On 20 February a public consultation paper was released detailing a number of new proposals put forward by IP Australia with a view of streamlining Australia’s IP systems.
According to IP Australia, there are a number of administrative processes that differ between IP rights which are overly burdensome and take too long to resolve. The purposes of the consultation paper is therefore to address these issues with a view of making administration of the system more efficient for users, particularly small business.
The discussion paper sets out 22 new proposals from IP Australia across all four IP rights. The below proposed changes are the most significant as they relate to trade marks:
- Acceptance timeframe – The consultation paper proposes to reduce the current 15 months’ timeframe to respond to an examiner’s report to 6 months. The current 6 month extension period would also be abolished. The proposal has retained the possibility of deferring the application under section 36 and has expanded the grounds for deferment to include overcoming a ground for rejection under section 41.
- Renewal notices – The Trade Marks Act currently requires IP Australia to issue renewal notices to trade mark owners 2 months before the renewal fee is due. The consultation paper proposes that the legislative requirement to issue renewal notices only to unrepresented trade mark owners. With this change, the responsibility to renew trade marks managed by firms or trade mark attorneys would shift solely on the firm/attorney.
- Allow applicants and IP owners to amend certain administrative details themselves – An example wold be if the address for service or address of the owner needed to be update or in the case of an “obvious error”.
- General proposals – These include removal of the legislative requirement to issue certificates, and the removal of the requirement to do things in writing, in order to align various notification processes across all IP rights.
- Proposals supporting small business – The consultation paper proposes to align the rights concerning unjustified threats of infringement against another party and to allow additional damages where the IP holder has made a blatant and unjustified threat of infringement.
IP Australia intends to release a draft Bill reflecting the proposed changes in mid-2015 for public comment. The Bill is expected to be introduced to parliament in late 2015, with an anticipated commencement date in 2016.