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Legislation Monitor

General IP

Fee changes at IP Australia

Following the introduction of the Intellectual Property Legislation (Fees) Amendment Regulations 2006, IP Australia announced that new charges commenced from 1 March 2007. They apply mainly across patent and trade mark transactions but some non-cost recovery changes also apply to designs and plant breeder’s rights. The amendments arise from a recent review of IP Australia’s fees as part of its Cost Recovery Impact Statement, in compliance with the Government’s cost recovery policy.

For more information, click here

Intellectual Property Laws Amendment Regulations 2007

The Federal Executive Council recently made the Intellectual Property Legislation Amendment Regulations 2007 (No. 1). The regulations are required as a result of the Intellectual Property Laws Amendment Act 2006 and the Trade Marks Amendment Act 2006. They also reflect changes to international arrangements and a wide-ranging review of the trade marks system. Generally, the amendments have effect from 27 March 2007.

For more information, click here

Consultation Papers regarding the Intellectual Property Laws Amendment Act 2006

IP Australia has released two Consultation Papers on the Intellectual Property Laws Amendment Act 2006 (Amendment Act) which received Royal Assent on 27 September 2006. The first Consultation Paper, “New close down provisions”, is on Schedule 12 to the Amendment Act. The changes are to clarify the effect of the Designs Office, the Patent Office, the Plant Breeder’s Rights Office and the Trade Marks Office, and any of their State sub-offices, not being open for business. The second Consultation Paper, “New system for accessing trade mark documents”, is on Schedule 4 to the Amendment Act which will amend the Trade Marks Act 1995 to make prescribed documents relating to trade marks available for public inspection at an early stage in the trade mark application process. Written comments regarding the Consultation Papers were due by 27 October 2006.

For more information and to access the Consultation Papers, click here

Review of new format shifting exceptions

On 22 January 2008, the Attorney-General’s Department released an issues paper on the copying of films and photographs into a different format for private use. Public submissions were invited on the operation of two new copyright exceptions that permit such ‘format shifting’: sections 47J and 110AA of the Copyright Act 1968. The exceptions were introduced by the Copyright Amendment Act 2006, which also requires a review of the operation of these provisions by 31 March 2008. Submissions were due by 29 February 2008.

To access the issues paper, click here

Guidelines released for bodies seeking prescription as a key cultural institution

On 25 January 2008 guidelines were published on the Attorney-General’s Department website to assist bodies seeking to be prescribed as ‘key cultural institutions’ under the Copyright Act 1968. The new provisions, introduced by the Copyright Amendment Act 2006, add to existing provisions which enable libraries and archives to make copies of materials in their collections for preservation and other purposes. Under sections 51B, 100BA and 112AA of the Copyright Act 1968, Australia’s key cultural institutions can now make up to three copies of items of historical or cultural significance in their collection for preservation. Libraries and archives with a statutory function to develop and maintain a collection, such as the National Library of Australia, are already considered to be key cultural institutions.

To access the guidelines, click here

Copyright infringement notice guidelines revised

The Attorney-General's Department, in consultation with the Australian Federal Police and the Commonwealth Director of Public Prosecutions, has been developing guidelines to assist law enforcement with the administration of the Copyright Infringement Notice Scheme. Introduced by amendments to the criminal offence provisions of the Copyright Act 1968, which came into force in January 2007, the scheme creates alternatives to prosecution in relation to strict liability copyright offences. These include the issuing of an infringement notice, and forfeiture of infringing copies and devices. In response to submissions received in October 2007, it was reported in January 2008 that the draft guidelines have undergone further revision. It is anticipated that the guidelines will be finalised in the first half of 2008.

To access the draft guidelines, click here

WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty come into force

The WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty came into force in Australia on 26 July 2007. Due to changes made to Australian copyright law by the Digital Agenda Amendment Act 2004 and the US Free Trade Agreement Implementation Act 2004, Australia has already fulfilled most of its obligations under the treaties. However, the operation of amendments to Part IX of the Copyright Act 1968 relating to moral rights of performers in the US Free Trade Agreement Implementation Act 2004 was reliant on the WIPO Performances and Phonograms Treaty coming into operation. The amendments give new moral rights to individual performers in relation to live performances and live performances fixed in sound recordings where the performance or recording was made after the commencement of the amendments. The moral rights include the right of attribution of performership, the right not to have performership falsely attributed, and the right of integrity of performership.

