Draft Bill proposes key trade mark law changes in Australia

The Australian Government recently released the Exposure Draft of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill (the Bill).

The Bill results from a comprehensive review of the Australian Intellectual Property system and the release of the Australian Government Productivity Commission’s Report on Intellectual Property Arrangements in Australia.

The Bill is the first move by the Australian Government to adopt the recommendations of the Productivity Commission. From the trade mark perspective, there are two key law changes that the Bill proposes to introduce:

1. The reduction of the grace period for non-use actions from five years to three years – currently, an Australian trade mark must have been on the Register for five years before it is vulnerable to attack for non-use. The Bill, if enacted, will reduce this period to three years.
2. Ensuring that parallel imports of marked goods do not infringe registered Australian trade marks – there has been some debate over the years as to whether the import of goods genuinely marked by the owner and then imported into Australia would infringe an Australian trade mark registration. The Australian Courts have been clear in recent times that such importation does not constitute trade mark infringement and the Bill will ensure that the Australian Trade Marks Act clearly aligns with this position.

At this point there is no time-frame for the finalisation of the Bill, but it is expected that it will be before the Australian Parliament by May/June 2018.

In addition, it is widely expected that a ‘Part 2’ Bill will be put forward before the end of 2018, which will introduce further changes and adoptions from the Productivity Commission’s Report.

The ‘Part 2’ Bill will almost certainly include provisions that will allow the holder of an International Registration designating Australia to file divisional applications (currently available only to the holder of a national Australian application) – this has been listed as a priority by Intellectual Property Australia.