Trade Marks Regulations 1995 (consolidated as of February 24, 2017), Australia, WIPO Lex

Main text(s)

English Trade Marks Regulations 1995 (consolidated as of February 24, 2017)

Trade Marks Regulations 1995 (consolidated as of February 24, 2017)

Prepared by the Office of Parliamentary Counsel, Canberra

Trade Marks Regulations 1995

Statutory Rules No. 341, 1995

made under the

Trade Marks Act 1995

Compilation No. 42

Compilation date: 24 February 2017

Includes amendments up to: F2016L01754

Registered: 1 March 2017

Authorised Version F2017C00153 registered 01/03/2017

About this compilation

This compilation

This is a compilation of the Trade Marks Regulations 1995 that shows the text of the law as

amended and in force on 24 February 2017 (the compilation date).

The notes at the end of this compilation (the endnotes) include information about amending

laws and the amendment history of provisions of the compiled law.

Uncommenced amendments

The effect of uncommenced amendments is not shown in the text of the compiled law. Any

uncommenced amendments affecting the law are accessible on the Legislation Register

(www.legislation.gov.au). The details of amendments made up to, but not commenced at, the

compilation date are underlined in the endnotes. For more information on any uncommenced

amendments, see the series page on the Legislation Register for the compiled law.

Application, saving and transitional provisions for provisions and amendments

If the operation of a provision or amendment of the compiled law is affected by an

application, saving or transitional provision that is not included in this compilation, details are

included in the endnotes.

Editorial changes

For more information about any editorial changes made in this compilation, see the endnotes.

Modifications

If the compiled law is modified by another law, the compiled law operates as modified but the

modification does not amend the text of the law. Accordingly, this compilation does not show

the text of the compiled law as modified. For more information on any modifications, see the

series page on the Legislation Register for the compiled law.

Self-repealing provisions

If a provision of the compiled law has been repealed in accordance with a provision of the

law, details are included in the endnotes.

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Contents

Part 1—Preliminary 1 1.1 Name of regulations.......................................................... 1

Part 2—Interpretation 2 2.1 Interpretation .................................................................... 2

2.2 Period expressed in months .............................................. 3

2.3 Giving of documents by Registrar .................................... 4

Part 3—Trade marks and trade mark rights 5 3.1 Classification of goods and services ................................. 5

3.2 Period in which action for infringement may be

brought.............................................................................. 5

Part 3A—Assisted filing service 6

Division 1—General 6

3A.1 Purpose of Part.................................................................. 6

Division 2—Request for filing assistance 7

3A.3 Request for filing assistance—form of request ................. 7

3A.4 AFS request—assessment by Registrar ............................ 8

3A.5 AFS request—formal requirements for amendment

or proceeding to Part 4 application ................................... 8

Part 4—Application for registration 10 4.1 Applications—approved form ........................................ 10

4.2 Application in approved form—requirements for

filing ............................................................................... 10

4.2AA Divisional application—additional requirement for

filing ............................................................................... 10

4.2A AFS request submitted as application—

requirements for filing .................................................... 11

4.3 Representation of trade marks ........................................ 11

4.4 Specification of goods and/or services............................ 12

4.5 Period for claiming priority for an application................ 13

4.6 How to claim priority...................................................... 13

4.7 Publication of particulars of application ......................... 13

4.8 Examination of application—report to applicant ............ 14

4.9 Examination—applicant’s response to report ................. 14

4.10 Examination—further report to applicant ....................... 14

4.11 Examination—additional requirements .......................... 15

4.12 Periods after which applications lapse ............................ 15

4.13 Deferment of acceptance ................................................ 16

4.14 Period for which acceptance is deferred ......................... 17

4.15 Trade marks containing etc certain signs ........................ 19

4.15A Grounds for rejection—trade mark identical etc to

trade mark protected under Madrid Protocol .................. 19

4.18 Request for expedited examination of application .......... 21

4.19 Expedited examinations.................................................. 21

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Part 5—Opposition to registration 22

Division 1—Preliminary 22

5.1 What Part 5 is about........................................................ 22

5.2 Definitions ...................................................................... 22

5.3 Registrar may give direction about filing

document or evidence ..................................................... 22

5.4 Notification and opportunity to make

representations ................................................................ 23

Division 2—Filing of opposition documents 24

Subdivision A—Notice of opposition 24

5.5 Filing of notice of opposition.......................................... 24

5.6 Filing of notice of intention to oppose ............................ 24

5.7 Filing of statement of grounds and particulars................ 24

5.8 Statement of grounds and particulars must be

adequate.......................................................................... 24

5.9 Extension of time for filing—application ....................... 25

5.10 Extension of time for filing—grant................................. 26

5.11 Amendment of notice of intention to oppose .................. 26

5.12 Amendment of statement of grounds and

particulars ....................................................................... 26

Subdivision B—Notice of intention to defend 27

5.13 Filing of notice of intention to defend............................. 27

Subdivision C—Evidence 27

5.14 Filing of evidence ........................................................... 27

5.15 Extension of time for filing............................................. 28

Division 3—Cooling-off period for opposition 29

5.16 Registrar may allow cooling-off period .......................... 29

Division 4—Hearing of opposition 30

5.17 Hearing ........................................................................... 30

Division 5—Miscellaneous 31

5.18 Copy of earlier Convention application to be

available to opponent ...................................................... 31

5.19 Registrar may give direction........................................... 31

5.20 Registrar must notify parties of dismissal or

discontinuance of opposition .......................................... 31

Part 6—Amendment of application for registration of a trade

mark and other documents 32

Division 1—Amendment of application for registration of trade

mark and other documents 32

6.1 Amendment of applications by Registrar........................ 32

6.2 Request to amend before publication of details .............. 32

6.3 Filing of declarations ...................................................... 32

6.4 Notification of amendments............................................ 32

Division 2—Opposition to amendment after particulars

published 33

6.5 Definitions ...................................................................... 33

6.6 Notice of opposition ....................................................... 33

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6.7 Notification and opportunity to make

representations ................................................................ 33

6.8 Practice and procedure.................................................... 33

6.9 Hearing ........................................................................... 34

6.10 Registrar may give direction........................................... 34

6.11 Registrar must notify parties of dismissal or

discontinuance of opposition .......................................... 34

Part 7—Registration of trade marks 35

Division 1—Initial registration 35

7.1 Period in which a trade mark can be registered............... 35

7.2 Particulars to be entered in the Register.......................... 35

Division 2—Renewal of registration (general) 37

7.3 Period for request for renewal......................................... 37

7.4 Notice of renewal due—when and how given ................ 37

7.5 Notice of renewal............................................................ 37

Division 3—Renewal of registration (registration delayed for 10

or more years after filing date) 38

7.6 Prescribed period (Act s 80A(3)) .................................... 38

7.7 Notice about renewal (Act s 80C)................................... 38

7.8 Notice of renewal (Act s 80E) ........................................ 38

Part 8—Amendment and cancellation of registration 39 8.1 Notice of cancellation ..................................................... 39

8.1A Notice of revocation........................................................ 39

8.2 Amendment or cancellation—matters for the court ........ 39

8.3 Grounds for application for rectification of

trade mark protected under Madrid Protocol .................. 40

8.4 Amendment because of inconsistency with

international agreements—notice of opposition.............. 40

8.5 Amendment because of inconsistency with

international agreements—opposition proceedings ........ 40

Part 9—Removal of trade mark from Register for non-use 41

Division 1—Preliminary 41

9.1 What Part 9 is about........................................................ 41

9.2 Definitions ...................................................................... 41

9.3 Registrar may give direction about filing

document or evidence ..................................................... 42

9.4 Notification and opportunity to make

representations ................................................................ 42

Division 2—Application for removal 43

9.5 Application for removal.................................................. 43

9.6 Notification of application .............................................. 43

Division 3—Filing of opposition documents 44

Subdivision A—Notice of opposition 44

9.7 Filing of notice of opposition.......................................... 44

9.8 Filing of notice of intention to oppose ............................ 44

9.9 Filing of statement of grounds and particulars................ 44

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9.10 Statement of grounds and particulars must be

adequate.......................................................................... 44

9.11 Extension of time for filing—application ....................... 45

9.12 Extension of time for filing—grant................................. 45

9.13 Amendment of notice of intention to oppose .................. 46

9.14 Amendment of statement of grounds and

particulars ....................................................................... 46

Subdivision B—Notice of intention to defend 46

9.15 Filing of notice of intention to defend............................. 46

Subdivision C—Evidence 47

9.16 Filing of evidence ........................................................... 47

9.17 Request for hearing and circumstances in which

opposition taken to have ended....................................... 48

9.18 Extension of time for filing............................................. 48

Division 4—Cooling-off period for opposition 49

9.19 Registrar may allow cooling-off period .......................... 49

Division 5—Hearing of opposition 50

9.20 Hearing ........................................................................... 50

Division 6—Miscellaneous 51

9.21 Registrar may give direction........................................... 51

9.22 Registrar must notify parties of dismissal or

discontinuance of opposition .......................................... 51

9.23 Removal of trade mark from register .............................. 51

Part 10—Assignment and transmission of trade marks 52 10.1 Applications for assignment etc to be recorded or

entered ............................................................................ 52

10.2 Recording of assignment etc—trade marks not

registered ........................................................................ 52

10.3 Particulars of recorded assignment or transmission

to be published................................................................ 53

10.4 Recording of assignment etc of registered trade

marks .............................................................................. 53

10.5 Notice to persons recorded as claiming right or

interest in trade marks..................................................... 54

Part 11—Voluntary recording of claims to interests in and

rights in respect of trade marks 55 11.1 Amendment of particulars—claimed interests or

rights ............................................................................... 55

11.2 Amendment of name, address and address for

service—claims not in the Register ................................ 55

11.3 Cancellation of particulars—claimed interests or

rights ............................................................................... 55

Part 13—Importation of goods infringing Australian trade

marks 57 13.1A Definition........................................................................ 57

13.1 Action period .................................................................. 57

13.2 Claim period ................................................................... 57

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13.3 Notice of objection to importationprescribed

document ........................................................................ 57

13.4 Notice of objection to importation—authorised

users................................................................................ 57

13.5 Claim for release of seized goods ................................... 58

13.6 Period for compliance with request of

Comptroller-General of Customs for information

etc. .................................................................................. 58

13.7 Modification of the Act in its application to

Norfolk Island................................................................. 58

13.8 Modification of the Act in its application to

Christmas Island ............................................................. 58

13.9 Modification of the Act in its application to Cocos

(Keeling) Islands............................................................. 59

Part 16—Certification trade marks 60 16.1 Copy of rules to be filed ................................................. 60

16.2 Documents to be sent to Commission............................. 60

16.3 Initial assessment of applications by Commission.......... 60

16.4 Holding of conferences ................................................... 61

16.5 Consideration of applications ......................................... 62

16.6 Criteria for Commission consideration of rules .............. 63

16.7 Matters to be included in advertisement of adverse

decision........................................................................... 63

16.8 Applications to vary rules ............................................... 63

16.9 Consideration of applications to vary rules..................... 63

16.10 Decision on variation of rules ......................................... 64

16.10A Assignment of unregistered certification trade

marks .............................................................................. 64

16.11 Assignment of registered certification trade marks......... 65

16.12 Publication of rules ......................................................... 65

Part 17—Defensive trade marks 67 17.1 Evidence in support of applications ................................ 67

17.2 Defensive trade mark based on protected

international trade mark .................................................. 67

Part 17A—Protected international trade marks under the

Madrid Protocol 68

Division 1—General 68

17A.1 Purpose of Part................................................................ 68

17A.2 Definitions for Part ......................................................... 68

17A.3 Meaning of priority date................................................. 69

17A.4 Meaning of date of effect ................................................ 69

Division 2—Application for international registration of a trade

mark 71

17A.5 Purpose of Division ........................................................ 71

17A.6 Eligibility to apply for international registration............. 71

17A.7 Application for international registration........................ 71

17A.8 Functions of Registrar..................................................... 71

17A.9 Time limit for Registrar to send application to

International Bureau ....................................................... 72

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17A.10 Subsequent designations ................................................. 72

Division 3—International registration designating Australia 73

Subdivision 1—General 73

17A.11 Purpose of Division ........................................................ 73

17A.12 Registrar to examine, and report on, IRDA .................... 73

17A.13 Use of trade mark............................................................ 73

17A.14 Specification of goods and services ................................ 73

17A.14A Representation of trade marks ........................................ 74

17A.15 Claim for priority............................................................ 74

17A.16 Examination of IRDA—report to holder ........................ 75

17A.17 Examination—holder’s response to report...................... 75

17A.18 Examination—further report to holder............................ 75

17A.19 Examination—additional requirements .......................... 76

17A.20 Period within which final decision on examination

must be notified .............................................................. 76

17A.21 Deferment of acceptance ................................................ 77

17A.22 Period for which acceptance is deferred ......................... 78

17A.23 Expedited examination ................................................... 80

17A.24 Final decision on examination ........................................ 80

17A.25 Notice of final decision on examination ......................... 80

17A.26 Appeal............................................................................. 81

17A.27 Revocation of acceptance ............................................... 81

Subdivision 2—Grounds for rejecting IRDA 81

17A.28 Grounds for rejecting IRDA ........................................... 81

Subdivision C—Opposition to IRDA 82

17A.29 Definitions ...................................................................... 82

17A.30 Registrar may give direction about filing

document or evidence ..................................................... 82

17A.31 Notification and opportunity to make

representations ................................................................ 83

17A.32 Filing of notice of opposition.......................................... 83

17A.33 Filing of notice of intention to oppose ............................ 83

17A.34 Grounds for opposing IRDA........................................... 84

17A.34A Filing of statement of grounds and particulars................ 84

17A.34B Statement of grounds and particulars must be

adequate.......................................................................... 84

17A.34C Extension of time for filing—application ....................... 85

17A.34D Extension of time for filing—grant................................. 86

17A.34E Opposition may proceed in name of other person........... 86

17A.34F Amendment of notice of intention to oppose .................. 86

17A.34G Amendment of statement of grounds and

particulars ....................................................................... 87

17A.34H Filing of notice of intention to defend............................. 87

17A.34J Filing of evidence ........................................................... 88

17A.34K Extension of time for filing............................................. 89

17A.34L Registrar may allow cooling-off period .......................... 89

17A.34M Hearing ........................................................................... 90

17A.34N Decision on opposition ................................................... 91

17A.34P Appeal............................................................................. 91

17A.34Q Registrar may give direction........................................... 91

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17A.35 Registrar must notify parties of dismissal or

discontinuance of opposition .......................................... 92

Subdivision 3A—Cancellation or limitation of an international

registration 92

17A.35A Cancellation .................................................................... 92

17A.35B Duties and powers of Registrar—notification of

limitation by International Bureau .................................. 92

Subdivision 4—Extension of protection 93

17A.36 When trade mark becomes a protected

international trade mark .................................................. 93

17A.37 Notice that trade mark is a protected international

trade mark ....................................................................... 94

17A.38 Disclaimer....................................................................... 95

Division 4—Protected international trade marks—rights and

protection 96

17A.39 Rights given to, and protection of, protected

international trade marks ................................................ 96

17A.40 Circumstances in which action may not be brought........ 96

Division 5—Protected international trade marks—amendment

or cessation of protection 98

Subdivision 1—Amendment or cessation of protection because of

cancellation, limitation or non-renewal of

international registration 98

17A.41 Cancellation of international registration........................ 98

17A.41A Duties and powers of Registrar—notification of

limitation by International Bureau .................................. 98

17A.42 Failure to renew international registration ...................... 99

Subdivision 2—Amendment or cessation of protection by

Registrar 99

17A.42A Registrar’s powers to amend or cease protection ............ 99

17A.42B Notice to be given ......................................................... 101

17A.42C Hearings and procedure ................................................ 101

17A.42D Effect of amendment or cessation of protection by

Registrar ....................................................................... 101

17A.42E Registrar to notify Comptroller-General of

Customs ........................................................................ 102

17A.42F Appeals to Federal Court or Federal Magistrates

Court ............................................................................. 102

Subdivision 3—Amendment or cessation of protection by

prescribed court 102

17A.43 Amendment or cessation of protection—

contravention of condition ............................................ 102

17A.44 Amendment or cessation of protection—loss of

exclusive rights to use trade mark................................. 103

17A.45 Amendment or cessation of protection—other

specified grounds .......................................................... 103

17A.46 Amendment or cessation may not be granted if

holder not at fault etc .................................................... 104

17A.47 Duties and powers of Registrar ..................................... 105

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Subdivision D—Cessation of protection for non-use 105

17A.48 Definitions .................................................................... 105

17A.48A Registrar may give direction about filing

document or evidence ................................................... 106

17A.48B Notification and opportunity to make

representations .............................................................. 106

17A.48C Application for cessation of protection ......................... 106

17A.48D Cessation of protection ................................................. 107

17A.48E Notification of application ............................................ 107

17A.48F Filing of notice of opposition........................................ 107

17A.48G Filing of notice of intention to oppose .......................... 108

17A.48H Opponent must have address for service....................... 108

17A.48J Filing of statement of grounds and particulars.............. 108

17A.48K Statement of grounds and particulars must be

adequate........................................................................ 108

17A.48L Extension of time for filing—application ..................... 109

17A.48M Extension of time for filing—grant............................... 109

17A.48N Amendment of notice of intention to oppose ................ 110

17A.48P Amendment of statement of grounds and

particulars ..................................................................... 110

17A.48Q Filing of notice of intention to defend........................... 110

17A.48R Filing of evidence ......................................................... 111

17A.48S Request for hearing and circumstances in which

opposition taken to have ended..................................... 112

17A.48T Extension of time for filing........................................... 112

17A.48U Registrar may allow cooling-off period ........................ 113

17A.48V Hearing ......................................................................... 113

17A.48W Registrar may give direction......................................... 114

17A.48X Registrar must notify International Bureau................... 114

17A.48Y Registrar must notify parties of dismissal or

discontinuance of opposition ........................................ 114

17A.48Z Cessation of protection of protected international

trade mark ..................................................................... 115

Division 6—Collective and certification trade marks 116

17A.49 Collective trade marks .................................................. 116

17A.50 Certification trade marks .............................................. 116

Division 7—Transformation of cancelled international

registrations 118

17A.51 Application of Division ................................................ 118

17A.52 Transformation of IRDA .............................................. 118

17A.53 Transformation of protected international trade

mark.............................................................................. 118

Division 8—Concurrence between registration and international

registration 119

17A.54 Effect of registration and protection of the same

trade mark ..................................................................... 119

17A.55 Effect of cancellation, removal or expiry of

registered trade mark .................................................... 119

Division 9—Change in ownership of international registration 120

17A.56 Application of Division ................................................ 120

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17A.57 Collective trade marks .................................................. 120

17A.58 Protected certification trade marks ............................... 120

17A.58A Unprotected certification trade marks ........................... 120

17A.59 Trade marks affected by claimed interests and

rights ............................................................................. 120

17A.60 Recording change of ownership.................................... 121

Division 10—Recording of claimed interests and rights 122

17A.61 Application to have claims recorded............................. 122

17A.62 Recording of claims ...................................................... 122

17A.63 Notification of matters affecting trade mark ................. 122

17A.64 Record not proof etc of existence of right etc ............... 122

17A.65 Amendment or cancellation of record........................... 122

Division 11—Miscellaneous 123

17A.66 Record of International Registrations ........................... 123

17A.67 Inspection...................................................................... 123

17A.68 Evidence—the Record of International

Registrations ................................................................. 124

17A.69 Evidence—international instruments ............................ 124

17A.70 Correction of errors or omissions in Record of

International Registrations............................................ 124

17A.71 Passing off actions ........................................................ 125

17A.72 Documents to be made available for public

inspection...................................................................... 125

17A.73 Security for costs .......................................................... 125

17A.74 Address for service of documents ................................. 125

Part 19—Administration 128 19.1 Trade Marks Office and sub-offices—business

hours ............................................................................. 128

19.2 Persons to whom Registrar may delegate (Act, s

206(1)) .......................................................................... 128

Part 20—Registered trade marks attorneys 129

Division 1—General 129

20.1A Application of Part........................................................ 129

20.1 Interpretation ................................................................ 129

Division 2—Obtaining registration for first time 130

20.2 Form of application....................................................... 130

20.3 Evidence that applicant meets registration

requirements ................................................................. 130

20.4 Certificate of registration .............................................. 130

20.5 Evidence of academic qualifications............................. 130

20.6 Academic qualifications ............................................... 131

20.7 Evidence of knowledge requirements ........................... 131

20.8 Knowledge requirements .............................................. 131

20.9 Exemption from a requirement in Schedule 5 to

Patents Regulations....................................................... 132

20.10 Prescribed offences ....................................................... 132

20.11 Application of Schedule 5 to Patents Regulations ........ 133

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Division 3—Accreditation of courses of study 134

20.12 Accreditation of courses of study.................................. 134

Division 4—Board examinations 135

20.13 Board examinations ...................................................... 135

Division 5—Maintaining registration and removing and

restoring name to Register of Trade Marks

Attorneys 136

20.14 Maintaining registration and removing and

restoring name to Register of Trade Marks

Attorneys ...................................................................... 136

Division 5A—Suspension of registration 137

20.14A Requirement to notify of serious offence...................... 137

20.14B Suspension from Register—serious offence ................. 137

Division 6—Discipline 139

20.15 Discipline...................................................................... 139

Division 7—Rights of registered trade marks attorneys 140

20.16 Lien............................................................................... 140

Part 20A—Incorporated trade marks attorneys 141

Division 1—General 141

20A.1 Application of Part 20A................................................ 141

20A.2 Definitions .................................................................... 141

Division 2—Obtaining registration for first time 142

20A.3 Form of application....................................................... 142

20A.4 Certificate of registration .............................................. 142

Division 3—Maintaining registration 143

20A.5 Requirements for remaining on Register of Trade

Marks Attorneys ........................................................... 143

Division 4—Removal from Register of Trade Marks Attorneys 144

20A.6 Voluntary removal of name from Register of

Trade Marks Attorneys ................................................. 144

20A.7 Failure to pay annual registration fee............................ 144

20A.8 Failure to maintain professional indemnity

insurance....................................................................... 144

Division 5—Discipline 145

Subdivision A—General 145

20A.9 Definitions .................................................................... 145

20A.10 Board may apply for cancellation or suspension of

incorporated trade marks attorney’s registration........... 145

Subdivision B—Proceedings in Disciplinary Tribunal 146

20A.11 Panel of the Disciplinary Tribunal to be

constituted..................................................................... 146

20A.11A Meetings of Panel of Disciplinary Tribunal.................. 146

20A.11B Procedure of Panel of Disciplinary Tribunal................. 146

20A.11C Panel Chair unavailable to complete hearing................ 147

20A.11D Members other than the Panel Chair unavailable to

complete hearing........................................................... 147

20A.12 Notification of hearing.................................................. 147

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20A.13 Hearings to be public except in special

circumstances................................................................ 148

20A.14 Representation before Panel of Disciplinary

Tribunal ........................................................................ 148

20A.15 Summoning of witnesses .............................................. 148

20A.16 Offences by persons appearing before a Panel of

Disciplinary Tribunal.................................................... 149

20A.17 Protection of certain persons......................................... 150

20A.18 Decision of Panel of Disciplinary Tribunal................... 150

20A.19 Notification and publication of decisions of Panel

of Disciplinary Tribunal................................................ 151

20A.20 Completion of outstanding business ............................. 152

20A.21 Former attorney may be required to provide

assistance ...................................................................... 152

Division 6—Returning to Register of Trade Marks Attorneys 154

20A.22 Restoring name to Register of Trade Marks

Attorneys ...................................................................... 154

Part 21—Miscellaneous 155

Division 1—Applications and other documents 155

21.1 Compliance with instructions on approved forms......... 155

21.2 Filing of documents—requirements as to form............. 155

21.3 Filing of documents—common requirements............... 155

21.4 Filing of documents—treatment of non-complying

documents..................................................................... 155

21.5 Filing of documents—date of receipt to be marked ...... 156

21.6 Declarations .................................................................. 156

21.7 Declarations—additional material ................................ 156

21.7A Service by post.............................................................. 157

21.8 Notification of service .................................................. 157

21.9 Notice of withdrawal of applications etc ...................... 157

21.10 Withdrawal of application etc—Registrar’s notice

to applicants.................................................................. 158

21.11 Change of address for service—notice to

interested persons.......................................................... 158

21.11A Documents to be made available for public

inspection...................................................................... 158

Division 2—Proceedings before the Registrar 160

21.12 Applications for costs ................................................... 160

21.13 Award of costs .............................................................. 160

21.14 Conduct of proceedings generally................................. 160

21.15 Opportunity to be heard by Registrar............................ 161

21.16 Written submissions and oral hearings ......................... 162

21.17 Evidence in proceedings ............................................... 162

21.18 Documents not in English............................................. 163

21.19 Registrar may use information available....................... 163

21.20 Statements of reasons for decision................................ 163

Division 2A—Extensions of time 164

21.20A Definitions .................................................................... 164

21.20B Notice of opposition ..................................................... 164

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21.20C Notification and opportunity to make

representations .............................................................. 164

21.20D Practice and procedure.................................................. 164

21.20E Hearing ......................................................................... 165

21.20F Registrar may give direction......................................... 165

21.20G Registrar must notify parties of dismissal or

discontinuance of opposition ........................................ 166

Division 3—General 167

21.21 What fees are payable ................................................... 167

21.21AA Approved means ........................................................... 168

21.21A No action permitted until fee paid................................. 168

21.22 How fees are to be paid................................................. 168

21.23 Notice of non-payment of fee ....................................... 169

21.24 Refunds etc of fees........................................................ 169

21.24A Period for doing certain acts—office not open for

business......................................................................... 169

21.24B Days when office not open for business ....................... 169

21.24C Period for doing certain acts—acts to which

section 223A does not apply ......................................... 170

21.25 Extension of time—application .................................... 170

21.28 Extension of time—prescribed acts and documents...... 171

21.29 Convention countries .................................................... 172

21.30 Rights of registered patent attorneys............................. 172

21.31 Incapacity of certain persons ........................................ 172

21.33 Directions not otherwise prescribed.............................. 173

21.34 Requirements cannot be complied with for

reasonable cause ........................................................... 173

21.35 Review of decisions ...................................................... 173

Part 22—Transitional provisions 175

Division 1—General 175

22.1 Application of the Act................................................... 175

22.2 Fees payable in relation to certain matters .................... 175

22.3 Certain delegations continue......................................... 176

22.4 Certain deferments continue ......................................... 176

22.5 Certain extensions of time continue.............................. 177

22.6 Deferment of acceptance—certain applications............ 177

22.7 Trade marks attorneys................................................... 177

22.8 Trade marks attorney examination requirements .......... 177

Division 2—Amendments made by particular instruments 179

22.9 Amendments made by the Intellectual Property

Legislation Amendment (Raising the Bar)

Regulation 2013 (No. 1)................................................ 179

22.10 Amendments made by the Customs and Other

Legislation Amendment (Australian Border Force)

Regulation 2015............................................................ 182

22.11 Amendments made by the Trade Marks

Amendment (Fees) Regulation 2016 ............................. 182

22.12 Amendments made by the Intellectual Property

Legislation Amendment (Fee Review)

Regulation 2016............................................................ 182

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22.13 Amendment made by Schedule 5 to the

Intellectual Property Legislation Amendment

(Single Economic Market and Other Measures)

Regulation 2016............................................................ 182

Division 3—Transitional provisions for Schedule 4 to the

Intellectual Property Laws Amendment Act 2015

and Schedule 2 to the Intellectual Property

Legislation Amendment (Single Economic Market

and Other Measures) Regulation 2016 184

22.14 Definitions .................................................................... 184

22.15 Transitional—registration as a trade marks

attorney ......................................................................... 184

22.16 Continuation of certain disciplinary proceedings—

individuals .................................................................... 185

22.17 Continuation of certain disciplinary proceedings—

incorporated trade marks attorneys ............................... 186

Schedule 1—Classification of goods and services 187

Part 1—Classes of goods 187

Part 2—Classes of services 190

Schedule 2—Signs that may not be registered as trade

marks 191

Schedule 3—Modifications of Part 13 of the Act

(Norfolk Island) 192

Schedule 4—Modifications of Part 13 of the Act

(Christmas Island) 194

Schedule 5—Modifications of Part 13 of the Act

(Cocos (Keeling) Islands) 196

Schedule 6—Offices of persons to whom registrar may

delegate 198

Schedule 7—Requirements for documents 199

Schedule 8—Costs, expenses and allowances 200

Part 1—Costs 200

Part 2—Expenses and allowances 201

Division 1—Expenses 201

Division 2—Allowances 202

Schedule 9—Fees 203 1 Table of fees ................................................................. 203

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Endnotes 206

Endnote 1—About the endnotes 206

Endnote 2—Abbreviation key 207

Endnote 3—Legislation history 208

Endnote 4—Amendment history 211

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Regulation 1.1

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Part 1—Preliminary

1.1 Name of regulations

These Regulations are the Trade Marks Regulations 1995.

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Regulation 2.1

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Part 2—Interpretation

2.1 Interpretation

In these Regulations, unless the contrary intention appears:

AAT means the Administrative Appeals Tribunal.

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.

AFS request has the meaning given by subregulation 3A.3(1).

approved means, for doing an action, means the means specified for the action

by the Registrar in a notice made under regulation 21.21AA and published by the

Registrar.

certificate of verification means a statement:

(a) that a document to which the statement relates:

(i) has been translated by a person who is proficient in both the language

from which the document has been translated into English and

English; and

(ii) is a true and complete translation of the accompanying document to

the best of the knowledge of the person who signs the statement; and

(b) that is dated and signed.

Code of Conduct means the standard of practice titled “Code of Conduct for

Patent and Trade Mark Attorneys” that is established by the Board from time to

time.

Designated Manager has the same meaning as in the Patents Act 1990.

Disciplinary Tribunal means the Trans-Tasman IP Attorneys Disciplinary

Tribunal established by regulation 20.61 of the Patents Regulations 1991.

earlier application, in relation to an application for the registration of a trade

mark for which a right of priority is claimed, means an application for the

registration of that trade mark in a Convention country:

(a) that was filed, at the trade marks office (or its equivalent) of that

Convention country, before the application for which the right of priority is

claimed; and

(b) on which the claim for the right of priority is based.

International Register has the meaning given by regulation 17A.2.

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international registration has the meaning given by regulation 17A.2.

IRDA has the meaning given by regulation 17A.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.

Panel Chair, in relation to a Panel of the Disciplinary Tribunal, means:

(a) the President; or

(b) if the President is unable to perform his or her functions in relation to

proceedings of the Panel because of a conflict of interest—the person

appointed under subregulation 20.64(2) of the Patents Regulations 1991 to

be the Panel Chair for the proceedings.

Panel of the Disciplinary Tribunal means a Panel constituted under

regulation 20A.11.

President means the President of the Disciplinary Tribunal.

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.

Register of Trade Marks Attorneys means the register mentioned in

section 228A of the Act.

requester has the meaning given by subregulation 3A.3(1).

2.2 Period expressed in months

In these Regulations, a period expressed in months and dating from an event,

ends:

(a) on the day, in the relevant subsequent month, which has the same number

as the day of the event; or

(b) if the relevant subsequent month has no day with the same number—on the

last day of the month.

Note: This provision expresses a contrary intention to section 2G and subsection 36(1) 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 a

calendar 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 September ends on 30 December

under this rule; it would end on 31 December under the Acts Interpretation Act 1901

provisions.

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2.3 Giving of documents by Registrar

(1) In these Regulations, the Registrar may give a document to a person by:

(a) making the document available to the person in an electronic form; and

(b) notifying the person that the document is available.

(2) If the Registrar gives a document to a person, the document is taken to have been

given to the person on the day the document is dated by the Registrar.

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Part 3—Trade marks and trade mark rights

3.1 Classification of goods and services

(1) For the purposes of subsection 19(3) of the Act (which deals with the

classification of goods and services):

(a) goods are divided into the classes of goods described in column 2 of Part 1

of Schedule 1; and

(b) services are divided into the classes of services described in column 2 of

Part 2 of Schedule 1.

(2) Each class of goods or services described in Schedule 1 has:

(a) a class number corresponding to the item number of that class in column 1

of Part 1 or 2 of Schedule 1; and

(b) a class heading corresponding to the description of that class in column 2

of Part 1 or 2 of Schedule 1.

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.

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Division 1 General

Regulation 3A.1

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Part 3A—Assisted filing service

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:

(a) a preliminary assessment from the Registrar concerning the likelihood of

the application for the proposed trade mark being successful under Part 4

of the Act; and

(b) information concerning the requirements for registration under Part 4 of the

Act.

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Division 2—Request for filing assistance

3A.3 Request for filing assistance—form of request

(1) A person proposing to submit an application under Part 4 of the Act (a requester)

may submit a request for filing assistance (an AFS request) under this Part.

(2) An AFS request must:

(a) be supported by such material and attachments as required by the Registrar

having regard to the requirements of Part 4 of the Act in relation to an

application for registration; and

(b) be accompanied by the fee prescribed for the AFS request.

(3) An AFS request:

(a) must be submitted in a manner required by the Registrar; and

(b) must contain the name of the requester; and

address and a telephone number for the requester, and:

(i) the fax number of the requester; or

(ii) the email address of the requester; and

(d) must include a representation of the trade mark that is sufficient to identify

the trade mark; and

(e) must specify the goods and/or services in relation to which the request is

made; and

(f) must not relate to a matter notified by the Registrar in the Official Journal

to be a matter for which an AFS request is not available; and

(g) if the AFS request relates to a matter for which the Registrar has notified

conditions in the Official Journal—must comply with the conditions.

(4) If the fee mentioned in paragraph (2)(b) remains unpaid 5 working days after an

AFS request is submitted, the AFS request is incomplete and is taken not to have

been submitted.

(5) A requester may amend an AFS request before it is assessed by the Registrar by

advising the Registrar of the details of the amendments and providing:

(a) any material to be added to the AFS request; and

(b) any other document required by the Registrar in relation to the amendment;

and

(6) For the fee prescribed for an amendment mentioned in paragraph (5)(c), the

Registrar may:

(a) decide to waive the fee; or

(b) decide not to waive the fee, and require that payment of the fee be made

within the period of 5 working days after that decision.

(7) The Registrar must amend the AFS request on receipt of an amendment:

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(a) that complies with subregulation (5); and

(b) in respect of which the fee, if any, has been paid.

3A.4 AFS request—assessment by Registrar

(1) After receiving an AFS request the Registrar must, as soon as practicable, assess

the AFS request having regard to the requirements of Part 4 of the Act and form

an opinion whether or not:

(a) the AFS request would, if submitted in that form as an application for

registration under Part 4 of the Act, be in accordance with that Part; and

(b) there would be grounds under Division 2 of Part 4 of the Act for rejecting

the AFS request.

(2) After forming an opinion the Registrar must, as soon as practicable, inform the

requester of:

(a) the opinion; and

(b) the procedural requirements of regulation 3A.5 for making an amendment

to the AFS request; and

of a trade mark under Part 4 of the Act.

(3) The Registrar may inform the requester:

(a) in writing, by mail, fax or email; or

(b) by telephone; or

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):

(a) amend the AFS request under subregulation 3A.5(2); or

(b) submit the AFS request as an application for registration of a trade mark

under Part 4 of the Act by payment of the fee prescribed for that Part.

(2) If the requester advises the Registrar under paragraph (1)(a) that the AFS request

is to be amended:

(a) for the purpose of adding one or more classes of goods or services to the

AFS request; or

(b) to significantly change the graphical representation of the trade mark;

the advice must include:

(d) any material to be attached to the AFS request; and

(e) any other document required by the Registrar; and

(f) any fee prescribed in relation to the amendment.

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(3) For the fee prescribed for an amendment mentioned in subregulation (2), the

Registrar may:

(a) decide to waive the fee; or

(b) decide not to waive the fee, and require that payment of the fee be made

within the period of 5 working days after that decision.

(4) For an amended AFS request to which subregulation (2) applies, and in respect

of which the fee mentioned in subregulation (3) has been paid or waived:

(a) the Registrar must amend the AFS request and as soon as practicable:

(i) assess the amended AFS request in accordance with regulation 3A.4;

and

(ii) inform the requester under subregulation 3A.4(2); and

(b) the period mentioned in subregulation (1) is extended to 5 working days

after the Registrar informs the requester in accordance with

subparagraph (a)(ii).

(5) If the requester advises the Registrar that the AFS request is to be amended for a

purpose other than that mentioned in subregulation (2), the Registrar:

(a) must amend the AFS request; and

(b) may assess the amended AFS request, insofar as the Registrar considers

practicable, having regard to:

(i) the complexity of the amendments requested; and

(ii) the length of time that remains of the period mentioned in

subregulation (1); and

inform the requester of the assessment.

(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).

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Regulation 4.1

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Part 4—Application for registration

4.1 Applications—approved form

(1) For subsection 27(2) of the Act (which deals with applications for registration),

an application for the registration of a trade mark must be:

(a) in an approved form; or

(b) an AFS request mentioned in Part 3A, in respect of which all fees were

paid within the prescribed time limits.

(2) Any material that is intended by the applicant to form part of the application for

registration of a trade mark:

(a) must be attached to the application; and

(b) is taken to be part of the application.

4.2 Application in approved form—requirements for filing

(1) To be taken to be filed, an application for registration of a trade mark that is in an

approved form must:

(a) state that the application is for registration of the trade mark, or contain a

clear indication to that effect; and

(b) include a representation of the trade mark that is sufficient to identify the

trade mark; and

made; and

(d) include sufficient information to enable the Registrar to establish the

identity of the applicant; and

(e) contain sufficient information to enable the Registrar to contact the

applicant.

(2) If an application does not meet a requirement set out in paragraph (1)(a), (b), (c)

or (d), the Registrar must give to the applicant written notice of the requirement.

(3) If the applicant meets the requirement within a period of 2 months from the date

of the notice, the application is taken to be filed on the day on which the

requirement is met.

(4) If the applicant does not meet the requirement within that period, the application

is taken not to have been filed.

4.2AA Divisional application—additional requirement for filing

A divisional application must contain the following information:

(a) a statement that the application is a divisional application;

(b) a statement identifying the parent application.

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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).

4.3 Representation of trade marks

(1) If practicable, the representation of a trade mark included in an application for

registration of the trade mark must not exceed 8 centimetres by 8 centimetres.

(2) In an application for the registration of 2 or more trade marks as a series, the

representation of each trade mark in the series must, if practicable, not exceed 8

centimetres by 8 centimetres.

(3) In an application for the registration of a trade mark that contains, or consists of,

a 3 dimensional shape:

(a) if practicable, the representation of the trade mark in the application must

be illustrated in a perspective that shows each feature of the trade mark;

and

(b) otherwise, the representation of the trade mark in the application must

include views of the trade mark that are necessary to show each feature of

the trade mark.

(4) If the Registrar reasonably believes that the views of a trade mark to which

paragraph (3)(a) or (b) applies are not sufficient to allow all features of the trade

mark to be properly examined, the Registrar may, by notice in writing, require

the applicant to give to the Registrar up to 6 additional views of the trade mark

that show the features sufficiently to permit proper examination of the trade

mark.

