With feedback and input from Diana Bogunovic at FB Rice
As part of the Commonwealth, Australia has been an important export destination for British goods. British exports to Australia have amounted to £4.1 billion per year and are expected to grow with a new free trade deal having been struck following Brexit. The UK-Australia free trade agreement concluded in December 2021 is expected to boost British exports with many food and drinks products having been subjected to up to 20% tariffs previously. In particular, the British government has been hopeful that a further £10.4 billion worth of additional trade could be unlocked as a result of the new deal. UK chocolate and biscuits, cheese, gin, and whisky in particular are some of the food and drinks products that are expected to be treated to a warmer welcome (and now, increased volumes of export) in Australia given the historic ties between the two countries, the popularity of British brands among Australians as well as British expats in Australia, and many cross-cultural contacts.
In 2014, IP Australia asked a panel of Australian personalities to rank top national trade marks and the Australian public were asked to vote for the top 10 favourite Australian trade marks.
Trade marks law in Australia – brief history and overview
The national register of trade marks in Australia was established in 1906 and was based on the Commonwealth Trade Marks Act 1905. Prior to that, each colony or state had passed their own legislation to regulate trade marks. The Commonwealth Trade Marks Act 1905 largely mirrored contemporary UK legislation, which, like Australian laws, had its roots in the common law i.e. law established through precedent. The Trade Marks Act 1955 (Cth) followed and again largely mirrored the UK’s Trade Marks Act 1938 although some key differences had begun to emerge.
The contemporary Australian trade mark system is governed by the Trade Marks Act 1995 (Cth) and Trade Marks Regulations 1995 (Cth). The latest Act was necessary to address a number of issues, including Australia’s compliance with its obligations under the TRIPS Agreement. At the same time UK trade marks law was increasingly becoming more harmonised with European trade mark law. As a result, current Australian legislation has evolved in a way that makes it unique and distinct from current UK legislation and the legislation of other Commonwealth states, although many similarities remain.
The application, registration and administration of trade marks in Australia is overseen by the Australian Registrar of Trade Marks. In practice, this role is carried out by the Registrar’s delegates at IP Australia, an agency that falls within the Department of Industry, Science and Resources. Appeals against decisions, directions or orders of the Registrar fall within the jurisdiction of the Federal Court of Australia, the Federal Circuit and Family Court of Australia, and the High Court. Other prescribed courts, such as the Supreme Courts of a State, of the Australian Capital Territory, of the Northern Territory, and of Norfolk Island have cross-vested jurisdiction over actions dealing with the infringement of a trade mark, or applications for relief from unjustified threats.
Trade marks law in Australia – basics – registered and unregistered rights
In Australia, like in the UK, legal protection is provided to registered trade marks, as well as unregistered rights under the common law tort of “passing off” and under the Competition and Consumer Act 2010 (Cth). As such, Australia technically operates as a first-to-use jurisdiction. There are, however, many reasons why a registered trade mark is preferable to relying on unregistered rights.
Although unregistered rights can be enforced, the owner of such rights will need to demonstrate the presence of three vital elements a) a misrepresentation on the part of the offending party, b) that the owner of brand being enforced possesses a reputation in that brand in the same geographical area and an ongoing market presence (this can be particularly difficult for international companies), and c) damage to that reputation i.e. a tarnishment of the brand, or that damage to reputation is likely to occur, due to the passing off.
On the other hand, the registration of a trade mark provides the owner with an exclusive right. For registry proceedings, the subsistence of the trade mark does not have to be proven – evidence of the existence of a registration is sufficient - and it can be enforced against third party uses which are likely to cause confusion or take advantage of the mark’s reputation even if there has been no misrepresentation on the part of the offender.
A registered trade mark can also provide protection before it is actually used in commerce. If the trade mark has been registered for more than three years, it may, however, be necessary to provide evidence of use and the registration could be vulnerable to cancellation on the grounds of non-use. The exception is for any marks filed before 24 February 2019 – for such applications, the trade mark needs to have been registered for at least 5 years before it becomes vulnerable to cancellation on grounds of non-use
Notwithstanding third party attacks e.g. due to non-use, Australian trade marks can potentially “live” forever – they simply have to be renewed every 10 years as calculated from the filing date.
Furthermore, a current trade mark registration is a requirement to file a Notice of Objection with the Australian Border Force to seize infringing goods – although, in principle. copyright can also be relied upon.
Trade marks law in Australia – basics – examination
Examination of trade mark applications is carried out by IP Australia. Examination is carried out in respect of both:
- absolute grounds - i.e. that the sign applied for is capable of functioning as a trade mark to distinguish the commercial origin of goods and/or services for which protection is sought from other undertakings, and ensuring that the other legislative requirements in Australia are met; and
- relative grounds – i.e. that the trade mark would not be liable to cause confusion with any earlier registered trade marks.
If absolute or relative grounds objections are raised, the applicant will be given 15 months from the date of the adverse report to address any problems with the application and to place the application in order to acceptance. Where the Australian trade mark practice differs from that of the UK and the EU practice is that the 15 month deadline is intended to give the applicant sufficient time to set the application in good order for registration by filing a response, AND for the examiner to have sufficient time to consider the response. Therefore, the deadline is an acceptance deadline, not a response deadline. Extensions are available, if required, but must be requested separately.
If an objection is raised on either absolute or relative grounds, it can potentially be possible to overcome the objections by filing evidence of use demonstrating that the mark applied for is registrable and/or predates an earlier registration.
