Trade Marks Regulations 1995 (consolidated as of October 16, 2010), Australia

2.1 Interpretation 15

2.2 Period expressed in months 16

Part 3 Trade marks and trade mark rights

4.1 Applications — approved form 23

4.2 Application in approved form — requirements for filing 23 4.2AA Divisional application — additional requirement for filing 24

4.2A AFS request submitted as application — requirements for filing 24

4.3 Representation of trade marks 24

4.4 Specification of goods and/or services 26 Page

4.5 Period for claiming priority for an application 27

4.6 How to claim priority 27

4.7 Publication of particulars of application 27

4.8 Examination of application — report to applicant 28

4.9 Examination — applicant’s response to report 29

4.10 Examination — further report to applicant 29

4.11 Examination — additional requirements 30

4.12 Periods after which applications lapse 30

4.13 Deferment of acceptance 31

4.14 Period for which acceptance is deferred 33

4.15 Trade marks containing etc certain signs 36 4.15A Grounds for rejection — trade mark identical etc to trade mark protected under Madrid Protocol 36

4.18 Request for expedited examination of application 38

4.19 Expedited examinations 39

Part 5 Opposition to registration

19.1 Trade Marks Office and sub-offices — business hours 135

19.2 Persons to whom Registrar may delegate (Act, s 206 (1)) 135

Part 20 Registered trade marks attorneys

Division 1 General

4.13 (4).

Regulation 4.14

(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when the application is withdrawn; or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

(c)

if paragraphs (a) and (b) do not apply — in accordance with 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

(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

(c)

if acceptance is deferred because of subparagraph 4.13 (1)

(c) (iii) — when 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:

Regulation 4.14

(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 Administrative Appeals Tribunal, or a court to which any appeal arising from review by the Tribunal 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

4.18 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.

Regulation 4.19

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.

Regulation 5.1

5.14 Hearing of opposition

(1) An applicant may ask the Registrar to hear the parties to opposition proceedings, if:

(a)

the opponent serves a copy of a notice under subregulation

5.8 (1); or

(b)

at the end of the period for service of:

(i)

a copy of the evidence in support under subregulation 5.7 (1); or

(ii)

a copy of the notice under subregulation 5.8 (1);

the opponent has not served a copy of the evidence in support or a copy of the notice.

(2) A party to opposition proceedings may ask the Registrar to hear the parties to the opposition proceedings, if:

(a)

the applicant serves a copy of a notice under subregulation

5.11 (1); or

(b)

at the end of the period for service of:

(i)

a copy of the evidence in answer under subregulation 5.9 (1); or

(ii)

a copy of the notice under subregulation 5.11 (1);

the applicant has not served a copy of the evidence in answer or a copy of the notice; or

(c)

the opponent serves a copy of the evidence in reply under subregulation 5.12 (1) or a copy of a notice under subregulation 5.13 (1); or

(d)

at the end of the period for serving:

(i)

a copy of the evidence in reply under subregulation

5.12 (1); or

(ii)

a copy of a notice under subregulation 5.13 (1);

the opponent has not served a copy of the evidence in reply or a copy of the notice.

(3) The Registrar must comply with a request made in accordance with subregulation (1) or (2).

Regulation 5.15

(4) If:

(a)

an applicant may make a request to the Registrar under subregulation (1); or

(b)

a party to opposition proceedings may make a request to

the Registrar under subregulation (2); and a request is not made, the Registrar may, on his or her own initiative, give an opportunity to the parties to the opposition proceedings to be heard in relation to those proceedings.

Note Regulations 21.15 and 21.16 deal with hearings.

5.15 Extension of period to serve evidence and service of further evidence

(1)

A party to the opposition proceedings may apply to the Registrar:

(a)

for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or

(b)

for permission to serve a copy of further evidence on the other party.

(2)

The Registrar may grant an application on reasonable terms specified by the Registrar.

(3)

The Registrar must not grant an application unless the Registrar:

(a)

is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and

(b)

has given the parties a reasonable opportunity to make representations concerning the application; and

(c)

is reasonably satisfied that:

(i)

in the case of an application to which paragraph (1)

(a) applies — the extension of the period for serving a copy of the evidence; and

(ii)

in the case of an application to which paragraph (1)

(b) applies — permission to serve a copy of further

evidence; is appropriate.

Regulation 5.16

(4)

For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

(5)

If the Registrar grants an application under paragraph (1) (b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.

