Trade Marks Act amendment poses new challenges

October 6, 2015 Published by

In September of this year, the Trade Marks Amendment (Iconic Symbols of National Identity) Bill was introduced to Parliament by Federal MP Bob Katter. The Bill proposes the introduction for a new ground for rejecting a trade mark application if the trade mark consists of a sign that is of iconic value and national significance, for Australians.

In a press release, Mr Katter stated that emblems such as Ned Kelly, The Man from the Snowy River, a boomerang or the rising sun badge, were examples of icons that should not be converted into property rights. While this seems like a fair proposal, the Explanatory Memorandum to the Bill fails to provide any guidance as to why it would constitute a sign of national significance. However, there has been the suggestion that a special committee be introduced to make these types of determinations that mirrors the Maori Trade Marks Advisory Committee that decides whether registered or proposed trade marks are offensive to Maori.

As it currently stands, the proposed amendment has been vague about some important issues that should be addressed;

  • There needs to be more clarity concerning what would constitute a sign of national significance or of iconic value
  • The concern for the likely delay in examination that the introduction of a new committee would cause. It is not likely that the committee would meet to consider every individual trade mark proposal. They would most likely convene at regular intervals to consider a group of applications which would inevitably delay¬† the examination process.
  • There is an obligation, rather than a mere power, to revoke the registration of marks consisting of signs of national significance and would apply to both proposed marks and most troubling, to marks registered prior to the commencement of the amendment.
  • If the Bill is passed the Registrar would be required to review up to 610,000 registered trade marks in Australia. This would be an incredibly onerous task for IP Australia and exhaust much of their time and resources.

We can see how more detail and transparency is necessary before a proper analysis of Mr Katters proposal can be performed. Stay tuned for the developments of this Bill!

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