Statutory Rules 1995 No. 341 as amended
made under the
Trade Marks Act 1995
This compilation was prepared on 16 October 2010 taking into account amendments up to SLI 2010 No. 248
Prepared by the Office of Legislative Drafting and Publishing, Attorney-General’s Department, Canberra
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Part 1 Preliminary
1.2 Commencement 14
Part 2 Interpretation
2.2 Period expressed in months 16
Part 3 Trade marks and trade mark rights
3.2 Period in which action for infringement may be brought 17
Part 3A Assisted filing service
3A.1 Purpose of Part 18 3A.2 Definitions for Part 18
3A.3 Request for filing assistance — form of request 18 3A.4 AFS request — assessment by Registrar 20 3A.5 AFS request — formal requirements for
amendment or proceeding to Part 4 application 20
Part 4 Application for registration
4.2 Application in approved form — requirements for filing 23 4.2AA Divisional application — additional requirement for filing 24
4.2A AFS request submitted as application — requirements for filing 24
4.4 Specification of goods and/or services 26 Page
4.6 How to claim priority 27
4.7 Publication of particulars of application 27
4.8 Examination of application — report to applicant 28
4.9 Examination — applicant’s response to report 29
4.10 Examination — further report to applicant 29
4.11 Examination — additional requirements 30
4.12 Periods after which applications lapse 30
4.13 Deferment of acceptance 31
4.14 Period for which acceptance is deferred 33
4.15 Trade marks containing etc certain signs 36 4.15A Grounds for rejection — trade mark identical etc to trade mark protected under Madrid Protocol 36
4.18 Request for expedited examination of application 38
4.19 Expedited examinations 39
Part 5 Opposition to registration
5.2 Extension of time for filing — grounds 40
5.3 Extension of time for filing — applications 41
5.4 Extension of time for filing — grant of extension 41
5.5 Copy of earlier application to be available to opponent 42
5.6 Opposition proceedings 43
5.7 Evidence in support 43
5.8 Notice that opponent will not rely on evidence in support 43
5.9 Evidence in answer 43
5.10 Period for service of a copy of the evidence in answer 44
5.11 Notice that applicants will not rely on evidence in answer 44
5.12 Evidence in reply to evidence in answer 45
5.13 Notice that opponents will not rely on evidence in reply to evidence in answer 45
5.14 Hearing of opposition 46
5.15 Extension of period to serve evidence and service of further evidence 47
5.16 Conduct of opposition proceedings generally 48
5.17 Registrar to give notice of dismissal of proceedings 48 Page
5.19 Amendment of notice of opposition 50
Part 6 Amendment of application for
registration of a trade mark and other
documents
6.2 Request to amend before publication of details 51
6.3 Filing of declarations 51
6.4 Notification of amendments 52
6.5 Amendment after particulars published — notice of opposition 52
6.6 Amendment after particulars published — opposition proceedings 52
Part 7 Registration of trade marks
Division 1 Initial registration
7.2 Particulars to be entered in the Register 54
Division 2 Renewal of registration (general)
7.4 Notice of renewal due — when and how given 55
7.5 Notice of renewal 55
Division 3 Renewal of registration (registration delayed for 10 or more years after filing date)
7.7 Notice about renewal (Act s 80C) 56
7.8 Notice of renewal (Act s 80E) 56
Part 8 Amendment and cancellation of registration
8.2 Amendment or cancellation — matters for the court 58 Page
8.3 Grounds for application for rectification of Register — registered trade mark identical etc to trade mark protected under Madrid Protocol 58
8.5 Amendment because of inconsistency with international agreements — opposition proceedings 59
Part 9 Removal of trade mark from register for non-use
9.2 Notification of applications 60
9.3 Notice of opposition to removal 60
9.4 Opposition proceedings before the Registrar 61
Part 10 Assignment and transmission of trade marks
10.1 Applications for assignment etc to be recorded or entered 62
10.2 Recording of assignment etc — trade marks not registered 62
10.3 Particulars of recorded assignment or transmission to be published 63
10.4 Recording of assignment etc of registered trade marks 64
10.5 Notice to persons recorded as claiming right or interest in trade marks 65
Part 11 Voluntary recording of claims to interests in and rights in respect of trade marks
11.1 Amendment of particulars — claimed interests or rights 66
11.2 Amendment of name, address and address for service — claims not in the Register 66
11.3 Cancellation of particulars — claimed interests or rights 67 Page
Part 13 Importation of goods infringing Australian trade marks
13.1 Notice of objection to importation ⎯ accompanying documents 69
13.2 Notice of objection to importation — authorised users 69
13.3 Period for compliance with Customs CEO’s request for information etc 70
13.4 Modification of the Act in its application to Norfolk Island 70
13.5 Modification of the Act in its application to Christmas Island 70
13.6 Modification of the Act in its application to Cocos (Keeling) Islands 70
Part 16 Certification trade marks
16.1 Copy of rules to be filed 71
16.2 Documents to be sent to Commission 71
16.3 Initial assessment of applications by Commission 71
16.4 Holding of conferences 73
16.5 Consideration of applications 74
16.6 Criteria for Commission consideration of rules 75
16.7 Matters to be included in advertisement of adverse decision 75
16.8 Applications to vary rules 76
16.9 Consideration of applications to vary rules 76
16.10 Decision on variation of rules 76 16.10A Assignment of unregistered certification trade marks 77
16.11 Assignment of registered certification trade marks 78
16.12 Publication of rules 79
Part 17 Defensive trade marks
17.1 Evidence in support of applications 81
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Part 17A Protected international trade marks under the Madrid Protocol
17A.1 Purpose of Part 83 17A.2 Definitions for Part 83 17A.3 Meaning of priority date 84 17A.4 Meaning of date of effect 85
Division 2 Application for international registration of a trade mark
17A.5 Purpose of Division 85 17A.6 Eligibility to apply for international registration 86 17A.7 Application for international registration 86 17A.8 Functions of Registrar 86 17A.9 Time limit for Registrar to send application to International Bureau 87 17A.10 Subsequent designations 87
Division 3 International registration designating Australia
Subdivision 1 General 17A.11 Purpose of Division 88 17A.12 Registrar to examine, and report on, IRDA 88 17A.13 Use of trade mark 88 17A.14 Specification of goods and services 89 17A.14A Representation of trade marks 89 17A.15 Claim for priority 89 17A.16 Examination of IRDA — report to holder 90 17A.17 Examination — holder’s response to report 91 17A.18 Examination — further report to holder 91 17A.19 Examination — additional requirements 92 17A.20 Period within which final decision on examination must be notified 92 17A.21 Deferment of acceptance 93 17A.22 Period for which acceptance is deferred 95 17A.23 Expedited examination 98 17A.24 Final decision on examination 98 17A.25 Notice of final decision on examination 98 17A.26 Appeal 99 17A.27 Revocation of acceptance 99
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Subdivision 2 | Grounds for rejecting IRDA | |
17A.28 | Grounds for rejecting IRDA | 100 |
Subdivision 3 | Opposition to IRDA | |
17A.29 | Opposition | 101 |
17A.30 | Extension of time for filing | 101 |
17A.31 | Grounds for opposing IRDA | 101 |
17A.32 | Circumstances in which opposition may proceed in | |
name of a person other than the person who filed | ||
the notice | 102 | |
17A.33 | Opposition proceedings | 102 |
17A.34 | Decision on opposition | 103 |
17A.35 | Appeal | 103 |
Subdivision 3A | Cancellation or limitation of an international | |
registration | ||
17A.35A | Cancellation | 104 |
17A.35B | Duties and powers of Registrar — notification of | |
limitation by International Bureau | 104 | |
Subdivision 4 | Extension of protection | |
17A.36 | When trade mark becomes a protected | |
international trade mark | 105 | |
17A.37 | Notice that trade mark is a protected international | |
trade mark | 107 | |
17A.38 | Disclaimer | 108 |
Division 4 | Protected international trade marks — rights and protection | |
17A.39 | Rights given to, and protection of, protected | |
international trade marks | 109 | |
17A.40 | Circumstances in which action may not be brought | 110 |
Division 5 | Protected international trade marks — | |
amendment or cessation of protection | ||
Subdivision 1 | Amendment or cessation of protection because of cancellation, limitation or non-renewal of | |
international registration | ||
17A.41 | Cancellation of international registration | 110 |
17A.41A | Duties and powers of Registrar — notification of | |
limitation by International Bureau | 111 | |
17A.42 | Failure to renew international registration | 112 |
Subdivision 2 | Amendment or cessation of protection by Registrar | |
17A.42A | Registrar’s powers to amend or cease protection | 112 |
17A.42B | Notice to be given | 115 |
8 | Trade Marks Regulations 1995 |
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17A.42C 17A.42D 17A.42E 17A.42F Subdivision 3 17A.43 | Hearings and procedure Effect of amendment or cessation of protection by Registrar Registrar to notify Customs CEO Appeal to Federal Court Amendment or cessation of protection by prescribed court Amendment or cessation of protection — contravention of condition | 115115116117 117 |
17A.44 17A.45 17A.46 | Amendment or cessation of protection — loss of exclusive rights to use trade mark Amendment or cessation of protection — other specified grounds Amendment or cessation may not be granted if holder not at fault etc | 118119119 |
17A.47 Subdivision 4 17A.48 | Duties and powers of Registrar Cessation of protection for non-useCessation of protection for non-use | 120 120 |
Division 6 | Collective and certification trade marks | |
17A.49 | Collective trade marks | 122 |
17A.50 | Certification trade marks | 123 |
Division 7 | Transformation of cancelled international registrations | |
17A.51 17A.52 | Application of Division Transformation of IRDA | 125125 |
17A.53 | Transformation of protected international trade mark | 126 |
Division 8 | Concurrence between registration and international registration | |
17A.54 | Effect of registration and protection of the same trade mark | 126 |
17A.55 | Effect of cancellation, removal or expiry of registered trade mark | 127 |
Division 9 | Change in ownership of international registration | |
17A.56 17A.57 | Application of Division Collective trade marks | 127127 |
17A.58 | Protected certification trade marks | 128 |
17A.58A | Unprotected certification trade marks | 128 |
Trade Marks Regulations 1995 | 9 |
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17A.59 Trade marks affected by claimed interests and rights 128 17A.60 Recording change of ownership 129
Division 10 Recording of claimed interests and rights
17A.61 Application to have claims recorded 129 17A.62 Recording of claims 129 17A.63 Notification of matters affecting trade mark 130 17A.64 Record not proof etc of existence of right etc 130 17A.65 Amendment or cancellation of record 130
Division 11 Miscellaneous
17A.66 Record of International Registrations 130 17A.67 Inspection 131 17A.68 Evidence — the Record of International Registrations 132 17A.69 Evidence — international instruments 132 17A.70 Correction of errors or omissions in Record of International Registrations 133 17A.71 Passing off actions 133 17A.72 Documents to be made available for public inspection 133 17A.73 Security for costs 134
Part 19 Administration
19.2 Persons to whom Registrar may delegate (Act, s 206 (1)) 135
Part 20 Registered trade marks attorneys
Division 1 General
Division 2 Obtaining registration for first time
20.3 Evidence that applicant meets registration requirements 136
20.4 Certificate of registration 137
20.5 Evidence of academic qualifications 137
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20.6 20.7 20.8 20.9 20.10 | Academic qualifications Evidence of knowledge requirements Knowledge requirements Exemption from a requirement in Schedule 5 to Patents Regulations Prescribed offences | 138138138140140 | |
20.11 | Application of Schedule 5 to Patents Regulations | 141 | |
Division 3 20.12 | Accreditation of courses of studyAccreditation of courses of study | 141 | |
Division 4 | Board examinations | ||
20.13 | Board examinations | 141 | |
Division 5 20.14 | Maintaining registration, removal from Register and returning to RegisterMaintaining registration, removal from Register and returning to Register | 142 | |
Division 6 20.15 | DisciplineDiscipline | 142 | |
Division 7 20.16 | Rights of registered trade marks attorneysLien | 143 | |
Part 21 | Miscellaneous | ||
Division 1 | 21.1 21.2 21.3 21.4 | Applications and other documentsCompliance with instructions on approved forms Filing of documents — requirements as to form Filing of documents — common requirements Filing of documents — treatment of non-complying documents | 144144144145 |
21.5 | Filing of documents — date of receipt to be marked | 145 | |
21.6 | Declarations | 146 | |
21.7 | Declarations — additional material | 147 | |
21.8 | Notification of service | 148 | |
21.9 21.10 | Notice of withdrawal of applications etc Withdrawal of application etc — Registrar’s notice to applicants | 148148 |
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21.11 Change of address for service — notice to interested persons 149 21.11A Documents to be made available for public inspection 149
Division 2 Proceedings before the Registrar
21.13 Determination of costs 151
21.14 Conduct of proceedings generally 151
21.15 Hearings by Registrar 152
21.16 Registrar not required to hold hearings 153
21.17 Evidence in proceedings 153
21.18 Documents not in English 154
21.19 Registrar may use information available 154
21.20 Statements of reasons for decision 154
Division 3 General
21.22 How fees are to be paid 156
21.23 Notice of non-payment of fee 157
21.24 Refunds etc of fees 157 21.24A Period for doing certain acts — office not open for business 158 21.24B Days when office not open for business 158 21.24C Period for doing certain acts — acts to which section 223A does not apply 158
21.26 Extension of time — notice of opposition 159
21.27 Extension of time — opposition proceedings 160
21.28 Extension of time — prescribed acts and documents 160
21.29 Convention countries 161
21.30 Rights of registered patent attorneys 162
21.31 Incapacity of certain persons 162
21.32 Destruction of documents 162
21.33 Directions not otherwise prescribed 163
21.34 Requirements cannot be complied with for reasonable cause 163
21.35 Review of decisions 163
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Part 22 Transitional provisions
22.2 Fees payable in relation to certain matters 166
22.3 Certain delegations continue 167
22.4 Certain deferments continue 167
22.5 Certain extensions of time continue 168
22.6 Deferment of acceptance — certain applications 168
22.7 Trade marks attorneys 168
22.8 Trade marks attorney examination requirements 169
Schedule 1 Classification of goods and services 171 Part 1 Classes of goods 171 Part 2 Classes of services 174
Schedule 2 Signs that may not be registered as trade marks 176
Schedule 3 Modifications of Part 13 of the Act — Norfolk Island 177 Part 1 177 Part 2 179
Schedule 4 Modifications of Part 13 of the Act — Christmas Island 180
Schedule 5 Modifications of Part 13 of the Act — Cocos (Keeling) Islands 183
Schedule 6 Offices of persons to whom registrar may delegate 186
Schedule 7 Requirements for documents 187
Schedule 8 Costs, expenses and allowances 188 Part 1 Costs 188 Part 2 Expenses and allowances 189
Schedule 10 Convention countries 196
Notes 199 Regulation 1.1
These Regulations are the Trade Marks Regulations 1995.
