Urgent amendments needed to protect Madrid Protocol rights

IP Australia is seeking amendments to the Australian Trademarks Act 1995, following the discovery of an oversight in the regulations implementing the Madrid Protocol in Australia. This problem effectively places in doubt the validity of an opposition where the opponent relies on prior rights obtained in Australia pursuant to the Madrid Protocol.

Section 44 of the Trademarks Act allows an examiner to reject a trademark application if the trademark is considered to be substantially identical with, or deceptively similar to, an earlier registered or pending trademark for similar or closely related goods or services.

This ground for rejection, by virtue of Section 57 of the act, also forms one of the several potential grounds for opposition to the registration of an accepted application.
Following Australia's accession to the Madrid Protocol international trademark registration system, the Australian Trademark Regulations were amended. Regulation 4.15A was inserted with the intention of mirroring the provisions of Sections 44 and 57.

Regulation 4.15A does allow for the rejection by an examiner of a trademark considered to be substantially identical with, or deceptively similar to, an earlier protected international trademark (ie, an international trademark protected in Australia) or an international registration designating Australia (IRDA), which is for similar or closely related goods or services.

Reflecting the provisions of Section 44 of the act, Regulation 4.15A also allows the registrar to accept the later application if the registrar is satisfied that the application should be accepted on the basis of evidence of honest concurrent use of the marks, prior continuous use of the mark set out in the later application or on the basis of any other relevant circumstances.

However, an inconsistency has arisen in that the newly implemented regulation 4.15A does not provide for oppositions or rectification proceedings to be based on prior rights secured in Australia pursuant to the Madrid Protocol. It appears that despite there being an intention to allow potential opponents or applicants for rectification to rely on prior rights in a protected international registration or IRDA, the regulations inadvertently omitted this particular provision.

Urgent steps are being taken to amend the regulations and it is expected that the omission will be rectified shortly. However, the precise nature of the corrective provisions is not yet known. Therefore, it is recommended that current or potential opponents relying on prior rights in an international registration or IRDA clarify the status of the amendments with the registrar. Potential applicants for rectification proceedings should delay action before the courts until the regulations have been officially amended if at all possible.

Potential opponents to an IRDA are also reminded of the need to identify the relevant prior trademarks in the notice of opposition when nominating Section 44 as a ground for opposition.

Sandi Forman, Allens Arthur Robinson, Sydney