As Australia prepares to ratify the new Trans-Pacific Partnership Agreement in coming weeks, many are wondering what to expect. How will it alter Australia’s existing trade mark laws? How will it benefit trademark holders? And what will it mean for your business?
On 5 October 2015, five years of negotiations culminated in the finalisation of the Trans-Pacific Partnership (TPP) Agreement between 12 countries including: Australia, the United States, Canada, New Zealand, Singapore and Japan.
Whilst the finer details are still in the pipeline at this stage, we are privy to a number of matters which have been agreed on by member nations for inclusion in the draft. Australian laws have come away relatively unscathed thanks to the relentless campaigning of our representatives, however we will likely see some adjustments which bring them into line with the agreement.
How will existing trademark laws be affected?
Australia may need to bolster its position on counterfeiting with new laws on labels and packaging.
While prohibitions are already in place to prevent falsification of registered trademarks and application of falsified trademarks, the TPP draft proposes to broaden the scope of such offences to include the intentional importation of products with labels and packaging that bear a false trademark within the class for which the trademark is registered. This is good news for holders of registered trademarks as it means greater protection at customs level.
Institution of pre-established damages for IP infringements
Another win for registered trademark holders will be the introduction of pre-established damages. The draft proposes that the amount of damages recoverable in an infringement action be pre-determined and prescribed in legislation which means that trademark holders would not be required to prove actual loss as a result of an infringement, which can often be difficult.
The pre-determined damages will act much like a fine, but will be paid to the infringed trademark holder rather than any regulatory body. It is anticipated this will benefit trademark holders by deterring infringements and also improve the viability of actioning lower value trademark infringements. Holders of higher value trademarks will have the option of pursing a common law action in which damages would be assessed on actual loss, which they will have to prove.
What about copyright and patents?
The draft agreement does propose to extend the existing 70 year copyright term for film and musical works to 95 years from first publication, much to the delight of Mickey Mouse and other US film industry stakeholders.
While there was much debate about the data exclusivity period of biological pharmaceutical products and the expansion of patentable subject matter, the final outcome on these matters does not appear to deviate from existing Australian laws.
What will the changes mean for your brand?
All in all it appears the TPP spells good news for registered trademark holders. The strengthening of counterfeiting laws means improved trademark protections on imported products and pre-established damages will make it easier and more viable for registered trademark holders to action infringements.
We can expect the final draft of the agreement to be released in coming weeks. In the meantime, business owners need to ensure they register all marks they intend to use in trade so that they are in a strong position to enforce their intellectual property rights and protect their hard earned market reputation.