Introductory Info
Date introduced: 22 June 2023
House: House of Representatives
Portfolio: Industry and Science
Commencement: Parts 1, 3 and 6 of Schedule 1 commence the day after Royal Assent. Part 2 commences 6 months after Royal Assent. Parts 4 and 5 commence on the earlier of Proclamation or 6 months after Royal Assent.
Purpose of
the Bill
The purpose of the Intellectual
Property Laws Amendment (Regulator Performance) Bill 2023 (the Bill) is to
amend the Olympic
Insignia Protection Act 1987 (the OIP Act) to clarify its
interaction with the Trade
Marks Act 1995 and clearly permit the Australian Olympic Committee
(AOC) and the International Olympic Committee (IOC) to register Olympic
insignia as trade marks, while maintaining existing protections against unauthorised
registration of those insignia.
The Bill will also make various minor amendments to the
operation of the Trade Marks Act.
Lastly, the Bill will repeal some spent provisions from
the Patents Act
1990.
Structure
of the Bill
The Bill consists of 6 Parts in 1 Schedule.
Part 1 amends the OIP Act to clarify the
intent of the interaction of that Act with the registration of Olympic insignia
trade marks under the Trade Marks Act.
Part 2 amends the Trade Marks Act to ensure
that the grace period for the payment of a renewal fee for a trade mark is a
consistent 6 months throughout the Act.
Part 3 amends the Trade
Marks Act to permit the revocation of a trade mark registration where a
component of a notice of opposition was filed in the correct timeframe but was
overlooked.
Part 4 will amend the Trade Marks Act to provide
additional circumstances in which it is possible to restore a trade mark to the
register after it has been removed.
Part 5 will amend the Trade Marks Act to
update the permitted official communication methods to include modern methods
as set by the regulations.
Part 6 will amend the Patents Act to repeal redundant
transitional provisions relating to patents granted under the previous Patents Act 1952.
Background
The Trade Marks Act
is the legislation that provides trade mark protection in Australia. Trade
marks are a form of intellectual property that can be used to legally protect marks
that distinguish a brand and its products or services. IP Australia, the
Government agency that administers the Trade Marks Act as well as the OIP
Act and other intellectual property legislation, explains
that trade marks can be used to protect a logo, phrase, word, letter,
colour, sound, smell, picture, movement, aspect of packaging or any combination
of these.
The OIP Act provides
protection against the unauthorised use or exploitation of the Olympic symbol
and certain other related insignia by granting sole ownership of the copyright
and design of the insignia to the AOC. The OIP Act also currently protects
against the commercial exploitation of Olympic expressions and symbols by
preventing the registration of trade marks for the Olympic motto and symbol,
and certain other works. However, the Explanatory
Memorandum notes at page 8 that the existing trade mark provisions of the OIP
Act may be causing unintended difficulties in the operation of the Trade
Marks Act as it applies to the registration of Olympic related trade marks.
These issues are discussed in greater detail below under the ‘Key issues and
provisions’ heading.
The provisions of the Bill were originally introduced in Part
4 of Schedule 5 of the Regulator
Performance Omnibus Bill 2022 (the 2022 Bill), which lapsed at
dissolution of the House when the 46th
Parliament ended in April 2022.
During the development of the 2022 Bill the provisions were
released as part of an Exposure
Draft and were subject to a consultation process hosted by the Department
of Prime Minister and Cabinet, with IP
Australia being involved in the IP related aspects of the Bill. IP
Australia is the Commonwealth agency responsible for administering the
intellectual property (IP) legislation. Submissions were open between December
2021 and January 2022.
Committee consideration
Senate Standing
Committee for Selection of Bills
The Selection of Bills Committee reported in its Report
No. 7 of 2023 that it had deferred consideration of the Bill to its next
meeting.
Senate
Standing Committee for the Scrutiny of Bills
At the time of writing the Committee
had not considered the Bill.
Policy
position of non-government parties/independents
When in Government in 2022 the Coalition introduced substantially
identical provisions to those in the present Bill, as part of the Regulator
Performance Omnibus Bill 2022.
No comments from other parties or independent members or
senators could be identified at the time of writing.
Position of
major interest groups
At the time of writing no public positions of interest
groups were able to be located. In his Second
Reading Speech for the Bill, the Minister for Industry and Science Ed Husic
stated:
The government has consulted on the amendments contained in
this bill with key stakeholders, including the Australian and International
Olympic committees, who support these changes.
Financial
implications
The Explanatory
Memorandum, at page 4, states that the Bill will have no financial impact.
Statement of Compatibility with Human Rights
As required under Part 3 of the Human Rights
(Parliamentary Scrutiny) Act 2011 (Cth), the Government has assessed the
Bill’s compatibility with the human rights and freedoms recognised or declared
in the international instruments listed in section 3 of that Act. The
Government considers that the Bill is compatible.[1]
Parliamentary
Joint Committee on Human Rights
At the time of writing the Committee
had not considered the Bill.
Key issues
and provisions
Trade marks
of Olympic insignia
Part 1 of Schedule 1 amends the OIP Act to
clarify the intent of that Act and its interaction with the registration of Olympic
trade marks under the Trade Marks Act.
Item 2 inserts definitions into subsection 2(1) of the OIP
Act for the IOC or International Olympic Committee and protected
trade mark. A protected trade mark is defined substantively in the
same way as the trade marks specified in existing section 19, which is to be repealed
by item 3, discussed below.
Item 3 repeals and substitutes section 19 of the OIP
Act.
The existing section 19 provides that a trade mark for
certain Olympic marks must not be registered under the Trade Marks Act.
The marks that cannot be registered are the Olympic
motto and symbol, a prescribed artistic work of an Olympic torch and flame, and
an artistic work whose design is registered under the OIP Act.