In scenarios involving third party rights, IP Australia can also accept evidence of honest concurrent use, prior continuous use, or written consent from the owner of the earlier trade mark. Furthermore, in scenarios involving third party rights deferment can be requested when cited third party rights are either pending applications, potentially subject to removal (e.g. due to non-renewal or a pending court action), or if the applicant intends to demonstrate honest concurrent or prior use of their trade mark.
Trade marks law in Australia – basics – publication and oppositions
Once the trade mark application is accepted by IP Australia, it will be published for opposition purposes in the Australian Official Journal of Trade Marks. If a party intends to oppose an application, they must file an opposition within two months of the date of publication. A Notice of Intention to Oppose has to be filed and the relevant opposition fee has to be paid (currently AUD 250 or roughly £140). Within one month of filing the Notice of Intention to Oppose, a Statement of Grounds and Particulars must be filed to complete the Notice of Opposition. If the Statement of Grounds and Particulars is not filed, the application will proceed to registration.
In certain exceptional circumstances, an extension to file an Notice of Intention to Oppose or the Statement of Grounds and Particulars can be obtained.
If a trade mark is opposed, a Notice of Intention to Defend has to be filed by the applicant within one month of being served with the Statement of Grounds and Particulars. If a Notice of Intention to Defend is filed, the parties to the opposition will be given the opportunity to file Evidence in Support of their respective positions.
An opposition can be temporarily suspended, if both of the parties agree to a cooling-off period of six months. The cooling-off period can be jointly extended for a further six months. Either party may unilaterally request the cooling-off period to be discontinued.
Trade marks law in Australia – basics – registration
According to current information from IP Australia, it will take at least 7 months from application to registration, provided that no objections are raised. The overall process can take closer to 8.5 months – with about 6 months before acceptance, a two-month opposition period, and approximately two weeks to issue the certificate of registration.
Once the trade mark has successfully completed the registration process, IP Australia will issue a registration certificate.
Additional types of marks
In addition to word and figurative trade marks, IP Australia allows for the registration of various other types of trade marks.
Special rules exist for protecting certification marks (which confirm certain qualities of products sold), trade marks for plants, and trade marks for wine.
Certification trade marks, in particular, could be of interest to Scottish food and drinks manufacturers in order to ensure the quality of goods. Furthermore, IP Australia allows for the protection of Geographical Indications via the certification trade mark system. An application for a certification mark needs to be supported by a set of rules that clearly set out the standards governing the goods and, or, services in question. The rules can specify the quality, content, or production methods of the goods in question. In the case of GIs, the rules will relate to at least the geographical origin of the goods and may contain additional quality or processing standards.
Like standard trade marks, certification marks need to be renewed every ten years. Certification marks can be enforced similarly to standard trade marks and the Australian Trade Marks Act provides for civil remedies against infringements, including injunctions or damages. Furthermore, GIs registered as certification marks can also be notified to the Australian Broder Force for unauthorised and non-compliant products to be seized.
Like the UK, Australia allows for the registration of series trade marks which overlap in their distinctive elements but differ only in negligible non-distinctive elements. Specific requirements exist to ensure a series is registrable.
Source: IP Australia
Unlike many other jurisdictions (including the UK and the EU), Australian trade mark law allows for the registration of “defensive trade marks”. A defensive trade mark registration is available for “well-known” or “famous” trade marks and offers a wide scope of protection. Unlike standard trade marks, defensive trade marks can be registered without requiring any intention from the applicant to use the mark for the goods or services specified in the application. Even if the defensive registration is never used, it will not become vulnerable to cancellation for non-use.
Defensive registrations aid owners of well-known marks in the enforcement and licensing of their trade marks in Australia. Furthermore, due to relative grounds examination, defensive registrations will be cited against conflicting trade mark applications.
Given the broad rights granted by the defensive registration, IP Australia needs to ensure, prior to granting that a) the mark is well-known or famous in Australia, and b) that it has been used to such an extent on the previously registered goods that its use in relation to the broader goods/services specified in the defensive application would be likely to be taken as indicating a connection with the owner of the defensive registration.
Although famous trade marks are afforded an enhanced level of protection under the Paris Convention, defensive registrations can be a powerful asset for owners of well-known brands. Compared to standard trade marks, or relying on an enhanced level of protection via the Paris Convention, defensive registrations provide a comparatively cheaper and more readily available means of protection.
Power of Attorney requirement
A power of attorney is not required by IP Australia for the filing of intellectual property rights. IP Australia works under the assumption that the applicant and attorney filing the application have the necessary authorisation to do so.
Cancellations of trade marks
There are multiple procedures in Australia for post-registration actions involving the scope and validity of trade marks:
Generally, an amendment to a trade mark application or registration may be requested by the owner (or the owner’s attorneys). These can include a voluntary amendment to amend the goods and, or services specifications to limit or delete certain terms. This may be requested for a number of reasons, including to overcome objections during examination, or to avoid actions for removal for non-use after registration, as part of a co-existence agreement, or to reduce the official fees for maintaining a trade mark registration.
Cancellation of a registration may be requested by the owner. This has the effect of removing the trade mark registration from the Register.
Acceptance of an application may be revoked if information is received after acceptance that satisfies the Registrar that the trade mark should not have been accepted. If an application is revoked, the application re-enters the examination stage and the owner is typically granted a free 15-month extension of time within which to overcome the objection(s).
Removal may be requested by a third party on the basis that the registration has not be used. The request may be for some, or all, of the goods and services covered by the registration.
This article first appeared in Issue 7 of Scran and sIPs, the definitive guide to IP for the food and drink industry in Scotland. For more expert insights, please visit our Scran & sIPs hub.