Latest News: Mar 13, 2024 (Newsletter Issue 2/24)Trade Mark Classification Standards to be Aligned with International Best PracticeOn March 26, 2024, IP Australia replaces the current list of goods and services for trade mark applications with the Madrid Goods and Services (MGS) list.
The MGS list is an internationally recognised database of terms used to classify goods and services for trade mark applications. Developed and maintained by the World Intellectual Property Organization (WIPO) for IP offices to use, it contains a wider range of terms than the Australian picklist and will now be the sole picklist to align Australian classification standards with international best practice.
This change is a win for IP Australia's trade mark customers, offering them more choice in goods and services. For Australian exporters, this change will make it easier and quicker to seek protection of trade marks internationally through WIPO's Madrid System. Terms used in picklisted applications will now align with WIPO's acceptable terms.
Moreover, IP Australia is improving the search tool in its online trade mark application system with many new search terms. A new, semantic search functionality helps clients find terms on the new, larger list and choose the most accurate goods and services for your application.
For more details click here.
Source: www.ipaustralia.gov.au Jan 12, 2024 (Newsletter Issue 1/24)
Adopting the Madrid Goods and Services List
IP Australia will replace the current Trade Marks Goods and Services list (the AU picklist) with the Madrid Goods and Services (MGS) list in 2024.
The MGS list is a database of terms used to classify goods and services for trade mark applications in the Madrid System. It's used by the World Intellectual Property Organization (WIPO) and many international trade mark offices. It contains a wider range of terms than the AU picklist.
Adopting the MGS list will align Australian classification standards with international best practice. This change will make it easier for Australian exporters to protect their trade marks in other countries.
This change is expected to take place in March 2024. At that time, a semantic search function will be introduced. This will help customers find terms on the MGS list that have a similar meaning to the term they're looking for. It makes searching the MGS list easier and ensures a seamless transition from the AU picklist.
The new system will help reduce the number of issues for Australians filing internationally and provide access to a more comprehensive database of trade mark classification terms.
Source: www.ipaustralia.gov.au
Dec 01, 2023 (Newsletter Issue 10/23)Proposed Fee Changes Open for Public ConsultationIP Australia has released its 2024-2025 draft Cost Recovery Implementation Statement outlining proposed fee changes. It is open to public consultation until Sunday 21 January 2024.
IP Australia is committed to reviewing its fees every 4 years to assess the entity’s cost recovery arrangements in accordance with the Australian Government Charging Framework. Regular and ongoing reviews help to ensure IP Australia’s fees reflect efficient and effective costs, that fee setting is transparent and accountable, and fees are set to recover the costs associated with administering the IP Rights system in Australia.
All submissions received during the former public consultation period on the current fee structure from 24 May 2023 until 2 July 2023 were considered.
For more details click here.Source: www.ipaustralia.gov.au Jul 31, 2023 (Newsletter Issue 7/23)Evidentiary Burden for Extension of Time LoweredEffective as of July 31, 2023, the Trade Marks Office’s interpretation of the ‘prompt and diligent’ grounds for extension of time (EOT) for filing evidence in opposition proceedings has been broadened.
Regulations 5.15(2)(a), 9.18(2)(a), 17A.34K(2)(a) and 17A.48T(2)(a) of the Trade Marks Regulations 1995 (Cth) provide a basis for EOT to a party who can show that despite making all reasonable efforts to comply with the evidence filing date, and despite acting promptly and diligently, they have been unable to meet the deadline. The office has historically interpreted these provisions very strictly.
This change in interpretation is to recognise that while the provision is strict and requires parties to demonstrate reasonableness, promptness, and diligence, it doesn't impose a standard of perfection and permits remedy in certain situations that occasionally arise in preparing evidence. What's required of parties is that they can demonstrate a reasonable plan was executed well, with no significant unexplained delays. Where simple errors on the part of a party prevent evidence being filed on time, an extension may still be appropriate.
This is expected to significantly lower the evidentiary burden on parties seeking an EOT, and to permit EOT in certain situations that may not have been granted in the past. This would include:
- Mere slips
- Errors in recording follow up dates
- Missing pages
- Unsigned declarations
- Technical errors encountered when submitting evidence
- Other genuine errors that are causative of a failure to file when they are in the context of a reasonable plan for the preparation of evidence otherwise executed promptly and diligently.
As always, a party must seek an EOT as soon as practicable after discovering the error.
