition proceedings.

Periods for lodging evidence

The time frames for the parties to prepare and serve their evidence are expected to be reduced.

Customs seizure provisions

A trade mark owner will have the ability to access multiple samples of seized goods, to remove such goods for inspection and the importer must make a claim for return in order to have the seized goods returned.

Damages

The Trade Marks Act will include provisions for additional damages in infringement proceedings, bringing the Trade Marks Act into line with the Copyright Act.

Presumption of registrability

Section 41 will be repealed and replaced to clarify that the presumption of registrability, as provided for under Section 33, does apply to section 41.