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Wednesday, 28 June 2000
Page: 18400


Mr ENTSCH (Parliamentary Secretary to the Minister for Industry, Science and Resources) (10:04 AM) —I move:

That the bill be now read a second time.

The objective of this bill is to amend the Trade Marks Act 1995 (Trade Marks Act) to give effect to the provisions of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the protocol). This is a necessary first step should a decision later be made for Australia to accede to the protocol.

This government has ensured that wide-ranging consultations with state and federal agencies, and relevant interest groups and individuals, are undertaken before a decision on accession to an international treaty is undertaken. It is also a requirement of the treaty making process that any legislative requirements to give effect to the provisions of the treaty must be in place before accession. This bill ensures that the legislative steps required, if Australia does accede to the protocol, have been taken.

The Trade Marks Act provides for the registration of trademarks and sets out and protects the rights deriving from registration. A trademark is a sign used in the course of trade to distinguish goods or services. The protocol, a multilateral treaty administered by the World Intellectual Property Organization (WIPO), sets up an international registration system for trademarks. The amendments contained in this bill will enable the Trade Marks Office to process international applications and registrations under the protocol should the decision to accede be made. The amendments in this bill do not involve any substantive changes to our domestic trademarks law however, and overseas applicants designating Australia will need to meet the requirements of the Australian Trade Marks Act before protection is granted here.

The globalisation of commerce and the rise of the new information economy have resulted in an increasing interest from traders in protecting their trade marks not only in their home market but also in markets overseas. Most of Australia's major trading partners are members of the protocol, or are actively working towards accession. There are currently 46 contracting states, including Japan, the United Kingdom, European Union countries and China. The United States of America recently announced its intention of proceeding to accession, and I understand that Singapore and the Republic of Korea are also making progress towards acceding.

Access to the benefits of the protocol would enhance the ability of Australian business enterprises to compete effectively in overseas markets. By investigating accession, the government is demonstrating its commitment to helping Australian business to compete internationally by `cutting costs and red tape' wherever possible. Australian traders seeking to protect their trade marks in overseas markets would benefit from a considerable saving of time and expense. A study in the United States reports that cost savings of more than 67 per cent can be expected.

The international registration system allows a trade mark owner to file one application and pay one set of fees to cover multiple countries that are party to the protocol—at present, Australian traders seeking to protect their trade marks in export markets need to file several applications, in different languages according to where protection is sought, and pay separate fees in the relevant foreign currencies.

Apart from obtaining international protection, the streamlining of procedures and the resultant cost savings under the international registration system is equally applicable to maintaining that protection. For medium to large enterprises with large numbers of trade marks, this represents a great saving of time and expense. To illustrate: under the protocol, the protection granted in all designated member countries may be renewed simultaneously through the payment of the appropriate fee to the international bureau of WIPO. Similarly, any changes to registration details, such as a change of address, may be actioned by a single notification to the bureau. Currently, an Australian enterprise with multiple registrations in a host of different countries would need to file numerous amendment applications. Under the protocol, a single amendment application could be filed with WIPO.

Accession to the protocol would also assist Australian businesses to take advantage of the opportunities offered by electronic commerce, by making it easier for them to secure widespread protection of their trade marks at a lower cost. In the borderless marketplace of the Internet, the ability to protect and promote Australian brands and trade marks, more cheaply and with less red tape, and in as many markets as possible, is necessary if innovative and entrepreneurial Australian enterprises are to take full advantage of electronic commerce.

Australia's accession to the protocol would not only be advantageous to Australian business enterprises, it would also serve to enhance Australia's reputation as a leading member of the intellectual property (IP) community regionally. Australia has always been at the forefront in acceding to international agreements aimed at harmonising and normalising the administration of IP rights. Accession to the protocol would be consistent with this history. By investigating accession, the government is demonstrating its commitment to maintaining a competitively excellent IP system that ensures our traders are able to protect their IP rights both domestically and abroad. If Australia accedes to the protocol, this step would most likely trigger increasing interest in the treaty in our immediate region, and undoubtedly more and more countries in the Asia-Pacific would progressively come on line.

There are no contributions payable to WIPO by contracting states to the Madrid protocol. There will be no additional cost to the government of administering this legislation, and the cost recovery nature of operation of the Trade Marks Office will be maintained. The implementation costs arising from the development of new practices and procedures, as well as staff training and modifications to the Trade Marks Office computer system, could be met within current budgetary arrangements.

Consultation to date has revealed that there is strong general support for Australia's accession to the protocol, particularly amongst users of the trade marks system. However, further close consultations will be held with all interest groups and stakeholders before a final decision on whether to accede to the protocol is made.

I commend this bill to the House and present the explanatory memorandum to this bill.

Debate (on motion by Mr Horne) adjourned.