(6)

Subregulations (2), (3) and (4) apply to an application under subregulation (5).

5.16 Conduct of opposition proceedings generally

(1)

The Registrar may, at the request of a party to the opposition proceedings or on the initiative of the Registrar, give a direction in relation to the procedure in the proceedings.

(2)

A direction given under subregulation (1) must not be inconsistent with these regulations.

(3)

The Registrar must not give a direction unless the Registrar:

(a)

is reasonably satisfied that parties to the proceedings have been notified of the proposed direction; and

(b)

has given the parties a reasonable opportunity to make representations concerning the proposed direction; and

(c)

is reasonably satisfied that the proposed direction is appropriate.

(4)

For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

5.17 Registrar to give notice of dismissal of proceedings

If opposition proceedings are dismissed under section 222 of the Act (which deals with security for costs) or discontinued, the Registrar must notify the parties in writing that the opposition proceedings have been dismissed or discontinued.

Regulation 5.18

5.18 Grounds for opposition to registration of a trade mark — trade mark identical etc to trade mark protected under Madrid Protocol

(1) For section 189A of the Act, and in addition to anything in Part 5 of the Act, the registration of a trade mark may be opposed on the grounds for rejection mentioned in regulation 4.15A.

Note Under subsection 189A (3) of the Act, regulations made for the purposes of section 189A:

(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.

(2) To avoid doubt, and subject to subsection 52 (2) of the Act:

(a) the registration of a trade mark may be opposed on the grounds mentioned in subregulation (1) even if the application for registration of the trade mark was lodged before the commencement of the Trade Marks Amendment Regulations 2005 (No. 1); and

(b)	if:
	(i)	a person filed a notice of opposition to the registration of a trade mark before the commencement of the Trade Marks Amendment
		Regulations 2005 (No. 1); and
	(ii)	the notice is stated to have been filed on the grounds mentioned in regulation 4.15A (whether or not the notice states other grounds);

the notice of opposition is taken, on and after the commencement of those Regulations, to have been validly filed on the grounds mentioned in regulation 4.15A; and

(c) if:

(i)

a person filed a notice of opposition to the registration of a trade mark before the commencement of the Trade Marks Amendment Regulations 2005 (No. 1); and

(ii)

the notice is stated to have been filed on the grounds mentioned in section 44 of the Act (whether or not the notice states other grounds); and

Regulation 5.19

(iii) the person was not entitled to file the notice on those

grounds; the notice of opposition is taken, on and after the commencement of those Regulations, to have been validly filed on the grounds mentioned in section 44 of the Act.

5.19 Amendment of notice of opposition

(1)

Subject to subregulation (2), the Registrar must, at the request of the person who has filed a notice of opposition to the registration of a trade mark, amend the notice of opposition to add as grounds for opposition the grounds for rejection mentioned in regulation 4.15A.

(2)

Subregulation (1) applies only if:

(a)

the notice of opposition was filed before the commencement of the Trade Marks Amendment Regulations 2005 (No. 1); and

(b)

the request for amendment of the notice of opposition is made not later than 3 months after the commencement of those Regulations.

Note Section 66 of the Act also allows, but does not require, the Registrar to amend a notice at the written request of the person who filed it if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.

Amendment of application for registration of a trade mark and other	Part 6
documents
	Regulation 6.3

Part 6 Amendment of application for registration of a trade mark and other documents

6.1 Amendment of applications by Registrar

(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

Regulation 6.4

(b) the circumstances in which the error or mistake was made.

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

6.4 Notification of amendments

If the Registrar amends an application, notice or document under Part 6 of the Act, the Registrar must give notice in writing of the amendment to:

(a)

the person who requested the amendment; and

(b)

any other person that the Registrar thinks appropriate.

6.5 Amendment after particulars published — notice of opposition

(1)

For subsection 65A (4) of the Act (which deals with opposition to granting a request for amendment after particulars of the application have been published), 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 applicant.

6.6 Amendment after particulars published — opposition proceedings

For subsection 65A (4) of the Act (which deals with opposition to granting a request for amendment after particulars of the application have been published), regulations 5.7 to 5.17 (inclusive) apply to an opposition to a request for amendment.

Registration of trade marks	Part 7
Initial registration	Division 1
	Regulation 7.1

Part 7 Registration of trade marks

Division 1 Initial registration

7.1 Period in which a trade mark can be registered

(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 Administrative Appeals Tribunal are not determined or otherwise disposed of; and

(b)

the prescribed court or the Tribunal 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 Tribunal may specify for the purposes of subparagraph (1) (a) (ii) a day that is later than the first-mentioned day in subparagraph (1) (a) (i).

