In order to clarify uncertainty about the proper treatment of confidential material served on a party to an Australian trade mark opposition, the Registrar proposes to advise parties that access to information identified as confidential and served in opposition proceedings shall be restricted to persons who reasonably need to see it for the purposes of the opposition. Such information must also be treated as confidential and used by the served party only in relation to the conduct of the opposition proceedings. This direction will apply only to material served by one party on another as part of an opposition proceeding, and the confidentiality of material filed with IP Australia will remain subject to the controls of the Trade Mark Regulations and the Freedom of Information Act.

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A media release dated 5 April 2007 by the Minister for Industry, Tourism and Resources announced that the Australian Government has agreed to extend the jurisdiction of the Federal Magistrates Court to hear trade mark and design matters. The change is designed to benefit trade mark and design owners by providing a quicker and less costly option to Federal Court proceedings.

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Operation of a website potentially exposes a commercial enterprise to liability throughout the entire world. In many cases, potential for liability for trade mark infringement will depend somewhat on whether the website is interactive and allows users to purchase products, or whether it is merely a passive advertising site. In addition, if the company has other commercial contacts with a particular country, it is likely to be held to be using its marks in that country, and therefore open to possible trade mark infringement or other actions.

It seems that, for causes of action such as defamation and misleading and deceptive conduct, the mere availability of material on a website which can be read in Australia may be a sufficient cause of action. In contrast, it seems that something more is required to prove trade mark use (for infringement, and arguably also for questions of proprietorship and protection from non-use expungement).

The application of trade mark laws to internet use varies across different jurisdictions. In Australia, the question of whether use of a mark on a website amounts to an infringement, is directed to whether the website actually “targeted” Australian customers. In contrast, the United States look at whether the website had a “substantial effect on US commerce,” whilst the approach adopted in the UK is to determine the purpose and effect of the use on the website.

Whatever the approach, it is evident that the use of trade marks on the internet and the application of traditional trade mark law in the area of electronic commerce is an increasingly decisive issue to be considered by businesses. A US commentator has suggested that given the sufficiently serious risks of exposure to litigation, businesses which actively trade on the internet should consider taking steps such as:

1. Using software which automatically blocks access to and use of the website by persons who’s IP addresses are located in jurisdictions where the company does not want to be exposed to litigation (technically, this may not always work).
2. Restrict use of paid website services to customers who have billing addresses in countries where the company is prepared to be exposed to potential litigation, and decline transactions from people in other jurisdictions.
3. Use disclaimers on the website, prominently, and throughout the site, which clearly indicate that the website should only be used from within “acceptable” jurisdictions.
4. Include choice of law and forum clauses in website terms and conditions, and require users to accept those terms and conditions.
5. Use country specific domain names, foreign language text, or national flags to show that the website is only available to residents of certain jurisdictions.

However if you do plan to use the internet to sell your goods or services in foreign countries, it is important to remember that there is no substitute for prior trade mark searching.

For a more in depth discussion of trade marks on the internet, electronic commerce and domain names please click here or contact Annette Freeman, Principal, Spruson&Ferguson Trade Marks Team: annette.freeman@sprusons.com.au

The Australian Trade Mark’s Office recently accepted for registration the “sound of a seal barking two times” for services relating to refrigerator door seals (application 1142678).

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Asia, home to more than 60% of the world's population who speak 30 different languages, is currently experiencing economic growth on a massive scale. The .asia domain has been proposed to represent the unified Asian market, much like .eu has done for the European Union.

It is planned that .asia will be launched within the next few months. The initial launch will be phased to take into consideration intellectual property rights as well as the best interests of the rights of others in the community.

Eligibility – who can apply?

The Eligibility Requirement Policy (still in draft form) states that one of the four contacts on an application for .asia must be based in one of the 73 countries defined by ICANN as being in the Asia/Australia/Pacific region. The four contacts are either the registrant, administrative, technical or billing.

The Sunrise process is separated into 3 main phases. Sunrise 1 provides priority for Governments in the community to reserve and register domains; Sunrise 2 allows registered trade mark owners to obtain domain names corresponding to their marks; and Sunrise 3 allows registered companies, organizations and other entities in the DotAsia Community to obtain domains corresponding to their entity names.

Sunrise 2 (for trade mark owners) will be divided into 3 sub-phases:

• valid and registered trade marks with demonstrable usage in the class for which it was registered, and was applied for before 16 March 2004;
• valid and registered trade marks applied for before 6 December 2006;
• registered trade mark combined with the relevant word(s) from the applicable class, as per the trade mark registration (e.g. sprusons-services.asia).

There is no need for the trade mark, that is the basis for a .asia domain name application, to be filed within the Asia region.

Details of the arrangements will be announced as they become confirmed. Stay tuned!

For more information please contact Gerard Skelly, Principal, Spruson&Ferguson Trade Marks Team: gerard.skelly@sprusons.com.au