Recent amendments to Australian trade marks law

19th March 2019

Recently, there have been some important updates to Australian trade mark law.

Removal a trade mark from the Trade Marks Register on the basis of non-use

Pursuant to the Intellectual Property Laws (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) (the Act), there has been an update in relation to the period in which an application to remove a trade mark on the basis of non-use can be filed.

Any person may apply to have a registered trade mark removed from the register on the basis that the trade mark has not been used for a continuous period of three years ending one month before the date of the removal application. Previously, such a removal application could be filed after trade mark had been registered for five years.

An application to remove a trade mark on the basis of non-use can now be filed once three years have elapsed since the particulars of the trade mark were entered into the register (i.e. 3 years from when the trade mark is registered).

The requirement that the trade mark has not been used for a continuous period of three years ending one month before the date of the removal application remains.

Importantly, we note these amendments will only apply to a non-use application in relation to a trade mark filed on or after 24 February 2019. In all other instances, the previous time periods will apply.

Additional damages

Further, the Act has introduced a new clause into the Trade Marks Act 1995 (Cth), which will allow the Court to award additional damages against a person who makes unjustified threats of proceedings for infringement.

Under clause 129(2A), a Court may award additional damages if it considers it appropriate to do so, having regard to a number of matters, including

(a)        the flagrancy of the threat;

(b)        the need to deter similar threats;

(c)        the conduct of the defendant that occurred after the defendant made the threat; and

(d)        any benefit which accrued to the defendant because of the threat.

These amendments apply to threats made on or after 24 February 2019.

It is important to note that for trade mark infringement proceeds commenced after 24 February 2019:

• simply notifying someone of the existence of a registered trade mark does not constitute a threat to bring an action for trade mark infringement (new section 130A of the Act); and
• rights holders can no longer rely on a defence that they have commenced trade mark infringement proceedings or are pursuing such proceedings.