- Intellectual Property Laws Amendment Act 2006
- Contents
- Schedule 1—Revoking registration of trade marks etc.
- Schedule 2—Non-payment of fees relating to trade marks
- Schedule 3—Registration process for certification trade marks
- Schedule 4—Availability of documents about trade marks
- Schedule 5—Relief for infringement of patents
- Schedule 6—Exemption of continued prior use from patentinfringement
- Schedule 7—Springboarding and patents
- Schedule 8—Compulsory licensing of patents
- Schedule 9—Specifying claims for innovation patents
- Schedule 10—Making divisional applications for innovationpatents
- Schedule 11—Setting dates by regulations
- Schedule 12—Effect of office not being open for business
- Schedule 13—Extension of time
- Schedule 14—Approving forms
- Schedule 15—Delegation
- Schedule 16—Statute law revision amendments
- The Parliament of Australia enacts
- Schedule 1—Revoking registration of trademarks etc.
- Trade Marks Act 1995
- 1 Subsection 38(1)
- 2 Application of amendment of section 38
- 3 At the end of section 73
- 4 Part 8 (heading)
- Part 8—Amendment, cancellation and revocationof registration
- 5 Before section 81
- Subdivision A—Amending Register
- Subdivision B—Cancelling registration
- Subdivision C—Revoking registration
- Schedule 2—Non-payment of fees relating totrade marks
- Schedule 3—Registration process forcertification trade marks
- Part 1—Amendments commencing on day afterRoyal Assent
- Trade Marks Act 1995
- 1 Subsection 173(2)
- 2 Application of amendment of section 173
- 3 Paragraph 175(2)(a)
- 4 Subsection 175(2) (note 2)
- 5 Application of amendments of section 175
- 6 Subsection 177(1) (note 2)
- 7 Subsection 181(2) (note 2)
- Part 2—Amendments commencing on proclaimed day or after 6 months
- Trade Marks Act 1995
- 8 Section 174
- 174 Registrar to send documents to Commission
- 9 Application of new section 174
- 10 Subsection 176(1)
- 11 Application of new subsection 176(1)
- 12 Subsection 178(4)
- 13 Subsection 178(6)
- 14 Application of amendments of section 178
- 15 Section 179
- 179 Registrar must publish rules
- 16 Saving of rules made available under old section 179
- Schedule 4—Availability of documents about trade marks
- Trade Marks Act 1995
- 1 At the end of Division 1 of Part 21
- 217A Prescribed documents relating to trade marks to be made available for public inspection
- 2 Application of section 217A
- After section 226
- 226A Requirements for confidential treatment of information held in the Trade Marks Office
- 4 Application of section 226A
- Schedule 5—Relief for infringement of patents
- Schedule 6—Exemption of continued prioruse from patent infringement
- Schedule 7—Springboarding and patents
- Schedule 8—Compulsory licensing of patents
- Schedule 9—Specifying claims for innovationpatents
- Schedule 10—Making divisional applicationsfor innovation patents
- Schedule 11—Setting dates by regulations
- Schedule 12—Effect of office not being openfor business
- Schedule 13—Extension of time
- Schedule 14—Approving forms
- Schedule 15—Delegation
- Schedule 16—Statute law revisionamendments
Intellectual Property Laws Amendment Act 2006
No. 106, 2006
An Act to amend the law relating to intellectual property, and for related purposes
Note: An electronic version of this Act is available in ComLaw (http://www.comlaw.gov.au/)
Contents
1 Short title...........................................................................................1 2 Commencement.................................................................................2 3 Schedule(s)........................................................................................4
Schedule 1—Revoking registration of trade marks etc. 5 Trade Marks Act 1995 5 Schedule 2—Non-payment of fees relating to trade marks 10 Trade Marks Act 1995 10 Schedule 3—Registration process for certification trade marks 11 Part 1—Amendments commencing on day after Royal Assent 11 Trade Marks Act 1995 11 Part 2—Amendments commencing on proclaimed day or after 6 months 13 Trade Marks Act 1995 13 Schedule 4—Availability of documents about trade marks 16 Trade Marks Act 1995 16 Schedule 5—Relief for infringement of patents 18 Patents Act 1990 18
Schedule 6—Exemption of continued prior use from patent infringement 19 Patents Act 1990 19 Schedule 7—Springboarding and patents 22 Patents Act 1990 22 Schedule 8—Compulsory licensing of patents 24 Patents Act 1990 24 Schedule 9—Specifying claims for innovation patents 26 Patents Act 1990 26