(5) If the representation of a trade mark in an application for registration of the trade

mark includes words of a language other than English, the applicant must file in

support of the application a translation of the words into English, if required to

do so by the Registrar at the time of application or later.

(6) If the representation of a trade mark in an application for registration of the trade

mark includes characters constituting words, being characters that are not roman

letters, the applicant must file in support of the application:

(a) a transliteration of the characters into roman letters, using the recognised

system of romanisation of the characters (if any); and

(b) a translation of the words into English.

(7) If a trade mark for which registration is sought contains or consists of a sign that

is a colour, scent, shape, sound or an aspect of packaging, or any combination of

those features, the application for registration of the trade mark must include a

concise and accurate description of the trade mark.

(8) If the Registrar reasonably believes that the description or representation of a

trade mark in an application for registration of the trade mark does not:

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(a) demonstrate the nature of the trade mark sufficiently; or

(b) show each feature of the trade mark sufficiently;

to permit proper examination of the trade mark, the Registrar may require the

applicant to give to the Registrar:

(d) a specimen of the trade mark.

(9) If a representation of a single trade mark exceeds, or the representations of the

trade marks in a series of trade marks together exceed, 8 centimetres by 8

centimetres, the representation or representations:

(a) must be attached to the application for registration of the trade mark or

trade marks; and

(b) must be taken to be part of the application.

(10) The representation of a trade mark in an application for registration of the trade

mark must be of a kind and quality that:

(a) ensures that the features of the trade mark will be preserved in the course

of time; and

(b) is suitable for reproduction.

4.4 Specification of goods and/or services

(1) For the purposes of paragraph 27(3)(b) of the Act, the following subregulations

set out the manner of specifying, in an application for the registration of a trade

mark, the goods and/or services in respect of which registration is sought.

(2) The expression ‘all goods’, ‘all services’, ‘all other goods’, or ‘all other services’

must not be used in an application for registration of a trade mark to specify the

goods and/or services in respect of which registration is sought.

(3) The goods and/or services must be grouped according to the appropriate classes

described in Schedule 1.

(4) The applicant must nominate the class number that is appropriate to the goods or

services in each group.

(5) The groups must be listed in the order of their class numbers.

(6) The goods and/or services must, as far as practicable, be specified in terms

appearing in any listing of goods and services that is:

(a) published by the Registrar; and

(b) made available for inspection by the public at the Trade Marks Office and

its sub-offices (if any).

(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.

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4.5 Period for claiming priority for an application

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.

4.6 How to claim priority

(1) For the purposes of subsection 29(1) of the Act (which deals with claims for

priority), an applicant must claim a right of priority for an application by filing

notice of the claim.

(2) Any notice under subregulation (1) must specify, in respect of the earlier

application or, if there is more than 1 earlier application, in respect of each

earlier application:

(a) the Convention country in which the earlier application was filed at the

trade marks office (or its equivalent) of that Convention country; and

(b) the date on which the earlier application was filed.

(3) If, as a result of a claim for a right of priority, more than 1 priority date applies in

relation to an application, a person who claims a right of priority under

subsection 29(1) of the Act must specify the goods and/or services to which each

priority date relates.

(4) The applicant must inform the Registrar of the number allocated to each earlier

application in the trade marks office, or its equivalent, of the Convention country

in which each earlier application was filed.

4.7 Publication of particulars of 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:

(a) if a number has been allocated to the application in the Trade Marks

Office—the number;

(b) the applicant’s name;

(d) if the application is a divisional application—particulars of the parent

application;

(e) particulars of any claim for a right of priority for the application;

(f) the class number or numbers for the goods and/or services in respect of

which registration of the trade mark is sought.

(2) The particulars must be published in 1, or more than 1, of the following ways:

(a) publication in the Official Journal;

(b) listing in a computer database maintained by the Trade Marks Office;

(3) If, before 1 January 2001, an application by:

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(a) the Sydney Organising Committee for the Olympic Games constituted by

the Sydney Organising Committee for the Olympic Games Act 1993 of

New South Wales; or

(b) Sydney Paralympic Organising Committee Limited 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.

4.8 Examination of application—report to applicant

(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:

(a) the application has not been made in accordance with the Act or these

regulations; or

(b) there are grounds under Division 2 of Part 4 of the Act for rejecting it;

the Registrar must report that belief in writing to the applicant.

(2) A report under subregulation (1) must include notice of the date on which the

application will lapse if it is not accepted earlier.

(3) If the Registrar reasonably suspects that the provisions of paragraph 27(1)(b) of

the Act do not apply in relation to all of the goods and/or services specified in an

application for registration of a trade mark, the Registrar may require the

applicant to make a declaration to the Registrar that those provisions apply to all

of those goods and/or services.

Note: Section 37 of the Act and regulation 4.12 deal with the lapsing of an application before

acceptance.

4.9 Examination—applicant’s response to report

(1) An applicant may respond in writing to the Registrar’s report under

regulation 4.8.

(2) The response may:

(a) contest a belief of the Registrar that is expressed in the report; and

(b) contest another matter that is mentioned in the report; and

(d) request that the application be amended in accordance with the Act.

Note: Section 65 of the Act relates to the amendment of an application after particulars of the

application have been published.

4.10 Examination—further report to applicant

(1) On receipt of a response under regulation 4.9, the Registrar must consider the

response.

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(2) If the Registrar continues to believe that:

(a) the application has not been made in accordance with the Act or these

regulations; or

(b) there are grounds under Division 2 of Part 4 of the Act for rejecting it;

the Registrar must report that belief in writing to the applicant.

(3) Unless acceptance of an application is deferred, a report under subregulation (2)

in relation to that application must include notice of the date on which the

application will lapse if it is not accepted earlier.

(4) Regulation 4.9 and this regulation apply to a report under subregulation (2) as if

it were a report under regulation 4.8.

4.11 Examination—additional requirements

(1) In the course of an examination of an application for which a right of priority is

claimed, the Registrar may require in writing the applicant to file:

(a) a copy of any earlier application certified in the trade marks office (or its

equivalent) of the Convention country in which it was filed; and

(b) if the earlier application is not in English:

(i) a translation of the earlier application into English; and

(ii) a certificate of verification relating to the translation.

(2) If the applicant is the successor in title to the person who made the earlier

application, the Registrar may require in writing the applicant to file

documentary evidence that is sufficient to establish the passing of title to the

applicant.

4.12 Periods after which applications lapse

(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

(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.

(2) In determining the period of 15 months for the purposes of paragraph (1)(a) or

(b) in relation to an application, no account is to be taken of a period in which

acceptance of the application is deferred under regulation 4.13.

(3) An applicant may, before the end of a period prescribed in subregulation (1), or

that period as extended under section 224 of the Act or as a result of a previous

application of subregulation (4), request the Registrar in writing to extend the

period.

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(4) The Registrar must, in accordance with a request made under subregulation (3),

extend a period, unless:

(a) the period; or

(b) that period as extended under section 224 of the Act or as 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.

4.13 Deferment of acceptance

(1) The Registrar may, at the request of the applicant in writing, defer acceptance of

an application for registration of a trade mark, if:

(a) the request is made within a period prescribed in subregulation 4.12(1); and

(b) the Registrar reasonably believes that there are grounds for rejecting the

application under subsection 44(1) or (2) of the Act, or

subregulation 4.15A(1) or (2), because of another trade mark:

(i) that is registered by another person; or

(ii) that is a protected international trade mark; or

(iii) in respect of which an application for registration, or an IRDA, has

been made by another person; and

(i) is awaiting the finalisation of proceedings in respect of the application

for registration of the other trade mark or the IRDA; or

(ii) is seeking to satisfy the Registrar as to:

(A) a matter mentioned in paragraph 44(3)(a) or (b) of the Act or

4.15A(3)(a) or (b) of these Regulations; or

(B) the matters mentioned in subsection 44(4) of 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

(iv) has begun proceedings to have the Register or the Record of

International Registrations rectified in respect of the other trade mark

and the proceedings have not been determined or otherwise disposed

of; or

(v) is awaiting renewal of the registration of the other trade mark in the

period of 6 months after registration of the other trade mark has

expired, or removal of the other trade mark from the Register; or

(vi) is awaiting renewal of the international registration of the other trade

mark in the period of 6 months after the international registration has

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expired, or removal of the other trade mark from the International

(2) The Registrar may, on his or her own initiative, defer acceptance of the

application within a period that is prescribed in subregulation 4.12(1) or that is

extended under section 224 of the Act or subregulation 4.12(4), if:

(a) the time within which proceedings mentioned in paragraph (b) may be

begun, or an application mentioned in paragraph (c) may be made, has not

ended; or

(b) appeal proceedings under a provision of the Act have begun in a prescribed

court in relation to the application; or

Registrar in relation to the first-mentioned application; or

(d) the Registrar is informed in writing that the applicant has died.

(3) The Registrar must defer acceptance of an application for registration of a

certification trade mark when a copy of the rules governing the use of the

certification trade mark is sent to the Commission in accordance with

regulation 16.2.

(4) The Registrar must notify an applicant in writing:

(a) if the applicant requests the Registrar to defer acceptance of an

application—of the Registrar’s decision to defer, or not to defer,

acceptance of the application; and

(b) if the Registrar otherwise defers acceptance of an application—of the

provision under which acceptance of the application is deferred.

4.14 Period for which acceptance is deferred

(1) The period for which acceptance of an application is deferred (the deferment

period) begins immediately after:

(a) for deferral under subregulation 4.13(1)—the date the Trade Marks Office

receives the request; or

(b) for deferral under subregulation 4.13(2) or (3)—the date of the notice of

deferment issued under subregulation 4.13(4).

(2) The deferment period ends:

(a) when the application is withdrawn; or

(b) if paragraph (a) does not apply—when the Registrar is reasonably satisfied

that there are no longer grounds for rejecting the application under

subsection 44(1) or (2) of the Act or subregulation 4.15A(1) or (2); or

subregulation (3).

(3) For the purposes of paragraph (2)(c), the deferment period ends:

(a) if acceptance is deferred because of subparagraph 4.13(1)(c)(i)—when

proceedings relating to the registration of, or the extension of protection to,

the other trade mark are finalised; and

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(b) if acceptance is deferred because of subparagraph 4.13(1)(c)(ii)—at the end

of 6 months from the date of commencement of deferment; and

proceedings under Part 9 of the Act or regulation 17A.48 in respect of the

other trade mark are finalised; and

(d) if acceptance is deferred because of subparagraph 4.13(1)(c)(iv)—when the

proceedings to have the Register or the Record of International

Registrations rectified in respect of the other trade mark are determined or

otherwise disposed of; and

(e) if acceptance is deferred because of subparagraph 4.13(1)(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:

(i) proceedings mentioned in paragraph 4.13(2)(b) may be begun; or

(ii) an application mentioned in paragraph 4.13(2)(c) may be made; and

(g) if acceptance is deferred because of paragraph 4.13(2)(b) or (c)—at the end

of:

(i) 3 months after the determination, or other disposal, of the proceedings

or review; or

(ii) such time as the court to which any appeal is brought or the AAT, or a

court to which any appeal arising from review by the AAT is brought,

allows;

(h) if acceptance is deferred because of paragraph 4.13(2)(d)—at the end of a

period after the death of the applicant that the Registrar reasonably regards

as sufficient in the circumstances; and

(j) if acceptance is deferred because of subregulation 4.13(3):

(i) if the Commission gives a certificate under subsection 175(2) of the

Act in respect of the application—when the Registrar accepts the

certification trade mark for registration; and

(ii) if the Commission does not give a certificate under that subsection—

at the end of 2 months after the date of the notice to the Registrar

under subsection 175(4) of the Act.

(4) If acceptance of an application is deferred as a result of the operation of more

than 1 of the provisions of paragraph 4.13(1)(c) and subregulation 4.13(2), the

deferment period ends in accordance with the relevant provision of

subregulation (3) under which the deferment period ends later or last, as the case

requires.

(5) The Registrar must notify the applicant in writing of:

(a) the end of a period of deferment; and

(b) if acceptance is deferred under subregulation 4.13(1)—the last day of the

relevant period prescribed by paragraph 4.12(1)(a) or (b).

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4.15 Trade marks containing etc certain signs

For the purposes of paragraph 39(2)(a) of the Act (which deals with signs), the

following signs are prescribed:

(a) the words ‘Patent’, ‘Patented’, ‘By Royal Letters Patent’, ‘Protected

International Trade Mark’, ‘Registered’, ‘Registered Design’, ‘Copyright’

‘Plant Breeder’s Rights’, ‘EL rights’, or words or symbols to the same

effect (including the symbols ‘©’ and ‘®’);

(b) the words ‘To counterfeit this is a forgery’, or words to the same effect;

of a State or Territory;

(d) a representation of the Arms or emblem of a city or town in Australia or of

a public authority or public institution in Australia;

(da) a representation of a flag of a country that is a member of the International

Union for the Protection of Industrial Property;

(e) a representation of a mark notified by the International Union for the

Protection of Industrial Property as not entitled to registration under

international arrangements;

(f) a sign specified in Schedule 2.

Note 1: For the meaning of EL rights, see section 5 of the Circuit Layouts Act 1989.

Note 2: A list of the marks mentioned in paragraph 4.15(e) is available at the Trade Marks

Office and sub-offices (if any).

4.15A Grounds for rejection—trade mark identical etc to trade mark protected

under Madrid Protocol

(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:

(i) a protected international trade mark; or

(ii) a trade mark in respect of which the Registrar has received

notification of an IRDA;

held by another person in respect of similar goods or closely related

services; and

(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:

(a) may be inconsistent with the Act; and

(b) prevail over the Act (including any other regulations or other instruments made under the Act), to the extent of any inconsistency.

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.

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(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’s services) must be rejected if:

(a) the applicant’s trade mark is substantially identical with, or deceptively

similar to:

(i) a protected international trade mark; or

(ii) a trade mark in respect of which the Registrar has 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:

(a) may be inconsistent with the Act; and

(b) prevail over the Act (including any other regulations or other instruments made under the Act), to the extent of any inconsistency.

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

(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.

(4) If the applicant’s trade mark has been used only in a particular area, the

limitations may include that the use of the trade mark is to be restricted to that

particular area.

(5) If, in a case mentioned in subregulation (1) or (2), the Registrar is satisfied that

the applicant, or the applicant and the predecessor in title of the applicant, have

continuously used the applicant’s trade mark for a period:

(a) beginning before the priority date for the other trade mark in respect of:

(i) the similar goods or closely related services; or

(ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the 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.

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4.18 Request for expedited examination of application

(1) A person who applies, or has applied, for the registration of a trade mark:

(a) may request in writing expedited examination of the application; and

(b) must include with the request a declaration stating the reasons for the

request.

(2) As soon as practicable after making a decision in relation to a request, the

Registrar must give written notice of the decision to the person who made the

request.

4.19 Expedited examinations

(1) The Registrar must, to the extent that is practicable, examine applications for the

registration of trade marks in relation to which requests under regulation 4.18 are

granted:

(a) in the order in which the requests are filed; and

(b) before examination of an application for registration of a trade mark in

relation to which:

(i) a request under regulation 4.18 is not made; or

(ii) a request made under that regulation is not granted.

(2) In the absence of a request for expedited examination of an application for

registration of a trade mark, the Registrar may expedite examination of the

application if he or she reasonably believes that expedited examination is

warranted.

(3) The relationship of an application mentioned in subregulation (2) to another

application for registration of a trade mark is a relevant circumstance for the

purposes of that subregulation.

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Part 5 Opposition to registration

Division 1 Preliminary

Regulation 5.1

22 Trade Marks Regulations 1995

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Part 5—Opposition to registration

Division 1—Preliminary

5.1 What Part 5 is about

This Part sets out requirements for the following:

(a) the filing of notices of opposition and associated documents;

(b) the amending of filed documents;

(d) a cooling-off period for an opposition;

(e) the hearing of an opposition;

(f) associated matters.

5.2 Definitions

In this Part:

notice of intention to defend means a notice filed under regulation 5.13.

notice of intention to oppose means a notice filed under regulation 5.6.

notice of opposition means:

(a) a notice of intention to oppose; and

(b) a statement of grounds and particulars.

party means an applicant or opponent.

statement of grounds and particulars means a statement by an opponent that

sets out:

(a) the grounds on which the opponent intends to rely; and

(b) the facts and circumstances forming the basis for the grounds.

trade mark application means an application for registration of a trade mark

under section 27 of the Act.

Note: The following terms are defined in section 6 of the Act:

(a) applicant;

(b) approved form;

(d) file;

(e) month;

(f) opponent;

(g) person.

5.3 Registrar may give direction about filing document or evidence

(1) If a document or evidence may or must be filed under this Part, the Registrar

may give a direction specifying:

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(a) how many copies of the document or evidence must be filed; and

(b) the form in which the document or evidence is to be filed; and

(2) If a party does not comply with the direction, the Registrar may:

(a) treat the document or evidence as not having been filed; or

(b) tell the party to comply with the direction.

(3) The Registrar may make or revoke the direction as the Registrar sees fit.

(4) Regulation 5.4 does not apply to the Registrar’s decision to make or revoke the

direction.

5.4 Notification and opportunity to make representations

(1) This regulation applies if:

(a) a party makes a request to the Registrar under this Part; or

(b) the Registrar proposes to make a decision on the Registrar’s own initiative

under this Part.

(2) The Registrar must:

(a) for paragraph (1)(a)—notify the other party of the request, including by

giving the other party a copy of the request; or

(b) for paragraph (1)(b)—notify the parties of the proposed decision.

(3) If the Registrar proposes to grant the request, the Registrar must give the parties

an opportunity to make representations:

(a) in writing; or

(b) at a hearing; or

(4) The Registrar must notify the parties of the decision.

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Division 2 Filing of opposition documents

Regulation 5.5

24 Trade Marks Regulations 1995

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Division 2—Filing of opposition documents

Subdivision A—Notice of opposition

5.5 Filing of notice of opposition

A notice of opposition is taken to be filed when the notice of intention to oppose

and the statement of grounds and particulars have been filed under

regulations 5.6 and 5.7.

5.6 Filing of notice of intention to oppose

(1) For subsection 52(2) of the Act, the period for filing a notice of intention to

oppose is 2 months from the day the acceptance of the trade mark application is

advertised in the Official Journal under paragraph 34(b) of the Act.

(2) The notice must be in an approved form.

(3) The Registrar must give a copy of the notice to the applicant.

5.7 Filing of statement of grounds and particulars

(1) A statement of grounds and particulars must be filed within one month from the

day the notice of intention to oppose is filed.

(2) The statement must be in an approved form.

5.8 Statement of grounds and particulars must be adequate

(1) The Registrar must assess the adequacy of a statement of grounds and

particulars.

(2) If the Registrar decides that the statement is adequate, the Registrar must give a

copy of the statement to the applicant.

(3) If the Registrar decides that the statement is inadequate:

(a) the Registrar may direct the opponent to rectify the inadequacy by filing

more information on the basis for one or more of the grounds; or

(b) if all the grounds are inadequately particularised, the Registrar may dismiss

the opposition; or

may:

(i) delete from the statement some or all of the material that is

inadequate; and

(ii) treat the result as the statement for the purposes of these Regulations;

and

(iii) give a copy of the amended statement to the opponent.

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(4) If the Registrar decides that the statement is still inadequate after the information

is filed under paragraph (3)(a):

(a) the Registrar may dismiss the opposition; or

(b) the Registrar may:

(i) delete from the statement some or all of the material that is

inadequate; and

(ii) treat the result as the statement for the purposes of these Regulations;

and

(iii) give a copy of the amended statement to the opponent.

(5) If the Registrar decides that the information filed under paragraph (3)(a) rectifies

the inadequacy of the statement, the Registrar must give a copy of the statement

and the information filed in relation to paragraph (3)(a) to the applicant.

(6) The opponent may apply to the Administrative Appeals Tribunal for review of a

decision under this regulation to dismiss the opposition or delete material from

the statement of grounds and particulars.

(7) Regulation 5.4 does not apply to this regulation.

5.9 Extension of time for filing—application

(1) A person who intends to oppose an application under subsection 52(1) of the Act

may request the Registrar to extend:

(a) the period for filing a notice of intention to oppose under

subregulation 5.6(1); or

(b) the period for filing a statement of grounds and particulars under

subregulation 5.7(1).

(2) A request under paragraph (1)(a) or (b) may be made:

(a) within the period for filing the document in question; or

(b) before the trade mark is entered on the Register under section 69 of the

Act.

Note: See subparagraph (3)(b)(ii) and subregulation 5.10(2) in relation to the consequences of

making the request after the filing period has ended.

(3) The request must:

(a) be in an approved form; and

(b) be accompanied by a declaration stating:

(i) the facts and circumstances forming the basis for the grounds; and

(ii) if the period for filing the notice or the statement of grounds and

particulars has ended—the reason why the request was not made

within the period.

Note: Regulations 21.6 and 21.7 deal with making and filing declarations.

(4) The request may be made only on either or both of the following grounds:

(a) an error or omission by the person, the person’s agent, the Registrar or an

employee;

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Regulation 5.10

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(b) circumstances beyond the control of the person, other than an error or

omission by the person, the person’s agent, the Registrar or an employee.

5.10 Extension of time for filing—grant

(1) The Registrar may grant a request under subregulation 5.9(1) for an extension of

time only if the Registrar is satisfied that the grounds set out in the request justify

the extension.

(2) However, if the request is made after the period for filing the notice or statement

of grounds and particulars has ended, the Registrar must not grant the extension

unless the Registrar is satisfied that there is sufficient reason for the delay in

making the request.

(3) The Registrar must decide the length of the extended period having regard to

what is reasonable in the circumstances.

5.11 Amendment of notice of intention to oppose

(1) An opponent may request the Registrar to amend a notice of intention to oppose

to correct a clerical error or obvious mistake.

(2) If an opposition is proceeding in the name of another person (the new opponent)

under section 53 of the Act, the new opponent may request the Registrar to

amend the notice of intention to oppose to record the new opponent’s name.

(3) The Registrar may grant the request on terms that the Registrar considers

appropriate.

(4) If the Registrar grants the request, the Registrar must give a copy of the amended

notice of intention to oppose to the applicant.

(5) Regulation 5.4 does not apply to a request under subregulation (1) or (2).

5.12 Amendment of statement of grounds and particulars

(1) An opponent may request the Registrar to amend the statement of grounds and

particulars to:

(a) correct an error or omission in the grounds of opposition or the facts and

circumstances forming the basis for the grounds; or

(b) amend a ground of opposition; or

(d) to amend the facts and circumstances forming the basis for the grounds.

(2) The Registrar may grant the request on terms that the Registrar considers

appropriate.

(3) However, the Registrar may grant a request to:

(a) amend a ground of opposition; or

(b) add a new ground of opposition;

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only if the Registrar is satisfied that the amendment or addition relates to

information of which the opponent could not reasonably have been aware at the

time of filing the statement.

(4) If the Registrar grants the request, the Registrar must give a copy of the amended

statement to the applicant.

Subdivision B—Notice of intention to defend

5.13 Filing of notice of intention to defend

(1) For subsection 52A(2) of the Act, a notice of intention to defend must be filed

within one month from the day the applicant is given a copy of the statement of

grounds and particulars.

(2) The Registrar must give a copy of the notice to the opponent.

Subdivision C—Evidence

5.14 Filing of evidence

(1) The Registrar must notify the parties that:

(a) all the evidence for an evidentiary period mentioned in this regulation has

been filed; or

(b) no evidence was filed for the period.

(2) The Registrar must give a copy of any evidence filed by a party under this

regulation to the other party:

(a) before the end of the relevant evidentiary period, if the Registrar considers

it appropriate to do so; or

(b) after the evidentiary period ends.

Evidence in support

(3) An opponent must file any evidence in support of the opposition within 3 months

from the day the opponent is given a copy of the notice of intention to defend.

Evidence in answer

(4) If the opponent files evidence in support of the opposition, the applicant must file

any evidence in answer to the evidence in support within 3 months from the day

the Registrar:

(a) gives the applicant:

(i) all the evidence in support; or

(ii) if the opponent files the evidence in support in instalments—the final

instalment of the evidence in support; and

(b) notifies the applicant that all the evidence in support has been filed.

(5) If the opponent does not file any evidence in support of the opposition, the

applicant must file any evidence in answer to the statement of grounds and

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particulars within 3 months from the day the Registrar notifies the applicant that

no evidence in support was filed.

Evidence in reply

(6) If the applicant files evidence in answer under subregulation (4) or (5), the

opponent must file any evidence in reply to the evidence in answer within 2

months from the day the Registrar:

(a) gives the opponent:

(i) all the evidence in answer; or

(ii) if the applicant files the evidence in answer in instalments—the final

instalment of the evidence in answer; and

(b) notifies the opponent that all the evidence in answer has been filed.

5.15 Extension of time for filing

(1) A party may request the Registrar to extend a period for filing evidence

mentioned in regulation 5.14.

(2) The Registrar may extend the period only if the Registrar is satisfied that:

(a) the party:

(i) has made all reasonable efforts to comply with all relevant filing

requirements of this Part; and

(ii) despite acting promptly and diligently at all times to ensure the filing

of the evidence within the period, is unable to do so; or

(b) there are exceptional circumstances that justify the extension.

(3) The Registrar:

(a) must decide the length of the extended period having regard to what is

reasonable in the circumstances; and

(b) may do so on terms that the Registrar considers appropriate.

(4) In this regulation:

exceptional circumstances includes the following:

(a) a circumstance beyond the control of a party that prevents the party from

complying with a filing requirement under this Part;

(b) an error or omission by the Registrar or an employee that prevents a party

from complying with a filing requirement under this Part;

stayed.

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Opposition to registration Part 5

Cooling-off period for opposition Division 3

Regulation 5.16

Trade Marks Regulations 1995 29

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 3—Cooling-off period for opposition

5.16 Registrar may allow cooling-off period

(1) This regulation applies to an opposition if:

(a) the notice of opposition has been filed; and

(b) the Registrar has not made a decision on the opposition under

subsection 55(1) of the Act; and

regulation 5.8.

(2) If the Registrar is satisfied that the parties agree to a cooling-off period, the

Registrar must allow a cooling-off period of 6 months.

(3) The Registrar must extend the cooling-off period for 6 months if, before the end

of the period, the Registrar is satisfied that the parties agree to the extension.

(4) The Registrar must not:

(a) further extend the cooling-off period; or

(b) allow more than one cooling-off period for an opposition.

(5) If a party files a notice, in an approved form, requesting the Registrar to

discontinue the cooling-off period, the Registrar must do so.

(6) The Registrar may direct the parties on steps the parties must take:

(a) if the cooling-off period is discontinued; or

(b) otherwise—when the cooling-off period ends.

(7) The opposition resumes:

(a) if the cooling-off period is discontinued; or

(b) otherwise—when the cooling-off period ends.

(8) If:

(a) the cooling-off period begins during the period mentioned in

regulation 5.13 or an evidentiary period mentioned in regulation 5.14; and

(b) the opposition resumes;

the period mentioned in regulation 5.13 or 5.14 restarts when the opposition

resumes.

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Part 5 Opposition to registration

Division 4 Hearing of opposition

Regulation 5.17

30 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 4—Hearing of opposition

5.17 Hearing

(1) This regulation applies to an opposition if:

(a) the opposition has not:

(i) been dismissed under section 222 of the Act or paragraph 5.8(3)(b) or

5.8(4)(a); or

(ii) been decided under subsection 55(1) of the Act; and

(b) the trade mark application to which the opposition relates has not lapsed

under section 54A of the Act.

(2) An applicant may request the Registrar to hold a hearing if:

(a) the evidentiary period mentioned in subregulation 5.14(3) has ended; and

(b) either:

(i) all evidence for the opposition proceeding has been filed; or

(ii) no evidence has been filed in that period.

(3) A party may request the Registrar to hold a hearing if:

(a) an evidentiary period mentioned in any of subregulations 5.14(4) to (6) has

ended; and

(b) either:

(i) all evidence for the opposition proceeding has been filed; or

(ii) no evidence has been filed in that period.

(4) The Registrar:

(a) must hold a hearing of the opposition if requested by a party; or

(b) may decide, on the Registrar’s own initiative, to hold a hearing of the

opposition.

(5) The hearing may, at the Registrar’s discretion, be:

(a) an oral hearing; or

(b) by written submissions.

(6) If the Registrar decides on an oral hearing:

(a) the Registrar must notify the parties of the date, time and place of the

hearing; and

(b) the opponent must file a summary of submissions at least 10 business days

before the hearing; and

before the hearing.

(7) The Registrar may take into account a party’s failure to file a summary of

submissions under subregulation (6) in making an award of costs.

Note: Regulations 21.15 and 21.16 deal with hearings.

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Opposition to registration Part 5

Miscellaneous Division 5

Regulation 5.18

Trade Marks Regulations 1995 31

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 5—Miscellaneous

5.18 Copy of earlier Convention application to be available to opponent

(1) In opposition proceedings relating to an application in respect of which the

applicant claims a right of priority, an opponent may request the Registrar for a

copy of an earlier application to be made available.

(2) On receiving the request, the Registrar must require the applicant to file:

(a) a copy of the earlier application certified in the trade marks office (or its

equivalent) of the Convention country in which it was filed; and

(b) if the earlier application is not in English:

(i) a translation of the earlier application into English; and

(ii) a certificate of verification relating to the translation.

(3) Subregulation (2) does not apply if the applicant has already filed the relevant

documents.

(4) The Registrar must give a copy of the documents to the opponent.

(5) If the applicant is the successor in title to the person who made the earlier

application, the Registrar may require the applicant to provide documentary

evidence that is sufficient to establish the passing of title to the applicant.

5.19 Registrar may give direction

(1) The Registrar may give a direction in relation to an opposition to which this Part

applies:

(a) if requested by a party in writing; or

(b) on the Registrar’s own initiative.

(2) If the Registrar proposes to give a direction, the Registrar must give the parties

an opportunity to make representations about the direction.

(3) A direction must not be inconsistent with the Act or these Regulations.

(4) The Registrar must notify the parties of the direction as soon as practicable.

5.20 Registrar must notify parties of dismissal or discontinuance of opposition

If an opposition is dismissed under section 222 of the Act or regulation 5.8 or

discontinued, the Registrar must notify the parties of the dismissal or

discontinuance.

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Part 6 Amendment of application for registration of a trade mark and other documents

Division 1 Amendment of application for registration of trade mark and other documents

Regulation 6.1

32 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Part 6—Amendment of application for registration of a

trade mark and other documents

Division 1—Amendment of application for registration of trade mark

and other documents

6.1 Amendment of applications by Registrar

(1) For the purposes of subsection 63(2) of the Act (which deals with amendment), if

the Registrar proposes to amend an application for the registration of a trade

mark, the Registrar must give notice in writing to the applicant:

(a) setting out the proposed amendment and the reason for making the

amendment; and

(b) stating that the proposed amendment will be made at the end of a

reasonable period stated in the notice, unless the applicant objects to the

amendment within that period.

(2) If an applicant objects to an amendment proposed by the Registrar within the

period mentioned in paragraph (1)(b), the Registrar must not make the

amendment unless the objection is withdrawn.

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

(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:

(a) the person who requested the amendment; and

(b) any other person that the Registrar thinks appropriate.

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Amendment of application for registration of a trade mark and other documents Part 6

Opposition to amendment after particulars published Division 2

Regulation 6.5

Trade Marks Regulations 1995 33

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 2—Opposition to amendment after particulars published

6.5 Definitions

In this Division:

notice of opposition means a notice filed under subregulation 6.6(1).

party means an applicant or opponent.

Note: The following terms are defined in section 6 of the Act:

(a) applicant;

(b) approved form;

(d) month;

(e) person.

6.6 Notice of opposition

(1) For subsection 65A(4) of the Act, a person may oppose a request for amendment

by filing a notice of opposition, in an approved form, within one month from the

advertisement of the request for amendment in the Official Journal under

subsection 65A(3) of the Act.

(2) The Registrar must give a copy of the notice to the applicant.

6.7 Notification and opportunity to make representations

(1) This regulation applies if:

(a) a party makes a request to the Registrar under this Division; or

(b) the Registrar proposes to make a decision on the Registrar’s own initiative

under this Division.

(2) The Registrar must:

(a) for paragraph (1)(a)—notify the other party of the request, including by

giving the other party a copy of the request; or

(b) for paragraph (1)(b)—notify the parties of the proposed decision.

(3) If the Registrar proposes to grant the request, the Registrar must give the parties

an opportunity to make representations:

(a) in writing; or

(b) at a hearing; or

(4) The Registrar must notify the parties of the Registrar’s decision.

6.8 Practice and procedure

The Registrar may:

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Part 6 Amendment of application for registration of a trade mark and other documents

Division 2 Opposition to amendment after particulars published

Regulation 6.9

34 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(a) decide the practice and procedure to be followed in an opposition to which

this Division applies; and

(b) direct the parties accordingly.

6.9 Hearing

(1) The Registrar:

(a) must hold a hearing of the opposition if requested by a party in writing; or

(b) may decide, on the Registrar’s own initiative, to hold a hearing of the

opposition.

(2) The hearing may, at the Registrar’s discretion, be:

(a) an oral hearing; or

(b) by written submissions.

(3) If the Registrar decides on an oral hearing:

(a) the Registrar must notify the parties of the date, time and place of the

hearing; and

(b) the opponent must file a summary of submissions at least 10 business days

before the hearing; and

before the hearing.

(4) The Registrar may take into account a party’s failure to file a summary of

submissions under subregulation (3) in making an award of costs.

Note: Regulations 21.15 and 21.16 deal with hearings.

(5) The Registrar must:

(a) decide the opposition; and

(b) notify the parties of the Registrar’s decision.

6.10 Registrar may give direction

(1) The Registrar may give a direction in relation to an opposition to which this

Division applies:

(a) if requested by a party in writing; or

(b) on the Registrar’s own initiative.

(2) If the Registrar proposes to give a direction, the Registrar must give the parties

an opportunity to make representations about the direction.

(3) A direction must not be inconsistent with the Act or these Regulations.

(4) The Registrar must notify the parties of the direction as soon as practicable.

6.11 Registrar must notify parties of dismissal or discontinuance of opposition

If an opposition is dismissed or discontinued, the Registrar must notify the

parties of the dismissal or discontinuance.

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Registration of trade marks Part 7

Initial registration Division 1

Regulation 7.1

Trade Marks Regulations 1995 35

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Part 7—Registration of trade marks

Division 1—Initial registration

7.1 Period in which a trade mark can be registered

(1) For the purposes of subsection 68(1) of the Act (which deals with registration),

the period for the registration of a trade mark that has been accepted for

registration is:

(a) except if paragraph (b) applies—the period from the beginning of the day

on which the acceptance is advertised in the Official Journal to the end of:

(i) the day that is 6 months after that day; or

(ii) if a later day is specified under subregulation (2) or (3)—the day

specified in that subregulation; and

(b) in the case of the death of an applicant for registration of the trade mark—

within 12 months of the date of death or within such further period as the

Registrar reasonably allows.

(2) If:

(a) proceedings in relation to the registration of the trade mark before a

prescribed court or the AAT are not determined or otherwise disposed of;

and

(b) the prescribed court or the AAT is satisfied that the registration of the trade

mark cannot take place on or before the first-mentioned day in

subparagraph (1)(a)(i);

the prescribed court or the AAT 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:

(a) proceedings in relation to the registration of the trade mark are before the

Registrar; and

(b) the Registrar is reasonably satisfied that:

(i) the registration of the trade mark cannot take place on or before the

first-mentioned day in subparagraph (1)(a)(i); and

(ii) it is appropriate to do so;

the Registrar 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).

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:

(a) if the trade mark is registered as a certification trade mark, a collective

trade mark or a defensive trade mark—an indication to that effect;

(b) the date of the registration;

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Part 7 Registration of trade marks

Division 1 Initial registration

Regulation 7.2

36 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

the Register under subsection 69(1) of the Act;

(d) the particulars of any right of priority claimed under section 29 of the Act;

(e) the filing date of the parent application on which any divisional application

is based;

(f) any number allocated to the parent application for registration of the trade

mark;

(g) the class numbers of the goods and/or services in respect of which the trade

mark is registered;

(h) the address of the owner of the trade mark;

(i) any other particulars relating to the trade mark that the Registrar reasonably

believes to be appropriate.

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Registration of trade marks Part 7

Renewal of registration (general) Division 2

Regulation 7.3

Trade Marks Regulations 1995 37

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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

(1) For the purposes of section 76 of the Act (which deals with notice of renewal

due), the period in relation to notifying a registered owner that renewal of the

registration of a trade mark is due is 2 months ending on the day on which the

registration of the trade mark expires.

(2) A notice that the renewal is due must include:

(a) a statement of the date on which the registration of the trade mark will

expire; and

(b) a statement of any fee payable.

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:

(a) a statement that the registration is renewed; and

(b) the period for which it is renewed.

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Part 7 Registration of trade marks

Division 3 Renewal of registration (registration delayed for 10 or more years after filing date)

Regulation 7.6

38 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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

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:

(a) the date on which the prescribed period expires; and

(b) the fee payable by the registered owner.

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:

(a) state that the registration is renewed; and

(b) state the period or periods for which it is renewed.

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Amendment and cancellation of registration Part 8

Regulation 8.1

Trade Marks Regulations 1995 39

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Part 8—Amendment and cancellation of registration

8.1 Notice of cancellation

(1) The Registrar must, after receiving a request from the owner of a registered trade

mark under subsection 84(1) of the Act, cancel registration of the trade mark if

the Registrar is not obliged under subsection 84(2) of the Act to notify a person.

(2) If the Registrar must notify a person under that subsection, the notice must state

that unless:

(a) the request from the owner is sooner withdrawn; or

(b) a prescribed court determines that the Registrar must not 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:

(a) before the end of the period of 2 months, each person who is notified

advises the Registrar in writing that the person does not object to

cancellation of registration of the trade mark—the Registrar must cancel

registration of the trade mark; or

(b) paragraph (a) does not apply—the Registrar must cancel 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

(b) sent, as the case requires, to the address for service of each of the

following:

(i) the registered owner;

(ii) the person recorded under Part 11 of the Act.

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

relevant:

(a) the extent to which the public interest will be affected if registration of the

trade mark is not cancelled;

(b) whether any circumstances that gave rise to the application have ceased to

exist;

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Part 8 Amendment and cancellation of registration

Regulation 8.3

40 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

services before the circumstances giving rise to the application arose;

(d) whether there is any order or other remedy, other than an order for

rectification, that would be adequate in the circumstances.

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:

(a) may be inconsistent with the Act; and

(b) prevail over the Act (including any other regulations or other instruments made under the Act), to the extent of any inconsistency.

8.4 Amendment because of inconsistency with international agreements—notice

of opposition

(1) For subsection 83A(4) of the Act, a person may oppose a request for amendment

by filing a notice of opposition with the Registrar.

(2) A notice of opposition must be:

(a) in an approved form; and

(b) filed within 1 month after the request for amendment is advertised in the

Official Journal.

