IP legislation amendments one step closer

Following on from our April alert regarding the introduction of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 (Cth) (Bill), the Bill passed the House of Representatives on 27 June 2018. It is presently before the Senate, with a second reading moved.

The Bill proposes changes to the following intellectual property legislation, some substantive and some aimed at streamlining/aligning certain administrative matters:

• Copyright Act 1968 (Cth) (Copyright Act);
• Trade Marks Act 1995 (Cth) (TM Act);
• Patents Act 1990 (Cth) (Patents Act);
• Designs Act 2003 (Cth) (Designs Act);
• Plant Breeder’s Rights Act 1994 (Cth) (PBR Act); and
• Olympic Insignia Protection Act 1987 (Olympic Insignia Act).

As we wrote previously, the more significant changes contemplated by the Bill include:

• Revisions to the TM Act to deal with opposition matters (to allow the Registrar to require security for costs, and to give the Governor-General power to prescribe matters relating to oppositions) and give the Registrar powers to amend applications and registrations in certain instances;
• Amendments to the TM Act designed to reduce the period a trade mark must be initially registered before it is vulnerable to challenge for non-use from 5 years from the date of filing to 3 years from the date of registration, and to bolster existing provisions on the issue of parallel importation, and clarify when parallel importation will not amount to infringement of a registered Australian trade mark;
• A consequential repealing of section 198A from the Copyright Act (that existing section provides a defence to trade mark infringement in respect of parallel imported copyright-protected works);
• Into the PBR Act, amendments to provisions dealing with how a declaration can be obtained that a plant variety is essentially derived from another variety and extending granted PBR to any essentially derived varieties that are declared;
• Also into the PBR Act, the insertion of a prohibition on making unjustified threats of infringement under the legislation, and the right to claim additional damages in respect of an unjustified threat;
• The right to claim additional damages in respect of unjustified threats under the TM Act, Designs Act and Patents Act (but not the Copyright Act); and
• For those legislative schemes involving a registration process (ie the TM Act, Patents Act, Designs Act and PBR Act), changes to make filing requirements consistent, provide flexibility in respect of evidence filing methods, permit computerised decision-making in certain instances, and to allow for official electronic communications with relevant parties.

We will continue to inform our readers of developments relating to the progress of the Bill through the Senate.

This article was written by Luke Dale, Partner, Ashley Holland, Partner and Niomi Abeywardena, Special Counsel.