For more information, click here (see Note 2)

Inquiry into the provisions of the Communications Legislation Amendment (Information Sharing and Datacasting) Bill 2007

The Senate referred the Communications Legislation Amendment (Information Sharing and Datacasting) Bill 2007 to the Senate Standing Committee on Environment, Communications, Information Technology and the Arts for inquiry and report by 30 July 2007. The Bill would amend the Australian Communications and Media Authority Act 2005 to authorise the disclosure of certain information by the Australian Communications and Media Authority to the Minister for Communications, Information Technology and the Arts, Departments, government agencies and regulatory bodies. The Bill also contains measures concerning the allocation of datacasting transmitter licences, including in relation to channel A and channel B datacasting transmitter licences. The Standing Committee sought written submissions from interested individuals and organisations regarding the Bill. Submissions were due by 13 July 2007.

For more information regarding the inquiry, click here

Senate passes Copyright Amendment Bill 2006

On 12 December 2006, the Australian Attorney General, Phillip Ruddock, announced that the Senate had passed the Copyright Amendment Bill 2006. According to Mr Ruddock, Australian consumers will be able to use copyright material in a variety of ways under the new legislation.

For details of the reforms, click here

Copyright Amendment Bill 2006 introduced to Parliament

On 19 October 2006, the Copyright Amendment Bill 2006 was introduced to Parliament. The Bill legalises ‘time shifting’, allowing people in their homes to copy a television or radio broadcast for personal use so that it may be played at a later time and ‘format shifting’, allowing owners of legitimate copies of specified copyright material to copy it (and the underlying content) in a different format for personal use – i.e. VHS to DVD, CD to MP3. In addition to these two exceptions for private copying, further new specific exceptions will be added to permit:

fair dealings with copyright material by libraries, museums or archives;
format-shifting of copyright material for non-commercial and teaching purposes by educational institutions;
fair dealings with copyright material for the benefit of people with disability; and
fair dealings with copyright material for the purpose of parody and satire

Criminal offence provisions in the Copyright Act 1968 will also be amended to create indictable, summary and strict liability offences with a range of available penalties. The Government has referred the Bill for consideration by the Senate Standing Committee on Legal and Constitutional Affairs.

For more information, click here.

Prior to the Bill’s introduction and referral to the Senate Committee, the Attorney General’s Department released five Exposure Drafts regarding various parts of the Bill. The Exposure Drafts concerned exceptions and other Digital Agenda review measures, enforcement provisions, unauthorised access to encoded broadcasts, Copyright Tribunal amendments, and Technological Protection Measures amendments and related Regulations.

To access the Exposure Drafts, click here

Attorney-General announces major copyright reforms

On 14 May 2006, the Attorney-General Phillip Ruddock announced major copyright reforms. The reforms will:

legalise ‘time shifting’ to allow the recording of most TV and radio programs to be viewed or listened to at a later time, however the recording must be deleted after one use;
create new offences for pay TV piracy;
repeal the one per cent cap on copyright licence fees paid by radio broadcasters for playing sound recordings on the radio;
legalise ‘format shifting’ of material such as music, newspaper, books – allowing people to put their CD collection onto IPods or MP3 players and dub VHS cassettes onto DVDs;
allow non-commercial uses of copyright material by libraries, museums and archives, by educational institutions for the purposes of teaching, and by people with disabilities;
allow the use of copyright material for parody or satire; and
provide new enforcement measures to combat copyright privacy, enabling police to issue on the spot fines and access and recover profits made by copyright pirates.

A draft exposure Bill containing these and other reforms will be released in the near future.