Schedule 10—Making divisional applications for innovation patents 27 Patents Act 1990 27
Schedule 11—Setting dates by regulations 28 Plant Breeder’s Rights Act 1994 28 Trade Marks Act 1995 28 Schedule 12—Effect of office not being open for business 29 Designs Act 2003 29 Olympic Insignia Protection Act 1987 30 Patents Act 1990 31 Plant Breeder’s Rights Act 1994 32 Trade Marks Act 1995 34 Schedule 13—Extension of time 36 Trade Marks Act 1995 36 Schedule 14—Approving forms 37 Plant Breeder’s Rights Act 1994 37 Schedule 15—Delegation 38 Designs Act 2003 38 Plant Breeder’s Rights Act 1994 38 Schedule 16—Statute law revision amendments 40 Patents Act 1990 40 Trade Marks Act 1995 40
Intellectual Property Laws Amendment Act 2006
No. 106, 2006
An Act to amend the law relating to intellectual property, and for related purposes
[Assented to 27 September 2006]
The Parliament of Australia enacts:
1 Short title
This Act may be cited as the Intellectual Property Laws Amendment Act 2006.
2 Commencement
(1) Each provision of this Act specified in column 1 of the table commences, or is taken to have commenced, in accordance with column 2 of the table. Any other statement in column 2 has effect according to its terms.
Commencement information
Column 1 Column 2 Column 3
Provision(s) Commencement Date/Details - Sections 1 to 3 The day on which this Act receives the 27 September and anything in Royal Assent. 2006 this Act not elsewhere covered by this table
- Schedule 1 A single day to be fixed by Proclamation. 27 March 2007 However, if any of the provision(s) do not commence within the period of 6 months beginning on the day on which this Act
- receives the Royal Assent, they commence on the first day after the end of that period.
- Schedule 2 A single day to be fixed by Proclamation. 27 March 2007 However, if any of the provision(s) do not commence within the period of 6 months beginning on the day on which this Act
- receives the Royal Assent, they commence on the first day after the end of that period.
- Schedule 3, The day after this Act receives the Royal 28 September Part 1 Assent. 2006
- Schedule 3, A single day to be fixed by Proclamation. 27 March 2007 Part 2
However, if any of the provision(s) do not commence within the period of 6 months beginning on the day on which this Act receives the Royal Assent, they commence on the first day after the end of that period. Commencement information Column 1 Column 2 Column 3 Provision(s) Commencement Date/Details 6. Schedule 4 A single day to be fixed by Proclamation. 27 March 2007 However, if any of the provision(s) do not commence within the period of 6 months beginning on the day on which this Act receives the Royal Assent, they commence on the first day after the end of that period. 7. Schedules 5 and 6 The day after this Act receives the Royal Assent. 28 September 2006 8. Schedule 7 The 28th day after the day on which this Act receives the Royal Assent. 25 October 2006 9. Schedules 8 and 9 The day after this Act receives the Royal Assent. 28 September 2006 10. Schedule 10 A single day to be fixed by Proclamation. 27 March 2007 However, if any of the provision(s) do not commence within the period of 6 months beginning on the day on which this Act receives the Royal Assent, they commence on the first day after the end of that period. 11. Schedule 11 The day after this Act receives the Royal Assent. 28 September 2006 12. Schedule 12 A single day to be fixed by Proclamation. 27 March 2007 However, if any of the provision(s) do not commence within the period of 6 months beginning on the day on which this Act receives the Royal Assent, they commence on the first day after the end of that period. 13. Schedules 13 to 15 The day after this Act receives the Royal Assent. 28 September 2006 14. Schedule 16, item 1 At the same time as Schedule 1 to the Therapeutic Goods Amendment (Medical Devices) Act 2002 commences. 4 October 2002 15. Schedule 16, item 2 Immediately after the commencement of section 84 of the Trade Marks Act 1995. 1 January 1996
Commencement information Column 1 Column 2 Column 3 Provision(s) Commencement Date/Details 16. Schedule 16, item 3 At the same time as item 943 of Schedule 1 to the Public Employment (Consequential and Transitional) Amendment Act 1999 commences. 5 December 1999
Note: This table relates only to the provisions of this Act as originally passed by the Parliament and assented to. It will not be expanded to deal with provisions inserted in this Act after assent.
