Purpose of the Bill
The purpose of the Intellectual Property Laws Amendment (Regulator Performance) Bill 2023 (the Bill) is to amend the Olympic Insignia Protection Act 1987 (the OIP Act) to clarify its interaction with the Trade Marks Act 1995 and clearly permit the Australian Olympic Committee (AOC) and the International Olympic Committee (IOC) to register Olympic insignia as trade marks, while maintaining existing protections against unauthorised registration of those insignia.
The Bill will also make various minor amendments to the operation of the Trade Marks Act.
Lastly, the Bill will repeal some spent provisions from the Patents Act 1990.
Structure of the Bill
The Bill consists of 6 Parts in 1 Schedule.
Part 1 amends the OIP Act to clarify the intent of the interaction of that Act with the registration of Olympic insignia trade marks under the Trade Marks Act.
Part 2 amends the Trade Marks Act to ensure that the grace period for the payment of a renewal fee for a trade mark is a consistent 6 months throughout the Act.
Part 3 amends the Trade Marks Act to permit the revocation of a trade mark registration where a component of a notice of opposition was filed in the correct timeframe but was overlooked.
Part 4 will amend the Trade Marks Act to provide additional circumstances in which it is possible to restore a trade mark to the register after it has been removed.
Part 5 will amend the Trade Marks Act to update the permitted official communication methods to include modern methods as set by the regulations.
Part 6 will amend the Patents Act to repeal redundant transitional provisions relating to patents granted under the previous Patents Act 1952.
The Trade Marks Act is the legislation that provides trade mark protection in Australia. Trade marks are a form of intellectual property that can be used to legally protect marks that distinguish a brand and its products or services. IP Australia, the Government agency that administers the Trade Marks Act as well as the OIP Act and other intellectual property legislation, explains that trade marks can be used to protect a logo, phrase, word, letter, colour, sound, smell, picture, movement, aspect of packaging or any combination of these.
The OIP Act provides protection against the unauthorised use or exploitation of the Olympic symbol and certain other related insignia by granting sole ownership of the copyright and design of the insignia to the AOC. The OIP Act also currently protects against the commercial exploitation of Olympic expressions and symbols by preventing the registration of trade marks for the Olympic motto and symbol, and certain other works. However, the Explanatory Memorandum notes at page 8 that the existing trade mark provisions of the OIP Act may be causing unintended difficulties in the operation of the Trade Marks Act as it applies to the registration of Olympic related trade marks. These issues are discussed in greater detail below under the ‘Key issues and provisions’ heading.
The provisions of the Bill were originally introduced in Part 4 of Schedule 5 of the Regulator Performance Omnibus Bill 2022 (the 2022 Bill), which lapsed at dissolution of the House when the 46th Parliament ended in April 2022.
During the development of the 2022 Bill the provisions were released as part of an Exposure Draft and were subject to a consultation process hosted by the Department of Prime Minister and Cabinet, with IP Australia being involved in the IP related aspects of the Bill. IP Australia is the Commonwealth agency responsible for administering the intellectual property (IP) legislation. Submissions were open between December 2021 and January 2022.
Senate Standing Committee for Selection of Bills
The Selection of Bills Committee reported in its Report No. 7 of 2023 that it had deferred consideration of the Bill to its next meeting.
Senate Standing Committee for the Scrutiny of Bills
At the time of writing the Committee had not considered the Bill.
Policy position of non-government parties/independents
When in Government in 2022 the Coalition introduced substantially identical provisions to those in the present Bill, as part of the Regulator Performance Omnibus Bill 2022.
No comments from other parties or independent members or senators could be identified at the time of writing.
Position of major interest groups
At the time of writing no public positions of interest groups were able to be located. In his Second Reading Speech for the Bill, the Minister for Industry and Science Ed Husic stated:
The government has consulted on the amendments contained in this bill with key stakeholders, including the Australian and International Olympic committees, who support these changes.
The Explanatory Memorandum, at page 4, states that the Bill will have no financial impact.
Statement of Compatibility with Human Rights
As required under Part 3 of the Human Rights (Parliamentary Scrutiny) Act 2011 (Cth), the Government has assessed the Bill’s compatibility with the human rights and freedoms recognised or declared in the international instruments listed in section 3 of that Act. The Government considers that the Bill is compatible.
Parliamentary Joint Committee on Human Rights
At the time of writing the Committee had not considered the Bill.
Key issues and provisions
Trade marks of Olympic insignia
Part 1 of Schedule 1 amends the OIP Act to clarify the intent of that Act and its interaction with the registration of Olympic trade marks under the Trade Marks Act.
Item 2 inserts definitions into subsection 2(1) of the OIP Act for the IOC or International Olympic Committee and protected trade mark. A protected trade mark is defined substantively in the same way as the trade marks specified in existing section 19, which is to be repealed by item 3, discussed below.
Item 3 repeals and substitutes section 19 of the OIP Act.
The existing section 19 provides that a trade mark for certain Olympic marks must not be registered under the Trade Marks Act. The marks that cannot be registered are the Olympic motto and symbol, a prescribed artistic work of an Olympic torch and flame, and an artistic work whose design is registered under the OIP Act. Section 19 also prohibits the registration of a ‘mark that contains or consists of’ any of the above listed marks or ‘a mark so nearly resembling any of those marks as to be likely to be taken for that mark.’
