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Tuesday, September 29, 2015

Bob Katter's proposed amendments to the Trade Marks Act

by Mark Williams, Managing Associate

Law reform in respect of trade marks in Australia moves at glacial pace. Therefore, any proposed amendment to the trade mark legislation generates significant interest amongst the IP Community. Mark Williams reports on Bob Katter's proposal for protecting Aussie icons, in video and in text:

On 14 September, the Trade Marks Amendment (Iconic Symbols of National Identity) Bill was introduced to Parliament by Federal MP Bob Katter. Prompted by Mr Katter's indignation at recent trade mark applications by various parties for trade marks consisting of the words Waltzing Matilda, the Bill proposes a new ground for rejecting a trade mark application if the trade mark consists of a sign that is of national significance, or iconic value, to the people of Australia.

In his press release, Mr Katter stated that:

'By definition, a symbolic emblem, whether it is Ned Kelly, The Man from Snowy River, boomerang or the rising sun badge, should not be able to be turned into a property right'.

The Explanatory Memorandum to the Bill provides no guidance as to what may constitute a sign of national significance or iconic value to the people of Australia. However, reports suggest that Mr Katter proposes the introduction of a committee which would make this determination. Presumably, this committee would be similar to the Maori Trade Marks Advisory Committee which considers whether marks referred to it by the New Zealand Commissioner of Trade Marks, are likely to be offensive to Maori.

In its present form, the proposed amendment raises a number of issues of concern. Obviously, greater transparency and clarity around what may constitute a sign of national significance or iconic value to the people of Australia, is required. The inclusion of Ned Kelly in Mr Katter's examples of 'symbolic emblems' raises an interesting question about the ability for an individual, of arguably national significance or iconic value, to register and exploit their own name. For example, would marks such as 'Weary Dunlop' (registered in respect of educational, research and medical services by the Sir Edward Weary Dunlop Medical Research Foundation) be prevented from securing registered rights? And given the significance Australians place on its sporting identities, should Greg Norman, Lleyton Hewitt and Ricky Ponting have all been denied the opportunity to generate income from their self-branded goods and services?

Furthermore, given that the ground for rejecting the application would apply only to marks consisting of the sign of national significance or iconic value, would the objective of the bill be achieved if signs which merely include a sign of national significance or iconic value would not be subject to the ground for rejection?

Another issue of concern is the likely delay in examination that the introduction of a committee, and subsequent review, would add. Even if the committee was only required to consider marks referred to it by the Registrar of Trade Marks, it is unlikely that the committee would meet to consider each individual mark as it is referred by the Registrar. Instead, the committee would likely meet at regular intervals to consider applications in bulk. This would add yet another layer of delay to the examination process.

It is also unclear whether, or how, the determination of the committee could be challenged. Would that be a matter arguable before the trade mark Examiner, or would there be a separate review or appeal process before the committee?

So it's fair to say that in its current form, there is significant uncertainty about what the proposed amendment might mean to trade mark owners.

Perhaps more troubling is the proposal relating to revocation of registration. Rather than just the power to revoke, the proposed amendment would impose an obligation on the Registrar to revoke the registration of marks consisting of a sign of national significance or iconic value. This obligation to revoke registration would apply not only to marks registered after the commencement of the amendments, but also to any mark registered before the commencement.

So what would that look like in practical terms?

Firstly, the Registrar would be required to conduct a review of the approximately 610,000 registered Australian trade marks, and provide an opportunity to be heard to the owners of all trade marks for which it proposes to revoke registration. This, of course, would be a monumental task and could potentially exhaust IP Australia's hearings resources for a substantial time, possibly years.

Secondly, what would the obligation to revoke registration mean for existing trade mark owners? Although one can only assume from his press release that Mr Katter intends that the amendment would apply only to 'symbolic emblems', would it also extend to brands, which fall within the section 6 definition of signs? Would anyone argue that brands such as Vegemite or Qantas are not signs of national significance, or iconic value, to the people of Australia?

Would this mean that the Registrar of Trade Marks would be obliged to revoke the registration of trade marks for those or similarly iconic brands? And what would this loss of exclusive rights mean to the trade mark owners, not to mention the risk to consumers should those marks be free for use by all traders?

It is clear that considerably more detail is required before a full analysis as to the likely efficacy of Mr Katter's proposal, can be undertaken. However, given that section 39 of the Trade Marks Act already provides a ground for rejecting an application which consists of a prohibited sign as detailed in the Trade Mark Regulations (which presently include the arms, flag or seal of the Commonwealth or of a state or territory, and phrases such as 'Olympic champion' and 'returned soldier'), I wonder whether Mr Katter's objective may be better served by proposing specific additions to the list of prohibited marks, which would provide greater certainty to trade mark owners and consumers alike.

We will continue to monitor the progress of the bill and keep you informed of any developments.

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