For more information, please click here.Source: www.ipaustralia.gov.au Jun 21, 2023 (Newsletter Issue 6/23)
Changes to Organisational Structure
IP Australia makes some changes to organisational structure to ensure they are well positioned to meet their key objectives and improve service delivery.
This includes streamlining management positions to reduce hierarchy, improve decision-making, and provide quality and timely IP Rights in consistance with the Government's Reform Program for the Australian Public Service.
From 1 July 2023, key changes include a reduction (from two) to one Deputy Director General, Margaret Tregurtha.
Importantly, the statutory roles created under IP legislation continue to report directly to me as Director General, Michael Schwager.
Those Statutory roles will be reassigned from 1 July 2023 as follows:
• Commissioner of Patents and General Manager, Patents Examination Group - Andrew Wilkinson
• Registrar of Trade Marks and Designs and General Manager, Trade Marks and Designs Group – Kelly Sims
• Registrar of Plant Breeder’s Rights and General Manager, Patents Oppositions, Business Improvement and Plant Breeder’s Rights Group – Rob Crispe
There are no changes to the way clients engage with IP Australia, nor to any process or policy.
Source: www.ipaustralia.gov.au
Aug 25, 2022 (Newsletter Issue 12/22)
Trademark Opposition Process Simplified
IP Australia informs that it has simplified the procedure for filing an opposition against the registration or cancellation of a trademark by providing a structured form for the notice of intention to oppose available through its online platform.
The Office also intends to improve the ‘Statement of grounds’ and ‘Notice of intention to defend’ forms.
Source: www.ipaustralia.gov.au
Aug 25, 2022 (Newsletter Issue 12/22)Amendments to Designs Act in ForceIP Australia informs that the amendments to the Designs Act are now in force. These changes will provide more flexibility during the early stages of seeking design protection.
The key changes to the Designs Act include:
- Introduction of a grace period
- Simplification of the design registration process
- Updated formal requirements
For more information, please see hereSource: www.ipaustralia.gov.au Nov 18, 2021 (Newsletter Issue 16/21)Important Changes to Design Law AheadOn September 10, 2021, the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 received Royal Assent. It makes important changes to design law in Australia. In particular, it introduces a 12-month grace period, bringing the law in line with other jurisdictions that allow such a period. It also simplifies the design registration process. Most of the amendments come into force on March 10, 2022.
For further information, please check hereSource: www.ipaustralia.gov.au Mar 11, 2021 (Newsletter Issue 5/21)New Official Online Services Platform from Mid 2021IP Australia informs that a new online services platform will fully replace the current eServices from July 1, 2021.
This means that all customers will need to file and manage their IP rights in the new online services. It features a streamlined application experience and contextual guidance to help to apply for and manage IP rights quickly and easily.
Over the coming months, online services will be upgraded in a staged approach to cater for all transactions. To access the new online services platform, simply use the existing eServices details to log in or sign up here Source: www.ipaustralia.gov.au Mar 11, 2021 (Newsletter Issue 5/21)Designs Amendment Bill 2020On December 2, 2020, the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (the Bill) was introduced into the Senate and is currently before Parliament for consideration.
The Bill includes proposals that will amend the Designs Act 2003 to implement several recommendations accepted by the government made by the former Advisory Council on Intellectual Property’s Review of the Designs System.
The main changes will be the following:
- Provides a period of 12 months for filing a design application after it is first disclosed.
- Protects third parties from infringement of designs if they started using a design before an application for registration is filed.
- Removes the option to publish a design without registration and simplifies the process of requesting registration.
- Protects ‘innocent infringers’ who infringe a design between filing and registration but have no way to know the design is protected.
- Allows exclusive licensees of design rights to take action against infringers without needing to rely on the design’s owner.
- Streamlines the process for changing and specifying formal requirements for design applications.
- Makes minor technical changes to clarify some matters in designs legislation.
More information can be seen hereSource: www.ipaustralia.gov.au Jan 28, 2021 (Newsletter Issue 2/21)
Renewal Possible via New Online Services Platform
IP Australia informs that user can now renew all of their IP rights through the new online services platform, and file new design right applications using the streamlined new services. In the coming weeks, it will also be possible to file new trademark applications via the new platform. Users can continue to access all other services via eServices after logging in.