These Regulations commence on 1 January 1996.
Regulation 2.1
In these Regulations, unless the contrary intention appears:
ACCC means the Australian Competition and Consumer Commission established under the Trade Practices Act 1974. accredited course of study means a course of study that is
accredited by the Board under regulation 20.2A of the Patents Regulations 1991. Act means the Trade Marks Act 1995. certificate of verification means a statement:
International Register has the meaning given by regulation 17A.2. international registration has the meaning given by regulation
17A.2. IRDA has the meaning given by regulation 17A.2.
Regulation 2.2
Madrid Protocol means the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks, as signed at Madrid on 28 June 1989.
month, for a period with a length expressed in months, has the
meaning given by regulation 2.2. priority date, for a trade mark that is the subject of an IRDA or a protected international trade mark, has the meaning given by regulation 17A.3.
protected international trade mark has the meaning given by
regulation 17A.2. Record of International Registrations has the meaning given by regulation 17A.2.
In these Regulations, a period expressed in months and dating from an event, ends:
Note This provision displaces section 36 of the Acts Interpretation Act 1901, and is in accordance with the Madrid Protocol. The difference between the two occurs when the initiating event is on the last day of acalendar month, which has fewer days than the month in which the period ends. For example, a period of 3 months from an event on 30 Septemberends on 30 December under this rule; it would end on 31 December under the Acts Interpretation Act 1901 provision.
Regulation 3.2
3.2 Period in which action for infringement may be brought
For the purposes of paragraph 26 (1) (b) of the Act (which deals with powers of the authorised user of a trade mark), the prescribed period is 2 months from the day on which the authorised user of a trade mark asks the registered owner of the trade mark to bring an action for infringement of the trade mark.
Regulation 3A.1
Division 1 General
3A.1 Purpose of Part
This Part provides for an assisted filing service to enable a person proposing to make an application under Part 4 of the Act to request:
3A.2 Definitions for Part
In this Part: AFS request has the meaning given by regulation 3A.3. requester has the meaning given by regulation 3A.3.
3A.3 Request for filing assistance — form of request
Regulation 3A.3
Regulation 3A.4
(7) The Registrar must amend the AFS request on receipt of an amendment:
3A.4 AFS request — assessment by Registrar
3A.5 AFS request — formal requirements for amendment or proceeding to Part 4 application
(1) The requester may, within 5 working days after being informed by the Registrar under subregulation 3A.4 (2):
Regulation 3A.5
(a) must amend the AFS request; and
Regulation 3A.5
(6) An AFS request is discontinued if a requester fails to submit an application under Part 4 of the Act after following the procedure mentioned in subregulation (1).
Regulation 4.2
4.2 Application in approved form — requirements for filing
Regulation 4.2AA
4.2AA Divisional application — additional requirement for filing
A divisional application must contain the following information:
4.2A AFS request submitted as application — requirements for filing
An AFS request that is submitted as an application for registration of a trade mark under this Part may be taken as having been filed only if the Registrar is satisfied that all fees have been paid in respect of the application within the period of 5 working days mentioned in subregulation 3A.5 (1).
Regulation 4.3
Regulation 4.4
Regulation 4.7
(7) If any of the goods and/or services cannot be specified using terms referred to in subregulation (6), the applicant must provide sufficient information to enable the Registrar to decide the classification of the goods and/or services.
For the purposes of subsection 29 (1) of the Act (which deals with claims for priority), the prescribed period in relation to a claim for a right of priority for an application is 2 working days after filing the application.
(1) For the purposes of section 30 of the Act (which deals with publishing particulars of applications), the Registrar must publish the following particulars of the application:
Regulation 4.8
incorporated under the law of New South Wales; is accompanied by a written request by the applicant to postpone publication of the particulars of the application, the Registrar must publish the particulars of the application as soon as practicable after the expiration of 3 months after the date on which the application was filed.
(1) For the purposes of section 31 of the Act (which deals with examination and reporting), if in the course of an examination of an application the Registrar reasonably believes that:
Regulation 4.10
rejecting it; the Registrar must report that belief in writing to the applicant.
Note Section 37 of the Act and regulation 4.12 deal with the lapsing of an application before acceptance.
Note Section 65 of the Act relates to the amendment of an application after particulars of the application have been published.
(1) On receipt of a response under regulation 4.9, the Registrar must consider the response.
Regulation 4.11
(2) If the Registrar continues to believe that:
rejecting it; the Registrar must report that belief in writing to the applicant.
(1) For the purposes of subsection 37 (1) of the Act (which deals with lapsing), the prescribed period, for an application in respect of which a report is made under regulation 4.8, is:
(a) except as provided by paragraph (b) — 15 months from the date of that report (whether or not a further report is made under regulation 4.10); or
Regulation 4.13
(b) if a further report raises grounds under Division 2 of Part 4 of the Act for rejecting the application that were not raised in the report made under regulation 4.8 — 15 months from the date of the further report.
a result of a previous application of this subregulation; would be extended for more than 6 months after the end of the relevant period prescribed in subregulation (1).
Note 1 If an extension of the time for acceptance of an application is sought after the end of a prescribed period, or of an extended period mentioned in subregulation 4.12 (3), application must be made under section 224 of the Act.
Note 2 If a period prescribed in subregulation 4.12 (1) has been extended by 6 months, any application for a further extension of time must be made under section 224 of the Act.
(1) The Registrar may, at the request of the applicant in writing, defer acceptance of an application for registration of a trade mark, if:
Regulation 4.13
(iii) in respect of which an application for registration, or an IRDA, has been made by another person; and
(c) the applicant:
the Act or subregulation 4.15A (5); in relation to the applicant’s trade mark and the other trade mark; or
(iii) has filed an application under section 92 of the Act or regulation 17A.48 in respect of the other trade mark and is awaiting the finalisation of proceedings in respect of that application; or
Regulation 4.14
(1) The period for which acceptance of an application is deferred (the deferment period) begins immediately after:
Regulation 4.14
(c) (v) — when the registration of the other trade mark is renewed or the other trade mark is removed from the Register; and
(ea) if acceptance is deferred because of subparagraph
4.13 (1) (c) (vi) — when the international registration of the other trade mark is renewed or the other trade mark is removed from the International Register; and
(f) if acceptance is deferred because of paragraph 4.13 (2)
(a) — at the end of 2 months after the beginning of the period in which:
Regulation 4.14
Regulation 4.15
For the purposes of paragraph 39 (2) (a) of the Act (which deals with signs), the following signs are prescribed:
Note 1 For the meaning of EL rights, see section 5 of the Circuit LayoutsAct 1989.
Note 2 A list of the marks mentioned in paragraph 4.15 (e) is available at the Trade Marks Office and sub-offices.
(1) For section 189A of the Act, and subject to subregulations (3) and (5), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
received notification of an IRDA; held by another person in respect of similar goods or closely related services; and
Regulation 4.15A
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the other trade mark in respect of the similar goods or closely related services.
Note Under subsection 189A (3) of the Act, regulations made for the purposes of section 189A:
Division 2 of Part 4 of the Act includes provisions relating to the grounds on which an application for the registration of a trade mark must be rejected.
(2) For section 189A of the Act, and subject to subregulations (3) and (5), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’sservices) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
received notification of an IRDA; held by another person in respect of similar services or closely related goods; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the other trade mark in respect of the similar services or closely related goods.
Note Under subsection 189A (3) of the Act, regulations made for the purposes of section 189A:
Division 2 of Part 4 of the Act includes provisions relating to the grounds on which an application for the registration of a trade mark must be rejected.
(3) If, in a case mentioned in subregulation (1) or (2), the Registrar is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
Regulation 4.18
(b) that, because of other circumstances, it is proper to do so; the Registrar may accept the application for the registration of
the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose.
applicant’s trade mark; the Registrar must not reject the application because of the existence of the other trade mark.
Note Section 44 of the Act provides for rejection of an application on the grounds that the trade mark is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark for which registration is being sought.
Regulation 4.19
(2) to another application for registration of a trade mark is a relevant circumstance for the purposes of that subregulation.
Regulation 5.1
For the purposes of subsection 52 (2) of the Act (which deals with notice of opposition), the period for filing a notice of opposition is 3 months from the day on which the acceptance of the application is advertised in the Official Journal.
Regulation 5.4
An application for an extension of time in which to file a notice of opposition must:
Note Regulations 21.6 and 21.7 deal with making and filing declarations.
Regulation 5.5
(5) An extension of time must be for such period:
5.5 Copy of earlier application to be available to opponent
Regulation 5.9
For the purposes of subsection 54 (2) of the Act (which deals with opposition proceedings), regulations 5.7 to 5.17 set out the procedure to be followed in dealing with an opposition after a notice of opposition is filed.
5.8 Notice that opponent will not rely on evidence in support
(1) If the applicant intends to rely on evidence in answer to the opposition, the applicant must serve a copy of the evidence in
Regulation 5.10
answer on the opponent within the period for service of a copy of that evidence under regulation 5.10.
(2) As soon as practicable after the applicant serves a copy of the evidence in answer on the opponent, the applicant must file with the Registrar:
5.10 Period for service of a copy of the evidence in answer
5.11 Notice that applicants will not rely on evidence in answer
(1) If an applicant does not intend to rely on evidence in answer to the opposition, the applicant must serve on the opponent, within the period for service of a copy of the evidence in answer, a copy of a notice stating that the applicant does not intend to rely on evidence in answer to the opposition.
Regulation 5.13
(2) As soon as practicable after the applicant serves a copy of the notice on the opponent, the applicant must file with the Registrar:
5.13 Notice that opponents will not rely on evidence in reply to evidence in answer
Regulation 5.14
(1) An applicant may ask the Registrar to hear the parties to opposition proceedings, if:
the opponent has not served a copy of the evidence in support or a copy of the notice.
(2) A party to opposition proceedings may ask the Registrar to hear the parties to the opposition proceedings, if:
the applicant has not served a copy of the evidence in answer or a copy of the notice; or
the opponent has not served a copy of the evidence in reply or a copy of the notice.
(3) The Registrar must comply with a request made in accordance with subregulation (1) or (2).
Regulation 5.15
(4) If:
the Registrar under subregulation (2); and a request is not made, the Registrar may, on his or her own initiative, give an opportunity to the parties to the opposition proceedings to be heard in relation to those proceedings.
Note Regulations 21.15 and 21.16 deal with hearings.
5.15 Extension of period to serve evidence and service of further evidence
(b) applies — permission to serve a copy of further
evidence; is appropriate.
Regulation 5.16
5.16 Conduct of opposition proceedings generally
5.17 Registrar to give notice of dismissal of proceedings
If opposition proceedings are dismissed under section 222 of the Act (which deals with security for costs) or discontinued, the Registrar must notify the parties in writing that the opposition proceedings have been dismissed or discontinued.
Regulation 5.18
5.18 Grounds for opposition to registration of a trade mark — trade mark identical etc to trade mark protected under Madrid Protocol
(1) For section 189A of the Act, and in addition to anything in Part 5 of the Act, the registration of a trade mark may be opposed on the grounds for rejection mentioned in regulation 4.15A.
Note Under subsection 189A (3) of the Act, regulations made for the purposes of section 189A:
(2) To avoid doubt, and subject to subsection 52 (2) of the Act:
(a) the registration of a trade mark may be opposed on the grounds mentioned in subregulation (1) even if the application for registration of the trade mark was lodged before the commencement of the Trade Marks Amendment Regulations 2005 (No. 1); and
(b) | if: | |
---|---|---|
(i) | a person filed a notice of opposition to the registration of a trade mark before the commencement of the Trade Marks Amendment | |
Regulations 2005 (No. 1); and | ||
(ii) | the notice is stated to have been filed on the grounds mentioned in regulation 4.15A (whether or not the notice states other grounds); |
the notice of opposition is taken, on and after the commencement of those Regulations, to have been validly filed on the grounds mentioned in regulation 4.15A; and
(c) if:
Regulation 5.19
(iii) the person was not entitled to file the notice on those
grounds; the notice of opposition is taken, on and after the commencement of those Regulations, to have been validly filed on the grounds mentioned in section 44 of the Act.
5.19 Amendment of notice of opposition
Note Section 66 of the Act also allows, but does not require, the Registrar to amend a notice at the written request of the person who filed it if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.
Amendment of application for registration of a trade mark and other | Part 6 |
documents | |
Regulation 6.3 |
Part 6 Amendment of application for registration of a trade mark and other documents
6.1 Amendment of applications by Registrar
6.2 Request to amend before publication of details
For the purposes of paragraph 64 (b) of the Act (which deals with amendments before publication), the period for requesting an amendment is 14 days after filing the application for the registration of the trade mark.
6.3 Filing of declarations
If a person requests an amendment under section 64 of the Act (which deals with amendments before publication) or paragraph 66 (a) of the Act (which deals with amendment of other documents), the Registrar may require the applicant to file a declaration stating:
(a) that a clerical error or obvious mistake was made in the application; and
Regulation 6.4
(b) the circumstances in which the error or mistake was made.
Note Regulations 21.6 and 21.7 deal with making and filing declarations.
6.4 Notification of amendments
If the Registrar amends an application, notice or document under Part 6 of the Act, the Registrar must give notice in writing of the amendment to:
6.5 Amendment after particulars published — notice of opposition
6.6 Amendment after particulars published — opposition proceedings
For subsection 65A (4) of the Act (which deals with opposition to granting a request for amendment after particulars of the application have been published), regulations 5.7 to 5.17 (inclusive) apply to an opposition to a request for amendment.
Registration of trade marks | Part 7 |
Initial registration | Division 1 |
Regulation 7.1 |
Part 7 Registration of trade marks
Division 1 Initial registration
7.1 Period in which a trade mark can be registered
the prescribed court or the Tribunal may specify for the purposes of subparagraph (1) (a) (ii) a day that is later than the first-mentioned day in subparagraph (1) (a) (i).
(3) If:
Regulation 7.2
(i) the registration of the trade mark cannot take place on or before the first-mentioned day in subparagraph
(1) (a) (i); and
7.2 Particulars to be entered in the Register
For the purposes of paragraph 69 (2) (c) of the Act (which deals with particulars), the following other particulars of a trade mark must be entered in the Register:
Registration of trade marks | Part 7 |
Renewal of registration (general) | Division 2 |
Regulation 7.5 |
Division 2 Renewal of registration (general)
7.3 Period for request for renewal
For the purposes of subsection 75 (1) of the Act (which deals with requests for renewal), the period within which a person may request the Registrar to renew the registration of a trade mark is 12 months ending on the day on which the registration of the trade mark expires.
