Proposed Domain Name Licensing Changes

In order to register a .au domain name, there are a number of requirements that applicants must meet. Some of these rules are about to change.

In particular, the rules surrounding what constitutes an ‘Australian presence’ for the purposes of registering a domain name are set to change. On 17 June 2019, the .au Domain Administration (auDA), being Australia’s domain name policy-maker and regulatory body, published draft changes to the licensing rules of domain names. In particular, the changes which relate to the eligibility requirements for registering .au domain names are of particular importance.

Under the current rules, a foreign entity can register a .au domain name if it is the registered owner, or applicant, of an Australian trade mark that is referenced in the domain name. This is one of the primary ways in which a foreign company can register a .au domain name without having an office physically situated in Australia.

However, under the new rules, if using an Australian trade mark application or registration as the basis for a domain name application, the following conditions must be met:

  1. the trade mark registered (or applied for) must be or include a word mark; and
  2. the domain name applied for must be an exact match of that word mark.

The implications that this proposed change has on businesses based offshore and operating a .au website could be significant. If the overseas entity has its domain name registration based on an Australian trade mark application or registration for a logo, with no word mark element, or if the word mark element is not identical to the domain name, these proposed changes will render the basis for their .au domain name registrations potentially invalid.The proposed changes apply not only to those filing new .au domain names, but also to those businesses renewing their domain registrations (typically, Australian domain names must be renewed every 2 years). For foreign companies in this situation, it may be necessary to file an Australian trade mark application for a word mark (or a logo featuring a word mark element) which is identical to the relevant domain in order to fulfill the new eligibility requirements.

auDA are yet to announce the commencement date of the new rules, but we expect to hear regarding this in the near future. We will endeavour to keep you updated as further details come to light. Should you wish to discuss your .au domain name rights, or any trade mark rights pertaining to this development, please do not hesitate to email trademarks@actuateip.com.au for more information.

Brazil joins the Madrid Protocol

Brazil is the latest country to join the Madrid Protocol – its accession came into force on 2 October 2019. This is good news for businesses that operate in the Americas, making it possible to more easily obtain trade mark registration in this region by way of the international system for trade mark registration known as the Madrid Protocol. This international system allows for trade mark registration across multiple jurisdictions with a single application, making it a cost-effective method for trade mark owners seeking to protect their brand globally. 

Brazil is now the 105th member state of the Madrid Protocol which commenced operation in 1996. Australia joined in 2001 and earlier this year Canada also became a member. The option to designate such a large number of countries in a single application makes the Madrid Protocol an increasingly popular option for businesses trading worldwide. If you already have a Madrid Protocol application in place, it is also possible to add additional countries, such as Brazil and Canada, to your existing application. 

Brazil’s accession to the Madrid Protocol has been a long time coming and with much opposition. The Brazilian Intellectual Property Association released a document in 2002 and again in 2018 citing a list of obstacles to joining the Madrid Protocol (and without including any of the benefits). However, the National Institute of Industrial Property has worked hard over the course of this year to improve its processes have enabled it to come into line with the requirements of the Madrid Protocol which was one of the major obstacles preventing its acceptance. 

If you trade in Brazil, or intend to in the future, our team of trade mark attorneys and lawyers can advise you on your options for protecting your trade mark in Brazil, whether this is through the Madrid Protocol or otherwise. To contact a member of our team, call 1300 851 138 or email trademarks@actuateip.com.au.

China Tackles Bad Faith Trade Marks

China currently operates a first-to-file trade mark system, meaning that the first person to file a trade mark application in China is considered the owner.  As a result, foreign and domestic brand owners have long suffered the problem of trade mark squatters filing for their own brands in China, preventing their registration and use of the mark. These applications filed by non-legitimate owners, who do not have any intention to use the mark, are considered bad faith trade mark applications.

New provisions to China’s trade mark laws come into effect on 1 November 2019 which aim to address this issue of bad faith applications.  In particular, the China National Intellectual Property Administration has made some key amendments to its Trademark Law which provides that “applications made in bad faith for trade mark registrations that are not intended for use shall be rejected”.   Importantly, this amendment empowers the trade mark registration authority to reject bad faith applications at the examination stage. This is anticipated to be far more effective than current provisions which requires bad faith applications to be challenged only through lengthy and expensive opposition and invalidation proceedings by brand owners. The new provision can also be invoked in an opposition proceeding or invalidation action. Bad faith trade mark applicants can face penalties by way of warnings or fines.