Source: www.ipaustralia.gov.au
Sep 10, 2020 (Newsletter Issue 14/20)
Official Fees Increase Soon
IP Australia informs that the official fees will increase from October 1, 2020. The most significant change effects the increase of the trademark application fees. The official trademark application fees for standard online filing will increase from AUD 330 to AUD 400 per class without pick list. For paper filing, the official fees will increase from AUD 350 to AUD 450 per class without pick list.
When using the option of a pick list of goods and services, whose classifications have been pre-approved, the official application fees stays the same with AUD 250 per class.
Source: www.ipaustralia.gov.au
Sep 10, 2020 (Newsletter Issue 14/20)Exposure Drafts for Designs Act 2003 ReleasedIP Australia released an exposure drafts of the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 and Regulations 2020 for public consultation.
The amendments proposed include the following changes:
- Introduction of a twelve-month grace period for design registration;
- Amending the existing prior use defence for third parties using a disclosed but unregistered design;
- Simplifying the design registration process via amalgamating the registration and publication processes, including a new publication delay option;
- Expansion of the exclusive licensee’s right to bring infringement proceedings; and
- Reduction of red-tape requirements in the design registration process.
For more Information, please click hereSource: www.kwm.com Feb 28, 2019 (Newsletter Issue 3/19)IP Laws AmendedIP Australia informs that intellectual legislation improvements came into effect on February 24, 2019.
The improvements include for example:
- streamline application processes and payment of fees
- change the period, that must elapse before actions of non-use of a mark can be taken, from from five years to three years
- improve Plant Breeder’s Rights enforcement measures and introduce changes in essentially derived variety declarations.
These changes are part of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 which can be accessed here
For further information, please check hereSource: www.ipaustralia.gov.au Nov 30, 2018 (Newsletter Issue 20/18)Consultation on Draft IP RegulationsIP Australia informs that they are seeking input from interested parties about proposed changes to Australia’s IP regulations.
The draft regulations make consequential amendments as a result of the changes proposed in the Intellectual Property Laws Amendment (Productivity Commission response Part 2 and Other Measures) Bill 2018. They also improve and streamline processes involved with obtaining and maintaining IP rights and ensure Australia’s compliance with international treaties.
The Office invites to provide a written submission on the draft regulations by December 21, 2018.
More information can be seen hereSource: www.ipaustralia.gov.au Nov 15, 2018 (Newsletter Issue 19/18)Notification on Common Regulations on Division/Merger of International RegistrationsAustralia informed WIPO that its Office will not present to WIPO requests in accordance with new Rules 27ter(2)(b) of the Common Regulations because the Australian Trade Marks Act 1995 does not provide for the merger of registrations of a mark. In addition, in accordance with new Rule 40 of the Common Regulations, the Government of Australia has notified that new Rule 27bis(1) of the Common Regulations is not compatible with the Australian Trade Marks Act 1995 and shall not apply in respect to Australia.
More information on the notification hereSource: www.wipo.int Sep 20, 2018 (Newsletter Issue 16/18)New Parallel Importation Laws in ForceThe Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (the Act) received Royal Assent on August 24, 2018.
Part 1 of the Act amends the Trade Marks Act 1995 (Cth) (Trade Marks Act) to clarify the circumstances in which the parallel importation of trade marked goods does not infringe a registered trade mark. Part 1 of the Act commenced on August 25, 2018.
Trademark owners will now find it much more difficult to prevent parallel imports coming into Australia.
The Act also includes the following measures in response to the Productivity Commission’s inquiry into Australia’s IP system:
- Amendments to the Trade Marks Act to change the period that must elapse before non-use actions can be made against registered trademarks, from five years to three years;
- Amendments to the Plant Breeder’s Rights Act 1994 (Cth) with respect of plant breeder’s rights in essentially derived varieties; and
- Amendments to the Patents Act 1990 (Cth) such that patentees of pharmaceutical patents with an extended term are no longer required to provide the Secretary of the Department of Health with certain data.
For more information, please click hereSource: www.klgates.com Sep 20, 2018 (Newsletter Issue 16/18)IP Dispute Resolution More Affordable NowOn July 1, 2018, a specialist intellectual property (IP) list was introduced to the Federal Circuit Court system with the objective of providing efficient and cost effective dispute resolution for IP matters in a more consistent and timely manner. The initiative is intended to give litigants greater access to the courts with less risk and reduced costs.