For more information, click here

The Artist’s Resale Rights Bill 2006 introduced into Parliament

On 27 March 2006, Labor Senator Bob McMullan introduced into Parliament a private member's bill to amend the Copyright Act 1968, The Artist’s Resale Rights Bill 2006. The Bill suggests a 4% impost for works that are resold for under $A100,000 and 0.25% for those that are resold in excess of $A1 million. Acknowledging that the Bill “will not pass because it does not have the Government’s support,” Senator McMullan believes the Bill if implemented, “would create rights which exist in almost every developed country; it would recognise and reward creativity; and it would generate a legitimate income stream for some of the poorest Australians."

To assess the Bill, click here

Copyright Amendment (Film Directors’ Rights) Act 2005

On 19 December 2005, the substantive provisions of the Copyright Amendment (Film Directors' Rights) Act 2005 (the Act) came into force by proclamation. The Act amends the Copyright Act 1968 to give, for the first time, film directors a copyright in the films they direct. The Act provides rights to directors to share, as copyright owners, in remuneration payable by pay-TV services for the retransmission of films included in free-to-air broadcasts. The amendments will apply to films that began production after the commencement of the amendments, but rights arising under contracts entered into before that date are preserved.

Click here for the Act.

The Copyright Amendment (Film Directors' Rights) Bill 2005 was assented to on 8 November 2005, and has come into force.

Click here for the Bill and Explanatory Memorandum.

Related: The Senate Legal and Constitutional Committee's report on Provisions of the Copyright Amendment (Film Directors' Rights) Bill 2005 decided in favour of extending copyright ownership rights in films to directors and screenwriters. The Committee came to the conclusion that while there were some concerns raised in respect of the Bill, the rejection of it was not warranted. The Committee made several recommendations, the first being that the Copyright Act 1968 should be amended to provide for screenwriters to be joint copyright owners of films, along with producers and directors.

Click here for further information.

Copyright Amendment Regulations 2005

The Copyright Amendment Regulations 2005 (No 1) were signed by the Governor-General and lodged in the Federal Register of Instruments on 25 February 2005 (the day after the date on which the Instrument was lodged in that Register).

The Regulations are minor, but ensure that recent amendments to the Copyright Act to include reference to the rights of performers in Part VA are also reflected in the Copyright Regulations 1969 relating to the administration of the statutory licence under Part VA.

US Free Trade Agreement Implementation Act 2004 (Cth)

On 18 May 2004, in Washington D.C., Trade Minister the Hon Mark Vaile MP and his US counterpart Trade Representative Robert Zoellick signed the Australia United States Free Trade Agreement (AUSFTA).

The final text of the agreement was released on 27 May 2004.

On 18 November 2004, Mr Vaile announced that the Australian and United States governments had exchanged diplomatic notes certifying that each had made the necessary domestic arrangements to allow the AUSFTA to be implemented on 1 January 2005. The notes and associated letters that were exchanged between Mr Vaile and Mr Zoellick, can be accessed here.

These necessary domestic arrangements included passage of the US Free Trade Agreement Implementation Act 2004 (USFTAI Act). This Act contains extensive copyright amendments, including, among others:

economic and moral rights for performers;
extension of the term of protection by 20 years;
a wider range of criminal offence provisions;
protection against a wider range of unauthorised reproductions;
wider civil remedy and criminal offence provisions relating to encoded program carrying signals; and
implementation of a scheme for limitation of remedies available against carriage service providers.

In relation to this carriage service providers, these amendments detail the nature of the limitations on remedies and set out the conditions that must be satisfied for providers who intend to take advantage of the scheme. The amendments include:

inserting a new regulation that requires carriage service providers to designate a person to be the representative of the carriage service provider for the purpose of receiving notifications notices or counter-notices issued in compliance with the Regulations;
inserting new regulations that provide procedures, including a notice and takedown procedure, in relation to conditions set out in the table in new subsection 116AH(1) of the Act; and
inserting new regulations that provide civil remedies against carriage service providers in certain circumstances and against persons who knowingly make misrepresentations in notifications, notices or counter-notices under the Regulations.

Click here for background information on the negotiations leading up to the Agreement.

The Bill and Explanatory Memorandum are available on the DFAT website.