7.4 Notice of renewal due — when and how given
7.5 Notice of renewal
For the purposes of subsection 77 (2) of the Act (which deals with renewal), a notice of the renewal of the registration of a trade mark must include:
Part 7 Registration of trade marks
Division 3 Renewal of registration (registration delayed for 10 or more years after filing date)
Regulation 7.6
Division 3 Renewal of registration (registration delayed for 10 or more years after filing date)
7.6 Prescribed period (Act s 80A (3))
For subsection 80A (3) of the Act, the prescribed period is 2 months.
Note Paragraph 80A (3) (b) of the Act provides that the prescribed period commences on the Register entry day.
7.7 Notice about renewal (Act s 80C)
For section 80C of the Act (which deals with renewal of registration, where registration has been delayed for 10 or more years after the filing date of the application for registration) the Registrar’s notice to the registered owner of the trade mark must state:
7.8 Notice of renewal (Act s 80E)
For section 80E of the Act (which deals with renewal within the prescribed period), a notice of the renewal of the registration of a trade mark must:
Regulation 8.1A
Part 8 Amendment and cancellation of registration
8.1 Notice of cancellation
cancel registration of the trade mark; the Registrar will cancel the trade mark at the end of a period of 2 months from the date of the notice.
(3) If:
registration of the trade mark after the end of that period; unless the request from the owner is withdrawn or a prescribed court determines otherwise.
8.1A Notice of revocation
For subsection 84A (4) of the Act, a notice by the Registrar must be:
(a) in writing; and
Regulation 8.2
(b) sent, as the case requires, to the address for service of each of the following:
8.2 Amendment or cancellation — matters for the court
For the purposes of paragraph 89 (2) (a) of the Act (which deals with amendment or cancellation by a prescribed court), a prescribed court, in making a decision under subsection 89 (1) of the Act on an application for rectification of the Register, must take into account the following matters, so far as they are relevant:
8.3 Grounds for application for rectification of Register — registered trade mark identical etc to trade mark protected under Madrid Protocol
For section 189A of the Act, and in addition to anything in Part 8 of the Act, an application for the rectification of the Register in relation to a trade mark may be made on the grounds mentioned in subregulation 5.18 (1).
Note Under subsection 189A (3) of the Act, regulations made for the purposes of section 189A:
Regulation 8.5
8.4 Amendment because of inconsistency with international agreements — notice of opposition
8.5 Amendment because of inconsistency with international agreements — opposition proceedings
For subsection 83A (4) of the Act, regulations 5.7 to 5.17 (inclusive) apply to an opposition to a request for amendment as if references to the applicant, other than in regulation 5.15, were references to the registered owner of the registered trade mark who has requested an amendment.
Regulation 9.1
Part 9 Removal of trade mark from register for non-use
9.1 Applications for removal etc
For paragraph 92 (2) (a) of the Act (which deals with applications), an application for the removal of a trade mark from the Register must be in an approved form.
9.2 Notification of applications
(1) This regulation applies to an application under section 92 of the Act.
Note The application must be in accordance with the Regulations: see Act, para 92 (2) (a) and r 9.1.
(1A) For subsection 95 (1) of the Act (which deals with notification), the Registrar must give notice of the application within 1 month after the application is made.
Note Subsection 95 (1) of the Act applies to an application made to the Registrar under s 92 of the Act.
(2) The notice must be given by sending a copy of the application to each person who, in the opinion of the Registrar, needs to know that the application has been filed.
9.3 Notice of opposition to removal
Note For the requirement to notify the Registrar of service, see regulation 21.8.
Regulation 9.4
9.4 Opposition proceedings before the Registrar
allowed in that subregulation; and the opponent does not request a hearing under subregulation (2), the opposition proceedings are taken to have ended, but are not taken to have been discontinued or dismissed.
Note Regulations 21.15 and 21.16 deal with hearings.
(4) For section 97 of the Act, there is taken to be no opposition to the application if:
Note Section 97 provides for the removal of a trade mark from the Registerif an application for removal is unopposed.
Regulation 10.1
Part 10 Assignment and transmission of trade marks
10.1 Applications for assignment etc to be recorded or entered
For the purposes of paragraphs 107 (2) (b) and 109 (2) (b) of the Act (which deal with assignment and transmission), the following documents are prescribed:
10.2 Recording of assignment etc — trade marks not registered
Regulation 10.3
(c) that person or each of those persons has, within the period of 2 months from the date of the notice mentioned in paragraph (b), given written notice to the Registrar consenting to the assignment or transmission;
the Registrar must record the particulars after the Registrar has received the last notice consenting to the assignment or transmission.
(4) If:
the Registrar must record the particulars as soon as practicable after the end of that period.
10.3 Particulars of recorded assignment or transmission to be published
For the purposes of paragraph 108 (1) (b) of the Act (which deals with assignment and transmission):
Regulation 10.4
10.4 Recording of assignment etc of registered trade marks
the Registrar must record the particulars in the Register after the Registrar has received the last notice consenting to the assignment or transmission.
(4) If:
the Registrar must record the particulars in the Register as soon as practicable after the end of that period.
Regulation 10.5
10.5 Notice to persons recorded as claiming right or interest in trade marks
Regulation 11.1
Part 11 Voluntary recording of claims to interests in and rights in respect of trade marks
11.1 Amendment of particulars — claimed interests or rights
11.2 Amendment of name, address and address for service — claims not in the Register
If a person:
(a) whose claim to an interest in, or to a right in respect of, a trade mark for which registration is sought is recorded; and
Regulation 11.3
(b) whose name, address or address for service has changed
since the claim was recorded; gives notice of the new name or address to the Registrar, the Registrar must amend the record accordingly.
Note In relation to change of a person’s name, address or address for service that is recorded in the Register, see sections 215 and 216 of the Act and regulation 21.3.
11.3 Cancellation of particulars — claimed interests or rights
Regulation 11.3
(5) Unless a request made under paragraph (2) (b) is withdrawn or a prescribed court determines otherwise, the Registrar must, as soon as practicable:
Regulation 13.2
Part 13 Importation of goods infringing Australian trade marks
13.1 Notice of objection to importation ⎯ accompanying documents
For the purposes of subsection 132 (2) of the Act (which deals with notices of objection), the following documents are prescribed in relation to a notice given under that subsection, namely a document setting out the particulars of registration of the registered trade mark.
13.2 Notice of objection to importation — authorised users
Note 1 Examples of documents to which paragraph 13.2 (2) (a) refers include an agreement between the registered owner of a trade mark and theauthorised user of the trade mark and a declaration of the registered owner that the authorised user of the trade mark is able to give notice of objection.
Note 2 An authorised user must also give the documents prescribed byr 13.1 to the Customs CEO — see subs 132 (1) of the Act.
Regulation 13.3
13.3 Period for compliance with Customs CEO’s request for information etc
For the purposes of subsection 143 (2) of the Act (which deals with giving information to the Customs CEO), the period for complying with a request under subsection 143 (1) of the Act is 10 working days from the day on which the request is made.
13.4 Modification of the Act in its application to Norfolk Island
Part 13 of the Act in its application to Norfolk Island is modified as set out in Schedule 3.
13.5 Modification of the Act in its application to Christmas Island
Part 13 of the Act in its application to Christmas Island is modified as set out in Schedule 4.
13.6 Modification of the Act in its application to Cocos (Keeling) Islands
Part 13 of the Act in its application to the Cocos (Keeling) Islands is modified as set out in Schedule 5.
Regulation 16.3
Part 16 Certification trade marks
16.1 Copy of rules to be filed
For the purposes of subsection 173 (1) of the Act, (which deals with rules governing use) an applicant for registration of a certification trade mark must file a copy of the rules governing the use of the certification trade mark at, or as soon as practicable after, the time of filing of the application.
16.2 Documents to be sent to Commission
(1) If, after examining an application, the Registrar is satisfied that:
the Registrar must send to the Commission copies of the documents mentioned in subregulation (2).
(2) For subregulation (1), the documents are:
16.3 Initial assessment of applications by Commission
(1) For the purposes of subsection 175 (1) of the Act (which deals with consideration of applications), the Commission must make an initial assessment of an application and of any documents received under regulation 16.2 in relation to the application as soon as practicable after receipt.
Regulation 16.3
(2) As soon as practicable after the initial assessment, the Commission must:
conference; in relation to the initial assessment not more than 1 month after the date of publication of the Official Journal in which the advertisement is published.
Regulation 16.4
16.4 Holding of conferences
(1) If, in the period that ends 1 month after the date of the advertisement in the Official Journal of an initial assessment:
16.3 (2) or an advertisement under subregulation 16.3 (3);
the Commission must hold the conference before it makes a decision on the application.
(a) a person requests the Commission in writing to hold a conference on a matter included in the initial assessment; and
Regulation 16.5
(b) a person otherwise responds in writing to the Commission in relation to a notice under subregulation 16.3 (2) or an advertisement under subregulation 16.3 (3);
the Commission must hold the conference before it makes a decision on the application.
16.5 Consideration of applications
(1) In considering an application for registration of a certification trade mark for the purposes of making a decision under subsection 175 (2), (3) or (4) of the Act (which deal with
Regulation 16.7
consideration of applications), the Commission must have regard to the matters specified in subregulation (2).
(2) The Commission must have regard to:
16.6 Criteria for Commission consideration of rules
For the purposes of paragraph 175 (2) (b) of the Act (which deals with criteria for rules governing use), the Commission must have regard to the following criteria:
16.7 Matters to be included in advertisement of adverse decision
For the purposes of paragraph 175 (4) (b) of the Act (which deals with advertisement of a decision of the Commission not to give a certificate), the advertisement in the Official Journal must include a statement to the effect that, subject to the Administrative Appeals Tribunal Act 1975, application may be made to the Administrative Appeals Tribunal for the review of the decision to which the advertisement relates.
Regulation 16.8
16.8 Applications to vary rules
16.9 Consideration of applications to vary rules
Note Subsection 178 (3) of the Act requires the Commission, in decidingwhether to approve a variation, to have regard to prescribed criteria, which are the criteria set out in regulation 16.6.
16.10 Decision on variation of rules
(1) The Commission may approve a variation of the rules if the Commission is satisfied that the rules, as varied:
(a) would not be to the detriment of the public; and
Regulation 16.10A
Note registered owner is defined in section 6 of the Act.
16.10A Assignment of unregistered certification trade marks
(1) An application to the Commission for its consent to the assignment of an unregistered certification trade mark must:
Regulation 16.11
(2) If the prospective assignee does not propose, after the assignment, to apply the same rules governing use of the certification trade mark as the applicant for registration of the trade mark applies, or proposes to apply, the Commission must have regard to the following matters in considering an application:
16.11 Assignment of registered certification trade marks
(1) An application to the Commission for its consent to the assignment of a registered certification trade mark must:
Regulation 16.12
(d) if the prospective assignee does not propose to continue to apply those rules:
(2) If the prospective assignee does not propose after the assignment to continue to apply the same rules governing use of the registered certification trade mark as the registered owner of the trade mark applies, the Commission must have regard to the following matters in considering an application:
16.12 Publication of rules
Regulation 16.12
(3) The Registrar may publish the rules, or the certified copy of the rules, in any manner the Registrar thinks fit, including (but not limited to):
Regulation 17.2
Part 17 Defensive trade marks
17.1 Evidence in support of applications
An applicant for registration of a defensive trade mark must file evidence in support of the application at, or as soon as practicable after, the time of filing of the application.
17.2 Defensive trade mark based on protected international trade mark
Regulation 17.2
(e) the reference in section 189 of the Act to a trade mark that is not registered in the name of the registered owner included a trade mark that is not a protected international trade mark held by the registered owner.
Regulation 17A.2
Part 17A | Protected international trade marks under the Madrid Protocol |
Division 1 | General |
17A.1 Purpose of Part
This Part provides for matters that enable the performance of the obligations of Australia, or obtain for Australia an advantage or benefit, under the Madrid Protocol.
17A.2 Definitions for Part
change of ownership includes assignment or transmission. Common Regulations means the Common Regulations under the Madrid Agreement Concerning the International
Registration of Marks and the Protocol relating to that Agreement, as in force on 1 April 2007. Contracting Party of the holder has the meaning given by
Rule 1 (xxvibis) of the Common Regulations. date of international registration means the date recorded in the International Register as the international registration date for a trade mark in respect of which a request was made under
Article 3ter(1) of the Protocol for extension of protection to Australia. date of recording means the date recorded in the International
Register as the recordal date for a request made under Article 3ter(2) of the Protocol for extension of protection to Australia. holder means:
(a) in relation to an IRDA or a protected international trade mark — the person or persons in whose name or names the international registration of the trade mark is recorded in the Record of International Registrations; and
Regulation 17A.3
(b) in relation to another international registration of a trade mark — the person or persons in whose name or names the international registration of the trade mark is recorded in the International Register.
International Bureau means the International Bureau of the
World Intellectual Property Organisation. International Register means the register maintained by the International Bureau for the purposes of the Protocol.
international registration of a trade mark means registration of
the mark in the International Register. international registration designating Australia, or IRDA, means a request, made under Article 3ter (1) or (2) of the Protocol, for extension to Australia of the protection resulting from the international registration of a trade mark.
Office of origin has the meaning given by Article 2 (2) of the
Protocol. priority date, for a trade mark that is the subject of an IRDA or a protected international trade mark, has the meaning given by regulation 17A.3.
protected international trade mark means a trade mark to which protection resulting from international registration of the mark is extended in Australia in accordance with these Regulations.
Protocol means the Madrid Protocol. Record of International Registrations means the record required to be kept by regulation 17A.66.
17A.3 Meaning of priority date
Regulation 17A.5
17A.4 Meaning of date of effect
Division 2 Application for international registration of a trade mark
17A.5 Purpose of Division
This Division makes provision for dealing with applications for international registration of trade marks that are to be filed with the International Bureau through the intermediary of the Trade Marks Office.
Regulation 17A.6
17A.6 Eligibility to apply for international registration
(1) A person who is:
may apply for international registration of the trade mark.
(2) The person must:
Note These requirements are stated in Article 2 (1) (ii) of the Protocol.
(3) Two or more persons may jointly apply for international registration of a trade mark as allowed by rule 8 of the Common Regulations.
17A.7 Application for international registration
17A.8 Functions of Registrar
(a) check the application; and
Regulation 17A.10
Note The detailed functions for the Office of origin are set out in the Protocol and the Common Regulations.
17A.9 Time limit for Registrar to send application to International Bureau
The Registrar must take all reasonable steps to ensure that the application is received by the International Bureau within 2 months after the date on which it is filed.
17A.10 Subsequent designations
Regulation 17A.11
Division 3 International registration designating Australia
Subdivision 1 General
17A.11 Purpose of Division
This Division makes provision for dealing with a request to extend to Australia the protection resulting from international registration of a trade mark.
