Intellectual Property Laws Amendment Act 2006 receives Royal Assent
The Intellectual Property Laws Amendment Act 2006, which amends several pieces of IP legislation, received Royal Assent on September 27 2006. This article looks only at amendments to the Trademarks Act 1995, which include amendments to the provisions on revocation; public access to documents; certification marks; and fee payments.
Most of the substantive provisions began on September 28 2006 or, unless otherwise proclaimed, will begin at the latest six months after that date. Some of the more technical amendments which correct minor errors in the Trademarks Act commenced retrospectively.
The most significant amendments are as follows:
- The act makes changes to Section 84 of the Trademarks Act, adding Sections 84A to 84D, which allow the registrar of trademarks to revoke the registration of a trademark that has been registered because of an administrative oversight or error, for example, where during examination, grounds such as the existence of a prior conflicting registration or application, or information indicating the trademark is descriptive, are overlooked. Errors can also occur when an opposition is not processed properly, or other statutory procedures are not correctly followed.
Such administrative errors are rare, but can have the effect of giving the owner of the incorrectly registered mark benefits to which it is not entitled.
Previously, if the error had come to light before the mark proceeded to registration, then the registrar had the power to revoke acceptance, but if the error was only revealed after the mark had been registered, there was no simple and straightforward administrative remedy; recourse was through the courts.
The amendments provide administrative revocation will be available for 12 months from the date the relevant mark was registered. They allow the registrar to revoke a registration if he or she is satisfied that it is reasonable to do so taking into account all the circumstances. Administrative revocation may be instigated by a third party, and the owner of the 'wrongly' registered mark does have an opportunity to be heard. An appeal to the Federal Court is also possible.
If revoked, the registration will revert to a pending application, to be re-examined, or for an opposition to be heard.
Although these amendments will provide a quicker and less expensive means of addressing incorrectly registered trademarks, it must be remembered that they are intended only to allow the revocation of trademarks registered in error, and are not meant to provide a way to settle competing claims.
- The new act will allow for public access to certain prescribed documents from official trademark files. Previously, this was only possible via an application under the Freedom of Information Act 1982, and will be a far simpler method for making certain documents available to parties who, for example, are considering opposition proceedings. Sensitive business information and other confidential information of this nature will not be made available to the public under the changes.
- The act moves the fee payment details from the Trademarks Act to the Trademarks Regulations 1995, thereby enabling more flexible handling by the Trademarks Office, including streamlining and modernizing of payment methods.
- It also changes some of the administrative aspects of how an application for a certification trademark is processed. In addition, the amendments clarify the requirements for the rules governing use of a certification mark. These amendments affect only the internal workings of the Trademarks Office and the Australian Competition and Consumer Commission, and are not aimed at changing the requirements that a certification trademark applicant must fulfil, the documents it must provide, or the rights such a mark gives.
Annabel Reader, Shelston IP, Sydney
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