(3) If:

(a)

proceedings in relation to the registration of the trade mark are before the Registrar; and

(b)

the Registrar is reasonably satisfied that:

Regulation 7.2

(i) the registration of the trade mark cannot take place on or before the first-mentioned day in subparagraph

(1) (a) (i); and

(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;

(c)

the date on which the Registrar enters the particulars of the registration in 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.

Registration of trade marks	Part 7
Renewal of registration (general)	Division 2
	Regulation 7.5

Division 2 Renewal of registration (general)

7.3 Period for request for renewal

For the purposes of subsection 75 (1) of the Act (which deals with requests for renewal), the period within which a person may request the Registrar to renew the registration of a trade mark is 12 months ending on the day on which the registration of the trade mark expires.

7.4 Notice of renewal due — when and how given

(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.

Part 7 Registration of trade marks

Division 3 Renewal of registration (registration delayed for 10 or more years after filing date)

Regulation 7.6

Division 3 Renewal of registration (registration delayed for 10 or more years after filing date)

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

For subsection 80A (3) of the Act, the prescribed period is 2 months.

Note Paragraph 80A (3) (b) of the Act provides that the prescribed period commences on the Register entry day.

7.7 Notice about renewal (Act s 80C)

For section 80C of the Act (which deals with renewal of registration, where registration has been delayed for 10 or more years after the filing date of the application for registration) the Registrar’s notice to the registered owner of the trade mark must state:

(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.

Regulation 8.1A

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

Regulation 8.2

(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 Register, must take into account the following matters, so far as they are 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;

(c)

the extent to which the trade mark distinguished the relevant goods and/or 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.

Regulation 8.5

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.

Regulation 9.1

Part 9 Removal of trade mark from register for non-use

9.1 Applications for removal etc

For paragraph 92 (2) (a) of the Act (which deals with applications), an application for the removal of a trade mark from the Register must be in an approved form.

9.2 Notification of applications

(1) This regulation applies to an application under section 92 of the Act.

Note The application must be in accordance with the Regulations: see Act, para 92 (2) (a) and r 9.1.

(1A) For subsection 95 (1) of the Act (which deals with notification), the Registrar must give notice of the application within 1 month after the application is made.

Note Subsection 95 (1) of the Act applies to an application made to the Registrar under s 92 of the Act.

(2) The notice must be given by sending a copy of the application to each person who, in the opinion of the Registrar, needs to know that the application has been filed.

9.3 Notice of opposition to removal

(1)

For the purposes of subsection 96 (2) of the Act (which deals with notice of opposition), a notice of opposition to an application under section 92 of the Act must be filed with the Registrar within 3 months from the day on which the application is advertised in the Official Journal.

(2)

The opponent must serve a copy of the notice of opposition on the applicant as soon as practicable after the notice is filed.

Note For the requirement to notify the Registrar of service, see regulation 21.8.

Regulation 9.4

9.4 Opposition proceedings before the Registrar

(1)

For the purposes of section 99 of the Act (which deals with opposition proceedings), regulations 5.7 to 5.17 (inclusive) apply, subject to subregulations (2) and (3), to an opposition to an application under section 92 of the Act.

(2)

The Registrar must, if asked to do so by the opponent within the period for serving:

(a)

a copy of the evidence in support under subregulation

5.7 (1); or

(b)

a copy of the notice under subregulation 5.8 (1); hear the parties to the opposition proceedings.

(3)

If the opponent:

(a)

does not serve a copy of the evidence in support in accordance with subregulation 5.7 (1); or

(b)

serves a copy of a notice under subregulation 5.8 (1); or

(c)

does not serve a copy of that notice within the time

allowed in that subregulation; and the opponent does not request a hearing under subregulation (2), the opposition proceedings are taken to have ended, but are not taken to have been discontinued or dismissed.

Note Regulations 21.15 and 21.16 deal with hearings.

(4) For section 97 of the Act, there is taken to be no opposition to the application if:

(a)

under subregulation (3), opposition proceedings are taken to have ended but are not taken to have been discontinued or dismissed; and

(b)

the Registrar is satisfied that the application for removal is in order.

Note Section 97 provides for the removal of a trade mark from the Registerif an application for removal is unopposed.

