The Commonwealth Department of Communications and the Arts recently released its Response to the Productivity Commission’s Report on Intellectual Property (IP) Arrangements in Australia.
The proposed reforms are intended to streamline Australia’s trade marking system. Clearly, some of the reforms bring the system into alignment with practices already implemented overseas. Ministers Sinodinos (Minister for Industry, Innovation and Science) and Fifield (Minister for Communications) have said that Australia’s IP system is well regarded and consistently ranks in the top tiers of international comparisons, and that these reform measures will ensure that Australia remains competitive in domestic and global marketplaces.
Certainly achieving success with trade marking in Australia is less fraught than with the system in, for example, the USA.
The proposed “decluttering” of the system should streamline the system further.
Hopefully we will not have to wait too long for these proposals to be implemented. It is proposed that IP policy will be monitored by a new IP Policy Group and IP Australia plans to release exposure draft legislation later in 2017 for public comment.
A quick reference summary of the recommended trade mark reforms and responses is set out below:
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Productivity Commission's report on Intellectual Property arrandements in Australia
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Commonwealth Department of Communications and the Arts responses
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The Australian Government should introduce a specialist IP list in the Federal Circuit Court.
The Federal Circuit Court should be adequately resourced.
These reforms should be assessed after five years.
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The Government notes these recommendations.
The ability to enforce IP rights in a timely and cost-effective manner is an important aspect of the IP system.
The Government notes that the Federal Circuit Court (FCC) has commenced a pilot in its Melbourne Registry to streamline its management of IP matters and to increase the visibility of the FCC as an alternative to the Federal Court of Australia.
IP Australia has recently launched its IP Mediation Referral Service, and is investigating how to improve accessibility to IP insurance.
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Productivity Commission's report on Intellectual Property Arrangements in Australia
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The Australian Government should amend the Trade Marks Act 1995 (Cth) to:
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Commonwealth Department of Communications and the Arts
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Responses
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Reduce the grace period from 5 years to 3 years before new registrations can be challenged for non-use.
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The Government supports this recommendation.
The Government agrees that it is desirable to effectively manage cluttering on the trade mark register and will seek amendments to the Trade Marks Act 1995 (Act).
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Remove the presumption of registrability in assessing whether a mark could be misleading or confusing at application.
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The Government does not support this recommendation.
The presumption of registrability allows some discretion to reject a trade mark that would be misleading or confusing, but sets the level of certainty required at an appropriate level.
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Ensure that parallel imports of marked goods do not infringe an Australian registered trade mark when the marked good has been brought to market elsewhere by the owner of the mark or its licensee. Section 97A of the Trade Marks Act 2002 (New Zealand) could serve as a model clause in this regard.
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The Government supports this recommendation.
The Government accepts that section 123 of the Act is not effectively implementing the policy intention of allowing for the parallel importation of legitimate goods and has led to some uncertainty and confusion. Further public consultation on an exposure draft of proposed legislation will be undertaken.
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Productivity Commission's report on Intellectual Property Arrangements in Australia
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IP Australia should:
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Commonwealth Department of Communications and the Arts
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Responses
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Require those seeking trade mark protection to state whether they are using the mark or ‘intending to use’ the mark at application, registration and renewal, and record this on the Australian Trade Mark On line Search System (ATMOSS). It should also seek confirmation from trade mark holders that register with an ‘intent to use’ that their mark is actually in use following the grace period, with this information also recorded on the ATMOSS.
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The Government supports in principle this recommendation.
The Government will ask IP Australia to undertake further research and analysis to determine the sources and extent of any clutter on the trade marks register.
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Require the Trade Marks Office to return to its previous practice of routinely challenging trade mark applications that contain contemporary geographical references (under s. 43 of the Trade Marks Act).
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The Government supports this recommendation. However, some further work is needed to determine the scope of the practice change in the Trade Marks Office.
The Government agrees that geographical terms in trade marks are a particularly contentious issue in relation to misleading and confusing connotations.
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In conjunction with the Australian Securities and Investment Commission, link the ATMOSS (now known as Australian Trade mark search) database with the business registration portal, including to ensure a warning if a business registration may infringe an existing trade mark.
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The Government supports in principle this recommendation.
The Government is currently working to establish a single online portal for streamlined business and company registration and is continuing to develop Australian Trade Mark Search to provide additional capabilities. Linkages between these databases to better assist and streamline business decision-making are being explored.
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Further consultation by the Government will be undertaken on many of the recommendations and responses before the reforms are enacted or implemented. In the past reforms have not proceeded. The tenacity of policy makers will be required if these reforms are to reach enactment. If so, Australians will benefit from more effective IP arrangements.