ACIP recommends changes to Australian trademarks legislation

Australia

The Advisory Council on Intellectual Property (ACIP), which advises the Australian government on IP matters, has issued a second review paper of Australia's trademark legislation. ACIP recommends the following changes to the Trademarks Act 1995 and the Trademarks Regulations 1995:

  • Where a trademark application contains non-English words or non-Roman characters, a translation should only be required at the discretion of the registrar instead of being mandatory. The ACIP argued that many foreign words and characters can be generally understood.

  • The registration of multiple similar trademarks (known as series trademarks) should become more expensive to discourage misuse of the system. The high rate of rejection of these trademarks for invalidity suggests that some applicants wrongly use series trademarks to fence off their marks. The paper also suggests that mark owners rely more on Sections 7 and 70 of the Trademarks Act. These provisions afford protection to unregistered trademarks that have small variations from a registered mark.

  • A new Section 92 should be introduced to provide for limited non-use cancellation. This would apply where a prior trademark was cited against an application but the prior mark was only used in a limited geographical area. The applicant could obtain registration for its mark in a limited geographical area while the prior mark registration would be cancelled for that restricted area. Possible defences to a limited non-use cancellation application would be an intention by the prior owner to expand its business, or proof of use over the Internet.

  • Under the recommendation of the Australian Competition and Consumer Commission, the certification mark regulations should be amended to define eligibility criteria and processes for initial and continued use of a certification mark.

For a discussion of the ACIP's first review paper, which focused on the relationship between trademarks, business names, company names and domain names, see Australia considers second-tier trademark system.

Alicia Sheridan, Blake Dawson Waldron, Brisbane

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