The beginning of the new year is an opportune time for trade mark owners to audit their Australian IP portfolio and licensing arrangements.

In light of recent amendments to the Trade Marks Act, we recommend that trade mark owners commit to a couple of New Year’s resolutions.

Reduced minimum grace period for non-use actions

Trade marks that are filed from 24 February 2019 can be attacked for non-use 3 years after the date the particulars are entered into the Australian Trade Marks Register.

A more vigilant re-filing program should be considered every 3 years if marks have not been used for a continuous period of three years. The current 5 years grace period will no longer apply.

New Year’s Resolution 1:

To protect against the removal of dormant trade marks, it is timely to implement a program to:

• monitor use and scope of trade marks;
• maintain records of trade mark activities; and
• reinvigorate inactive but nevertheless valuable brands.

Parallel importation

Amendments to parallel importation laws came into effect on 25 August 2018. Under this regime, a parallel importer will not be found to be engaging in infringing conduct if, after making reasonable inquiries, it would be reasonable to conclude that the trade mark had been applied to the goods with the consent of:

• the registered owner of the trade mark;
• an authorised or permitted user of the trade mark;
• a person with significant influence over the use of the trade mark by the owner or authorised user; or
• an associated entity of the above. 

It remains to be seen if these changes will lead to an increase in the number of parallel imported products entering the Australian marketplace due to the relative ease by which the “reasonable inquiries” threshold could be established.

New Year’s Resolution 2:

To counteract both legitimately trade marked grey goods and counterfeit imports, trade mark owners can manage the risk by:

• reviewing their current licence and distribution agreements to ensure that adequate territorial control mechanisms are in place and strictly enforced; and
• implementing innovative labelling strategies for products directed to Australian consumers.

For more ways to manage these developments, please contact our specialised Trade Marks team in Australia.