Regulation 10.1

Part 10 Assignment and transmission of trade marks

10.1 Applications for assignment etc to be recorded or entered

For the purposes of paragraphs 107 (2) (b) and 109 (2) (b) of the Act (which deal with assignment and transmission), the following documents are prescribed:

(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

Regulation 10.3

(c) that person or each of those persons has, within the period of 2 months from the date of the notice mentioned in paragraph (b), given written notice to the Registrar consenting to the assignment or transmission;

the Registrar must record the particulars after the Registrar has received the last notice consenting to the assignment or transmission.

(4) If:

(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.

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.

Regulation 10.4

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

(c)

that person or each of those persons has, within the period of 2 months from the date of the notice mentioned in paragraph (b), given written notice to the Registrar consenting to the assignment or transmission;

the Registrar must record the particulars 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.

Regulation 10.5

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

(c)

each person to whom the Registrar must give notice under this 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.

Regulation 11.1

Part 11 Voluntary recording of claims to interests in and rights in respect of trade marks

11.1 Amendment of particulars — claimed interests or rights

(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 to amend particulars of a claim to an interest in, or to a right in respect of, a trade mark must be made in writing:

(a)

together by the person whose claim is recorded and the owner of the trade mark; or

(b)

if the request has with it the written consent to the amendment of 1 of the persons mentioned in paragraph

(a) — by the other person mentioned in that paragraph.

(3)

If a request is made in accordance with subregulation (2), the Registrar must amend the particulars in accordance with 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

Regulation 11.3

(b) whose name, address or address for service has changed

since the claim was recorded; gives notice of the new name or address to the Registrar, the Registrar must amend the record accordingly.

Note In relation to change of a person’s name, address or address for service that is recorded in the Register, see sections 215 and 216 of the Act and regulation 21.3.

11.3 Cancellation of particulars — claimed interests or rights

(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:

(a)

by the person whose claim is recorded; or

(b)

by the owner of the trade mark; or

(c)

together by the person whose claim is recorded and the owner of the trade 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.

Regulation 11.3

(5) Unless a request made under paragraph (2) (b) is withdrawn or a prescribed court determines otherwise, the Registrar must, as soon as practicable:

(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.

Regulation 13.2

Part 13 Importation of goods infringing Australian trade marks

13.1 Notice of objection to importation ⎯ accompanying documents

For the purposes of subsection 132 (2) of the Act (which deals with notices of objection), the following documents are prescribed in relation to a notice given under that subsection, namely a document setting out the particulars of registration of the registered trade mark.

13.2 Notice of objection to importation — authorised users

(1)

For the purposes of subsection 132 (3) of the Act (which deals with notices of objection), the period in relation to a request by an authorised user under subsection 132 (2) of the Act is 2 months from the day on which the request is made.

(2)

For the purposes of subsection 132 (3) of the Act, the following documents are prescribed, namely documents that establish that:

(a)

the authorised user has the power to give a notice of objection under subsection 132 (1) of the Act;

(b)

the registered owner was asked to give the notice;

(c)

since the request mentioned in paragraph (b) was made, the period prescribed by subregulation (1) in relation to the request has ended.

Note 1 Examples of documents to which paragraph 13.2 (2) (a) refers include an agreement between the registered owner of a trade mark and theauthorised user of the trade mark and a declaration of the registered owner that the authorised user of the trade mark is able to give notice of objection.

Note 2 An authorised user must also give the documents prescribed byr 13.1 to the Customs CEO — see subs 132 (1) of the Act.

Regulation 13.3

13.3 Period for compliance with Customs CEO’s request for information etc

For the purposes of subsection 143 (2) of the Act (which deals with giving information to the Customs CEO), the period for complying with a request under subsection 143 (1) of the Act is 10 working days from the day on which the request is made.

13.4 Modification of the Act in its application to Norfolk Island

Part 13 of the Act in its application to Norfolk Island is modified as set out in Schedule 3.

13.5 Modification of the Act in its application to Christmas Island

Part 13 of the Act in its application to Christmas Island is modified as set out in Schedule 4.

13.6 Modification of the Act in its application to Cocos (Keeling) Islands

Part 13 of the Act in its application to the Cocos (Keeling) Islands is modified as set out in Schedule 5.

Regulation 16.3

Part 16 Certification trade marks

16.1 Copy of rules to be filed

For the purposes of subsection 173 (1) of the Act, (which deals with rules governing use) an applicant for registration of a certification trade mark must file a copy of the rules governing the use of the certification trade mark at, or as soon as practicable after, the time of filing of the application.

