Copyright and Trade Mark Reform: Australian Government Responds to Productivity Commission’s Final Report on IP Arrangements in Australia


On 25 August 2017, the Australian Government released its response to the Productivity Commission’s Final Report on Intellectual Property (IP) arrangements in Australia.

The response addresses the Productivity Commission’s recommendations for reform with respect to all aspects of IP. The Government has supported, supported in principle, noted or disagreed with a number of the Productivity Commission’s final recommendations. In this article, we outline the Government’s response to the Productivity Commission’s final recommendations in regard to copyright, trade marks and section 51(3) of the Competition and Consumer Act 2010 (Cth).

Copyright recommendations

The recommendations supported or supported in principle by the Government in relation to copyright reform include:

  • The Government supports in principle amending the Copyright Act 1968 (Cth) to make unenforceable any part of an agreement restricting or preventing a use of copyright material that is permitted by a copyright exception. The Government wants to ensure that statutory rights to fairly deal with copyright material are protected. However, the Government will consult further on this and how it interacts with the exceptions to circumventions of technological protection measures (TPMs) currently permitted under the Copyright Act (see further below). The Government will undertake a review of the Copyright Regulations 1969 (Cth) in the second half of 2017 and will then consult on how best to implement this recommendation.
  • The Government supports in principle the recommendation that parallel import restrictions for books should be repealed to take effect no later than the end of 2017. The Government will consult with the book industry to develop a reform pathway that is in the public interest.
  • The Government supports a review of the current Collecting Societies’ Voluntary Code of Conduct to ensure it represents best practice and promotes efficient and effective copyright licences. The Government will work with the Australian Competition and Consumer Commission on the review.
  • The Government supports limiting liability for the use of orphan works, where a user has undertaken a diligent search to locate the relevant rights holder. The Government has enacted the Copyright Amendment (Disability and Other Measures) Act 2017 (Cth), which establishes a term of protection for unpublished works, including where the identity of the author is unknown. The Government will also consult on the best way to limit liability for use of orphan works.

The Government has also noted (but not expressed a position on) a number of the recommendations of the Productivity Commission, in particular, the recommendation to amend the Copyright Act to make it clear that it is not an infringement for consumers to circumvent geoblocking technology. As set out above, the Government will review and consider whether new TPM exceptions could be created, which may include exceptions that prescribe particular uses of copyright material prevented by geoblocking. However, the Government notes that other measures will continue to govern geoblocking technology, such as terms and conditions under consumer contracts and/or regulatory arrangements in overseas jurisdictions.

The Government also notes the Australian Law Reform Commission’s final recommendation regarding a fair use exception in Australia. The Government intends to publicly consult on more flexible copyright exceptions in early 2018, following a number of other copyright reform priorities, including the Government’s review of the Copyright Regulations (as mentioned above).

Trade mark recommendations

The Government supports or supports in principle a number of recommendations in relation to trade marks, including:

  • support for reducing the grace period from 5 years to 3 years before new trade mark registrations can be challenged for non-use;
  • support for amending section 123 of the Trade Marks Act 1995 (Cth) to ensure that parallel imports of trade marked goods do not infringe an Australian registered trade mark when the good has been brought to market elsewhere by the owner of the mark or its licensee;
  • support for the Trade Marks Office to return to its previous practice of routinely challenging trade mark applications that contain contemporary geographical references (under section 43 of the Trade Marks Act);
  • support in principle to establish a single online portal for streamlined business and company registration that may link the Australian Trade Mark Search database with the business registration portal; and
  • support in principle to require a statement of “using” or “intending to use” a trade mark at application, registration and renewal.

However, the Government does not support removing the presumption of registrability in assessing whether a trade mark could be misleading or confusing.

Australian Competition and Consumer Act 2010 (Cth) recommendations

The Government supports the recommendation to repeal section 51(3) of the Competition and Consumer Act 2010 (Cth), which provides an exception to some of the restrictive trade practices provisions in the Act in relation to IP licensing. The Government also notes that the recommendations of the Harper Competition Policy Review relating to per se prohibitions, authorisations and notifications are already being implemented.

Next steps

In terms of implementing the reforms recommended by the Productivity Commission, the Australian Government has implemented a new IP Policy Group that will monitor IP policy moving forward. The Government will also engage with industry and stakeholders through consultation to determine how best to implement the reforms.

We will keep you updated on further reform developments, including the upcoming copyright reviews and consultations. In the meantime, if you have any questions in regard to the above, please don’t hesitate to contact us.

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