Click here for archived material

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Designs

Review of the ‘spare parts’ provision in the Designs Act 2003

On 23 June 2006 the federal government released a report, Review of the “Spare Parts” Provision in the Designs Act 2003. The spare parts provision in section 72 of the Act was introduced to provide a complete defence against infringement where spare parts are used for the purpose of repair of a complex product, so as to restore its overall appearance in whole or part. The report, completed by IP Australia in December 2005 in consultation with industry and other government agencies, considers the impact of the spare parts provision since the Act came into effect on 17 June 2004. The report recommends that no changes be made at this time to the provision as it has yet to have a significant effect on industry and consumers and is yet to be tested before the courts in Australia. The report also recommends that IP Australia continue to monitor Australian and overseas developments regarding the issue and, in consultation with industry and stakeholders, advise appropriate action at a time when there is more information on the operation and impact of the spare parts provision.

To view the report, click here

Intellectual Property Laws Amendment Bill 2006

On 30 March 2006, the Intellectual Property Laws Amendment Bill was introduced into the House of Representatives. The Bill amends the Patents Act 1990 to clarify prior users’ rights, add a new provision to the existing compulsory licensing provisions, and allow for exemplary damages to be awarded by a court in patent infringement actions. The Bill also amends the Patents Act to implement wider springboarding arrangements that are intended to encourage companies to develop generic pharmaceuticals in Australia. The Bill amends the Trade Marks Act 1995 to simplify the processing of requests for information on trade mark files, and allow the Registrar of Trade Marks to revoke the registration of trade marks in certain circumstances. The Bill also makes a number of minor amendments to several pieces of intellectual property legislation, including clarifying the effects of the Patents, Trade Marks, Designs and Plant Breeder’s Rights Offices not being open for business. Other amendments contained in the Bill are intended to facilitate administration of the Plant Breeder’s Rights Act within IP Australia.

To access the Bill, Explanatory Memoranda, as well as other relevant Parliamentary information relating to the Bill, click here

Update: Consultation Paper regarding the Intellectual Property Laws Amendment Act 2006

IP Australia has released a Consultation Paper on the Intellectual Property Laws Amendment Act 2006 (Amendment Act) which received Royal Assent on 27 September 2006. The Consultation Paper, “New close down provisions”, is on Schedule 12 to the Amendment Act. The changes are to clarify the effect of the Designs Office, the Patent Office, the Plant Breeder’s Rights Office and the Trade Marks Office, and any of their State sub-offices, not being open for business.

For more information and to access the Consultation Paper, click here

Emerging issues in Designs Act

Since the Designs Act 2003 came into effect in June 2004, three issues relating to the current operation and possible future development of the Act and its processes have been raised by stakeholders. These issues relate to:

the harmonisation of Australian design registration with international practices;
a grace period prior to application for design registration to permit the
promotion, testing and sale of a design for a specified period; and
the current structure of design fees.

In early November, 2005, IP Australia sought a wide range of views, to allow preliminary consideration of these matters for possible future policy development of the designs registration process.

Click here to view the discussion paper relating to this topic.

Click here for archived material

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Patents

Amendments to be made to Patents Act 1990 in response to ACIP Report ‘Patents and Experimental Use’

On 6 August 2007, the Government announced amendments will be made to the Patents Act 1990 in response to the Advisory Council on Intellectual Property (ACIP) Report ‘Patents and Experimental Use’ published October 2005. The Government has accepted in principle ACIP’s recommendation that Australian patent law be changed to allow for a European-type provision which exempts from infringement “acts done for experimental purposes relating to the subject matter of the invention”. Such acts include: “determining how the invention works; determining the scope of the invention; determining the validity of the claims; seeking an improvement to the invention”. Also accepted was ACIP’s recommendation that the Government “consider reviewing the impact on Australian industry of the absence of an exception from infringement for activities undertaken prior to the end of the initial patent term relating to obtaining regulatory approval”. This practice is often referred to as ‘springboarding’. At present, Australia has a limited springboarding provision for pharmaceuticals.

