Prepared by the Office of Parliamentary Counsel, Canberra
Trade Marks Regulations 1995
Statutory Rules No. 341, 1995
made under the
Trade Marks Act 1995
Compilation No. 41
Compilation date: 15 November 2016
Includes amendments up to: F2016L01754
Registered: 22 November 2016
Authorised Version F2016C00994 registered 22/11/2016
About this compilation
This compilation
This is a compilation of the Trade Marks Regulations 1995 that shows the text of the law as
amended and in force on 15 November 2016 (the compilation date).
The notes at the end of this compilation (the endnotes) include information about amending
laws and the amendment history of provisions of the compiled law.
Uncommenced amendments
The effect of uncommenced amendments is not shown in the text of the compiled law. Any
uncommenced amendments affecting the law are accessible on the Legislation Register
(www.legislation.gov.au). The details of amendments made up to, but not commenced at, the
compilation date are underlined in the endnotes. For more information on any uncommenced
amendments, see the series page on the Legislation Register for the compiled law.
Application, saving and transitional provisions for provisions and amendments
If the operation of a provision or amendment of the compiled law is affected by an
application, saving or transitional provision that is not included in this compilation, details are
included in the endnotes.
Editorial changes
For more information about any editorial changes made in this compilation, see the endnotes.
Modifications
If the compiled law is modified by another law, the compiled law operates as modified but the
modification does not amend the text of the law. Accordingly, this compilation does not show
the text of the compiled law as modified. For more information on any modifications, see the
series page on the Legislation Register for the compiled law.
Self-repealing provisions
If a provision of the compiled law has been repealed in accordance with a provision of the
law, details are included in the endnotes.
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Contents
Part 1—Preliminary 1 1.1 Name of regulations.......................................................... 1
Part 2—Interpretation 2 2.1 Interpretation .................................................................... 2
2.2 Period expressed in months .............................................. 3
2.3 Giving of documents by Registrar .................................... 3
Part 3—Trade marks and trade mark rights 4 3.1 Classification of goods and services ................................. 4
3.2 Period in which action for infringement may be
brought.............................................................................. 4
Part 3A—Assisted filing service 5
Division 1—General 5
3A.1 Purpose of Part.................................................................. 5
Division 2—Request for filing assistance 6
3A.3 Request for filing assistance—form of request ................. 6
3A.4 AFS request—assessment by Registrar ............................ 7
3A.5 AFS request—formal requirements for amendment
or proceeding to Part 4 application ................................... 7
Part 4—Application for registration 9 4.1 Applications—approved form .......................................... 9
4.2 Application in approved form—requirements for
filing ................................................................................. 9
4.2AA Divisional application—additional requirement for
filing ................................................................................. 9
4.2A AFS request submitted as application—
requirements for filing .................................................... 10
4.3 Representation of trade marks ........................................ 10
4.4 Specification of goods and/or services............................ 11
4.5 Period for claiming priority for an application................ 12
4.6 How to claim priority...................................................... 12
4.7 Publication of particulars of application ......................... 12
4.8 Examination of application—report to applicant ............ 13
4.9 Examination—applicant’s response to report ................. 13
4.10 Examination—further report to applicant ....................... 13
4.11 Examination—additional requirements .......................... 14
4.12 Periods after which applications lapse ............................ 14
4.13 Deferment of acceptance ................................................ 15
4.14 Period for which acceptance is deferred ......................... 16
4.15 Trade marks containing etc certain signs ........................ 18
4.15A Grounds for rejection—trade mark identical etc to
trade mark protected under Madrid Protocol .................. 18
4.18 Request for expedited examination of application .......... 20
4.19 Expedited examinations.................................................. 20
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Part 5—Opposition to registration 21
Division 1—Preliminary 21
5.1 What Part 5 is about........................................................ 21
5.2 Definitions ...................................................................... 21
5.3 Registrar may give direction about filing
document or evidence ..................................................... 21
5.4 Notification and opportunity to make
representations ................................................................ 22
Division 2—Filing of opposition documents 23
Subdivision A—Notice of opposition 23
5.5 Filing of notice of opposition.......................................... 23
5.6 Filing of notice of intention to oppose ............................ 23
5.7 Filing of statement of grounds and particulars................ 23
5.8 Statement of grounds and particulars must be
adequate.......................................................................... 23
