Neil Sadler

Raising the bar part 9: Simplifying the IP system

Neil Sadler

14 May 2013

Designs Patents Trade marks

Schedule 6 of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 introduces a number of measures aiming to streamline procedures and reduce costs.

The Federal Circuit Court (formerly the Federal Magistrates Court is now an alternative avenue of appeal in relation to a number of decisions of the Registrar in design and trade mark matters.

These include:

  • Decisions relating to revocation of designs on grounds relating to entitled persons (section 52(7));
  • Decisions relating to applications after revocation on the above grounds (section 54(4));
  • Decisions relating to examinations of designs (section 67(4));
  • Decisions relating to opposition proceedings in trade mark matters (section 56);
  • Decisions relating to applications for amendment of trade marks (section 67);
  • Decisions relating to amendment of particulars of a trade mark entered on the register (section 83(2));
  • Decisions revoking registration of a trade mark (section 84D);
  • Decisions relating to opposition proceedings (section 104).

One of the pivotal sections in the Trade Marks Act dealing with the question of whether a trade mark is capable of distinguishing an applicant’s goods or services (section 41) has been replaced with a new section.

The test has been simplified.

There are now two double barrelled questions with a positive answer to either resulting in rejection, they are:

  • Is the trade mark not to any extent inherently adapted to distinguish and has there not been prior use to such an extent that it does in fact distinguish;
  • Is the trade mark unable to distinguish having regard to the combined effect of the extent of inherent adaptability to distinguish and the use or intended use of the trade.

Section 41 has now been halved in size and is certainly easier to read. Whether it will be an easier test to be satisfied remains to be seen.

Highlights in relation to the Patents Act include:

  • Inclusion of an additional exception to secret use covering use of an invention if a complete application is made within the prescribed period;
  • A PCT application is to be treated as a complete application under the Act for a standard patent;
  • Section 40 has been amended to insert a new (3A) which provides that the claim or claims must not rely on references to descriptions or drawings unless absolutely necessary to define the invention;
  • New powers are given to the Registrar to postpone acceptance (section 49A) and to revoke acceptance (section 50A);
  • Chapter 8 dealing with PCT applications and convention applications has been repealed. There are numerous amendments to other sections seeking to regularise treatment of normal and PCT and convention applications. It is beyond the scope of this blog to list them all. They should be carefully checked;
  • Sections 125-127 dealing with declarations of non- infringement have been replaced;
  • A new requirement has been added to section 138 which deals with revocation of patents in other circumstances requiring the court to be satisfied that, in all the circumstances, it is just and equitable to revoke;
  • The Commissioner is given new powers to rectify the register in section 191A.

The amendments to the Patent Act, in particular require close scrutiny particularly, as noted PCT and Convention applications.