(2) Column 3 of the table contains additional information that is not part of this Act. Information in this column may be added to or edited in any published version of this Act.
3 Schedule(s)
Each Act that is specified in a Schedule to this Act is amended or repealed as set out in the applicable items in the Schedule concerned, and any other item in a Schedule to this Act has effect according to its terms.
Schedule 1—Revoking registration of trade marks etc.
Trade Marks Act 1995
1 Subsection 38(1)
Repeal the subsection, substitute:
(1) Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that: - (a)
- the application should not have been accepted, taking account of all the circumstances that existed when the application 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.
2 Application of amendment of section 38
The amendment of section 38 of the Trade Marks Act 1995 made by this Schedule applies in relation to the acceptance of an application for registration of the trade mark whether the acceptance occurred before, on or after the commencement of the amendment.
3 At the end of section 73
Add:
Note: Section 84C explains the effect of revocation of the registration of a trade mark, applying some provisions as if the registration had ceased at a particular time (but for most purposes treating the registration as if it had never occurred).
4 Part 8 (heading)
Repeal the heading, substitute:
Part 8—Amendment, cancellation and revocation of registration
5 Before section 81
Insert:
Subdivision A—Amending Register
6 Before section 84
Insert:
Subdivision B—Cancelling registration
7 At the end of Division 1 of Part 8
Add:
Subdivision C—Revoking registration
84A Registration may be revoked
Power to revoke - (1)
- The Registrar may revoke the registration of a trade mark if he or she is satisfied that:
- (a)
- the trade mark should not have been registered, taking account of all the circumstances that existed when the trade mark became registered (whether or not the Registrar knew then of their existence); and
- (b)
- it is reasonable to revoke the registration, taking account of all the circumstances.
- (2)
- The circumstances to be taken into account under paragraph (1)(a) include the following:
- (a)
- any errors (including errors of judgment) or omissions that led directly or indirectly to the registration;
- (b)
- any relevant obligations of Australia under an international agreement;
- (c)
- any special circumstances making it appropriate:
- (i)
- not to register the trade mark; or
- (ii)
- to register the trade mark only if the registration were subject to conditions or limitations to which the registration was not actually subject.
- (3)
- The circumstances to be taken into account under paragraph (1)(b) 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 registered trade mark or to the registration of the trade mark;
- (c)
- other action taken in relation to the trade mark as a registered trade mark;
- (d)
- any special circumstances making it appropriate:
- (i)
- to revoke the registration; or
- (ii)
- not to revoke the registration.
Note: For use of a trade mark see section 6.
Prerequisites to revocation decision
(4) The Registrar may revoke the registration of the trade mark only if the Registrar gives notice of the proposed revocation to each of the following persons in accordance with the regulations within 12 months of registering the trade mark: - (a)
- the registered owner of the trade mark;
- (b)
- any person recorded under Part 11 as claiming a right in respect of, or an interest in, the trade mark.
Note: For registered owner see section 6.
(5) The Registrar must not revoke the registration of the trade mark without giving each of the following persons the opportunity to be heard: - (a)
- the registered owner of the trade mark;
- (b)
- any person recorded under Part 11 as claiming a right in respect of, or an interest in, the trade mark.
Note: For registered owner see section 6.
No duty to consider whether to revoke
(6) The Registrar does not have a duty to consider whether to revoke the registration under this section, whether or not the Registrar is requested to do so.
84B Registration must be revoked if opposition was ignored in registration process
The Registrar must revoke the registration of a trade mark if: - (a)
- either:
- (i)
- a notice of opposition to the registration was filed in accordance with subsection 52(2); or
- (ii)
- before the registration, a person applied in accordance with the regulations for an extension of the period for filing a notice of opposition to the registration; and
- (b)
- the Registrar failed to take account of the opposition or application in deciding to register the trade mark; and
- (c)
- the Registrar becomes aware of the failure within 1 month
after the notice was filed or the application was made. The revocation must be done within that month.
