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New Parallel Importation Laws in Australia

Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 receives Royal Assent on 24 August 2018

The proposed changes to parallel importation law that we blogged about in January 2018 and May 2018 have become law.

The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (the Act) received Royal Assent on 24 August 2018.

Part 1 of the Act amends the Trade Marks Act 1995 (Cth) (Trade Marks Act) to clarify the circumstances in which the parallel importation of trade marked goods does not infringe a registered trade mark. Part 1 of the Act commenced on 25 August 2018.

Trade mark owners will now find it much more difficult to prevent parallel imports coming into Australia.

The Act also includes the following measures in response to the Productivity Commission’s inquiry into Australia’s IP system:

  • amendments to the Trade Marks Act to change the period that must elapse before non-use actions can be made against registered trade marks, from five years to three years;
  • amendments to the Plant Breeder’s Rights Act 1994 (Cth) with respect of plant breeder’s rights in essentially derived varieties; and
  • amendments to the Patents Act 1990 (Cth) such that patentees of pharmaceutical patents with an extended term are no longer required to provide the Secretary of the Department of Health with certain data.
Copyright 2020 K & L GatesNational Law Review, Volume VIII, Number 243


About this Author

Chris Round, Partner, KLGates

Mr. Round is an intellectual property lawyer with extensive experience in the registration of intellectual property rights and associated litigation. He represents clients in copyright, trade mark, patent, designs and associated trade practices litigation in all Australian Courts.

Mr. Round prosecutes trade mark applications and oppositions before IP Australia and the Intellectual Property Office of New Zealand (IPONZ) and appears at Australian trade mark hearings

Olivia Coburn, IP lawyer, KLGates

Ms. Coburn is a lawyer in the Intellectual Property group in Melbourne. She regularly advises clients on protecting and enforcing intellectual property rights including trade marks, design and copyright infringement as well as the misuse of confidential information and trade practices cases.

Ms. Coburn also assists clients with advice on brand name and product clearance, domain name recovery, customs programs, anti-counterfeiting programs and the filing and prosecution of registered designs