Does your domain name end with a “com.au” or “net.au” or “org.au” and “asn.au” and you are a foreign entity that uses an Australian Trade Mark to support that domain registration? If so, you may not be able to renew or apply for a domain if it doesn’t exactly match a trade mark you own.
These new rules will apply from12 April 2021. Yes – that’s less than two months from now.
If you are a foreign entity and your trade mark is a word and that same word is the domain name to which “.com.au” or any of the other top-level domains is added, then all is OK. However, if the trade mark is not the same, you should check the rules below. If the trade mark and the domain name are the same, you do not need to do anything at this time.
However, you need to be aware that the changes coming into force will apply the next time you want to register or renew a “.com.au” or “.net.au” domain incorporating your new trade mark. They also apply if you intend to transfer a domain to your entity upon the purchase of a domain name and the corresponding trade mark.
For those with similar domain names to either the trade mark you have applied for, or an existing registered trade mark, then the following information is very important to know.
When the “.au” Domain Administration (auDA) changed the eligibility rules, it strengthened the Australian presence requirement hence the effect of this change on domains held by foreign entities. As for Australian businesses they are not affected since they meet the local presence test and their domains do not need to meet the exact match criteria. The new rules state that the domain name must be an exact match to the relevant trade mark and apply to:
- newly applied-for domains;
- to domains that are transferred to a new owner; and
- all domains that are being renewed after 12 April 2021.
So what is an exact match? This requirement is different from the old rule, which allowed the domain name to be ‘closely and substantially connected to your trade mark’.
The domain name MUST include all the words in the same order as they appear in the Australian Trade Mark or Trade Mark application. However, there are some exceptions:
- you can ignore the .com.au and other DNS identifiers;
- you can ignore punctuation marks in the trade mark, such as: ‘! And ‘ ;
- you can ignore joining terms such as ‘a’, ‘the’, ‘and’, ‘of’; and
- you can ignore ampersands ‘&’.
The new rules are tough, and if your domain is not an exact match, you need to do something soon or make sure you act before the next domain renewal date.
There are many possibilities when considering how to act:
- Change your domain name to ‘match’ your trade mark; or
- Change your trade mark to ‘match’ your domain name.
At least one of the new rules allows domain registrations to be owned by a related body corporate, as long as the related company meets the Australian presence requirement.
You can read more about the rules changes at .auDA.
All of the above options have several important implications. So the way forward may not be as simple as it seems. Please consider obtaining professional advice.
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As many will be aware, Australia has a 2-tier patent system, providing for the more common Standard Patents (which provide protection for up to 20 years for inventions that are novel and inventive), and Innovation Patents (providing protection for up to 8 years for inventions that are novel and “innovative”).
The most significant difference between the two patent types is that the threshold for an invention being “innovative” is much lower than that for an invention being “inventive” and in practice, Innovation Patents can provide protection for inventions that are essentially only novel over the prior art, even if they may be obvious.
As well as being used to protect more incremental inventions (which may nevertheless be very commercially valuable), Innovation Patents have been used as a tool in patent enforcement because, since they cannot be invalidated for lack of inventiveness, they are very robust patents and can be difficult to invalidate. Indeed, they have been described as the “strongest patent in the world”.
After a review conducted by the Australian Government1, the decision was made to abolish the Innovation Patent system. This takes effect on 26 August 2021, from which date no new Innovation Patent applications can be filed. There is however, a quite generous transition phase, which still allows new Innovation Patent applications to be filed as divisional applications of a pending patent application, or converted from a pending patent application, provided that that pending patent application was filed before 26 August 2021. This means that the significant benefits of the Innovation Patent system can still be accessed for the next 8 years, until 26 August 2029, at which time all Innovation Patents will have expired.
This means that, should you wish to keep your options open to use the Innovation Patent System for the next 8 years, you must take certain steps to ensure that a Standard or Innovation Patent Application is filed before 26 August 2021. A number of different scenarios include:
a) pending Provisional Patent application in Australia: if you have a pending Australian Provisional Patent application whose 12-month period expires on or after 26 August 2021, you should consider filing an Australian Standard Patent application or Innovation Patent application before this date. The Provisional Patent application may still be used after that date as a priority basis for filing overseas patent applications before the expiry of the 12-month period as usual.
b) pending overseas patent application: If you have a first patent application filing for an invention in another country, and the 12-month period for claiming priority expires after 26 August 2021, you can consider filing an Australian Standard Patent application or an Innovation Patent application before this date.
c) invention in development: while filing a patent application too early is generally discouraged, and it may not be practical or in the best interests of your long-term protection strategy for an invention under development, consideration should be given to the potential value of keeping the option of obtaining an Innovation patent for your invention, or at least a part of your invention, by filing a Standard Patent application or Innovation Patent application before 26 August 2021.