To view the Government’s response to the ACIP Report, click here

Consultation Paper released on the patent search result disclosure regime

On 16 May 2007, IP Australia released a Consultation Paper proposing amendments to the search result disclosure regime set out in regulations made under subsection 45(3) and section 101D of the Patents Act 1990. Developments in the availability of foreign patent office search and examination results over the Internet have lead IP Australia to consider whether further simplifications to the search result disclosure regime are now possible. The Consultation Paper sought views on whether it is appropriate to remove the obligation for applicants and patentees to inform the patent office of the results of documentary searches. Comments were due by 13 June 2007.

To access the Consultation Paper, click here

Update: Patents Amendment Regulations 2007 (No. 1) enter into force

On 16 May 2007, IP Australia published a Consultation Paper seeking views on proposed changes to the Patents Regulations 1991 under subsection 45(3) and section 101D of the Patents Act 1990. As a result of the generally favourable feedback received, the Patents Regulations 1991 have been amended to remove the requirement to inform the Commissioner of Patents of the results of documentary searches by, or on behalf of, foreign patent offices. The amending legislation, the Patents Amendment Regulations 2007 (No. 1) entered into force on 22 October 2007. Also amended is the time for lodging notices to the Commissioner of matters affecting the validity of patents under section 27(1) of the Patents Act 1990. Notices may be filed up to three months from the date of advertisement of acceptance, rather than up to the date of acceptance, as was previously the case.

To access the Official Notice by IP Australia, click here

To access the Position Paper by IP Australia, ‘Overview of responses to the public consultation paper Removal of the obligation to lodge search results under subsection 45(3) and section 101D of the Patents Act 1990’, click here

Changes to PCT Regulations

Amendments to the Regulations under the Patent Cooperation Treaty (PCT) came into force on 1 April 2007 . The more significant amendments address the following situations:

where a PCT application is filed with missing elements or parts;
the restoration of priority where an international application is filed up to two months after the end of the twelve month priority period;
the rectification of obvious mistakes;
the addition of Korean patent documents to the minimum documentation to be searched; and
a change regarding the size of text in international applications.

For more information, click here

Intellectual Property Laws Amendment Bill 2006

To access the Bill, Explanatory Memoranda, as well as other relevant Parliamentary information relating to the Bill, click here

Update: Changes to the Patents Act 1990 under the Intellectual Property Laws Amendment Bill 2006

After an inquiry by the Senate Economics Legislation Committee, the Intellectual Property Laws Amendment Bill 2006, which amends several intellectual property Acts, received Royal Assent on 27 September 2006. Changes to the Patents Act 1990 contained in the Bill include:

exemplary damages may be awarded by a court in patent infringement actions;
amendment is made to the prior user defence;
a compulsory licence is available as a remedy if a person has contravened the anti-competitive conduct provisions of the Trade Practices Act 1974;
amendment is made to clarify when a divisional application from a granted innovation patent may made; and
wider springboarding provisions than those currently available are implemented by allowing springboarding on any pharmaceutical patent at any time. ‘Springboarding’ refers to using the subject matter of a patent to collect the data required to obtain regulatory approval of a generic version of the product to which the patent relates, during the life of the patent.

To access IP Australia’s Official Notice regarding passage of the Bill, click here

Related: Consultation Paper regarding the Intellectual Property Laws Amendment Act 2006

For more information and to access the Consultation Paper, click here

US Free Trade Agreement Implementation Act 2004 (Cth)

Amendments relating to patents in the US Free Trade Implementation Act 2004

On 18 May 2004, in Washington D.C., Trade Minister the Hon Mark Vaile MP and his US counterpart Trade Representative Robert Zoellick signed the Australia United States Free Trade Agreement (AUSFTA).

The final text of the agreement was released on 27 May 2004.

On 18 November 2004, Mr Vaile announced that the Australian and United States governments had exchanged diplomatic notes certifying that each had made the necessary domestic arrangements to allow the AUSFTA to be implemented on 1 January 2005. The notes and associated letters that were exchanged between Mr Vaile and Mr Zoellick, can be accessed here.

These necessary domestic arrangements included passage of the US Free Trade Agreement Implementation Act 2004 (USFTAI Act).

