87. The representative of Australia said that her delegation shared the views of the European Union that it was unfortunate that the Special Session was not yet in a position to enter an end-game scenario. For her delegation, the Special Session's ability to engage in the crucial technical work necessary to reach that end-game point had been unfortunately hamstrung by some Members' insistence on linking the issue of the register to other unrelated issues which were not mandated aspects of the Doha Development Agenda.
88. Moreover, progress in the Special Session was limited by the absence of negotiating texts on the table. It had long expressed frustration with the unwillingness of some Members to submit formal proposals to the Special Session which were both consistent with the mandate and at a comparable level to the joint proposal. Such a submission would provide clarity on the status of the various ideas and documents circulated and would allow a genuine technical dialogue on a text, enabling this negotiating group to fulfil their mandate most effectively.
89. Her delegation considered that active engagement in technical discussions by all Members would be the most useful way to identify areas of convergence that were fundamental to advance their work in this Session. It welcomed the efforts by the European Union in that context but did not necessarily share their views on the content of possible areas of convergence. She wondered whether a more fulsome technical discussion would allow them to find those areas of convergence in the future.
90. With that in mind, she would provide an elaboration on the response to the Chairman's second sub-question. On the question of substantiation of genericness, in Australia, rather than characterizing the genericness of a term as something that required substantiation, the fact that the term was a common name for a good or a service was viewed as a ground for that term's inability to be capable of distinguishing the good or service, i.e. its inability to be registered as a trademark. In Australia, genericness was generally determined by the court, for example with respect to a registered trademark which was being challenged by another party who had considered it as having lost its significance as a trademark or that it had become generally accepted within the relevant trade as a generic. There was no explicit provision in the trademark legislation relating to the particular level of substantiation required to raise the issue of genericness. During an application for a process for a protection of a term, if a trademark examiner found that grounds for rejection existed because the indication was common or generic, the applicant could attempt to overcome the ground for rejection by providing information sufficient to persuade the examiner that the sign was not generic, i.e. similarly to the process in New Zealand and, as she had understood, in Switzerland, the burden would be on the applicant. In a practical sense, once the ground had been identified, the burden was on the applicant to show that the sign was not generic. In circumstances where a trademark had been accepted, third parties might challenge the acceptance of the trademark. In Australia the burden was with the opponent to persuade the officer that the mark was common or generic.
91. In circumstances where a protected term was challenged under the trademark system in Australia, a challenge to a geographical indication registered under the trademark system must be taken to court and the burden of proof in that circumstance was for the challenging party to prove that a term was generic, as initially there would be a presumption of validity in favour of the registered trademark. Only a court could make a definitive finding of genericism for trademarks and that would normally be as the result of what was known as a cancellation action. An agreed person or the registrar of trademarks might make an application to a prescribed court to amend or cancel a registered trademark if it became generally accepted within the relevant trade as a sign or term that described, or was the name of, an article, substance or service.
92. In concluding, she said that her delegation was looking forward to hearing from all its trading partners similar levels of detail on their practices with respect to the Chairman's sub-questions and with respect to the proposals that they supported.