17A.12 Registrar to examine, and report on, IRDA
If the Registrar receives from the International Bureau a notification of an IRDA, the Registrar must examine and report on:
17A.13 Use of trade mark
Regulation 17A.15
17A.14 Specification of goods and services
Registrar is satisfied that the term is sufficiently clear in the circumstances.
17A.14A Representation of trade marks
If the representation of a trade mark in an IRDA includes words of a language other than English, the holder of the IRDA must file a translation of the words into English, if required to do so by the Registrar.
Note Rule 9 (4) (a) (xii) of the Common Regulations provides that a transliteration is required if the trade mark consists of or contains matter in characters other than Latin characters or numbers expressed in numeralsother than Arabic or Roman numerals.
17A.15 Claim for priority
(1) If:
Regulation 17A.16
that person or that person’s successor in title may claim a right of priority for the protection of the trade mark in respect of any or all of those goods, services or goods and services.
(2) The right of priority must be claimed in the IRDA that is notified to the Registrar in accordance with this Division.
Note Rule 9 (4) (iv) of the Common Regulations contains requirements relating to claims for priority.
(3) The priority claimed is for the protection of the trade mark in respect of the goods, services or goods and services:
Note For Convention country see section 225 of the Act.
17A.16 Examination of IRDA — report to holder
(1) If, in the course of an examination of an IRDA, the Registrar reasonably believes that:
whole or in part; the Registrar must send a report in accordance with rule 17 of the Common Regulations to the holder through the intermediary of the International Bureau.
Regulation 17A.18
notified the Registrar, in writing, of the holder’s address for service in Australia.
Note Under the Protocol, protection must be extended in Australia to a trade mark that is the subject of an IRDA at the end of 18 months after the International Bureau notifies the Trade Marks Office of the IRDA unless, before then, the International Bureau receives:
17A.17 Examination — holder’s response to report
17A.18 Examination — further report to holder
(a) the IRDA is not in accordance with this Division; or
Regulation 17A.19
(b) there are grounds under Subdivision 2 for rejecting it in
whole or in part; the Registrar must tell the holder, in writing, of that belief.
17A.19 Examination — additional requirements
17A.20 Period within which final decision on examination must be notified
(1) For an IRDA in respect of which a report is made under regulation 17A.16, the Registrar must notify his or her decision under regulation 17A.24 (the final decision on examination) to the International Bureau:
(a) if paragraph (b) does not apply — within 15 months from the date of that report (whether or not a further report is made under regulation 17A.18); or
Regulation 17A.21
(b) if a further report raises grounds under Subdivision 2 for rejecting the IRDA that were not raised in the report made under regulation 17A.16 — within 15 months from the date of the further report.
a result of a previous application of this subregulation; would be extended for more than 6 months after the end of the relevant period mentioned in subregulation (1).
Note 1 If an extension of the time for acceptance of an IRDA is sought after the end of a period mentioned in subregulation (1), or of an extended period mentioned in subregulation (3), application must be made under section 224 of the Act.
Note 2 If a period mentioned in subregulation (1) has been extended by 6 months, any application for a further extension of time must be madeunder section 224 of the Act.
17A.21 Deferment of acceptance
(1) The Registrar may, at the written request of the holder, defer acceptance of an IRDA if:
Regulation 17A.21
(iii) in respect of which an application for registration, or an IRDA, has been made by another person; and
(c) the holder:
the Act (as applied by regulation 17A.28); in relation to the holder’s trade mark and the other trade mark; or
(iii) has filed an application under section 92 of the Act or subregulation 17A.48 (1) in respect of the other trade mark and is awaiting the finalisation of proceedings in respect of that application; or
Regulation 17A.22
17A.22 Period for which acceptance is deferred
(1) The period for which acceptance of an IRDA is deferred (the deferment period) begins immediately after:
Regulation 17A.22
Regulation 17A.22
(ii) an application mentioned in paragraph 17A.21 (2)
(c) may be made; and
(1) — the last day of the relevant period mentioned in paragraph 17A.20 (1) (a) or (b).
Regulation 17A.23
17A.23 Expedited examination
Regulations 4.18 and 4.19 apply in relation to an IRDA as if a reference in those regulations to an application for registration of a trade mark were a reference to the IRDA.
17A.24 Final decision on examination
17A.25 Notice of final decision on examination
Regulation 17A.27
(2) (b), the trade mark that is the subject of the IRDA will be protected in Australia, to the extent of the final decision, in respect of the goods, services or goods and services in respect of which protection was sought.
17A.26 Appeal
17A.27 Revocation of acceptance
(1) If, before the trade mark that is the subject of the IRDA becomes a protected international trade mark, and before the end of 18 months after the International Bureau notified the Registrar of the IRDA, the Registrar becomes satisfied that:
Regulation 17A.28
all the circumstances; the Registrar may revoke the acceptance of the IRDA.
(2) If the Registrar revokes the acceptance of the IRDA:
Subdivision 2 Grounds for rejecting IRDA
17A.28 Grounds for rejecting IRDA
(2) (a) (ii) to a trade mark whose registration is being sought by another person included a trade mark in respect of which the extension of protection to Australia is being sought by another person.
Regulation 17A.31
Subdivision 3 Opposition to IRDA
17A.29 Opposition
17A.30 Extension of time for filing
17A.31 Grounds for opposing IRDA
(1) The extension of protection may be opposed on any of the grounds on which an IRDA may be rejected under Subdivision 2, except the ground that the trade mark cannot be represented graphically.
101
Regulation 17A.32
Note Section 66 of the Act makes provision in relation to amendment of documents filed with the Registrar.
17A.32 Circumstances in which opposition may proceed in name of a person other than the person who filed the notice
Section 53 of the Act applies in respect of a notice of opposition filed under this Subdivision.
17A.33 Opposition proceedings
(1) The Registrar must give to the opponent and to the holder of the IRDA an opportunity of being heard on the opposition.
Regulation 17A.35
17A.34 Decision on opposition
(1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.
(2) The Registrar must tell the International Bureau of his or her decision.
17A.35 Appeal
103
Regulation 17A.35A
Subdivision 3A Cancellation or limitation of an international registration
17A.35A Cancellation
If the International Bureau cancels an international registration in whole or in part the IRDA ceases, to the extent of the cancellation, when the international registration is cancelled.
17A.35B Duties and powers of Registrar — notification of limitation by International Bureau
(i) no effect in Australia; or
Regulation 17A.36
(ii) partial effect in Australia.
International Bureau notifies the Registrar that a holder has imposed a limitation on the IRDA. limitation means a limitation, in respect of Australia, in
relation to the goods or services mentioned in an international registration recorded in the International Register under Article 9bis (iii) of the Protocol.
Subdivision 4 Extension of protection
17A.36 When trade mark becomes a protected international trade mark
(1) In this regulation: appeal period, in relation to an opposition decision, means the period within which an appeal from the decision can be made
under regulation 17A.35, not including any extension of the period that the court may allow in a particular case. opposition period means the period allowed under paragraph
17A.29 (2) (b).
(2) If:
allowed under paragraph 17A.29 (2) (b); the trade mark that is the subject of the IRDA becomes a protected international trade mark at the end of that period.
105
Regulation 17A.36
(2A) If:
protected international trade mark after the opposition has been dismissed or withdrawn.
(3) If:
within the appeal period; then, subject to subregulation (4), the trade mark becomes a protected international trade mark, to the extent permitted by the decision on the opposition, at the end of the appeal period.
(3A) If:
the extent permitted by the decision on the opposition, after the appeal has been dismissed or withdrawn.
(4) If:
Regulation 17A.37
subject of the IRDA should be protected in Australia; the trade mark becomes a protected international trade mark, to the extent permitted by the decision on the appeal, when that decision is made.
(5) If, at the end of 18 months after the Registrar was notified of an IRDA, the International Bureau has not received:
filed after the 18-month period; in respect of the IRDA, the trade mark that is the subject of the IRDA becomes a protected international trade mark at the end of the 18-month period.
(6) If:
the trade mark that is the subject of the IRDA becomes a protected international trade mark at the end of the 7-month period.
17A.37 Notice that trade mark is a protected international trade mark
(1) If a trade mark becomes a protected international trade mark, the Registrar must:
(a) notify that fact in the Official Journal; and
107
Regulation 17A.38
(b) record that fact in the Record of International Registrations.
17A.38 Disclaimer
(1) The holder of an IRDA or a protected international trade mark may, by notice in writing given to the Registrar, disclaim any exclusive right to use, or authorise the use of, a specified part of the relevant trade mark.
(1A) A notice mentioned in subregulation (1) may be:
Regulation 17A.39
Division 4 Protected international trade marks — rights and protection
17A.39 Rights given to, and protection of, protected international trade marks
Note See regulation 17A.4 for the meaning of date of effect.
(3) Also for that application:
(a) the reference in paragraph 127 (b) to a defendant having applied under subsection 92 (3) for an order directing the Registrar to remove a trade mark from the Register is taken to be a reference to the defendant having applied
109
Part 17A | Protected international trade marks under the Madrid Protocol |
Division 5 | Protected international trade marks — amendment or cessation of |
protection |
Regulation 17A.40
under subregulation 17A.48 (2) for an order directing the Registrar to cease protection; and
17A.40 Circumstances in which action may not be brought
If the international registration of a trade mark is renewed within 6 months after it has expired, an action may not be brought in respect of an act that:
Note Article 7 (4) of the Protocol provides for a 6-month period of grace for renewal of international registration.
Division 5 Protected international trade marks — amendment or cessation of protection
Subdivision 1 Amendment or cessation of protection because of cancellation, limitation or non-renewal of international registration
17A.41 Cancellation of international registration
If the International Bureau cancels, in whole or in part, the international registration of a trade mark that is a protected international trade mark, the trade mark ceases to be a protected international trade mark, to the extent of the cancellation, when the international registration is cancelled.
Protected international trade marks under the Madrid Protocol | Part 17A |
Protected international trade marks — amendment or cessation of | Division 5 |
protection |
Regulation 17A.41A
17A.41A Duties and powers of Registrar — notification of limitation by International Bureau
111
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Division 5 | Protected international trade marks — amendment or cessation of |
protection |
Regulation 17A.42
(8) In this regulation: declaration period means the period of 18 months after the International Bureau notifies the Registrar that a holder of an
international registration has imposed a limitation on the registration. limitation means a limitation, in respect of Australia, in
relation to the goods or services mentioned in an international registration recorded in the International Register under Article 9bis (iii) of the Protocol.
17A.42 Failure to renew international registration
the unrenewed protected international trade mark is taken to be a protected international trade mark for the purposes of the application or the IRDA, at any time when the registration of the unrenewed protected international trade mark could have been renewed under Article 7 of the Protocol.
Subdivision 2 Amendment or cessation of protection by Registrar
17A.42A Registrar’s powers to amend or cease protection
(1) If all the conditions in subregulation (2) are met, the Registrar may do any of the following:
Protected international trade marks under the Madrid Protocol | Part 17A |
Protected international trade marks — amendment or cessation of | Division 5 |
protection |
Regulation 17A.42A
(2) For subregulation (1) the conditions are as follows:
113
Part 17A | Protected international trade marks under the Madrid Protocol |
Division 5 | Protected international trade marks — amendment or cessation of |
protection |
Regulation 17A.42A
(d) the Registrar is satisfied that is it reasonable to exercise the power or powers mentioned in subregulation (1).
Protected international trade marks under the Madrid Protocol | Part 17A |
Protected international trade marks — amendment or cessation of | Division 5 |
protection |
Regulation 17A.42D
17A.42B Notice to be given
17A.42C Hearings and procedure
Note Regulation 21.14 provides for the conduct of proceedings generally under these Regulations.
(4) The Registrar may hear any person if the Registrar is satisfied that it would be reasonable to do so in all the circumstances.
17A.42D Effect of amendment or cessation of protection by Registrar
(1) This regulation applies if the Registrar exercises any of the powers mentioned in subregulation 17A.42A (1).
115
Part 17A | Protected international trade marks under the Madrid Protocol |
Division 5 | Protected international trade marks — amendment or cessation of |
protection |
Regulation 17A.42E
(2) Subject to subregulation (3), the exercise by the Registrar of a power mentioned in subregulation 17A.42A (1) is taken to have had effect from the date of effect of the protection of the protected international trade mark, and in particular:
Note See regulation 17A.4 for the meaning of date of effect.
(3) For subregulation (2), the exercise of a power mentioned in subregulation 17A.42A (1) has effect as follows:
17A.42E Registrar to notify Customs CEO
(1) If the Registrar exercises a power mentioned in subregulation 17A.42A (1) the Registrar must notify the Customs CEO in writing.
Protected international trade marks under the Madrid Protocol | Part 17A |
Protected international trade marks — amendment or cessation of | Division 5 |
protection |
Regulation 17A.43
17A.42F Appeal to Federal Court
A person who made submissions to the Registrar, or was heard by the Registrar, during the course of proceedings mentioned in paragraph 17A.42C (1) (a), may appeal to the Federal Court from a decision of the Registrar to exercise, or not exercise, a power mentioned in subregulation 17A.42A (1).
Subdivision 3 Amendment or cessation of protection by prescribed court
17A.43 Amendment or cessation of protection — contravention of condition
A prescribed court may, on the application of the Registrar or an aggrieved person, order that:
on the ground that a condition or limitation entered in the Record of International Registrations in relation to the protected international trade mark has been contravened.
117
Part 17A | Protected international trade marks under the Madrid Protocol |
Division 5 | Protected international trade marks — amendment or cessation of |
protection |
Regulation 17A.44
17A.44 Amendment or cessation of protection — loss of exclusive rights to use trade mark
having regard to the effect of applied section 24 or 25 (as the case requires) on the right of the holder of the protected international trade mark to use the trade mark, or any sign that is part of the trade mark, in relation to particular goods or services.
(3) If applied section 24 or 25 applies in relation to the trade mark because the trade mark contains a sign that:
process; the court may decide not to make an order under subregulation (2).
(4) Instead, the court may allow the trade mark to continue to be protected in respect of:
Protected international trade marks under the Madrid Protocol | Part 17A |
Protected international trade marks — amendment or cessation of | Division 5 |
protection |
Regulation 17A.46
17A.45 Amendment or cessation of protection — other specified grounds
17A.46 Amendment or cessation may not be granted if holder not at fault etc
(1) The court may decide not to grant an application made:
119
Part 17A | Protected international trade marks under the Madrid Protocol |
Division 5 | Protected international trade marks — amendment or cessation of |
protection |
Regulation 17A.47
(c) on the ground referred to in paragraph 17A.45 (2) (c); if the holder of the protected international trade mark satisfies
the court that the ground relied on by the applicant has not arisen through an act or fault of the holder.