Key points of the new IP list are:
- Court filing fees for initiating proceedings have been almost halved.
- IP matters will now be heard by a specialist judge with specific expertise in IP law.
- Matters are to be before the court within 3 weeks of proceedings being issued.
For more information, please click hereSource: www.kcllaw.com.au Mar 29, 2018 (Newsletter Issue 6/18)
Key Trademark Law Changes Drafted
The Australian Government recently released the Exposure Draft of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill (the Bill).
The Bill results from a comprehensive review of the Australian Intellectual Property system and the release of the Australian Government Productivity Commission’s Report on Intellectual Property Arrangements in Australia.
The Bill is the first move by the Australian Government to adopt the recommendations of the Productivity Commission. From the trade mark perspective, there are two key law changes that the Bill proposes to introduce:
1. The reduction of the grace period for non-use actions from five years to three years – currently, an Australian trade mark must have been on the Register for five years before it is vulnerable to attack for non-use. The Bill, if enacted, will reduce this period to three years.
2. Ensuring that parallel imports of marked goods do not infringe registered Australian trademarks – there has been some debate over the years as to whether the import of goods genuinely marked by the owner and then imported into Australia would infringe an Australian trade mark registration. The Australian Courts have been clear in recent times that such importation does not constitute trade mark infringement and the Bill will ensure that the Australian Trade Marks Act clearly aligns with this position.
It is expected that the Bill is finalised by May/June 2018.
In addition, it is widely expected that a ‘Part 2’ Bill will be put forward before the end of 2018, which will introduce further changes and adoptions from the Productivity Commission’s Report.
The ‘Part 2’ Bill will almost certainly include provisions that will allow the holder of an International Registration designating Australia to file divisional applications (currently available only to the holder of a national Australian application) – this has been listed as a priority by Intellectual Property Australia.
Source: www.spruson.com
Nov 22, 2017 (Newsletter Issue 20/17)
New Database Linking International Trademark Data
IP Australia has developed a single, internationally-linked trade mark database called TM-link in partnership with Swinburne University of Technology and the University of Melbourne.
TM-link is a world-first platform that links trademark applications across countries and helps businesses search for trademarks across multiple jurisdictions.
Currently, TM-link includes trademark data from Australia, Canada, the European Union, New Zealand, and the United States.
It is planned to incorporate further trademark data from countries such as the United Kingdom, Germany, France, China, Japan, and South Korea.
Source: www.ipaustralia.gov.au
Apr 26, 2017 (Newsletter Issue 8/17)
Consultation on Proposed Legislation Changes Put on Hold
IP Australia informed on its website that the recent consultation on the Exposure Draft Intellectual Property Laws Amendment Bill 2017 and Regulations has been put on hold until after the Government has finalised its response to the Productivity Commission’s report into Australia’s intellectual property arrangements. This is because if any legislative amendments are required as a result of the Government’s response, two intellectual property Bills might be in Parliament at the same time, leading to great complexity and uncertainty.
Source: www.ipaustralia.gov.au
Mar 14, 2017 (Newsletter Issue 5/17)Single Patent Attorney Regulatory Regime in AU and NZIP Australia informs that the single patent attorney regulatory regime between Australia and New Zealand came into force on February 24, 2017.
The key features of the new regime are:
- A single register for patent attorneys, a single set of requirements for registration, a single code of conduct and a single disciplinary process for Australian and New Zealand attorneys.
- The Professional Standards Board has been renamed as the Trans-Tasman IP Attorneys Board, with an expanded membership.
- The knowledge requirements for registration as a patent attorney have been amended to require candidates to have sufficient knowledge of both AU and NZ intellectual property law and practice.
- Similarly the work experience requirements for registration as a patent attorney includes prosecution of Australian and New Zealand patent cases.
- The Disciplinary Tribunal has been expanded to provide for a three-person panel comprising a senior legal practitioner and two patent attorneys of which at least one will be resident in the country of residence of the patent attorney subject of the hearing, or two Australian registered trademarks attorneys to deal with trade mark attorney disciplinary matters. The disciplinary process is otherwise unchanged from the previous Australian regime.
- The code of conduct, continuing professional education requirements and the fees for registration and renewal are all unchanged from the previous Australian regime.
- Applications made to IP Australia for all IP rights (patents, trademarks, designs and plant breeder’s rights) can supply a single address for legal service in either Australia or New Zealand.
