• Trade Marks Made Easy -

Recent changes to Trade Mark legislation simplify the process for Australian businesses.

The amendments resulted from a review which found that the trade marks system was effective, but could be enhanced. The amendments are particularly beneficial to small-to-medium businesses, as more than half of 50,000 trade marks applications are received from this sector.

The Trade Marks Amendment Bill 2006 was passed in Parliament on 12 October 2006 and received royal assent on 23 October 2006. The Bill amends the Trade Marks Act 1995 in an attempt to strengthen the Trade Marks system and provide greater certainty for Australian businesses by aligning it with other intellectual property legislation and reducing administrative burdens.

The key amendments include:

• The ability to conduct simple trade mark transactions over the phone.

• Greater certainty that ownership of and interests in a trade mark have been recorded accurately on the Register of Trade Marks.

• Only persons with legal personality (ie individuals and corporations) may own trade marks. This will not affect the validity of trade marks already filed in the name of, for example, trusts or business names.

• Greater flexibility for the correction of clerical errors and obvious mistakes;

• An express provision that the power of a registered owner to deal with the trade mark is limited only by rights appearing in the register (making the recording of third party interests imperative);

• Any person, rather than only a "person aggrieved", can make an application to have a trade mark removed from the Register due to non-use;

• The grace period within which a trade mark registration can be renewed has been reduced from 12 months to 6 months in line with the periods allowed under Patents Act 1990, the Designs Act 2003 and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks

• The Registrar will now be able to initiate court action to amend or remove a trade mark from the Register where it is clearly in the public interest.

• The creation and modification of grounds of opposition to trade mark registration which include:

o The introduction of an opposition ground where the trade mark has been applied for in bad faith;

o The lowering of the threshold for the reputation ground of opposition, so that only a likelihood of deception or confusion is required (rather than substantial identity/deceptive similarity between the respective marks);

o An additional ownership ground of opposition based on prior and continuous use of a substantially identical/deceptively similar mark for similar goods and services (this only applies in oppositions against applications accepted based on prior and continuous use);

o Clarification that opposition based upon geographical indication only applies where the goods covered by an opposed trade mark are similar to those covered by a geographical indication, or the use of the opposed mark on the goods it covers is likely to deceive or cause confusion; and

o Provision for a trade mark found in opposition to have been amended contrary to the Act to be revoked and re-examined.

• Notices of objection will now cease after 4 years, whereas previously they had to be renewed every two years.

Philip Brown, Partner, Anderson Rice Lawyers