(2) In making a decision under subregulation (1), the court:
17A.47 Duties and powers of Registrar
Section 90 of the Act applies, with the necessary modifications, for the purposes of an application under regulation 17A.43, 17A.44 or 17A.45.
Note Article 5 (6) of the Protocol requires the Registrar to notify the International Bureau of an invalidation of the effect of an international registration.
Subdivision 4 Cessation of protection for non-use
17A.48 Cessation of protection for non-use
(1) Subject to subregulation (2), a person may apply to the Registrar for a trade mark that is, or may become, a protected international trade mark to cease to be protected.
Protected international trade marks under the Madrid Protocol | Part 17A |
Protected international trade marks — amendment or cessation of | Division 5 |
protection |
Regulation 17A.48
Note The expressions date of international registration and date of recording are defined in regulation 17A.2.
121
Regulation 17A.49
conditions or limitations; the Registrar must, if no appeal has been made at the end of any relevant appeal period, notify the International Bureau of that decision or order.
Division 6 Collective and certification trade marks
17A.49 Collective trade marks
(1) The provisions of this Part, of the Act as applied by this Part, and sections 164 to 167 of the Act, apply in relation to a collective trade mark that is the subject of an IRDA or that is a protected international trade mark.
Note See section 162 of the Act for the meaning of collective trade mark.
(2) For that application:
Regulation 17A.50
(3) In this regulation: protected international collective trade mark means a
collective trade mark that is a protected international trade mark.
17A.50 Certification trade marks
(1) Part 16 of the Act and Part 16 of these Regulations (except regulation 16.1) apply in relation to a certification trade mark that is the subject of an IRDA or that is a protected international trade mark.
Note See section 169 of the Act for the meaning of certification trade mark.
(2) For that application, a reference in those Parts:
123
Regulation 17A.50
Regulation 17A.52
Division 7 Transformation of cancelled international registrations
17A.51 Application of Division
This Division applies if:
17A.52 Transformation of IRDA
125
Regulation 17A.53
17A.53 Transformation of protected international trade mark
Division 8 Concurrence between registration and international registration
Note The Protocol makes provision for this as ‘Replacement of a National or Regional Registration by an International Registration’: see Article 4bis .
17A.54 Effect of registration and protection of the same trade mark
Regulation 17A.57
17A.55 Effect of cancellation, removal or expiry of registered trade mark
Division 9 Change in ownership of international registration
17A.56 Application of Division
This Division applies if the Registrar receives notification from the International Bureau of a change of ownership of the international registration of a trade mark that is the subject of an IRDA or is a protected international trade mark.
Note Change of ownership is defined in regulation 17A.2 to include assignment or transmission.
17A.57 Collective trade marks
If the trade mark is a collective trade mark, the Registrar must make a declaration in accordance with rule 27 (4) of the Common Regulations that the change of ownership has no effect in Australia.
127
Regulation 17A.58
17A.58 Protected certification trade marks
17A.58A Unprotected certification trade marks
(1) If the trade mark is a certification trade mark that is the subject of an IRDA, and:
trade mark; the Registrar must make a declaration to the International Bureau in accordance with Rule 27 (4) of the Common Regulations that, subject to subregulation (2), the change of ownership has no effect in Australia.
(2) If the Registrar receives evidence in writing of the consent of the ACCC to the change of ownership, the Registrar must notify the International Bureau that the change of ownership may be given effect in Australia.
17A.59 Trade marks affected by claimed interests and rights
(1) If a person is recorded under regulation 17A.62 as claiming an interest in, or a right in respect of, the trade mark, the Registrar must:
(a) make a declaration to the International Bureau in accordance with rule 27 (4) of the Common Regulations that, subject to subregulation (2), the change of ownership has no effect in Australia; and
Regulation 17A.62
(b) give notice in writing to the person stating that the change of ownership will have effect at the end of 2 months from the date of the notice unless the person serves on the Registrar an order of a prescribed court directing the Registrar not to withdraw the declaration.
(2) At the end of the 2-month period, if a court order has not been served on the Registrar as mentioned in paragraph (1) (b), the Registrar must notify the International Bureau that the change of ownership may be given effect in Australia.
17A.60 Recording change of ownership
If the change of ownership has effect in Australia, the Registrar must record it in the Record of International Registrations.
Note If regulation 17A.57, 17A.58 or 17A.59 does not apply to the trade mark, the change of ownership of the international registration has effect inAustralia in accordance with the Protocol.
Division 10 Recording of claimed interests and rights
17A.61 Application to have claims recorded
17A.62 Recording of claims
If the application is made in accordance with regulation 17A.61, the Registrar must record in the Record of International Registrations particulars of the claim.
129
Regulation 17A.63
17A.63 Notification of matters affecting trade mark
The Registrar must notify each person who has a claim recorded in respect of a trade mark of any matter affecting the trade mark that is notified to the Registrar by the International Bureau.
17A.64 Record not proof etc of existence of right etc
The fact that a record has been made by the Registrar under this Division that a person claims an interest in, or a right in respect of, a trade mark is not proof or evidence that the person has the right or interest claimed.
17A.65 Amendment or cancellation of record
Division 11 Miscellaneous
17A.66 Record of International Registrations
Regulation 17A.67
(3) The Record of International Registrations must include the following particulars in respect of each protected international trade mark:
17A.67 Inspection
131
Regulation 17A.68
17A.68 Evidence — the Record of International Registrations
Note Section 211 of the Act makes provision in relation to certificates given by the Registrar and certified copies of documents held in the Trade Marks Office.
17A.69 Evidence — international instruments
Regulation 17A.72
17A.70 Correction of errors or omissions in Record of International Registrations
17A.71 Passing off actions
Subsection 230 (2) of the Act applies for the purposes of an action for passing off arising out of the use of a protected international trade mark in the same way as it applies for the purposes of an action for passing off arising out of the use of a registered trade mark.
17A.72 Documents to be made available for public inspection
Section 217A of the Act and regulation 21.11A apply in relation to:
inclusion of the particulars of the IRDA in the Record of International Registrations under subregulation 17A.66 (2).
133
Regulation 17A.73
17A.73 Security for costs
If a person who neither resides nor carries on business in Australia:
the Registrar may require the person to give security for the costs of the proceeding and may, if security is not given, dismiss the proceeding.
Regulation 19.2
Part 19 Administration
19.1 Trade Marks Office and sub-offices — business hours
The hours of business of the Trade Marks Office and each sub-office of the Trade Marks Office are from 9 am to 5 pm on each day other than:
19.2 Persons to whom Registrar may delegate (Act, s 206 (1))
For subsection 206 (1) of the Act, a person holding, or performing the duties of, an office in the Trade Marks Office stated in Schedule 6 is a person to whom the Registrar may delegate all or any of the Registrar’s powers or functions under the Act.
135
Regulation 20.1
Part 20 | Registered trade marks |
attorneys | |
Division 1 | General |
20.1 Interpretation
Division 2 Obtaining registration for first time
20.2 Form of application
An application for registration as a trade marks attorney must:
20.3 Evidence that applicant meets registration requirements
(1) An application for registration as a trade marks attorney must be accompanied by the following:
Regulation 20.5
(2) A statutory declaration under paragraph (1) (d) must contain details of the basis of the opinion that the applicant is of good fame, integrity and character.
20.4 Certificate of registration
If the Designated Manager registers a person as a trade marks attorney, the Designated Manager must give the person a certificate of registration.
20.5 Evidence of academic qualifications
(1) The Board must be satisfied that a person has a qualification mentioned in regulation 20.6 if:
137
Regulation 20.6
(2) The Board must, within 42 days of deciding whether or not it is satisfied that the person has the qualification, notify the person, in writing, of its decision.
Note A decision that a person does not have a qualification is reviewable under regulation 21.35.
20.6 Academic qualifications
The Designated Manager must not approve an applicant for registration as a trade marks attorney unless the applicant has or is entitled to:
20.7 Evidence of knowledge requirements
Note A decision that a person does not have a knowledge requirement is reviewable under regulation 21.35.
20.8 Knowledge requirements
(1) The Designated Manager must not approve an applicant for registration as a trade marks attorney unless the Board is satisfied that the applicant has the knowledge of intellectual
Regulation 20.8
property law and practice that is required for a person to practise as a trade marks attorney.
(2) Subject to subregulations (3), (4) and (5), the Board must, in satisfying itself whether or not an applicant has the knowledge of intellectual property law and practice that is required for a person to practise as a trade marks attorney, take into account whether the applicant has qualifications that meet the minimum requirements set out in Schedule 5 to the Patents Regulations 1991.
Note Schedule 5 to the Patents Regulations 1991 applies to a trade marks attorney as modified by regulation 20.11 of these Regulations.
Note Subsection 228A (4) of the Act provides that the Designated Manager must register as a trade marks attorney a person who satisfiescertain conditions. Paragraph 228A (4) (a) requires that a person hold such qualifications as are specified in, or ascertained in accordance with, theRegulations.
139
Regulation 20.9
20.9 Exemption from a requirement in Schedule 5 to Patents Regulations
20.10 Prescribed offences
Regulation 20.13
20.11 Application of Schedule 5 to Patents Regulations
Schedule 5 to the Patents Regulations 1991 applies to obtaining registration as a trade marks attorney for the first time as if item 5 in Part 5 provided:
‘5. A course of study must provide for a student to have an appropriate level of understanding of the system of protecting and exploiting trade marks, both in Australia and other countries.’
Division 3 Accreditation of courses of study
20.12 Accreditation of courses of study
Part 3 of Chapter 20 of the Patents Regulations 1991 applies to the accreditation of a course of study for the purposes of Schedule 5 to the Patents Regulations 1991 in its application to the registration of a trade marks attorney under this Part as if references to ‘patent attorney’ were references to ‘trade marks attorney’.
Division 4 Board examinations
20.13 Board examinations
Part 4 of Chapter 20 of the Patents Regulations 1991 applies to a requirement referred to in Schedule 5 to the Patents Regulations 1991 in its application to the registration of a trade marks attorney under this Part as if references to ‘patent attorney’ were references to ‘trade marks attorney’.
141
Part 20 Registered trade marks attorneys
Division 5 Maintaining registration, removal from Register and returning to Register
Regulation 20.14
Division 5 Maintaining registration, removal from Register and returning to Register
20.14 Maintaining registration, removal from Register and returning to Register
Parts 5, 6 and 7 of Chapter 20 of the Patents Regulations 1991 apply to a trade marks attorney in its application to the registration of a trade marks attorney under this Part as if:
Division 6 Discipline
20.15 Discipline
Part 8 of Chapter 20 of the Patents Regulations 1991 applies to a registered trade marks attorney as if:
Regulation 20.16
(c) the reference in regulation 20.49 of the Patents Regulations 1991 to ‘the Register of Patent Attorneys’ were a reference to ‘the Register of Trade Marks Attorneys’.
Division 7 | Rights of registered trade marks | |
---|---|---|
attorneys | ||
20.16 | Lien |
A registered trade marks attorney has the same right of lien over documents and property of a client as a solicitor.
143
Regulation 21.1
Part 21 Miscellaneous
Division 1 Applications and other documents
21.1 Compliance with instructions on approved forms
If:
the person who completes the form must comply with those directions.
21.2 Filing of documents — requirements as to form
21.3 Filing of documents — common requirements
(1) A person who files an application, notice or request must include in the application, notice or request the business or residential address of:
Regulation 21.5
Note Section 212 of the Act also deals with the making and signing of applications, notices and requests.
21.4 Filing of documents — treatment of non-complying documents
If a document received for filing at the Trade Marks Office fails to comply with the Act or these regulations, the Registrar may:
Note Regulations 4.2 and 4.2A set out requirements with which applications for the registration of trade marks must comply to be taken ashaving been filed.
21.5 Filing of documents — date of receipt to be marked
145
Regulation 21.6
(3) Except as otherwise provided by the Act or these regulations, a document is taken to be filed at the Trade Marks Office on the date on which it is received by the Trade Marks Office.
21.6 Declarations
(1) In this regulation: diplomatic or consular officer means a person who holds any
of the following offices of the Commonwealth in a country other than Australia:
(2) A declaration required by the Act or these Regulations to be given to the Registrar must:
(2A) If the declaration is made on behalf of another person, it must also state the other person’s name and address.
Regulation 21.7
(2B) If the declaration is made for the purposes of a business whose details are set out in the declaration, it must also state:
(3) A declaration may be made before:
21.7 Declarations — additional material
(1) If:
the person must file or serve the material to which the declaration refers, or a copy of the material, at the same time as the declaration or as soon as practicable after that time.
(2) A declaration is not taken to have been filed or served until any material to which the declaration refers, or any copy of the material, is filed or served.
147
Regulation 21.8
21.8 Notification of service
A person who is required by the Act or these regulations to serve a document on another person must, as soon as practicable after the document is served, notify the Registrar in writing of the date, place and manner of service.
21.9 Notice of withdrawal of applications etc
(1) For the purposes of section 214 of the Act (which deals with withdrawal of applications, notices and requests):
may withdraw the application, notice or request by giving notice in writing of the withdrawal to the Registrar.
(2) If:
become vested in more than 1 person; the notice of withdrawal must be signed by, or on behalf of, each of those persons.
(3) If a person mentioned in paragraph (1) (b) withdraws an application, notice or request, the Registrar may require in writing that person to file documentary evidence that is sufficient to establish that the right or interest mentioned in that paragraph is vested in the person.
21.10 Withdrawal of application etc — Registrar’s notice to applicants
If an application, notice or request is withdrawn in accordance with regulation 21.9, the Registrar must notify in writing each person by, or on behalf of whom, the application, notice or request was filed of the withdrawal.
Regulation 21.11A
21.11 Change of address for service — notice to interested persons
A person:
21.11A Documents to be made available for public inspection
149
Regulation 21.12
Division 2 Proceedings before the Registrar
21.12 Applications for costs
proceedings have been discontinued or dismissed; as the case requires.
(3) Before awarding costs in respect of the proceedings, the Registrar must give each party to the proceedings a reasonable opportunity to be heard in relation to the award of costs.
Regulation 21.14
(4) If a bill of costs is filed in relation to the proceedings, the bill of costs must be filed within 3 months from the day on which the costs are awarded.
21.13 Determination of costs
21.14 Conduct of proceedings generally
151
Regulation 21.15
(c) is reasonably satisfied that the proposed directions are appropriate.
Note Regulation 5.16 deals with directions as to procedure in oppositionproceedings.
21.15 Hearings by Registrar
Regulation 21.17
21.16 Registrar not required to hold hearings
21.17 Evidence in proceedings
153
Regulation 21.18
(3) The Registrar may permit a party to cross-examine a person who attends under subregulation (2).
