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Use it or lose it - trade marks in Australia

Australian trade mark laws may soon be amended so that it is easier to have trade marks that are not in use removed from the register.

Unlike some other jurisdictions, a trade mark owner in Australia is not required to file evidence of use in order to keep their registration in force. If, however, the trade mark is not actually used then the registration may become vulnerable to non-use applications. The relevant legislation provides that anyone may have a trade mark removed from the register in respect to particular good/services relating to the registration if they can show that the trade mark has not been used in good faith in Australia for such goods and/or services and either:

  1. the non-use has continued for an unbroken period of three years ending one month before the non-use application is filed; and/or

  2. when the trade mark was applied for, the applicant did not intend to use (or authorise somebody else to use) the trade mark in such manner, or assign the trade mark to a company for it to use the trade mark in such manner.
A non-use action under ground b. can be commenced any time after the trade mark is applied for. Proving that the applicant lacked the requisite intention to use the trade mark at the application date is, however, difficult to achieve.

Currently, a non-use action under ground a. can only be commenced five years after the trade mark is applied for. The Australian Government has, however, publicly announced that it supports reducing this minimum period from five years to three years. This is because the Government considers that the trade marks register is 'cluttered' with trade marks that are not in use which, potentially, reduces the scope for people genuinely wanting to use such marks.

More information about the Government’s position on this matter can be found here.

Reforming inventive step in Australia

As previously blogged, in August last year the Australian Government released a response to an inquiry carried out by its advisory body (the Productivity Commission) into Australia’s IP system. Significant changes to patent law were proposed in the response. This included raising the threshold required for inventive step so that it reflects that of the European Patent Office.

The Government has published a set of consultation papers (available here) which explore possible ways of implementing the changes. In relation to inventive step, four options are considered:

  1. Amend the Australian Patent Act 1990 (Cth) so that it directly reflects Article 56 of the European Patent Convention. The Act would be amended to state that an invention only involves an inventive step if, having regard to the prior art base, it is not obvious to a person skilled in the relevant art.

  2. Implement option 1, but also amend the definition of 'prior art base' in the Act to provide clarity and assistance with interpretation. This option would give the Australian Patent Office and courts some flexibility to apply tests other than the problem-solution approach that is taken by the EPO.

  3. Implement option 2, but also amend the Act so that the Commissioner of Patents (NB. not the courts) would be required to determine if an invention provides a solution to a technical problem. This maintains the flexibility afforded to the courts in option 2 but seeks to compel the Commissioner to follow the EPO’s approach during prosecution. The intent here is to give patent applicants certainty and predictability of examination outcomes.

  4. Define inventive step prescriptively in the legislation to match the EPO’s problem-and-solution approach.

The Government also proposes amending the Explanatory Memorandum of the Act to clarify that the European ‘obvious to try’ test may, in some cases, be appropriate to apply and that the ‘scintilla of invention’ and ‘directly led as a matter of course’ tests adopted by the Australian courts should no longer be followed.

Interested parties are invited to make written submissions in response to the papers by Friday 17 November 2017.

Innovation patents walking the green mile

The Australian Government has released draft legislation for public comment which includes measures to abolish Australia’s innovation patent system.

In August last year, the Government released a response to an inquiry conducted by its advisory body, the Productivity Commission, which proposed significant changes to Australian patent law. These changes included the phasing out of innovation patents.

Innovation patents have long been controversial in Australia. To obtain an innovation patent, an invention must be useful and new. However, unlike standard patents, the invention does not need to involve an inventive step. Instead, the differences between what has been created and what has been done before merely need to affect the way the invention works in a material way.

The draft legislation (which can be read here) includes transitional arrangements to maintain existing rights.