Loi de 2006 portant modification de la loi sur la propriété intellectuelle, Australie

1 Short title

This Act may be cited as the Intellectual Property Laws Amendment Act 2006.

2 Commencement

(1) Each provision of this Act specified in column 1 of the table commences, or is taken to have commenced, in accordance with column 2 of the table. Any other statement in column 2 has effect according to its terms.

Commencement information

Column 1 Column 2 Column 3

Provision(s) Commencement Date/Details

1. Sections 1 to 3 The day on which this Act receives the 27 September and anything in Royal Assent. 2006 this Act not elsewhere covered by this table
1. Schedule 1 A single day to be fixed by Proclamation. 27 March 2007 However, if any of the provision(s) do not commence within the period of 6 months beginning on the day on which this Act
2. receives the Royal Assent, they commence on the first day after the end of that period.
1. Schedule 2 A single day to be fixed by Proclamation. 27 March 2007 However, if any of the provision(s) do not commence within the period of 6 months beginning on the day on which this Act
2. receives the Royal Assent, they commence on the first day after the end of that period.
2. Schedule 3, The day after this Act receives the Royal 28 September Part 1 Assent. 2006
3. Schedule 3, A single day to be fixed by Proclamation. 27 March 2007 Part 2

However, if any of the provision(s) do not commence within the period of 6 months beginning on the day on which this Act receives the Royal Assent, they commence on the first day after the end of that period.

Note: This table relates only to the provisions of this Act as originally passed by the Parliament and assented to. It will not be expanded to deal with provisions inserted in this Act after assent.

(2) Column 3 of the table contains additional information that is not part of this Act. Information in this column may be added to or edited in any published version of this Act.

3 Schedule(s)

Each Act that is specified in a Schedule to this Act is amended or repealed as set out in the applicable items in the Schedule concerned, and any other item in a Schedule to this Act has effect according to its terms.

Trade Marks Act 1995

1 Subsection 38(1)

Repeal the subsection, substitute:

(1) Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:

(a)

the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

(b)

it is reasonable to revoke the acceptance, taking account of all the circumstances.

2 Application of amendment of section 38

The amendment of section 38 of the Trade Marks Act 1995 made by this Schedule applies in relation to the acceptance of an application for registration of the trade mark whether the acceptance occurred before, on or after the commencement of the amendment.

3 At the end of section 73

Add:

Note: Section 84C explains the effect of revocation of the registration of a trade mark, applying some provisions as if the registration had ceased at a particular time (but for most purposes treating the registration as if it had never occurred).

4 Part 8 (heading)

Repeal the heading, substitute:

84A Registration may be revoked

Power to revoke

(1)

The Registrar may revoke the registration of a trade mark if he or she is satisfied that:

(a)

the trade mark should not have been registered, taking account of all the circumstances that existed when the trade mark became registered (whether or not the Registrar knew then of their existence); and

(b)

it is reasonable to revoke the registration, taking account of all the circumstances.

(2)

The circumstances to be taken into account under paragraph (1)(a) include the following:

(a)

any errors (including errors of judgment) or omissions that led directly or indirectly to the registration;

(b)

any relevant obligations of Australia under an international agreement;

(c)

any special circumstances making it appropriate:

(i)

not to register the trade mark; or

(ii)

to register the trade mark only if the registration were subject to conditions or limitations to which the registration was not actually subject.

(3)

The circumstances to be taken into account under paragraph (1)(b) include the following:

(a)

any use that has been made of the trade mark;

(b)

any past, current or proposed legal proceedings relating to the trade mark as a registered trade mark or to the registration of the trade mark;

(c)

other action taken in relation to the trade mark as a registered trade mark;

(d)

any special circumstances making it appropriate:

(i)

to revoke the registration; or

(ii)

not to revoke the registration.

Note: For use of a trade mark see section 6.