5.9 Extension of time for filing—application ....................... 24
5.10 Extension of time for filing—grant................................. 25
5.11 Amendment of notice of intention to oppose .................. 25
5.12 Amendment of statement of grounds and
particulars ....................................................................... 25
Subdivision B—Notice of intention to defend 26
5.13 Filing of notice of intention to defend............................. 26
Subdivision C—Evidence 26
5.14 Filing of evidence ........................................................... 26
5.15 Extension of time for filing............................................. 27
Division 3—Cooling-off period for opposition 28
5.16 Registrar may allow cooling-off period .......................... 28
Division 4—Hearing of opposition 29
5.17 Hearing ........................................................................... 29
Division 5—Miscellaneous 30
5.18 Copy of earlier Convention application to be
available to opponent ...................................................... 30
5.19 Registrar may give direction........................................... 30
5.20 Registrar must notify parties of dismissal or
discontinuance of opposition .......................................... 30
Part 6—Amendment of application for registration of a trade
mark and other documents 31
Division 1—Amendment of application for registration of trade
mark and other documents 31
6.1 Amendment of applications by Registrar........................ 31
6.2 Request to amend before publication of details .............. 31
6.3 Filing of declarations ...................................................... 31
6.4 Notification of amendments............................................ 31
Division 2—Opposition to amendment after particulars
published 32
6.5 Definitions ...................................................................... 32
6.6 Notice of opposition ....................................................... 32
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6.7 Notification and opportunity to make
representations ................................................................ 32
6.8 Practice and procedure.................................................... 32
6.9 Hearing ........................................................................... 33
6.10 Registrar may give direction........................................... 33
6.11 Registrar must notify parties of dismissal or
discontinuance of opposition .......................................... 33
Part 7—Registration of trade marks 34
Division 1—Initial registration 34
7.1 Period in which a trade mark can be registered............... 34
7.2 Particulars to be entered in the Register.......................... 34
Division 2—Renewal of registration (general) 36
7.3 Period for request for renewal......................................... 36
7.4 Notice of renewal due—when and how given ................ 36
7.5 Notice of renewal............................................................ 36
Division 3—Renewal of registration (registration delayed for 10
or more years after filing date) 37
7.6 Prescribed period (Act s 80A(3)) .................................... 37
7.7 Notice about renewal (Act s 80C)................................... 37
7.8 Notice of renewal (Act s 80E) ........................................ 37
Part 8—Amendment and cancellation of registration 38 8.1 Notice of cancellation ..................................................... 38
8.1A Notice of revocation........................................................ 38
8.2 Amendment or cancellation—matters for the court ........ 38
8.3 Grounds for application for rectification of
Register—registered trade mark identical etc to
trade mark protected under Madrid Protocol .................. 39
8.4 Amendment because of inconsistency with
international agreements—notice of opposition.............. 39
8.5 Amendment because of inconsistency with
international agreements—opposition proceedings ........ 39
Part 9—Removal of trade mark from Register for non-use 40
Division 1—Preliminary 40
9.1 What Part 9 is about........................................................ 40
9.2 Definitions ...................................................................... 40
9.3 Registrar may give direction about filing
document or evidence ..................................................... 41
9.4 Notification and opportunity to make
representations ................................................................ 41
Division 2—Application for removal 42
9.5 Application for removal.................................................. 42
9.6 Notification of application .............................................. 42
Division 3—Filing of opposition documents 43
Subdivision A—Notice of opposition 43
9.7 Filing of notice of opposition.......................................... 43
9.8 Filing of notice of intention to oppose ............................ 43
9.9 Filing of statement of grounds and particulars................ 43
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9.10 Statement of grounds and particulars must be
adequate.......................................................................... 43
9.11 Extension of time for filing—application ....................... 44
9.12 Extension of time for filing—grant................................. 44
9.13 Amendment of notice of intention to oppose .................. 45
9.14 Amendment of statement of grounds and
particulars ....................................................................... 45
Subdivision B—Notice of intention to defend 45
9.15 Filing of notice of intention to defend............................. 45
Subdivision C—Evidence 46
9.16 Filing of evidence ........................................................... 46
9.17 Request for hearing and circumstances in which
opposition taken to have ended....................................... 47