So while the Innovation Patent system is soon coming to an end, early and appropriate planning can maximise your opportunities to still benefit from its many advantages for up to 8 years. If you would like to consider the options available to you, speak with your Patent Attorney soon.
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Madderns is proud to have been included in the WTR 1000 list for 2021, recognising our team for outstanding work with iconic Australian names and in particular, the wine and fashion industries.
The WTR 1000 is the only standalone publication to recommend individual practitioners and their firms exclusively in the trademark field, shining a spotlight on the firms and individuals deemed outstanding in this critical area of practice.
Recognising Australia’s competitive IP landscape, Madderns has been cited for its expertise in prosecution and strategy.
WTR 1000 cited Madderns for catering to a “large client base of iconic Australian names with big export businesses”.
“The firm’s expertise in the wine industry is known and respected far and wide, while its reputation in the fashion industry continues to grow. The set is experienced in complex prosecution work and regularly represents rights holders in opposition and non-use cancellation proceedings domestically and globally. A specialised side offers filing and prosecution services in China too.”
Congratulations also to Louise Emmett, Megan Ryder and Craig Vinall for their individual professional mentions. Louise and Megan were recognised as being part of the specialist trademarks team assisting clients on prosecution matters, and Craig for juggling both patent and trademark matters.
For further information about the WTR 1000, click here https://www.worldtrademarkreview.com/directories/wtr1000/rankings/australia
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On 27 February 2020, amendments to the Australian Patents Act 1990 introduced, among other things, a new objects clause, providing a framework within which the provisions of the Patents Act are to be considered.
Section 2A states that:
“The object of this Act is to provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology. In doing so, the patent system balances over time the interests of producers, owners and users of technology and the public.”
For the first time since its introduction, the objects clause has been referenced in a decision of Australia’s High Court, no less.
In Calidad Pty Ltd v Seiko Epson Corporation  HCA 41, the question of whether the sale of a patented product exhausts the patentee’s exclusive rights in that product was considered.
The product in question was a printer ink cartridge, the subject of patent protection, and the question being considered was whether the resale of a refurbished and refilled cartridge by a third party was an infringement of the patent.
The High Court held (in a 4-3 majority) that the patentee’s rights in the specific cartridge are exhausted upon the first sale of that cartridge and that there was, in this case, no infringement1.
In reaching this decision, reference was made to this new objects clause.
The Decision at  states that:
” It may be taken from the object stated in s 2A that one component of that object is to ensure the efficiency of the market economy. This topic has been dealt with earlier in these reasons. Another is to encourage innovation. This latter objective is achieved by ensuring that a patentee is rewarded for the often considerable efforts and expense which have contributed to a useful invention. That reward is obtained on the sale of a product on terms for which the patentee has negotiated. There is nothing in the Patents Act 1990 to suggest that a patentee is to be rewarded more than once.”
The Explanatory Memorandum2 in reference to the proposed introduction of the objects clause stated in paragraph 10 that:
“10. The introduction of an objects clause will clarify the underlying purpose of the patent system and over time will reduce uncertainty in the operation of the Patents Act. It will also provide broad guiding principles that will help ensure that the patent system remains adaptable and fit-for-purpose as new innovations are developed in the future.”
However, when the objects clause was being considered for introduction into the Patents Act, a number of parties, including the Institute of Patent and Trade Mark Attorneys of Australia (IPTA) expressed concerns that the introduction of an objects clause as proposed would have the potential to be used to restrict the scope of patents and patentable subject matter. In particular, it stated that:
“… despite comments suggesting the contrary in the Explanatory Memorandum, it is clearly intended to significantly change the manner in which judicial patent decisions are made in relation to many aspects of patent validity, including the assessment of patent eligible subject matter and inventive step. In particular, the introduction of the word ‘technological’ to qualify the term “innovation” has the potential to cause significant misunderstandings and significant harm.” 3
While many of these concerns were raised in the context of patentability issues, the principle extends to the general application of the objects clause and in particular, to its judicial application in patent decisions.
Now that specific reference to Section 2A has been made by the High Court, It will be interesting to see how this is used by other courts in the future to shape their decisions, and whether the concerns raised against the introduction of the objects clause of acting to dilute patent rights will come to be realised.
1. For more on this aspect of the case, refer to this article written by Madderns’ Dr Kin Seong Leong.
2. Explanatory Memorandum, Intellectual Property Laws Amendment (productivity commission response part 2 and other measures) Bill 2019.
3. Institute of Patent and Trade Mark Attorneys of Australia (IPTA), Submission to the Senate Economics Legislation Committee, Inquiry into the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019, [Submission no. 50], 15 August 2019, p. 8.
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We are delighted to announce the promotion of David Bey to Associate Patent & Trade Mark Attorney.
David is an Australian and New Zealand Patent and Trade Mark Attorney within our specialist Engineering team. David’s expertise covers a broad range of mechanical engineering and advanced manufacturing technologies, with a particular interest in automotive and medical technology.
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