15. The representative of Australia said that her delegation had provided preliminary responses to the Chairman's question in June but she was now in a position to elaborate on these more fully. Her delegation considered that the Chair's sub-question allowed Members to further explore the information that domestic systems took into account when determining how common names and generic names were addressed in their domestic IP systems. However, her delegation had found the reference to "legally obliged" and "sanctions" to be quite narrow. Accordingly her delegation had constructed its responses based on Australia's system, which included reference to non-legally binding aspects as well as those based in law.
16. With respect to sub-question 1, she said that when determining a trademark in Australia, consistent with Article 15 of TRIPS, trademark examiners considered whether a sign was capable of distinguishing goods or services in the marketplace. On the basis of legislation and practice guidelines, examiners sought to determine how the term might ordinarily be used or understood in the marketplace. Determining whether a trademark was capable of distinguishing the specified goods or services required an assessment of whether the term had sufficient inherent adaptation to distinguish the good or service in the marketplace. A term could not be inherently adapted to distinguish products if it had a commonly understood meaning. Australia generally protected geographical indications through certification trademarks, which differed from ordinary trademarks in that they had to be capable of distinguishing certified goods and services from non-certified goods and services. Such a mark certified the goods as having a certain standard of quality or accuracy, a particular composition or geographical origin, for example.
17. In accordance with established practice, examiners were trained to assess consumer perception in relation to whether the sign or indication was one that other traders were likely to need in the ordinary course of business to indicate their similar products. An examination decision was an administrative decision in Australian law. Examiners used a range of standard sources and resources to determine whether trademarks, including certification trademarks, were capable of distinguishing goods or services. These resources included, but were not limited to, dictionary references, gazette references, industry information, use by multiple traders as a descriptive term, Internet searches, decisions in other jurisdictions, observations by applicants and observations by third parties.
18. With regard to available sanctions, if an examiner failed to take information into account, Australia did not apply sanctions to trademark examiners but provided possible recourses. If an interested person was not satisfied with the examiner in relation to a trademark, that person might pursue action through an administrative hearing process. Further review mechanisms were also available through the courts, including rejections of the trademark application. Hearing decisions could be appealed to the prescribed court. Under these proceedings an application might be found to be for a term accepted as a generic term.
19. Regarding the taking into account of additional sources of information, such newly available information might be taken into account in a number of ways. If additional new information was provided by way of third party observation, it might be taken into account. A third party observation could take place by way of a letter to the office attempting to prevent registration and providing reasons for that. The information contained might be taken into account but the office was not obliged to act upon it. In such a case the office did not engage with the third party on the issues but provided information that registration of the application might be opposed if it was accepted. New information could also be provided in support of registrations by way of evidence from third parties. If additional new information became available after acceptance but before registration of the trademark, it might be taken into account by way of revocation proceedings or opposition to registration. Any person might oppose the registration of a trademark on a specific range of grounds. These grounds included almost all of the grounds for which an application could have been rejected during examination and also some additional grounds.
20. Finally, if additional new information became available after registration, action might be taken through the courts. In Australia, action through the courts in relation to new information included rectification action to achieve either amendment or cancellation of the trademark. Action might be taken in the courts on any of the prescribed grounds on which registration could have been opposed in the first place. If a registered trademark contained or consisted of a sign that became generally accepted within the relevant trade as a sign that described or was the name of an article, substance or service, rather than a product or service from one particular trade source, then the registered owner lost the exclusive right to use or authorize other persons to use the trademark in relation to the particular article, substance or service.
