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CHANGES TO THE AUSTRALIAN TRADE MARKS ACT

Examination
• The Trade Marks Act has been amended to clarify that the presumption of registrability applies to Section 41. A Trade Mark is presumed registrable unless it can be shown that it is not capable of distinguishing the applicant’s goods or services. This change shifts the onus from the applicant to the Registrar.

Opposition
The changes propose to streamline the opposition process by implementing the following proposed amendments:
• Notice of Opposition – There will no longer be a requirement for an opponent to serve a Notice of Opposition on the Trade Mark applicant. Instead, the opponent will serve a Notice on IP Australia and IP Australia will serve a copy of the Notice on the applicant;
• The opponent will be required to file a statement of particulars detailing the grounds on which they intend to oppose the Trade Mark. The statement of particulars is required to be filed within 1 month of filing a Notice of Opposition; and
• There will be a new requirement for an applicant of a Trade Mark which has been opposed to file a Notice of Intention To Defend if they wish to defend their application in Opposition proceedings.

The above changes to the Trade Mark opposition procedure will make the process become more efficient and cost effective for both parties.

Enforcement
Trade mark enforcement mechanisms providing tougher penalties, tailored offence provisions and additional damage provisions in civil infringement actions, including:
• The courts have greater discretion to award additional damages where appropriate; and
• Trade Mark owners will be permitted to inspect goods seized by the Australian Customs Service. The Trade Mark owner may also obtain additional information about the importer of the seized goods and obtain samples of the seized goods.

The changes seek to address concerns relating to penalties for Trade Mark counterfeiting, which are lower than those for copyright infringement. The changes also propose to improve Australian Customs seizure procedures for the importation of counterfeit Trade Marked goods into the country.

Other
• Attorney client privilege will be extended to include client communications with overseas attorneys.