Focus: Amendments pop cork on new GIs and traditional expressions
10 November 2010
In brief: Recent amendments to the Trade Marks Act 1995 (Cth) now make provision for the amendment of trade mark registrations affected by the inclusion of new EU geographical indicators and traditional expressions on the Register of Protected Names. Trade Mark Attorney Carissa Apps and Senior Associate Mark Williams report on the effect and implications of these changes.
How does it affect you?
- Australian trade mark owners with existing registered trade marks containing European geographical indicators and traditional expressions that are now included on the Register of Protected Names may no longer be able to use their trade marks as registered.
- A request to amend an affected registered trade mark may be made under new section 83A of the Trade Marks Act 1995 (Cth), even where the amendment alters the identity of the trade mark or extends the scope of the trade mark owner's rights.
- It will be important for trade mark owners to monitor applications for amendment made by third parties to ensure that the amendments would not result in a trade mark that is substantially identical with, or deceptively similar to, their trade marks.
On 1 September 2010, the revised Agreement between Australia and the European Community on Trade in Wine (the agreement) came into effect. Consequently, the Australian Wine and Brandy Corporation Act 1980 (Cth) and the Trade Mark Act have been amended so that Australia can meet its obligations under the agreement. The Register of Protected Names now includes a comprehensive list of European geographical indicators and traditional expressions. This amendment means that these terms are no longer available for use by wine makers, importers and exporters where the wine:
- did not originate in the country, region or locality for which the geographical indication or translation of a geographical indication is registered; or
- is from the relevant region but is not a wine for which the traditional expression is registered, unless certain criteria are met.
It is an offence under the Australian Wine and Brandy Corporation Act to make a false or misleading description or presentation in this regard. This means that, trade mark owners with registered Australian trade marks containing these terms may no longer be able to use their trade marks as registered.
To reduce the impact these restrictions may have on trade mark owners who may be prohibited from using their trade mark, a new section – section 83A – has been introduced to the Trade Marks Act. Section 83A enables trade mark owners to request an amendment to remove or substitute the Protected Name/Term from their registered trade marks. The Registrar may agree to this even where it alters the identity of the trade mark or extends the scope of the rights. In addition to the usual registrability requirements, the Registrar will have regard to the following when considering an application for amendment:
- the extent to which the amendment relates to the inconsistency; and
- whether the amendment involves replacing one term with another term that is recognised by the industry as being a substitute for the existing term.
This new provision will only apply where using a trade mark in respect of the goods and services for which it is registered is inconsistent with an Australian obligation under an international agreement that was not in place when the trade mark was registered.
Provided the request for amendment is accepted by the Registrar, it will be advertised in the Official Journal of Trade Marks for a period of one month. During the advertisement period, third parties will be able to oppose the granting of the amendment on the ground that, if the amendment is made, the trade mark will be substantially identical with, or deceptively similar to a previously registered trade mark, or a trade mark being used, in respect of similar or closely related goods and services. Accordingly, it will be prudent to implement a watch on such amendment applications to ensure that the proposed amendments will not impinge upon existing rights.
Section 83A commenced operation on 16 October 2010.
- Tim GolderPartner,
Ph: +61 3 9613 8925
- Andrew WisemanPartner,
Ph: +61 2 9230 4701
You can leave a comment on this publication below. Please note, we are not able to provide specific legal advice in this forum. If you would like advice relating to this topic, contact one of the authors directly. Please do not include links to websites or your comment may not be published.