16.2 Documents to be sent to Commission

(1) If, after examining an application, the Registrar is satisfied that:

(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

(c)

a copy of the rules governing the use of the 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.

Regulation 16.3

(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

(c)

state in the notice to the applicant that the applicant, or another person, 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).

(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:

(c)

give to the applicant and each respondent a copy of each response to which 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).

Regulation 16.4

16.4 Holding of conferences

(1) If, in the period that ends 1 month after the date of the advertisement in the Official Journal of an initial assessment:

(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

Regulation 16.5

(b) a person otherwise responds in writing to the Commission in relation to a notice under subregulation 16.3 (2) or an advertisement under subregulation 16.3 (3);

the Commission must hold the conference before it makes a decision on the application.

(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

Regulation 16.7

consideration of applications), the Commission must have regard to the matters specified in subregulation (2).

(2) The Commission must have regard to:

(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

(c)

any relevant submission that is made to the Commission in writing about 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.

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;

(c)

the principles relating to unfair practices, product safety and product 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 Administrative Appeals Tribunal for the review of the decision to which the advertisement relates.

Regulation 16.8

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 decidingwhether to approve a variation, to have regard to prescribed criteria, which are the criteria set out in regulation 16.6.

16.10 Decision on variation of rules

(1) The Commission may approve a variation of the rules if the Commission is satisfied that the rules, as varied:

(a) would not be to the detriment of the public; and

Regulation 16.10A

(b)

are satisfactory having regard to the criteria prescribed in regulation 16.6; and

(c)

provide that the attributes a person must have to become an approved 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

(c)

send a copy of the certificate to the Registrar; 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 Administrative Appeals Tribunal 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

Regulation 16.11

(c)

state whether the prospective assignee proposes, after assignment, to apply 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.

(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;

(c)

whether the proposed rules are satisfactory, having regard to the criteria 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

(c)

state whether the prospective assignee proposes to continue after assignment to apply the same rules governing use of the registered certification trade mark that the registered owner of the trade mark applies; and

Regulation 16.12

(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;

(c)

whether the proposed rules are satisfactory, having regard to the criteria 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.

(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.

Regulation 16.12

(3) The Registrar may publish the rules, or the certified copy of the rules, in any manner the Registrar thinks fit, including (but not limited to):

(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.

Regulation 17.2

Part 17 Defensive trade marks

17.1 Evidence in support of applications

An applicant for registration of a defensive trade mark must file evidence in support of the application at, or as soon as practicable after, the time of filing of the application.

17.2 Defensive trade mark based on protected international trade mark

(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

(c)

a reference in that Part to the registered owner of a trade mark were a 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

Regulation 17.2

(e) the reference in section 189 of the Act to a trade mark that is not registered in the name of the registered owner included a trade mark that is not a protected international trade mark held by the registered owner.

Regulation 17A.2

Part 17A	Protected international trade marks under the Madrid Protocol
Division 1	General

17A.1 Purpose of Part

This Part provides for matters that enable the performance of the obligations of Australia, or obtain for Australia an advantage or benefit, under the Madrid Protocol.

17A.2 Definitions for Part

change of ownership includes assignment or transmission. Common Regulations means the Common Regulations under the Madrid Agreement Concerning the International

Registration of Marks and the Protocol relating to that Agreement, as in force on 1 April 2007. Contracting Party of the holder has the meaning given by

Rule 1 (xxvibis) of the Common Regulations. date of international registration means the date recorded in the International Register as the international registration date for a trade mark in respect of which a request was made under

Article 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

Regulation 17A.3

(b) in relation to another international registration of a trade mark — the person or persons in whose name or names the international registration of the trade mark is recorded in the International Register.

International Bureau means the International Bureau of the

World Intellectual Property Organisation. International Register means the register maintained by the International Bureau for the purposes of the Protocol.

international registration of a trade mark means registration of

the mark in the International Register. international registration designating Australia, or IRDA, means a request, made under Article 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.

Regulation 17A.5

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

(c)

the trade mark is a protected international trade mark; 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

(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.

Division 2 Application for international registration of a trade mark

17A.5 Purpose of Division

This Division makes provision for dealing with applications for international registration of trade marks that are to be filed with the International Bureau through the intermediary of the Trade Marks Office.

