Monday, April 2, 2012

australia raises the bar: guest post

not that kind of bar...

Long time listener, first time caller...

Hi, I'm Dan Wilson. As a brief introduction, I'm a Sydney-based Australian Trade Marks Attorney currently working in private practice. I had the pleasure (short time though it was) of working with Annette for the better part of a year. So I was naturally flattered when asked to provide a guest post for her IP blog.

I am a diligent Twitter follower and blog reader, but this is my first venture into the world of trade mark blog writing, so please be kind and I hope you enjoy.

The Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 has now been passed (awaiting Royal Assent) and will come into force in Australia in a little over 12 months from now. Although concerned principally with patents, the Act also affects trade marks. The following is a brief summary of some of the important changes the Bill will introduce to the Trade Marks Act 1995.

A presumptive return...

Section 41 of the Act (dealing with registrability) is to be repealed and replaced to ensure that the 'presumption of registrability' is extended to the entire section.

The Trade Marks Act 1995 was introduced with the intention that there would be a 'presumption of registrability' applied to all applications, that is, an application must be accepted by the Registrar unless there are definite grounds for rejecting it. In other words, if in doubt, accept the mark and allow the market (through the opposition/removal process) to determine if the mark should, in fact, be accepted. Then came Blount. The Federal Court of Australia handed down a decision in the Blount case which altered the interpretation and application of the presumption of registrability by the Trade Marks Office.

Following Blount, the Office took the view (as stated in the Examiners' Manual) that "the onus reverts to the applicant to demonstrate that the trade mark is, or may be taken to be, capable of distinguishing the applicant's goods or services."

Now, much to the relief of those involved in running skirmishes with the Office regarding the capacity of various marks to distinguish (one of Annette's previous posts will shed some light on these frustrations for those fortunate enough not to know the pain first hand), the amendments will make it clear (once again) that the 'presumption of registrability' is alive and well and applies to all applications.

It took just over two years for the Blount case to turn the 'presumption of registrability' around. One wonders how long it will take the courts and/or the Office this time.

Dis(op)posed to cost efficiency...

State Your Grounds
When filing  Notice of Opposition, current Australian practice usually (and almost always) sees an opponent nominate all the available grounds for opposing a trade mark. Under the new provisions, when filing a notice of opposition an opponent will be require to outline the particular grounds upon which it will rely. The exact details of 'the how' remain unknown until the associated regulations are released (at which tine, I may be invited back to provide another update...). We do, however, know 'the why' and 'the wherefore'. The Explanatory Memorandum accompanying the Bill indicates that this is an attempt to help reduce the time and costs associated with defending and/or pursuing an opposition.

On Guard!
A notice of intention to defend an application or registration against opposition will need to be filed or the opposed mark will be deemed lapsed/abandoned. This move makes sense and has been widely (as far as I have read) accepted as a sensible and logical amendment, designed to save opponents time and money pursuing oppositions that the owner of the opposed mark has no intention of defending. The Kimberly-Clark v Goulimis matter is a perfect example of the need for this amendment. Again, we will not know the full workings until the regulations are released.

Short and sweet...

Punishment Fitting the Crime
There will be an introduction of summary offences, increases in the maximum penalties for offences, and the courts may award additional damages. Here is a win for trade mark owners. Making it easier to prove fault (summary offences), higher penalties for infringers (raising penalties) and the court having the power to hand out punitive damages (additional damages) should all mean greater deterrents to would-be infringers.

Border Security
Inspection of seized goods by the trade mark owner will be allowed for in the Act. This will enable trade mark owners to determine potential infringement first hand.

Trade Marks Attorneys, Inc.
Legal privilege for Trade Marks Attorneys will be extended to include communications to overseas associates; and the registration of companies as incorporated Trade Marks Attorneys will be allowed.

What is the collective noun for a group of trade marks attorneys?

Daniel Wilson, Australian Trade Marks Attorney

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