(3) The opponent must serve a copy of the notice on the registered owner of the

registered trade mark.

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.

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Removal of trade mark from Register for non-use Part 9

Preliminary Division 1

Regulation 9.1

Trade Marks Regulations 1995 41

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Part 9—Removal of trade mark from Register for non-use

Division 1—Preliminary

9.1 What Part 9 is about

This Part sets out requirements for the following:

(a) the making and notification of an application for removal;

(b) the filing of notices of opposition and associated documents;

(d) the dismissal of an opposition;

(e) the hearing of an opposition;

(f) associated matters.

9.2 Definitions

In this Part:

application for removal means an application for removal of a trade mark from

the Register.

notice of intention to defend means a notice filed under regulation 9.15.

notice of intention to oppose means a notice filed under regulation 9.8.

notice of opposition means:

(a) a notice of intention to oppose; and

(b) a statement of grounds and particulars.

opponent means a person who files:

(a) a notice of intention to oppose; and

(b) a statement of grounds and particulars.

party means an applicant or opponent.

statement of grounds and particulars means a statement by an opponent that

sets out:

(a) the grounds for removal that the opponent intends to rebut; and

(b) the facts and circumstances that form the basis for the opposition to the

removal.

Note: The following terms are defined in section 6 of the Act:

(a) applicant;

(b) approved form;

(d) file;

(e) month;

(f) person.

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Part 9 Removal of trade mark from Register for non-use

Division 1 Preliminary

Regulation 9.3

42 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

9.3 Registrar may give direction about filing document or evidence

(1) If a document or evidence may or must be filed under this Part, the Registrar

may give a direction specifying:

(a) how many copies of the document or evidence must be filed; and

(b) the form in which the document or evidence is to be filed; and

(2) If a party does not comply with the direction, the Registrar may:

(a) treat the document or evidence as not having been filed; or

(b) tell the party to comply with the direction.

(3) The Registrar may make or revoke the direction as the Registrar sees fit.

(4) Regulation 9.4 does not apply to the Registrar’s decision to make or revoke the

direction.

9.4 Notification and opportunity to make representations

(1) This regulation applies if:

(a) a party makes a request to the Registrar under this Part; or

(b) the Registrar proposes to make a decision on the Registrar’s own initiative

under this Part.

(2) The Registrar must:

(a) for paragraph (1)(a)—notify the other party of the request, including by

giving the other party a copy of the request; or

(b) for paragraph (1)(b)—notify the parties of the proposed decision.

(3) If the Registrar proposes to grant the request, the Registrar must give the parties

an opportunity to make representations:

(a) in writing; or

(b) at a hearing; or

(4) The Registrar must notify the parties of the Registrar’s decision.

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Removal of trade mark from Register for non-use Part 9

Application for removal Division 2

Regulation 9.5

Trade Marks Regulations 1995 43

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 2—Application for removal

9.5 Application for removal

For paragraph 92(2)(a) of the Act, an application for removal must be in an

approved form.

9.6 Notification of application

For subsection 95(1) of the Act, the Registrar must, within one month from the

filing of the application, give a copy of the application to each person who, in the

Registrar’s opinion, should receive one.

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Part 9 Removal of trade mark from Register for non-use

Division 3 Filing of opposition documents

Regulation 9.7

44 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 3—Filing of opposition documents

Subdivision A—Notice of opposition

9.7 Filing of notice of opposition

A notice of opposition is taken to be filed when the notice of intention to oppose

and the statement of grounds and particulars have been filed under

regulations 9.8 and 9.9.

9.8 Filing of notice of intention to oppose

(1) For subsection 96(2) of the Act, the period for filing a notice of intention to

oppose is 2 months from the day the application for removal is advertised in the

Official Journal.

(2) The notice must be in an approved form.

(3) The Registrar must give a copy of the notice to the applicant.

9.9 Filing of statement of grounds and particulars

(1) A statement of grounds and particulars must be filed within one month from the

day the notice of intention to oppose is filed.

(2) The statement must be in an approved form.

9.10 Statement of grounds and particulars must be adequate

(1) The Registrar must assess the adequacy of a statement of grounds and particulars

filed under regulation 9.9.

(2) If the Registrar decides that the statement is adequate, the Registrar must give a

copy of the statement to the applicant.

(3) If the Registrar decides that the statement is inadequate, the Registrar may:

(a) direct the opponent to rectify the inadequacy by filing more information on

the basis for the opposition to the grounds for removal; or

(b) dismiss the opposition.

(4) If the Registrar decides that the information filed under paragraph (3)(a) rectifies

the inadequacy of the statement, the Registrar must give a copy of the statement

and the information to the applicant.

(5) For subsection 99A(1) of the Act, the Registrar may dismiss the opposition if:

(a) the Registrar decides that the statement is inadequate; or

(b) the Registrar has directed the opponent to file information under

paragraph (3)(a) and:

(i) the opponent fails to file the information; or

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Removal of trade mark from Register for non-use Part 9

Filing of opposition documents Division 3

Regulation 9.11

Trade Marks Regulations 1995 45

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(ii) the Registrar decides that the information filed does not rectify the

inadequacy of the statement.

(6) Regulation 9.4 does not apply to this regulation.

Note: For review rights in relation to a decision by the Registrar to dismiss an opposition, see

subsection 99A(2) of the Act.

9.11 Extension of time for filing—application

(1) A person who intends to oppose an application for removal may request the

Registrar to extend:

(a) the period for filing a notice of intention to oppose under

subregulation 9.8(1); or

(b) the period for filing a statement of grounds and particulars under

subregulation 9.9(1).

(2) A request under paragraph (1)(a) or (b) may be made within the period for filing

the document in question.

Note: See subparagraph (3)(b)(ii) and subregulation 9.12(2) in relation to the consequences of

making the request after the filing period has ended.

(3) The request must:

(a) be in an approved form; and

(b) be accompanied by a declaration stating:

(i) the facts and circumstances forming the basis for the grounds; and

(ii) if the period for filing the notice of intention to oppose or the

statement of grounds and particulars has ended—the reason why the

request was not made within the period.

Note: Regulations 21.6 and 21.7 deal with making and filing declarations.

(4) The request may be made only on either or both of the following grounds:

(a) an error or omission by the person, the person’s agent, the Registrar or an

employee;

(b) circumstances beyond the control of the person, other than an error or

omission by the person, the person’s agent, the Registrar or an employee.

9.12 Extension of time for filing—grant

(1) The Registrar may grant a request under subregulation 9.11(1) for an extension

of time only if the Registrar is satisfied that the grounds set out in the request

justify the extension.

(2) However, if the request is made after the period for filing the notice or statement

of grounds and particulars has ended, the Registrar must not grant the extension

unless the Registrar is satisfied that there is sufficient reason for the delay in

making the request.

(3) The Registrar must decide the length of the extended period having regard to

what is reasonable in the circumstances.

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Division 3 Filing of opposition documents

Regulation 9.13

46 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

9.13 Amendment of notice of intention to oppose

(1) An opponent may request the Registrar to amend a notice of intention to oppose

to correct a clerical error or obvious mistake.

(2) If an opposition is proceeding in the name of a person other than the opponent

under section 96A of the Act, the person may request the Registrar to amend the

notice of intention to oppose to record the person’s name.

(3) The Registrar may grant the request on terms that the Registrar considers

appropriate.

(4) If the Registrar grants the request, the Registrar must give a copy of the amended

notice of intention to oppose to the applicant.

(5) Regulation 9.4 does not apply to this regulation.

9.14 Amendment of statement of grounds and particulars

(1) An opponent may request the Registrar to amend the statement of grounds and

particulars to:

(a) correct an error or omission; or

(b) amend or add facts or circumstances that form the basis of the opposition to

the removal.

(2) The Registrar may grant the request on terms that the Registrar considers

appropriate.

(3) However, the Registrar may grant the request only if the Registrar is satisfied

that the amendment should be made.

(4) If the Registrar grants the request, the Registrar must give a copy of the amended

statement to the applicant.

Subdivision B—Notice of intention to defend

9.15 Filing of notice of intention to defend

(1) A notice of intention to defend must be filed within one month from the day the

applicant is given a copy of the statement of grounds and particulars.

(2) The Registrar must give the opponent a copy of the notice.

(3) If the applicant does not file the notice of intention to defend within the period

mentioned in subregulation (1), the Registrar may decide to:

(a) take the opposition to have succeeded; and

(b) refuse to remove the trade mark from the Register.

(4) The Registrar must notify the parties of the Registrar’s decision.

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Filing of opposition documents Division 3

Regulation 9.16

Trade Marks Regulations 1995 47

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Subdivision C—Evidence

9.16 Filing of evidence

(1) The Registrar must notify the parties that:

(a) all the evidence for an evidentiary period mentioned in this regulation has

been filed; or

(b) no evidence was filed for the period.

(2) The Registrar must give a copy of any evidence filed by a party under this

regulation to the other party:

(a) before the end of the relevant evidentiary period, if the Registrar considers

it appropriate to do so; or

(b) after the evidentiary period ends.

Evidence in support

(3) An opponent must file any evidence in support of the opposition within 3 months

from the day the opponent is given a copy of the notice of intention to defend the

application for removal.

Evidence in answer

(4) If the opponent files evidence in support of the opposition, the applicant must file

any evidence in answer to the opponent’s evidence within 3 months from the day

the Registrar:

(a) gives the applicant:

(i) all the evidence in support; or

(ii) if the opponent files the evidence in support in instalments—the final

instalment of the evidence in support; and

(b) notifies the applicant that all the evidence in support has been filed.

(5) If the opponent does not file any evidence in support of the opposition,

regulation 9.17 applies.

Evidence in reply

(6) If the applicant files evidence in answer under subregulation (4), the opponent

must file any evidence in reply to the evidence in answer within 2 months from

the day the Registrar:

(a) gives the opponent:

(i) all the evidence in answer; or

(ii) if the applicant files the evidence in answer in instalments—the final

instalment of the evidence in answer; and

(b) notifies the opponent that all the evidence in answer has been filed.

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Division 3 Filing of opposition documents

Regulation 9.17

48 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

9.17 Request for hearing and circumstances in which opposition taken to have

ended

(1) If an opponent requests the Registrar, within the period for filing evidence in

support mentioned in subregulation 9.16(3), to hear the opposition, the Registrar

must do so.

(2) The opposition is taken to have ended, but not to have been discontinued or

dismissed, if the opponent does not:

(a) file evidence in support in accordance with subregulation 9.16(3); or

(b) ask for a hearing under subregulation (1).

(3) The application for removal is taken to be unopposed if:

(a) the opposition is taken to have ended under subregulation (2); and

(b) the Registrar is satisfied that the application for removal is in order.

Note 1: See section 97 of the Act in relation to what the Registrar must do if the application for

removal is unopposed.

Note 2: Regulations 21.15 and 21.16 deal with hearings.

9.18 Extension of time for filing

(1) A party may request the Registrar to extend a period for filing evidence

mentioned in regulation 9.16.

(2) The Registrar may extend the period only if the Registrar is satisfied that:

(a) the party:

(i) has made all reasonable efforts to comply with all relevant filing

requirements of this Part; and

(ii) despite acting promptly and diligently at all times to ensure the filing

of the evidence within the period, is unable to do so; or

(b) there are exceptional circumstances that justify the extension.

(3) The Registrar:

(a) must decide the length of the extended period having regard to what is

reasonable in the circumstances; and

(b) may do so on terms that the Registrar considers appropriate.

(4) In this regulation:

exceptional circumstances includes the following:

(a) a circumstance beyond the control of a party that prevents the party from

complying with a filing requirement under this Part;

(b) an error or omission by the Registrar or an employee that prevents a party

from complying with a filing requirement under this Part;

stayed.

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Cooling-off period for opposition Division 4

Regulation 9.19

Trade Marks Regulations 1995 49

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 4—Cooling-off period for opposition

9.19 Registrar may allow cooling-off period

(1) This regulation applies to an opposition if:

(a) the notice of opposition has been filed; and

(b) the Registrar has not decided to remove the trade mark under

subsection 101(1) of the Act; and

(2) If the Registrar is satisfied that the parties agree to a cooling-off period, the

Registrar must allow a cooling-off period of 6 months.

(3) The Registrar must extend the cooling-off period for 6 months if, before the end

of the period, the Registrar is satisfied that the parties agree to the extension.

(4) The Registrar must not:

(a) further extend the cooling-off period; or

(b) allow more than one cooling-off period for an opposition.

(5) If a party files a notice, in an approved form, requesting the Registrar to

discontinue the cooling-off period, the Registrar must do so.

(6) The Registrar may direct the parties on steps the parties must take:

(a) if the cooling-off period is discontinued; or

(b) otherwise—when the cooling-off period ends.

(7) The opposition resumes:

(a) if the cooling-off period is discontinued; or

(b) otherwise—when the cooling-off period ends.

(8) If:

(a) the cooling-off period begins during the period mentioned in

regulation 9.15 or an evidentiary period mentioned in regulation 9.16; and

(b) the opposition resumes;

the period mentioned in regulation 9.15 or 9.16 restarts when the opposition

resumes.

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Division 5 Hearing of opposition

Regulation 9.20

50 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 5—Hearing of opposition

9.20 Hearing

(1) This regulation applies to an opposition if the opposition has not been dismissed

under regulation 9.10 or discontinued.

(2) A party may request the Registrar to hold a hearing if an evidentiary period

mentioned in regulation 9.16 has ended; and either

(a) all evidence for the opposition proceeding has been filed; or

(b) no evidence has been filed in that period.

(3) The Registrar:

(a) must hold a hearing of the opposition if requested by a party in writing; or

(b) may decide, on the Registrar’s own initiative, to hold a hearing of the

opposition.

(4) The hearing may, at the Registrar’s discretion, be:

(a) an oral hearing; or

(b) by written submissions.

(5) If the Registrar decides on an oral hearing:

(a) the Registrar must notify the parties of the date, time and place of the

hearing; and

(b) the opponent must file a summary of submissions at least 10 business days

before the hearing; and

before the hearing.

(6) The Registrar may take into account a party’s failure to file a summary of

submissions under subregulation (5) in making an award of costs.

Note: Regulations 21.15 and 21.16 deal with hearings.

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Miscellaneous Division 6

Regulation 9.21

Trade Marks Regulations 1995 51

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 6—Miscellaneous

9.21 Registrar may give direction

(1) The Registrar may give a direction in relation to an opposition to which this

Division applies:

(a) if requested by a party in writing; or

(b) on the Registrar’s own initiative.

(2) If the Registrar proposes to give a direction, the Registrar must give the parties

an opportunity to make representations about the direction.

(3) A direction must not be inconsistent with the Act or these Regulations.

(4) The Registrar must notify the parties of the direction as soon as practicable.

9.22 Registrar must notify parties of dismissal or discontinuance of opposition

If an opposition is dismissed under regulation 9.10 or discontinued, the Registrar

must notify the parties of the dismissal or discontinuance.

9.23 Removal of trade mark from register

If the Registrar dismisses the opposition under regulation 9.10, the Registrar

must remove the trade mark from the Register in respect of the goods, services,

or both, specified in the application for removal.

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Part 10 Assignment and transmission of trade marks

Regulation 10.1

52 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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:

(a) a document that establishes the title to a trade mark of the assignee, or of

the person to whom the trade mark has been transmitted;

(b) evidence in writing of consent of the Commission to the assignment of a

certification trade mark.

10.2 Recording of assignment etc—trade marks not registered

(1) For the purposes of paragraph 108(1)(a) of the Act (which deals with assignment

and transmission), the Registrar must record particulars of the assignment or

transmission of a trade mark in accordance with this regulation unless:

(a) the application to assign or transmit the trade mark is withdrawn; or

(b) a prescribed court determines otherwise.

(2) If there is no record made under Part 11 of the Act of a person claiming an

interest in, or a right in respect of, the trade mark, the Registrar must record the

particulars after ascertaining that a claim has not been recorded.

(3) If:

(a) there is a record made under Part 11 of the Act of a person, or persons,

claiming an interest in, or a right in respect of, the trade mark; and

(b) the Registrar has notified that person, or each of those persons, under

subregulation 10.5(1); and

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:

(a) paragraphs (3)(a) and (b) apply; and

(b) the person, or any of the persons, notified by the Registrar under

subregulation 10.5(1) has not consented in writing to the assignment or

transmission of the trade mark within the period of 2 months from the date

of the notice;

the Registrar must record the particulars as soon as practicable after the end of

that period.

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Regulation 10.3

Trade Marks Regulations 1995 53

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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):

(a) the following particulars of an assignment or transmission of a trade mark

for which registration is sought must be published:

(i) if a number has been allocated in the Trade Marks Office to the

application for registration of the trade mark—the number;

(ii) the name of the person to whom the trade mark is recorded as having

been assigned or transmitted;

(iii) the day on which the particulars of the assignment or transmission

were recorded; and

(b) if details of an application for registration of the trade mark have been

published in a way described in subregulation 4.7(2)—the particulars of the

assignment or transmission mentioned in paragraph (a) must be published

in the same way.

10.4 Recording of assignment etc of registered trade marks

(1) For the purposes of paragraph 110(1)(a) of the Act (which deals with assignment

and transmission), the Registrar must record particulars of the assignment or

transmission of a trade mark in accordance with this regulation, unless:

(a) the application to assign or transmit the trade mark is withdrawn; or

(b) a prescribed court determines otherwise.

(2) If there is no record made under Part 11 of the Act of a person claiming an

interest in, or a right in respect of, the trade mark, the Registrar must record the

particulars in the Register after ascertaining that a claim has not been recorded.

(3) If:

(a) there is a record made under Part 11 of the Act of a person, or persons,

claiming an interest in, or a right in respect of, the trade mark; and

(b) the Registrar has notified that person, or each of those persons, under

subregulation 10.5(1); and

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 in the Register after the Registrar has

received the last notice consenting to the assignment or transmission.

(4) If:

(a) paragraphs (3)(a) and (b) apply; and

(b) the person, or any of the persons, notified by the Registrar under

subregulation 10.5(1) has not consented in writing to the assignment or

transmission of the trade mark within the period of 2 months from the date

of the notice;

the Registrar must record the particulars in the Register as soon as practicable

after the end of that period.

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Regulation 10.5

54 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

10.5 Notice to persons recorded as claiming right or interest in trade marks

(1) For the purposes of section 111 of the Act, the Registrar must give notice in

writing to a person recorded under Part 11 of the Act as claiming an interest in,

or a right in respect of, a trade mark stating that the Registrar will record the

assignment or transmission of the trade mark at the end of a period of 2 months

from the date of the notice, unless:

(a) the application to assign or transmit the trade mark is withdrawn; or

(b) a prescribed court determines otherwise; or

subregulation has already notified the Registrar in writing that the person

consents to the assignment or transmission.

(2) Each notice under subregulation (1) in respect of a particular trade mark must be

given on the same day.

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Voluntary recording of claims to interests in and rights in respect of trade marks Part 11

Regulation 11.1

Trade Marks Regulations 1995 55

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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

(1) For the purposes of sections 115 and 119 of the Act (which deal with amendment

and cancellation of particulars), particulars of a claim to an interest in, or to a

right in respect of, a trade mark (other than the name, address or address for

service of a person whose claim is recorded) entered in the Register or recorded

under Division 3 of Part 11 of the Act may be amended in accordance with this

regulation.

(2) A request by a person to amend particulars of a claim to an interest in, or to a

right in respect of, a trade mark must be:

(a) in writing, in an approved form; and

(b) accompanied by material supporting the person’s entitlement to make the

request.

(3) The Registrar must amend the particulars in accordance with the request if:

(a) the request is made in accordance with subregulation (2); and

(b) the Registrar is reasonably satisfied that the person making the request is

entitled to make the request.

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

(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

(1) For the purposes of sections 115 and 119 of the Act (which deal with amendment

and cancellation of particulars), particulars of a claim to an interest in, or to a

right in respect of, a trade mark, entered in the Register or recorded under

Division 3 of Part 11 of the Act may be cancelled in accordance with this

regulation.

(2) A request to cancel particulars of a claim to an interest in, or to a right in respect

of, a trade mark must be made in writing:

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56 Trade Marks Regulations 1995

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(a) by the person whose claim is recorded; or

(b) by the owner of the trade mark; or

mark; or

(d) if the request has with it the written consent to the cancellation of 1 of the

persons mentioned in paragraph (c)—by the other person mentioned in that

paragraph.

(3) If a request is made under paragraph (2)(a), (c) or (d), the Registrar must cancel

the particulars in accordance with the request.

(4) If a request is made under paragraph (2)(b), the Registrar must notify in writing

the person whose claim is recorded that:

(a) the request has been made; and

(b) unless the request is withdrawn or a prescribed court orders otherwise, the

Registrar will cancel particulars of the claim in accordance with the request

as soon as practicable after the end of a period of 2 months from the date of

the notice.

(5) Unless a request made under paragraph (2)(b) is withdrawn or a prescribed court

determines otherwise, the Registrar must, as soon as practicable:

(a) if, before the end of the period mentioned in paragraph (4)(b), a person the

particulars of whose claim are recorded informs the Registrar in writing

that the person does not object to cancellation of the particulars—cancel

the particulars in accordance with the request; or

(b) if paragraph (a) does not apply—cancel the particulars after the end of that

period in accordance with the request.

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Importation of goods infringing Australian trade marks Part 13

Regulation 13.1A

Trade Marks Regulations 1995 57

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Part 13—Importation of goods infringing Australian trade

marks

13.1A Definition

In this Part, a reference to the Comptroller-General of Customs includes a

reference to:

(a) for Norfolk Island—the Collector as defined in the Customs Act 1913 of

Norfolk Island; and

(b) for Christmas Island—the Comptroller as defined in the Customs Act 1901

of Christmas Island; and

Customs Act 1901 of the Cocos (Keeling) Islands.

13.1 Action period

For the definition of action period in section 6 of the Act, the period is 10

working days.

13.2 Claim period

For the definition of claim period in section 6 of the Act, the period is 10

working days.

13.3 Notice of objection to importationprescribed document

For subsection 132(1) of the Act, a document that sets out the particulars of

registration of the registered trade mark is prescribed.

13.4 Notice of objection to importation—authorised users

(1) For paragraph 132(3)(b) of the Act, the period is 2 months from the day the

request is made by the authorised user under subsection 132(2) of the Act.

(2) For paragraph 132(3)(e) of the Act, the authorised user must give to the

Comptroller-General of Customs documents that show:

(a) the authorised user has power to give a notice of objection under

subsection 132(1) of the Act; and

(b) the authorised user has made the request; and

notice after the period mentioned in subregulation (1) has ended—the

period has ended.

Note: Examples of documents for paragraph (2)(a) are:

(a) an agreement between the registered owner of a trade mark, and the authorised user of the trade mark, that the authorised user of the trade mark is able to give notice of objection; and

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58 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(b) a declaration by the registered owner that the authorised user of the trade mark is able to give notice of objection.

13.5 Claim for release of seized goods

(1) For paragraph 136(3)(a) of the Act, the claim must be in a form approved by the

Comptroller-General of Customs.

(2) For paragraph 136(3)(b) of the Act, the claim must include the following

information:

(a) the designated owner’s full name, home or business address and address

for service;

(b) a telephone number for the designated owner;

(d) if the designated owner’s home or business address is not in Australia:

(i) the full name and the home or business address of a person who is the

designated owner’s agent in Australia; and

(ii) an address for service for the person who is the designated owner’s

agent in Australia; and

(iii) a telephone number for the person; and

(iv) information showing that the person agreed to be the designated

owner’s agent;

(e) if a person or body other than the agent made arrangements on the

designated owner’s behalf for the seized goods to be brought to Australia:

(i) the full name, home or business address and address for service of the

person or body; and

(ii) a telephone number for the person or body.

Note: Examples of grounds for paragraph (c) are:

(a) that the goods do not infringe the notified trade mark; and

(b) that the importation of the goods does not infringe the notified trade mark.

13.6 Period for compliance with request of Comptroller-General of Customs for

information etc.

For the purposes of subsection 143(2) of the Act (which deals with giving

information to the Comptroller-General of Customs), 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.

13.7 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.

13.8 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.

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Regulation 13.9

Trade Marks Regulations 1995 59

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13.9 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.

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Part 16 Certification trade marks

Regulation 16.1

60 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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:

(a) the application has been made in accordance with this Act; and

(b) there are no grounds for rejecting it;

the Registrar must send to the Commission copies of the documents mentioned

in subregulation (2).

(2) For subregulation (1), the documents are:

(a) the application for registration; and

(b) a notification of any amendment made to the application for registration of

a certification trade mark; and

(d) any other document that is relevant to the application.

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.

(2) As soon as practicable after the initial assessment, the Commission must:

(a) notify the applicant and the Registrar of the initial assessment; and

(b) state in the notice to the applicant that the initial assessment will be

advertised in the Official Journal; and

may:

(i) respond in writing to the Commission; and

(ii) request the Commission in writing to hold a 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.

(3) After receiving notice from the Commission, the Registrar must:

(a) advertise the initial assessment in the Official Journal; and

(b) include in the advertisement a statement mentioned in paragraph (2)(c).

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Regulation 16.4

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(4) If, in the period that ends 1 month after the date of the advertisement in the

Official Journal of an initial assessment:

(a) a person responds in writing to the Commission in relation to a notice

under subregulation (2) or an advertisement under subregulation (3); and

(b) no person requests the Commission in writing to hold a conference on a

matter included in the initial assessment;

the Commission must, before making a decision on the application:

paragraph (a) refers that is received from another person; and

(d) invite the applicant and each respondent to make a written submission on

each response mentioned in paragraph (c).

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:

(a) a person requests the Commission in writing to hold a conference on a

matter included in the initial assessment; and

(b) no 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.

(2) As soon as practicable after the Commission receives a request under

subregulation (1) for a conference, the Commission must:

(a) invite the applicant and any other person mentioned in subregulation (1):

(i) to attend the conference; and

(ii) to make an oral or written submission at the conference on the views

expressed by another person that are mentioned in

subparagraph (b)(ii); and

(b) give to the applicant and any other person mentioned in subregulation (1):

(i) reasonable notice of the time, date and place of the conference; and

(ii) a reasonable opportunity to express views that are relevant to the

conference, either orally at, or by written submission before or during,

the conference; and

(iii) a copy of each written submission to which subparagraph (ii) refers

that is made by another person.

(3) If, in the period that ends 1 month after the date of the advertisement in the

Official Journal of an initial assessment:

(a) a person requests the Commission in writing to hold a conference on a

matter included in the initial assessment; and

(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);

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the Commission must hold the conference before it makes a decision on the

application.

(4) As soon as practicable after the Commission receives a request under

subregulation (3) for a conference, the Commission must:

(a) invite the applicant and any person who has responded in writing to the

Commission:

(i) to attend the conference; and

(ii) to make an oral or written submission at the conference on the views

expressed by another person that are mentioned in

subparagraph (b)(ii); and

(b) give to the applicant and any person who has responded in writing to the

Commission:

(i) reasonable notice in writing of the time, date and place of the

conference; and

(ii) a reasonable opportunity to express views that are relevant to the

conference, either orally at, or by written submission before or during,

the conference; and

(iii) a copy of each response to which paragraph (3)(b) refers, and of each

written submission to which subparagraph (ii) refers, that is made by

another person.

(5) If a person who is invited to attend a conference:

(a) informs the Commission that the person does not wish to attend the

conference; or

(b) does not attend the conference;

the conference may proceed in the absence of the person.

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 consideration of applications), the Commission must have

regard to the matters specified in subregulation (2).

(2) The Commission must have regard to:

(a) the initial assessment; and

(b) any response in relation to a notice under subregulation 16.3(2) or an

advertisement under subregulation 16.3(3) that is relevant; and

the initial assessment, whether or not the submission is made in relation to

a conference; and

(d) any relevant oral submission made during a conference; and

(e) any other relevant matter.

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Trade Marks Regulations 1995 63

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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:

(a) the principles relating to restrictive trade practices set out in Part IV of the

Trade Practices Act 1974;

(b) the principles relating to unconscionable conduct set out in Part IVA of that

Act;

information set out in Part V of that Act.

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 AAT for the review of the decision to which the advertisement

relates.

16.8 Applications to vary rules

(1) For the purposes of subsection 178(1) of the Act (which deals with the variation

of rules), the registered owner of a certification trade mark may apply to the

Commission to approve a variation of the rules governing the use of the

certification trade mark.

(2) An application to approve the variation of the rules governing the use of a

registered certification trade mark must:

(a) be in writing; and

(b) have with it a copy of the rules governing the use of the registered

certification trade mark that incorporate the proposed variation.

16.9 Consideration of applications to vary rules

(1) The Commission must make an initial assessment of an application for approval

of the variation of the rules governing the use of a registered certification trade

mark as soon as practicable after it receives the application.

(2) Subregulations 16.3(2), (3) and (4) and regulation 16.4 apply to an application to

approve the variation of the rules governing the use of a registered certification

trade mark as if a reference in those provisions to an application for registration

of a certification trade mark were a reference to an application to approve the

variation of the rules governing the use of a registered certification trade mark.

(3) Subregulation 16.5(2) applies to a decision whether to approve an application for

variation of the rules governing the use of a registered certification trade mark.

Note: Subsection 178(3) of the Act requires the Commission, in deciding whether to approve

a variation, to have regard to prescribed criteria, which are the criteria set out in

regulation 16.6.

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64 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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

(b) are satisfactory having regard to the criteria prescribed in regulation 16.6;

and

certifier are sufficient to enable the person to assess competently whether

goods or services meet the certification requirements.

(2) If the Commission approves a variation of the rules, the Commission must:

(a) notify the registered owner, in writing, of its decision to approve a

variation of the rules; and

(b) certify in writing that it is satisfied of the matters mentioned in

subsection 178(3) of the Act and in subregulation (1); and

(d) send a certified copy of the rules as varied to the Registrar.

(3) If the Commission decides not to approve a variation of the rules, the

Commission must notify the Registrar and the registered owner, in writing, of its

decision not to approve a variation of the rules.

(4) The Registrar must publish in the Official Journal notice of the Commission’s

decision to approve or not approve a variation of the rules.

(5) The notice to be published 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 AAT for review of the decision to which the notice relates.

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:

(a) be made by the applicant for registration of the certification trade mark;

and

(b) state the name, address, and address for service of the prospective assignee;

and

the same rules governing use of the certification trade mark that the

applicant for registration applies, or proposes to apply; and

(d) if the prospective assignee does not propose to apply those rules:

(i) state any variation of the rules that the prospective assignee proposes

to apply after assignment; and

(ii) have with it a copy of the rules incorporating the proposed variation

that the prospective assignee proposes to apply after assignment.

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(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:

(a) whether under the proposed rules the attributes a person must have to

become an approved certifier are sufficient, in the opinion of the

Commission, to enable a person to competently assess whether or not

goods or services meet the certification requirements;

(b) whether the proposed rules would not be to the detriment of the public;

prescribed in regulation 16.6.

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:

(a) be made by the registered owner of the certification trade mark; and

(b) state the name, address, and address for service of the prospective assignee;

and

assignment to apply the same rules governing use of the registered

certification trade mark that the registered owner of the trade mark applies;

and

(d) if the prospective assignee does not propose to continue to apply those

rules:

(i) state any variation of the rules that the prospective assignee proposes

to apply after assignment; and

(ii) have with it a copy of the rules incorporating the proposed variation

that the prospective assignee proposes to apply after assignment.

(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:

(a) whether under the proposed rules the attributes a person must have to

become an approved certifier are sufficient, in the opinion of the

Commission, to enable a person to competently assess whether or not

goods or services meet the certification requirements;

(b) whether the proposed rules would not be to the detriment of the public;

prescribed in regulation 16.6.

16.12 Publication of rules

(1) The Registrar must publish the rules governing the use of the certification trade

mark as soon as practicable after a copy of the rules is filed in accordance with

subsection 173(1) of the Act.

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(2) The Registrar must publish the certified copy of the rules, provided to the

Registrar by the Commission in accordance with subsection 175(2) of the Act, as

soon as practicable after the Registrar advertises acceptance of the application in

the Official Journal in accordance with paragraph 176(3)(b) of the Act.

(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):

(a) a listing in a computer database that is publicly available; or

(b) making the rules or certified copy of the rules available for public

inspection.

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Regulation 17.1

Trade Marks Regulations 1995 67

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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

(1) This regulation applies if, because of the extent to which a protected international

trade mark has been used in relation to all or any of the goods or services in

respect of which it is protected, it is likely that the use of the trade mark in

relation to other goods or services would be taken to indicate that there is a

connection between those other goods or services and the holder of the protected

international trade mark.

(2) The holder of the protected international trade mark may apply for its registration

as a defensive trade mark in respect of any or all of the other goods or services.

(3) Part 17 of the Act applies for the purposes of an application under

subregulation (2) as if:

(a) a reference in that Part to a registered trade mark were a reference to the

protected international trade mark; and

(b) a reference in that Part to goods or services in respect of which a trade

mark is registered were a reference to goods or services protected by the

protected international trade mark; and

reference to the holder of the protected international trade mark; and

(d) the reference in paragraph 187(c) of the Act to a trade mark that is not

registered as a trade mark in the name of the applicant included a trade

mark that is not a protected international trade mark held by the applicant;

and

(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.

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Part 17A Protected international trade marks under the Madrid Protocol

Division 1 General

Regulation 17A.1

68 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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 September 2009.

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

a request was made under Article 3 ter

(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 3 ter

(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

(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.

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General Division 1

Regulation 17A.3

Trade Marks Regulations 1995 69

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

international registration designating Australia, or IRDA, means a request,

made under Article 3 ter

(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

(1) The priority date for a trade mark that is the subject of an IRDA in respect of

particular goods or services is the date that would be the date of effect of the

protection of the trade mark in respect of those goods or services if the trade

mark became a protected international trade mark.

(2) The priority date for a protected international trade mark in respect of particular

goods or services is the date of effect of the protection of the trade mark in

respect of those goods or services.

17A.4 Meaning of date of effect

(1) Subject to subregulation (2), the date of effect of the protection of a protected

international trade mark is:

(a) if the request for extension of protection to Australia was made under

Article 3 ter

(1) of the Protocol—the date of international registration of the

trade mark; or

(b) if the request for extension of protection to Australia was made under

Article 3 ter

(2) of the Protocol—the date of recording of the request.

(2) If:

(a) the request for extension of protection to Australia was in respect of a trade

mark whose registration had also been sought in 1 or more Convention

countries; and

(b) the holder claimed a right of priority under regulation 17A.15 for

protection of the trade mark in respect of particular goods or services; and

the protection of the trade mark is taken to have had effect:

(d) if an application to register the trade mark was made in only 1 Convention

country—from (and including) the day on which the application was made

in that country; or

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70 Trade Marks Regulations 1995

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(e) if applications to register the trade mark were made in more than 1

Convention country—from (and including) the day on which the earliest of

those applications was made.

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Protected international trade marks under the Madrid Protocol Part 17A

Application for international registration of a trade mark Division 2

Regulation 17A.5

Trade Marks Regulations 1995 71

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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.

17A.6 Eligibility to apply for international registration

(1) A person who is:

(a) the registered owner of a registered trade mark; or

(b) an applicant for registration of a trade mark;

may apply for international registration of the trade mark.

(2) The person must:

(a) be an Australian citizen; or

(b) be domiciled in Australia; or

Australia.

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

(1) Subject to subregulation (2), the application must:

(a) comply with the requirements of the Protocol; and

(b) be filed with the International Bureau through the intermediary of the

Trade Marks Office.

(2) The applicant must use the official form issued by the International Bureau or

another form that requires the same information and uses the same format as the

official form.

17A.8 Functions of Registrar

(1) The Registrar must perform the functions, under the Protocol, of the Office of

origin in relation to:

(a) the application; and

(b) if the application results in an international registration, the international

registration.

(2) In particular, the Registrar must:

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Regulation 17A.9

72 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(a) check the application; and

(b) certify that the information in the application corresponds with the

information held by the Registrar in respect of the application for

registration of the trade mark (the basic application) or the registration of

the trade mark (the basic registration), as the case requires; and

International Bureau if the basic application or the basic registration is

withdrawn, restricted or cancelled or lapses, expires or otherwise ceases to

have effect in respect of some or all of the goods or services listed in the

international registration:

(i) within 5 years after the date of the international registration; or

(ii) after that time, if the action that resulted in the basic application or the

basic registration being so affected began before the end of that 5 year

period.

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

(1) The holder of an international registration for which the Trade Marks Office is

the Office of the Contracting Party of the holder may make a request for

territorial extension in accordance with Article 3 ter

(2) of the Protocol.

(2) The request may be made to the International Bureau through the intermediary of

the Trade Marks Office.

(3) If a request is made through the Trade Marks Office, the Registrar must perform

the functions, under the Protocol, of the Office of the Contracting Party of the

holder in relation to the request.

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International registration designating Australia Division 3

Regulation 17A.11

Trade Marks Regulations 1995 73

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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:

(a) whether the IRDA is in accordance with this Division; and

(b) whether there are grounds under Subdivision 2 for rejecting it.

17A.13 Use of trade mark

(1) The holder of an IRDA:

(a) must be using, or must intend to use, the trade mark that is the subject of

the IRDA in relation to the goods, services or goods and services listed in

the IRDA; or

(b) must have authorised, or intend to authorise, another person to use the trade

mark in relation to those goods, services or goods and services; or

constituted with a view to the use by the body corporate of the trade mark

in relation to the goods, services or goods and services.

(2) If there is reason to suspect that the holder does not meet a requirement of

subregulation (1) in relation to any of the goods or services mentioned in the

IRDA, the Registrar may require the holder to make a declaration to the

Registrar that those provisions apply to all of those goods and services.

17A.14 Specification of goods and services

(1) The expression ‘all goods’, ‘all services’, ‘all other goods’ or ‘all other services’

must not be used in an IRDA to specify the goods or services in respect of which

protection is sought.

(2) If a term has been identified by the International Bureau as being:

(a) too vague for the purposes of classification; or

(b) incomprehensible; or

the term must not be used in an IRDA to specify the goods or services in respect

of which protection is sought, unless the Registrar is satisfied that the term is

sufficiently clear in the circumstances.

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Regulation 17A.14A

74 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(3) If the Registrar is reasonably satisfied that a term to be used in an IRDA to

specify goods or services in respect of which protection is sought:

(a) is too vague for the purposes of determining the scope of that protection; or

(b) is incomprehensible; or

then the term must not be used in the IRDA to specify the goods or services in

respect of which protection is sought.

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 numerals other than Arabic or Roman numerals.

17A.15 Claim for priority

(1) If:

(a) a person has made an application for the registration of a trade mark in 1 or

more Convention countries; and

(b) within 6 months after the day on which that application, or the first of those

applications, was made, that person or another person (successor in title) of

whom that person is a predecessor in title makes an IRDA in respect of

some or all of the goods, services or goods and services in respect of which

registration was sought in that country or those countries;

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:

(a) if an application to register the trade mark was made in only 1 Convention

country—from (and including) the day on which the application was made

in that country; or

(b) if applications to register the trade mark were made in more than 1

Convention country—from (and including) the day on which the earliest of

those applications was made.

