Raising the Bar Bill: Australia looks to streamline its IP laws

In late December 2010 a new bill was circulated by IP Australia, entitled “Intellectual Property Laws Amendment (Raising the Bar) Bill 2011”, which is intended to streamline various aspects of Australia’s IP law system. The bill deals with proposed changes to Australia’s patents, designs, copyright, trademarks and even plant breeder’s rights legislation. 

From the trademarks point of view, the key aspects of the bill deal with the following prospective changes to the Trademarks Act 1995. The bill proposes provisions:
  • of a mechanical nature designed to reduce delays in trademark oppositions;
  • intended to clarify the extent to which legal professional privilege applies to trademarks advice;
  • allowing patent attorney practices to incorporate; and
  • that will improve mechanisms for the enforcement of trademark rights, especially at the customs barrier.
The more substantive proposed changes concern trademark oppositions and the enforcement of rights.
The bill will, if enacted, make a number of changes to the opposition processes, including:
  • removing the obligation to serve a notice of opposition on the trademark applicant (which would be done by the Trademarks Office);
  • requiring opponents to file a statement of particulars of the grounds on which their opposition is based;
  • requiring trademark applicants to file a notice of their intention to defend the opposition;
  • giving the registrar the power to dismiss oppositions where the opponent does not comply with its obligation to file a statement of particulars; and
  • providing a new broader power to make regulations in respect of opposition proceedings, giving flexibility in regulating procedural requirements.
It is expected that these changes, if enacted, will require the parties to focus their attention on the true matters in dispute, as opposed to the current situation where opponents usually lodge a generic form of notice of opposition relying on virtually every possible ground. In addition, it is expected that the Trademarks Office is likely to use the regulation-making powers to make oppositions run faster timetables than presently operate.
The bill also provides for a number of significant changes to the provisions of the Trademarks Act insofar as the impact on trademark protection. These include the following:
  • When Customs makes a seizure of goods being imported into Australia that are alleged to bear infringing trademarks, after the importer receives a notice of the seizure, it must make a claim for return of the goods or the goods will be deemed to be forfeited.
  • The importer will be required, in a claim for release of seized goods, to provide its contact details - which would allow the trademark owner to serve it with demand letters or court process.
  • Customs will be permitted to disclose to trademark proprietors the identity of the exporter of the seized goods.
  • The maximum penalties for existing indictable trademark offences will be raised to match those in the Copyright Act 1968.
  • New summary offences will be introduced with the fault requirement being that of negligence.
  • Court will be given the discretion to award additional damages for trademark infringement depending on elements such as flagrancy of the infringement.
While brand owners are giving feedback to the government that they support the proposed changes to the legislation dealing with the enforcement of rights, they also believe that the changes do not go far enough. However, it is hoped that, if the bill is enacted, there will be further weapons in the armoury of those involved in the fight against counterfeiting.
IP Australia called for public submissions on the bill, which officially closed on March 21 2011, although some organisations have obtained extensions to file submissions in early April.
Stephen Stern, Corrs Chambers Westgarth, Melbourne

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