- Trade Marks Regulations 1995
- Contents
- Part 1 Preliminary
- Part 2 Interpretation
- Part 3 Trade marks and trade mark rights
- Part 3A Assisted filing service
- Part 4 Application for registration
- Part 5 Opposition to registration
- Part 6 Amendment of application for registration of a trade mark and other documents
- Part 7 Registration of trade marks
- Part 8 Amendment and cancellation ofregistration
- Part 8 Amendment and cancellation of registration
- Part 9 Removal of trade mark from register for non-use
- Part 10 Assignment and transmission of trademarks
- Part 11 Voluntary recording of claims to interests in and rights in respect of trade marks
- Part 13 Importation of goods infringing Australian trade marks
- Part 16 Certification trade marks
- Part 17 Defensive trade marks
- Part 17A Protected international trade marks under the Madrid Protocol
- Part 19 Administration
- Part 20 Registered trade marks attorneys
- Part 21 Miscellaneous
- Part 22 Transitional provisions
- Part 1 Preliminary
- Part 2 Interpretation
- Part 3 Trade marks and trade mark rights
- Part 3A Assisted filing service
- Part 4 Application for registration
- 4.1 Applications — approved form
- 4.2 Application in approved form — requirements for filing
- 4.2AA Divisional application — additional requirement for filing
- 4.2A AFS request submitted as application —requirements for filing
- 4.3 Representation of trade marks
- 4.4 Specification of goods and/or services
- 4.5 Period for claiming priority for an application
- 4.6 How to claim priority
- 4.7 Publication of particulars of application
- 4.8 Examination of application — report to applicant
- 4.9 Examination — applicant’s response to report
- 4.10 Examination — further report to applicant
- 4.11 Examination — additional requirements
- 4.12 Periods after which applications lapse
- 4.13 Deferment of acceptance
- 4.13 Deferment of acceptance
- 4.14 Period for which acceptance is deferred
- 4.15 Trade marks containing etc certain signs
- 4.15A Grounds for rejection — trade mark identical etc to trade mark protected under Madrid Protocol
- 4.18 Request for expedited examination of application
- 4.19 Expedited examinations
- Part 5 Opposition to registration
- 5.1 Time for filing notice of opposition
- 5.2 Extension of time for filing — grounds
- 5.3 Extension of time for filing — applications
- 5.4 Extension of time for filing — grant of extension
- 5.5 Copy of earlier application to be available to opponent
- 5.6 Opposition proceedings
- 5.7 Evidence in support
- 5.8 Notice that opponent will not rely on evidence in support
- 5.9 Evidence in answer
- 5.10 Period for service of a copy of the evidence in answer
- 5.11 Notice that applicants will not rely on evidence in answer
- 5.12 Evidence in reply to evidence in answer
- 5.13 Notice that opponents will not rely on evidence inreply to evidence in answer
- 5.14 Hearing of opposition
- 5.15 Extension of period to serve evidence and service of further evidence
- 5.16 Conduct of opposition proceedings generally
- 5.17 Registrar to give notice of dismissal of proceedings
- 5.18 Grounds for opposition to registration of a trademark — trade mark identical etc to trade mark protected under Madrid Protocol
- 5.19 Amendment of notice of opposition
- Part 6 Amendment of application for registration of a trade mark and other documents
- Part 7 Registration of trade marks
- Division 1 Initial registration
- Division 2 Renewal of registration (generan( �/A>
- Division 3 Renewal of registration (registration delayed for 10 ormore years after filing date)
- Part 8 Amendment and cancellation of registration
- 8.1 Notice of cancellation
- 8.1A Notice of revocation
- 8.2 Amendment or cancellation — matters for the court
- 8.3 Grounds for application for rectification ofRegister — registered trade mark identical etc to trade mark protected under Madrid Protocol
- 8.4 Amendment because of inconsistency withinternational agreements — notice of opposition
- 8.5 Amendment because of inconsistency with international agreements — opposition proceedings
- Part 9 Removal of trade mark from register for non-use
- Part 10 Assignment and transmission of trade marks
- 10.1 Applications for assignment etc to be recorded or entered
- 10.2 Recording of assignment etc — trade marks not registered
- 10.3 Particulars of recorded assignment or transmission to be published
- 10.4 Recording of assignment etc of registered trademarks
- 10.5 Notice to persons recorded as claiming right orinterest in trade marks
- Part 11 Voluntary recording of claims to interests in and rights in respect of trade marks
- Part 13 Importation of goods infringing Australian trademarks
- 13.1 Notice of objection to importation ⎯ accompanying documents
- 13.2 Notice of objection to importation — authorised users