Note: For Convention country see section 225 of the Act.

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Regulation 17A.16

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17A.16 Examination of IRDA—report to holder

(1) If, in the course of an examination of an IRDA, the Registrar reasonably believes

that:

(a) the IRDA is not in accordance with this Division; or

(b) there are grounds under Subdivision 2 for rejecting it in 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.

(2) Such a report is a provisional refusal for the purposes of the Protocol.

(3) The report must include:

(a) notice of the date by which the Registrar must notify his or her final

decision on examination to the International Bureau; and

(b) notice that the Registrar is not required to consider any response by the

holder to the report unless the holder has notified the Registrar, in writing,

of the holder’s address for service in Australia or New Zealand.

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:

(a) notification of a provisional or final refusal from the Trade Marks Office; or

(b) notification of the possibility that oppositions may be filed after the 18-month period.

17A.17 Examination—holder’s response to report

(1) The holder of the IRDA may respond in writing to the Registrar’s report under

regulation 17A.16.

(2) The response may do any of the following:

(a) contest a belief of the Registrar that is expressed in the report;

(b) contest another matter that is mentioned in the report;

(d) request a hearing from the Registrar.

(3) The holder must notify the Registrar, in writing, of the holder’s address for

service in Australia or New Zealand.

17A.18 Examination—further report to holder

(1) If the holder has complied with subregulation 17A.17(3), the Registrar must:

(a) consider the holder’s response; and

(b) if the holder requests a hearing, give the holder an opportunity to be heard.

(2) If, after considering the response and (if a hearing is requested) the submissions

to the hearing, the Registrar continues to believe that:

(a) the IRDA is not in accordance with this Division; or

(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.

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Regulation 17A.19

76 Trade Marks Regulations 1995

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(3) Unless the acceptance of an IRDA is deferred under regulation 17A.21, a report

under subregulation (2) about the IRDA must specify the date by which the

Registrar must notify his or her final decision on examination to the International

Bureau.

(4) Regulation 17A.17 and this regulation apply to a report under subregulation (2)

as if it were a report under regulation 17A.16.

17A.19 Examination—additional requirements

(1) In the course of an examination of an IRDA for which a right of priority is

claimed, the Registrar may, by writing, require the holder to file:

(a) a copy of any earlier application certified in the trade marks office

(however described) of the Convention country in which it was filed; and

(b) if the earlier application is not in English:

(i) a translation of the earlier application into English; and

(ii) a certificate of verification relating to the translation.

(2) If the holder is the successor in title to the person who made the earlier

application, the Registrar may, by writing, require the holder to file documentary

evidence that is sufficient to establish the passing of title to the holder.

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

(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.

(2) In determining the period of 15 months for the purposes of paragraph (1)(a) or

(b) in relation to an IRDA, no account is to be taken of any period during which

acceptance of the IRDA is deferred under regulation 17A.21.

(3) The holder of an IRDA may, before the end of a period mentioned in

subregulation (1), or that period as extended under section 224 of the Act or as a

result of a previous application of subregulation (4), request the Registrar in

writing to extend the period.

(4) The Registrar must, in accordance with a request made under subregulation (3),

extend a period, unless:

(a) the period; or

(b) that period as extended under section 224 of the Act or as 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).

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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 made under 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:

(a) the request is made within a period mentioned in subregulation 17A.20(1);

and

(b) the Registrar reasonably believes that there are grounds for rejecting the

IRDA under subsection 44(1) or (2) of the Act (as applied by

regulation 17A.28) because of another trade mark:

(i) that is registered by another person; or

(ii) that is a protected international trade mark; or

(iii) in respect of which an application for registration, or an IRDA, has

been made by another person; and

(i) is awaiting the finalisation of proceedings in respect of the application

for registration of the other trade mark or the IRDA; or

(ii) is seeking to satisfy the Registrar as to:

(A) a matter mentioned in paragraph 44(3)(a) or (b) of the Act (as

applied by regulation 17A.28); or

(B) the matters mentioned in subsection 44(4) of 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;

(iv) has begun proceedings to have the Register or the Record of

International Registrations rectified in respect of the other trade mark

and the proceedings have not been determined or otherwise disposed

of; or

(v) is awaiting renewal of the registration of the other trade mark in the

period of 6 months after registration of the other trade mark has

expired, or removal of the other trade mark from the Register; or

(vi) is awaiting renewal of the international registration of the other trade

mark in the period of 6 months after the international registration has

expired, or removal of the other trade mark from the International

(2) The Registrar may, on his or her own initiative, defer acceptance of the IRDA

within the period mentioned in subregulation 17A.20(1), or (if such a period is

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extended under section 224 of the Act or subregulation 17A.20(4)) the extended

period, if:

(a) the time within which proceedings mentioned in paragraph (b) may be

begun, or an application mentioned in paragraph (c) may be made, has not

ended; or

(b) appeal proceedings under a provision of the Act have begun in a prescribed

court in relation to the IRDA; or

Registrar in relation to the IRDA; or

(d) the Registrar is informed in writing that the holder has died.

(3) The Registrar must defer acceptance of an IRDA in respect of a certification

trade mark when a copy of the rules governing the use of the certification trade

mark is sent to the ACCC in accordance with regulation 16.2 (as applied by

regulation 17A.50).

(4) The Registrar must inform the holder in writing:

(a) if the holder requests the Registrar to defer acceptance of an IRDA—of the

Registrar’s decision to defer, or not to defer, acceptance of the IRDA; and

(b) if the Registrar otherwise defers acceptance of an IRDA—of the provision

under which acceptance of the IRDA is deferred.

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:

(a) for deferral under subregulation 17A.21(1)—the date the Trade Marks

Office receives the request; or

(b) for deferral under subregulation 17A.21(2) or (3)—the date of the notice of

deferment issued under subregulation 17A.21(4).

(2) The deferment period ends:

(a) when the IRDA is withdrawn; or

(b) if paragraph (a) does not apply—when the Registrar is reasonably satisfied

that there are no longer grounds for rejecting the IRDA under

subsection 44(1) or (2) of the Act (as applied by regulation 17A.28); or

subregulation (3).

(3) For paragraph (2)(c), the deferment period ends:

(a) if acceptance is deferred because of subparagraph 17A.21(1)(c)(i)—when

proceedings relating to the registration of, or the extension of protection to,

the other trade mark are finalised; and

(b) if acceptance is deferred because of subparagraph 17A.21(1)(c)(ii)—at the

end of 6 months from the date of commencement of deferment; and

proceedings under Part 9 of the Act or regulation 17A.48 relating to the

other trade mark are finalised; and

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(d) if acceptance is deferred because of subparagraph 17A.21(1)(c)(iv)—when

the proceedings to have the Register or the Record of International

Registrations rectified in respect of the other trade mark are determined or

otherwise disposed of; and

(e) if acceptance is deferred because of subparagraph 17A.21(1)(c)(v)—when

the registration of the other trade mark is renewed or the other trade mark

is removed from the Register; and

(f) if acceptance is deferred because of subparagraph 17A.21(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

(g) if acceptance is deferred because of paragraph 17A.21(2)(a)—at the end of

2 months after the beginning of the period in which:

(i) proceedings mentioned in paragraph 17A.21(2)(b) may be begun; or

(ii) an application mentioned in paragraph 17A.21(2)(c) may be made;

and

(h) if acceptance is deferred because of paragraph 17A.21(2)(b) or (c)—at the

end of:

(i) 3 months after the determination, or other disposal, of the proceedings

or review; or

(ii) such time as the court to which any appeal is brought, or the AAT, or

a court to which any appeal arising from review by the AAT is

brought, allows; and

(i) if acceptance is deferred because of paragraph 17A.21(2)(d)—at the end of

a period after the death of the holder that the Registrar reasonably regards

as sufficient in the circumstances; and

(j) if acceptance is deferred because of subregulation 17A.21(3):

(i) if the ACCC gives a certificate under subsection 175(2)of the Act (as

applied by regulation 17A.50) in respect of the IRDA—when the

Registrar accepts the IRDA in respect of the certification trade mark;

and

(ii) if the ACCC does not give such a certificate—at the end of 2 months

after the date of the notice to the Registrar under subsection 175(4) of

the Act (as applied by regulation 17A.50).

(4) If acceptance of an IRDA is deferred as a result of the operation of more than 1

of the provisions of paragraph 17A.21(1)(c) and subregulation 17A.21(2), the

deferment period ends in accordance with the relevant provision of

subregulation (3) under which the deferment period ends later or last, as the case

requires.

(5) The Registrar must inform the holder in writing of:

(a) the end of a period of deferment; and

(b) if acceptance is deferred under subregulation 17A.21(1)—the last day of

the relevant period mentioned in paragraph 17A.20(1)(a) or (b).

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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

(1) The Registrar must, after the examination, accept the IRDA unless he or she is

satisfied that:

(a) it is not in accordance with this Division; or

(b) there are grounds for rejecting it.

(2) The Registrar may accept the IRDA subject to conditions or limitations.

(3) The Registrar must reject an IRDA, in whole or in part, if the Registrar is

satisfied that:

(a) it is not in accordance with this Division; or

(b) there are grounds for rejecting it, in whole or in part.

17A.25 Notice of final decision on examination

(1) If the Registrar decides to accept the IRDA as notified, the Registrar:

(a) must notify the decision in the Official Journal:

(i) specifying the particulars of the IRDA; and

(ii) stating that, unless a notice of opposition is filed within the period

allowed under paragraph 17A.29(2)(b), the trade mark that is the

subject of the IRDA will be protected in Australia in respect of the

goods, services or goods and services in respect of which protection

was sought; and

(2) If the Registrar made a report under regulation 17A.16 in respect of the IRDA,

the Registrar:

(a) must notify the International Bureau of the final decision on examination in

accordance with the Common Regulations; and

(b) must notify the holder, in writing, of the final decision on examination; and

part, must notify the decision in the Official Journal:

(i) specifying the particulars of the IRDA; and

(ii) stating that, unless a notice of opposition is filed within the period

allowed under paragraph 17A.29(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.

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17A.26 Appeal

(1) Section 35 of the Act applies in relation to the Registrar’s decision under

regulation 17A.24 as if:

(a) the reference in that section to an applicant were a reference to the holder

of an IRDA; and

(b) the reference in that section to accepting an application were a reference to

accepting an IRDA; and

rejecting an IRDA in whole or in part.

(2) The Registrar:

(a) may inform the International Bureau of an appeal against the Registrar’s

decision; and

(b) must inform the International Bureau of the decision on the 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:

(a) the IRDA should not have been accepted, taking account of all the

circumstances that existed when the IRDA was accepted (whether or not

the Registrar knew then of their existence); and

(b) it is reasonable to revoke the acceptance, taking account of all the

circumstances;

the Registrar may revoke the acceptance of the IRDA.

(2) If the Registrar revokes the acceptance of the IRDA:

(a) the IRDA is taken never to have been accepted; and

(b) this Subdivision again applies in relation to the IRDA.

Subdivision 2—Grounds for rejecting IRDA

17A.28 Grounds for rejecting IRDA

(1) The grounds for rejecting an IRDA are the grounds set out in sections 39 to 44 of

the Act, as affected by subregulation (2).

(2) Sections 39 to 44 apply in relation to an IRDA as if:

(a) a reference in those sections:

(i) to an application for the registration of a trade mark were a reference

to the IRDA; and

(ii) to an applicant were a reference to the holder of the IRDA; and

(b) the reference in paragraph 41(3)(b) to the filing date in respect of an

application were a reference to the date of international registration or the

date of recording, as applicable, in respect of the IRDA; and

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registered by another person included a protected international trade mark

held by another person; and

(d) each reference in subparagraphs 44(1)(a)(ii) and (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.

(3) The ground set out in section 177 of the Act is a ground for rejecting an IRDA

that is for a certification trade mark.

Subdivision C—Opposition to IRDA

17A.29 Definitions

In this Subdivision:

extension of protection means the extension of protection in Australia to the

trade mark that is the subject of the IRDA.

notice of intention to defend means a notice filed under regulation 17A.34H.

notice of intention to oppose means a notice filed under regulation 17A.33.

notice of opposition means:

(a) a notice of intention to oppose; and

(b) a statement of grounds and particulars.

opponent means a person who files:

(a) a notice of intention to oppose; and

(b) a statement of grounds and particulars.

party means an IRDA holder or opponent.

statement of grounds and particulars means a statement by an opponent that

sets out:

(a) the grounds on which the opponent intends to rely; and

(b) the facts and circumstances forming the basis for the grounds.

Note: The following terms are defined in section 6 of the Act:

(a) applicant;

(b) approved form;

(d) file;

(e) month;

(f) person.

17A.30 Registrar may give direction about filing document or evidence

(1) If a document or evidence may or must be filed under this Subdivision, the

Registrar may give a direction specifying:

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(a) how many copies of the document or evidence must be filed; and

(b) the form in which the document or evidence is to be filed; and

(2) If a party does not comply with the direction, the Registrar may:

(a) treat the document or evidence as not having been filed; or

(b) tell the party to comply with the direction.

(3) The Registrar may make or revoke the direction as the Registrar sees fit.

(4) Regulation 17A.31 does not apply to this regulation.

17A.31 Notification and opportunity to make representations

(1) This regulation applies if:

(a) a party makes a request to the Registrar under this Subdivision; or

(b) the Registrar proposes to make a decision on the Registrar’s own initiative

under this Subdivision.

(2) The Registrar must:

(a) for paragraph (1)(a)—notify the other party of the request, including by

giving the other party a copy of the request; or

(b) for paragraph (1)(b)—notify the parties of the proposed decision.

(3) If the Registrar proposes to grant the request, the Registrar must give the parties

an opportunity to make representations:

(a) in writing; or

(b) at a hearing; or

(4) The Registrar must notify the parties of the Registrar’s decision.

17A.32 Filing of notice of opposition

(1) A notice of opposition is taken to be filed when the notice of intention to oppose

and the statement of grounds and particulars have been filed under

regulations 17A.33 and 17A.34A.

(2) The Registrar must notify the International Bureau of the filing of the notice of

opposition in accordance with rule 17, as applicable, of the Common

Regulations.

17A.33 Filing of notice of intention to oppose

(1) If the Registrar advertises the acceptance of an IRDA in the Official Journal, a

person may oppose the extension of protection by filing a notice of intention to

oppose within 2 months from the advertisement of the acceptance.

(2) The notice must be in an approved form.

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(3) The Registrar must give a copy of the notice to the holder of the IRDA.

17A.34 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.

(2) The extension of protection may also be opposed on any of the grounds set out in

sections 58 to 61 and 62A of the Act, as affected by subregulation (3).

(3) Sections 58 to 61 and 62A of the Act apply in relation to an IRDA as if:

(a) a reference in those sections:

(i) to an application for the registration of a trade mark were a reference

to the IRDA; and

(ii) to an applicant were a reference to the holder of the IRDA; and

(iii) to the registration of a trade mark were a reference to the extension of

protection in Australia to the trade mark that is the subject of the

IRDA; and

(b) the reference in paragraph 60(a) of the Act to the priority date for the

registration of the trade mark were a reference to the priority date for the

trade mark that is the subject of the IRDA.

(4) The extension of protection may also be opposed on the grounds that:

(a) a document filed in support of the IRDA was amended contrary to the Act;

(b) the Registrar accepted the IRDA on the basis of evidence provided, or a

representation made, by the holder that was false in a material particular.

Note: Section 66 of the Act provides for the amendment of documents filed with the

Registrar.

17A.34A Filing of statement of grounds and particulars

(1) A statement of grounds and particulars must be filed within one month from the

day the notice of intention to oppose is filed.

(2) The statement must be in an approved form.

17A.34B Statement of grounds and particulars must be adequate

(1) The Registrar must assess the adequacy of a statement of grounds and

particulars.

(2) If the Registrar decides that the statement is adequate, the Registrar must give a

copy of the statement to the holder of the IRDA.

(3) If the Registrar decides that the statement is inadequate:

(a) the Registrar may direct the opponent to rectify the inadequacy by filing

more information on the basis for one or more of the grounds; or

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(b) if all the grounds are inadequately particularised, the Registrar may dismiss

the opposition: or

may:

(i) delete from the statement some or all of the material that is

inadequate; and

(ii) treat the result as the statement for the purposes of these Regulations;

and

(iii) give a copy of the amended statement to the opponent.

(4) If the Registrar decides that the statement is still inadequate after the information

is filed under paragraph (3)(a):

(a) the Registrar may dismiss the opposition; or

(b) the Registrar may:

(i) delete from the statement some or all of the material that is

inadequate; and

(ii) treat the result as the statement for the purposes of these Regulations;

and

(iii) give a copy of the amended statement to the opponent.

(5) If the Registrar decides that the information filed under paragraph (3)(a) rectifies

the inadequacy of the statement, the Registrar must give a copy of the statement

and the information filed in relation to paragraph (3)(a) to the holder of the

IRDA.

(6) The opponent may apply to the Administrative Appeals Tribunal for review of a

decision under this regulation to dismiss the opposition or delete material from

the statement of grounds and particulars.

(7) Regulation 17A.31 does not apply to this regulation.

17A.34C Extension of time for filing—application

(1) A person who intends to oppose the extension of protection may request the

Registrar to extend:

(a) the period for filing a notice of intention to oppose under

subregulation 17A.33(1); or

(b) the period for filing a statement of grounds and particulars under

subregulation 17A.34A(1).

(2) A request under paragraph (1)(a) or (b) may be made:

(a) within the period for filing the document in question; or

(b) before the extension of protection of the IRDA is entered on the Record of

International Registrations under paragraph 17A.37(1)(b).

Note: See subparagraph (3)(b)(ii) and subregulation 17A.34D(2) in relation to the

consequences of making the request after the filing period has ended.

(3) The request must:

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(a) be in an approved form; and

(b) be accompanied by a declaration stating:

(i) the facts and circumstances forming the basis for the grounds; and

(ii) if the period for filing the notice or the statement of grounds and

particulars has ended—the reason why the request was not made

within the period.

Note: Regulations 21.6 and 21.7 deal with making and filing declarations.

(4) The request must be made only on either or both of the following grounds:

(a) an error or omission by the person, the person’s agent, the Registrar or an

employee;

(b) circumstances beyond the control of the person, other than an error or

omission by the person, the person’s agent, the Registrar or an employee.

(5) Subsection 52(5) of the Act applies to the request.

(6) Regulation 17A.31 does not apply to this regulation.

17A.34D Extension of time for filing—grant

(1) The Registrar may grant a request under subregulation 17A.34C(1) for an

extension of time if the Registrar is satisfied that the grounds set out in the

request justify the extension.

(2) However, if the request is made after the period for filing the notice or statement

of grounds and particulars has ended, the Registrar must not grant the extension

unless the Registrar is satisfied that there is sufficient reason for the delay in

making the request.

(3) The Registrar must decide the length of the extended period having regard to

what is reasonable in the circumstances.

17A.34E Opposition may proceed in name of other person

Section 53 of the Act applies to a notice of intention to oppose filed under this

Subdivision.

17A.34F Amendment of notice of intention to oppose

(1) An opponent may request the Registrar to amend a notice of intention to oppose

to correct a clerical error or obvious mistake.

(2) If an opposition proceeds in the name of another person under section 53 of the

Act, the person may request the Registrar to amend the notice of intention to

oppose to record the person’s name.

(3) The Registrar may grant a request under subregulation (1) or (2) on terms that

the Registrar considers appropriate.

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(4) If the Registrar grants the request, the Registrar must give a copy of the notice of

the amended intention to oppose to the IRDA holder.

(5) Regulation 17A.31 does not apply to this regulation.

17A.34G Amendment of statement of grounds and particulars

(1) An opponent may request the Registrar to amend the statement of grounds and

particulars to:

(a) correct an error or omission in the grounds of opposition or the facts and

circumstances forming the basis for the grounds; or

(b) amend a ground of opposition; or

(d) to amend the facts and circumstances forming the basis for the grounds.

(2) The Registrar may grant the request on terms that the Registrar considers

appropriate.

(3) However, the Registrar may grant a request to:

(a) amend a ground of opposition; or

(b) add a new ground of opposition;

only if the Registrar is satisfied that the amendment or addition relates to

information of which the opponent could not reasonably have been aware at the

time of filing the statement.

(4) If the Registrar grants the request, the Registrar must give a copy of the amended

statement to the IRDA holder.

17A.34H Filing of notice of intention to defend

(1) The IRDA holder must file a notice of intention to defend within one month from

the day the Registrar notifies the International Bureau under

subregulation 17A.32(2).

(2) The holder must file an Australian or New Zealand address for service with the

notice.

(3) The Registrar must give a copy of the notice to the opponent.

(4) If the holder does not file the notice within the period mentioned in

subregulation (1), the Registrar may decide to:

(a) take the opposition to have succeeded; and

(b) refuse protection to the holder.

(5) The Registrar is not required to take any action in response to a notice of

intention to defend filed under subregulation (1) unless the holder has notified

the Registrar, in writing, of the holder’s address for service in Australia or New

Zealand.

(6) A requirement to:

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(a) give a document to a person; or

(b) give a person an opportunity to make written representations or to be

heard;

does not apply if no address for service of the person is recorded in the Record of

International Registrations.

(7) The Registrar must notify the parties of the Registrar’s decision.

17A.34J Filing of evidence

(1) The Registrar must notify the parties that:

(a) all the evidence for an evidentiary period mentioned in this regulation has

been filed; or

(b) no evidence was filed for the period.

(2) The Registrar must give a copy of any evidence filed by a party under this

regulation to the other party:

(a) before the end of the relevant evidentiary period, if the Registrar considers

it appropriate to do so; or

(b) after the evidentiary period ends.

Evidence in support

(3) An opponent must file any evidence in support of the opposition within 3 months

from the day the opponent is given a copy of the notice of intention to defend.

Evidence in answer

(4) If the opponent files evidence in support of the opposition, the IRDA holder must

file any evidence in answer to the evidence in support within 3 months from the

day the Registrar:

(a) gives the IRDA holder:

(i) all the evidence in support; or

(ii) if the opponent files the evidence in support in instalments—the final

instalment of the evidence in support; and

(b) notifies the IRDA holder that all the evidence in support has been filed.

(5) If the opponent does not file any evidence in support of the opposition, the IRDA

holder must file any evidence in answer to the statement of grounds and

particulars within 3 months from the day the Registrar notifies the IRDA holder

that no evidence in support was filed.

Evidence in reply

(6) If the IRDA holder files evidence in answer under subregulation (4) or (5), the

opponent must file any evidence in reply to the evidence in answer within 2

months from the day the Registrar:

(a) gives the opponent:

(i) all the evidence in answer; or

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(ii) if the IRDA holder files the evidence in answer in instalments—the

final instalment of the evidence in answer; and

(b) notifies the opponent that all the evidence in answer has been filed.

17A.34K Extension of time for filing

(1) A party may request the Registrar to extend a period for filing evidence

mentioned in regulation 17A.34J.

(2) The Registrar may extend the period only if the Registrar is satisfied that:

(a) the party:

(i) has made all reasonable efforts to comply with all relevant filing

requirements of this Subdivision; and

(ii) despite acting promptly and diligently at all times to ensure the filing

of the evidence within the period, is unable to do so; or

(b) there are exceptional circumstances that justify the extension.

(3) The Registrar:

(a) must decide the length of the extended period having regard to what is

reasonable in the circumstances; and

(b) may do so on terms that the Registrar considers appropriate.

(4) In this regulation:

exceptional circumstances includes the following:

(a) a circumstance beyond the control of a party that prevents the party from

complying with a filing requirement under this Subdivision;

(b) an error or omission by the Registrar or an employee that prevents a party

from complying with a filing requirement under this Subdivision;

stayed.

17A.34L Registrar may allow cooling-off period

(1) This regulation applies to an opposition if:

(a) the notice of opposition has been filed; and

(b) the Registrar has not made a decision on the opposition under

regulation 17A.34N; and

(2) If the Registrar is satisfied that the parties agree to a cooling-off period, the

Registrar must allow a cooling-off period of 6 months.

(3) The Registrar must extend the cooling-off period for 6 months if, before the end

of the period, the Registrar is satisfied that the parties agree to the extension.

(4) The Registrar must not:

(a) further extend the cooling-off period; or

(b) allow more than one cooling-off period for an opposition.

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Regulation 17A.34M

90 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(5) If a party files a notice in an approved form requesting the Registrar to

discontinue the cooling-off period, the Registrar must do so.

(6) The Registrar may direct the parties on steps they must take:

(a) if the cooling-off period is discontinued; or

(b) otherwise—when the cooling-off period ends.

(7) The opposition resumes:

(a) if the cooling-off period is discontinued; or

(b) otherwise—when the cooling-off period ends.

(8) If:

(a) the cooling-off period begins during the period mentioned in

regulation 17A.34H or an evidentiary period mentioned in

regulation 17A.34J; and

(b) the opposition resumes;

the period mentioned in regulation 17A.34H or 17A.34J restarts when the

opposition resumes.

17A.34M Hearing

(1) This regulation applies to an opposition if:

(a) the opposition has not been dismissed under regulation 17A.34B; or

(b) the opposition has not been decided under regulation 17A.34N; or

(2) The holder of an IRDA may request the Registrar to hold a hearing if:

(a) the evidentiary period mentioned in subregulation 17A.34J(3) has ended;

and

(b) either:

(i) all evidence for the opposition proceeding has been filed; or

(ii) no evidence has been filed in that period.

(3) A party may request the Registrar to hold a hearing if:

(a) an evidentiary period mentioned in any of subregulations 17A.34J(4) to (6)

has ended; and

(b) either:

(i) all evidence for the opposition proceeding has been filed; or

(ii) no evidence has been filed in that period.

(4) The Registrar:

(a) must hold a hearing of the opposition if requested by a party in writing; or

(b) may decide, on the Registrar’s own initiative, to hold a hearing of the

opposition.

(5) The hearing may, at the Registrar’s discretion, be:

(a) an oral hearing; or

(b) by written submissions.

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Regulation 17A.34N

Trade Marks Regulations 1995 91

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(6) If the Registrar decides on an oral hearing:

(a) the Registrar must notify the parties of the date, time and place of the

hearing; and

(b) the opponent must file a summary of submissions at least 10 business days

before the hearing; and

business days before the hearing.

(7) The Registrar may take into account a party’s failure to file a summary of

submissions under subregulation (6) in making an award of costs.

Note: Regulations 21.15 and 21.16 deal with hearings.

17A.34N Decision on opposition

(1) Unless the opposition proceedings are discontinued or dismissed, the Registrar

must decide:

(a) to refuse protection in respect of all of the goods or services listed in the

IRDA; or

(b) to extend protection in respect of some or all of the goods or services listed

in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which the grounds on which the IRDA was

opposed have been established.

(2) The Registrar must notify the International Bureau of the Registrar’s decision.

17A.34P Appeal

(1) Section 56 of the Act applies in relation to the Registrar’s decision on the

opposition as if a reference in that section:

(a) to an applicant were a reference to the holder of an IRDA; and

(b) to a decision under section 55 of the Act were a reference to a decision

under regulation 17A.34N.

(2) If an appeal is made, the Registrar must tell the International Bureau of the

decision on the appeal.

17A.34Q Registrar may give direction

(1) The Registrar may give a direction in relation to an opposition to which this

Division applies:

(a) if requested by a party in writing; or

(b) on the Registrar’s own initiative.

(2) If the Registrar proposes to give a direction, the Registrar must give the parties

an opportunity to make representations about the direction.

(3) A direction must not be inconsistent with the Act or these Regulations.

(4) The Registrar must notify the parties of the direction as soon as practicable.

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Part 17A Protected international trade marks under the Madrid Protocol

Division 3 International registration designating Australia

Regulation 17A.35

92 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

17A.35 Registrar must notify parties of dismissal or discontinuance of

opposition

If an opposition is dismissed under regulation 17A.34B or discontinued, the

Registrar must notify the parties of the dismissal or discontinuance.

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

(1) This regulation applies if the International Bureau notifies the Registrar that a

holder of an international registration in respect of a trade mark that is the subject

of an IRDA but has not become protected, has placed a limitation on the

registration.

(2) Subject to this regulation, a limitation mentioned in subregulation (1) has effect

from the date the limitation was recorded in the International Register in

accordance with Rule 27(1) of the Common Regulations.

(3) The Registrar may, within the declaration period declare, under Rule 27(5) of the

Common Regulations, that the limitation has:

(a) no effect on the IRDA; or

(b) partial effect on the IRDA.

(4) A declaration under subregulation (3):

(a) has effect from the date the limitation was recorded in the International

(b) is not effective unless the Registrar sends a copy of the declaration to the

International Bureau during the declaration period.

(5) On appeal from a declaration of the Registrar under subregulation (4), a

prescribed court may:

(a) allow a limitation according to its terms; or

(b) declare, under Rule 27(5) of the Common Regulations, that the limitation

has:

(i) no effect in Australia; or

(ii) partial effect in Australia.

(6) A decision of a prescribed court under subregulation (5) has effect from the date

the limitation was recorded in the International Register.

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Regulation 17A.36

Trade Marks Regulations 1995 93

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(7) The Registrar must, after the expiration of the relevant appeal period, make any

amendment to the Record of International Registrations that is necessary to give

effect to a limitation allowed, or a declaration made, under this regulation.

(8) In this regulation:

declaration period means the period of 18 months after the 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

(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:

(a) the Registrar accepts an IRDA; and

(b) no opposition to the IRDA is filed within the period 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.

(2A) If:

(a) the Registrar accepts an IRDA; and

(b) opposition to the IRDA is filed within the period allowed under

paragraph 17A.29(2)(b); and

the trade mark that is the subject of the IRDA becomes a protected international

trade mark after the opposition has been dismissed or withdrawn.

(3) If:

(a) the Registrar accepts an IRDA; and

(b) opposition to the IRDA is filed within the opposition period; and

subject of the IRDA should be protected in Australia; and

(d) no appeal from the decision on the opposition is made within the appeal

period;

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Regulation 17A.37

94 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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:

(a) the Registrar accepts an IRDA; and

(b) opposition to the IRDA is filed within the opposition period; and

period, or any extension of that period; and

(d) the appeal has been dismissed or withdrawn;

the trade mark becomes a protected international trade mark, to the extent

permitted by the decision on the opposition, after the appeal has been dismissed

or withdrawn.

(4) If:

(a) the Registrar accepts an IRDA; and

(b) opposition to the IRDA is filed within the opposition period; and

period, or any extension of that period; and

(d) the decision on the appeal is that the trade mark that is the 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:

(a) a notification under subregulation 17A.16(1), 17A.25(2) or 17A.32(2); or

(b) a notification of the possibility that oppositions may be 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:

(a) within 18 months after the Registrar was notified of an IRDA, the

International Bureau receives notification of the possibility that oppositions

may be filed after the 18-month period; and

(b) opposition to the IRDA is filed within the opposition period; and

subregulation 17A.29(3) within 7 months after the opposition period

begins;

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

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(b) record that fact in the Record of International Registrations.

(2) The notice and record must include particulars of the conditions (if any) and the

limitations (if any) to which the protection is subject.

(3) As soon as practicable after receiving notice that a trade mark is a protected

international trade mark, the holder must notify the Registrar, in writing, of the

holder’s address for service in Australia or New Zealand.

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:

(a) given to the Registrar by the holder of the IRDA; or

(b) passed on to the Registrar by the International Bureau as part of an

international application.

(2) The disclaimer affects only the rights given under this Part to the holder when

protection is extended to the trade mark.

(3) The Registrar must, on extending protection to the trade mark or on receiving

notice of the disclaimer (whichever is later), record in the Record of International

Registrations the particulars of the disclaimer.

(4) A disclaimer properly made cannot be revoked.

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Part 17A Protected international trade marks under the Madrid Protocol

Division 4 Protected international trade marks—rights and protection

Regulation 17A.39

96 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 4—Protected international trade marks—rights and

protection

17A.39 Rights given to, and protection of, protected international trade marks

(1) Subject to this Part, sections 20 to 26, Parts 12, 13 and 14 of the Act (except

section 128), and regulations 3.2, 13.1, 13.2 and 13.3 apply in relation to a

protected international trade mark.

(2) For that application, a reference in those sections, Parts or regulations:

(a) to a registered trade mark or a trade mark that is registered is taken to be a

reference to the protected international trade mark or a trade mark that is a

protected international trade mark; and

(b) to a registered owner of a trade mark is taken to be a reference to the holder

of the protected international trade mark; and

to be a reference to goods or services covered by the protected international

trade mark; and

(d) to the date of registration of a trade mark is taken to be a reference to the

date of effect of the protection of the trade mark; and

(e) to the Register is taken to be a reference to the Record of International

Registrations; and

(f) to a trade mark the registration of which has ceased is taken to be a

reference to a protected international trade mark in relation to which the

extension of protection in Australia has ceased.

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 under subregulation 17A.48(2) for an order directing the Registrar

to cease protection; and

(b) the reference in paragraph 129(1)(b) to a trade mark alleged to be

registered is taken to be a reference to a trade mark alleged to be a

protected international trade mark; and

registered trade mark is taken to be a reference to the particulars of the

protected international trade mark recorded in the Record of International

Registrations.

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:

(a) infringed the trade mark; and

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(b) was done after the international registration had expired and before it was

renewed.

Note: Article 7(4) of the Protocol provides for a 6-month period of grace for renewal of

international registration.

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Part 17A Protected international trade marks under the Madrid Protocol

Division 5 Protected international trade marks—amendment or cessation of protection

Regulation 17A.41

98 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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.

17A.41A Duties and powers of Registrar—notification of limitation by

International Bureau

(1) This regulation applies if the International Bureau notifies the Registrar that a

holder of an international registration in respect of a protected international trade

mark has placed a limitation on the registration.

(2) Subject to this regulation, a limitation mentioned in subregulation (1) has effect

from the date the limitation was recorded in the International Register in

accordance with Rule 27(1) of the Common Regulations.

(3) The Registrar may, within the declaration period declare, under Rule 27(5) of the

Common Regulations, that the limitation has:

(a) no effect on the protected international trade mark; or

(b) partial effect on the protected international trade mark.

(4) A declaration under subregulation (3):

(a) has effect from the date the limitation was recorded in the International

(b) is not effective unless the Registrar sends a copy of the declaration to the

International Bureau during the declaration period.

(5) On appeal from a declaration of the Registrar under subregulation (4), a

prescribed court may:

(a) allow a limitation according to its terms; or

(b) declare, under Rule 27(5) of the Common Regulations, that the limitation

has:

(i) no effect in Australia; or

(ii) partial effect in Australia.

(6) A decision of a prescribed court under subregulation (5) has effect from the date

the limitation was recorded in the International Register.

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Trade Marks Regulations 1995 99

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(7) The Registrar must, after the expiration of the relevant appeal period, make any

amendment to the Record of International Registrations that is necessary to give

effect to a limitation allowed, or a declaration made, under this regulation.

(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

(iii) of the Protocol.

17A.42 Failure to renew international registration

(1) If the international registration of a trade mark that is a protected international

trade mark is not renewed, the trade mark ceases to be a protected international

trade mark when the international registration expires.

(2) However, if:

(a) the international registration of a trade mark that is a protected international

trade mark (unrenewed protected international trade mark) is not

renewed; and

(b) an application for the registration of the trade mark, or an IRDA, is made,

or has already been made, by a person other than the holder of the

unrenewed protected international trade mark;

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:

(a) declare that the protection extended to a protected international trade mark

is ceased;

(b) impose a condition or limitation on the protection extended to a protected

international trade mark;

limitation—impose or substitute an additional or different condition or

limitation on the protection extended to the protected international trade

mark;

(d) remove or amend an entry in the Record of International Registrations

relating to a protected international trade mark.

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Regulation 17A.42A

100 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(2) For subregulation (1) the conditions are as follows:

(a) within 12 months after the trade mark became a protected international

trade mark the Registrar gave notice in writing of the Registrar’s intention

to exercise a power or powers mentioned in subregulation (1), to:

(i) the holder of the protected international trade mark; and

(ii) any person recorded under regulation 17A.62 as claiming an interest

or right in respect of the protected international trade mark;

(b) the Registrar gave the opportunity to be heard to each person mentioned in

subparagraph (a)(i) or (ii), in relation to the Registrar’s intention to

exercise a power mentioned in subregulation (1);

when the trade mark became a protected international trade mark (whether

or not the Registrar knew then of their existence), and the grounds for

refusing protection mentioned in regulations 17A.31, that:

(i) the trade mark should not have become protected for some or all of

the goods or services in respect of which it is protected; or

(ii) the protection of the trade mark should have been subject to a

condition or limitation, or an additional or different condition or

limitation;

(d) the Registrar is satisfied that is it reasonable to exercise the power or

powers mentioned in subregulation (1).

(3) For paragraph (2)(c), the circumstances to which the Registrar must have regard

include the following:

(a) any error or omission (including an error or omission of judgment) that led

directly or indirectly to the trade mark becoming protected for some or all

of the goods or services in respect of which it is protected;

(b) any relevant obligation of Australia under an international agreement;

Registrar, that:

(i) the trade mark not be protected for some or all of the goods or

services in respect of which it is protected; or

(ii) the protection of the trade mark be subject to a condition or limitation,

or an additional or different condition or limitation.

(4) For paragraph (2)(d), in deciding whether or not it is reasonable to exercise a

power or powers, the matters to which the Registrar must have regard include the

following:

(a) any use that has been made of the trade mark;

(b) any past, current or proposed legal proceedings relating to the trade mark

as a protected international trade mark or seeking amendment or cessation

of its protection;

international trade mark;

(d) any special circumstances making it appropriate for the Registrar to

exercise or not to exercise a power or powers mentioned in

subregulation (1).

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Trade Marks Regulations 1995 101

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(5) The Registrar does not have a duty to consider whether or not to exercise a

power under this Subdivision, whether or not the Registrar has been requested to

do so.

17A.42B Notice to be given

(1) For paragraph 17A.42A(2)(a), the Registrar may give a written notice to the

holder by sending it to:

(a) the address for service in Australia or New Zealand recorded for the holder

in the Record of International Registrations; or

(b) if there is no address for service recorded for the holder in the Record of

International Registrations—the address for the holder.

(2) The Registrar may notify any person if the Registrar is satisfied that it would be

reasonable to do so in all the circumstances.

17A.42C Hearings and procedure

(1) The Registrar may conduct the following hearings under this Subdivision:

(a) a hearing at which the Registrar may determine whether or not to exercise a

power or powers mentioned in subregulation 17A.42A(1);

(b) a preliminary hearing at which the Registrar may give directions as to the

procedure to be adopted in a hearing mentioned in paragraph (a).

(2) The Registrar may determine the procedure to be adopted in a hearing under this

subdivision as the Registrar sees fit, according to the circumstances in the

particular case.

(3) Regulation 21.14 does not apply to a hearing under this subdivision.

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).

(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:

(a) any reduction in scope of the protection is taken to apply from that date;

and

(b) any condition or limitation imposed by the Registrar is taken to have had

effect from that date; and

Registrations is taken to have had effect from that date.