Amendments to the Therapeutic Goods Act
Schedule 7 to the FTA Act includes amendments to the Therapeutic Goods Act 1989 (the TG Act) to require persons applying for registration or listing of therapeutic goods (other than therapeutic devices) to certify either that:

a) acting on good faith, they believe, on reasonable grounds, that they are not marketing, and do not propose to market, the therapeutic goods in a manner, or in circumstances, that would infringe a patent that has been granted in relation to the therapeutic goods; or that

b) a patent has been granted in relation to the therapeutic goods, they propose to market the therapeutic goods before the patent term expires and they have given the patentee notice of their application for registration or listing of the therapeutic goods.
These amendments do not apply to applications for the inclusion of medical devices in the Australian Register of Therapeutic Goods.

Schedule 7 to the FTA Act also contains amendments to the TG Act that will affect parties who undertake infringement proceedings in relation to a pharmaceutical patent against a person who has lodged a certificate under the new requirements of the TG Act in respect of that pharmaceutical. Under the new provisions, a patentee will be required to certify that the proceedings are to be commenced in good faith, have reasonable prospects of success and will be conducted without unreasonable delay. The patentee will be liable for a pecuniary penalty of up to $10 million if the court finds that the certificate is false or misleading or an undertaking given in the certificate has been breached. This provision will only apply if the third party had made the certification outlined above, and the third party, with the leave of the court or the Attorney-General, applies to a prescribed Court for an order that the person pay the Commonwealth a pecuniary penalty.

A patentee may also be liable for damages if it seeks an interlocutory injunction against a third party who has applied for registration or listing of a pharmaceutical under the TG Act. Damages may be awarded if the patentee discontinues the principal proceedings without the consent of the other parties, or the principal proceedings are dismissed, and the court finds that the patentee did not have reasonable grounds for taking the action or was acting vexatiously. This provision will only apply if the third party had notified the patentee of their intention to market the pharmaceutical within the patent term as part of the certification process outlined in (b) above.

These amendments commenced on 1 January 2005.

Click here for background information on the FTA Act.

Click here for further information on the amendments to the Copyright Act 1968 (Cth).

Click here for further informaiton on the amendments to the Australian Wine and Brandy Corporation Act 1980 (Cth).

Click here for archived material

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Plant Breeder's Rights

Intellectual Property Laws Amendment Bill 2006

To access the Bill, Explanatory Memoranda, as well as other relevant Parliamentary information relating to the Bill, click here

Click here for archived material

Update: Consultation Paper regarding the Intellectual Property Laws Amendment Act 2006

For more information and to access the Consultation Paper, click here

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Trade Marks and Other Indications

Change of renewal period for trade marks

As of 28 March 2008, in accordance with amendments to the legislation incorporated in the Trade Marks Amendment Act 2006, the period in which a trade mark can be renewed after it is due will reduce from 12 months to 6 months. This brings the grace period for renewals under the Trade Marks Act 1995 in line with those allowed under the Patents Act 1990 and the Designs Act 2003. Trade marks due for renewal on or before 27 March 2008 will still be able to be renewed for up to 12 months afterwards. There is no change to the 12 month period prior to the renewal due date.

To access the Official Notice, click here

Amended legislation and examination practice in relation to divisional trade mark applications

New provisions for divisional trade mark applications came into effect on 27 March 2007. According to an IP Australia Official Notice dated 26 July 2007, the intent of the amended legislation was for tshe goods/services of the divisional application to be clearly divided from those of the parent application and to avoid duplication. A number of divisional applications filed on or after 27 March 2007 have been invalid. To avoid submitting an invalid divisional application, applicants must:

specify the goods and/or services to remain in the parent [section 46(1)(c) Trade Marks Act 1995] in the divisional application at the time of filing; and
ensure that there is no overlap between the goods and/or services of the parent and the divisional applications.

To view the IP Australia Official Notice, click here

Proclamation of Part 2 of Schedule 1 to the Trade Marks Amendment Act 2006

The commencement date of Part 2 of Schedule 1 to the Trade Marks Amendment Act 2006 was fixed, by Proclamation, to 27 March 2007.