- A single address for service will not be available on February 24, 2017, for IP rights applications made to the IP Office of New Zealand (IPONZ), but will be coming in the near future.
The new patent attorney regime is possible following the passage of legislation in both countries. In late 2016, the New Zealand Parliament passed the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 allowing for the regulatory regime to have effect in New Zealand. The Act along with the corresponding Australian legislation, Schedule 4 of the Intellectual Property Laws Amendment Act 2015, came into force on February 24, 2017.
Existing patent attorneys in both Australia and New Zealand were automatically registered as trans-Tasman patent attorneys on the commencement date.
Transitional arrangements will apply to those candidates who have started studying for knowledge requirements to become a patent attorney under the current New Zealand regime. The transitional arrangements can be found on the Trans-Tasman IP Attorneys Board's website.
Source: www.ipaustralia.gov.au Feb 22, 2017 (Newsletter Issue 4/17)New Search System IntroducedIP Australia informs that Australian Trade Mark Search replaces the current search system (ATMOSS). By searching trademarks quickly and efficiently owners can make informed decisions about their business.
The new system, Australian Trade Mark Search, introduces image recognition and machine learning technology that detects objects within an image and makes instantaneous comparisons across Australia’s entire trademark database. It also features advanced options including a real time search counter and the ability to text search across a range of goods and services.
Source: www.ipaustralia.gov.au Dec 06, 2016 (Newsletter Issue 22/16)Comments on Proposed Legislation Changes RequiredIP Australia is seeking input from interested parties about proposed changes to Australia’s IP legislation.
The aim of these proposed changes is to align and streamline the processes for obtaining, maintaining and challenging IP rights. Using similar processes for the different IP rights would make the IP system simpler and assist businesses dealing with more than one right.
Interested parties are invited to provide a written submission on the exposure drafts by January 22, 2017. Further information is available on the consultation page here
Source: www.ipaustralia.gov.au
Aug 30, 2016 (Newsletter Issue 15/16)
Official Fees Increased
IP Australia has been changed its official fees.
As of October 10, 2016 the official trademark application fee for online filing will be AUD 250 per class with pick list and AUD 330 per class without pick list. There will be no registration fee anymore. The increase of trademark application fees per class intends to partially offset the removal of the AUD 300 registration fee.
Source: www.ipaustralia.gov.au
Jun 14, 2016 (Newsletter Issue 11/16)Madrid Fee Process Changed by IP AustraliaIP Australia will stop collecting and forwarding Madrid Export fees under Rule 34(2) of the Common Regulations under the Madrid Agreement and will stop accepting select forms on behalf of WIPO as of July 1, 2016.
Customers will instead pay and file directly to the International Bureau through their portal, enabling them to interact directly with the office administering their request. In paying directly to the International Bureau customers can be assured the correct fee has been paid based on the exchange rate at the time.
For further information and to access the list of forms which now need to be lodged directly with WIPO, please click here
It should be noted that the process for filing new export applications through the Madrid e-filing system is still available through the IP Australia’s e-services.
Source: www.ipaustralia.gov.au Nov 25, 2015 (Newsletter Issue 18/15)
Electronic Certificates for TMs Available Now
IP Australia announced the introduction of electronic certificates for trademarks via the electronic channel.
Electronic channel customer will receive their trademark certificates electronically. Non-electronic channel customers will receive a printed copy of their certificates on plain paper. The Commissioner’s name and signature will no longer appear on the certificates.
The Australian Trade Mark Register will continue to be the authoritative source on the validity of your IP right. A note to this effect will appear in the footer of the certificate.
There is no fee associated with issuing of electronic certificates.
Source: www.ipaustralia.gov.au
Mar 31, 2015 (Newsletter Issue 5/15)New E-Filing for International Registrations Now Available IP Australia informs that the new e-filing system for international trademark registration applications is now available.
The International Registration Process Integration (IRPI) is an e-filing application system for submitting international trade mark applications to the World Intellectual Property Organization.
The IP Australia eServices channel now includes access to IRPI, the World Intellectual Property Organization (WIPO) electronic filing facility, which offers the ability to securely apply and manage your applications for filing international registration applications (Madrid Protocol).
To find out more about the benefits of filing your application with IRPI please click here
Source: www.ipaustralia.gov.au Mar 18, 2015 (Newsletter Issue 4/15)IP Laws Amendment Bill 2014 PassedThe Intellectual Property Laws Amendment Bill 2014 was passed by the Australian Parliament on February 9, 2015. The resulting Intellectual Property Laws Amendment Act 2015 received the Royal Assent on February 25, 2015.
