Alan Cadman (Mitchell, Liberal Party) Share this | Hansard source

The Trade Marks Amendment Bill 2006 is important legislation. I congratulate the Parliamentary Secretary to the Minister for Industry, Tourism and Resources on the way in which he has progressed this significant issue. It is important for our nation that we protect our innovation and our innovators. People around the world are seeking to knock off Australian creativity and ingenuity and we must protect and safeguard it. Some of our great brand names are now owned by foreigners. It is a tragedy that Vegemite is no longer Australian. But that is not what this is about. They have not bought the trademark; they have bought the business. So that is a different issue.

Today we are looking at some of the changes to the act. In general terms—I will turn to the specifics shortly—what this legislation does is to decrease the administrative and regulatory burden that confronts applicants when they apply for or seek to vary a trademark. This is a very welcome change. The complexity of the current act has led to a number of inconsistencies, which I am aware of, that make it difficult in some instances for Australian trademark applicants to succeed. We welcome measures to toughen trademark legislation and reduce the administrative and regulatory burden to make it easier for people to find their way through a process which can be quite complex. The process is certainly not as complex, in many ways, as it is when applying for a patent. A trademark does not provide the same sort of protection as a patent but, nevertheless, it is often the lifeblood of a company. A well-known trademark is something to be valued and prized; it is of great merit and great financial value. The legislation provides greater certainty once a trademark has been issued. Once a trademark right is issued, the scope with which people can come in under that trademark with something similar is more restricted than was the case previously. That is also a welcome measure.

The parliamentary secretary will be aware of a particular interest I have in an Australian company. An overseas firm was seeking to come in under an Australian firm with similar presentations—I forget the legal term—and almost show itself off as the Australian company. This legislation will restrict the prospect of that occurring. The increase in the predicability of the trademark system and clarity of the Trade Marks Act is welcome. Transparency and alignment with other intellectual property acts such as the Patents Act are the broad issues that the bill seeks to deal with.

I guess most people in this place would say that this is a pretty dry old subject, but it is a very intense and important subject for Australian business. It should not be underestimated. It is the very key to advertising, market recognition, promotion and advertising. The extent of market reach can be so strongly identified with a trademark. It is a critical commercial product that we should not dismiss lightly. We need to take a great deal of care in the way in which trademarks are managed. It is one of the most critical and commercially viable parts of the intellectual property of a business.

The enhancement of the trademark system reflects the government’s commitment to encouraging innovation and protection of Australian business. It provides Australia with a strong trademark system that meets the needs of Australian business. This bill, which will become the law of Australia, follows an inquiry and review of the 1995 act and associated regulations. It is probably about the right length of time to have a review of these sorts of things after 10 years.

Some may complain that it is too long since the Trade Marks Act was reviewed. That is not the case. A 10-year span is needed for people to become aware of an act but also to be able to manage their business and their trademarks and their intellectual property with certainty. So I congratulate the government on the review and these changes. As I have indicated, the bill reduces the administrative burden on those trying to register trademarks and it also gives the Registrar of Trade Marks the power to initiate court action in trademark matters. All of those are welcome points.

I want to refer to some of the details of the bill itself and comment on the reader’s guide, which is a welcome innovation and is part of legislation to make it easier for those seeking information about trademarks to access some of the details before they start paying lawyers. One of the amendments, an important amendment, relates to section 6 of the Trade Marks Act. Section 6 defines ‘person’ as including ‘a body of persons, whether incorporated or not’. That leaves to one side the capacity of trusts, business names, trading names and partnerships. They are not usually able to own property, and ownership is an important part of the trademarks system. Ownership is generally limited to people who have a legal personality. However, there has been some confusion in this area about who can own a trademark, in particular in relation to trusts and business names.

There is an exception in the definition of persons able to own a trademark. International agreements oblige Australia to allow an association to own a collective trademark. The current definition of ‘association’ in section 6 excludes incorporated associations, of which we have many, and it has been the practice in Australia to incorporate associations because of legal protections, insurance and a whole range of other things. Item 64 of the Trade Marks Amendment Bill 2006 seeks to remove that restriction and allow incorporated associations to apply for collective trademarks. The rights of unincorporated associations to own collective trademarks are preserved. So it is a very good suggestion, a very good change.

The grounds for rejecting an application are not in the same place in the act but in section 31 of the act, which states that the registrar must examine and report on whether or not there are any grounds, under division 2 of part 4, for objection to the application. So what this section does is bring together the grounds for objection and opposition, which are important provisions. Further on in the bill there are provisions about a registration opponent’s earlier use of a similar trademark—this is an area which is often contested—and I read from the explanatory memorandum to clarify the point:

A person may obtain acceptance and registration for a trade mark under section 44(4) even though an earlier similar trade mark has been registered for similar goods and services. The person must be able to show that they have used the trade mark before the filing date of the earlier trade mark on those particular goods or services.

It goes on:

However the owner of the earlier trade mark may have used their trade mark before applying for trade mark registration and accrued common law rights. As it stands the owner of the earlier registered mark has no basis on which to oppose registration of a trade mark accepted under subsection 44(4), even where their use pre-dates that of the accepted application.

And:

The new section will provide a basis for the Registrar to give consideration to these issues in opposition proceedings.

That brings us to the case that the parliamentary secretary brought up and that I am aware of—and it applies to the goods scheme. This fixes up the problem that the Pirotelli family have found, and the attack by Estee Lauder on this Australian company. Estee Lauder employed a firm of solicitors to go hunting for trademarks and names that they could use for their cosmetic products. The Pirotelli family had those brands and had the products up and running. They had applied for registration and, owing to some fault in the advice they received, whether from IP Australia or others—I suspect IP Australia—they withdrew one trademark and Estee Lauder were able to get in there and say, ‘We claim this trademark.’

See this speech in context