Our News Alert of 4 March 2011 reported on the INTELLECTUAL PROPERTY LAWS AMENDMENT (RAISING THE BAR) BILL 2011 which proposes significant changes to Australian IP laws. This News Alert is to advise that the Bill has now been formally introduced into the Australian parliament.
Following the public consultation period a number of changes were made to the exposure draft legislation impacting on both patents and trade marks. An outline of these key changes can be found below.
1. Transitional Provisions
There has been a partial win for patent applicants, in that the substantive changes for considering patent validity (e.g. tougher inventive step/obviousness test, and stricter utility/usefulness and enablement requirements) will only apply to patent applications where a request for examination has not been filed by the date of commencement (as opposed to the original proposal of the date of the First Examiner's Report/Office Action, being a date that the applicant does not have control over).
2. Commencement Date
The commencement date will be 12 months after the Act is formally adopted by Royal Assent (which may occur in the next few months, depending on how quickly the legislation passes through the two Houses of Parliament) – the period is normally 6 months. The commencement date therefore is likely to fall in late 2012.
In practical terms, we recommend all patent applicants file a request for examination before the commencement date to gain the benefit of the current standards.
The most significant amendment impacting upon the trade mark provisions concerns the re-drafting of Section 41 which relates to the requirement for a trade mark to have capacity to distinguish in order to qualify for registration.
This Section is now framed in the negative. It maintains the previous position that an application for registration must be rejected if the trade mark is not capable of distinguishing the relevant goods or services. However, it then goes on to identify two categories of trade marks which are taken not to be capable of distinguishing.
The first category is a trade mark which is not to any extent inherently adapted to distinguish and has not been used before the filing date to such an extent that it does in fact distinguish the relevant goods or services.
The second category is where a trade mark is to some extent, but not sufficiently, inherently adapted to distinguish and does not and will not distinguish the relevant goods or services having regard to the combination of (i) its extent of inherent adaptation to distinguish, (ii) its use or intended use and (iii) any other circumstances.
The Explanatory Memorandum to the Bill includes a clear direction that the amendment to Section 41 is intended to clarify that the presumption of registrability applies to this Section. The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour. The Registrar must focus on what must be wrong with a trade mark before being entitled to reject it. However, the Registrar is not required to form the view that the mark should clearly not be registered. It is sufficient for the Registrar to be satisfied that a ground for rejection exists on the balance of probabilities.
This amendment really goes to form rather than substance and we believe it will not materially affect the current examination regime.
We will provide further updates on the progress of this Bill as it goes through Federal Parliament.