Note Regulations 21.6 and 21.7 deal with making and filing declarations.
21.18 Documents not in English
If a document that is filed as evidence in proceedings before the Registrar is not in English, the party who files the document must file with it:
21.19 Registrar may use information available
21.20 Statements of reasons for decision
If:
for the decision; the Registrar must comply with the request.
Regulation 21.21
Division 3 General
21.21 What fees are payable
155
Regulation 21.21A
(7) The fee payable for the renewal is:
21.21A No action permitted until fee paid
the act is taken to have been done, or the document is taken to have been filed, despite of the failure to pay the fee.
Note File has the meaning given by section 6 of the Act.
(3) If the Registrar or the Customs CEO notifies under regulation
21.23 the person concerned or his or her agent, that the fee has not been paid, the act is not taken to have been done, or the document is not taken to have been filed, before the day on which the fee is paid.
21.22 How fees are to be paid
Regulation 21.24
(3) A fee must be paid in accordance with a direction given:
the Customs CEO; as to the way in which it is to be paid.
21.23 Notice of non-payment of fee
For subregulation 21.21A (3), the Registrar or the Customs CEO must, in writing or by telephone:
21.24 Refunds etc of fees
amount of the fee for the matter in relation to which the error or omission was made.
157
Regulation 21.24A
21.24A Period for doing certain acts — office not open for business
For subsection 223A (1) of the Act, the circumstance is that the act is done at:
Note Subsection 223A (1) provides as follows:
‘(1) If the last day of a period provided by this Act (except this section) for doing an act is a day when the Trade Marks Office, or a sub-office of the Trade Marks Office, is not open for business, the act may be done in prescribed circumstances on the next day when the office or sub-office is open for business.’.
21.24B Days when office not open for business
21.24C Period for doing certain acts — acts to which section 223A does not apply
For subsection 223A (7) of the Act, the following acts are prescribed:
(a) an act done in opposition proceedings, other than the filing of a notice or request with the Trade Marks Office, under the following provisions:
(i) Part 5, 9 or 21 of the Act;
Regulation 21.26
(ii) Part 5, 9, 17A or 21 of these Regulations;
21.25 Extension of time — application
For the purposes of subsections 224 (2) and (3) of the Act (which deal with extensions of time), an application for an extension of time for doing a relevant act:
Note Regulations 21.6 and 21.7 deal with making and filing declarations.
21.26 Extension of time — notice of opposition
159
Regulation 21.27
21.27 Extension of time — opposition proceedings
For the purposes of subsection 224 (6) of the Act (which deals with opposition to an extension), regulations 5.7 to 5.17 (inclusive) apply to an opposition to an application for an extension of time.
21.28 Extension of time — prescribed acts and documents
(1) For the purposes of paragraph (a) of the definition of relevant act in subsection 224 (8) of the Act, the following acts are prescribed:
(a) complying with the requirements of subregulation 4.2 (1);
(aa) filing notice of a claim to a right of priority under subsection 29 (1) of the Act;
(ha) requesting an amendment of a notice of opposition under subregulation 5.19 (1);
Regulation 21.29
(2) For the purposes of paragraph (b) of the definition of relevant act in subsection 224 (8) of the Act, the following documents are prescribed:
(iii) an attachment;
21.29 Convention countries
Agreement Relating to the Creation of an African Intellectual Property Organisation, Constituting a Revision of the Agreement Relating to the Creation of an African and Malagasy Office of Industrial Property (a treaty subsisting between 2 or more Convention countries), is, in accordance with the terms of that treaty, declared to be equivalent to an application made in each of those Convention countries.
161
Regulation 21.30
21.30 Rights of registered patent attorneys
A registered patent attorney has the same right of lien over documents and property of a client as a solicitor.
21.31 Incapacity of certain persons
21.32 Destruction of documents
(1) The Registrar may order the destruction of documents relating to trade marks the registration of which ceased not less than 25 years before the date of the order.
Regulation 21.35
(2) Subregulation (1) does not authorise the destruction of:
21.33 Directions not otherwise prescribed
If the Registrar reasonably believes that it is necessary for the proper conduct of proceedings for a person to perform an act, file a document or produce evidence that the person is not required by the Act or these regulations to perform, file or produce, the Registrar may give notice in writing to the person requiring him or her:
21.34 Requirements cannot be complied with for reasonable cause
If:
comply with the requirement; subject to any condition that the Registrar may reasonably impose, the Registrar may dispense with the requirement.
21.35 Review of decisions
(1) In this regulation:
decision has the same meaning as in the Administrative Appeals Tribunal Act 1975.
163
Regulation 21.35
(2) Application may be made to the Tribunal for review of a decision of:
(i) | regulation qualifications’); | 20.5 | (‘evidence | of | academic |
(ii) | regulation | 20.7 | (‘evidence | of | knowledge |
(iii) regulation 20.45 (‘penalties — unsatisfactory professional conduct’);
Regulation 22.1
Part 22 Transitional provisions
22.1 Application of the Act
(1) If:
the report is taken to have been issued by the Registrar under the Act on the date on which it was issued under the Trade Marks Act 1955.
(2) If:
the amendment is taken to have been made under the Act on the date on which it was made under the Trade Marks Act 1955.
(3) If the particulars of an application for the registration of a trade mark have been published before the commencement of these regulations:
165
Regulation 22.2
(c) by making a record of the application available, in electronic or other form, in each of the sub-offices of the Trade Marks Office;
then, for the purposes of subsection 45 (2), paragraph 64 (a), subsection 65 (1) and paragraph 83 (1) (a) of the Act, those particulars are taken to have been published under section 30 of the Act.
22.2 Fees payable in relation to certain matters
(1) Subject to subregulation (2), a fee payable in relation to proceedings:
is the fee that would have been payable if these regulations had applied to the proceedings.
mark within the period of 12 months following the expiry; the fee payable in relation to the request is the fee that would have been payable for lodgment of an application for restoration of the trade mark under subsection 71 (1) of the repealed Act.
Regulation 22.4
22.3 Certain delegations continue
If, immediately before the commencement of these regulations, a person:
the delegation of that person continues in relation to the matter.
22.4 Certain deferments continue
(1) If:
commencement of these regulations; the deferment is in force under subregulation 4.13 (1) after the commencement of these regulations as if the Registrar had deferred acceptance of the application on the day on which it was deferred under the Trade Marks Act 1955.
(a) paragraph (2) (b); and
167
Regulation 22.5
(b) subregulation 4.14 (3), other than paragraph 4.14 (3) (a);
under which the deferment period ends later or last, as the case requires.
22.5 Certain extensions of time continue
If:
commencement of these regulations; the period ends when it would have ended if that section had continued to be in force.
22.6 Deferment of acceptance — certain applications
If:
then:
22.7 Trade marks attorneys
For registration as a trade marks attorney, a person is taken to meet the requirements of subregulation 20.1 (1) until 27 January 2001 if the person:
Regulation 22.8
22.8 Trade marks attorney examination requirements
(1) (a) in a topic group mentioned in column 2 of the table:
Column 1 Column 2 Subject Topic group
Legal Process
Patent Attorneys’ Practice, Part 2
Trade Marks law of Australia and the Practice of the Trade Marks Office
Patent Attorneys’ Practice, Part 1 and Patent Attorneys’ Practice, Part 2 Group A — Legal process and overview of intellectual property
Group B — Professional conduct
Group C — Trade mark law
Group D — Trade mark practice
169
Regulation 22.8
(4) For registration as a trade marks attorney, a person is taken to have passed an examination for Patent Attorney’s Practice 1 and Patent Attorney’s Practice 2 if the person:
Schedule 1 Classification of goods and services
(regulation 3.1)
Part 1 Classes of goods
Item number Class of goods (Class number) (Class heading)
1 Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry
2 Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colourants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists
3 Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices
4 Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles, wicks
5 Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides
6 Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores
171
Item number Class of goods (Class number) (Class heading)
7 Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements, other than hand operated; incubators for eggs
8 Hand tools and implements (hand operated); cutlery; side arms; razors
9 Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus
10 Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials
11 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes
12 Vehicles; apparatus for locomotion by land, air or water
13 Firearms, ammunition and projectiles; explosives; fireworks
14 Precious metals and their alloys and goods in precious metals
or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments
15 Musical instruments
16 Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks
Item number Class of goods (Class number) (Class heading)
17 Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal
18 Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery
19 Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal
20 Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics
21 Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel wool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes
22 Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials
23 Yarns and threads, for textile use
24 Textiles and textile goods, not included in other classes; bed
and table covers
25 Clothing, footwear, headgear
26 Lace and embroidery, ribbons and braid; buttons, hooks and
eyes, pins and needles; artificial flowers
27 Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile)
28 Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees
173
Item number (Class number) | Class of goods (Class heading) |
29 30 31 | Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt |
32 33 34 | Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages Alcoholic beverages (except beers) Tobacco; smokers’ articles; matches |
Part 2 | Classes of services |
Item number | Class of services |
(Class number) | (Class heading) |
35 | Advertising; business management; business administration; office functions |
36 | Insurance; financial affairs; monetary affairs; real estate affairs |
37 38 | Building construction; repair; installation services Telecommunications |
39 40 | Transport; packaging and storage of goods; travel arrangement Treatment of materials |
41 | Education; providing of training; entertainment, sporting and cultural activities |
Item number Class of services (Class number) (Class heading)
42 Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software
43 Services for providing food and drink; temporary accommodation
44 Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services
45 Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals
175
Schedule 2 Signs that may not be registered as trade marks
(paragraph 4.15 (f))
Austrade
C.E.S. Olympic Champion Repatriation Returned Airman Returned Sailor Returned Soldier
Schedule 3 Modifications of Part 13 of the Act — Norfolk Island
(regulation 13.4)
Part 1
1. Section 131 (Object of Part)
1.1 Omit ‘Customs CEO’, substitute ‘Collector’.
2.1 After section 131, insert:
131A Definitions
‘In this Part, unless the contrary intention appears:
Administration and Administrator have the same meanings as in the Norfolk Island Act 1979. Collector means the Collector of Customs appointed under
section 1B of the Customs Act 1913 of Norfolk Island. designated owner, in relation to goods imported into Norfolk Island, means the person identified as the owner of the goods on the entry made in relation to the goods under section 4A of the Customs Act 1913 of Norfolk Island.’.
3. Section 133 (Collector may seize goods infringing trade mark)
3.1 Paragraph 133 (1) (a):
Omit ‘Australia’, substitute ‘Norfolk Island’.
177
3.2 Paragraph 133 (1) (b):
Omit ‘Customs Act 1901’, substitute ‘Customs Act 1913 of Norfolk Island’.
3.3 Subsection 133 (2):
Omit ‘Customs CEO’ (wherever occurring), substitute ‘Collector’.
3.4 Subsection 133 (3):
Omit ‘Customs CEO’ and ‘Commonwealth’ (wherever occurring), substitute ‘Collector’ and ‘Administration’.
3.5 Subsection 133 (4):
Omit ‘Customs CEO’, substitute ‘Collector’.
4. Section 139 (Forfeited goods — how to be disposed of)
5.1 Omit ‘Customs CEO’ (wherever occurring), substitute ‘Collector’.
6.1 Omit ‘Commonwealth’ (wherever occurring), substitute ‘Administration’.
6.2 Omit ‘Customs CEO’, substitute ‘Collector’.
7. Section 142 (Administration not liable for loss etc suffered because of seizure)
7.1 Omit ‘Commonwealth’, substitute ‘Administration’.
7.3 Paragraph 142 (a):
Omit ‘Customs CEO’, substitute ‘Collector’.
8. Section 143 (Power to require information)
8.1 Omit ‘Australia’ (wherever occurring), substitute ‘Norfolk Island’.
8.2 Omit ‘Customs CEO’ (wherever occurring), substitute ‘Collector’.
Part 2
The following provisions of Part 13 of the Act are modified by omitting ‘Customs CEO’ (wherever occurring) and substituting ‘Collector’:
Subsections 132 (1), (3), (4) and (5), section 134, subsection 135 (1) and sections 136 and 137.
179
Schedule 4 Modifications of Part 13 of the
Act — Christmas Island
(regulation 13.5)
1. Section 131 (Object of Part)
2.1 After section 131, insert:
131A Definitions
‘In this Part, unless the contrary intention appears:
Comptroller means the Comptroller of the Indian Ocean Territories Customs Service. designated owner, in relation to goods imported into Christmas
Island, means the person identified as the owner of the goods on the entry made in relation to the goods under section 68 of the Customs Act 1901 (C.I.).’.
3. Section 133 (Comptroller may seize goods infringing trade mark)
3.1 Paragraph 133 (1) (a):
Omit ‘Australia’, substitute ‘Christmas Island’.
3.2 Paragraph 133 (1) (b):
Omit ‘Customs Act 1901’, substitute ‘Customs Act 1901 (C.I.)’.
3.3 Subsection 133 (3):
Omit ‘Commonwealth’ (wherever occurring), substitute ‘Territory of Christmas Island’.
3A Section 136 (Release of goods to owner — no action for infringement)
3A.1 Subsection 136 (3), note 3:
omit
Customs CEO
insert
Comptroller
4. Section 140 (Power of Comptroller to retain control of goods)
7.1 Omit ‘Australia’ (wherever occurring), substitute ‘Christmas Island’.
7.2 Subsection 143 (1), note 2:
omit
Customs CEO
Insert
Comptroller
181
8 Additional amendments
8.1 The following provisions are amended by omitting each occurrence of ‘Customs CEO’ and inserting ‘Comptroller’:
•section 131
•section 132
•section 133, heading
•section 133
•section 134
•section 135
•section 136
•section 137
•section 139
•section 140, heading
•section 140
•section 141
•section 142
•section 143.
Schedule 5 Modifications of Part 13 of the Act — Cocos (Keeling) Islands
(regulation 13.6)
1. Section 131 (Object of Part)
2.1 After section 131, insert:
131A Definitions
‘In this Part, unless the contrary intention appears:
Comptroller means the Comptroller of the Indian Ocean Territories Customs Service. designated owner, in relation to goods imported into the Cocos
(Keeling) Islands, means the person identified as the owner of the goods on the entry made in relation to the goods under section 68 of the Customs Act 1901 (C.K.I.).’.
3. Section 133 (Comptroller may seize goods infringing trade mark)
3.1 Paragraph 133 (1) (a):
Omit ‘Australia’, substitute ‘the Cocos (Keeling) Islands’.
3.2 Paragraph 133 (1) (b):
Omit ‘Customs Act 1901’, substitute ‘Customs Act 1901 (C.K.I.)’.
3.3 Subsection 133 (3):
Omit ‘Commonwealth’ (wherever occurring), substitute ‘Territory of Cocos (Keeling) Islands’.