- 13.3 Period for compliance with Customs CEO’s request for information etc
- 13.4 Modification of the Act in its application to Norfolk Island
- 13.5 Modification of the Act in its application to Christmas Island
- 13.6 Modification of the Act in its application to Cocos (Keeling) Islands
- Part 16 Certification trade marks
- 16.1 Copy of rules to be filed
- 16.2 Documents to be sent to Commission
- 16.3 Initial assessment of applications by Commission
- 16.4 Holding of conferences
- 16.5 Consideration of applications
- 16.6 Criteria for Commission consideration of rules
- 16.7 Matters to be included in advertisement of adverse decision
- 16.8 Applications to vary rules
- 16.9 Consideration of applications to vary rules
- 16.10 Decision on variation of rules
- 16.10A Assignment of unregistered certification trade marks
- 16.11 Assignment of registered certification trade marks
- 16.12 Publication of rules
- Part 17 Defensive trade marks
- Part 17A Protected international trademarks under the Madrid Protocol
- Division 1 General
- Division 2 Application for international registration of a trade mark
- Division 3 International registration designating Australia
- Subdivision 1 General
- 17A.11 Purpose of Division
- 17A.12 Registrar to examine, and report on, IRDA
- 17A.13 Use of trade mark
- 17A.14 Specification of goods and services
- 17A.14A Representation of trade marks
- 17A.15 Claim for priority
- 17A.16 Examination of IRDA — report to holder
- 17A.17 Examination — holder’s response to report
- 17A.18 Examination — further report to holder
- 17A.19 Examination — additional requirements
- 17A.20 Period within which final decision on examination must be notified
- 17A.21 Deferment of acceptance
- 17A.22 Period for which acceptance is deferred
- 17A.23 Expedited examination
- 17A.24 Final decision on examination
- 17A.26 Appeal
- 17A.27 Revocation of acceptance
- Subdivision 2 Grounds for rejecting IRDA
- Subdivision 3 Opposition to IRDA
- 17A.29 Opposition
- 17A.30 Extension of time for filing
- 17A.31 Grounds for opposing IRDA
- 17A.32 Circumstances in which opposition may proceed in name of a person other than the person who filed the notice
- 17A.33 Opposition proceedings
- 17A.34 Decision on opposition
- 17A.35 Appeal
- 17A.35A Cancellation
- 17A.35B Duties and powers of Registrar — notification of limitation by International Bureau
- Subdivision 4 Extension of protection
- Subdivision 1 General
- Division 4 Protected international trademarks — rights and protection
- Division 5 Protected international trademarks — amendment or cessation of protection
- Subdivision 1 Amendment or cessation of protection because of cancellation, limitation or non-renewal of international registration
- Subdivision 2 Amendment or cessation of protection by Registrar
- Subdivision 3 Amendment or cessation of protection by prescribed court
- Subdivision 4 Cessation of protection for non-use
- Division 6 Collective and certification trademarks
- Division 7 Transformation of cancelled international registrations
- Division 8 Concurrence between registration and international registration
- Division 9 Change in ownership of international registration
- Division 10 Recording of claimed interests and rights
- Division 11 Miscellaneous
- 17A.66 Record of International Registrations
- 17A.67 Inspection
- 17A.68 Evidence — the Record of International Registrations
- 17A.69 Evidence — international instruments
- 17A.70 Correction of errors or omissions in Record of International Registrations
- 17A.71 Passing off actions
- 17A.72 Documents to be made available for publici nspection
- 17A.73 Security for costs
- Part 19 Administration
- Part 20 Registered trade marks attorneys
- Division 1 General
- Division 2 Obtaining registration for first time
- 20.2 Form of application
- 20.3 Evidence that applicant meets registration requirements
- 20.4 Certificate of registration
- 20.5 Evidence of academic qualifications
- 20.6 Academic qualifications
- 20.7 Evidence of knowledge requirements
- 20.8 Knowledge requirements
- 20.9 Exemption from a requirement in Schedule 5 to Patents Regulations
- 20.10 Prescribed offences
- 20.11 Application of Schedule 5 to Patents Regulations
- Division 3 Accreditation of courses of study
- Division 4 Board examinations
- Division 5 Maintaining registration, removal from Register and returning to Register
- Division 6 Discipline
- Division 7 Rights of registered trade marks attorneys
- Part 21 Miscellaneous
- Division 1 Applications and other documents
- 21.1 Compliance with instructions on approved forms
- 21.2 Filing of documents — requirements as to form
- 21.3 Filing of documents — common requirements
- 21.4 Filing of documents — treatment of non-complying documents
- 21.5 Filing of documents — date of receipt to be marked