For more information, click here

For the text of Schedule 1 of the Trade Marks Amendment Act 2006, click here

Trade Marks Amendment Bill 2006 introduced into the Senate

On 21 June 2006, the Trade Marks Amendment Bill 2006 was introduced into the Senate, making a number of incremental improvements to the Trade Marks Act 1995. The Act has been in force for 10 years and has recently been subject to review. The main substantive changes in the Bill include:

only persons having legal personality may file a trade mark application (i.e. applications may not be made in the name of trusts or business names);
the owner of a trade mark may oppose, on the basis of absolute first use, the registration of a deceptively similar trade mark;
registration of a trademark may be opposed on the ground that it has been applied for in bad faith;
the requirements for opposition based upon a trade mark with a reputation in Australia will be less restrictive;
any person may make an application for a trade mark to be removed from the Register due to non-use, not just a person aggrieved; and
the Registrar of Trade Marks will be able to initiate court action to amend or remove a trade mark from the Register where it is clearly in the public interest.

There are also a number of changes in the Bill intended to reduce the administrative burden on trade mark applicants, such as requests for minor amendments to trade mark applications may be made over the phone, series applications may be multi class, and collective trade marks may now be owned by incorporated associations.

For more information, click here

Update: Trade Marks Amendment Bill 2006 receives Royal Assent

The Trade Marks Amendment Bill 2006 received Royal Assent on 23 October 2006. While some of the provisions in the Trade Marks Amendment Act 2006 will come into force immediately upon Royal Assent, other provisions will commence six months later upon Proclamation (expected to be no earlier than 27 March 2007).

For IP Australia’s Official Notice regarding passage of the Bill, click here

Related: Consultation Papers regarding amendments to the Trade Marks Regulations 1995

IP Australia released a Consultation Paper regarding amendments proposed to be made to the Trade Marks Regulations 1995 arising from Part 2 of Schedule 1 of the Trade Marks Amendment Bill 2006 as well as a number of other amendments that arise from the trade marks legislation review but are not dependent on the Bill. Submissions regarding the Consultation Paper were due by 1 November 2006 .

For more information and to access the Consultation Paper, click here

IP Australia also released a Consultation Paper regarding the changes to Part 17A of the Regulations being proposed by the Trade Marks Amendment Bill 2006. Submissions regarding this Consultation Paper were due by 27 October 2006.

For more information and to access this Consultation Paper, click here

Intellectual Property Laws Amendment Bill 2006

To access the Bill, Explanatory Memoranda, as well as other relevant Parliamentary information relating to the Bill, click here

Update: Consultation Papers regarding the Intellectual Property Laws Amendment Act 2006

For more information and to access the Consultation Papers, click here

US Free Trade Agreement Implementation Act 2004 (Cth)

The US Free Trade Agreement Implementation Bill was introduced into Parliament on 23 June 2004, passed by the House of Representatives on 24 June 2004 and by the Senate on 13 August 2004. The Bill received Royal Assent on 16 August 2004.

The US Free Trade Agreement Implementation Act 2004 (Cth) amends 11 Acts, including the Patents Act 1990 (Cth) and the Copyright Act 1968 (Cth), in order to implement Australia’s obligations under the Australia-United States Free Trade Agreement (AUSFTA) which entered into force on 1 January 2005.

Click here for further information relating to the AUSFTA.

Click here to access the Explanatory Memorandum.

Schedule 3 of the Act amends the Australian Wine and Brandy Corporation Act 1980 (Cth) in relation to geographical indications (GIs) and trade marks as follows:
• introduces procedures to allow for the cancellation of a GI;
• allows a trade mark owner to object to the determination of an Australian GI on the grounds that the GI is identical to the trade mark, or likely to be confused with the trade mark.

Schedule 3 commenced on 1 January 2005. The AUSFTA will come into force 60 days after the parties exchange notifications certifying that they have completed respective necessary internal requirements.

Click here for further information on the amendments to the Patents Act 1990 (Cth).

Click here for further information on the amendments to the Copyright Act 1968 (Cth).

Click here for archived material

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