The Act amends the Patents Act 1990, Trade Marks Act 1995, Designs Act 2003, and the Plant Breeder's Rights Act 1994 in order to:
- implement the Protocol amending the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property (TRIPS Protocol), enabling Australian medicine producers to manufacture and export patented pharmaceuticals to countries experiencing health crises, under a compulsory licence from the Federal Court
- extend the jurisdiction of the former Federal Magistrates Court, the Federal Circuit Court, to include plant breeder's rights matters
- allow for a single trans-Tasman patent attorney regime and single patent application and examination processes for Australia and New Zealand, as part of the broader Single Economic Market (SEM) agenda
- make minor administrative changes to the Patents, Trade Marks and Designs Acts to repeal unnecessary document retention provisions that are already adequately governed by the Archives Act 1983
- make minor technical amendments to the Patents Act to correct oversights in the drafting of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which was passed by Parliament in March 2012.
For more information, please check here
Source: www.ipaustralia.gov.au
Jan 28, 2015 (Newsletter Issue 2/15)
New E-Filing System for Trade Marks Madrid Export Applications
A new e-filing system called International Registration Process Integration (IRPI) has been developed by the World Intellectual Property Organisation (WIPO) in association with IP Australia for filing Trade Marks Madrid Export applications.
This system will cater for all new applications filed online under the Madrid Protocol. It is anticipated to go live on March 14, 2015. IRPI will be available through IP Australia’s eServices portal and will replace the current option which is located within the General eServices request form.
Source: www.ipaustralia.gov.au
Apr 01, 2014 (Newsletter Issue 6/14)
New International TM Application Form
IP Australia announced on its website that they have published a new Australian International Trade Mark Application Form. This form is for applicants who are electing to file a Trade Mark through the Madrid Protocol with IP Australia being the office of origin.
The form is an adaption of the Official WIPO Madrid Agreement MM2 Form, taking into account the specific requirements for Australian users.
Source: www.ipaustralia.gov.au
Oct 15, 2013 (Newsletter Issue 15/13)
General eService Introduced
On 31 August 2013, IP Australia introduced the "General eService" functionality to its online services.
This latest enhancement allows the ability to submit over 150 of the remaining transaction/service request types including amendments, assignments, extensions of time, opposition matters and responses to examination reports for all IP right types.
IP Australia is due to complete all inbound transactions in late 2013. To support this improved functionality, work is underway to develop a solution to provide these services during maintenance periods or outages.
In light of increasing customer demand for eServices, IP Australia anticipates considering the ongoing operational viability of the traditional transaction channels, including assist e-mail, over the phone payments and corporate fax. It is anticipated that a transition from these channels is likely to occur in early to mid-2014.
Source: www.ipaustralia.gov.au
Apr 15, 2013 (Newsletter Issue 5/13)Revised TM Law Amends Opposition PeriodThe Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (Act) came into effect on 15 April 2013. It represents a significant revision of Australian trade marks law. In particular, the Act seeks to strengthen and streamline the trade mark enforcement system.
The most significant aspects of the trade mark law reforms brought in by the Act are:
- a revised process for the opposition of trade mark applications with a strong focus on recuding potential delays (the opposition period is reduced from 3 to 2 months after the publication for acceptance in the "Australian Official Journal of Trade Marks");
- the inclusion of a presumption of registrability for marks with respect to descriptiveness;
- a strengthened customs seizures regime; an increased variety of options for the enforcement of trade mark rights; and
- an extension of attorney-client privilege to fully embrace trade mark attorneys.
For more information, please check the article of K&L Gates here
Source: K&L Gates, Australia Nov 19, 2012 (Newsletter Issue 17/12)
Amendments to Trade Mark Act
The Intellectual Property Laws Amendment (Raising the Bar) Bill received Royal Assent from the Governor General on 15 April 2012.
The amendments relating to the Trade Marks Act 1995 will come into effect on 15 April 2013. Some of the changes are:
1) Oppositions
- An applicant will be required to file a Notice of Intention to Defend an opposition to registration.
