Thanks to Alana Long for this article.
The Australian Government has recently released a draft Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (the Bill). The Bill is designed to strengthen and improve Australia’s IP system.
Major changes surround oppositions, customs, relief, the expanded jurisdiction of the Federal Magistrates Court and client privilege. The amendments are discussed below.
Oppositions
A number of amendments are proposed to streamline the trade mark opposition process. Individuals and small businesses with limited opposition experience are the motivation for these proposed changes.
First, the Trade Marks Office (not the Opponent) is to serve a copy of the Notice of Opposition on the Applicant. This will give the Office greater control over ensuring that the Notice of Opposition is provided to the Applicant in a timely manner.
A requirement is introduced to file a Statement of Particulars of the grounds of opposition on which the Opponent intends to rely. The purpose of this amendment is to help focus oppositions earlier, reduce costs and any unnecessary effort on the part of the applicant in responding to grounds no longer relied on. The particulars will be required to be filed within one month of filing the Notice of Opposition. The Statement of Grounds and Particulars will only be able to be amended in limited circumstances.
A further amendment requires the Applicant to file a Notice of its intention to Defend the opposed application. There will be no fee associated with filing the notice and an extension of time to file the notice will be available. The penalty for not filing a notice will be the application lapsing. This amendment anticipates the resolution of uncontested oppositions much sooner and with significantly less effort on the part of the opponent. Currently the second step in the opposition process is for the opponent to file their evidence.
A power is provided to the Registrar to dismiss a trade mark opposition in prescribed circumstances. Among other things, this will provide a mechanism to dismiss an opposition where the opponent does not comply with their obligation to file a statement of grounds and particulars. The exact circumstances in which the power is available will be prescribed in the regulations.
Customs
The memorandum accompanying the Bill explains that loopholes in the current border protection scheme enable importers of counterfeit or pirated goods to avoid prosecution and still retain the goods. Amendments are made to address this and other related problems.
The Customs CEO will be able to provide the objector (the trade mark owner lodging the notice of objection) information about the exporter as well as the importer. Extending the information provided to include the exporter or consignor will assist trade mark owners in identifying the source of infringement and repeat offenders. A power is also provided for the Customs CEO to grant inspection or release of sample goods. This amendment is intended to align with the Copyright Act 1968 (the Copyright Act) which currently includes an inspection provision.
A new “claim for return” scheme is introduced to ensure designated owners cannot reclaim seized goods if they make themselves uncontactable to avoid infringement proceedings. Firstly, the objector will receive information to identify and contact the importer. The Customs CEO will notify the objector of a claim for release of seized goods, if one is made. if no claim for release is made within the claim period, the seized goods are forfeited to the Commonwealth. The Customs CEO also has discretion to accept a late claim for release of seized goods.
Reference is made in the memorandum to the noticeably lower maximum penalties for trade mark offences than the penalties for similar offences in the Copyright Act. An amendment is proposed to raise the maximum penalties for indictable offences to align with similar offences in the Copyright Act.
A number of additional amendments are also proposed to align with similar amendments to the Copyright Act.
Relief
The Court is to be given discretion to award additional damages for flagrant trade mark infringement. Additional damages are already available for flagrant infringement of patents, registered designs and copyright.
Federal Magistrates Court (FMC)
The jurisdiction of the FMC is to be expanded to hear trade mark matters. The FMC will have the same jurisdiction to hear appeals against decisions, directions and orders of the Registrar like the Federal Court of Australia.
Privilege
Communications with foreign trade mark attorneys are to receive the same privilege as those of Australian attorneys.
Submission on the Bill closed on 4 April 2011.
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