Regulation 17A.6

17A.6 Eligibility to apply for international registration

(1) A person who is:

(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

(c)

have a real and effective industrial or commercial establishment in 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:

(a) check the application; and

Regulation 17A.10

(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

(c)

if the application results in an international registration — notify the 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.

Regulation 17A.11

Division 3 International registration designating Australia

Subdivision 1 General

17A.11 Purpose of Division

This Division makes provision for dealing with a request to extend to Australia the protection resulting from international registration of a trade mark.

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

If the Registrar receives from the International Bureau a notification of an IRDA, the Registrar must examine and report on:

(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

(c)

must intend to assign the trade mark to a body corporate that is about to be 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.

Regulation 17A.15

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

(c)

linguistically incorrect; 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.

17A.14A Representation of trade marks

If the representation of a trade mark in an IRDA includes words of a language other than English, the holder of the IRDA must file a translation of the words into English, if required to do so by the Registrar.

Note Rule 9 (4) (a) (xii) of the Common Regulations provides that a transliteration is required if the trade mark consists of or contains matter in characters other than Latin characters or numbers expressed in numeralsother than Arabic or Roman numerals.

17A.15 Claim for priority

(1) If:

(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;

Regulation 17A.16

that person or that person’s successor in title may claim a right of priority for the protection of the trade mark in respect of any or all of those goods, services or goods and services.

(2) The right of priority must be claimed in the IRDA that is notified to the Registrar in accordance with this Division.

Note Rule 9 (4) (iv) of the Common Regulations contains requirements relating to claims for priority.

(3) The priority claimed is for the protection of the trade mark in respect of the goods, services or goods and services:

(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.

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

Regulation 17A.18

notified the Registrar, in writing, of the holder’s address for service in Australia.

Note Under the Protocol, protection must be extended in Australia to a trade mark that is the subject of an IRDA at the end of 18 months after the International Bureau notifies the Trade Marks Office of the IRDA unless, before then, the International Bureau receives:

(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;

(c)

provide further documents or evidence in support of the IRDA;

(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.

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

Regulation 17A.19

(b) there are grounds under Subdivision 2 for rejecting it in

whole or in part; the Registrar must tell the holder, in writing, of that belief.

(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

Regulation 17A.21

(b) if a further report raises grounds under Subdivision 2 for rejecting the IRDA that were not raised in the report made under regulation 17A.16 — within 15 months from the date of the further report.

(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).

Note 1 If an extension of the time for acceptance of an IRDA is sought after the end of a period mentioned in subregulation (1), or of an extended period mentioned in subregulation (3), application must be made under section 224 of the Act.

Note 2 If a period mentioned in subregulation (1) has been extended by 6 months, any application for a further extension of time must be madeunder section 224 of the Act.

17A.21 Deferment of acceptance

(1) The Registrar may, at the written request of the holder, defer acceptance of an IRDA if:

(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:

Regulation 17A.21

(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

(c) the holder:

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

Regulation 17A.22

(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 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

(c)

an application has been made to the Administrative Appeals Tribunal for review of a decision of the 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).

Regulation 17A.22

(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

(c)

if paragraphs (a) and (b) do not apply — in accordance with 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

(c)

if acceptance is deferred because of subparagraph 17A.21 (1) (c) (iii) — when proceedings under Part 9 of the Act or regulation 17A.48 relating to the other trade mark are finalised; and

(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

Regulation 17A.22

(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 Administrative Appeals Tribunal, or a court to which any appeal arising from review by the Tribunal 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).

Regulation 17A.23

17A.23 Expedited examination

Regulations 4.18 and 4.19 apply in relation to an IRDA as if a reference in those regulations to an application for registration of a trade mark were a reference to the IRDA.

17A.24 Final decision on examination

(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

(b)

must notify the holder, in writing, of the decision; and

(c)

may notify the International Bureau, in writing, of the decision.

(2)

If the Registrar made a report under regulation 17A.16 in respect of the IRDA, the Registrar:

Regulation 17A.27

(a)

must notify the International Bureau of the final decision on examination in accordance with rule 17 of the Common Regulations; and

(b)

must notify the holder, in writing, of the final decision on examination; and

(c)

if the final decision on examination is to accept the IRDA in whole or in 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.

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

(c)

the reference in that section to rejecting an application were a reference to 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:

Regulation 17A.28

(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 (6) (a) 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

(c)

each reference in subparagraphs 44 (1) (a) (i) and

(2) (a) (i) to a trade mark 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.