Prerequisites to revocation decision

(4) The Registrar may revoke the registration of the trade mark only if the Registrar gives notice of the proposed revocation to each of the following persons in accordance with the regulations within 12 months of registering the trade mark:

(a)

the registered owner of the trade mark;

(b)

any person recorded under Part 11 as claiming a right in respect of, or an interest in, the trade mark.

Note: For registered owner see section 6.

(5) The Registrar must not revoke the registration of the trade mark without giving each of the following persons the opportunity to be heard:

(a)

the registered owner of the trade mark;

(b)

any person recorded under Part 11 as claiming a right in respect of, or an interest in, the trade mark.

Note: For registered owner see section 6.

No duty to consider whether to revoke

(6) The Registrar does not have a duty to consider whether to revoke the registration under this section, whether or not the Registrar is requested to do so.

84B Registration must be revoked if opposition was ignored in registration process

The Registrar must revoke the registration of a trade mark if:

(a)

either:

(i)

a notice of opposition to the registration was filed in accordance with subsection 52(2); or

(ii)

before the registration, a person applied in accordance with the regulations for an extension of the period for filing a notice of opposition to the registration; and

(b)

the Registrar failed to take account of the opposition or application in deciding to register the trade mark; and

(c)

the Registrar becomes aware of the failure within 1 month

after the notice was filed or the application was made. The revocation must be done within that month.

Note: If the Registrar becomes aware of the failure later, he or she may be able to revoke the registration under section 84A.

84C Effect of revocation of registration

(1)

This section applies if the Registrar revokes the registration of a trade mark under section 84A or 84B.

(2)

This Act generally applies as if the registration had never occurred, but:

(a)

subsection 129(4) applies as if the trade mark had ceased to be registered at the time of the revocation; and

(b)

if the Customs CEO, purporting to act under Part 13, seizes goods in respect of which the trade mark was registered before the revocation, the Commonwealth is not liable for any loss or damage suffered because of the seizure, unless:

(i)

the Registrar gives the Customs CEO written notice of the revocation; and

(ii)

the seizure occurs after the notice is given to the Customs CEO; and

(c)

Part 14 applies as if the trade mark had ceased to be registered at the time of the revocation; and

(d)

subsection 230(2) applies in relation to a defendant who was the registered owner of the trade mark before the revocation as if the trade mark had ceased to be registered at the time of the revocation; and

(e)

subsection 230(2) applies in relation to a defendant who was an authorised user of the trade mark before the revocation as

if the trade mark had ceased to be registered at the time the

defendant became aware of the revocation.

Note: For registered owner see section 6.

(3)

To avoid doubt, paragraph (2)(b) does not, by itself, make the Commonwealth liable if the circumstances described in subparagraphs (2)(b)(i) and (ii) exist.

(4)

This Act applies as if, just after the revocation:

(a)

the application for registration of the trade mark reflected the particulars in the Register for the trade mark just before the revocation; and

(b)

the applicant for registration of the trade mark were the person in whose name the trade mark was registered just before the revocation.

(5)

This subsection has effect if the Registrar revokes the acceptance of the application for registration of the trade mark after revoking the registration. The Registrar may, but need not, examine the application again under section 31 before rejecting the application. This has effect despite paragraph 38(2)(b).

84D Appeal from revocation of registration

An appeal lies to the Federal Court from a decision of the Registrar to revoke the registration of a trade mark under section 84A.

8 After subsection 224(3)

Insert:

(3A) If the Registrar has revoked the registration of a trade mark, he or she may extend the time for doing a relevant act that is required by this Act to be done within a certain time in connection with the application for registration of the trade mark.

9 Application of amendments of Part 8 and section 224

The amendments of Part 8 and section 224 of the Trade Marks Act 1995 made by this Schedule apply in relation to trade marks that became registered on or after the commencement of this Schedule.

