Update on the Trade Marks (International Treaties and Enforcement) Amendment Bill

Further to our previous article of 16 April 2009, the Select Committee has reported back with its views on the Bill which it recommends passing with a number of suggested amendments. We set out the more significant of these amendments below.

Additional powers for enforcement officers

The suggested amendments would create additional powers for enforcement officers to apply to the District Court for an order requiring a person with documentation that would be of significant relevance in the investigation of an offence under the Act produce that documentation to the enforcement officer. The amendments also suggest a new offence for failing to comply with an order to produce documents. We consider this is a pragmatic suggestion and would result in better decisions being made by enforcement officers due to the resulting increase in information available to them.

Disposal of goods seized

The suggested amendments would provide for forfeiture of goods seized under the Act to the Trade Mark or Copyright owner instead of to the Crown. It is likely this suggestion will be viewed favourably by rights holders as it will increase the amount of information available to them on the import of counterfeit goods and eliminate the possibility that disposal of the goods would adversely affect their interests. It also decreases the burden on the Crown to destroy goods seized.

Protection against infringement

There is a defence to infringement in the Trade Marks Act based on continuous use of an unregistered mark. Currently the owner of the registered trade mark cannot rely on the previous use of the mark by a predecessor in title but the owner of the unregistered mark can. The suggested amendments ensure that both the owner of a registered mark and the infringing unregistered mark can rely on use by a predecessor in title. This amendment effectively limits the defence for an unregistered trade mark owner hence increasing the scope of protection for registered trade mark owners. 

Powers of Commissioner and Assistant Commissioners of Trade Marks

The suggested amendments spell out in greater detail the powers of the Commissioner and Assistant Commissioners of trade marks. The Select Committee has essentially agreed with the fundamentals of the Bill and the above amendments are relatively minor. Parliament will consider the proposed amendments and the Bill will be read for a second time later this year. To view a copy of the Select Committee report click here.