Regulation 17A.31

Subdivision 3 Opposition to IRDA

17A.29 Opposition

(1)

If the Registrar has notified in the Official Journal the acceptance of an IRDA, a person may oppose the extension of protection in Australia to the trade mark that is the subject of the IRDA by filing a notice of opposition.

(2)

The notice of opposition must:

(a)

be in an approved form; and

(b)

be filed with the Registrar:

(i)

within 3 months from the day on which the acceptance of the IRDA is notified in the Official Journal; or

(ii)

if an extension of time is granted under regulation 17A.30, within the extended time allowed.

(3)

The Registrar must notify the International Bureau of the opposition in accordance with rule 16 or 17, as applicable, of the Common Regulations.

17A.30 Extension of time for filing

(1)

A person may apply to the Registrar for an extension of time in which to file a notice of opposition.

(2)

Regulations 5.2, 5.3 and 5.4 (except subregulations 5.4 (2) and (3)) apply, with the necessary modifications, to an application for extension of time under subregulation (1).

(3)

Subsection 52 (5) of the Act applies to an application for extension of time under subregulation (1).

17A.31 Grounds for opposing IRDA

(1) The extension of protection may be opposed on any of the grounds on which an IRDA may be rejected under Subdivision 2, except the ground that the trade mark cannot be represented graphically.

101

Regulation 17A.32

(2)

The extension of protection may also be opposed on any of the grounds set out in sections 58 to 61 and section 62A of the Act, as affected by subregulation (3).

(3)

Sections 58 to 61 and section 62A 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) 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; or

(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 makes provision in relation to amendment of documents filed with the Registrar.

17A.32 Circumstances in which opposition may proceed in name of a person other than the person who filed the notice

Section 53 of the Act applies in respect of a notice of opposition filed under this Subdivision.

17A.33 Opposition proceedings

(1) The Registrar must give to the opponent and to the holder of the IRDA an opportunity of being heard on the opposition.

Regulation 17A.35

(2)

Regulations 5.7 to 5.17 apply, with the necessary modifications, for the purposes of the opposition.

(3)

Despite subregulations (1) and (2), a requirement to serve a document on the holder, or to give the holder an opportunity to make written representations or to be heard, does not apply until the holder has notified the Registrar, in writing, of the holder’s address for service in Australia.

17A.34 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 any ground on which the IRDA was opposed has been established.

(2) The Registrar must tell the International Bureau of his or her decision.

17A.35 Appeal

(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.34.

(2)

If an appeal is made, the Registrar must tell the International Bureau of the decision on the appeal as soon as practicable after that decision is made.

103

Regulation 17A.35A

Subdivision 3A Cancellation or limitation of an international registration

17A.35A Cancellation

If the International Bureau cancels an international registration in whole or in part the IRDA ceases, to the extent of the cancellation, when the international registration is cancelled.

17A.35B Duties and powers of Registrar — notification of limitation by International Bureau

(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 Register; and

(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

Regulation 17A.36

(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.

(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 Register under Article 9^bis (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.

105

Regulation 17A.36

(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

(c)

the opposition has been dismissed or withdrawn; 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

(c)

the result of the decision on the opposition is that the trade mark that is the 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; 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

(c)

an appeal is made from the decision on the opposition within the appeal 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

Regulation 17A.37

(c)

an appeal is made from the decision on the opposition within the appeal 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.29 (3); 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

(c)

the International Bureau does not receive notification under 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.

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.

Regulation 17A.39

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,

13.3 and 21.32 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

(c)

to goods or services in respect of which a trade mark is registered is taken 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

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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

(c)

the reference in regulation 13.1 to the particulars of registration of the 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

(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.

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.

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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 Register; and

(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.

(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.

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(8) In this regulation: declaration period means the period of 18 months after the International Bureau notifies the Registrar that a holder of an

international registration has imposed a limitation on the registration. limitation means a limitation, in respect of Australia, in

relation to the goods or services mentioned in an international registration recorded in the International Register under Article 9^bis (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 protectedinternational 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:

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Regulation 17A.42A

(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;

(c)

if a protected international trade mark is already subject to a condition or 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.

(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);

(c)

the Registrar is satisfied, having regard to all the circumstances that existed 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;

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(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;

(c)

any special circumstances making it appropriate, in the opinion of the 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;

(c)

any other action taken in relation to the trade mark as a protected 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).

(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.