Trade Marks Act 1995

1 Subsections 223(3), (4) and (5)

Repeal the subsections, substitute:

(3)

The regulations may provide for the consequences (for the purposes of this Act) of failing to pay a fee in accordance with the regulations.

(4)

In particular, the regulations may provide that, for the purposes of this Act:

(a)

an act is not to be done, or is taken not to have been done, if the fee for doing the act is not paid in accordance with the regulations; or

(b)

a document is not filed, or is taken not to have been filed, if the fee for filing the document is not paid in accordance with the regulations; or

(c)

an application for registration of a trade mark lapses, or is taken to have lapsed, if the fee for filing the application is not paid in accordance with the regulations.

(5)

Subsection (4) does not limit subsection (3).

2 Application

The amendment made by this Schedule applies in relation to fees that become payable after the commencement of this Schedule.

Trade Marks Act 1995

1 Subsection 173(2)

Repeal the subsection, substitute:

(2)

The rules must specify:

(a)

the requirements (the certification requirements) that goods and/or services must meet for the certification trade mark to be applied to them; and

(b)

the process for determining whether goods and/or services meet the certification requirements; and

(c)

the attributes that a person must have to become a person (an approved certifier) approved to assess whether goods and/or services meet the certification requirements; and

(d)

the requirements that a person, who is the owner of the certification trade mark or an approved user, must meet to use the certification trade mark in relation to goods and/or services; and

(e)

the other requirements about the use of the certification trade mark by a person who is the owner of the certification trade mark or an approved user; and

(f)

the procedure for resolving a dispute about whether goods and/or services meet the certification requirements; and

(g)

the procedure for resolving a dispute about any other issue relating to the certification trade mark.

(3)

The rules must also include any other matter the Commission requires to be included.

(4)

The rules may also include any other matter the Commission permits to be included.

2 Application of amendment of section 173

The amendment of section 173 of the Trade Marks Act 1995 made by this Part applies in relation to rules filed on or after the commencement of the amendment.

3 Paragraph 175(2)(a)

Repeal the paragraph, substitute:

(a) the attributes a person must have to become an approved certifier are sufficient to enable the person to assess competently whether goods and/or services meet the certification requirements; and

4 Subsection 175(2) (note 2)

Repeal the note, substitute:

Note 2: For approved certifier see paragraph 173(2)(c).

Note 3: For certification requirements see paragraph 173(2)(a).

5 Application of amendments of section 175

The amendments of section 175 of the Trade Marks Act 1995 made by this Part apply in relation to decisions to give, or refuse to give, a certificate relating to rules filed on or after the commencement of this Part.

6 Subsection 177(1) (note 2)

Omit “173(2)(a)”, substitute “173(2)(c)”.

7 Subsection 181(2) (note 2)

Omit “173(2)(a)”, substitute “173(2)(c)”.

Part 2—Amendments commencing on proclaimed day or after 6 months

Trade Marks Act 1995

8 Section 174

Repeal the section, substitute:

Trade Marks Act 1995

1 At the end of Division 1 of Part 21

Add:

Patents Act 1990

1 After subsection 122(1)

Insert:

(1A) A court may include an additional amount in an assessment of damages for an infringement of a patent, if the court considers it appropriate to do so having regard to:

(a)

the flagrancy of the infringement; and

(b)

the need to deter similar infringements of patents; and

(c)

the conduct of the party that infringed the patent that occurred:

(i)

after the act constituting the infringement; or

(ii)

after that party was informed that it had allegedly infringed the patent; and

(d)

any benefit shown to have accrued to that party because of the infringement; and

(e)

all other relevant matters.

2 Application

The amendment of section 122 of the Patents Act 1990 made by this Schedule applies to infringements of patents occurring on or after the commencement of this Schedule.

Patents Act 1990

1 Section 119

Repeal the section, substitute:

Patents Act 1990

1 Subsection 78(1)

Omit “(1) If”, substitute “If”.

2 Subsection 78(2)

Repeal the subsection.

