Trademarks Amendment Act 2006 receives royal assent

The Trademarks Amendment Act 2006 received royal assent on October 23 2006. The act results from a review undertaken by IP Australia to ensure the Trademarks Act 1995 was meeting the needs of Australian businesses and users of the Australian trademark system.

The Amendment Act introduces a number of changes which clarify uncertainties in the Trademarks Act and reduce regulatory and administrative burdens on trademark owners. The Amendment Act also introduces provisions which strengthen the rights of trademark owners, including new and amended grounds of opposition. Most of these latter provisions are now in force. All other provisions are expected to take effect by March 27 2007.

The amendments strengthen the rights of trademark owners as follows:

• An application may now be opposed on the grounds that the application was made in bad faith (Section 62A). This is likely to assist in particular with spill-over reputation type cases;
  
  
• A trademark accepted under the prior continuous use provisions can now be opposed by the owner of a prior registered trademark which has been used before the applicant's first use date (Section 58A);
  
  
• The requirements for an opposition based on a trademark with a reputation in Australia have been made less restrictive by removing the requirement that the opposed mark must be substantially identical with or deceptively similar to the trademark with the reputation in Australia (Section 60); and
  
  
• Provisions on oppositions based on geographical indications have been clarified so that such oppositions are only applicable where the goods specified in the opposed mark are similar to those covered by the geographical indication or, where the goods are different, the mark would otherwise be likely to deceive or cause confusion.

Other amendments include:

• Multi-class series applications will be allowable (Section 6) and the Amendment Act clarifies that trademarks will be considered a series only where there are minor and obvious variations (Subsections 27(5) and 51(1)). A benefit to owners of current series applications is that the Amendment Act will allow owners of current series applications and registrations to be linked into single multi-class applications or registrations (Section 51A and 82A);
  
  
• The procedure for recording trademark registrations with the Australian Customs Service has been streamlined by allowing trademark owners to provide a written undertaking as security to Customs instead of having to provide a $10,000 bank guarantee, bond or cash (Subsection 133(3) and Section 141); and
  
  
• Incorporated associations can now own collective trademarks (Section 6).

Trademark owners should also be aware that the grace period for renewing a trademark after the renewal date has been reduced from 12 months to six months (Sections 78, 79 and Subsection 128(1)).

Michael Wolnizer and Sally Foreman, Davies Collison Cave, Melbourne