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Regulation 17A.42E

102 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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:

(a) for the application of a provision in Part 12, 13 or 14 of the Act as applied

by regulation 17A.39, or a provision in Part 13 of these regulations—from

the date the power is exercised;

(b) for the application of subsection 230(2) of the Act as applied by

regulation 17A.71:

(i) in relation to a defendant who was the holder of the protected

international trade mark before the exercise of the power—from the

date the power is exercised; or

(ii) in relation to a defendant who was an authorised user of the protected

international trade mark before the exercise of the power—from the

date the defendant becomes aware of the exercise of the power.

17A.42E Registrar to notify Comptroller-General of Customs

(1) If the Registrar exercises a power mentioned in subregulation 17A.42A(1) the

Registrar must notify the Comptroller-General of Customs in writing.

(2) Despite paragraph 17A.42D(3)(a), if the Comptroller-General of Customs seizes

under Part 13 of the Act goods in respect of which the protected international

trade mark was protected before the exercise of a power mentioned in

subregulation 17A.42A(1), the Commonwealth is not liable for any loss or

damage suffered because of the seizure unless:

(a) the Registrar gives the Comptroller-General of Customs written notice in

accordance with subregulation (1); and

(b) the seizure occurs after the notice is given to the Comptroller-General of

Customs.

(3) To avoid doubt, subregulation (2) does not, by itself, make the Commonwealth

liable if the circumstances described in paragraphs (2)(a) and (b) exist.

17A.42F Appeals to Federal Court or Federal Magistrates 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 or Federal Magistrates 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:

(a) the protection extended to a protected international trade mark cease; or

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(b) an entry in the Record of International Registrations relating to the

protected international trade mark be removed or amended;

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.

17A.44 Amendment or cessation of protection—loss of exclusive rights to use

trade mark

(1) This regulation applies if section 24 or 25 of the Act, as applied by

regulation 17A.39, (applied section 24 or 25) applies in relation to a particular

protected international trade mark.

(2) A prescribed court may, on the application of the Registrar or an aggrieved

person, but subject to subregulation (3) and regulation 17A.46, order that:

(a) the protection extended to the protected international trade mark cease; or

(b) an entry in the Record of International Registrations relating to the

protected international trade mark be removed or amended;

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:

(a) has become generally accepted within the relevant trade as the sign that

describes or is the name of an article, substance or service; or

(b) describes or is the name of:

(i) an article or substance that was formerly exploited under a patent; or

(ii) a service that was formerly provided as a patented 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:

(a) the article or substance or other goods of the same description; or

(b) the service or other services of the same description;

subject to any condition or limitation that the court imposes.

17A.45 Amendment or cessation of protection—other specified grounds

(1) Subject to subregulation (2) and regulation 17A.46, a prescribed court may, on

the application of the Registrar or an aggrieved person, order that:

(a) the protection extended to a protected international trade mark cease; or

(b) an entry wrongly made or remaining in the Record of International

Registrations be removed or amended; or

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104 Trade Marks Regulations 1995

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international trade mark be entered in the Record of International

Registrations.

(2) An application under this regulation may be made on any of the following

grounds:

(a) any of the grounds on which the extension of protection could have been

opposed under regulation 17A.31;

(b) because of circumstances applying when the application under this

regulation is filed, the use of the trade mark is likely to deceive or cause

confusion;

applied by regulation 17A.50;

(d) if the application is in respect of an entry in the Record of International

Registrations, the entry was made, or has been amended, as a result of

fraud, false suggestion or misrepresentation.

(e) because the Registrar wrongfully made a declaration under

subregulation 17A.35B(3) or 17A.41A(3).

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:

(a) under regulation 17A.44; or

(b) on the ground that the trade mark is liable to deceive or confuse (a ground

referred to in paragraph 17A.45(2)(a)); or

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:

(a) must take into account the following matters, so far as they are relevant:

(i) the extent to which the public interest will be affected if protection of

the protected international trade mark is not ceased;

(ii) whether any circumstances that gave rise to the application have

ceased to exist;

(iii) the extent to which the trade mark distinguished the relevant goods

and services before the circumstances giving rise to the application

arose;

(iv) whether there is any order or other remedy, other than an order under

regulation 17A.44 or 17A.45, that would be adequate in the

circumstances; and

(b) may take into account any other matter that the court considers relevant.

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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 D—Cessation of protection for non-use

17A.48 Definitions

In this Subdivision:

application for cessation of protection means an application to the Registrar for

cessation of protection of a trade mark that is, or may become, a protected

international trade mark.

cessation of protection means the cessation of protection of a trade mark that is a

protected international trade mark.

notice of intention to defend means a notice filed under regulation 17A.48Q.

notice of intention to oppose means a notice filed under regulation 17A.48G.

notice of opposition means:

(a) a notice of intention to oppose; and

(b) a statement of grounds and particulars.

opponent means a person who files:

(a) a notice of intention to oppose; and

(b) a statement of grounds and particulars.

party means an applicant or opponent.

statement of grounds and particulars means a statement by an opponent that

sets out:

(a) the grounds for cessation of protection that the opponent intends to rebut;

and

(b) the facts and circumstances that form the basis for the opposition to the

cessation of protection.

Note: The definitions of the following terms are in section 6 of the Act:

(a) applicant;

(b) approved form;

(d) file;

(e) month;

(f) person.

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106 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

17A.48A Registrar may give direction about filing document or evidence

(1) If a document or evidence may or must be filed under this Subdivision, the

Registrar may give a direction specifying:

(a) the number of copies of the document or evidence to be filed; and

(b) the form in which the document or evidence is to be filed; and

(2) If a party does not comply with the direction, the Registrar may:

(a) treat the document or evidence as not having been filed; or

(b) tell the party to comply with the direction.

(3) The Registrar may make or revoke the direction as the Registrar sees fit.

(4) Regulation 17A.48B does not apply to the Registrar’s decision to make or revoke

the direction.

17A.48B Notification and opportunity to make representations

(1) This regulation applies if:

(a) a party makes a request to the Registrar under this Subdivision; or

(b) the Registrar proposes to make a decision on the Registrar’s own initiative

under this Subdivision.

(2) The Registrar must:

(a) for paragraph (1)(a)—notify the other party of the request, including by

giving the other party a copy of the request; or

(b) for paragraph (1)(b)—notify the parties of the proposed decision.

(3) If the Registrar proposes to grant the request, the Registrar must give the parties

an opportunity to make representations:

(a) in writing; or

(b) at a hearing; or

(4) The Registrar must notify the parties of the Registrar’s decision.

17A.48C Application for cessation of protection

(1) A person may make an application for cessation of protection.

(2) However, an application may not be made under subregulation (1) if an action

concerning the protected international trade mark is pending in a prescribed

court.

(3) If subregulation (2) applies, a person may apply to the court for an order

directing the Registrar to cease protecting the protected international trade mark.

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17A.48D Cessation of protection

(1) Part 9 of the Act and Part 9 of these Regulations apply in relation to an

application for cessation of protection.

(2) For that application, a reference in those Parts:

(a) to a registered trade mark or a trade mark that is registered, or entered on

the Register, is taken to be a reference to a trade mark that is, or may

become, a protected international trade mark; and

(b) to removing a trade mark from the Register is taken to be a reference to the

cessation of protection of the trade mark; and

to an international registration designating Australia; and

(d) to an applicant for registration of a trade mark is taken to be a reference to

the holder of an international registration designating Australia; and

(e) to a registered owner of a trade mark is taken to be a reference to the holder

of a protected international trade mark; and

(f) to an application under section 92 is taken to be a reference to an

application for cessation of protection; and

(g) to the date the application for registration of the trade mark was filed, or

the filing date in respect of the registration of the trade mark, is taken to be

a reference to:

(i) if the request for extension of protection to Australia was made under

Article 3 ter

(1) of the Protocol—the date of international registration

of the trade mark; or

(ii) if the request for extension of protection to Australia was made under

Article 3 ter

2(2) of the Protocol—the date of recording of the request.

Note: The expressions date of international registration and date of recording are defined in

regulation 17A.2.

(3) Sections 96 to 101 of the Act apply in relation to the cessation of protection for

non-use.

17A.48E Notification of application

For subsection 95(1) of the Act, the Registrar must, within one month from the

filing of the application, give a copy of the application to each person who, in the

Registrar’s opinion, should receive one.

17A.48F Filing of notice of opposition

A notice of opposition is taken to be filed when the notice of intention to oppose

and the statement of grounds and particulars have been filed under

regulations 17A.48G and 17A.48J.

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108 Trade Marks Regulations 1995

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17A.48G Filing of notice of intention to oppose

(1) For subsection 96(2) of the Act, the period for filing a notice of intention to

oppose the application for cessation of protection must be filed within 2 months

from the day the application for cessation of protection is advertised in the

Official Journal.

(2) The notice must be in an approved form.

(3) The Registrar must give a copy of the notice to the applicant.

17A.48H Opponent must have address for service

(1) This regulation applies despite any other regulation in this Subdivision.

(2) The Registrar is not required to take any action in response to a notice of

opposition filed under regulation 17A.48F unless the opponent has notified the

Registrar, in writing, of the opponent’s address for service in Australia or New

Zealand.

(3) A requirement to give a document to an opponent, or to give the opponent an

opportunity to make written representations or to be heard, does not apply if no

address for service of the opponent is recorded in the Record of International

Registrations.

17A.48J Filing of statement of grounds and particulars

(1) A statement of grounds and particulars must be filed within one month from the

day the notice of intention to oppose is filed.

(2) The statement must be in an approved form.

17A.48K Statement of grounds and particulars must be adequate

(1) The Registrar must assess the adequacy of a statement of grounds and particulars

filed under regulation 17A.48J.

(2) If the Registrar decides that the statement is adequate, the Registrar must give a

copy of the statement to the applicant.

(3) If the Registrar decides that the statement is inadequate, the Registrar may:

(a) direct the opponent to rectify the inadequacy by filing more information on

the basis for the opposition to the cessation of protection; or

(b) dismiss the opposition.

(4) If the Registrar decides that the information filed under paragraph (3)(a) rectifies

the inadequacy of the statement, the Registrar must give a copy of the statement

and the information to the applicant.

(5) For subsection 99A(1) of the Act, the Registrar may dismiss the opposition if:

(a) the Registrar decides that the statement is inadequate; or

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(b) the Registrar has directed the opponent to file information under

paragraph (3)(a) and:

(i) the opponent fails to file the information; or

(ii) the Registrar decides that the information filed does not rectify the

inadequacy of the statement.

(6) Regulation 17A.48B does not apply to this regulation.

Note: For review rights in relation to a decision by the Registrar to dismiss an opposition, see

subsection 99A(2) of the Act.

17A.48L Extension of time for filing—application

(1) A person who intends to oppose an application for cessation of protection may

request the Registrar to extend:

(a) the period for filing a notice of intention to oppose under

subregulation 17A.48G(1); or

(b) the period for filing a statement of grounds and particulars under

subregulation 17A.48J(1).

(2) A request under paragraph (1)(a) or (b) may be made within the period for filing

the document in question.

Note: See subparagraph (3)(b)(ii) and subregulation 17A.48M(2) in relation to the

consequences of making the request after the filing period has ended.

(3) The request must:

(a) be in an approved form; and

(b) be accompanied by a declaration stating:

(i) the facts and circumstances forming the basis for the grounds; and

(ii) if the period for filing the notice of intention to oppose or the

statement of grounds and particulars has ended—the reason why the

request was not made within the period.

Note: Regulations 21.6 and 21.7 deal with making and filing declarations.

(4) The request may be made only on either or both of the following grounds:

(a) an error or omission by the person, the person’s agent, the Registrar or an

employee;

(b) circumstances beyond the control of the person, other than an error or

omission by the person, the person’s agent, the Registrar or an employee.

17A.48M Extension of time for filing—grant

(1) The Registrar may grant a request under subregulation 17A.48L(1) for an

extension of time only if the Registrar is satisfied that the grounds set out in the

request justify the extension.

(2) However, if the request is made after the period for filing the notice or statement

of grounds and particulars has ended, the Registrar must not grant the extension

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unless the Registrar is satisfied that there is sufficient reason for the delay in

making the request.

(3) The Registrar must decide the length of the extended period having regard to

what is reasonable in the circumstances.

17A.48N Amendment of notice of intention to oppose

(1) An opponent may request the Registrar to amend a notice of intention to oppose

to correct a clerical error or obvious mistake.

(2) If an opposition is proceeding in the name of a person other than the opponent

under section 96A of the Act, the person may request the Registrar to amend the

notice of intention to oppose to record the person’s name.

(3) The Registrar may grant the request on terms that the Registrar considers

appropriate.

(4) If the Registrar grants the request, the Registrar must give a copy of the amended

notice of intention to oppose to the applicant.

(5) Regulation 17A.48B does not apply to a request under subregulation (1) or (2).

(6) Section 96A of the Act applies in relation to the opposition.

17A.48P Amendment of statement of grounds and particulars

(1) An opponent may request the Registrar to amend the statement of grounds and

particulars to:

(a) correct an error or omission; or

(b) amend or add facts or circumstances that form the basis of the opposition to

the cessation of protection.

(2) The Registrar may grant the request on terms that the Registrar considers

appropriate.

(3) However, the Registrar may grant the request only if the Registrar is satisfied

that the amendment should be made.

(4) If the Registrar grants the request, the Registrar must give a copy of the amended

statement to the applicant.

17A.48Q Filing of notice of intention to defend

(1) A notice of intention to defend must be filed within one month from the day the

applicant is given a copy of the statement of grounds and particulars.

(2) The Registrar must give the opponent a copy of the notice.

(3) If the applicant does not file the notice of intention to defend within the period

mentioned in subregulation (1), the Registrar may decide to:

(a) take the opposition to have succeeded; and

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(b) refuse to cease protection of the protected international trade mark.

(4) The Registrar must notify the parties of the Registrar’s decision.

17A.48R Filing of evidence

(1) The Registrar must notify the parties that:

(a) all the evidence for an evidentiary period mentioned in this regulation has

been filed; or

(b) no evidence was filed for the period.

(2) The Registrar must give a copy of any evidence filed by a party under this

regulation to the other party:

(a) before the end of the relevant evidentiary period, if the Registrar considers

it appropriate to do so; or

(b) after the evidentiary period ends.

Evidence in support

(3) An opponent must file any evidence in support of the opposition within 3 months

from the day the opponent is given a copy of the notice of intention to defend the

application for cessation of protection.

Evidence in answer

(4) If the opponent files evidence in support of the opposition, the applicant must file

any evidence in answer to the opponent’s evidence within 3 months from the day

the Registrar:

(a) gives the applicant:

(i) all the evidence in support; or

(ii) if the opponent files the evidence in support in instalments—the final

instalment of the evidence in support; and

(b) notifies the applicant that all the evidence in support has been filed.

(5) If the opponent does not file any evidence in support of the opposition,

regulation 17A.48S applies.

Evidence in reply

(6) If the applicant files evidence in answer under subregulation (4), the opponent

must file any evidence in reply to the evidence in answer within 2 months from

the day the Registrar:

(a) gives the opponent:

(i) all the evidence in answer; or

(ii) if the applicant files the evidence in answer in instalments—the final

instalment of the evidence in answer; and

(b) notifies the opponent that all the evidence in answer has been filed.

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112 Trade Marks Regulations 1995

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17A.48S Request for hearing and circumstances in which opposition taken to

have ended

(1) If an opponent requests the Registrar, within the period for filing evidence in

support mentioned in subregulation 17A.48R(3), to hear the opposition, the

Registrar must do so.

(2) The opposition is taken to have ended, but not to have been discontinued or

dismissed, if the opponent does not:

(a) file evidence in support in accordance with subregulation 17A.48R(3); or

(b) ask for a hearing under subregulation (1).

(3) The application for cessation of protection is taken to be unopposed if:

(a) the opposition is taken to have ended under subregulation (2); and

(b) the Registrar is satisfied that the application for cessation of protection is in

order.

Note 1: See section 97 of the Act in relation to what the Registrar must do if the application for

cessation of protection is unopposed.

Note 2: Regulations 21.15 and 21.16 deal with hearings.

17A.48T Extension of time for filing

(1) A party may request the Registrar to extend a period for filing evidence

mentioned in regulation 17A.48R.

(2) The Registrar may extend the period only if the Registrar is satisfied that:

(a) the party:

(i) has made all reasonable efforts to comply with all relevant filing

requirements of this Subdivision; and

(ii) despite acting promptly and diligently at all times to ensure the filing

of the evidence within the period, is unable to do so; or

(b) there are exceptional circumstances that justify the extension.

(3) The Registrar:

(a) must decide the length of the extended period having regard to what is

reasonable in the circumstances; and

(b) may do so on terms that the Registrar considers appropriate.

(4) In this regulation:

exceptional circumstances includes the following:

(a) a circumstance beyond the control of a party that prevents the party from

complying with a filing requirement under this Subdivision;

(b) an error or omission by the Registrar or an employee that prevents a party

from complying with a filing requirement under this Subdivision;

stayed.

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17A.48U Registrar may allow cooling-off period

(1) This regulation applies to an opposition if:

(a) the notice of opposition has been filed; and

(b) the Registrar has not decided to remove the trade mark under

subsection 101(1) of the Act; and

(2) If the Registrar is satisfied that the parties agree to a cooling-off period, the

Registrar must allow a cooling-off period of 6 months.

(3) The Registrar must extend the cooling-off period for 6 months if, before the end

of the period, the Registrar is satisfied that the parties agree to the extension.

(4) The Registrar must not:

(a) further extend the cooling-off period; or

(b) allow more than one cooling-off period for an opposition.

(5) If a party files a notice, in an approved form, requesting the Registrar to

discontinue the cooling-off period, the Registrar must do so.

(6) The Registrar may direct the parties on steps the parties must take:

(a) if the cooling-off period is discontinued; or

(b) otherwise—when the cooling-off period ends.

(7) The opposition resumes:

(a) if the cooling-off period is discontinued; or

(b) otherwise—when the cooling-off period ends.

(8) If:

(a) the cooling-off period begins during the period mentioned in

regulation 17A.48Q or an evidentiary period mentioned in

regulation 17A.48R; and

(b) the opposition resumes;

the period mentioned in regulation 17A.48Q or 17A.48R restarts when the

opposition resumes.

17A.48V Hearing

(1) This regulation applies to an opposition if the opposition has not been dismissed

under regulation 17A.48K or discontinued.

(2) A party may request the Registrar to hold a hearing if an evidentiary period

mentioned in regulation 17A.48R has ended; and either:

(a) all evidence for the opposition proceeding has been filed; or

(b) no evidence has been filed in that period.

(3) The Registrar:

(a) must hold a hearing of the opposition if requested by a party in writing; or

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(b) may decide, on the Registrar’s own initiative, to hold a hearing of the

opposition.

(4) The hearing may, at the Registrar’s discretion, be:

(a) an oral hearing; or

(b) by written submissions.

(5) If the Registrar decides on an oral hearing:

(a) the Registrar must notify the parties of the date, time and place of the

hearing; and

(b) the opponent must file a summary of submissions at least 10 business days

before the hearing; and

before the hearing.

(6) The Registrar may take into account a party’s failure to file a summary of

submissions under subregulation (5) in making an award of costs.

Note: Regulations 21.15 and 21.16 deal with hearings.

17A.48W Registrar may give direction

(1) The Registrar may give a direction in relation to an opposition to which this

Division applies:

(a) if requested by a party in writing; or

(b) on the Registrar’s own initiative.

(2) If the Registrar proposes to give a direction, the Registrar must give the parties

an opportunity to make representations about the direction.

(3) A direction must not be inconsistent with the Act or these Regulations.

(4) The Registrar must notify the parties of the direction as soon as practicable.

17A.48X Registrar must notify International Bureau

If the result of an action under this Subdivision is that the Registrar decides, or is

directed by a court:

(a) to cease protection of a protected international trade mark in respect of

some or all of the goods or services covered by the protection; or

(b) that the trade mark should be protected subject to 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.

17A.48Y Registrar must notify parties of dismissal or discontinuance of

opposition

If an opposition is dismissed under regulation 17A.48K or discontinued, the

Registrar must notify the parties of the dismissal or discontinuance.

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17A.48Z Cessation of protection of protected international trade mark

If the Registrar dismisses the opposition under regulation 17A.48K, the Registrar

must cease protection in respect of the goods, services, or both, specified in the

application for cessation of protection.

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Division 6 Collective and certification trade marks

Regulation 17A.49

116 Trade Marks Regulations 1995

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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:

(a) a reference to a trade mark is taken to include a collective trade mark; and

(b) a reference to an application for the registration of a collective trade mark

is taken to be a reference to an IRDA in respect of the collective trade

mark; and

registered is taken to be a reference to the association that is the holder of

the relevant protected international collective trade mark; and

(d) despite subparagraph 17A.28(2)(a)(ii), a reference in section 41 of the Act

to the applicant is taken to be a reference to the members of the association

that is the holder of the relevant IRDA; and

(e) the use of a collective trade mark by a member of the association that is the

holder of the relevant IRDA or protected international collective trade

mark is taken to be a use of the collective trade mark by the holder.

(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:

(a) to an application for registration of a certification trade mark is taken to be

a reference to an IRDA in respect of a certification trade mark; and

(b) to an applicant for registration of a certification trade mark is taken to be a

reference to the holder of an IRDA in respect of a certification trade mark;

and

registered, is taken to be a reference to a certification trade mark that is a

protected international trade mark; and

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(d) to the registered owner of a registered trade mark is taken to be a reference

to the holder of a protected international trade mark that is a certification

trade mark; and

(e) to goods or services in respect of which a certification trade mark is

registered is taken to be a reference to goods or services in respect of which

a certification trade mark is protected; and

(f) to assignment of a certification trade mark is taken to be a reference to

change of ownership of a certification trade mark.

(3) Also for that application:

(a) a reference in section 170 of the Act to another provision of the Act is

taken to be a reference to that other provision as it is applied by this Part to

a trade mark that is the subject of an IRDA or that is a protected

international trade mark; and

(b) each reference in section 170 and 171 of the Act to a certification trade

mark is taken to be a reference to a certification trade mark that is the

subject of an IRDA or that is a protected international trade mark; and

taken to be a reference to the new holder of the international registration in

respect of Australia who is identified in the notification to the Registrar

under Rule 27(1) of the Common Regulations.

(4) For subsection 173(1) of the Act, the holder of an IRDA in respect of a

certification trade mark must file a copy of the rules governing the use of the

certification trade mark with the Registrar as soon as practicable after the

Registrar is notified of the IRDA.

(5) When the holder files a copy of the rules in accordance with subregulation (4),

the holder must notify the Registrar, in writing, of the holder’s address for

service in Australia or New Zealand.

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Part 17A Protected international trade marks under the Madrid Protocol

Division 7 Transformation of cancelled international registrations

Regulation 17A.51

118 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 7—Transformation of cancelled international registrations

17A.51 Application of Division

This Division applies if:

(a) the international registration of a trade mark is cancelled, in whole or in

part, by the International Bureau at the request of the Office of origin, in

accordance with Article 6(4) of the Protocol; and

(b) the trade mark is the subject of an IRDA or is a protected international

trade mark; and

cancelled, the person who held the international registration files with the

Trade Marks Office an application for registration of the trade mark (a

transformation application); and

(d) the transformation application is in relation to any of the goods and

services to which the cancellation applies that were listed in the IRDA, or

covered by the protected international trade mark, immediately before the

cancellation.

17A.52 Transformation of IRDA

(1) If the trade mark is the subject of an IRDA, the Act and these Regulations apply

for the purposes of the transformation application as if it were an application for

registration.

(2) However:

(a) the filing date for the transformation application is taken to be the date of

international registration or the date of recording, as applicable; and

(b) anything already done under this Part for the purposes of the IRDA is to be

treated as having been done for the purposes of the transformation

application.

17A.53 Transformation of protected international trade mark

(1) If the trade mark is a protected international trade mark, the Registrar must

(2) The date of registration of the trade mark is taken to be:

(a) the date of international registration or the date of recording, as applicable;

(b) if the IRDA in respect of the trade mark included a priority claim, the

priority date allowed under that claim.

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Protected international trade marks under the Madrid Protocol Part 17A

Concurrence between registration and international registration Division 8

Regulation 17A.54

Trade Marks Regulations 1995 119

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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

(1) This regulation applies if:

(a) a trade mark that is a registered trade mark becomes a protected

international trade mark; and

(b) the registered owner of the trade mark is the holder of the protected

international trade mark; and

by the protected international trade mark.

(2) The date of effect of protection of the protected international trade mark in

respect of all the goods and services covered by the registered trade mark is

taken to be the date of registration of the registered trade mark.

(3) The protected international trade mark has the priority date of the registered trade

mark in respect of all the goods and services covered by the registered trade

mark.

(4) The holder of the protected international trade mark may file an application in

the approved form for particulars of the international registration of the trade

mark to be entered in the Register.

(5) If the Registrar receives an application under subregulation (4), the Registrar

must:

(a) enter the particulars in the Register; and

(b) notify the International Bureau in accordance with rule 21 of the Common

Regulations.

(6) This regulation does not affect the rights and protections conferred under the Act

in respect of the registered trade mark.

17A.55 Effect of cancellation, removal or expiry of registered trade mark

(1) Subregulations 17A.54(2) and (3) cease to apply if:

(a) the registration of the trade mark is cancelled (otherwise than at the request

of the registered owner); or

(b) the trade mark is removed from the Register.

(2) However, if the registration of the trade mark expires or is cancelled at the

request of the registered owner, those subregulations continue to apply.

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Division 9 Change in ownership of international registration

Regulation 17A.56

120 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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.

17A.58 Protected certification trade marks

(1) If the trade mark is a certification trade mark that is a protected international

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.58A Unprotected certification trade marks

(1) If the trade mark is a certification trade mark that is the subject of an IRDA, and:

(a) a copy of the IRDA and the rules governing the use of the certification

trade mark has been received by the ACCC; and

(b) the trade mark has not become a protected international 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

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Change in ownership of international registration Division 9

Regulation 17A.60

Trade Marks Regulations 1995 121

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(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 in Australia in accordance with the

Protocol.

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Division 10 Recording of claimed interests and rights

Regulation 17A.61

122 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 10—Recording of claimed interests and rights

17A.61 Application to have claims recorded

(1) A person who claims an interest in, or a right in respect of, a trade mark that is

the subject of an IRDA or is a protected international trade mark may apply to

the Registrar to have particulars of the claim recorded by the Registrar.

(2) An application by a person under subregulation (1) must:

(a) be made in an approved form; and

(b) be accompanied by material supporting the person’s interest in, or a right in

respect of, the trade mark; and

(b) be filed with the Trade Marks Office.

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.

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

(1) Particulars recorded under this Division may be:

(a) amended in accordance with subregulations 11.1(2) and (3); or

(b) cancelled in accordance with subregulations 11.3(2), (3), (4) and (5).

(2) Those subregulations apply for the purposes of this regulation as if a reference to

the owner of the trade mark were a reference to the holder of the relevant IRDA

or protected international trade mark.

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Miscellaneous Division 11

Regulation 17A.66

Trade Marks Regulations 1995 123

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 11—Miscellaneous

17A.66 Record of International Registrations

(1) The Registrar must maintain a Record of International Registrations for the

purposes of this Part.

(2) The Record of International Registrations must include the following particulars

in respect of each IRDA notified to the Registrar by the International Bureau:

(a) the name of the holder;

(b) the address of the holder;

sought;

(d) the claims of interest (if any) affecting the trade mark that is the subject of

the IRDA;

(e) any other particulars that are required by the Act, these Regulations, the

Protocol or the Common Regulations to be recorded in respect of the

IRDA;

(f) any other particulars relating to the IRDA that the Registrar reasonably

believes to be appropriate.

(3) The Record of International Registrations must include the following particulars

in respect of each protected international trade mark:

(a) the name of the holder;

(b) the address of the holder;

(ba) the address for service of the holder;

mark is protected;

(d) the conditions (if any) and limitations (if any) subject to which the trade

mark is protected;

(e) the claims of interest (if any) and disclaimers (if any) affecting the

protected international trade mark;

(f) any other particulars that are required by the Act, these Regulations, the

Protocol or the Common Regulations to be recorded in respect of the

protected international trade mark;

(g) any other particulars relating to the protected international trade mark that

the Registrar reasonably believes to be appropriate.

17A.67 Inspection

(1) The Record of International Registrations must be available at the Trade Marks

Office for inspection by any person during the hours when the Office is open for

business.

(2) Subregulation (1) is satisfied if a person who wants to inspect the Record of

International Registrations is given access to a computer terminal from which he

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Division 11 Miscellaneous

Regulation 17A.68

124 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

or she can read on a screen, or obtain a printed copy of, the particulars or other

matters recorded in it.

17A.68 Evidence—the Record of International Registrations

(1) The Record of International Registrations is evidence of any particular or other

matter entered in it.

(2) A copy of, or extract from, the Record of International Registrations that is

certified by the Registrar to be a true record or extract is admissible in any

proceedings as if it were the original.

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

(1) In any proceedings relating to a trade mark that is the subject of an IRDA or is a

protected international trade mark, a copy of any of the following documents is

admissible in evidence:

(a) the WIPO Gazette of International Marks published by the International

Bureau;

(b) an entry in or extract from the International Register, issued by the

International Bureau;

issued by the International Bureau.

(2) In any such proceedings:

(a) an instrument that purports to have been issued by the International Bureau

is taken to have been issued by the International Bureau unless the contrary

is proved; and

(b) an instrument that purports to be the WIPO Gazette of International Marks

published by the International Bureau is taken to be that Gazette unless the

contrary is proved.

(3) Also in any such proceedings, evidence of the Protocol or the Common

Regulations may be adduced by producing a book or pamphlet containing the

Protocol or the Common Regulations that purports to have been printed by

authority of:

(a) the World Intellectual Property Organization; or

(b) another person or body that the court considers to be a reliable source of

information.

17A.70 Correction of errors or omissions in Record of International

Registrations

(1) The Registrar may, on his or her own initiative, correct any error or omission in

the Record of International Registrations.

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Miscellaneous Division 11

Regulation 17A.71

Trade Marks Regulations 1995 125

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(2) A prescribed court may, on the application of an aggrieved person, order that the

Registrar rectify the Record of International Registrations by:

(a) entering anything wrongly omitted from it; or

(b) correcting any error in it.

(3) Section 90 of the Act applies, with the necessary modifications, for the purposes

of an application under subregulation (2).

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:

(a) a trade mark that is the subject of an IRDA; or

(b) a protected international trade mark;

as if the reference in subsection 217A(1) to the time particulars of the application

for registration of the trade mark are published under section 30 were a reference

to the time of inclusion of the particulars of the IRDA in the Record of

International Registrations under subregulation 17A.66(2).

17A.73 Security for costs

If a person who neither resides nor carries on business in Australia:

(a) gives notice of opposition to an IRDA under regulation 17A.29; or

(b) applies to the Registrar under regulation 17A.48 for the cessation of the

protection extended to a protected international trade mark;

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.

17A.74 Address for service of documents

Application of regulation

(1) This regulation applies in relation to the following persons:

(a) the holder of an IRDA;

(b) the holder of a protected international trade mark;

(d) a person whose claim is recorded under regulation 17A.62;

(e) a person who, under regulation 17A.29, opposes the extension of protection

in Australia to a trade mark that is the subject of an IRDA;

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Regulation 17A.74

126 Trade Marks Regulations 1995

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(f) a person who applies under subregulation 17A.48(1) for a trade mark that

is, or may become, a protected international trade mark to cease to be

protected;

(g) a person who opposes an application under subregulation 17A.48(1).

Note: The address for service of a person who is not mentioned in subregulation (1) is

covered by section 215 of the Act.

Address for service

(2) An address for service for the person must be:

(a) an address in Australia or New Zealand at which a document under the Act

or these Regulations may be given to the person personally or to the

person’s representative; or

(b) an address in Australia to which it is practicable and reasonable for

Australia Post, or a person acting on behalf of Australia Post, to deliver

mail; or

person providing mail delivery services to deliver mail.

(3) If the person notifies the Registrar of an address for service, the Registrar must

enter the address in the Record of International Registrations as the person’s

address for service.

(4) If the address changes to another address:

(a) the person must notify the Registrar of the new address; and

(b) the Registrar must amend the Record of International Registrations

accordingly.

(5) If the person ceases to have an address for service in respect of the IRDA or

protected international trade mark:

(a) the person must notify the Registrar that the person no longer has an

address for service; and

(b) the Registrar must remove the address from the Record of International

Registrations.

Note: See subregulation (9).

(6) If the Registrar is satisfied that the address for service notified by the person is

no longer an address of the person, the Registrar must remove the address from

the Record of International Registrations and notify the person of the removal.

Note: See subregulation (9).

Service

(7) If the Act provides, or these Regulations provide, that a document is to be served

on, or given or sent to, the person, the document may be left at, or sent by post

to, the address for service of the person.

Note: Section 29 of the Acts Interpretation Act 1901 and section 160 of the Evidence Act

1995 may govern when service on an address in Australia is taken to be effected.

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Regulation 17A.74

Trade Marks Regulations 1995 127

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(8) Subregulation (7) does not affect the operation of section 28A of the Acts

Interpretation Act 1901.

Note: Section 28A of the Acts Interpretation Act 1901 provides that a document may be

served (this term includes given, or sent, to):

‘(a) on a natural person:

(i) by delivering it to the person personally; or

(ii) by leaving it at, or by sending it by pre-paid post to, the address of the place of residence or business of the person last known to the person serving the document; or

(b) on a body corporate—by leaving it at, or sending it by pre-paid post to, the head office, a registered office or a principal office of the body corporate.’.

No address for service

(9) If no address for service is recorded for the person in the Record of International

Registrations:

(a) a requirement in the Act or these Regulations to serve a document on the

person is taken to be satisfied by posting the document to, or leaving it at, a

foreign address appearing in the Record for the person; and

(b) the requirement is taken to be satisfied on the day in Australia on which the

document is posted to, or left at, the foreign address.

Note: If subregulation (9) applies, and a document is required to be served in a prescribed

period, it will be sufficient compliance that the document is posted to the foreign

address on the final day in Australia of the prescribed period. It is not necessary for the

posted document to be received at the foreign address on or before that final day, as

reckoned in Australia or at the foreign address.

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Part 19 Administration

Regulation 19.1

128 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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 (if any) of

the Trade Marks Office are from 9 am to 5 pm on each day other than:

(a) a Saturday or a Sunday; or

(b) a public holiday:

(i) where the Office or sub-office (if any) is located; or

(ii) for the purposes of the Australian Public Service in that place.

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.

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Registered trade marks attorneys Part 20

General Division 1

Regulation 20.1A

Trade Marks Regulations 1995 129

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Part 20—Registered trade marks attorneys

Division 1—General

20.1A Application of Part

This Part applies to:

(a) a trade marks attorney who is not an incorporated trade marks attorney; and

(b) an individual applying for registration as a trade marks attorney.

20.1 Interpretation

In this Part:

AQF means the Australian Qualifications Framework.

serious offence means an offence that:

(a) involves obtaining property or a financial advantage by deception or

fraudulent conduct; and

(b) is either:

(i) an indictable offence against a law of the Commonwealth, a State or a

Territory (whether or not the offence may be dealt with summarily);

(ii) an offence against a law of a foreign country that would be an

indictable offence against a law of the Commonwealth, a State or a

Territory if committed in Australia (whether or not the offence could

be dealt with summarily if committed in Australia).

unsatisfactory professional conduct has the meaning given by regulation 20.32

of the Patents Regulations 1991.

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Part 20 Registered trade marks attorneys

Division 2 Obtaining registration for first time

Regulation 20.2

130 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 2—Obtaining registration for first time

20.2 Form of application

An application for registration as a trade marks attorney must:

(a) be in writing, in a form approved by the Designated Manager; and

(b) be accompanied by evidence and material mentioned in regulation 20.3;

and

20.3 Evidence that applicant meets registration requirements

(1) An application for registration as a trade marks attorney must be accompanied by

the following:

(a) evidence that the Board is satisfied that the applicant has, or is entitled to

the award of, an academic qualification of a kind mentioned in

regulation 20.6;

(b) evidence that the Board is satisfied that the applicant has the knowledge of

intellectual property law and practice that is required for a person to

practise as a trade marks attorney;

(i) has not, in the 5 years preceding the application, committed an

offence prescribed by subregulation 20.10(1); and

(ii) is not under sentence of imprisonment for an offence prescribed by

subregulation 20.10(2);

(d) a declaration, by another person, that the applicant is of good fame,

integrity and character.

(2) A 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:

(a) the person makes an application in the form approved by the Board; and

(b) the application is accompanied by:

(i) evidence that the person has the qualification; and

(ii) the original or a certified copy of an academic record that shows the

units that make up the qualification.

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Obtaining registration for first time Division 2

Regulation 20.6

Trade Marks Regulations 1995 131

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(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:

(a) a level 5 or higher AQF qualification; or

(b) a qualification awarded by an overseas institution that the Board is satisfied

is equivalent to a level 5 or higher AQF qualification.

20.7 Evidence of knowledge requirements

(1) The Board must be satisfied that a person has a knowledge requirement

mentioned in regulation 20.8 if:

(a) the person makes an application in the form approved by the Board; and

(b) the application is accompanied by:

(i) evidence that the applicant has the relevant knowledge; and

(ii) the original or a certified copy of any academic record that shows the

study that contributes to the knowledge.

(2) The Board must, within 42 days of deciding whether or not it is satisfied that the

person has the knowledge requirement, notify the person, in writing, of its

decision.

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 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.

(3) The Board may publish guidelines setting out criteria for deciding whether or not

areas of study:

(a) are likely to meet the minimum requirements set out in Schedule 5 to the

Patents Regulations 1991; and

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Division 2 Obtaining registration for first time

Regulation 20.9

132 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(b) are likely to provide a person with the appropriate level of understanding to

practise as a trade marks attorney.

(4) The Board may be satisfied that an applicant has the knowledge of intellectual

property law and practice that is required for a person to practise as a trade marks

attorney, despite the fact that the applicant does not meet every requirement set

out in Schedule 5 to the Patents Regulations 1991.

(5) The Board is not able to be satisfied that the applicant has the knowledge of

intellectual property law and practice that is required for a person to practise as a

trade marks attorney if the knowledge requirements on which the applicant relies

were obtained more than 10 years prior to the application.

(6) If an applicant has been granted an exemption under regulation 20.9, the

applicant is taken to meet the requirement in Schedule 5 to the Patents

Regulations 1991 for which the exemption is granted.

Note: Subsection 228A(4) of the Act provides that the Designated Manager must register as a

trade marks attorney a person who satisfies certain conditions. Paragraph 228A(4)(a)

requires that a person hold such qualifications as are specified in, or ascertained in

accordance with, the Regulations.

20.9 Exemption from a requirement in Schedule 5 to Patents Regulations

(1) The Board may exempt an applicant from having to satisfy all or some of the

requirements mentioned in Schedule 5 to the Patents Regulations 1991.

