RAISING THE BAR
Te bill was passed by the Australian Senate on February 27, and should come into effect in 2013 aſter passing through the House of Representatives. It instigates wide-ranging changes aimed at improving patent quality, speeding up trademark proceedings and strengthening the sanctions available against infringement.
Maurice Gonsalves, partner at Mallesons Stephen Jaques in Sydney, says that overall, “the changes are very beneficial”. Te patent law changes “do raise the bar on patentability but in a way which is desirable having regard to the patent law regimes in major advanced economies such as Europe and the US”.
“For example, it is logical that in determining inventiveness, overseas common general knowledge should be taken into account, and not just common general knowledge in Australia, which is presently the case,” he says.
Te trademark law amendments may be even more significant. Richard Gough, partner at Baker & McKenzie in Sydney, highlights changes to the rules governing how companies can tackle counterfeiting as particularly significant. In the past, IP owners have been very frustrated by importers who simply ignore seizure notices or are not contactable.
“FOR IP OWNERS IT WILL BE A MOST WELCOME CHANGE FOR THE ONUS FINALLY TO BE ON THE IMPORTER TO MAKE A POSITIVE CLAIM FOR SEIZED GOODS TO BE RELEASED.”
“In those circumstances the onus has been on the IP rights owner to start proceedings to stop the goods reaching the market,” Gough says. “For IP owners whose rights are frequently infringed by importers of shipments of varying quantities of counterfeit goods, it will be a most welcome change for the onus finally to be on the importer to make a positive claim for seized goods to be released, as well as for more comprehensive information to be available from customs.”
He adds: “Tese apparently small incremental improvements in the seizure regime are expected to make a large practical difference in the ability of IP rights owners to stop pirated goods coming into Australia.”
Gonsalves underlines changes to opposition procedures as particularly significant, “because it will be necessary for the first time to specify, in the Notice of Opposition, the grounds of opposition and give particulars”. Tis will add to the upfront cost, and while speeding up timelines has many advantages, attorneys will need to get used to the new streamlined system.
Additionally, he says, “I would highlight the new provisions enabling the court to award additional damages for trademark infringement, especially for flagrancy.”
“Tese will provide trademark owners with a powerful weapon against counterfeiters,” he says. “It will also substantially increase the risk for businesses who adopt new trademarks without doing proper trademark clearances.”
Copyright matters
While the Raising the Bar bill will certainly bring significant changes to the business of IP in
34 World Intellectual Property Review March/April 2012
www.worldipreview.com
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