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IP Law Reform: ‘Raising the Bar’ Bill passes Senate
On 27 February 2012, the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 was passed without amendment by the Senate. The Bill will now progress through the House of Representatives and can be expected to take effect in mid-2013.
The Bill makes significant changes to patent law, in particular ‘raising the bar’ on the inventiveness test and broadening the scope of enquiry as to prior art.
The Bill also introduces some important changes to trade marks law which are summarised below.
- Makes it clear that the presumption of registrability applies to all applications. This issue was muddied by some court decisions which held that the presumption of registrability did not apply in some circumstances.
- Introduces significant changes to trade marks oppositions procedures that should speed up the opposition process. With the average opposition taking 2 to 3 years to finalise, the changes are aimed at reducing timeframes through shorter deadlines.
- Requires that opponents file a statement of particulars on each ground of opposition that will be relied upon. At the moment, until the point of a hearing, there is no requirement for an opponent to specify which grounds it will rely on let alone particularise them.
- Obliges the applicant in a trade mark opposition to file a notice of intention to defend, failing which the application lapse. At the moment, an opponent is required to take an opposition all the way to a decision even if the applicant takes no part in the opposition process.
- Allows for the introduction of regulations which can be used to tweak trade mark opposition procedures.
- Gives trade mark owners who have filed a Notice of Objection with Customs to get more information about the exporters and consignors of infringing goods and access to more than just one copy of seized goods.
- Provides significantly harsher penalties for counterfeiting offences and introduces new summary offences.
Did You Know?
Despite the concerns of legal commentators, the Bill includes summary offences for applying a mark to goods or offering for sale goods that carry a mark if you are negligent as to whether that mark is substantially identical to a registered trade mark.
In other words, once the Bill becomes law, it seems that failing to check the trade marks register could result in a criminal offence being committed. While the sense in such a law may be questionable, it certainly highlights the importance of getting proper trademark searches done.
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