- 21.6 Declarations
- 21.7 Declarations — additional material
- 21.8 Notification of service
- 21.9 Notice of withdrawal of applications etc
- 21.10 Withdrawal of application etc — Registrar’s notice to applicants
- 21.11 Change of address for service — notice to interested persons
- 21.11A Documents to be made available for public inspection
- Division 2 Proceedings before the Registrar
- 21.12 Applications for costs
- 21.13 Determination of costs
- 21.14 Conduct of proceedings generally
- 21.15 Hearings by Registrar
- 21.16 Registrar not required to hold hearings
- 21.17 Evidence in proceedings
- 21.18 Documents not in English
- 21.19 Registrar may use information available
- 21.20 Statements of reasons for decision
- Division 3 General
- 21.21 What fees are payable
- 21.21A No action permitted until fee paid
- 21.22 How fees are to be paid
- 21.23 Notice of non-payment of fee
- 21.24 Refunds etc of fees
- 21.24A Period for doing certain acts — office not open for business
- 21.24B Days when office not open for business
- 21.24C Period for doing certain acts — acts to which section 223A does not apply
- 21.25 Extension of time — application
- 21.26 Extension of time — notice of opposition
- 21.27 Extension of time — opposition proceedings
- 21.28 Extension of time — prescribed acts and documents
- 21.29 Convention countries
- 21.30 Rights of registered patent attorneys
- 21.31 Incapacity of certain persons
- 21.32 Destruction of documents
- 21.33 Directions not otherwise prescribed
- 21.34 Requirements cannot be complied with for reasonable cause
- 21.35 Review of decisions
- Division 1 Applications and other documents
- Part 22 Transitional provisions
- 22.1 Application of the Act
- 22.2 Fees payable in relation to certain matters
- 22.3 Certain delegations continue
- 22.4 Certain deferments continue
- 22.5 Certain extensions of time continue
- 22.6 Deferment of acceptance — certain applications
- 22.7 Trade marks attorneys
- 22.8 Trade marks attorney examination requirements
- Schedule 1 Classification of goods and services
- Schedule 2 Signs that may not be registered as trade marks
- Schedule 3 Modifications of Part 13 of the Act — Norfolk Island
- Schedule 4 Modifications of Part 13 of the Act — Christmas Island
- Schedule 5 Modifications of Part 13 of theAct — Cocos (Keeling) Islands
- Schedule 6 Offices of persons to whom registrar may delegate
- Schedule 7 Requirements for documents
- Schedule 8 Costs, expenses andallowances
- Schedule 9 Fees
- Schedule 10 Convention countries
- Notes to the Trade Marks Regulations 1995
- Table of Amendments
- Table A Application, saving or transitional provisions
Trade Marks Regulations 1995
Statutory Rules 1995 No. 341 as amended
made under the
Trade Marks Act 1995
This compilation was prepared on 16 October 2010 taking into account amendments up to SLI 2010 No. 248
Prepared by the Office of Legislative Drafting and Publishing, Attorney-General’s Department, Canberra
Page
Contents
Part 1 Preliminary
1.1 Name of regulations [see Note 1] 14
1.2 Commencement 14
Part 2 Interpretation
2.1 Interpretation 15
2.2 Period expressed in months 16
Part 3 Trade marks and trade mark rights
3.1 Classification of goods and services 17
3.2 Period in which action for infringement may be brought 17
Part 3A Assisted filing service
Division 1 General
3A.1 Purpose of Part 18 3A.2 Definitions for Part 18
Division 2 Request for filing assistance
3A.3 Request for filing assistance — form of request 18 3A.4 AFS request — assessment by Registrar 20 3A.5 AFS request — formal requirements for
amendment or proceeding to Part 4 application 20
Part 4 Application for registration
4.1 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
5.1 Time for filing notice of opposition 40
5.2 Extension of time for filing — grounds 40
5.3 Extension of time for filing — applications 41
5.4 Extension of time for filing — grant of extension 41
5.5 Copy of earlier application to be available to opponent 42
5.6 Opposition proceedings 43
5.7 Evidence in support 43
5.8 Notice that opponent will not rely on evidence in support 43
5.9 Evidence in answer 43
5.10 Period for service of a copy of the evidence in answer 44
5.11 Notice that applicants will not rely on evidence in answer 44
5.12 Evidence in reply to evidence in answer 45
5.13 Notice that opponents will not rely on evidence in reply to evidence in answer 45
5.14 Hearing of opposition 46
5.15 Extension of period to serve evidence and service of further evidence 47
5.16 Conduct of opposition proceedings generally 48
5.17 Registrar to give notice of dismissal of proceedings 48 Page
5.18 Grounds for opposition to registration of a trade mark — trade mark identical etc to trade mark protected under Madrid Protocol 49
5.19 Amendment of notice of opposition 50
Part 6 Amendment of application for
