Franchisee beware! Registering your trade mark licence will be more important than ever. Changes to Trade Mark legislation will make it important to obtain registration of franchisee or licensee interest in a trade mark.
Criminal penalties for commercial infringement have undergone a major revamp highlighting the importance of businesses putting in place sound copyright policies to discourage copyright infringement.
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2007 - New Playing Field for IP in Australia
2007 opens with significant changes in Australian Intellectual Property law following the passage of a series of bills by the Australian parliament. The changes include amendments to Trade Mark, Copyright and Patent Law. This article deals with changes to trade mark and copyright law.
Trade mark owners and licensees of trade mark rights will be affected by important changes to rights attaching to registrations of interests in trade marks. Meanwhile, copyright law sees a major revision of criminal penalties to discourage and penalise copyright infringement. These are just examples of an extensive program of legislative amendments updating Australian intellectual property law.
While a number of trade mark fees will be increasing on 31 March, among more significant amendments to the Trade Marks Act are changes having implications for trade mark owners and licensees.
Previously the Trade Marks Act provided that the registered owner of a trade mark could deal with the trade mark only subject to any rights vested in another person. In other words, it was a case of buyer beware, for any purchaser of a trade mark. The purchaser would have to be sure that there were no rights in any third party (for example a licence right to use the trade mark), that might seriously affect ownership rights.
Changes to the Act will have the effect of making registered trade marks rights, subject only to any rights appearing in the Register to be vested in another person. A buyer of a trade mark will be more secure in purchasing a trade mark that their investment will not be subject to third party rights of which they are not aware. Any holder of a licence to use a trade mark, however, should seek to ensure that their interest is recorded on the trade marks register. This will be important generally to trade mark licensees but also particularly to franchisees, who are often holders of licence rights in a registered trade marks.
A revamp of penalty provisions in copyright law will not directly impinge on the operation of businesses having developed policies and good practices relating to non-infringement of third party intellectual property. However the imperative of getting these policies right will be increased, with the emphasis on criminal sanctions extended in the Act. The new indictable, summary and strict penalty offences are extensive and businesses are well advised to ensure that employees appreciate the importance of not engaging in infringement of third party copyright.
Among the changes are the introduction of provisions dealing with commercial scale infringement of copyright. The new section creates both an indictable offence of infringement of copyright on a commercial scale and a summary offence, with different but substantial penalties including fines and imprisonment. The summary offence can occur if a person infringes on a commercial scale and is "negligent of the fact". Similar provisions are introduced in relation to making infringing copies for commercial purposes. New indictable, summary and in some cases strict offences are created for selling, offering for sale, distributing or importing infringing copies.