(2) The Board must not give an exemption to an applicant unless:

(a) the applicant makes an application in the form approved by the Board; and

(b) the applicant gives the Board enough information for the Board to be

satisfied under paragraph (c); and

(i) the applicant has passed a course of study at a satisfactory level; and

(ii) the course of study has outcomes that are the same as, or similar to,

those of a knowledge requirement for which the exemption is sought.

(3) The Board may give an exemption under subregulation (1) if it is satisfied that

the applicant has successfully completed a relevant course of study within the 5

years preceding the application or within a longer period specified in writing by

the Board.

(4) An exemption under subregulation (1) is valid for 5 years from the date that the

exemption was granted or for a longer period specified in writing by the Board.

20.10 Prescribed offences

(1) For paragraph 228A(4)(c) of the Act, an offence against the Act, the Designs Act

2003 or the Patents Act 1990 is a prescribed offence.

(2) For paragraph 228A(4)(d) of the Act, an offence of dishonesty for which the

maximum penalty is imprisonment for at least 2 years is a prescribed offence.

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Obtaining registration for first time Division 2

Regulation 20.11

Trade Marks Regulations 1995 133

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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:

(a) item 2 in Part 2 of that Schedule provided:

‘2. A course of study must provide for a student to have an appropriate

level of understanding of the Australian legal system and how

intellectual property rights may be protected.’; and

(b) item 5 in Part 5 of that Schedule 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’.

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Part 20 Registered trade marks attorneys

Division 3 Accreditation of courses of study

Regulation 20.12

134 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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’.

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Registered trade marks attorneys Part 20

Board examinations Division 4

Regulation 20.13

Trade Marks Regulations 1995 135

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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’.

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Part 20 Registered trade marks attorneys

Division 5 Maintaining registration and removing and restoring name to Register of Trade Marks

Attorneys

Regulation 20.14

136 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 5—Maintaining registration and removing and restoring

name to Register of Trade Marks Attorneys

20.14 Maintaining registration and removing and restoring name to Register of

Trade Marks Attorneys

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:

(a) references to ‘patent attorney’ were references to ‘trade marks attorney’;

and

(b) references to the ‘Register of Patent Attorneys’ were references to the

‘Register of Trade Marks Attorneys’; and

and

(d) the reference in paragraph 20.22(1)(a) of the Patents Regulations 1991 to

‘item 105 or 106 of Schedule 7’ were a reference to ‘item 29 or 30 of

Schedule 9’; and

(f) the reference in regulations 20.29, 20.30 and 20.31 of the Patents

Regulations 1991 to ‘item 107 of Schedule 7’ were a reference to ‘item 31

of Schedule 9’.

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Suspension of registration Division 5A

Regulation 20.14A

Trade Marks Regulations 1995 137

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 5A—Suspension of registration

20.14A Requirement to notify of serious offence

(1) A registered trade marks attorney who has been charged with a serious offence

must, within 14 days after being charged, notify the Designated Manager, in

writing, of the charge.

(2) If the registered trade marks attorney:

(a) fails to comply with subregulation (1); and

(b) does not have a reasonable excuse for failing to comply;

the failure to comply constitutes unsatisfactory professional conduct.

20.14B Suspension from Register—serious offence

(1) The Designated Manager may, by written notice to a registered trade marks

attorney, suspend the registered trade marks attorney’s registration if the

Designated Manager:

(a) is notified under subregulation 20.14A(1); or

(b) becomes aware that the registered trade marks attorney has been charged

with a serious offence.

(2) If the Designated Manager suspends the attorney’s registration:

(a) the suspension takes effect when the notice is given to the registered trade

marks attorney; and

(b) the Designated Manager must:

(i) give written notice to the Board of the suspension; and

(ii) by written notice, give the registered trade marks attorney 28 days

after the date of the notice (a show cause notice) within which to

show cause why the suspension should be lifted.

(3) The Designated Manager must consider any information provided by the

registered trade marks attorney in response to the show cause notice.

(4) The Designated Manager must immediately end the suspension if:

(a) the Designated Manager becomes aware that the charge is not proceeded

with or the prosecution of the charge is abandoned; or

(b) the Designated Manager becomes aware that the proceedings have been

completed without a conviction being recorded; or

the Disciplinary Tribunal decides not to continue the suspension or cancel

the registered trade marks attorney’s registration; or

(d) the Designated Manager considers that the suspension is no longer

necessary.

(5) If the Designated Manager ends the suspension, the Designated Manager must

notify, in writing, each of the following that the suspension has ended:

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Division 5A Suspension of registration

Regulation 20.14B

138 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(a) the registered trade marks attorney;

(b) the Board;

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Regulation 20.15

Trade Marks Regulations 1995 139

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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:

(a) references to a ‘registered patent attorney’ were references to a ‘registered

trade marks attorney’; and

(b) references to a ‘registered trade marks attorney’ were references to a

‘registered patent attorney’; and

Marks Attorneys’; and

(d) the reference in subparagraph 20.33(2)(b)(i) of the Patents

Regulations 1991 to ‘regulation 20.6’ were a reference to ‘regulation 20.6

of the Trade Marks Regulations 1995’; and

(e) the reference in subparagraph 20.33(2)(b)(ii) of the Patents

Regulations 1991 to ‘regulation 20.8’ were a reference to ‘regulation 20.8

of the Trade Marks Regulations 1995’; and

(f) subregulation 20.36(4) of the Patents Regulations 1991 were omitted; and

(g) the words ‘or subregulation 20.36E(5)’ in subregulation 20.36A(4) of the

Patents Regulation 1991 were omitted; and

(h) the words ‘Subject to regulation 20.36E, the Panel’ in

subregulation 20.36D(2) of the Patents Regulation 1991 were omitted and

the words ‘The Panel’ substituted; and

(i) regulation 20.36E of the Patents Regulation 1991 were omitted.

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Part 20 Registered trade marks attorneys

Division 7 Rights of registered trade marks attorneys

Regulation 20.16

140 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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.

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Incorporated trade marks attorneys Part 20A

General Division 1

Regulation 20A.1

Trade Marks Regulations 1995 141

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Part 20A—Incorporated trade marks attorneys

Division 1—General

20A.1 Application of Part 20A

This Part applies to:

(a) an incorporated trade marks attorney; and

(b) a company applying for registration as an incorporated trade marks

attorney.

20A.2 Definitions

In this Part:

professional indemnity insurance means insurance for claims that may be made

against the company in relation to its business, practices or acts as an

incorporated trade marks attorney.

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Division 2 Obtaining registration for first time

Regulation 20A.3

142 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 2—Obtaining registration for first time

20A.3 Form of application

An application for registration as an incorporated trade marks attorney must:

(a) be in writing, in a form approved by the Designated Manager; and

(b) be accompanied by the following evidence and material:

(i) the name of each trade marks attorney director of the company;

(ii) evidence that the company is a registered company under the

Corporations Act 2001;

(iii) evidence that the company has adequate and appropriate professional

indemnity insurance; and

20A.4 Certificate of registration

If the Designated Manager registers a company as an incorporated trade marks

attorney, the Designated Manager must give the company a certificate of

registration as soon as practicable.

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Maintaining registration Division 3

Regulation 20A.5

Trade Marks Regulations 1995 143

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 3—Maintaining registration

20A.5 Requirements for remaining on Register of Trade Marks Attorneys

(1) To remain on the Register of Trade Marks Attorneys, a registered incorporated

trade marks attorney must, for every year of registration, pay the annual

registration fee.

(2) The Designated Manager must, not later than 1 June in each year, give to each

registered incorporated trade marks attorney notice of the fee that is payable.

(3) The annual registration fee is payable on 1 July each year by a registered

incorporated trade marks attorney:

(a) whose name is on the Register of Trade Marks Attorneys on that day; and

(b) that has not asked the Designated Manager, under regulation 20A.6, to

remove its name from the Register of Trade Marks Attorneys.

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Division 4 Removal from Register of Trade Marks Attorneys

Regulation 20A.6

144 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 4—Removal from Register of Trade Marks Attorneys

20A.6 Voluntary removal of name from Register of Trade Marks Attorneys

If a trade marks attorney director of a registered incorporated trade marks

attorney asks the Designated Manager, in writing, to remove the name of the

incorporated trade marks attorney from the Register of Trade Marks Attorneys,

the Designated Manager must comply with the request.

20A.7 Failure to pay annual registration fee

If a registered incorporated trade marks attorney does not pay the annual

registration fee by 31 July in the year the fee is payable, the Designated Manager

must:

(a) remove the name of the attorney from the Register of Trade Marks

Attorneys; and

(b) notify, in writing, the attorney of the removal.

20A.8 Failure to maintain professional indemnity insurance

(1) If an incorporated trade marks attorney does not maintain adequate and

appropriate professional indemnity insurance, the Designated Manager may

remove the name of the attorney from the Register of Trade Marks Attorneys.

(2) If the Designated Manager removes the name of the incorporated trade marks

attorney from the Register of Trade Marks Attorneys, the Designated Manager

must notify, in writing, the attorney of the removal.

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Discipline Division 5

Regulation 20A.9

Trade Marks Regulations 1995 145

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 5—Discipline

Subdivision A—General

20A.9 Definitions

In this Part:

former attorney means a person whose registration as an incorporated trade

marks attorney has been suspended or cancelled under this Division.

20A.10 Board may apply for cancellation or suspension of incorporated trade

marks attorney’s registration

(1) The Board may apply to the Disciplinary Tribunal to cancel or suspend an

incorporated trade marks attorney’s registration if:

(a) a registered trade marks attorney who is, or was, an employee or officer of

the incorporated trade marks attorney has, at any time, been found guilty of

professional misconduct in accordance with Division 6 of Part 20; and

(b) the professional misconduct occurred when the registered trade marks

attorney was an employee or officer of the incorporated trade marks

attorney; and

accordance with Division 6 of Part 20 because he or she was found guilty

of professional misconduct.

(2) Before applying to the Disciplinary Tribunal, the Board may request the

incorporated trade marks attorney to provide the Board with information relating

to the professional misconduct.

(3) In deciding whether to apply to the Disciplinary Tribunal, the Board may

consider the following:

(a) the professional misconduct engaged in by the registered trade marks

attorney;

(b) the behaviour of the incorporated trade marks attorney’s officers and

employees;

have complied with the Code of Conduct;

(d) any information provided under subregulation (2).

(4) An application by the Board to the Disciplinary Tribunal must:

(a) be in writing; and

(b) set out the reasons why the Board considers the incorporated trade marks

attorney’s registration should be cancelled or suspended; and

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Regulation 20A.11

146 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(5) The Board must give the incorporated trade marks attorney, as soon as

practicable after the application is made to the Disciplinary Tribunal, a copy of

the application.

Subdivision B—Proceedings in Disciplinary Tribunal

20A.11 Panel of the Disciplinary Tribunal to be constituted

(1) Except as otherwise provided by this Part, the Disciplinary Tribunal’s functions

and powers in relation to disciplinary proceedings under this Part are to be

performed and exercised by a Panel of the Disciplinary Tribunal.

(2) A Panel of the Disciplinary Tribunal is to be constituted by:

(a) a Panel Chair; and

(b) 2 other members determined by the Panel Chair under subregulation (3).

(3) The Panel Chair is to determine, in writing, the other members of the

Disciplinary Tribunal who are to constitute the Panel that is to conduct the

proceedings.

Note: Regulation 20.64 of the Patents Regulations 1991 sets out requirements relating to the

disclosure of conflicts of interest.

20A.11A Meetings of Panel of Disciplinary Tribunal

(1) The Panel Chair of a Panel of the Disciplinary Tribunal must:

(a) convene such meetings of the Panel as the Panel Chair considers necessary

for the purpose of conducting disciplinary proceedings being heard by the

Panel; and

(b) preside at all meetings of the Panel.

(2) Subject to paragraph 20A.11D(2)(a), all members of a Panel of the Disciplinary

Tribunal must be present at a meeting of the Panel.

(3) A question arising at a meeting of a Panel of the Disciplinary Tribunal must be

determined by a majority of the votes of the members of the Panel present and

voting.

(4) However, if, in accordance with paragraph 20A.11D(2)(a), a hearing of

proceedings is continued with 2 members of the Panel, questions arising at the

hearing must be determined by a unanimous vote of the 2 members.

20A.11B Procedure of Panel of Disciplinary Tribunal

(1) Subject to this Part, the procedures for convening meetings of a Panel of the

Disciplinary Tribunal and for the conduct of business by a Panel of the

Disciplinary Tribunal are as the Panel Chair determines.

(2) Proceedings before the Panel are to be conducted quickly and informally, while

allowing for proper consideration of the matter before the Panel.

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Regulation 20A.11C

Trade Marks Regulations 1995 147

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(3) The Panel is not bound by the rules of evidence but may be informed on any

matter in the manner it chooses.

(4) The Panel may take evidence on oath or on affirmation and, for that purpose, the

Panel Chair may administer an oath or affirmation.

20A.11C Panel Chair unavailable to complete hearing

(1) This regulation applies if:

(a) a hearing of proceedings in relation to a particular matter has been

commenced or completed by a Panel of the Disciplinary Tribunal; and

(b) before the matter has been determined, the Panel Chair has:

(i) ceased to be a member; or

(ii) for any reason, ceased to be available as a member of the Panel.

(2) The matter is to be reheard by a new Panel constituted in accordance with

regulation 20A.11.

(3) The new Panel may, for the purposes of performing or exercising the

Disciplinary Tribunal’s functions or powers in relation to that matter, have

regard to any record of the proceedings before the Panel as previously

constituted for the purposes of hearing that matter.

20A.11D Members other than the Panel Chair unavailable to complete hearing

(1) This regulation applies if:

(a) a hearing of proceedings in relation to a particular matter has been

commenced or completed by a Panel of the Disciplinary Tribunal; and

(b) before the matter has been determined, one of the members (other than the

Panel Chair) constituting the Panel has:

(i) ceased to be a member; or

(ii) for any reason, ceased to be available as a member of the Panel.

(2) The Panel Chair may determine that:

(a) the hearing and determination, or the determination, of the matter is to be

completed by the Panel constituted by the remaining members of the Panel;

(b) the matter is to be reheard by a new Panel constituted in accordance with

regulation 20A.11.

(3) If a matter is reheard under paragraph (2)(b), the new Panel may, for the

purposes of performing or exercising the Disciplinary Tribunal’s functions or

powers in relation to that matter, have regard to any record of the proceedings

before the Panel as previously constituted for the purposes of hearing that matter.

20A.12 Notification of hearing

(1) As soon as practicable after receiving an application under regulation 20A.10,

the Panel Chair of a Panel of the Disciplinary Tribunal must:

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148 Trade Marks Regulations 1995

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(a) fix a day, time and place to hear the application; and

(b) notify the incorporated trade marks attorney and the Board of that day, time

and place.

(3) The day of hearing must not be less than 21 days after the day the incorporated

trade marks attorney is notified of the hearing.

20A.13 Hearings to be public except in special circumstances

(1) A hearing before a Panel of the Disciplinary Tribunal must be in public.

(2) However, if the Panel Chair is reasonably satisfied that it is desirable to do so, in

the public interest or because of the confidential nature of any evidence or

matter, the Panel Chair may:

(a) direct that a hearing, or a part of a hearing, is to take place in private and

give directions as to the persons who may be present; and

(b) give directions restricting or prohibiting the publication or disclosure of:

(i) evidence given before the Panel, whether in public or in private; or

(ii) matters contained in documents lodged with the Panel or received in

evidence by the Panel.

(3) A person commits an offence if the person:

(a) is given a direction under paragraph (2)(a) or (b); and

(b) does not comply with the direction.

Penalty: 5 penalty units.

20A.14 Representation before Panel of Disciplinary Tribunal

(1) At a hearing before a Panel of the Disciplinary Tribunal, the incorporated trade

marks attorney must be represented by a trade marks attorney director of the

incorporated trade marks attorney or a legal practitioner.

(2) A party to proceedings before the Panel, or a representative of the party, may

request the Panel Chair to summon witnesses.

20A.15 Summoning of witnesses

(1) For the purpose of a hearing before a Panel of the Disciplinary Tribunal, the

Panel Chair may, by written instrument signed by the Panel Chair:

(a) summon a person to appear before the Panel to give evidence and to

produce any documents or articles mentioned in the summons; or

(b) summon a trade marks attorney director of the incorporated trade marks

attorney to appear before the Panel:

(i) to produce any documents or articles mentioned in the summons; and

(ii) to give evidence to identify the documents or articles.

(2) A trade marks attorney director who is summoned must appear in person.

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Regulation 20A.16

Trade Marks Regulations 1995 149

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

20A.16 Offences by persons appearing before a Panel of Disciplinary Tribunal

(1) A person commits an offence if the person:

(a) is summoned to appear before a Panel of the Disciplinary Tribunal; and

(b) does not comply with the summons by:

(i) appearing as required by the summons; and

(ii) producing documents or articles as required by the summons; and

(iii) appearing and reporting to the Panel, as required.

Penalty: 10 penalty units.

(2) It is a defence to a prosecution for an offence against subregulation (1) if:

(a) the defendant is prevented or hindered from complying with the summons

by:

(i) a circumstance mentioned in Part 2.3 of the Criminal Code; or

(ii) any other circumstance that the Panel Chair reasonably considers is an

impediment to the defendant complying with the summons; or

(b) in relation to subparagraph (1)(b)(iii)—the defendant is excused by the

Panel Chair.

Note: A defendant bears an evidential burden in relation to the matters mentioned in

subparagraph (2)(a)(i) (see section 13.3 of the Criminal Code).

(3) A person commits an offence if:

(a) the person:

(i) is not a trade marks attorney director to whom subregulation (5)

applies; and

(ii) appears as a witness before a Panel of the Disciplinary Tribunal; and

(iii) has been paid expenses and allowances in accordance with Part 2 of

Schedule 8 to the Patents Regulations 1991; and

(i) to be sworn or make an affirmation; or

(ii) to answer a question relevant to the evidence that the person was

summoned to give.

Penalty: 10 penalty units.

(4) Strict liability applies to the physical element of an offence against

subregulation (3) that is constituted by:

(a) the circumstance mentioned in subparagraph (3)(a)(i); and

(b) the circumstance mentioned in subparagraph (3)(a)(iii).

Note: For strict liability, see section 6.1 of the Criminal Code.

(5) A person commits an offence if the person:

(a) is a trade marks attorney director who has been summoned to appear at a

hearing before a Panel of the Disciplinary Tribunal; and

(b) refuses:

(i) to be sworn or to make an affirmation; or

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Regulation 20A.17

150 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(ii) to answer a question relevant to the evidence that the person was

summoned to give.

Penalty: 10 penalty units.

(6) It is a defence to a prosecution for an offence against subregulation (3) or (5) if a

person mentioned in the subregulation refused to answer a question or to produce

a document or article because the answer to the question, or the document or

article, may tend to prove that the person has committed an offence against a law

of the Commonwealth or of a State or Territory.

20A.17 Protection of certain persons

(1) A person who is a member of a Panel of the Disciplinary Tribunal conducting a

hearing of disciplinary proceedings under this Part has, in the performance of his

or her duties as a member of the Panel, the same protection and immunity as a

Justice of the High Court.

(2) A member of the Board has, in exercising a power under this Part, the same

protection and immunity as a Justice of the High Court.

(3) A legal practitioner or other person appearing before a Panel of the Disciplinary

Tribunal has the same protection and immunity as a barrister has in appearing for

a party in proceedings in the High Court.

(4) A person summoned to attend or appearing before a Panel of the Disciplinary

Tribunal as a witness:

(a) has the same protection; and

(b) is, in addition to the penalties provided by this Part, subject to the same

liabilities;

as a witness in proceedings in the High Court.

20A.18 Decision of Panel of Disciplinary Tribunal

(1) After hearing an application for the cancellation or suspension of the

incorporated trade marks attorney’s registration, a Panel of the Disciplinary

Tribunal may:

(a) cancel the attorney’s registration as an incorporated trade marks attorney;

(b) suspend the attorney’s registration as an incorporated trade marks attorney.

(2) The Panel may also impose conditions on the attorney’s return to the Register of

Trade Marks Attorneys after the cancellation has been lifted or the period of

suspension has elapsed.

(3) In making a decision under this regulation, the Panel may consider the following:

(a) the professional misconduct engaged in;

(b) the behaviour of the incorporated trade marks attorney’s officers and

employees;

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Regulation 20A.19

Trade Marks Regulations 1995 151

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

had complied with the Code of Conduct;

(d) findings made (regardless of when the findings were made) about the

conduct of the incorporated attorney in any other proceedings brought

before a relevant disciplinary tribunal;

(e) findings made (regardless of when the findings were made) about the

conduct of the incorporated attorney’s employees and officers in any other

proceedings brought before a relevant disciplinary tribunal;

(f) if the incorporated trade marks attorney failed, without reasonable excuse,

to provide information requested by the Board under

subregulation 20A.10(2)—the incorporated trade marks attorney’s failure

to provide requested information.

(4) In this regulation:

relevant disciplinary tribunal means any of the following:

(a) the Patents and Trade Marks Attorneys Disciplinary Tribunal established

by regulation 20.61 of the Patents Regulations 1991 as in force before the

commencement of this subregulation;

(b) the Trans-Tasman IP Attorneys Disciplinary Tribunal established by

regulation 20.61 of the Patents Regulations 1991 as in force on the

commencement of this subregulation;

in force by subregulation 23.42(1) or 23.43(1) of the Patents

Regulations 1991 or subregulation 22.16(1) or 22.17(1) of these

Regulations.

20A.19 Notification and publication of decisions of Panel of Disciplinary

Tribunal

(1) Within 14 days after a Panel of the Disciplinary Tribunal makes a decision under

regulation 20A.18, the Panel must:

(a) prepare a written statement that states:

(i) the decision of the Panel; and

(ii) the reasons for the decision; and

(iii) the findings on any material questions of fact; and

(iv) evidence or other material on which the findings of fact are based; and

(b) give a copy of the statement to:

(i) the incorporated trade marks attorney who is the subject of the

decision; and

(ii) the Board; and

(iii) the Designated Manager; and

decision of the Panel.

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Regulation 20A.20

152 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(2) If the registration of an incorporated trade marks attorney is suspended, the

Designated Manager must note the suspension and its duration in the Register of

Trade Marks Attorneys.

(3) If the registration of an incorporated trade marks attorney is cancelled, the

Designated Manager must remove the name of the incorporated trade marks

attorney from the Register of Trade Marks Attorneys.

20A.20 Completion of outstanding business

(1) If a Panel of the Disciplinary Tribunal cancels the registration of an incorporated

trade marks attorney, the Panel Chair may appoint a registered trade marks

attorney to complete the unfinished trade marks work of the former attorney.

(2) If a Panel of the Disciplinary Tribunal suspends the registration of an

incorporated trade marks attorney, the Panel Chair may appoint a registered trade

marks attorney to carry on the former attorney’s trade marks work for:

(a) the period of the suspension; or

(b) a specified period, not longer than the period of suspension.

(3) The Panel Chair of a Panel of the Disciplinary Tribunal must not appoint a

registered trade marks attorney under subregulation (1) or (2) unless the

registered trade marks attorney consents to the appointment.

(4) A registered trade marks attorney appointed under subregulation (1) or (2) may

only act as a registered trade marks attorney for a client of the former attorney if

the client has given consent for the appointed attorney to act.

20A.21 Former attorney may be required to provide assistance

(1) A registered trade marks attorney appointed under subregulation 20A.20(1) or

(2) may, by written notice, request the former attorney to make available:

(a) information about the trade marks work that the appointed attorney may

reasonably require; or

(b) books, accounts or other documents about the trade marks work that the

appointed attorney may reasonably require; or

(i) on behalf of a client; or

(ii) that has been paid by a client in relation to services not yet performed

for the client.

(2) A person commits an offence if the person:

(a) is a former attorney; and

(b) is given a notice under subregulation (1); and

Penalty: 5 penalty units.

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Regulation 20A.21

Trade Marks Regulations 1995 153

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(3) It is a defence to a prosecution for an offence against subregulation (2) if the

former attorney is prevented or hindered from complying with a request in the

notice by:

(a) a circumstance mentioned in Part 2.3 of the Criminal Code; or

(b) any other circumstance that the relevant Panel Chair reasonably considers

is an impediment to the defendant complying with the summons.

Note: A defendant bears an evidential burden in relation to the question of whether he or she

has a reasonable excuse (see section 13.3 of the Criminal Code).

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Part 20A Incorporated trade marks attorneys

Division 6 Returning to Register of Trade Marks Attorneys

Regulation 20A.22

154 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 6—Returning to Register of Trade Marks Attorneys

20A.22 Restoring name to Register of Trade Marks Attorneys

(1) This regulation sets out circumstances in which the Designated Manager must

restore to the Register of Trade Marks Attorneys the name of an incorporated

trade marks attorney that has been removed from the Register of Trade Marks

Attorneys under:

(a) regulation 20A.6, 20A.7 or 20A.8; or

(b) subsection 157A(7) of the Act.

(2) The Designated Manager must restore the name if:

(a) the attorney requests the Designated Manager, in the form approved by the

Designated Manager, to restore the name; and

(b) the request includes:

(i) the name of each trade marks attorney director of the company; and

(ii) evidence that the company is a registered company under the

Corporations Act 2001; and

(ii) evidence that the company has adequate and appropriate professional

indemnity insurance; and

(i) if the name was removed under regulation 20A.7—on or before

1 September of the year that the name was removed from the Register

of Trade Marks Attorneys, or within a further period that the

Designated Manager allows; or

(ii) in any other case—within 3 years after the name was removed from

the Register of Trade Marks Attorneys; and

(d) the attorney pays:

(i) the annual registration fee for the year the reinstatement is made; and

(ii) the fee mentioned in item 39 of Schedule 9.

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Miscellaneous Part 21

Applications and other documents Division 1

Regulation 21.1

Trade Marks Regulations 1995 155

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Part 21—Miscellaneous

Division 1—Applications and other documents

21.1 Compliance with instructions on approved forms

If:

(a) an application, notice, request or declaration under the Act or these

regulations is required to be in an approved form; and

(b) a blank form that may be used in making an application, request or

declaration or giving notice:

(i) is supplied by the Registrar; and

(ii) contains directions about completing that form;

the person who completes the form must comply with those directions.

21.2 Filing of documents—requirements as to form

(1) A document to be filed at the Trade Marks Office must comply with the

requirements set out in Schedule 7.

(2) If the document does not comply with the requirements in Schedule 7, the

Registrar may return the document to the person from whom it was received with

a statement setting out the requirements that have not been complied with.

(4) If a person files a copy of a document, the Registrar may require the person to

file the original document.

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:

(a) the person making the application or request or giving the notice; or

(b) the person on whose behalf the application, notice or request is made.

(2) If an address recorded in the Register or included in an application, notice or

request that is filed changes, the person whose address changes, or a person

acting on behalf of that person, must notify the Registrar of the new address.

(3) If the Registrar is notified of a new address, the Registrar must amend the

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:

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Part 21 Miscellaneous

Division 1 Applications and other documents

Regulation 21.5

156 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(a) treat the document as not having been filed at the Trade Marks Office; or

(b) treat the document as having been filed, but require the person who filed

the document to make, or cause to be made, any alterations to the

document that are necessary to enable the document to so comply.

Note: Regulations 4.2 and 4.2A set out requirements with which applications for the

registration of trade marks must comply to be taken as having been filed.

21.5 Filing of documents—date of receipt to be marked

(1) A document that is received for filing must be marked by the Registrar with the

date on which it is received.

(2) If the Trade Marks Office or a sub-office (if any) provides a facility for the

receipt of documents (other than documents filed electronically or by facsimile

transmission), when the Trade Marks Office or sub-office (if any) is not open to

the public for business, a document received by means of that facility is taken to

have been received on the day on which the Trade Marks Office or sub-office (if

any) was last open to the public for business before the document was received.

(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) A declaration required or permitted by the Act or these Regulations must be in an

approved form.

Note: Declaration forms in the approved form are available on the IP Australia website at

www.ipaustralia.gov.au.

(2) A declaration in the form of a statutory declaration, required or permitted to be

given to a person mentioned in subregulation (3), may be given to the person in

an electronic form by a means of electronic communication approved by the

Registrar.

Note: A declaration that is not in the form of statutory declaration may also be given in an

electronic form by means of an electronic communication: see section 11 of the

Electronic Transactions Act 1999.

(3) For subregulation (2), the following persons may be given declarations,

including statutory declarations, in electronic form by electronic means:

(a) the Registrar of Trade Marks;

(b) the Designated Manager;

(d) the Board.

21.7 Declarations—additional material

(1) If:

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Regulation 21.7A

Trade Marks Regulations 1995 157

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(a) a person is required by the Act or these regulations to file a declaration or

serve a copy of the declaration; and

(b) it is not practicable to include in, or attach to, the declaration or copy any

material to which the declaration refers;

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.

21.7A Service by post

Service by post is a prescribed means by which a document may be served on, or

given or sent to, a person for the purposes of paragraphs 215(6)(a) and (b) of the

Act.

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):

(a) a person who has filed an application, notice or request; or

(b) another person in whom the right or interest in reliance on which the

application, notice or request was filed has become vested;

may withdraw the application, notice or request by giving notice in writing of the

withdrawal to the Registrar.

(2) If:

(a) the application, notice or request was filed by, or on behalf of, more than 1

person; or

(b) the right or interest mentioned in paragraph (1)(b) has 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.

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Division 1 Applications and other documents

Regulation 21.10

158 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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.

21.11 Change of address for service—notice to interested persons

A person:

(a) who has filed an application, notice or request stating an address for

service; and

(b) who notifies the Registrar of another address for service for the purposes of

paragraph 215(1)(b) of the Act (which deals with address for service);

must give a copy of the notification to:

(d) to any other person as directed by the Registrar.

21.11A Documents to be made available for public inspection

(1) For subsection 217A(1) of the Act each document held by the Registrar that

relates to a trade mark is prescribed, other than a document mentioned in

subregulation (2).

(2) For subregulation (1), the documents are:

(a) a document that would be privileged from production in legal proceedings

on the ground of legal professional privilege; and

(b) a document that is subject to an order of a court or tribunal that prohibits

disclosure of the document or information in the document; and

(i) whose production the Registrar has required under paragraph 202(c)

of the Act; and

(ii) that the Registrar is satisfied should not be made available for public

inspection; and

(d) a document that solely contains evidence of the use or proposed use of a

trade mark; and

(e) a declaration stating the reasons for a request for expedited examination

under regulation 4.18; and

(f) a document filed by an applicant for an extension of time under

subsection 224(2) or (3) of the Act in relation to an application under those

provisions, other than the application for an extension of time; and

(g) a document filed in the course of opposition proceedings under the Act and

Regulations, other than the notice of opposition; and

(h) a document containing any information that the Registrar requires to be

held confidentially under paragraph 226A(1)(a) of the Act; and

(i) a document prepared by the Registrar, a Deputy Registrar or an employee

in the Trade Marks Office that contains information obtained from a

document to which any of paragraphs (a) to (h) applies, being information

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Miscellaneous Part 21

Applications and other documents Division 1

Regulation 21.11A

Trade Marks Regulations 1995 159

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

that is the reason, or contributes to the reason, why that paragraph applies

to the document.

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Part 21 Miscellaneous

Division 2 Proceedings before the Registrar

Regulation 21.12

160 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 2—Proceedings before the Registrar

21.12 Applications for costs

(1) For the purposes of section 221 of the Act (which deals with costs), a party to

proceedings before the Registrar may apply to the Registrar, in an approved

form, for an award of costs in relation to the proceedings.

(2) An application must be made:

(a) during the proceedings; or

(b) within 3 months from:

(i) the day on which the Registrar makes a decision in the proceedings

that ends those proceedings; or

(ii) the date of the Registrar’s notice to the party that the 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.

(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 Award of costs

(1) For section 221 of the Act, if a matter is mentioned in these Regulations as a

matter attracting the award of costs, costs may be awarded:

(a) in accordance with Schedule 8; or

(b) if the Registrar has a discretionary power in relation to the award of

costs—as the Registrar considers appropriate.

(2) The costs must be taxed, allowed and certified by an employee appointed by the

Registrar.

(3) The Registrar may review the taxation of costs by the employee.

(4) In this regulation:

costs does not include the costs mentioned in paragraph 105(2)(b) of the Act.

21.14 Conduct of proceedings generally

(1) The Registrar may, at the request of a party to proceedings before the Registrar,

other than opposition proceedings, give directions in relation to the procedure in

the proceedings.

(2) Directions given under subregulation (1) must not be inconsistent with these

regulations.

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Proceedings before the Registrar Division 2

Regulation 21.15

Trade Marks Regulations 1995 161

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(3) The Registrar must not give directions under subregulation (1) unless the

Registrar:

(a) is reasonably satisfied that any person affected by the proposed directions

has been notified of the proposed directions; and

(b) has given any person affected a reasonable opportunity to make

representations concerning the proposed directions; and

(4) For the purposes of paragraph (3)(b), representations may be made in writing or

at a hearing or by such other means as the Registrar reasonably allows.

(5) Subject to these regulations, the Registrar may determine the procedure to be

followed in proceedings before the Registrar.

Note: Regulation 5.19 deals with directions as to procedure in opposition proceedings.

21.15 Opportunity to be heard by Registrar

(1) This regulation applies if the Act or these Regulations provide for a person to be

heard by the Registrar.

(2) The Registrar may give the person an opportunity to be heard by:

(a) asking the person for written submissions; or

(b) notifying the person that on request to the Registrar, the person may be

heard by way of an oral hearing on a date, and at a time and place,

determined by the Registrar; or

(3) A request for a hearing must be in an approved form.

(4) The Registrar is not bound by the rules of evidence, but may be informed on any

matter that is before the Registrar in a way that the Registrar reasonably believes

to be appropriate.

(5) The Registrar may decide a matter if each person that is a party to the matter:

(a) notifies the Registrar that the person does not want to be heard; or

(b) does not file written submissions if requested under subregulation 21.16(1);

(d) does not attend an oral hearing if notified under subregulation 21.16(2).

(6) In the circumstances mentioned in subregulation (5), the Registrar may make a

decision by reference to relevant information that is held in the Trade Marks

Office.

(7) If the Registrar makes a decision in any of the circumstances mentioned in

subregulation (5), the Registrar must notify each party of the Registrar’s

decision.

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Part 21 Miscellaneous

Division 2 Proceedings before the Registrar

Regulation 21.16

162 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

21.16 Written submissions and oral hearings

Written submissions

(1) If the Registrar decides that a person may be heard by way of written

submissions, the Registrar must:

(a) notify the person of the period in which the submissions must be filed

(being at least 10 business days); and

(b) determine the matter after considering the written submissions; and

Oral hearings

(2) If the Registrar decides that a person may be heard by way of an oral hearing, the

Registrar must give notice of the date, time and place of the hearing, to the

person, at least 10 business days before the day the hearing is to begin.

(3) The Registrar may adjourn an oral hearing from time to time or from place to

place by notifying the person.

(4) The Registrar may hold an oral hearing in which:

(a) a person appears in person; or

(b) a person participates by telephone or other means of telecommunications

that the Registrar reasonably allows.

(5) In addition to the Registrar’s other powers, the Registrar may direct a person to

provide a written summary of submissions.

(6) An oral hearing must be conducted with as little formality and technicality, and

as quickly, as the requirements of the Act, these Regulations and a proper

consideration of the matters before the Registrar, allow.

(7) Subject to these Regulations, the Registrar may give a direction that is

reasonably necessary for the conduct of the hearing.

(8) The Registrar must notify a person who appears at the hearing of the Registrar’s

decision in relation to the matter.

21.17 Evidence in proceedings

(1) Evidence that is given in writing in any proceedings before the Registrar must be

in the form of a declaration.

(2) The Registrar may require a person who has made a declaration that is filed in

the proceedings to attend before the Registrar to give evidence orally on oath or

affirmation instead of, or in addition to, the evidence contained in the

declaration.

(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.

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Proceedings before the Registrar Division 2

Regulation 21.18

Trade Marks Regulations 1995 163

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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:

(a) a translation of the document into English; and

(b) a certificate of verification in relation to the translation.

21.19 Registrar may use information available

(1) If:

(a) information that is available to the Registrar is relevant to proceedings

before the Registrar; and

(b) the Registrar has reason to believe that the information is not known to a

party to the proceedings; and

decision in the proceedings;

before making the decision the Registrar must:

(d) provide the information to the party; and

(e) give the party a reasonable opportunity to make representations about the

information.

(2) For the purposes of paragraph (1)(e), the representations may be made in writing

or at a hearing or by such other means as the Registrar reasonably allows.

21.20 Statements of reasons for decision

If:

(a) the Registrar notifies a party to proceedings before the Registrar of a

decision of the Registrar in the proceedings; and

(b) the party requests the Registrar in writing for the reasons for the decision;

the Registrar must comply with the request.

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Part 21 Miscellaneous

Division 2A Extensions of time

Regulation 21.20A

164 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 2A—Extensions of time

21.20A Definitions

In this Division:

notice of opposition means a notice filed under subregulation 21.20B(1).

party means an applicant or opponent.

Note: The definitions of the following terms are in section 6 of the Act:

(a) applicant;

(b) approved form;

(d) month;

(e) person.

21.20B Notice of opposition

(1) For subsection 224(6) of the Act, a person may oppose a request for an extension

of time by filing a notice of opposition in an approved form within one month

from the advertisement of the request for the extensions in the Official Journal

under subsection 224(5) of the Act.

(2) The Registrar must give a copy of the notice to the applicant.

21.20C Notification and opportunity to make representations

(1) This regulation applies if:

(a) a party makes a request to the Registrar under this Division; or

(b) the Registrar proposes to make a decision on the Registrar’s own initiative

under this Division.

(2) The Registrar must:

(a) for paragraph (1)(a)—notify the other party of the request, including by

giving the other party a copy of the request; or

(b) for paragraph (1)(b)—notify the parties of the proposed decision.

(3) If the Registrar proposes to grant the request, the Registrar must give the parties

an opportunity to make representations:

(a) in writing; or

(b) at a hearing; or

(4) The Registrar must notify the parties of the Registrar’s decision.

21.20D Practice and procedure

The Registrar may:

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Extensions of time Division 2A

Regulation 21.20E

Trade Marks Regulations 1995 165

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(a) decide the practice and procedure to be followed in an opposition to which

this Division applies; and

(b) direct the parties accordingly.

21.20E Hearing

(1) The Registrar:

(a) must hold a hearing of the opposition if requested by a party in writing; or

(b) may decide, on the Registrar’s own initiative, to hold a hearing of the

opposition.

(2) The hearing may, at the Registrar’s discretion, be:

(a) an oral hearing; or

(b) by written submissions.

(3) If the Registrar decides on an oral hearing:

(a) the Registrar must notify the parties of the date, time and place of the

hearing; and

(b) the opponent must file a summary of submissions at least 10 business days

before the hearing; and

before the hearing.

(4) The Registrar may take into account a party’s failure to file a summary of

submissions under subregulation (3) in making an award of costs.

Note: Regulations 21.15 and 21.16 deal with hearings.

(5) The Registrar must:

(a) decide the opposition; and

(b) notify the parties of the Registrar’s decision.