registration of a trade mark and other
documents
6.1 Amendment of applications by Registrar 51
6.2 Request to amend before publication of details 51
6.3 Filing of declarations 51
6.4 Notification of amendments 52
6.5 Amendment after particulars published — notice of opposition 52
6.6 Amendment after particulars published — opposition proceedings 52
Part 7 Registration of trade marks
Division 1 Initial registration
7.1 Period in which a trade mark can be registered 53
7.2 Particulars to be entered in the Register 54
Division 2 Renewal of registration (general)
7.3 Period for request for renewal 55
7.4 Notice of renewal due — when and how given 55
7.5 Notice of renewal 55
Division 3 Renewal of registration (registration delayed for 10 or more years after filing date)
7.6 Prescribed period (Act s 80A (3)) 56
7.7 Notice about renewal (Act s 80C) 56
made under the
Trade Marks Act 1995
This compilation was prepared on 16 October 2010 taking into account amendments up to SLI 2010 No. 248
Prepared by the Office of Legislative Drafting and Publishing, Attorney-General’s Department, Canberra
Page
Part 1 Preliminary
1.2 Commencement 14
Part 2 Interpretation
2.2 Period expressed in months 16
Part 3 Trade marks and trade mark rights
3.2 Period in which action for infringement may be brought 17
Part 3A Assisted filing service
3A.1 Purpose of Part 18 3A.2 Definitions for Part 18
3A.3 Request for filing assistance — form of request 18 3A.4 AFS request — assessment by Registrar 20 3A.5 AFS request — formal requirements for
amendment or proceeding to Part 4 application 20
Part 4 Application for registration
4.2 Application in approved form — requirements for filing 23 4.2AA Divisional application — additional requirement for filing 24
4.2A AFS request submitted as application — requirements for filing 24
4.4 Specification of goods and/or services 26 Page
4.6 How to claim priority 27
4.7 Publication of particulars of application 27
4.8 Examination of application — report to applicant 28
4.9 Examination — applicant’s response to report 29
4.10 Examination — further report to applicant 29
4.11 Examination — additional requirements 30
4.12 Periods after which applications lapse 30
4.13 Deferment of acceptance 31
4.14 Period for which acceptance is deferred 33
4.15 Trade marks containing etc certain signs 36 4.15A Grounds for rejection — trade mark identical etc to trade mark protected under Madrid Protocol 36
4.18 Request for expedited examination of application 38
4.19 Expedited examinations 39
Part 5 Opposition to registration
5.2 Extension of time for filing — grounds 40
5.3 Extension of time for filing — applications 41
5.4 Extension of time for filing — grant of extension 41
5.5 Copy of earlier application to be available to opponent 42
5.6 Opposition proceedings 43
5.7 Evidence in support 43
5.8 Notice that opponent will not rely on evidence in support 43
5.9 Evidence in answer 43
5.10 Period for service of a copy of the evidence in answer 44
5.11 Notice that applicants will not rely on evidence in answer 44
5.12 Evidence in reply to evidence in answer 45
5.13 Notice that opponents will not rely on evidence in reply to evidence in answer 45
5.14 Hearing of opposition 46
5.15 Extension of period to serve evidence and service of further evidence 47
5.16 Conduct of opposition proceedings generally 48
5.17 Registrar to give notice of dismissal of proceedings 48 Page
5.19 Amendment of notice of opposition 50
Part 6 Amendment of application for
registration of a trade mark and other
documents
6.2 Request to amend before publication of details 51
6.3 Filing of declarations 51
6.4 Notification of amendments 52
6.5 Amendment after particulars published — notice of opposition 52
6.6 Amendment after particulars published — opposition proceedings 52
Part 7 Registration of trade marks
Division 1 Initial registration
7.2 Particulars to be entered in the Register 54
Division 2 Renewal of registration (general)
7.4 Notice of renewal due — when and how given 55
7.5 Notice of renewal 55
Division 3 Renewal of registration (registration delayed for 10 or more years after filing date)
7.7 Notice about renewal (Act s 80C) 56
Contents
1.1 Name of regulations [see Note 1] 14
2.1 Interpretation 15
3.1 Classification of goods and services 17
Division 1 General
Division 2 Request for filing assistance
4.1 Applications — approved form 23
4.3 Representation of trade marks 24
4.5 Period for claiming priority for an application 27
5.1 Time for filing notice of opposition 40
5.18 Grounds for opposition to registration of a trade mark — trade mark identical etc to trade mark protected under Madrid Protocol 49
6.1 Amendment of applications by Registrar 51
7.1 Period in which a trade mark can be registered 53
7.3 Period for request for renewal 55
7.6 Prescribed period (Act s 80A (3)) 56