While the OIP Act provides, in Chapter 3, means for authorised Olympic bodies to raise licensing revenue by regulating the commercial use of certain expressions associated with the Olympic movement, the operation of section 19 currently means that it is arguable that the AOC and IOC cannot register trade marks for Olympic insignia. The Bill aims to correct this by making it clear that the AOC and IOC can register Olympic trade marks.
Differences in terminology between existing section 19 of the OIP Act and the Trade Marks Act also create difficulties in the operation of sections of the Trade Marks Act which could frustrate the desired intent of preventing the registration of the unauthorised trade marks. The Explanatory Memorandum explains at page 8:
the Trade Marks Act… requires registration of trade marks unless a ground for rejection or opposition is established. The Trade Marks Act provides [relevant] grounds for rejecting a trade mark only if its use would be contrary to law, but the OIP Act prevents registration of trade marks containing relevant Olympic insignia, not their use.
Proposed section 19, therefore, intends to clarify both that the AOC and IOC may register protected trade marks and that no one else can. It does this by stating that the use of protected trade marks by anyone other than the AOC and the IOC would be contrary to law.
By defining the prohibition in terms of the ‘use’ of the marks being contrary to law proposed section 19 will satisfy the requirement of subsection 42(b) of the Trade Marks Act, which requires an application for the registration of a trade mark to be rejected ‘if its use would be contrary to law.’
Item 4 provides that these changes will apply in relation to trade marks filed after the commencement of the item.
Renewal of registration
Part 2 amends the Trade Marks Act to specify that the grace period for the payment of a renewal fee for a trade mark registration is a consistent 6 months throughout the Act.
Trade marks may be maintained by their owners indefinitely, however they must be renewed every 10 years and a renewal fee is due at that time. Section 79 of the Trade Marks Act, relating to the general renewal of registration, provides a grace period of 6 months for the payment of renewal fees by requiring the Registrar to renew the registration of the trade mark if a person asks for renewal within 6 months of the registration of that trade mark expiring.
Currently however, sections 80F and 80G of the Trade Marks Act provide a longer grace period of 10 months for renewal of an expired registration in circumstances where a registration of a trade mark has been delayed and is entered on the Register 10 or more years after the filing date. This means that the registration is taken to have expired when it is entered on the Register. Section 80C provides that the Registrar must then, as soon as practicable, notify the registered owner of the trade mark that a request may be made for renewal of the registration.
Items 5, 6 and 7 will amend sections 80F and 80G to substitute references to the grace period of 10 months with a period of 6 months.
Revocation of registration after the filing of an opposition
Part 3 will amend the Trade Marks Act to permit the revocation of a trade mark registration where a component of a notice of opposition was filed in the correct timeframe but this was overlooked by the Registrar and the trade mark was subsequently registered. Section 84B currently only provides for revocation in these circumstances where a complete notice of opposition was filed within the timeframe. However, subsection 96(3) permits notices of opposition to be filed in ‘components’ in accordance with the Regulations.
The Explanatory Memorandum notes on page 11 that, as section 84B is intended to ‘provide procedural fairness to opponents’, it is considered that fairness requires that the section should also apply where any component of the notice of opposition is filed.
Items 10 and 11 therefore amend section 84B to apply where a ‘component’ of a notice of opposition is filed in time.
Restoration of trade mark to the Register
Part 4 will amend the Trade Marks Act to provide additional circumstances in which it is possible to restore a trade mark to the Register after it has been removed following an application for removal.
Subsection 92(1) permits a person to apply to the Registrar to have a trade mark removed from the Register. Subsection 96(1) permits a person to oppose an application under subsection 92(1) by filing a notice of opposition with the Registrar. Subsection 97(1) then requires the Registrar to remove the trade mark from the Register if there is no opposition to a subsection 92(1) application, or an opposition has been dismissed.
Section 98 currently requires the Registrar to restore a trade mark to the Register if, following removal under subsection 97(1) because no notice of opposition was filed in time, the Registrar subsequently extends the period within which the notice may be filed and a notice is then filed within the extended period.
Item 15 will add proposed subsection 98(2) to provide an additional circumstance in which the Registrar must restore a trade mark to the Register. The additional circumstance applies where someone has filed a notice of opposition to an application for removal but failed to do a relevant thing as set out by the regulations and, as a result of this failure the application is taken to be unopposed and the trade mark is removed from the register. If the Registrar then extends the period in which the relevant thing is required or permitted to be done and the person does it, the trade mark must be restored to the Register.
Part 5 will amend the Trade Marks Act to update the permitted official communication methods to include modern methods as set by the regulations. The Trade Marks Act currently requires various information to be issued, published or advertised in the Official Journal. The Official Journal was originally published on paper and then electronically, with the Trade Marks Journal currently published online by IP Australia. Part 5 will update these requirements by removing various references to the ‘Official Journal’ and replacing them with requirements to publish ‘in accordance with the regulations’.
Part 6 will amend the Patents Act to repeal transitional provisions relating to patents granted under the previous Patents Act 1952. The passage of time has rendered these provisions unnecessary. As observed in the Explanatory Memorandum:
The last patent protected under the 1952 Act expired in February 2016, and the 6 year statutory limitations period on actions for infringement expired in February 2022… there are no longer any patent rights for which these provisions apply (p. 16).