In 2019, there will be changes to the Australian Trade Marks Act 1995 (Cth) (Act) that will significantly impact on international and local brand owners. Key aspects of the changes are outlined below. Please contact us should you require any assistance regarding your Australian trade mark portfolio in light of these changes.
(New) Section 122A – Exhaustion of a registered trade mark in relation to goods
- Commencing from 24 August 2018, section 122A has been inserted into the Act. Section 122A provides an additional defence to trade mark infringement for parallel importers of genuine goods. The intention is to encourage the parallel importation of genuine goods into Australia from overseas for the benefit of consumers.
- For the defence to apply, the parallel importer must have made ‘reasonable inquiries’ to ensure that the trade mark was applied to the genuine goods by, or with the consent of those persons permitted to use/apply the trade mark.
- The extent of ‘reasonable inquiries’ is an objective test and will be determined by the relevant facts at the time. The more dubious the origin of the ‘genuine’ goods, the more inquiries are required. However, there is no intention for an unreasonable evidentiary burden to be placed on the parallel importer.
- Given this change, brand owners may need to consider other Australian Laws such as Australian Consumer Law, consumer safety requirements, regulatory approvals or disclaimers – as a means of objecting to the activities of parallel importers.
Reduced period to file non-use applications for registered trade marks
- Commencing 24 February 2019, and for trade mark applications filed on or after this date, a third party may file a non-use application three years from the date the details of the trade mark are entered in the Australian Trade Mark Register (Register).
- This amendment will replace the (current) timeframe for filing a non-use application being five years from the filing date of the trade mark application.
- The amendments are intended to reduce the number of unused trade marks on the Australian Trade Mark Register, and better align Australia’s non-use provisions with international standards.
- Whilst brand owners will benefit from this amendment by bringing earlier actions to remove cited marks from the Register, a brand owner must also ensure the correct and timely use of their trade mark in Australia in relation to the registered goods and services.
Unjustified threats of trade mark infringement – Additional Damages
- Brand owners will need to carefully and thoroughly consider all factors before making any claim of trade mark infringement against alleged infringers, before issuing cease and desist letters.
- Commencing from 24 February 2019, the Act will be amended to refer to ‘unjustified threats’ in place of ‘groundless threats’. This will provide clarity and consistency to the ‘unjustified threats’ provisions across all Australian intellectual property legislation.
- Also, additional (punitive) damages may be awarded against a trade mark owner for making unjustified threats of trade mark infringement against an alleged infringer.
- The Court will consider aspects such as (i) the flagrancy of making the threat, (ii) the need to deter similar threats, (iii) the trade mark owners conduct, and (iv) benefits to the trade mark owner as a result of making the unjustified threat.
- The introduction of new section 130A will also confirm that merely notifying someone of the existence of a registered trade mark does not constitute a threat to bring an action for infringement of the trade mark.
Disclaimer: For general information purposes only. Not intended as legal advice. Please contact us should you require assistance regarding your Australian trade mark portfolio in light of these changes.