21.20F Registrar may give direction

(1) The Registrar may give a direction in relation to an opposition to which this

Division applies:

(a) if requested by a party in writing; or

(b) on the Registrar’s own initiative.

(2) If the Registrar proposes to give a direction, the Registrar must give the parties

an opportunity to make representations about the direction.

(3) A direction must not be inconsistent with the Act or these Regulations.

(4) The Registrar must notify the parties of the direction as soon as practicable.

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Part 21 Miscellaneous

Division 2A Extensions of time

Regulation 21.20G

166 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

21.20G Registrar must notify parties of dismissal or discontinuance of

opposition

If an opposition is dismissed or discontinued, the Registrar must notify the

parties of the dismissal or discontinuance.

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General Division 3

Regulation 21.21

Trade Marks Regulations 1995 167

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Division 3—General

21.21 What fees are payable

(1) For subsection 223(1) of the Act (which deals with fees), the fees specified in an

item in Schedule 9 are payable in respect of a matter specified in that item.

(2) If a person asks the Registrar, under subsection 75(1) of the Act, to renew the

registration of a trade mark before it expires, the fee payable for the renewal is

the fee that would be payable if the person had asked for renewal of the

registration on the day when it would otherwise expire.

(3) Subregulation (4) applies if a person asks the Registrar, under section 79 of the

Act, to renew the registration of a trade mark after it expires.

(4) The fees payable for the renewal are:

(a) the fee that would have been payable if the person had asked for renewal of

the registration on the day when it expired; and

(b) the additional fee stated in item 10 of Schedule 9 for the period:

(i) beginning on the day after the day when the registration expires; and

(ii) ending on the day when the request for renewal is filed.

(5) If a person asks the Registrar, under section 80D of the Act, to renew the

registration of a trade mark for one or more potential renewal periods, the fee

payable is the sum of the fees payable for the potential renewal period or periods

requested by the person, as those fees were at the Register entry day.

(6) Subregulation (7) applies if a person asks the Registrar, under

paragraph 80G(1)(b) of the Act (which deals with renewal within 10 months

after the end of the prescribed period) to renew the registration of a trade mark

for one or more potential renewal periods.

(7) The fee payable for the renewal is:

(a) the sum of the fees payable for the potential renewal period or periods

requested by the person, as those fees were at the Register entry day; and

(b) the additional fee stated in item 12 of Schedule 9 for the period:

(i) beginning on the day after the day when the prescribed period expires;

and

(ii) ending on the day when the request for renewal is filed.

(8) Item 16 of Schedule 9, as in force on 1 July 2012, does not apply to a person in

relation to a hearing held after the commencement of this subregulation if the

person:

(a) requests the hearing, and pays the fee mentioned in item 14 of Schedule 9,

before the commencement of this subregulation; or

(b) pays the fee mentioned in item 16 of Schedule 9 for the hearing before the

commencement of this subregulation.

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Division 3 General

Regulation 21.21AA

168 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

(9) Item 17 of Schedule 9, as in force on 1 July 2012, does not apply to a person in

relation to a hearing held after the commencement of this subregulation if the

person:

(a) pays the fee mentioned in item 15 of Schedule 9 for the hearing before the

commencement of this subregulation; or

(b) pays the fee mentioned in item 17 of Schedule 9 for the hearing before the

commencement of this subregulation.

21.21AA Approved means

(1) The Registrar may, by notice published by the Registrar, specify one or more

means for doing an action mentioned in Schedule 9.

Example of action: Filing an application.

(2) The means may be an electronic means or any other means.

Note: The means become approved means when they are published.

21.21A No action permitted until fee paid

(1) If a fee is payable in respect of the doing of an act by the Registrar or the

Comptroller-General of Customs, the Registrar or Comptroller-General of

Customs must not do the act until the fee has been paid.

(2) Subject to subregulation (3), if:

(a) a fee is payable in respect of the doing of an act by a person other than the

Registrar or the Comptroller-General of Customs; or

(b) a fee is payable in respect of the filing of a document;

the act is taken to have been done, or the document is taken to have been filed,

despite the failure to pay the fee.

Note: File has the meaning given by section 6 of the Act.

(3) If the Registrar or the Comptroller-General of Customs 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

(1) For the purposes of subsection 223(2) of the Act (which deals with payment of

fees), a fee, other than a fee payable under Part 13 of the Act, must be paid to the

Registrar.

(2) A fee payable under Part 13 of the Act must be paid to the Comptroller-General

of Customs.

(3) A fee must be paid in accordance with a direction given:

(a) in the case of a fee that is paid to the Registrar—by the Registrar; and

(b) in the case of a fee that is paid to the Comptroller-General of Customs—by

the Comptroller-General of Customs;

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Miscellaneous Part 21

General Division 3

Regulation 21.23

Trade Marks Regulations 1995 169

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

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 Comptroller-General of

Customs must, in writing or by telephone:

(a) if a fee mentioned in Part 3A has not been paid or waived within the period

prescribed in that Part for the payment of the fee—advise the requester that

the fee has not been paid and that the AFS request has been discontinued;

(b) in any other case—notify the person concerned, or his or her agent, that the

fee has not been paid, within 14 working days after the doing of the act, or

the filing of the document, for which the fee is payable.

21.24 Refunds etc of fees

(1) If, because of an error or omission by an employee, a person becomes liable to

pay a fee for which the person would not otherwise have been liable, the

Registrar may:

(a) remit the whole or part of the fee; or

(b) if the fee has been paid—refund the whole or part of the fee to that person.

(2) If:

(a) the acceptance of an application for registration of a trade mark; or

(b) the registration of a trade mark;

is delayed because of an error or omission by an employee, the period that the

Registrar reasonably believes to be equal to the period of the delay resulting from

the error or omission is not to be taken into account for the purposes of

calculating the amount of the fee for the matter in relation to which the error or

omission was made.

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:

(a) the Trade Marks Office; or

(b) a sub-office (if any) of the Trade Marks Office;

that was not open for business.

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

(1) For paragraph 223A(2)(a) of the Act, the days on which the Trade Marks Office,

or a sub-office of the Trade Marks Office, is not open for business are:

(a) Saturday; and

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(b) Sunday; and

(d) Anzac Day.

(2) For paragraph 223A(2)(b) of the Act, the table sets out prescribed persons.

Item Person

1 The Director General of IP Australia

2 The Deputy Director General of IP Australia

3 Another person who:

(a) is an SES employee of IP Australia; and

(b) acts with the agreement of the Director General of IP Australia

4 Another person who:

(a) is an SES employee of IP Australia; and

(b) acts with the agreement of the Deputy Director General of IP Australia

5 Another person who:

(a) is an SES employee of IP Australia; and

(b) acts with the agreement of another SES employee of IP Australia

Note: SES employee is explained in section 34 of the Public Service Act 1999. That meaning

is applied generally to Commonwealth legislation by section 2B of the Acts

Interpretation Act 1901.

(3) For paragraph 223A(2)(b) of the Act, the prescribed way of publishing a

declaration is in the Official Journal of Trade Marks.

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;

(ii) Part 5, 9, 17A or 21 of these Regulations;

(b) an act done in relation to proceedings in a court or a tribunal;

(d) an act done under Part 13 or 16 of the Act;

(e) an act done under Part 13, 16 or 20 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:

(a) must be in an approved form; and

(b) must be accompanied by a declaration stating:

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(i) the facts on which the grounds specified in the application are based;

and

(ii) if the period for doing the relevant act has ended—the reason why the

application was not made before the period ended.

Note: Regulations 21.6 and 21.7 deal with making and filing declarations.

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;

(b) applying for the registration of a trade mark in the circumstances described

in paragraph 29(1)(b) of the Act;

subsection 45(1) of the Act;

(f) filing evidence under regulation 5.14, 9.16, 17A.34J or 17A.48P;

(j) requesting that an application for the registration of a trade mark be

amended under paragraph 64(b) of the Act;

(k) requesting renewal of the registration of a trade mark under sections 79,

80D or 80G of the Act;

(n) complying with the authorised user’s request referred to in regulation 13.2;

(o) complying with a request for information referred to in regulation 13.3;

(p) responding to a notice under subregulation 16.3(2);

(q) responding to an advertisement under subregulation 16.3(3);

(r) making a claim for priority under section 29 of the Act for an application

for the registration of a trade mark in the circumstances mentioned in

section 244 of the Act;

(s) the filing of a document or the giving of advice to the Registrar under

Part 3A;

(t) an action or step prescribed in Part 20.

(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:

(a) a notice of opposition to the registration of a trade mark under section 52 of

the Act;

(b) a notice of opposition to which section 96 of the Act or

subregulation 17A.32(1), regulation 17A.48F or subregulation 21.20B(1)

applies;

under Part 3A:

(i) an AFS request;

(ii) a submission;

(iii) an attachment;

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(iv) accompanying material;

(v) a written advice.

21.29 Convention countries

(1) For the definition of Convention country in subsection 6(1) of the Act, the

following countries are prescribed:

(a) a foreign country that is a signatory to the Paris Convention for the

Protection of Industrial Property of 20 March 1883, as in force from time

to time;

(b) a foreign country that is a full member of the World Trade Organization.

Note 1: For signatories to the Paris Convention for the Protection of Industrial Property, see

www.wipo.int.

Note 2: For full members of the World Trade Organization, see www.wto.org.

(2) For the purposes of subsection 225(2) of the Act, an application for the

registration of a trade mark, being an application that is made under the treaty

done at Bangui in the Central African Republic on 2 March 1977 entitled the

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.

(3) For the purposes of subsection 225(2) of the Act, an application for the

registration of a trade mark, being an application that is made under the Benelux

Convention Concerning Trademarks done at Brussels on 19 March 1962 (being 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

Convention country that is a High Contracting party within the meaning of that

treaty.

(4) For subsection 225(2) of the Act, an application, under the terms of the Treaty

Establishing the European Community done at Rome on 25 March 1957, for

registration of a European Community trade mark is equivalent to an application

made in each Convention country party to the treaty.

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

(1) If a person is incapable of doing anything required or permitted by the Act or

these regulations to be done because of infancy or physical or mental disability, a

court may, on the application of a person acting on behalf of the incapable person

or of another person interested in the thing being done:

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(a) do the thing; or

(b) appoint a person to do the thing;

in the name, and on behalf, of the incapable person.

(2) A thing done in the name of, and on behalf of, an incapable person is taken to

have been done by that person as if the person had not been incapable when the

thing was done.

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:

(a) to perform the act; or

(b) file the document; or

that is specified in the notice.

21.34 Requirements cannot be complied with for reasonable cause

If:

(a) under these regulations, a person is required to do an act or thing, sign a

document, make a declaration or file or give to the Registrar a document or

evidence; and

(b) the Registrar is reasonably satisfied that the person cannot 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.

(2) Application may be made to the AAT for review of a decision of:

(a) the Board under the following provisions:

(i) regulation 20.5 (‘evidence of academic qualifications’);

(ii) regulation 20.7 (‘evidence of knowledge requirements’); or

(b) the Designated Manager under the following provisions of the Patents

Regulations 1991 in their application to trade marks attorneys:

(i) regulation 20.28 (‘failure to comply with continuing professional

education requirements’);

(ii) subregulation 20.29(3) (imposing a condition when restoring

attorney’s name to Register of Trade Marks Attorneys);

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(iii) regulation 20.31 (‘returning to the Register in other circumstances’);

(ba) the Designated Manager under the following provisions:

(i) regulation 20.14B (suspending registration for serious offence);

(ii) regulation 20A.8 (failing to maintain professional indemnity

insurance); or

(bb) a Panel of the Disciplinary Tribunal under regulation 20A.18 (decision of

Panel of Disciplinary Tribunan( � or

Patents Regulations 1991 in their application to trade marks attorneys:

(i) regulation 20.43 (‘decision of Panel of Disciplinary Tribunal’);

(ii) regulation 20.44 (‘penalties—professional misconduct’);

(iii) regulation 20.45 (‘penalties—unsatisfactory professional conduct’);

(iv) regulation 20.46 (‘finding that attorney was unqualified at time of

registration’);

(v) regulation 20.47 (‘finding that registration obtained by fraud’).

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Part 22—Transitional provisions

Division 1—General

22.1 Application of the Act

(1) If:

(a) an application for the registration of a trade mark is lodged under the Trade

Marks Act 1955; and

(b) the Registrar has issued a report on the application under the Trade Marks

Act 1955; and

application is pending and has not been accepted;

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:

(a) an application under the Trade Marks Act 1955 for the registration of a

trade mark is amended under the Trade Marks Act 1955; and

(b) immediately before the commencement of these regulations, the

application is pending and has not been accepted;

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:

(a) in the Official Journal; or

(b) by listing in a computer database maintained by the Trade Marks Office; or

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:

(a) relating to an application for the registration of a trade mark of a kind

mentioned in subsection 241(2) of the Act (which deals with pending

applications for registration of trade marks); or

(b) of a kind mentioned to which section 251 of the Act (which deals with

action for removal of trade marks from the Register for non-use) applies;

is the fee that would have been payable if these regulations had applied to the

proceedings.

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Regulation 22.3

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(2) The fee payable for the registration of a trade mark of a kind mentioned in

subsection 241(2) of the Act is the fee that was payable under regulations made

under the Trade Marks Act 1955, being the regulations as in force when the

application was accepted.

(5) If:

(a) under the repealed Act the registration of a trade mark expires in 1995; and

(b) a request is made to renew the registration of the trade 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.

22.3 Certain delegations continue

If, immediately before the commencement of these regulations, a person:

(a) was a delegate of the Registrar of Trade Marks under the repealed Act; and

(b) was exercising the powers of the Registrar in relation to a matter to which,

under Division 3 of Part 22 of the Act, the repealed Act continues to apply;

the delegation of that person continues in relation to the matter.

22.4 Certain deferments continue

(1) If:

(a) the Registrar has deferred acceptance of an application for registration of a

trade mark under subsection 33(3) of the Trade Marks Act 1955; and

(b) the deferment was in force immediately before the 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.

(2) Subject to paragraph 4.14(2)(a), the deferment period for an application referred

to in subregulation (1) ends:

(a) when the Registrar is reasonably satisfied that there are no longer grounds

for rejecting the application under subsection 44(1) or (2) of the Act

because of another trade mark in respect of which an application for

registration has been made by another person; or

(b) if the period does not end in accordance with paragraph (a)—when

proceedings in respect of the application for registration of the other trade

mark are finalised.

(3) If acceptance of the application is deferred as a result of the operation of more

than 1 provision of these regulations, the deferment period ends in accordance

with whichever of the provisions of:

(a) paragraph (2)(b); and

(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.

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22.5 Certain extensions of time continue

If:

(a) the Registrar has extended a period of time under section 130 or 131 of the

Trade Marks Act 1955; and

(b) the extended period of time had not ended before the 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:

(a) an applicant requests the Registrar to defer acceptance of an application for

registration of a trade mark because of another trade mark that is registered

by another person; and

(b) the applicant has lodged an application under section 23 of the Trade

Marks Act 1955 in respect of the other trade mark;

then:

the reference in subparagraph 4.13(1)(c)(iii) to an application under

section 92 were a reference to an application under section 23 of the Trade

Marks Act 1955; and

(d) regulation 4.14 applies in relation to that application as if the reference in

paragraph 4.14(3)(c) to Part 9 of the Trade Marks Act 1995 were a

reference to section 23 of the Trade Marks Act 1955.

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:

(a) was, on 28 February 1998, registered as a patent attorney under section 198

of the Patents Act 1990; or

(b) met the requirements of paragraphs 198(2)(c) and (d) of the Patents Act

1990 as in force on 26 January 1999; or

27 January 1999, and makes a declaration to that effect; or

(d) is a person to whom note 4 to subsection 156(2) of the Trade Marks Act

1995 applies.

22.8 Trade marks attorney examination requirements

(1) For a person who passed an examination, or was exempted from having to pass

the examination, for at least 1 subject under Schedule 5 of the Patents

Regulations 1991 as in force on 26 January 1999, the period of 5 years for

paragraph 20.3A(1)(b) of the Patents Regulations 1991 is taken to commence on

27 January 1999.

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Regulation 22.8

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(2) Subregulation (3) applies to a person who has passed an examination, or been

exempted from having to pass the examination, for at least 1 subject mentioned

in Schedule 5 as in force on 26 January 1999.

(3) A pass in an examination for a subject mentioned in column 1 of the following

table is taken to be a pass for paragraph 20.1(1)(a) in a topic group mentioned in

column 2 of the table:

Column 1

Subject

Column 2

Topic group

Legal Process Group A—Legal process and overview of

intellectual property

Patent Attorneys’ Practice, Part 2 Group B—Professional conduct

Trade Marks law of Australia and the Practice of

the Trade Marks Office

Group C—Trade mark law

Patent Attorneys’ Practice, Part 1 and Patent

Attorneys’ Practice, Part 2

Group D—Trade mark practice

(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:

(a) before 27 January 1999, passed an examination for a subject that the Board

considers is equivalent to topic groups A and C mentioned in Schedule 5 to

the Patents Regulations 1991; and

(b) applies for registration as a trade marks attorney before 27 January 2001;

and

the person’s principal field of practice for 2 continuous years has been in

trade marks matters.

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Amendments made by particular instruments Division 2

Regulation 22.9

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Division 2—Amendments made by particular instruments

22.9 Amendments made by the Intellectual Property Legislation Amendment

(Raising the Bar) Regulation 2013 (No. 1)

(1) The amendments of these Regulations made by the items of Part 2 of Schedule 3

to the Intellectual Property Legislation Amendment (Raising the Bar)

Regulation 2013 (No. 1) apply as set out in the following table.

Transitional provisions

Item Column 1

The amendments made by:

Column 2

apply in relation to:

1 all items of Part 2 the matters referred to in subitem 32(7) of Schedule 3 to

the Intellectual Property Laws Amendment (Raising the

Bar) Act 2012

2 items 10 to 30 an opposition proceeding commenced by the filing of a

notice of intention to oppose on or after 15 April 2013

However, if:

(a) an application was advertised before 15 April 2013;

and

(b) a notice of intention to oppose is filed on or after

15 April 2013;

the reference in subregulations 5.6(1), 9.8(1), 17A.33(1)

and 17A.48G(1) to 2 months is taken to be a reference to 3

months

Also, if:

(a) an opposition proceeding was commenced before

15 April 2013; and

(b) a document or evidence was not served in relation to

the opposition proceeding before 15 April 2013; and

after 15 April 2013;

then:

(d) a requirement in Part 5, 6 or 9, Subdivision 3 of

Division 3 of Part 17A, Subdivision 3 or Subdivision 4

of Division 5 of Part 17A, as in force immediately

before 15 April 2013, for a party to serve a document

or evidence on a person is taken to be a requirement to

file the document or evidence; and

(e) a reference to a document or evidence having been

served is taken to be a reference to the document or

evidence having been filed; and

(f) the Registrar must give a copy of the document or

evidence to the person; and

(g) if:

(i) under Part 5, 6 or 9, Subdivision 3 of Division 3

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Regulation 22.9

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Transitional provisions

Item Column 1

The amendments made by:

Column 2

apply in relation to:

of Part 17A, Subdivision 3 or Subdivision 4 of

Division 5 of Part 17A, as in force immediately

before 15 April 2013, a period for the person to

do an action was calculated from the date that a

party served the document or evidence; and

(ii) the Registrar does not give the document or

evidence to the person on the filing date;

the Registrar must extend the period for the person to

do the action by a number of days equal to the number

of days between when the document or evidence was

filed and when the Registrar gave the document or

evidence to the person

3 item 11 (new regulation 5.3),

item 14 (new regulation 9.3),

item 16 (new

regulation 17A.30) and

item 17 (new

regulation 17A.48A)

an opposition proceeding commenced before 15 April

2013

4 item 11 (new regulation 5.17),

item 13 (new regulation 6.9),

item 14 (new regulation 9.20),

item 16 (new

regulation 17A.34M), item 17

(new regulation 17A.48V) and

item 18 (new

regulation 21.20E)

an opposition proceeding commenced before 15 April

2013 in which the Registrar has not set a hearing date, or

issued a notice of hearing to the parties, before 15 April

2013

However:

(a) a reference in regulation 5.17 to paragraph 5.8(3)(b) or

subregulation 5.8(4) is taken not to apply; and

(b) a reference in regulation 5.17 to regulation 5.14 is

taken to be a reference to regulations 5.7 to 5.13 as in

force immediately before 15 April 2013; and

a hearing is taken to include the conditions set out in

subregulations 5.14(1) and (2) as in force immediately

before 15 April 2013; and

(d) a reference in regulation 9.20 to regulation 9.10 is

taken not to apply; and

(e) a reference in regulation 9.20 to regulation 9.16 is

taken to be a reference to regulation 9.4 as in force

immediately before 15 April 2013; and

(f) a reference in regulation 17A.34M to

regulation 17A.34B or 17A.34H is taken not to apply;

and

(g) a reference in regulation 17A.34M to

regulation 17A.34J is taken to be a reference to

regulation 17A.33 as in force immediately before

15 April 2013; and

(h) a reference in regulation 17A.34M to

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Transitional provisions

Item Column 1

The amendments made by:

Column 2

apply in relation to:

regulation 17A.34N is taken to be a reference to

regulation 17A.34 as in force immediately before

15 April 2013; and

(i) a reference in regulation 17A.48V to

regulation 17A.48K is taken not to apply; and

(j) a reference in regulation 17A.48V to

regulation 17A.48R is taken to be a reference to

subregulation 17A.48(5) as in force immediately

before 15 April 2013; and

(k) a reference in paragraph 21.20E(1)(a) to a party

requesting a hearing is to include the conditions set out

in subregulations 5.14(1) and (2) as in force

immediately before 15 April 2013; and

(l) regulation 5.14, as in force immediately before

15 April 2013, is taken not to apply

5 item 11 (new regulation 5.15),

item 14 (new regulation 9.18),

item 16 (new

regulation 17A.34K), item 17

(new regulation 17A.48T) and

item 24 (Schedule 9, new

item 6)

an opposition proceeding commenced before 15 April

2013 in which an extension of time is requested for a

period that commences on or after 15 April 2013

However:

(a) a reference in subregulation 5.15(1) to regulation 5.14

is taken to be a reference to regulations 5.7 to 5.13 as

in force immediately before 15 April 2013; and

(b) a reference in subregulation 9.18(1) to regulation 9.16

is taken to be a reference to regulation 9.4 as in force

immediately before 15 April 2013; and

regulation 17A.34J is taken to be a reference to

regulation 17A.33 as in force immediately before

15 April 2013; and

(d) a reference in subregulation 17A.48T(1) to

regulation 17A.48R is taken to be a reference to

subregulation 17A.48(5) as in force immediately

before 15 April 2013; and

(e) paragraph 5.15(1)(a) and subparagraph 5.15(3)(c)(i), as

in force immediately before 15 April 2013, are taken

not to apply

(2) The amendment of these Regulations made by item 41 of Schedule 4 to the

Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013

(No. 1) applies in relation to a charge that:

(a) is laid against a registered trade mark attorney on or after 15 April 2013;

and

(b) alleges the commission of a serious offence.

(3) The amendments of these Regulations made by item 95 of Schedule 6 to the

Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013

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Division 2 Amendments made by particular instruments

Regulation 22.10

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(No. 1) apply in relation to a hearing for which the Registrar issues a hearing

notice, or an invitation to be heard, on or after 15 April 2013.

22.10 Amendments made by the Customs and Other Legislation Amendment

(Australian Border Force) Regulation 2015

(1) An instrument in force under subregulation 13.5(1) immediately before 1 July

2015 has effect on and after that day as if it were an instrument of the

Comptroller-General of Customs in force under that subregulation.

(2) A notification under subregulation 17A.42E(1) before 1 July 2015 is taken on

and after that day to have been a notification under that subregulation to the

Comptroller-General of Customs.

(3) A fee paid before 1 July 2015 to the Customs CEO as mentioned in

subregulation 21.22(2) is taken on and after that day to have been a fee paid to

the Comptroller-General of Customs.

(4) A direction of the Customs CEO that was in force under subregulation 21.22(3)

immediately before 1 July 2015 continues in force on and after that day as if it

were a direction of the Comptroller-General of Customs.

(5) An advice or notification by the Customs CEO under regulation 21.23 before

1 July 2015 is taken on and after that day to have been an advice or notification

under that regulation by the Comptroller-General of Customs.

22.11 Amendments made by the Trade Marks Amendment (Fees)

Regulation 2016

The amendments of Schedule 9 made by items 2 and 3 of the Trade Marks

Amendment (Fees) Regulation 2016 apply in relation to an AFS request that is

submitted on or after the commencement of those items.

22.12 Amendments made by the Intellectual Property Legislation Amendment

(Fee Review) Regulation 2016

Despite the repeal of item 9 of Schedule 9 by Part 4 of Schedule 1 to the

Intellectual Property Legislation Amendment (Fee Review) Regulation 2016 (the

amending Regulation), that item continues to apply in relation to the registration

of a trade mark of a kind mentioned in that item if the application for registration

was filed before the commencement of the amending Regulation.

22.13 Amendment made by Schedule 5 to the Intellectual Property Legislation

Amendment (Single Economic Market and Other Measures)

Regulation 2016

The amendment of these Regulations made by item 1 of Schedule 5 to the

Intellectual Property Legislation Amendment (Single Economic Market and

Other Measures) Regulation 2016 applies in relation to an IRDA if notification

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Transitional provisions Part 22

Amendments made by particular instruments Division 2

Regulation 22.13

Trade Marks Regulations 1995 183

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of the IRDA is received by the Registrar from the International Bureau on or

after commencement of that item.

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Part 22 Transitional provisions

Division 3 Transitional provisions for Schedule 4 to the Intellectual Property Laws Amendment Act

2015 and Schedule 2 to the Intellectual Property Legislation Amendment (Single Economic Market and

Other Measures) Regulation 2016

Regulation 22.14

184 Trade Marks Regulations 1995

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Division 3—Transitional provisions for Schedule 4 to the Intellectual

Property Laws Amendment Act 2015 and Schedule 2 to the

Intellectual Property Legislation Amendment (Single

Economic Market and Other Measures) Regulation 2016

22.14 Definitions

In this Division:

commencement day means the day on which Schedule 4 to the Intellectual

Property Laws Amendment Act 2015 commences.

old Patents regulations means the Patents Regulations 1991 as in force

immediately before the commencement day.

old regulations means these Regulations as in force immediately before the

commencement day.

22.15 Transitional—registration as a trade marks attorney

(1) This regulation is made for item 84 of Schedule 4 (the amending Schedule) to

the Intellectual Property Laws Amendment Act 2015.

(2) For paragraphs 84(1)(c) and (d) of the amending Schedule, an application for

registration as a trade marks attorney must:

(a) be in writing, in a form approved by the Designated Manager; and

(b) be accompanied by a statement of experience as mentioned in

subregulation (3) of this regulation that satisfies the Designated Manager

that the applicant’s level of competency in trade marks law and practice is

sufficient to warrant the applicant becoming a registered trade marks

attorney; and

(i) has not, in the 5 years preceding the application, been convicted of an

offence mentioned in subregulation (4) of this regulation; and

(ii) is not under sentence of imprisonment for an offence mentioned in

subregulation (5) of this regulation; and

(d) be accompanied by the fee mentioned in item 28 of Schedule 9.

(3) For paragraph (2)(b), the statement of experience must:

(a) set out details of the applicant’s experience in the following activities in the

5 years preceding the application:

(i) searching trade marks records;

(ii) preparing, filing and prosecuting trade marks applications in relation

to Australia and New Zealand;

(iii) preparing, filing and prosecuting trade marks applications in relation

to other countries and organisations, particularly countries and

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Transitional provisions Part 22

Transitional provisions for Schedule 4 to the Intellectual Property Laws Amendment Act 2015 and

Schedule 2 to the Intellectual Property Legislation Amendment (Single Economic Market and Other

Measures) Regulation 2016 Division 3

Regulation 22.16

Trade Marks Regulations 1995 185

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organisations that are regarded as major trading partners with

Australia and New Zealand;

(iv) providing advice on the validity and infringement of trade marks; and

(b) contain a declaration, signed by the applicant, that the details of the

applicant’s experience set out in the statement of experience are true and

correct; and

Note: Examples of major trading partners for subparagraph (3)(a)(iii) are as follows:

(a) European Union;

(b) Japan;

(d) Republic of Korea;

(e) United States of America.

(4) An offence against any of the following Acts is a prescribed offence for

paragraph 84(1)(e) of the amending Schedule:

(a) the Act;

(b) the Designs Act 2003;

(5) An offence of dishonesty, whether committed in Australia or New Zealand and

whether committed before or after the commencement day, for which the

maximum penalty is imprisonment for at least 2 years is a prescribed offence for

paragraph 84(1)(f) of the amending Schedule.

22.16 Continuation of certain disciplinary proceedings—individuals

(1) This regulation applies if:

(a) before the commencement day disciplinary proceedings had been

commenced against a registered trade marks attorney by the Professional

Standards Board for Patent and Trade Marks Attorneys under Part 8 of

Chapter 20 of the old Patents regulations (as that Part applied to the

registered trade marks attorney because of Division 6 of Part 20 of the old

regulations); and

(b) the proceedings had not been completed before the commencement day.

(2) Despite the amendments and repeals made by Schedule 2 to the Intellectual

Property Legislation Amendment (Single Economic Market and Other Measures)

Regulation 2016, on and after the commencement day:

(a) Part 8 of Chapter 20 of the old Patents regulations (as that Part applied to a

registered trade marks attorney because of Division 6 of Part 20 of the old

regulations) continues to apply in relation to the proceedings; and

(b) the appointment of the person constituting the Patents and Trade Marks

Attorneys Disciplinary Tribunal conducting the proceedings is continued in

force for the purpose of completing the proceedings; and

the old Patents regulations (as that Part applied to the registered trade

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Part 22 Transitional provisions

Division 3 Transitional provisions for Schedule 4 to the Intellectual Property Laws Amendment Act

2015 and Schedule 2 to the Intellectual Property Legislation Amendment (Single Economic Market and

Other Measures) Regulation 2016

Regulation 22.17

186 Trade Marks Regulations 1995

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marks attorney because of Division 6 of Part 20 of the old regulations) to

the Professional Standards Board for Patent and Trade Marks Attorneys are

taken to be references to the Trans-Tasman IP Attorneys Board.

22.17 Continuation of certain disciplinary proceedings—incorporated trade

marks attorneys

(1) This regulation applies if:

(a) before the commencement day disciplinary proceedings had been

commenced against an incorporated trade marks attorney under Division 5

of Part 20A of the old regulations by the Professional Standards Board for

Patent and Trade Marks Attorneys; and

(b) the proceedings had not been completed under the old regulations before

the commencement day.

(2) Despite the amendments and repeals made by the Schedule 2 to the Intellectual

Property Legislation Amendment (Single Economic Market and Other Measures)

Regulation 2016, on and after the commencement day:

(a) Division 5 of Part 20A of the old regulations continues to apply in relation

to the proceedings; and

(b) the appointment of the person constituting the Patents and Trade Marks

Attorneys Disciplinary Tribunal conducting the proceedings is continued in

force for the purpose of completing the proceedings; and

the old regulations to the Professional Standards Board for Patent and

Trade Marks Attorneys are taken to be references to the Trans-Tasman IP

Attorneys Board.

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Classification of goods and services Schedule 1

Classes of goods Part 1

Trade Marks Regulations 1995 187

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Schedule 1—Classification of goods and services (regulation 3.1)

Part 1—Classes of goods

Item number

(Class number)

Class of goods

(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

for lighting

5 Pharmaceutical and veterinary preparations; sanitary preparations for medical

purposes; dietetic food and substances adapted for medical or veterinary use,

food for babies; dietary supplements for humans and animals; 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; ores

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;

automatic vending machines

8 Hand tools and implements (hand operated); cutlery; side arms; razors

9 Scientific, nautical, surveying, photographic, cinematographic, optical,

weighing, measuring, signalling, checking (supervision), life-saving and

teaching apparatus and instruments; apparatus and instruments for conducting,

switching, transforming, accumulating, regulating or controlling electricity;

apparatus for recording, transmission or reproduction of sound or images;

magnetic data carriers, recording discs; compact discs, DVDs and other digital

recording media; mechanisms for coin-operated apparatus; cash registers,

calculating machines, data processing equipment, computers; computer

software; fire-extinguishing apparatus

10 Surgical, medical, dental and veterinary apparatus and instruments, artificial

limbs, eyes and teeth; orthopaedic articles; suture materials

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Schedule 1 Classification of goods and services

Part 1 Classes of goods

188 Trade Marks Regulations 1995

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Item number

(Class number)

Class of goods

(Class heading)

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; jewellery, precious stones; horological and

chronometric instruments

15 Musical instruments

16 Paper and cardboard; printed matter; bookbinding material; photographs;

stationery; adhesives for stationery or household purposes; artists’ materials;

paintbrushes; typewriters and office requisites (except furniture); instructional

and teaching material (except apparatus); plastic materials for packaging;

printers’ type; printing blocks

17 Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica

and substitutes for all these materials; plastics in extruded form for use in

manufacture; packing, stopping and insulating materials; flexible pipes, not of

metal

18 Leather and imitations of leather; animal skins, hides; trunks and travelling

bags; umbrellas and parasols; 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; unworked or semi-worked bone, horn,

ivory, whalebone or mother-of-pearl; shells; meerschaum; yellow amber

21 Household or kitchen utensils and containers; combs and sponges; brushes

(except paintbrushes); brush-making materials; articles for cleaning purposes;

steelwool; unworked or semi-worked glass (except glass used in building);

glassware, porcelain and earthenware

22 Ropes and string, nets; tents, awnings and tarpaulins, sails; sacks; padding and

stuffing materials (except of paper, cardboard, rubber or plastics); raw fibrous

textile materials

23 Yarns and threads, for textile use

24 Textiles and substitutes for textiles; bed covers; 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; decorations for

Christmas trees

29 Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and

cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk

products; edible oils and fats

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Classes of goods Part 1

Trade Marks Regulations 1995 189

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Item number

(Class number)

Class of goods

(Class heading)

30 Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and

preparations made from cereals; bread, pastry and confectionery; ices; sugar,

honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces

(condiments); spices; ice

31 Agricultural, horticultural and forestry products; raw and unprocessed grains

and seeds; fresh fruits and vegetables; natural plants and flowers; live

animals; foodstuffs for animals; malt

32 Beers; mineral and aerated waters and other non-alcoholic beverages; fruit

beverages and fruit juices; syrups and other preparations for making

beverages

33 Alcoholic beverages (except beers)

34 Tobacco; smokers’ articles; matches

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Schedule 1 Classification of goods and services

Part 2 Classes of services

190 Trade Marks Regulations 1995

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Part 2—Classes of services

Item number

(Class number)

Class of services

(Class heading)

35 Advertising; business management; business administration; office functions

36 Insurance; financial affairs; monetary affairs; real estate affairs

37 Building construction; repair; installation services

38 Telecommunications

39 Transport; packaging and storage of goods; travel arrangement

40 Treatment of materials

41 Education; providing of training; entertainment; sporting and cultural

activities

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

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Signs that may not be registered as trade marks Schedule 2

Trade Marks Regulations 1995 191

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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

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Schedule 3 Modifications of Part 13 of the Act (Norfolk Island)

192 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Schedule 3—Modifications of Part 13 of the Act

(Norfolk Island) Note See regulation 13.7.

1 After section 131

Insert:

131A Definitions

In this Part:

Customs Act 1901 (NI) means the Customs Act 1901 in its application to

Norfolk Island in accordance with the Norfolk Island Customs Ordinance 2016.

designated owner, in relation to goods imported into Norfolk Island, means:

(a) 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 (NI); or

(b) if no such entry exists—the person determined to be the owner of the goods

under section 133A of the Act.

2 Paragraph 133(1)(b)

Omit “Customs Act 1901”, substitute “Customs Act 1901 (NI)”.

3 Section 133A

Omit “Customs Act 1901”, substitute “Customs Act 1901 (NI)”.

3A Section 133A (note)

Omit “section 6”, substitute “section 131A”.

3B Subsection 134(1) (note)

Repeal the note, substitute:

Note 1: For designated owner see section 131A.

Note 2: For objector see section 6.

3C Subsection 134A(1) (note)

Repeal the note, substitute:

Note 1: For designated owner see section 131A.

Note 2: For objector and seized goods see section 6.

3D Subsection 135(2) (note)

Repeal the note, substitute:

Note 1: For designated owner see section 131A.

Note 2: For seized goods, objector and notified trade mark see section 6.

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3E Subsection 136(1) (note)

Repeal the note, substitute:

Note 1: For designated owner see section 131A.

Note 2: For seized goods see section 6.

3F Subsections 136C(1) and 136D(1) (note)

Repeal the note, substitute:

Note 1: For designated owner see section 131A.

Note 2: For objector and seized goods see section 6.

3G Section 136E (note)

Repeal the note, substitute:

Note 1: For designated owner see section 131A.

Note 2: For seized goods see section 6.

3H Subsection 137(3) (note)

Repeal the note, substitute:

Note 1: For designated owner see section 131A.

Note 2: For seized goods see section 6.

5 Section 140

Omit “of the Commonwealth”, substitute “in force in Norfolk Island”.

8 Further amendments—Norfolk Island

The following provisions are amended by omitting each mention of “Australia”

and substituting “Norfolk Island”:

(a) section 131;

(b) subsection 133(1);

(d) subparagraph 136C(2)(b)(ii);

(e) section 143.

9 Section 144

Repeal the section.

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Schedule 4 Modifications of Part 13 of the Act (Christmas Island)

194 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Schedule 4—Modifications of Part 13 of the Act

(Christmas Island) Note See regulation 13.8.

1 After section 131

Insert:

131A Definitions

In this Part:

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 subsection 68(2) or (3) of the Customs Act 1901 of Christmas

Island.

2 Paragraph 133(1)(b)

After “Customs Act 1901”, insert “of Christmas Island”.

3 Section 133A

After “Customs Act 1901”, insert “of Christmas Island”.

4 Section 140

Omit “of the Commonwealth”, substitute “in force in Christmas Island”.

5 Further amendments—Christmas Island

The following provisions are amended by omitting each mention of “Australia”

and inserting “Christmas Island”:

(a) section 131;

(b) subsection 133(1);

(d) subparagraph 136C(2)(b)(ii);

(e) section 143.

6 Further amendments—Comptroller

The following provisions are amended by omitting each mention of

“Comptroller-General of Customs” and inserting “Comptroller”:

(a) sections 131 and 132;

(b) section 133, including the heading;

(d) section 139, including the note;

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Trade Marks Regulations 1995 195

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(e) sections 140 to 143.

7 Further amendments—Territory of Christmas Island

The following provisions are amended by omitting each mention of

“Commonwealth” and inserting “Territory of Christmas Island”:

(a) section 133;

(b) subsection 134(5);

(d) subsection 136A(1);

(e) section 136E;

(f) paragraph 137(3)(b);

(g) section 139, including the heading;

(h) section 142, including the heading.

8 Section 144

Repeal the section.

