What you need to know
- On 24 February 2019, changes to the Trade Marks Act 1995 (Cth) came into effect.
- For trade mark applications filed on or after 24 February 2019, a removal application on the basis of non-use can now be filed three years after the mark has been entered in the Register. Prior to 24 February 2019, the grace period was five years.
- From 24 February 2019, the Court has the power to order additional damages in actions for unjustified threats of trade mark infringement. It is also no longer possible to defeat an unjustified threats action simply by commencing a trade mark infringement proceeding.
What you need to do
- If you are a trade mark owner, ensure that for any mark you file on or after 24 February 2019, you use that mark within 3 years of the date it is entered in the Register to ensure that it does not become vulnerable for removal on the basis of non-use.
- When considering whether to make a threat of trade mark infringement against another party, be aware that: the Court now has the power to award additional damages should the party threatened commence an action for unjustified threats of infringement; and that actually bringing an action for trade mark infringement will not necessarily defeat an unjustified threats action.
Changes to the Trade Marks Act 1995 (Cth)
The last of the changes to the Trade Marks Act 1995 (Cth) arising from the Intellectual Property Laws (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) came into effect on 24 February 2019. While some of the changes are only minor, there are two changes that are important to be aware of, particularly if you are a trade mark owner.
Change to grace period for non-use removal application
Prior to 24 February 2019, if a person wanted to remove a trade mark registration on the basis of non-use, it was necessary to wait until the trade mark had been on the Trade Marks Registrar for at least 5 years. This period was known as the "grace period". However, for all trade marks filed on or after 24 February 2019, that grace period has been reduced to three years. That means trade mark owners now have a shorter period in which to commence use of their marks to ensure that they do not become vulnerable to removal for non-use. The time period starts running from the date the mark's particulars are added to the Register (ie, the date the mark is registered).
Change to unjustified threats provisions
Two significant changes have been made to the provisions dealing with unjustified threats of infringement. A new provision has been added to the Trade Marks Act which allows a court to award additional damages where an unjustified threats allegation has been made if it considers it is appropriate to do so. In making this assessment that Court may take into account the flagrancy of the threat, the need for deterrence, the conduct of the defendant after the defendant made the threat, any benefit that accrued to the defendant because of the threat, and all other relevant matters. The same change has been made to the Designs Act 2003 (Cth), the Patents Act 1990 (Cth) and Plant Breeders' Rights Act 1994 (Cth).
The unjustified threats provisions have also been changed (section 129(5) has been repealed) so that a trade mark owner will no longer simply be able to bring an action for trade mark infringement to avoid an unjustified threats action (the trade mark owner must establish infringement). This change brings the Trade Marks Act in line with other IP legislation. Finally, a new section (section 130A) has been added which provides that the mere notification of the existence of a trade mark registration does not amount to an unjustified threat of infringement.
These changes only apply to threats made on or after 24 February 2019. However, section 129(5) continues to apply in relation to any infringement actions commenced before 24 February 2019.
Authors: Annika Barrett, Senior Expertise Lawyer; and Kellech Smith, Partner.