- An opposed application will lapse if a Notice of Intention to Defend an opposition is not filed
- An extension of time will be available to file the Notice of Intention to Defend
- New Section 231(3) will allow the Trade Mark Regulations to be amended to prescribe matters relating to trade mark oppositions including: a) Rules about filing and serving documents in an opposition; b) Rules about the amendment of documents filed in an opposition; c) The circumstances in which the Registrar may dismiss an opposition under the new Section 99A; and d) Provision for review by the Administrative Appeals Tribunal of decisions of the Registrar made under the regulations.
- A decision of a delegate of the Registrar in opposition proceedings may be appealed to the Federal Magistrate's Court.
2) Infringement of registered trade marks
Section 126 has been amended to allow for the award of additional damages in trade mark infringement matters taking into account matters including:
- The flagrancy of the infringement;
- The need to deter similar infringements of registered trade marks; and
- The conduct of the party that infringed the registered trade mark that occurred.
3) Penalties
The penalties for offences relating to misuse of trade marks, including falsifying or removing registered trade marks, falsely applying registered trade marks, and possessing or selling goods with false trade marks, have been increased.
There have been changes to Customs Procedures as well.
Source: Spruson & Ferguson, Australia
Nov 01, 2012 (Newsletter Issue 16/12)
New Transactions through eServices
IP Australia announced the second release of its eServices. eServices is a secure electronic business portal that allows to register, login and conduct selected transactions.
The following transactions are introduced with the second release:
Applications for all IP rights; TM Headstart applications; examination requests for patents; user administration for businesses.
All transactions through eServices can be paid by Visa or MasterCard. Transaction history can be accessed any time. Built-in checks, pre-populated fields and informative help text will assist in completing transactions easily and efficiently, saving time and money.
Over the coming months IP Australia will be adding more transactions and services to the portal.
Source: www.ipaustralia.gov.au
Sep 27, 2012 (Newsletter Issue 14/12)
Official Fees Increased
IP Australia announced that the second stage of the fee review implementation has taken place on October 1, 2012. The majority of fee changes occurred on July 1, 2012, with the exception of new IP right application filing fees.
As from October 1, 2012, the official trademark application fee for online filing is AUD 120.00 per class with pick list. The official trademark application fee for filing (electronic or paper) is AUD 200.00 per class without a pick list.
Source: www.ipaustralia.gov.au
May 29, 2012 (Newsletter Issue 9/12)Official Fees Soon IncreasedIP Australia announced an increase of its official fees. The majority of fee changes will occur on July 1, 2012, with the exception of new application filing fees changing from October 1, 2012.
To access the new trademark fee structure, please check here
Source: www.ipaustralia.gov.au May 15, 2012 (Newsletter Issue 8/12)
eServices Launched
IP Australia announced the launch of its eServices to register, login and conduct selected transactions.
In the first release of eServices customers can renew all IP rights, submit trade mark registrations electronically and pay for them online using VISA or MasterCard. New features such as the option to save your requests can be accessed as well. Furthermore, the eServices transaction history can be seen and the details can be updated.
The services and transactions within eServices have built-in checks and pre-populated fields to save you valuable time and help ensure the accuracy of the information.
Over the coming months IP Australia will be adding more transactions and services to the portal.
Source: www.ipaustralia.gov.au
Feb 21, 2012 (Newsletter Issue 3/12)
New Business Names Registration Service
IP Australia announced that States, Territories and the Australian Government are going to introduce a new National Business Names Registration Service.
The new Registration Service will replace the current state/territory services, so that businesses only need to register their name with a single register nationally. The new service will be expected on May 28, 2012.
The new service will be managed by the Australian Securities and Investments Commission (ASIC).
Source: www.ipaustralia.gov.au
Jul 01, 2010 (Newsletter Issue 12/10)
Changes to Trademark Renewal Reminder Notices
IP Australia issues the Renewal Reminder Notice on two separate occasions effective from May 20th, 2010.
This notice will be issued at 4 months and again at 2 months prior to the Renewal Due Date, if payment for renewal has not been received.
A new Final Renewal Reminder Notice will also be issued at the beginning of the 6 month grace period (when the due date for payment of the renewal fee has passed).
Source: www.ipaustralia.gov.au
Legal basis is the Trade Marks Act 1995 (Cth), in force since January 1, 1996.
Interpretation of the Trade Marks Act 1995 (Cth) is based on the principles of "common law“, i.e. official and juridical decisions are rendered on the basis of prior decisions and judgements on similar cases comparing all facts and merits of a case and taking into consideration all different common grounds.
