Key Changes to the Trade Marks Act 1995 (Cth)
On the 25th August 2018 several changes to the Trade Marks Act 1995 (Cth) took effect. The amendments are contained in the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018. These changes were in response to the Australian Government Productivity Commission’s Report on Intellectual Property Arrangements in Australia. If you are an owner of a trademark, it is important to review these changes.
There are two changes that are worth noting:
- The grace period for non-use applications has been reduced from five to three years.
- The Act confirms that parallel importation does not infringe trademark rights.
If you are concerned with any of these changes, it may be beneficial to consult with one of LawPath’s experienced trademark attorneys.
If you don’t use it, you’ll lost it!
Trade mark protection can be lost if you do not use your trade mark. The old regulations allowed an application for non-use removal to be made if you did not use your mark continuously for a 5-year period. The amendments have reduced this time period to 3 years.
You will need to continuously use your trademark for a period of 3 years to ensure that it is not vulnerable to attack. If you do not, any person may make an application to the Register to have the trademark removed. This means that you will lose any rights or protections you previously had over the mark.
The 3-year grace period will apply to non-use applications made on or after the changes take effect. The date that these changes will take effect is yet to be decided; if no date is fixed, the changes will take effect on 24th February 2019.
If you need advice about your rights over your registered trade mark or want to discuss the best way to protect your intellectual property, get in touch with one of our trademark attorneys.
Changes to parallel importation laws
Parallel importation, also known as direct importing, is when a business sells products to Australian consumers using an informal manufacturer distribution channel. These products bear the registered trade mark of the rights holder outside of Australia. A business engaging in parallel importation sells genuine goods without consent from the manufacturer.
Under the new s 122A defence, there are certain circumstances in which parallel importation will not infringe trademark rights. These are where:
- the goods are similar to the trademarked goods;
- the goods have been sold in Australia or a foreign country; and
- at the time the trade mark is used, it was reasonable for the person using the mark to assume it had been applied to the goods with the consent of the registered owner or other approved entities.
By setting out who the parallel importer can assume rightfully applied the trade mark to goods, trade mark owners will be prevented from using methods such as contractual agreements to stop parallel importation.
Conclusion
Trade marks are a valuable asset for distinguishing your goods and services from the goods and services of your competitors. It is important to stay up to date with changes to trade mark law to ensure your intellectual property is properly protected. LawPath has specialist trademark attorneys who can simplify the process and help you protect your trademarks.
Need more help? Contact a LawPath consultant on 1800 529 728 to learn more about customising legal documents, obtaining a fixed-fee quote from Australia’s largest legal marketplace or to get answers to your legal questions.