183
3A Section 136 (Release of goods to owner — no action for infringement)
3A.1 Subsection 136 (3), note 3:
omit
Customs CEO
insert
Comptroller
4. Section 140 (Power of Comptroller to retain control of goods)
7.1 Omit ‘Australia’ (wherever occurring), substitute ‘the Cocos (Keeling) Islands’.
7.2 Subsection 143 (1), note 2:
omit
Customs CEO
insert
Comptroller
8 Additional amendments
8.1 The following provisions are amended by omitting each occurrence of ‘Customs CEO’ and inserting ‘Comptroller’:
•section 131
•section 132
•section 133, heading
•section 133
•section 134
•section 135
•section 136
•section 137
•section 139
•section 140, heading
•section 140
•section 141
•section 142
•section 143.
185
Schedule 6 Offices of persons to whom registrar may delegate
(regulation 19.2)
Executive level 2 Executive level 1 Executive level 1 — Examiner of Trade Marks APS level 6 — Examiner of Trade Marks APS level 5 — Examiner of Trade Marks APS level 4 — Examiner of Trade Marks APS level 3 — Examiner of Trade Marks APS level 6 APS level 5 APS level 4 APS level 3 APS level 2 APS level 1
Schedule 7 Requirements for documents
(regulation 21.2)
1. Documents, except documents mentioned in regulations 4.11,
5.5 and 21.18, must be written in English.
2. Documents must be durable.
4. The contents of a document must be legible.
187
Schedule 8 Costs, expenses and allowances
(subregulation 21.13 (3))
Part 1 Costs
Item Matter Amount
1 Notice of opposition $200 2 Evidence in support $700 3 Receiving and perusing notice of opposition $130 4 Receiving and perusing evidence in support $300 5 Evidence in answer $700 6 Receiving and perusing evidence in answer $210 7 Evidence in reply $350 8 Receiving and perusing evidence in reply $130 9 Preparation of cases for hearing $525
10 Attendance at hearing by registered patent $260 an hour, attorney, registered trade marks attorney or but not more solicitor without counsel than $1 170 a
day 11 Attendance at hearing by registered patent $200 an hour, attorney, registered trade marks attorney or but not more solicitor instructing counsel than $900 a day 12 Counsel fees for attendance at a hearing $300 an hour, but not more than $1 350 a day
Part 2 Expenses and allowances
Division 1 Expenses
Division 2 Allowances
3. A person who, because of his or her professional, scientific or other special skill or knowledge, is summoned to appear as a witness before the Registrar must be paid:
4. A person summoned to appear as a witness, other than a witness referred to in clause 3, before the Registrar must be paid:
189
Schedule 9 Fees
(regulation 21.21)
Item Matter Fee
1 Filing an application to register a trade mark under subsection 27 (5) or 45 (1) of the Act in respect of goods or services in 1 or more of the prescribed classes:
(a) by an electronic means approved by $120 for each class
the Registrar for this paragraph and, in addition, if the goods and $40 for each class services are specified in the application otherwise than by using the official Goods and Services pick list
3 Filing an application to register 2 or more trade marks as a series under section 51 of the Act:
4 Requesting an amendment under section 64, 65 or 65A of the Act to include an additional prescribed class of goods or services in an application:
(a) application under section 51 for a $330 for each class
series of trade marks
(b) any other case $180 for each class
Item Matter Fee
5 Filing an application for an extension of:
6 Filing an application for an extension of:
7 Filing a notice of opposition under:
8 Filing an application for permission to serve a copy of further evidence in opposition proceedings under paragraph 5.15 (1) (b) (including paragraph 5.15 (1) (b) as applied by regulation 17A.33)
9 Single registration of a trade mark under section 68 of the Act in respect of goods or services in 1 or more of the prescribed classes
10 Renewal of a single registration of a trade mark under section 75 of the Act in respect of goods or services in 1 or more of the prescribed classes
and, in addition, if the request for renewal is made within 6 months after the expiry date to which section 79 of the Act refers $100 for each month or part of a month for which the extension is sought
$150 for each month or part of a month for which the extension is sought
$250
$150
$250
$250
$100
$250 for each class
$300 for each class
$100 for each class for each month, or part of a month, after the expiry date
Item Matter Fee
11 Each potential renewal period requested by a person under section 80D of the Act in respect of goods or services in 1 or more of the prescribed classes
12 Each potential renewal period requested by a person under paragraph 80G (1) (b) of the Act in respect of goods and services in 1 or more of the prescribed classes
and, in addition, if the request for renewal is made within 10 months after the end of the prescribed period, regardless of the number of potential renewal periods requested
13 Filing an application for removal of a trade mark from the Register:
14 Request for a hearing under:
9.4 as applied by regulation 17A.48)
15 Request for a hearing in relation to any other matter
16 Attendance at a hearing under:
9.4 as applied by regulation 17A.48)
17 Attendance at a hearing in relation to any other matter $300 for each class
$300 for each class
$100 for each class for each month, or part of a month, after the end of the prescribed period
$250
$500
$300
$500 for each day, or part of a day, less any amount paid under item 14 in relation to the hearing
$300 less any amount paid under item 15 in relation to the hearing
Item Matter Fee
18 Handling an application for the international registration of a trade mark under regulation 17A.7
19 Transmitting a renewal fee for the international registration of a trade mark under Article 7 of the Madrid Protocol
20 Requesting a decision under subregulation
21.16 (2)
21 Supply of a certificate signed by the Registrar under section 211 of the Act
21A Supply of a duplicate of a certificate signed by the Registrar under section 211 of the Act
22 Supply of a copy of an extract from the Register or the Record of International Registrations
23 Supply of a copy of a document for which a search is required
25 Applying for admission to sit for an examination conducted by the Board
26 Applying for a grant of a supplementary examination conducted by the Board
27 A report of reasons for failure of an examination conducted by the Board
28 Applying for registration as a trade marks attorney
29 Annual registration of a trade marks attorney
30 Annual registration fee payable for combined registration as a trade marks attorney and patent attorney
31 Applying to be restored to the Register, as authorised by regulation 20.14
32 AFS request under regulation 3A.3
33 Inclusion of an additional class of goods or services in an AFS request under paragraph 3A.3 (5) (c) or 3A.5 (2) (f)
Trade Marks Regulations 1995
$100
$100
$300 $50 $250 $50
$100 $400 $200 $200 $150 $250
$450
$160
$90 for each class $90 for each class
Item Matter Fee
34 Inclusion of an amendment in an AFS request that significantly changes the graphical representation of a trade mark under paragraph 3A.5 (2) (f)
35 (a) request for a copy of a file or part of a file under regulation 21.11A
$90 for each class
$30 for each file that is the subject of a request no additional charge
$1 for each additional page over 20 from the file
Schedule 10 Convention countries
(regulation 21.29)
Albania Algeria Andorra Angola Antigua and Barbuda Argentina Armenia Austria Azerbaijan Bahamas Bahrain Bangladesh Barbados Belarus Belgium Belize Benin Bhutan Bolivia Bosnia and Herzegovina Botswana Brazil Brunei Darussalam Bulgaria Burkina Faso Burundi Cambodia Cameroon Canada Cape Verde Central African Republic Chad Chile China Colombia
Comoros
Congo
Costa Rica
Côte d’Ivoire
Croatia
Cuba
Cyprus
Czech Republic
Democratic Republic of the Congo
Denmark (including Faroe Islands)
Djibouti
Dominica
Dominican Republic
Ecuador
Egypt
El Salvador
Equatorial Guinea
Estonia
Fiji
Finland
France (including all Overseas Departments and Territories)
Gabon
Gambia
Georgia
Germany
Ghana
Greece
Grenada
Guatemala
Guinea Guinea-Bissau
Guyana
Haiti
Holy See
Honduras
Hong Kong, China
Hungary
Iceland
India
Indonesia
Iran, Islamic Republic of
Iraq
Ireland
Israel
Italy
Jamaica
Japan
Jordan
Kazakhstan
Kenya
Korea, Democratic People’s Republic of
Korea, Republic of
Kuwait
Kyrgyzstan
Lao People’s Democratic Republic
Latvia
Lebanon
Lesotho
Liberia
Libyan Arab Jamahiriya
Liechtenstein
Lithuania
Luxembourg
Macau, China
Madagascar
Malawi
Malaysia Maldives
Mali
Malta
Mauritania
Mauritius
Mexico
Moldova
Monaco
Mongolia
Montenegro
Morocco
Mozambique
Myanmar
Namibia
Nepal
Netherlands (including the Netherlands Antilles and Aruba)
New Zealand (excluding the Cook Islands, Niue and Tokelau)
Nicaragua
Niger
Nigeria
Norway
Oman
Pakistan
Panama
Papua New Guinea
Paraguay
Peru
Philippines
Poland
Portugal
Qatar
Romania
Russian Federation
Rwanda
Saint Kitts and Nevis Saint Lucia Saint Vincent and the
Grenadines San Marino Sao Tome and Principe Saudi Arabia Senegal Serbia Seychelles Sierra Leone Singapore Slovak Republic Slovenia Solomon Islands South Africa Spain Sri Lanka Sudan Suriname Swaziland Sweden Switzerland Syrian Arab Republic Taiwan Tajikistan Tanzania Thailand The former Yugoslav Republic
of Macedonia Togo Tonga Trinidad and Tobago Tunisia Turkey Turkmenistan Uganda Ukraine United Arab Emirates United Kingdom (including the
Isle of Man)
United States of America (including all territories and possessions, including the Commonwealth of Puerto Rico)
Uruguay Uzbekistan Venezuela Viet Nam Yemen Zambia Zimbabwe
Table of Instruments
Notes to the Trade Marks Regulations 1995 Note 1
The Trade Marks Regulations 1995 (in force under the Trade Marks Act 1995) as shown in this compilation comprises Statutory Rules 1995 No. 341 amended as indicated in the Tables below.
For all relevant information pertaining to application, saving or transitional provisions see Table A.
Table of Instruments
Year and number | Date of notification in Gazette or FRLI registration | Date of commencement | Application, saving or transitional provisions |
---|---|---|---|
1995 No. 341 | 6 Nov 1995 | 1 Jan 1996 | |
1996 No. 3 | 25 Jan 1996 | R. 9: 1 Jan 1996 Remainder: 25 Jan 1996 | — |
1996 No. 184 1996 No. 272 | 21 Aug 1996 11 Dec 1996 | 21 Aug 1996 R. 3: 1 Jan 1997 Remainder: 11 Dec 1996 | — — |
1997 No. 346 | 9 Dec 1997 | Rr. 3 and 4: 1 Feb 1998 Rr. 5 and 6: 1 Jan 1998 Remainder: 9 Dec 1997 | R. 3 |
1998 No. 258 1998 No. 265 1998 No. 343 | 12 Aug 1998 26 Aug 1998 22 Dec 1998 | 12 Aug 1998 R. 5: 1 Nov 1998 Remainder: 26 Aug 1998 22 Dec 1998 | — — — |
1998 No. 346 | 22 Dec 1998 | 27 Jan 1999 | — |
1999 No. 153 1999 No.186 1999 No. 196 1999 No. 350 | 14 July 1999 1 Sept 1999 10 Sept 1999 22 Dec 1999 | 14 July 1999 Rr. 1–3 and Schedule 1: 1 Sept 1999 Remainder: 6 Sept 1999 10 Sept 1999 22 Dec 1999 | — — — — |
2001 No. 33 2001 No. 185 | 1 Mar 2001 5 July 2001 | 11 July 2001 (see r. 2 and Gazette 2001, No. GN24) 5 July 2001 | — — |
199
Table of Instruments
Year and number | Date of notification in Gazette or FRLI | Date of commencement | Application, saving or transitional |
registration | provisions | ||
2001 No. 247 | 14 Sept 2001 | Schedule 2: 1 Jan 2002 Remainder: 19 Sept 2001 (see r. 2) | — |
2002 No. 173 | 11 July 2002 | Rr. 1–5 and Schedules 1–3: 11 July 2002 Remainder: 1 Sept 2002 | — |
2002 No. 318 | 19 Dec 2002 | 19 Dec 2002 | — |
2003 No. 214 | 21 Aug 2003 | 24 July 2003 (see r. 2) | — |
2004 No. 24 | 26 Feb 2004 | 11 March 2004 | — |
2004 No. 194 | 1 July 2004 | 1 July 2004 | — |
2005 No. 52 | 29 Mar 2005 (see F2005L00759) | Rr. 1–3 and Schedule 1: 30 Mar 2005 Remainder: 3 Apr 2005 | — |
2005 No. 211 | 16 Sept 2005 (see F2005L02660) | 3 Oct 2005 | — |
2006 No. 355 | 15 Dec 2006 (see F2006L03971) | 1 Mar 2007 | — |
2006 No. 356 | 18 Dec 2006 (see F2006L03976) | Rr. 1–4 and Schedule 1: 19 Dec 2006 Remainder: 1 Jan 2007 | R. 4 |
2007 No. 40 | 23 Mar 2007 (see F2007L00650) | Rr. 1–10, Schedules 1–3 and 5–7: 27 Mar 2007 (see r. 2) Remainder: 1 Apr 2007 (see r. 2 (b)) | Rr. 9–10 |
2008 No. 122 | 23 June 2008 (see F2008L02119) | 1 July 2008 | R. 5 |
2008 No. 279 | 19 Dec 2008 (see F2008L04588) | 1 Jan 2009 | — |
2009 No. 150 | 26 June 2009 (see F2009L02472) | 1 July 2009 | — |
2009 No. 332 | 27 Nov 2009 (see F2009L04297) | 12 Dec 2009 | — |
2010 No. 248 | 15 Oct 2010 (see F2010L02682) | 16 Oct 2010 | — |
Table of Amendments
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
Part 1
R. 1.1................................... rs. 1998 No. 258
Part 2
R. 2.1................................... am. 1998 No. 346; 2001 Nos. 33 and 247
R. 2.2................................... ad. 2001 No. 247
Part 3A
Part 3A ................................ ad. 2005 No. 211
Division 1
R. 3A.1 ................................ ad. 2005 No. 211
R. 3A.2 ................................ ad. 2005 No. 211
Division 2
R. 3A.3 ................................ ad. 2005 No. 211
R. 3A.4 ................................ ad. 2005 No. 211
R. 3A.5 ................................ ad. 2005 No. 211
Part 4
R. 4.1................................... am. 2005 No. 211 Heading to r. 4.2.................. rs. 2005 No. 211
R. 4.2................................... am. 2005 No. 211; 2007 No. 40
R. 4.2AA .............................. ad. 2007 No. 40
R. 4.2A ................................ ad. 2005 No. 211
R. 4.3................................... am. 2007 No. 40
R. 4.5................................... am. 1997 No. 346
R. 4.6................................... am. 1999 No. 196
R. 4.7................................... am. 1996 No. 184; 2007 No. 40
R. 4.13................................. am. 2001 No. 33; 2007 No. 40