3 After section 119

Insert:

Patents Act 1990

1 Subsection 133(1)

Omit “a prescribed court”, substitute “the Federal Court”.

2 Paragraphs 133(2)(a) and (b)

Repeal the paragraphs, substitute:

(a)

all the following conditions exist:

(i)

the applicant has tried for a reasonable period, but without success, to obtain from the patentee an authorisation to work the invention on reasonable terms and conditions;

(ii)

the reasonable requirements of the public with respect to the patented invention have not been satisfied;

(iii) the patentee has given no satisfactory reason for failing to exploit the patent; or

(b)

the patentee has contravened, or is contravening, Part IV of the Trade Practices Act 1974 or an application law (as defined in section 150A of that Act) in connection with the patent.

3 Subsection 133(3A)

Repeal the subsection.

4 Paragraph 133(5)(b)

Omit “a prescribed court”, substitute “the Federal Court”.

5 At the end of paragraph 133(5)(b)

Add “and the desirability of discouraging contraventions of Part IV of the Trade Practices Act 1974 or an application law (as defined in section 150A of that Act)”.

6 Subsections 133(6) and 134(1)

Omit “a prescribed court”, substitute “the Federal Court”.

7 Paragraphs 134(2)(a) and (b)

Repeal the paragraphs, substitute:

(a)

both:

(i)

the reasonable requirements of the public with respect to the patented invention have not been satisfied; and

(ii)

the patentee has given no satisfactory reason for failing to exploit the patent; or

(b)

the patentee is contravening Part IV of the Trade Practices Act 1974 or an application law (as defined in section 150A of that Act) in connection with the patent.

8 After section 136

Insert:

Patents Act 1990

1 At the end of paragraph 40(2)(c)

Add “defining the invention”.

2 Application

The amendment of paragraph 40(2)(c) of the Patents Act 1990 made by this Schedule applies to complete specifications relating to applications for innovation patents filed before, on or after the commencement of this Schedule.

Patents Act 1990

1 Subsection 79C(1)

After “may”, insert “, in accordance with the regulations,”.

2 Subsection 79C(2)

Repeal the subsection, substitute:

(2) The patentee may make the further complete application only during the period:

(a)

starting when an examination of the first patent begins; and

(b)

ending when any of the following happens:

(i)

the term of the first patent ends;

(ii)

the first patent is revoked;

(iii) the first patent ceases;

(iv) a period prescribed by the regulations for the purposes of this subparagraph ends.

3 Application

The amendments made by this Schedule apply to the making of a complete application on or after the commencement of this Schedule, whether the first patent concerned was granted before, on or after that commencement.

Plant Breeder’s Rights Act 1994

1 At the end of subsection 28(2)

Add “or, if another date is determined under the regulations for the application, the date determined”.

2 Application

The amendment of the Plant Breeder’s Rights Act 1994 made by this Schedule applies in relation to applications lodged after the commencement of the amendment.

Trade Marks Act 1995

3 Section 6 (at the end of the definition of filing date)

Add: ; or (e) in relation to a prescribed application—the day determined in the prescribed way.

4 Application

The amendment of the Trade Marks Act 1995 made by this Schedule applies in relation to applications filed after the commencement of the amendment.

Designs Act 2003

1 Section 129 (after the paragraph relating to Part 4)

Insert:

Part 4A lets an act be done after the period otherwise provided for doing the act if that period ends on a day when the Designs Office or a sub-office is not open for business.

2 After Part 4 of Chapter 11

Insert:

1 Schedule 1 (definition of Australian Register of Therapeutic Goods)

Omit “17”, substitute “9A”.

Note: This item corrects a cross-reference consequentially on the Therapeutic Goods Amendment (Medical Devices) Act 2002 repealing section 17 of the Therapeutic Goods Act 1989, which provided for the Australian Register of Therapeutic Goods, and inserting section 9A in that Act to provide for that register.