Australia is a member of the Madrid Protocol. Australian trademarks are also protected on Christmas Island, the Cocos (Keeling) Islands and Norfolk Islands (NF).
Trademark protection is obtained by registration. Non-registered trademarks can also be enforced through misleading and deceptive conduct claims under s 18 of the Australian Consumer Law, found in Schedule 2 of the Competition and Consumer Act 2010 (Cth), or the "common law" tort of passing off if they have sufficient public recognition. Enforcing a registered trademark is easier than enforcing an unregistered "common law" trademark, as the owner does not have to establish the public reputation of the trademark.
Nice classification, 11th edition
In Australia, a trademark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade from goods or services so dealt with or provided by any other trader. The trademark must be inherently adapted to distinguish the designated goods and services from those of other persons, not simply descriptive of those goods and services. It must not be deceptively similar or identical to an earlier trademark for similar goods or services.
"Sign" includes the following or any combination of the following: any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.
"Person" includes a body of persons, whether incorporated or not.
The following trademark types are registrable: trademarks, service marks, collective marks, defensive marks and certification marks.
Protectable non-traditional trademarks: 3-D, colours, sounds, smells, movement marks, holograms. This list may be not be exhaustive. An application for a trademark must be rejected if the trademark cannot be represented graphically.
The application is filed at IP Australia, the Australian Government agency responsible for administering patents, trademarks, designs and plant breeder's rights.
Multiple-class applications are possible. However, fees are payable on a per class basis.
Foreign applicants do not need a local agent. A postal address for service in Australia or New Zealand is sufficient. A power of attorney is not necessary. Foreign applicants do not need a domestic registration.
The application process includes a formalities examination, an examination of distinctiveness and a search for prior trademarks. If an examiner refuses to allow the registration of a trademark, the applicant will have an opportunity to respond to the examiner's report by providing submissions or evidence or both, as appropriate. For example, signs not deemed distinctive in the examination may be registered if the applicant can demonstrate that distinctiveness has been acquired by use. The applicant may apply for an ex parte hearing to be heard on the issues raised by the examiner during the examination process. As a means of last resort, there is also an appeal to the Federal Court of Australia.
The processing time from first filing to registration is approximately 7 to 24 months, depending on whether there are objections to be overcome or opposition occurs The first office action is taken after approximately 4 to 7 months.
An Applicant can request expedited examination if the processing time is likely to cause serious disadvantage to the applicant (for example, if court or legal actions are expected or underway, or for urgent commercial reasons).
Expedited examinations will occur in less than one month, however expedited applications are still subject to the minimum period of 7 months between submission and registration to ensure the requirements of international agreements are met. Applications filed claiming convention priority will generally have their examination automatically expedited.
If accepted for registration, the trademark application is published in the “Australian Official Journal of Trade Marks” for opposition. Full details of the application are normally available online from the Trade Marks Office database within 2 or 3 days of filing.
Once the trademark is accepted for registration, it is advertised for opposition by any third party for a 2 month period. If an opposition is filed, a notice of intention to defend must be filed within 1 month of receiving the statement of grounds on which the trademark is being opposed. If no opposition is filed, the trademark will be registered following the expiration of the 2 month opposition period and payment of registration fees.
National:The opposition period is 2 months after publication of acceptance of the trademark in the "Australian Official Journal of Trade Marks".
To oppose the registration of a trademark, a notice of intention to oppose must be filed within the opposition period. Subsequently, and within 1 month of filing the notice of intention to oppose, a statement of grounds and particulars must be filed specifying the grounds on which the trademark is being opposed.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
A trademark registration is valid for 10 years from the date of application.
The registration is renewable for periods of 10 years upon the payment of relevant renewal fees.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official trademark application fee for standard online filing is AUD 250 per class using the pick list for claiming goods and services. The official trademark application fee for standard online filing is AUD 400 per class without pick list, or for paper filing it is AUD 450 per class without pick list. There are no further fees.
Note: IP Australia is in the process of updating its fees. The fees listed above may be impacted. The new fees will come into effect in October 2024.
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Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
If you like to purchase all available information for this country, click the order button.
The total price is
49.00 EUR. A PDF-Download will be sent to you electronically.
Further practical details are available in our publication on this topic
here
Feb 15, 2024
K&L Gates, Melbourne, Australia