Section 19 also prohibits the registration of a ‘mark that contains or consists
of’ any of the above listed marks or ‘a mark so nearly resembling any of those
marks as to be likely to be taken for that mark.’
While the OIP Act provides, in Chapter 3, means for
authorised Olympic bodies to raise licensing revenue by regulating the commercial
use of certain expressions associated with the Olympic movement, the operation
of section 19 currently means that it is arguable that the AOC and IOC cannot
register trade marks for Olympic insignia. The Bill aims to correct this by
making it clear that the AOC and IOC can register Olympic trade marks.
Differences in terminology between existing section 19 of the
OIP Act and the Trade Marks Act also create difficulties in the
operation of sections of the Trade Marks Act which could frustrate the
desired intent of preventing the registration of the unauthorised trade marks.
The Explanatory
Memorandum explains at page 8:
the Trade Marks Act… requires registration of trade marks
unless a ground for rejection or opposition is established. The Trade Marks Act
provides [relevant] grounds for rejecting a trade mark only if its use would be
contrary to law, but the OIP Act prevents registration of trade marks
containing relevant Olympic insignia, not their use.
Proposed section 19, therefore, intends to clarify
both that the AOC and IOC may register protected trade marks and that no
one else can. It does this by stating that the use of protected trade marks
by anyone other than the AOC and the IOC would be contrary to law.
By defining the prohibition in terms of the ‘use’ of the
marks being contrary to law proposed section 19 will satisfy the requirement
of subsection 42(b) of the Trade Marks Act, which requires an
application for the registration of a trade mark to be rejected ‘if its use
would be contrary to law.’
Item 4 provides that these changes will apply in
relation to trade marks filed after the commencement of the item.
Renewal of registration
Part 2 amends the Trade Marks Act to specify
that the grace period for the payment of a renewal fee for a trade mark registration
is a consistent 6 months throughout the Act.
Trade marks may be maintained by their owners
indefinitely, however they must be renewed every 10 years and a renewal fee is
due at that time. Section 79 of the Trade Marks Act, relating to the
general renewal of registration, provides a grace period of 6 months for the
payment of renewal fees by requiring the Registrar to renew the registration of
the trade mark if a person asks for renewal within 6 months of the registration
of that trade mark expiring.
Currently however, sections 80F and 80G of the Trade
Marks Act provide a longer grace period of 10 months for renewal of an
expired registration in circumstances where a registration of a trade mark has
been delayed and is entered on the Register 10 or more years after the filing
date. This means that the registration is taken to have expired when it is
entered on the Register. Section 80C provides that the Registrar must then, as
soon as practicable, notify the registered owner of the trade mark that a
request may be made for renewal of the registration.
Items 5, 6 and 7 will amend sections 80F and
80G to substitute references to the grace period of 10 months with a period of
6 months.
Revocation
of registration after the filing of an opposition
Part 3 will amend the Trade
Marks Act to permit the revocation of a trade mark registration
where a component of a notice of opposition was filed in the correct timeframe
but this was overlooked by the Registrar and the trade mark was subsequently
registered. Section 84B currently only provides for revocation in these
circumstances where a complete notice of opposition was filed within the
timeframe. However, subsection 96(3) permits notices of opposition to be filed
in ‘components’ in accordance with the Regulations.
The Explanatory Memorandum notes on page 11 that, as
section 84B is intended to ‘provide procedural fairness to opponents’, it is
considered that fairness requires that the section should also apply where any
component of the notice of opposition is filed.
Items 10 and 11 therefore amend section 84B to
apply where a ‘component’ of a notice of opposition is filed in time.
Restoration
of trade mark to the Register
Part 4 will amend the Trade Marks Act to
provide additional circumstances in which it is possible to restore a trade
mark to the Register after it has been removed following an application for
removal.
Subsection 92(1) permits a person to apply to the
Registrar to have a trade mark removed from the Register. Subsection 96(1) permits
a person to oppose an application under subsection 92(1) by filing a notice of
opposition with the Registrar. Subsection 97(1) then requires the Registrar to
remove the trade mark from the Register if there is no opposition to a subsection
92(1) application, or an opposition has been dismissed.
Section 98 currently requires the Registrar to restore a
trade mark to the Register if, following removal under subsection 97(1) because
no notice of opposition was filed in time, the Registrar subsequently extends
the period within which the notice may be filed and a notice is then filed
within the extended period.
Item 15 will add proposed subsection 98(2)
to provide an additional circumstance in which the Registrar must restore a
trade mark to the Register. The additional circumstance applies where someone
has filed a notice of opposition to an application for removal but failed to do
a relevant thing as set out by the regulations and, as a result of this failure
the application is taken to be unopposed and the trade mark is removed from the
register. If the Registrar then extends the period in which the relevant thing is
required or permitted to be done and the person does it, the trade mark must be
restored to the Register.
Other provisions
Part 5 will amend the Trade Marks Act to
update the permitted official communication methods to include modern methods
as set by the regulations. The Trade Marks Act currently requires
various information to be issued, published or advertised in the Official
Journal. The Official Journal was originally published on paper and then
electronically, with the Trade
Marks Journal currently published online by IP Australia. Part 5 will update
these requirements by removing various references to the ‘Official Journal’ and
replacing them with requirements to publish ‘in accordance with the
regulations’.
Part 6 will amend the Patents Act to repeal
transitional provisions relating to patents granted under the previous Patents
Act 1952. The passage of time has rendered these provisions unnecessary. As
observed in the Explanatory Memorandum:
The last patent protected under the 1952 Act expired in
February 2016, and the 6 year statutory limitations period on actions for
infringement expired in February 2022… there are no longer any patent rights
for which these provisions apply (p. 16).