Note: If the Registrar becomes aware of the failure later, he or she may be able to revoke the registration under section 84A.
84C Effect of revocation of registration
- (1)
- This section applies if the Registrar revokes the registration of a trade mark under section 84A or 84B.
- (2)
- This Act generally applies as if the registration had never occurred, but:
- (a)
- subsection 129(4) applies as if the trade mark had ceased to be registered at the time of the revocation; and
- (b)
- if the Customs CEO, purporting to act under Part 13, seizes goods in respect of which the trade mark was registered before the revocation, the Commonwealth is not liable for any loss or damage suffered because of the seizure, unless:
- (i)
- the Registrar gives the Customs CEO written notice of the revocation; and
- (ii)
- the seizure occurs after the notice is given to the Customs CEO; and
- (c)
- Part 14 applies as if the trade mark had ceased to be registered at the time of the revocation; and
- (d)
- subsection 230(2) applies in relation to a defendant who was the registered owner of the trade mark before the revocation as if the trade mark had ceased to be registered at the time of the revocation; and
- (e)
- subsection 230(2) applies in relation to a defendant who was an authorised user of the trade mark before the revocation as
if the trade mark had ceased to be registered at the time the
defendant became aware of the revocation.
Note: For registered owner
No. 106, 2006
An Act to amend the law relating to intellectual property, and for related purposes
Note: An electronic version of this Act is available in ComLaw (http://www.comlaw.gov.au/)
1 Short title...........................................................................................1 2 Commencement.................................................................................2 3 Schedule(s)........................................................................................4
Schedule 1—Revoking registration of trade marks etc. 5 Trade Marks Act 1995 5 Schedule 2—Non-payment of fees relating to trade marks 10 Trade Marks Act 1995 10 Schedule 3—Registration process for certification trade marks 11 Part 1—Amendments commencing on day after Royal Assent 11 Trade Marks Act 1995 11 Part 2—Amendments commencing on proclaimed day or after 6 months 13 Trade Marks Act 1995 13 Schedule 4—Availability of documents about trade marks 16 Trade Marks Act 1995 16 Schedule 5—Relief for infringement of patents 18 Patents Act 1990 18
Schedule 6—Exemption of continued prior use from patent infringement 19 Patents Act 1990 19 Schedule 7—Springboarding and patents 22 Patents Act 1990 22 Schedule 8—Compulsory licensing of patents 24 Patents Act 1990 24 Schedule 9—Specifying claims for innovation patents 26 Patents Act 1990 26
Schedule 11—Setting dates by regulations 28 Plant Breeder’s Rights Act 1994 28 Trade Marks Act 1995 28 Schedule 12—Effect of office not being open for business 29 Designs Act 2003 29 Olympic Insignia Protection Act 1987 30 Patents Act 1990 31 Plant Breeder’s Rights Act 1994 32 Trade Marks Act 1995 34 Schedule 13—Extension of time 36 Trade Marks Act 1995 36 Schedule 14—Approving forms 37 Plant Breeder’s Rights Act 1994 37 Schedule 15—Delegation 38 Designs Act 2003 38 Plant Breeder’s Rights Act 1994 38 Schedule 16—Statute law revision amendments 40 Patents Act 1990 40 Trade Marks Act 1995 40
An Act to amend the law relating to intellectual property, and for related purposes
[Assented to 27 September 2006]
This Act may be cited as the Intellectual Property Laws Amendment Act 2006.
(1) Each provision of this Act specified in column 1 of the table commences, or is taken to have commenced, in accordance with column 2 of the table. Any other statement in column 2 has effect according to its terms.
Commencement information
Column 1 Column 2 Column 3
Provision(s) Commencement Date/Details However, if any of the provision(s) do not commence within the period of 6 months beginning on the day on which this Act receives the Royal Assent, they commence on the first day after the end of that period. Note: This table relates only to the provisions of this Act as originally passed by the Parliament and assented to. It will not be expanded to deal with provisions inserted in this Act after assent.
(2) Column 3 of the table contains additional information that is not part of this Act. Information in this column may be added to or edited in any published version of this Act.