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Schedule 5 Modifications of Part 13 of the Act (Cocos (Keeling) Islands)

196 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Schedule 5—Modifications of Part 13 of the Act

(Cocos (Keeling) Islands) Note See regulation 13.9.

1 After section 131

Insert:

131A Definitions

In this Part:

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 subsection 68(2) or (3) of the Customs Act 1901 of Cocos

(Keeling) Islands.

2 Paragraph 133(1)(b)

After “Customs Act 1901”, insert “of the Cocos (Keeling) Islands”.

3 Section 133A

After “Customs Act 1901”, insert “of the Cocos (Keeling) Islands”.

4 Section 140

Omit “of the Commonwealth”, substitute “in force in the Cocos (Keeling) Islands”.

5 Further amendments—the Cocos (Keeling) Islands

The following provisions are amended by omitting each mention of “Australia”

and inserting “the Cocos (Keeling) Islands”:

(a) section 131;

(b) subsection 133(1);

(d) subparagraph 136C(2)(b)(ii);

(e) section 143.

6 Further amendments—Comptroller

The following provisions are amended by omitting each mention of

“Comptroller-General of Customs” and inserting “Comptroller”:

(a) sections 131 to 132;

(b) section 133, including the heading;

(d) section 139, including the note;

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Trade Marks Regulations 1995 197

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(e) sections 140 to 143.

7 Further amendments—Cocos (Keeling) Islands

The following provisions are amended by omitting each mention of

“Commonwealth” and inserting “Cocos (Keeling) Islands”:

(a) section 133;

(b) subsection 134(5);

(d) subsection 136A(1);

(e) section 136E;

(f) paragraph 137(3)(b);

(g) section 139, including the heading;

(h) section 142, including the heading.

8 Section 144

Repeal the section.

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Schedule 6 Offices of persons to whom registrar may delegate

198 Trade Marks Regulations 1995

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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

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Requirements for documents Schedule 7

Trade Marks Regulations 1995 199

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Schedule 7—Requirements for documents (regulation 21.2)

1. Documents, except documents mentioned in regulations 4.11, 5.18 and 21.18,

must be written in English.

2. Documents must be durable.

4. The contents of a document must be legible.

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Schedule 8 Costs, expenses and allowances

Part 1 Costs

200 Trade Marks Regulations 1995

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Schedule 8—Costs, expenses and allowances (subregulation 21.13(3))

Part 1—Costs

Item Column 1

Matter

Column 2

Amount

1 Notice of intention to oppose $200

2 Statement of grounds and particulars $200

3 Receiving and perusing statement of grounds and particulars $130

4 Notice of intention to defend $200

5 Notice of opposition filed under subregulation 6.6(1) or 21.20B(1) $200

6 Receiving and perusing a notice of opposition filed under

subregulation 6.6(1) or 21.20B(1)

$130

7 Evidence in support $700

8 Receiving and perusing evidence in support $300

9 Evidence in answer $700

10 Receiving and perusing evidence in answer $210

11 Evidence in reply $350

12 Receiving and perusing evidence in reply $130

13 Preparation of cases for hearing $525

14 Attendance at hearing by registered patent attorney, registered

trade marks attorney or solicitor without counsel

$260 an hour, but not

more than $1,170 a

day

15 Attendance at hearing by registered patent attorney, registered

trade marks attorney or solicitor instructing counsel

$200 an hour, but not

more than $900 a day

16 Counsel fees for attendance at a hearing $300 an hour, but not

more than $1,350 a

day

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Costs, expenses and allowances Schedule 8

Expenses and allowances Part 2

Trade Marks Regulations 1995 201

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Part 2—Expenses and allowances

Division 1—Expenses

1. A person who has paid a fee prescribed in these regulations in relation to

proceedings before the Registrar may be paid the amount of the fee.

2. A person attending proceedings before the Registrar must be paid:

(a) a reasonable amount for allowances for transport between the usual place

of residence of the person and the place that he or she attends for that

purpose; and

(b) if the person is required to be absent overnight from his or her usual place

of residence—a reasonable amount for allowances up to a daily maximum

of $700 for meals and accommodation.

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Schedule 8 Costs, expenses and allowances

Part 2 Expenses and allowances

202 Trade Marks Regulations 1995

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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:

(a) if the person is remunerated in his or her occupation by wages, salary or

fees—an amount equal to the amount of wages, salary or fees not paid to

the person because of his or her attendance for that purpose; and

(b) in any other case—an amount of not less than $140, or more than $700, for

each day on which he or she so attends.

4. A person summoned to appear as a witness, other than a witness referred to in

clause 3, before the Registrar must be paid:

(a) if the person is remunerated in his or her occupation by wages, salary or

fees—an amount equal to the amount of wages, salary or fees not paid to

the person because of his or her attendance for that purpose; and

(b) in any other case—an amount of not less than $80, or more than $130, for

each day on which he or she so attends.

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Fees Schedule 9

Trade Marks Regulations 1995 203

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Schedule 9—Fees Note: See regulation 21.21.

1 Table of fees

The following table sets out fees that are payable in relation to matters specified

in the table.

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 one or more of the prescribed classes:

(a) by approved means

(b) in addition to the fee for paragraph (a), if the goods and

services are specified in the application otherwise than by

using the official Goods and Services pick list

(d) by AFS request mentioned in regulation 4.2A

$250 for each class

$80 for each class

$350 for each class

$130 for each class

3 Filing an application to register 2 or more trade marks as a

series under section 51 of the Act:

(a) by approved means

(b) in addition to the fee for paragraph (a), if the goods and

services are specified in the application otherwise than by

using the official Goods and Services pick list

$400 for each class

$80 for each class

$500 for each class

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 series of trade marks; $500 for each class

(b) any other case $350 for each class

5 Filing an application for an extension of a period under

subregulation 4.12(3) or regulation 17A.20

$100 for each month or part

of a month for which the

extension is sought

5A Filing an application under subsection 224(2) of the Act:

(a) for an extension of time on a ground specified in

paragraph 224(2)(a) of the Act; or $100 for each month or part

of a month for which the

extension is sought

(b) for an extension of time on a ground specified in

paragraph 224(2)(b) of the Act $100

5B Filing an application under subsection 224(3) of the Act for an

extension of time on a ground specified in paragraph 224(3)(b)

of the Act

$100 for each month or part

of a month for which the

extension is sought

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Schedule 9 Fees

204 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Item Matter Fee

6 Filing an application for an extension under regulation 5.9,

5.15, 9.11, 9.18, 17A.34C, 17A.34K, 17A.48L or 17A.48T

$150 for each month or part

of a month for which the

extension is sought

7 Filing a notice of opposition under section 52 of the Act or a

notice of intention to oppose under regulation 17A.33

$250

8 Filing a notice of opposition under:

(a) subsection 224(6) of the Act; or

(b) section 65A of the Act

$250

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:

(a) fee paid by approved means; $400 for each class

(b) fee paid by another means $450 for each class

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, after the

expiry date

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

$450 for each class

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

$450 for each class

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

$100 for each month, or

part of a month, after the

end of the prescribed

period

13 Filing an application for removal of a trade mark from the

$250

13A Filing an application for cessation of protection for non-use

under Subdivision D of Division 5 of Part 17A

$250

14 Request for a hearing under regulation 5.17, 6.9, 9.17, 9.20,

17A.34M, 17A.48S, 17A.48V or 21.20E

$600

15 Request for an oral hearing in relation to any other matter $400

16 Attendance at an oral hearing under regulation 5.17, 6.9, 9.17,

9.20, 17A.34M, 17A.48S, 17A.48V or 21.20E

$600 for each day, or part

of a day, less any amount

paid under item 14 in

relation to the hearing

17 Attendance at an oral hearing to which item 16 does not apply $400 less any amount paid

under item 15 in relation to

the hearing

20 Requesting a decision under regulation 21.15 $300

21 Request for not more than 3 documents relating to a single

trade mark application, a single trade mark registration or a

single AFS request

$50 for each document

Authorised Version F2017C00153 registered 01/03/2017

Fees Schedule 9

Trade Marks Regulations 1995 205

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Item Matter Fee

22 Request for 4 or more documents relating to a single trade

mark application, a single trade mark registration or a single

AFS request

$200 for each request

25 Applying for admission to sit for an examination conducted by

the Board

$400

26 Applying for a grant of a supplementary examination

conducted by the Board

$200

27 A report of reasons for failure of an examination conducted by

the Board

$200

28 Applying for registration as a trade marks attorney $200

29 Annual registration of a trade marks attorney $350

30 Annual registration fee payable for combined registration as a

trade marks attorney and patent attorney

$550

31 Applying to be restored to the Register, as authorised by

regulation 20.14

$250

32 Submitting an AFS request under regulation 3A.3 $200 for each class of

goods or services to which

the request relates

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)

$200 for each class

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)

$150 for each class

36 Applying for registration as an incorporated trade marks

attorney

$300

37 Annual registration of an incorporated trade marks attorney $350

38 Annual registration fee payable for combined registration as an

incorporated trade marks attorney and an incorporated patent

attorney

$550

39 Applying to be restored to the Register of Trade Marks

Attorneys, as authorised by regulation 20A.22

$250

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 1—About the endnotes

206 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Endnotes

Endnote 1—About the endnotes

The endnotes provide information about this compilation and the compiled law.

The following endnotes are included in every compilation:

Endnote 1—About the endnotes

Endnote 2—Abbreviation key

Endnote 3—Legislation history

Endnote 4—Amendment history

Abbreviation key—Endnote 2

The abbreviation key sets out abbreviations that may be used in the endnotes.

Legislation history and amendment history—Endnotes 3 and 4

Amending laws are annotated in the legislation history and amendment history.

The legislation history in endnote 3 provides information about each law that has amended (or

will amend) the compiled law. The information includes commencement details for amending

laws and details of any application, saving or transitional provisions that are not included in

this compilation.

The amendment history in endnote 4 provides information about amendments at the provision

(generally section or equivalent) level. It also includes information about any provision of the

compiled law that has been repealed in accordance with a provision of the law.

Editorial changes

The Legislation Act 2003 authorises First Parliamentary Counsel to make editorial and

presentational changes to a compiled law in preparing a compilation of the law for

registration. The changes must not change the effect of the law. Editorial changes take effect

from the compilation registration date.

If the compilation includes editorial changes, the endnotes include a brief outline of the

changes in general terms. Full details of any changes can be obtained from the Office of

Parliamentary Counsel.

Misdescribed amendments

A misdescribed amendment is an amendment that does not accurately describe the

amendment to be made. If, despite the misdescription, the amendment can be given effect as

intended, the amendment is incorporated into the compiled law and the abbreviation “(md)”

added to the details of the amendment included in the amendment history.

If a misdescribed amendment cannot be given effect as intended, the abbreviation “(md not

incorp)” is added to the details of the amendment included in the amendment history.

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 2—Abbreviation key

Trade Marks Regulations 1995 207

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Endnote 2—Abbreviation key

ad = added or inserted o = order(s)

am = amended Ord = Ordinance

amdt = amendment orig = original

c = clause(s) par = paragraph(s)/subparagraph(s)

C[x] = Compilation No. x /sub-subparagraph(s)

Ch = Chapter(s) pres = present

def = definition(s) prev = previous

Dict = Dictionary (prev…) = previously

disallowed = disallowed by Parliament Pt = Part(s)

Div = Division(s) r = regulation(s)/rule(s)

ed = editorial change reloc = relocated

exp = expires/expired or ceases/ceased to have renum = renumbered

effect rep = repealed

F = Federal Register of Legislation rs = repealed and substituted

gaz = gazette s = section(s)/subsection(s)

LA = Legislation Act 2003 Sch = Schedule(s)

LIA = Legislative Instruments Act 2003 Sdiv = Subdivision(s)

(md) = misdescribed amendment can be given SLI = Select Legislative Instrument

effect SR = Statutory Rules

(md not incorp) = misdescribed amendment Sub-Ch = Sub-Chapter(s)

cannot be given effect SubPt = Subpart(s)

mod = modified/modification underlining = whole or part not

No. = Number(s) commenced or to be commenced

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 3—Legislation history

208 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Endnote 3—Legislation history

Number and year FRLI registration or

gazettal

Commencement Application, saving and

transitional provisions

1995 No. 341 6 Nov 1995 1 Jan 1996 (r 1.2)

1996 No. 3 25 Jan 1996 r 9: 1 Jan 1996 (r 1.1)

Remainder: 25 Jan 1996 (r 1)

—

1996 No. 184 21 Aug 1996 21 Aug 1996 (r 1) —

1996 No. 272 11 Dec 1996 r 3: 1 Jan 1997 (r 1.1)

Remainder: 11 Dec 1996 (r

—

1997 No. 346 9 Dec 1997 r 3 and 4: 1 Feb 1998 (r 1.2)

r 5 and 6: 1 Jan 1998 (r 1.1)

Remainder: 9 Dec 1997 (r 1)

r 3

1998 No. 258 12 Aug 1998 12 Aug 1998 (r 2) —

1998 No. 265 26 Aug 1998 r 5: 1 Nov 1998 (r 2.1)

Remainder: 26 Aug 1998 (r

2.2)

—

1998 No. 343 22 Dec 1998 22 Dec 1998 (r 2) —

1998 No. 346 22 Dec 1998 27 Jan 1999 (r 2) —

1999 No. 153 14 July 1999 14 July 1999 (r 2) —

1999 No.186 1 Sept 1999 r 1–3 and Sch 1: 1 Sept 1999

(r 2(1))

Remainder: 6 Sept 1999 (r

2(b))

—

1999 No. 196 10 Sept 1999 10 Sept 1999 (r 2) —

1999 No. 350 22 Dec 1999 22 Dec 1999 (r 2) —

2001 No. 33 1 Mar 2001 11 July 2001 (r 2) —

2001 No. 185 5 July 2001 5 July 2001 (r 2) —

2001 No. 247 14 Sept 2001 r 1–3 and Sch 1: 19 Sept

2001 (r 2(a))

Remainder: 1 Jan 2002

(r 2(b))

—

2002 No. 173 11 July 2002 Sch 3: 11 July 2002 (r 2(a))

Sch 6: 1 Sept 2002 (r 2(b))

—

2002 No. 318 19 Dec 2002 19 Dec 2002 (r 2) —

2003 No. 214 21 Aug 2003 24 July 2003 (r 2) —

2004 No. 24 26 Feb 2004 11 Mar 2004 (r 2) —

2004 No. 194 1 July 2004 1 July 2004 (r 2) —

2005 No. 52 29 Mar 2005 (F2005L00759) r 1–3 and Sch 1: 30 Mar 2005

(r 2(a))

Remainder: 3 Apr 2005

(r 2(b))

—

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 3—Legislation history

Trade Marks Regulations 1995 209

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Number and year FRLI registration or

gazettal

Commencement Application, saving and

transitional provisions

2005 No. 211 16 Sept 2005 (F2005L02660) 3 Oct 2005 (r 2) —

2006 No. 355 15 Dec 2006 (F2006L03971) Sch 4: 1 Mar 2007 (r 2) —

2006 No. 356 18 Dec 2006 (F2006L03976) r 1–4 and Sch 1: 19 Dec 2006

(r 2(a))

Remainder: 1 Jan 2007

(r 2(b))

r 4

2007 No. 40 23 Mar 2007 (F2007L00650) r 9, 10, Sch 6 and 7: 27 Mar

2007 (r 2(a), (c))

Sch 8: 1 Apr 2007 (r 2(b))

r 9, 10

2008 No. 122 23 June 2008 (F2008L02119) r 5 and Sch 2: 1 July 2008 (r

r 5

2008 No. 279 19 Dec 2008 (F2008L04588) Sch 3: 1 Jan 2009 (r 2) —

2009 No. 150 26 June 2009 (F2009L02472) Sch 3: 1 July 2009 (r 2) —

2009 No. 332 27 Nov 2009 (F2009L04297) Sch 2: 12 Dec 2009 (r 2) —

2010 No. 248 15 Oct 2010 (F2010L02682) 16 Oct 2010 (r 2) —

2011 No. 62 16 May 2011 (F2011L00773) Sch 3: 1 July 2011 (r 2) —

2011 No. 217 29 Nov 2011 (F2011L02480) Sch 1 (items 5.1–5.3): 27 Dec

2011 (r 2(a))

Sch 2 (items 2.1–2.9): 1 Jan

2012 (r 2(b))

—

2012 No. 66 14 May 2011 (F2012L01031) Sch 2 (items 1–15): 1 July

2012 (s 2(a)(iii))

Sch 2 (item 15): 1 Oct 2012

(s 2(b))

s 4

31, 2013 18 Mar 2013 (F2013L00479) Sch 3 (items 10–30), Sch 4

(items 30–48, Sch 5

(items 2–4), Sch 6 (items 87–

99) and Sch 7 (items 3, 4): 15

Apr 2013 (s 2)

—

88, 2015 19 June 2015 (F2015L00852) Sch 3 (items 4, 5) and Sch 5

(items 15–31): 20 June 2015

(s 2(1) (items 4, 6)

—

90, 2015 19 June 2015 (F2015L00854) Sch 2 (items 200–218):

1 July 2015 (s 2(1) item 2)

—

Name Registration Commencement Application, saving and

transitional provisions

Trade Marks Amendment

(Fees) Regulation 2016

6 May 2016 (F2016L00694) 7 May 2016 (s 2(1) item 1) —

Intellectual Property

Legislation Amendment (Fee

Review) Regulation 2016

19 Aug 2016 (F2016L01306) 10 Oct 2016 (s 2(1) item 1) —

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 3—Legislation history

210 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Name Registration Commencement Application, saving and

transitional provisions

Intellectual Property

Legislation Amendment

(Single Economic Market

and Other Measures)

Regulation 2016

14 Nov 2016 (F2016L01754) Sch 2: 24 Feb 2017 (s 2(1)

item 2)

Sch 4 (items 3–10), Sch 5

and Sch 6 (items 1–8): 15

Nov 2016 (s 2(1) items 3, 4)

—

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 4—Amendment history

Trade Marks Regulations 1995 211

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Endnote 4—Amendment history

Provision affected How affected

Part 1

r 1.1 ............................................... rs No 258, 1998

r 1.2 ............................................... rep LIA s 48D

Part 2

r 2.1 ............................................... am No 346, 1998; No 33, 2001; No 247, 2001; No 66, 2012; No 31, 2013; No 88, 2015;

F2016L01306; F2016L01754

r 2.2 ............................................... ad 2001 No 247

am 2011 No 217

r 2.3 ............................................... ad No 31, 2013

Part 3A

Part 3A .......................................... ad 2005 No 211

Division 1

r 3A.1 ............................................ ad 2005 No 211

r 3A.2 ............................................ ad 2005 No 211

rep F2016L01306

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

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 4.4 ............................................... am No 31, 2013

r 4.5 ............................................... am 1997 No 346

r 4.6 ............................................... am 1999 No 196

r 4.7 ............................................... am 1996 No 184; 2007 No 40; No 31, 2013

r 4.13 ............................................. am 2001 No 33; 2007 No 40; No 31, 2013

r 4.14 ............................................. am 1999 No 186; 2001 No 33; No 31, 2013

r 4.15 ............................................. am 2001 No 33; No 31, 2013; F2016L01754

r 4.15A .......................................... ad 2001 No 33

am 2005 No 52

r 4.16 ............................................. rep 2007 No 40

r 4.17 ............................................. am 2002 No 318

rep 2007 No 40

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 4—Amendment history

212 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Provision affected How affected

Part 5

Part 5 ............................................. rs No 31, 2013

Division 1

r 5.1 ............................................... rs No 31, 2013

r 5.2 ............................................... am 2003 No 214

rs No 31, 2013

r 5.3 ............................................... rs No 31, 2013

r 5.4 ............................................... rs No 31, 2013

Division 2

Subdivision A

r 5.5 ............................................... rs No 31, 2013

r 5.6 ............................................... rs No 31, 2013

r 5.7 ............................................... rs No 31, 2013

r 5.8 ............................................... rs No 31, 2013

r 5.9 ............................................... rs No 31, 2013

r 5.10 ............................................. am 2001 No 247

rs No 31, 2013

r 5.11 ............................................. rs No 31, 2013

r 5.12 ............................................. rs No 31, 2013

Subdivision B

r 5.13 ............................................. rs No 31, 2013

Subdivision C

r 5.14 ............................................. rs No 31, 2013

r 5.15 ............................................. rs No 31, 2013

Division 3

r 5.16 ............................................. rs No 31, 2013

Division 4

r 5.17 ............................................. rs No 31, 2013

Division 5

r 5.18 ............................................. ad 2005 No 52

rs No 31, 2013

r 5.19 ............................................. ad 2005 No 52

rs No 31, 2013

r 5.20 ............................................. ad No 31, 2013

Part 6

Division 1

Division 1 heading......................... ad No 31, 2013

Division 2

Division 2 ...................................... ad No 31, 2013

r 6.5 ............................................... ad 2007 No 40

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 4—Amendment history

Trade Marks Regulations 1995 213

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Provision affected How affected

rs No 31, 2013

r 6.6 ............................................... ad 2007 No 40

rs No 31, 2013

r 6.7 ............................................... ad No 31, 2013

r 6.8 ............................................... ad No 31, 2013

r 6.9 ............................................... ad No 31, 2013

r 6.10 ............................................. ad No 31, 2013

r 6.11 ............................................. ad No 31, 2013

Part 7

Division 1

Division 1 heading......................... ad 2001 No 247

r 7.1 ............................................... am No 31, 2013 (md)

r 7.2 ............................................... am 2007 No 40

Division 2

Division 2 heading......................... ad 2001 No 247

Division 3

Division 3 ...................................... 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

Part 9 ............................................. rs No 31, 2013

Division 1

r 9.1 ............................................... am 1996 No 3

rs 2007 No 40; No 31, 2013

r 9.2 ............................................... am 1999 No 186; 2007 No 40

rs No 31, 2013

r 9.3 ............................................... rs No 31, 2013

r 9.4 ............................................... am 2007 No 40

rs No 31, 2013

Division 2

r 9.5 ............................................... ad No 31, 2013

r 9.6 ............................................... ad No 31, 2013

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 4—Amendment history

214 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Provision affected How affected

Division 3

Subdivision A

r 9.7 ............................................... ad No 31, 2013

r 9.8 ............................................... ad No 31, 2013

r 9.9 ............................................... ad No 31, 2013

r 9.10 ............................................. ad No 31, 2013

r 9.11 ............................................. ad No 31, 2013

r 9.12 ............................................. ad No 31, 2013

r 9.13 ............................................. ad No 31, 2013

r 9.14 ............................................. ad No 31, 2013

Subdivision B

r 9.15 ............................................. ad No 31, 2013

Subdivision C

r 9.16 ............................................. ad No 31, 2013

r 9.17 ............................................. ad No 31, 2013

r 9.18 ............................................. ad No 31, 2013

Division 4

r 9.19 ............................................. ad No 31, 2013

Division 5

r 9.20 ............................................. ad No 31, 2013

Division 6

r 9.21 ............................................. ad No 31, 2013

r 9.22 ............................................. ad No 31, 2013

r 9.23 ............................................. ad No 31, 2013

Part 10

r 10.1 ............................................. am 2001 No 247

Part 11

r 11.1 ............................................. am 2012 No 66

Part 13

r 13.1A .......................................... ad No 31, 2013

am No 90, 2015

r 13.1 ............................................. rs 2001 No 247; No 31, 2013

r 13.2 ............................................. am 1999 No 186

rs No 31, 2013

r 13.3 ............................................. ad No 31, 2013

r 13.4 ............................................. ad No 31, 2013

am No 90, 2015

r 13.5 ............................................. ad No 31, 2013

am No 90, 2015

r 13.3 ............................................. am 1999 No 186

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 4—Amendment history

Trade Marks Regulations 1995 215

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Provision affected How affected

renum r 13.6 .................................. No 31, 2013

r 13.6 ............................................. am No 90, 2015

r 13.4

renum r 13.7 .................................. No 31, 2013

r 13.5

renum r 13.8 .................................. No 31, 2013

r 13.6

renum r 13.9 .................................. No 31, 2013

Part 16

r 16.2 ............................................. rs 2007 No 40

r 16.7 ............................................. am No 31, 2013

r 16.10 ........................................... rs 2007 No 40

am No 31, 2013

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; 2011 No 62

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

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 4—Amendment history

216 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Provision affected How affected

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; F2016L01754

r 17A.14A...................................... ad 2007 No 40

r 17A.15......................................... ad 2001 No 33

r 17A.16......................................... ad No 33, 2001

am F2016L01754

r 17A.17......................................... ad No 33, 2001

am F2016L01754

r 17A.18......................................... ad 2001 No 33

r 17A.19......................................... ad 2001 No 33

r 17A.20......................................... ad 2001 No 33

r 17A.21......................................... ad 2001 No 33

am 2007 No 40; No 31, 2013

r 17A.22......................................... ad 2001 No 33

am No 31, 2013

r 17A.23......................................... ad 2001 No 33

r 17A.24......................................... ad 2001 No 33

r 17A.25......................................... ad 2001 No 33

am 2011 No 62

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; No 31, 2013

Subdivision 3 heading ................... rep No 31, 2013

Subdivision C

Subdivision C ................................ ad No 31, 2013

r 17A.29......................................... ad 2001 No 33

rs No 31, 2013

r 17A.30......................................... ad 2001 No 33

am 2001 No 247

rs No 31, 2013

r 17A.31......................................... ad 2001 No 33

am 2006 No 356

rs No 31, 2013

r 17A.32......................................... ad 2001 No 33

rs No 31, 2013

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 4—Amendment history

Trade Marks Regulations 1995 217

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Provision affected How affected

r 17A.33......................................... ad 2001 No 33

am 2007 No 40; 2011 No 62

rs No 31, 2013

am No 88, 2015

r 17A.34......................................... ad 2001 No 33

am 2007 No 40

rs No 31, 2013

r 17A.34A...................................... ad No 31, 2013

r 17A.34B...................................... ad No 31, 2013

am No 88, 2015

r 17A.34C...................................... ad No 31, 2013

r 17A.34D...................................... ad No 31, 2013

r 17A.34E ...................................... ad No 31, 2013

r 17A.34F ...................................... ad No 31, 2013

r 17A.34G...................................... ad No 31, 2013

r 17A.34H...................................... ad No 31, 2013

am No 88, 2015; F2016L01754

r 17A.34J ....................................... ad No 31, 2013

r 17A.34K...................................... ad No 31, 2013

r 17A.34L ...................................... ad No 31, 2013

r 17A.34M ..................................... ad No 31, 2013

am No 88, 2015

r 17A.34N...................................... ad No 31, 2013

r 17A.34P ...................................... ad No 31, 2013

r 17A.34Q...................................... ad No 31, 2013

r 17A.35......................................... ad 2001 No 33

rs No 31, 2013

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; No 88, 2015

r 17A.37......................................... ad No 33, 2001

am F2016L01754

r 17A.38......................................... ad 2001 No 33

am 2007 No 40

Division 4

r 17A.39......................................... ad 2001 No 33

am 2007 No 40; No 88, 2015

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 4—Amendment history

218 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Provision affected How affected

r 17A.40......................................... ad 2001 No 33

Division 5

Subdivision 1

Subdivision 1 heading ................... ad 2007 No 40

r 17A.41......................................... ad 2001 No 33

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 No40

r 17A.42B...................................... ad No 40, 2007

am F2016L01754

r 17A.42C...................................... ad 2007 No 40

r 17A.42D...................................... ad 2007 No 40

r 17A.42E ...................................... ad 2007 No 40

am No 90, 2015

r 17A.42F ...................................... ad 2007 No 40

am No 31, 2013

Subdivision 3

Subdivision 3 heading ................... 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 ................... ad 2007 No 40

rep No 31, 2013

Subdivision D

Subdivision D................................ ad No 31, 2013

r 17A.48......................................... ad 2001 No 33

am 2001 No 247; 2006 No 356; 2007 No 40; 2011 No 62

rs No 31, 2013

r 17A.48A...................................... ad No 31, 2013

r 17A.48B...................................... ad No 31, 2013

r 17A.48C...................................... ad No 31, 2013

r 17A.48D...................................... ad No 31, 2013

r 17A.48E ...................................... ad No 31, 2013

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 4—Amendment history

Trade Marks Regulations 1995 219

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Provision affected How affected

r 17A.48F ...................................... ad No 31, 2013

r 17A.48G...................................... ad No 31, 2013

r 17A.48H...................................... ad No 31, 2013

am F2016L01754

r 17A.48J ....................................... ad No 31, 2013

r 17A.48K...................................... ad No 31, 2013

r 17A.48L ...................................... ad No 31, 2013

r 17A.48M ..................................... ad No 31, 2013

r 17A.48N...................................... ad No 31, 2013

r 17A.48P ...................................... ad No 31, 2013

r 17A.48Q...................................... ad No 31, 2013

r 17A.48R...................................... ad No 31, 2013

r 17A.48S ...................................... ad No 31, 2013

r 17A.48T ...................................... ad No 31, 2013

r 17A.48U...................................... ad No 31, 2013

r 17A.48V...................................... ad No 31, 2013

r 17A.48W..................................... ad No 31, 2013

r 17A.48X...................................... ad No 31, 2013

r 17A.48Y...................................... ad No 31, 2013

r 17A.48Z ...................................... ad No 31, 2013

Division 6

r 17A.49......................................... ad 2001 No 33

r 17A.50......................................... ad No 33, 2001

am No 247, 2001; F2016L01754

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

r 17A.57......................................... ad 2001 No 33

am 2001 No 247

r 17A.58......................................... ad 2001 No 33

am 2001 No 247

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 4—Amendment history

220 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Provision affected How affected

r 17A.58A...................................... ad 2001 No 247

r 17A.59......................................... ad 2001 No 33

am 2001 No 247

r 17A.60......................................... ad 2001 No 33

am 2001 No 247

Division 10

r 17A.61......................................... ad 2001 No 33

am 2012 No 66

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

am 2011 No 62

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

r 17A.74......................................... ad No 62, 2011

am F2016L01754

Part 19

r 19.1 ............................................. am 1999 No 186; No 31, 2013

r 19.2 ............................................. rs 1998 No 258

Part 20

Part 20 ........................................... ad 1998 No 346

rs 2008 No 122

Division 1

r 20.1A .......................................... ad No 31, 2013

r 20.1 ............................................. ad No 346, 1998

am No 185, 2001

rs No 122, 2008

am No 31, 2013; F2016L01754

Division 2

r 20.2 ............................................. ad 1998 No 346

rs 2008 No 122

r 20.3 ............................................. ad 1998 No 346

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 4—Amendment history

Trade Marks Regulations 1995 221

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Provision affected How affected

am 2002 No 173

rs 2008 No 122

am 2009 No 150; 2012 No 66

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 No 346, 1998

rs No 122, 2008

am F2016L01754

r 20.7 ............................................. ad 1998 No 346

am 2002 No 173

rs 2008 No 122

r 20.8 ............................................. ad1998 No 346

am 2002 No 173; 2002 No 318

rs 2008 No 122

am 2009 No 150

r 20.9 ............................................. ad 1998 No 346

am 1999 No 153; 2002 No 173; 2002 No 318

rs 2008 No 122

r 20.10 ........................................... ad 1998 No 346

rs 2008 No 122

r 20.11 ........................................... ad No 346, 1998

rs No 122, 2008

am F2016L01754

Division 3

r 20.12 ........................................... ad 2008 No 122

Division 4

r 20.13 ........................................... ad 2008 No 122

Division 5

Division 5 heading......................... rs No 31, 2013

r 20.14 ........................................... ad 2008 No 122

am No 31, 2013; No 88, 2015

Division 5A

Division 5A ................................... ad No 31, 2013

r 20.14A......................................... ad No 31, 2013

r 20.14B......................................... ad No 31, 2013

Division 6

r 20.15 ........................................... ad No 122, 2008

am No 88, 2015; F2016L01754

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 4—Amendment history

222 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Provision affected How affected

Division 7

r 20.16 ........................................... ad 2008 No 122

Part 20A

Part 20A ........................................ ad No 31, 2013

Division 1

r 20A.1 .......................................... ad No 31, 2013

r 20A.2 .......................................... ad No 31, 2013

Division 2

r 20A.3 .......................................... ad No 31, 2013

r 20A.4 .......................................... ad No 31, 2013

Division 3

r 20A.5 .......................................... ad No 31, 2013

Division 4

r 20A.6 .......................................... ad No 31, 2013

r 20A.7 .......................................... ad No 31, 2013

r 20A.8 .......................................... ad No 31, 2013

Division 5

Subdivision A

r 20A.9 .......................................... ad No 31, 2013

r 20A.10......................................... ad No 31, 2013

am F2016L01754

Subdivision B

r 20A.11......................................... ad No 31, 2013

rs F2016L01754

r 20A.11A...................................... ad F2016L01754

r 20A.11B...................................... ad F2016L01754

r 20A.11C...................................... ad F2016L01754

r 20A.11D...................................... ad F2016L01754

r 20A.12......................................... ad No 31, 2013

am F2016L01754

r 20A.13......................................... ad No 31, 2013

am F2016L01754

r 20A.14......................................... ad No 31, 2013

am F2016L01754

r 20A.15......................................... ad No 31, 2013

am F2016L01754

r 20A.16......................................... ad No 31, 2013

am F2016L01754

r 20A.17......................................... ad No 31, 2013

am F2016L01754

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 4—Amendment history

Trade Marks Regulations 1995 223

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Provision affected How affected

r 20A.18......................................... ad No 31, 2013

am F2016L01754

r 20A.19......................................... ad No 31, 2013

am F2016L01754

r 20A.20......................................... ad No 31, 2013

am F2016L01754

r 20A.21......................................... ad No 31, 2013

am F2016L01754

Division 6

r 20A.22......................................... ad No 31, 2013

Part 21

Division 1

r 21.1 ............................................. am 2012 No 66

r 21.2 ............................................. am 1998 No 343; 2009 No 332

r 21.3 ............................................. am 1998 No 343

r 21.4 ............................................. am 2005 No 211

r 21.5 ............................................. am No 31, 2013

r 21.6 ............................................. am No 346, 1998; No 150, 2009

rs No 66, 2012

am F2016L01754

r 21.7A .......................................... ad F2016L01754

r 21.11A......................................... ad 2007 No 40

Division 2

r 21.13 ........................................... am 2001 No 247; 2003 No 214

rs No 31, 2013

r 21.14 ........................................... am No 88, 2015

r 21.15 ........................................... rs No 31, 2013

r 21.16 ........................................... rs No 31, 2013

Division 2A

Division 2A ................................... ad No 31, 2013

r 21.20A......................................... ad No 31, 2013

r 21.20B......................................... ad No 31, 2013

r 21.20C......................................... ad No 31, 2013

r 21.20D......................................... ad No 31, 2013

r 21.20E......................................... ad No 31, 2013

r 21.20F ......................................... ad No 31, 2013

r 21.20G......................................... ad No 31, 2013

Division 3

r 21.21 ........................................... am 1998 No 265; 2001 No 247; 2002 No 173; 2012 No 66

r 21.21AA...................................... ad 2012 No 66

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 4—Amendment history

224 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Provision affected How affected

r 21.21A......................................... ad 2007 No 40

am No 88, 2015; No 90, 2015

r 21.22 ........................................... am 1998 No 343; 1999 No 186; No 90, 2015

r 21.23 ........................................... am 1999 No 186

rs 2005 No 211

am 2007 No 40; No 90, 2015

r 21.24 ........................................... am 2003 No 214

r 21.24A......................................... ad 2007 No 40

am No 31, 2013

r 21.24B......................................... ad 2007 No 40

am 2011 No 62; No 2011 No 217

r 21.24C......................................... ad 2007 No 40

r 21.26 ........................................... rep No 31, 2013

r 21.27 ........................................... rep No 31, 2013

r 21.28 ........................................... am 1999 No 186; 2001 No 247; 2005 No 52; 2005 No 211; 2007 No 40; 2008 No 122;

No 31, 2013; No 88, 2015

r 21.29 ........................................... am 1999 No 186; No 31, 2013

r 21.30 ........................................... rs 1998 No 346

r 21.32 ........................................... rep No 88, 2015

r 21.35 ........................................... ad No 346, 1998

am No 122, 2008; No 31, 2013 (md); F2016L01754

Part 22

Division 1

Division 1 heading......................... ad No 31, 2013

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

am 2012 No 66

r 22.8 ............................................. ad 1998 No 346

am 2012 No 66

Division 2

Division 2 ...................................... ad No 31, 2013

r 22.9 ............................................. ad No 31, 2013

r 22.10 ........................................... ad No 90, 2015

r 22.11 ........................................... ad F2016L00694

r 22.12 ........................................... ad F2016L01306

r 22.13 ........................................... ad F2016L01754

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 4—Amendment history

Trade Marks Regulations 1995 225

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Provision affected How affected

Division 3

Division 3 ...................................... ad F2016L01754

r 22.14 ........................................... ad F2016L01754

r 22.15 ........................................... ad F2016L01754

r 22.16 ........................................... ad F2016L01754

r 22.17 ........................................... ad F2016L01754

Schedule 1

Schedule 1 ..................................... am 1996 No 272; 2001 No 247; 2006 No 356; 2011 No 217; F2016L01754

Schedule 3

Schedule 3 ..................................... am 1999 No 186

rs No 31, 2013

am No 90, 2015; F2016L01754

Schedule 4

Schedule 4 ..................................... am 1999 No 186

rs No 31, 2013

am No 90, 2015; F2016L01754

Schedule 5

Schedule 5 ..................................... am 1999 No 186

rs No 31, 2013

am No 90, 2015; F2016L01754

Schedule 6

Schedule 6 ..................................... am 1996 No 3

rs 1998 No 258

Schedule 7

Schedule 7 heading........................ rs 1998 No 343

Schedule 7 ..................................... am 1998 No 343; No 88, 2015

Schedule 8

Schedule 8 ..................................... am 1998 No 346; 1999 No 186; 2006 No 355; No 31, 2013

Schedule 9

Schedule 9 heading........................ rs F2016L01306

Schedule 9 ..................................... am 1996 No 3

rs 1997 No 346

am 1998 No 265; 1998 No 346; 2001 No 33; 2001 No 247

rs 2002 No 173

am 2005 No 211; 2006 No 355; 2007 No 40; 2008 No 122

rs 2012 No 66

am No 31, 2013; No 88, 2015; F2016L00694; F2016L01306

Schedule 10 ................................... am 1996 No 3

rs 1996 No 272; 1997 No 346

Authorised Version F2017C00153 registered 01/03/2017

Endnotes

Endnote 4—Amendment history

226 Trade Marks Regulations 1995

Compilation No. 42 Compilation date: 24/2/17 Registered: 1/3/17

Provision affected How affected

am 1998 No 258; 1998 No 343; 1999 No 350; 2002 No 173; 2002 No 318; 2004 No 24;

2004 No 194; 2005 No 52; 2007 No 40; 2008 No 279; 2012 No 66

rep No 31, 2013

Authorised Version F2017C00153 registered 01/03/2017

Trade Marks Regulations 1995 (consolidated as of February 24, 2017), Australia

Available Materials