Draft Regulator Performance Bill Includes Fine Tuning of IP Legislation

The Australian Government is consulting on the exposure draft of the Regulator Performance Omnibus Bill 2022 which includes proposed clarificational and streamlining amendments to the Trade Marks Act 1995, Patents Act 1990 and Olympic Insignia Protection Act 1987.

The proposed amendments to the above Acts are contained in Part 4 of Schedule 5 of the exposure draft Bill, with Part 4 split into 6 divisions. If adopted the relevant proposed amendments would only apply where the amended qualifying criteria is satisfied after the commencement date. The consultation period closes on 14th January 2022.

The 1st division would change the Olympic Insignia Protection Act (OIP Act) to make it clear that the International Olympic Committee (IOC) and the Australian Olympic Committee (AOC) can register their own insignia as trade marks, and to provide clearer authority for the rejection of trade mark applications not authorised by these bodies. Section 42(b) of the Trade Marks Act (TM Act) provides that a trade mark application must be rejected if use of the mark would be contrary to law. However, currently the OIP Act prevents registration of trade marks containing relevant Olympic insignia, yet does not deem that use of such Olympic insignia is contrary to law. Clarification is sought to be achieved by defining what a protected trade mark is for the purposes of the OIP Act and then specifying that the use of such trade marks is contrary to law unless it is by the IOC, AOC or a person authorised by those bodies. This will permit registration of authorised Olympic insignia trade marks and prevent unauthorised registration and use of such trade marks.

Division 2 concerns late renewal of a trade mark that is registered more than 10-years after the application date. When such registrations occur the owner is notified that the renewal fees need to be paid within 2-months of the registration date. Currently, if the owner does not renew within that 2-month period they can late renew the registration within a further period of 10-months. It is proposed to reduce that further period to 6-months so it aligns with the grace period for standard renewals.

Division 3 concerns rare occasions in which the Registrar fails to recognise that a component of a notice of opposition has been validly filed and registers the mark. Currently section 84B of the TM Act allows registrations to be revoked if a notice of opposition has been filed and the Registrar becomes aware of the failure within one-month of the registration date. However, a notice of opposition is only taken to be filed if both the notice of intention to oppose and the statement of grounds and particulars have been filed. It is proposed to amend section 84B to allow revocation where only a component of the notice of opposition has been validly filed.

Division 4 concerns the ability to restore a trade mark to the register when it has been removed from the register on account of steps not being taken in time by an opponent to a non-use action. Currently section 98 requires restoration if an extension of time is granted for filing a notice of opposition and the restoration application is filed within that extended period. It is proposed to widen section 98 by requiring restoration where other related extensions of time are granted such as for filing evidence or requesting a hearing and the action is done within that extended period.

Division 5 concerns ceasing publication of the Official Journal. It is considered that the Official Journal is no longer required as the online trade mark database records and allows access to any information that has been included in the Official Journal. Information will instead be required to be published in the online database in accordance with the TM Regulations.

Division 6 concerns transitional and savings provisions relating to the repealed Patents Act 1952. The last patent under that Act expired in February 2016 and the 6-year statutory limitation period expires in February 2022. It is proposed to omit or repeal spent transitional and savings provisions relating to that Act.

Author: Quinn Miller

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