An additional key amendment is that authorities can impose fines and penalties not only on bad faith applicants but also on trade mark agencies. This imposes an obligation on trade mark agencies to censor bad faith applications. In particular, trade mark agencies should not accept instructions if it knows, or should know, that the application is being filed in bad faith. This shift in legislation is a positive sign that China is increasingly recognising the value of intellectual property.

Noting that in 2018, 7.37 million trade mark applications were filed in China, if you have any interest in trading in China in the future, it is increasingly important to file for your trade mark as early as possible. If you require any advice regarding registering your trade mark in China, please contact a member of our team on 1300 851 138 or email trademarks@actuateip.com.au and we’ll be happy to assist.

Innovation Patents to be Abolished

The innovation patent is a second-tier patent system which was introduced in Australia in 2001. It requires that inventions have an innovative step, rather than the higher threshold of an inventive step that is required for standard patents. An innovation patent has a maximum term of protection of 8 years rather than the 20 years under the standard patent system. The innovation patent system was introduced with the aim of incentivising innovation in small and medium enterprises with a quicker and more affordable process than the standard patent system which can take several years before grant.  However, a number of shortcomings in the system have resulted in the Australian government making plans to abolish the innovation patent altogether. In particular, there is the perception that the threshold test for innovative step is too low which has reduced the credibility of the innovation patent. There are also concerns that the system is being abused with low value patents flooding the market, creating uncertainty for new innovators.

In a 19 September 2019 statement, IP Australia has confirmed its plans to abolish the innovation patent system. This is despite submissions to the contrary from a variety of industry groups, including the Australia Chamber of Commerce and Industry, the Business Council of Australia, and the Institute of Patent and Trade Mark Attorneys of Australia. In particular, a common concern amongst these organisations is that the abolishment of the innovation patent system would be detrimental to innovation in Australia by SMEs. Whilst not a perfect system, it is a common view that innovation patents are an important tool for protecting commercially relevant inventions, assisting inventions come to market in Australia as well as attracting investment funds for SMEs further innovation. Despite this, as well as the suggestion for an improvement rather than revocation of the innovation patent system to be undertaken, the Government’s decision was not altered.  Once the legislation comes into effect, a commencement date will be set.  Any innovation patents filed before the commencement date can still be certified and enforced and innovation patent owners will still be entitled to enjoy the rights of their validly granted patents until the 8-year term expires.  It is therefore still possible to file an innovation patent and enjoy the benefits that its lower innovation threshold and quicker grant process provides.

If you would like to discuss the potential benefit of filing an innovation patent as a divisional of your existing patent, or otherwise have any questions regarding the implications this change has for your patent rights in Australia, please contact our team at info@actuateip.com.au

Impact of Brexit on Trade Mark Rights

With the uncertainties surrounding Brexit, you may be wondering what will happen to your EU trade mark if the UK does leave the European Union. The current position is that holders of registered EU trade marks will automatically gain a UK trade mark registration, at no cost. The UK registration will be given the same filing and renewal dates as the EU mark.

This is great news for holders of registered EU marks, however, the transition is not as smooth for those with pending EU applications. In this case, if your EU mark is not registered by the date the UK leaves the EU, you will not be given a corresponding UK mark. Instead, following the date of exit by the UK, you will need to apply separately for a UK trade mark, at your own cost. You can, however, claim the same filing date as your EU trade mark if the UK application is filed within 9 months of the EU application.

Given the continuing uncertainties about Brexit, and if you have recently filed an EU but not UK application, it may be worth considering filing a UK application at this stage. If you require any advice regarding your EU or UK trade marks, please contact a member of our team on 1300 851 138 or email trademarks@actuateip.com.au and we’ll be happy to assist.

World Trademark Review 2019

Colin Cheung, Principal and Lawyer at Actuate IP, was recently recognised in the individual rankings for Australia of the 2019 edition of “World Trademark Review – The World’s Leading Trade mark Professionals” (WTR 1000) as a recommended expert. The WTR 1000 is a leading global survey. Inclusion involves exhaustive qualitative research by WTR 1000 in order to identify those deemed outstanding this area of law and practice.

The independent WTR 1000 research takes into considerations criteria such as depth of expertise, level of work instructed on and positive peer and client feedback. Colin is described in the WTR 100 as “tough and active player in contentious matters with a first-class reputation among barristers”.  A well-deserved review. Congratulations Colin!