IP Australia issues third trademark legislation review paper

IP Australia, the Australian IP registrar, has released its third review paper on the operation of the Trademarks Act 1995.

IP Australia launched the review in 2002 in order to:

• determine whether the trademarks system is operating as envisaged in 1995, and if not, why;
  
  
• assess, in the case that it is not working as envisaged, whether (i) this is a problem, and (ii) there are any possible solutions; and
  
  
• identify (i) areas that are causing problems, and (ii) possible options for solving these problems.

IP Australia is consulting widely and is releasing issues papers that compile the suggestions. When the review is completed, the recommendations for reform will be sent to the Australian government for its consideration.

In this third paper, IP Australia assesses 35 different reform issues. The nature of the review means that the majority of issues raised do not seek to alter the policy but to clarify the terms of the legislation to reflect better the original legislative intent, or to remove problems in the act's operation.

One of the most important suggestions to come out of this third paper relates to subsequent applications after an initial application for a trademark has been opposed. Currently, an applicant can file a second application substantially similar to one that is being opposed. The assumption underlying this strategy is that the opponent will not be on guard for a subsequent application. Consequently, a second application could be granted while the first one is being opposed. The paper proposes to allow the registrar to defer acceptance of such a trademark application; that deferment would continue until the opposition process has been completed. The applicant would then be able to either withdraw the later application or proceed to examination.

The paper also identifies some procedures as burdensome and in need of reform. Proposed solutions to these include (i) appointing a case manager for the application, and (ii) limiting the number of time extensions available for the filing of evidence. Where an application has been made to remove a mark for non-use, new procedures are proposed to make opposition less costly and quicker. On the other hand, an applicant seeking the removal of a mark from the register on the grounds of non-use would no longer need to be "a person aggrieved" but could be any person. However, such a person would have to pay an appropriate fee as a way of discouraging frivolous applications.

The paper also proposes widening the registrar's powers to (i) defer applications in certain circumstances, and (ii) apply to the court for the cancellation or amendment of trademarks. While there has been little call for this last power (or use when the registrar had it under the previous act), the paper argues that conceivably there are circumstances in which the registrar may need it.

IP Australia seeks comments by October 31.

Julian Gyngell, Clayton Utz, Sydney