Recent legislative reforms

Intellectual Property Laws Amendment (Regulator Performance) Act and Regulations

The Intellectual Property Laws Amendment (Regulator Performance) Act 2023 (Regulator Performance Act) received Royal Assent on 17 November 2023. Several of the amendments in the Regulator Performance Act commenced after Royal Assent, while the remainder take effect from 17 May 2024.

On 9 March 2024, the Governor-General made the Intellectual Property Laws Amendment (Regulator Performance) Regulations 2024 (Regulator Performance Regulations). The Regulator Performance Regulations support the changes in the Regulator Performance Act and take effect from 17 May 2024.

Intellectual Property Laws Amendment (Regulator Performance) Act 2023 

Changes to the Olympic Insignia Protection Act, Trade Marks Act, and Patents Act

The Regulator Performance Act amends 3 pieces of intellectual property legislation: Olympic Insignia Protection Act 1987, Trade Marks Act 1995, and the Patents Act 1990. These amendments refine and enhance the legal processes associated with trade mark and patent administration, and the protection of the Olympic insignia.

The Act is divided into the following 6 parts:  

Part 1 – Trade marks that contain, or consist of, olympic motto etc.

Clarifies that only the Australian Olympic Committee (AOC) and International Olympic Committee (IOC) are permitted to register Olympic insignia as trade marks in Australia. The amendments also provide clearer authority for the government to reject trade mark applications not applied for by the AOC or IOC.

Part 2 – Renewal of registration

Aligns minor inconsistencies contained within trade mark renewal grace period conditions.

Part 3 – Revocation of registration

Requires that the registration of a trade mark be revoked in circumstances where a component of a notice of opposition to registration of the trade mark by a third party was overlooked by IP Australia during the registration process.

Part 4 – Restoration of trade marks to the Register

Allows, in specific circumstances, for a trade mark registration to be restored onto the Trade Marks Register when it had been removed as part of a non-use action.

Part 5 – Official Journal etc.

Removes direct references to the Official Journal of Trade Marks, so that the format the government uses to communicate trade mark decisions is not prescriptive and can respond to changing technologies and customer behaviour.

Part 6 – Spent provisions

Repeals the transitional and savings provision in the  Patents Act 1990  that have had no effect from February 2022. This proposal is procedural in nature with no impact on administration of Australia’s patent system.

Intellectual Property Laws Amendment (Regulator Performance) Regulations 2024

Changes to the Trade Marks and Patents Regulations

The Regulator Performance Regulations amend the Trade Marks Regulations 1995 and Patents Regulations 1991. The Amendments support the changes made in the Regulator Performance Act. Some of the amendments directly implement the Act, while others go to the same policy objective of streamlining use of Australia’s IP system. 

The Regulations are divided into the following 7 parts:  

Part 1 – Renewal of registration

Aligns minor inconsistencies contained within trade mark renewal grace period conditions. 

Part 2 – Restoration of trade marks to the Register 

Allows, in specific circumstances, for a trade mark registration to be restored onto the Trade Marks Register when it had been removed as part of a non-use action. This applies in circumstances where an opponent is granted an extension of time to file evidence or request a hearing, and completes this action. 

Part 3 – Official Journal etc. 

Removes direct references to the Official Journal of Trade Marks, so that the format the government uses to communicate trade mark decisions is not prescriptive and can respond to changing technologies and customer behaviour. You can read more about this change at Changes to the publication of trade mark information.

Part 4 – Extension of time for Assisted Filing Service

Clarify that discontinued Assisted Filing Service (TM Headstart) requests can be revived in certain circumstances. 

Part 5 – Nice Classification 

Updates the classification of goods and services to reflect the most recent terms under the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of Registration of Marks, to which Australia is a party. 

Part 6 – Application and transitional provisions

Sets out how the amendments in Parts 1-4 will apply in certain circumstances. 

Part 7 – Spent provisions 

Repeals transitional provisions in the Patents Regulations 1991 that have had no effect from February 2022. This change is procedural in nature with no impact on administration of Australia’s patent system.

Corresponding changes to regulations

Amendments to the Trade Mark Regulations and Patents Regulations are expected to take place to support the changes made in the Act. The corresponding Intellectual Property Laws Amendment (Regulator Performance) Regulations are anticipated to be in place by 17 May 2024.