Each Act that is specified in a Schedule to this Act is amended or repealed as set out in the applicable items in the Schedule concerned, and any other item in a Schedule to this Act has effect according to its terms.
1 Subsection 38(1)
Repeal the subsection, substitute:
(1) Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that: 2 Application of amendment of section 38
The amendment of section 38 of the Trade Marks Act 1995 made by this Schedule applies in relation to the acceptance of an application for registration of the trade mark whether the acceptance occurred before, on or after the commencement of the amendment.
3 At the end of section 73
Add:
Note: Section 84C explains the effect of revocation of the registration of a trade mark, applying some provisions as if the registration had ceased at a particular time (but for most purposes treating the registration as if it had never occurred).
4 Part 8 (heading)
Repeal the heading, substitute:
5 Before section 81
Insert:
6 Before section 84
Insert:
7 At the end of Division 1 of Part 8
Add:
Power to revoke Note: For use of a trade mark see section 6.
Prerequisites to revocation decision
(4) The Registrar may revoke the registration of the trade mark only if the Registrar gives notice of the proposed revocation to each of the following persons in accordance with the regulations within 12 months of registering the trade mark: Note: For registered owner see section 6.
(5) The Registrar must not revoke the registration of the trade mark without giving each of the following persons the opportunity to be heard: Note: For registered owner see section 6.
No duty to consider whether to revoke
(6) The Registrar does not have a duty to consider whether to revoke the registration under this section, whether or not the Registrar is requested to do so.
84B Registration must be revoked if opposition was ignored in registration process
The Registrar must revoke the registration of a trade mark if: after the notice was filed or the application was made. The revocation must be done within that month.
Note: If the Registrar becomes aware of the failure later, he or she may be able to revoke the registration under section 84A.
if the trade mark had ceased to be registered at the time the
defendant became aware of the revocation.
Note: For registered owner Contents
Schedule 10—Making divisional applications for innovation patents 27 Patents Act 1990 27
Intellectual Property Laws Amendment Act 2006
No. 106, 2006
The Parliament of Australia enacts:
1 Short title
2 Commencement
Commencement information Column 1 Column 2 Column 3 Provision(s) Commencement Date/Details 6. Schedule 4 A single day to be fixed by Proclamation. 27 March 2007 However, if any of the provision(s) do not commence within the period of 6 months beginning on the day on which this Act receives the Royal Assent, they commence on the first day after the end of that period. 7. Schedules 5 and 6 The day after this Act receives the Royal Assent. 28 September 2006 8. Schedule 7 The 28th day after the day on which this Act receives the Royal Assent. 25 October 2006 9. Schedules 8 and 9 The day after this Act receives the Royal Assent. 28 September 2006 10. Schedule 10 A single day to be fixed by Proclamation. 27 March 2007 However, if any of the provision(s) do not commence within the period of 6 months beginning on the day on which this Act receives the Royal Assent, they commence on the first day after the end of that period. 11. Schedule 11 The day after this Act receives the Royal Assent. 28 September 2006 12. Schedule 12 A single day to be fixed by Proclamation. 27 March 2007 However, if any of the provision(s) do not commence within the period of 6 months beginning on the day on which this Act receives the Royal Assent, they commence on the first day after the end of that period. 13. Schedules 13 to 15 The day after this Act receives the Royal Assent. 28 September 2006 14. Schedule 16, item 1 At the same time as Schedule 1 to the Therapeutic Goods Amendment (Medical Devices) Act 2002 commences. 4 October 2002 15. Schedule 16, item 2 Immediately after the commencement of section 84 of the Trade Marks Act 1995. 1 January 1996
Commencement information Column 1 Column 2 Column 3 Provision(s) Commencement Date/Details 16. Schedule 16, item 3 At the same time as item 943 of Schedule 1 to the Public Employment (Consequential and Transitional) Amendment Act 1999 commences. 5 December 1999 3 Schedule(s)
Schedule 1—Revoking registration of trade marks etc.
Trade Marks Act 1995
Part 8—Amendment, cancellation and revocation of registration
Subdivision A—Amending Register
Subdivision B—Cancelling registration
Subdivision C—Revoking registration
84A Registration may be revoked
84C Effect of revocation of registration