R. 4.14................................. am. 1999 No. 186; 2001 No. 33
R. 4.15................................. am. 2001 No. 33
R. 4.15A .............................. ad. 2001 No. 33 am. 2005 No. 52 Note to r. 4.15A (1).............. ad. 2005 No. 52 Note to r. 4.15A (2).............. ad. 2005 No. 52
R. 4.16................................. rep. 2007 No. 40
R. 4.17................................. am. 2002 No. 318 rep. 2007 No. 40
Part 5
R. 5.2................................... am. 2003 No. 214
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
R. 5.10................................. am. 2001 No. 247
R. 5.18................................. ad. 2005 No. 52
R. 5.19................................. ad. 2005 No. 52
Part 6
R. 6.5................................... ad. 2007 No. 40
R. 6.6................................... ad. 2007 No. 40
Part 7 Division 1
Heading to Div. 1 of Part 7 .. ad. 2001 No. 247
R. 7.2................................... am. 2007 No. 40
Division 2
Heading to Div. 2 of Part 7 .. ad. 2001 No. 247
Division 3
Div. 3 of Part 7..................... ad. 2001 No. 247
R. 7.6................................... ad. 2001 No. 247
R. 7.7................................... ad. 2001 No. 247
R. 7.8................................... ad. 2001 No. 247
Part 8
R. 8.1A ................................ ad. 2007 No. 40
R. 8.3................................... ad. 2005 No. 52
R. 8.4................................... ad. 2010 No. 248
R. 8.5................................... ad. 2010 No. 248
Part 9
R. 9.1................................... am. 1996 No. 3 rs. 2007 No. 40
R. 9.2................................... am. 1999 No. 186; 2007 No. 40
R. 9.4................................... am. 2007 No. 40
Part 10
R. 10.1................................. am. 2001 No. 247
Part 13
R. 13.1................................. rs. 2001 No. 247 Note 2 to r. 13.2................... rs. 1999 No. 186 Heading to r. 13.3................ rs. 1999 No. 186
R. 13.3................................. am. 1999 No. 186
Part 16
R. 16.2................................. rs. 2007 No. 40
R. 16.10............................... rs. 2007 No. 40
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
R. 16.10A ............................ ad. 2001 No. 247 am. 2007 No. 40
R. 16.11............................... am. 2007 No. 40
R. 16.12............................... ad. 2007 No. 40
Part 17
R. 17.2................................. ad. 2001 No. 33
Part 17A
Part 17A .............................. ad. 2001 No. 33
Division 1
R. 17A.1 .............................. ad. 2001 No. 33
R. 17A.2 .............................. ad. 2001 No. 33 am. 2001 No. 247; 2007 No. 40
R. 17A.3 .............................. ad. 2001 No. 33
R. 17A.4 .............................. ad. 2001 No. 33 am. 2007 No. 40
Division 2
R. 17A.5 .............................. ad. 2001 No. 33
R. 17A.6 .............................. ad. 2001 No. 33
R. 17A.7 .............................. ad. 2001 No. 33
R. 17A.8 .............................. ad. 2001 No. 33
R. 17A.9 .............................. ad. 2001 No. 33 am. 2007 No. 40
R. 17A.10 ............................ ad. 2001 No. 33 am. 2007 No. 40
Division 3 Subdivision 1
R. 17A.11 ............................ ad. 2001 No. 33
R. 17A.12 ............................ ad. 2001 No. 33
R. 17A.13 ............................ ad. 2001 No. 33
R. 17A.14 ............................ ad. 2001 No. 33 am. 2007 No. 40
R. 17A.14A .......................... ad. 2007 No. 40
R. 17A.15 ............................ ad. 2001 No. 33
R. 17A.16 ............................ ad. 2001 No. 33
R. 17A.17 ............................ ad. 2001 No. 33
R. 17A.18 ............................ ad. 2001 No. 33
R. 17A.19 ............................ ad. 2001 No. 33
R. 17A.20 ............................ ad. 2001 No. 33
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
R. 17A.21 ............................ ad. 2001 No. 33 am. 2007 No. 40
R. 17A.22 ............................ ad. 2001 No. 33
R. 17A.23 ............................ ad. 2001 No. 33
R. 17A.24 ............................ ad. 2001 No. 33
R. 17A.25 ............................ ad. 2001 No. 33
R. 17A.26 ............................ ad. 2001 No. 33
R. 17A.27 ............................ ad. 2001 No. 33 am. 2007 No. 40
Subdivision 2
R. 17A.28 ............................ ad. 2001 No. 33 am. 2007 No. 40
Subdivision 3
R. 17A.29 ............................ ad. 2001 No. 33
R. 17A.30 ............................ ad. 2001 No. 33 am. 2001 No. 247
R. 17A.31 ............................ ad. 2001 No. 33 am. 2006 No. 356
R. 17A.32 ............................ ad. 2001 No. 33
R. 17A.33 ............................ ad. 2001 No. 33 am. 2007 No. 40
R. 17A.34 ............................ ad. 2001 No. 33 am. 2007 No. 40
R. 17A.35 ............................ ad. 2001 No. 33
Subdivision 3A
R. 17A.35A .......................... ad. 2007 No. 40
R. 17A.35B .......................... ad. 2007 No. 40
Subdivision 4
R. 17A.36 ............................ ad. 2001 No. 33 am. 2007 No. 40
R. 17A.37 ............................ ad. 2001 No. 33
R. 17A.38 ............................ ad. 2001 No. 33 am. 2007 No. 40
Division 4
R. 17A.39 ............................ ad. 2001 No. 33 am. 2007 No. 40
R. 17A.40 ............................ ad. 2001 No. 33
Division 5 Subdivision 1
Heading to Subdiv. 1 ........... ad. 2007 No. 40
R. 17A.41 ............................ ad. 2001 No. 33
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
R. 17A.41A .......................... ad. 2007 No. 40
R. 17A.42 ............................ ad. 2001 No. 33 am. 2001 No. 247
Subdivision 2
R. 17A.42A .......................... ad. 2007 No.40
R. 17A.42B .......................... ad. 2007 No. 40
R. 17A.42C.......................... ad. 2007 No. 40
R. 17A.42D.......................... ad. 2007 No. 40
R. 17A.42E .......................... ad. 2007 No. 40
R. 17A.42F .......................... ad. 2007 No. 40
Subdivision 3
Heading to Subdiv. 3 ........... ad. 2007 No. 40
R. 17A.43 ............................ ad. 2001 No. 33 am. 2007 No. 40
R. 17A.44 ............................ ad. 2001 No. 33 am. 2007 No. 40
R. 17A.45 ............................ ad. 2001 No. 33 am. 2001 No. 247; 2006 No. 356; 2007 No. 40
R. 17A.46 ............................ ad. 2001 No. 33
R. 17A.47 ............................ ad. 2001 No. 33
Subdivision 4
Heading to Subdiv. 4 ........... ad. 2007 No. 40
R. 17A.48 ............................ ad. 2001 No. 33 am. 2001 No. 247; 2006 No. 356; 2007 No. 40
Division 6
R. 17A.49 ............................ ad. 2001 No. 33
R. 17A.50 ............................ ad. 2001 No. 33 am. 2001 No. 247
Division 7
R. 17A.51 ............................ ad. 2001 No. 33
R. 17A.52 ............................ ad. 2001 No. 33 am. 2007 No. 40
R. 17A.53 ............................ ad. 2001 No. 33 am. 2007 No. 40
Division 8
R. 17A.54 ............................ ad. 2001 No. 33
R. 17A.55 ............................ ad. 2001 No. 33
Division 9
R. 17A.56 ............................ ad. 2001 No. 33 am. 2001 No. 247 Note to r. 17A.56 ................. rs. 2001 No. 247
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
R. 17A.57 ............................ ad. 2001 No. 33 am. 2001 No. 247 Heading to r. 17A.58............ rs. 2001 No. 247
R. 17A.58 ............................ ad. 2001 No. 33 am. 2001 No. 247
R. 17A.58A .......................... ad. 2001 No. 247
R. 17A.59 ............................ ad. 2001 No. 33 am. 2001 No. 247 Heading to r. 17A.60............ am. 2001 No. 247
R. 17A.60 ............................ ad. 2001 No. 33 am. 2001 No. 247 Note to r. 17A.60 ................. am. 2001 No. 247
Division 10
R. 17A.61 ............................ ad. 2001 No. 33
R. 17A.62 ............................ ad. 2001 No. 33
R. 17A.63 ............................ ad. 2001 No. 33
R. 17A.64 ............................ ad. 2001 No. 33
R. 17A.65 ............................ ad. 2001 No. 33
Division 11
R. 17A.66 ............................ ad. 2001 No. 33
R. 17A.67 ............................ ad. 2001 No. 33
R. 17A.68 ............................ ad. 2001 No. 33
R. 17A.69 ............................ ad. 2001 No. 33
R. 17A.70 ............................ ad. 2001 No. 33
R. 17A.71 ............................ ad. 2001 No. 33
R. 17A.72 ............................ ad. 2007 No. 40
R. 17A.73 ............................ ad. 2007 No. 40
Part 19
R. 19.1................................. am. 1999 No. 186
R. 19.2................................. rs. 1998 No. 258
Part 20
Part 20................................. ad. 1998 No. 346 rs. 2008 No. 122
Division 1
R. 20.1................................. ad. 1998 No. 346 am. 2001 No. 185 rs. 2008 No. 122
Division 2
R. 20.2................................. ad. 1998 No. 346 rs. 2008 No. 122
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
R. 20.3................................. ad. 1998 No. 346 am. 2002 No. 173 rs. 2008 No. 122 am. 2009 No. 150
R. 20.4................................. ad. 1998 No. 346 rs. 2008 No. 122
R. 20.5................................. ad. 1998 No. 346 rs. 2008 No. 122
R. 20.6................................. ad. 1998 No. 346 rs. 2008 No. 122
R. 20.7................................. ad.1998 No. 346 am. 2002 No. 173 rs. 2008 No. 122
R. 20.8................................. ad.1998 No. 346 am. 2002 Nos. 173 and 318 rs. 2008 No. 122 am. 2009 No. 150
R. 20.9................................. ad. 1998 No. 346 am. 1999 No. 153; 2002 Nos. 173 and 318 rs. 2008 No. 122
R. 20.10............................... ad. 1998 No. 346 rs. 2008 No. 122
R. 20.11............................... ad. 1998 No. 346 rs. 2008 No. 122
Division 3
R. 20.12............................... ad. 2008 No. 122
Division 4
R. 20.13............................... ad. 2008 No. 122
Division 5
R. 20.14............................... ad. 2008 No. 122
Division 6
R. 20.15............................... ad. 2008 No. 122
Division 7
R. 20.16............................... ad. 2008 No. 122
Part 21 Division 1
R. 21.2................................. am. 1998 No. 343; 2009 No. 332
R. 21.3................................. am. 1998 No. 343 Note to r. 21.4...................... rs. 2005 No. 211
R. 21.6................................. am. 1998 No. 346; 2009 No. 150
R. 21.11A ............................ ad. 2007 No. 40
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
Division 2
R. 21.13............................... am. 2001 No. 247; 2003 No. 214
Division 3
R. 21.21............................... am. 1998 No. 265; 2001 No. 247; 2002 No. 173
R. 21.21A ............................ ad. 2007 No. 40
R. 21.22............................... am. 1998 No. 343; 1999 No. 186
R. 21.23............................... am. 1999 No. 186 rs. 2005 No. 211 am. 2007 No. 40
R. 21.24............................... am. 2003 No. 214
R. 21.24A ............................ ad. 2007 No. 40
R. 21.24B ............................ ad. 2007 no. 40
R. 21.24C ............................ ad. 2007 No. 40
R. 21.28............................... am. 1999 No. 186; 2001 No. 247; 2005 Nos. 52 and 211; 2007 No. 40; 2008 No. 122
R. 21.29............................... am. 1999 No. 186
R. 21.30............................... rs. 1998 No. 346
R. 21.35............................... ad. 1998 No. 346 am. 2008 No. 122
Part 22
R. 22.1................................. am. 1996 No. 3
R. 22.2................................. am. 1997 No. 346
R. 22.4................................. am. 1996 No. 3
R. 22.6................................. ad. 1996 No. 3
R. 22.7................................. ad. 1998 No. 346
R. 22.8................................. ad. 1998 No. 346
Schedule 1
Schedule 1 .......................... am. 1996 No. 272; 2001 No. 247; 2006 No. 356
Schedule 3
Schedule 3 .......................... am. 1999 No. 186
Schedule 4
Schedule 4 .......................... am. 1999 No. 186
Schedule 5
Schedule 5 .......................... am. 1999 No. 186
Schedule 6
Schedule 6 .......................... am. 1996 No. 3 rs. 1998 No. 258
Schedule 7
Heading to Schedule 7 ........ rs. 1998 No. 343 Schedule 7 .......................... am. 1998 No. 343
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
Schedule 8
Schedule 8 .......................... am. 1998 No. 346; 1999 No. 186; 2006 No. 355
Schedule 9
Schedule 9 .......................... am. 1996 No. 3 rs. 1997 No. 346 am. 1998 Nos. 265 and 346; 2001 Nos. 33 and 247 rs. 2002 No. 173 am. 2005 No. 211; 2006 No. 355; 2007 No. 40; 2008
No. 122
Schedule 10
Schedule 10......................... am. 1996 No. 3 rs. 1996 No. 272; 1997 No. 346
am. 1998 Nos. 258 and 343; 1999 No. 350; 2002 Nos. 173 and 318; 2004 Nos. 24 and 194; 2005 No. 52; 2007 No. 40; 2008 No. 279
209
Table A
Table A Application, saving or transitionalprovisions
Statutory Rules 1997 No. 346
3 Application
3.1 The amendment of regulation 4.5 of the Trade Marks Regulations by regulation 4 of these regulations applies only to an application filed on or after 1 February 1998.
Select Legislative Instrument 2006 No. 356
4 Schedule 1 – transitional
IRDA has the meaning given by regulation 17A.2 of the Trade Marks Regulations 1995.
Table A
Select Legislative Instrument 2007 No. 40
9 Transitional provisions for Schedule 6 —amendments of Trade Marks Regulations 1995commencing on 27 March 2007
10 Transitional provisions for Schedule 7 —amendments of Trade Marks Regulations 1995commencing on commencement of Part 2 ofSchedule 1 to the Trade Marks Amendment Act 2006
211
Table A
Select Legislative Instrument 2008 No. 122
Transitional
under the relevant provision of the Patents Regulations 1991, as amended by these Regulations.
(4) If, in the period starting on 1 July 2008 and ending at the end of 30 June 2009: