In addition to amending patent law (which is not covered in this article), the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) ("the IPRB") aims to significantly improve and streamline trade mark and copyright law in Australia from 15 April 2013, and strengthen the rights of intellectual property owners.

Changes to Trade Mark Law

The IPRB affects existing trade mark registrations and pending trade mark applications by:

• altering the seizure process utilised by Australian Customs such as by placing the onus on the importer to make a claim for the seized goods bearing an infringing trade mark within a specified time, and if no claim is made the goods will be forfeited and destroyed;  
• allowing a court to award punitive damages for trade mark infringement.  Factors that can be taken into account by a court include (but are not limited to) flagrancy of the infringement, the infringing party's conduct and the need to deter similar infringements of registered trade marks; 
• increasing penalties for offences such as falsely applying a registered trade mark or falsifying a registered trade mark. For indictable offences, the maximum penalties will increase to five years' imprisonment.  A court can also impose fines of up to $AU60,500 on an individual and $AU302,500 on a corporation;
• widening the Federal Magistrates Court's jurisdiction to deal with all trade mark matters including appeals from a variety of the Intellectual Property Office of Australia's ("IP Australia") decisions - those matters were formerly within the jurisdiction of the Federal Court of Australia.  We anticipate this may result in the swift resolution of some trade mark proceedings;  
• clarifying the presumption of a trade mark's registrability and thereby streamlining the trade mark application process by requiring the Registrar to accept a trade mark application unless there are grounds to reject it.  We anticipate this will result in more trade mark applications being accepted as capable of distinguishing goods or services, and more trade mark applications being registered as a result; and
• streamlining the trade mark opposition process by imposing a number of new obligations on applicants and opponents in relation to procedural filing times and documentation.

Key changes to current trade mark opposition processes

Registration of a trade mark can currently be opposed by a third party during the three month examination stage of IP Australia's processes.  A third party can also seek to remove a registered trade mark from the Trade Marks Register for alleged non-use, and a trade mark owner can then oppose that action if it has grounds to do so.  

Opposition proceedings can take some time to resolve.  The IPRB aims to streamline trade mark oppositions by:

• shortening the period during which trade mark applications can be opposed to two months following advertisement in IP Australia's Official Journal;
• simplifying opposition documentation;
• requiring opponents to lodge a Statement of Grounds and Particulars within one month of filing a Notice of Opposition, specifying the exact grounds and material facts which the opponent relies in support of its opposition;
• removing an opponent's current obligation to serve its Notice of Opposition on the trade mark applicant or owner - instead, IP Australia will provide the Notice of Opposition to the trade mark applicant or owner;
• requiring a trade mark applicant or owner to file a Notice of Intention to Defend with IP Australia within one month of service of the opponent's Statement of Grounds and Particulars; and
• limiting the number of time extensions for filing and serving evidence in opposition proceedings. 

Changes to Copyright Law

The IPRB amends the Copyright Act 1968 by giving copyright owners the ability to inspect or remove multiple copies of infringing goods seized by Australian Customs.  

Also, the IPRB requires exporters and importers to provide their contact information to Australian Customs so that copyright owners can identify them, retain their details, and determine who should be the subject of copyright infringement or enforcement proceedings.  

We anticipate these changes will lead to more counterfeit goods being seized at the Australian border and ultimately destroyed. 

Summary

The reforms introduced by the IPRB represent a significant change to Australian intellectual property law.  We anticipate those reforms will streamline trade mark processes, reduce delays faced by trademark applicants and opponents, improve infringement and enforcement mechanisms in terms of trade marks and copyright, and strengthen the rights of intellectual property owners.

Contact Stone Lawyers for assistance.