9.18 Extension of time for filing............................................. 47
Division 4—Cooling-off period for opposition 48
9.19 Registrar may allow cooling-off period .......................... 48
Division 5—Hearing of opposition 49
9.20 Hearing ........................................................................... 49
Division 6—Miscellaneous 50
9.21 Registrar may give direction........................................... 50
9.22 Registrar must notify parties of dismissal or
discontinuance of opposition .......................................... 50
9.23 Removal of trade mark from register .............................. 50
Part 10—Assignment and transmission of trade marks 51 10.1 Applications for assignment etc to be recorded or
entered ............................................................................ 51
10.2 Recording of assignment etc—trade marks not
registered ........................................................................ 51
10.3 Particulars of recorded assignment or transmission
to be published................................................................ 52
10.4 Recording of assignment etc of registered trade
marks .............................................................................. 52
10.5 Notice to persons recorded as claiming right or
interest in trade marks..................................................... 53
Part 11—Voluntary recording of claims to interests in and
rights in respect of trade marks 54 11.1 Amendment of particulars—claimed interests or
rights ............................................................................... 54
11.2 Amendment of name, address and address for
service—claims not in the Register ................................ 54
11.3 Cancellation of particulars—claimed interests or
rights ............................................................................... 54
Part 13—Importation of goods infringing Australian trade
marks 56 13.1A Definition........................................................................ 56
13.1 Action period .................................................................. 56
13.2 Claim period ................................................................... 56
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13.3 Notice of objection to importationprescribed
document ........................................................................ 56
13.4 Notice of objection to importation—authorised
users................................................................................ 56
13.5 Claim for release of seized goods ................................... 57
13.6 Period for compliance with request of
Comptroller-General of Customs for information
etc. .................................................................................. 57
13.7 Modification of the Act in its application to
Norfolk Island................................................................. 57
13.8 Modification of the Act in its application to
Christmas Island ............................................................. 57
13.9 Modification of the Act in its application to Cocos
(Keeling) Islands............................................................. 58
Part 16—Certification trade marks 59 16.1 Copy of rules to be filed ................................................. 59
16.2 Documents to be sent to Commission............................. 59
16.3 Initial assessment of applications by Commission.......... 59
16.4 Holding of conferences ................................................... 60
16.5 Consideration of applications ......................................... 61
16.6 Criteria for Commission consideration of rules .............. 62
16.7 Matters to be included in advertisement of adverse
decision........................................................................... 62
16.8 Applications to vary rules ............................................... 62
16.9 Consideration of applications to vary rules..................... 62
16.10 Decision on variation of rules ......................................... 63
16.10A Assignment of unregistered certification trade
marks .............................................................................. 63
16.11 Assignment of registered certification trade marks......... 64
16.12 Publication of rules ......................................................... 64
Part 17—Defensive trade marks 66 17.1 Evidence in support of applications ................................ 66
17.2 Defensive trade mark based on protected
international trade mark .................................................. 66
Part 17A—Protected international trade marks under the
Madrid Protocol 67
Division 1—General 67
17A.1 Purpose of Part................................................................ 67
17A.2 Definitions for Part ......................................................... 67
17A.3 Meaning of priority date................................................. 68
17A.4 Meaning of date of effect ................................................ 68
Division 2—Application for international registration of a trade
mark 70
17A.5 Purpose of Division ........................................................ 70
17A.6 Eligibility to apply for international registration............. 70
17A.7 Application for international registration........................ 70
17A.8 Functions of Registrar..................................................... 70
17A.9 Time limit for Registrar to send application to
International Bureau ....................................................... 71
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17A.10 Subsequent designations ................................................. 71
Division 3—International registration designating Australia 72
Subdivision 1—General 72
17A.11 Purpose of Division ........................................................ 72
17A.12 Registrar to examine, and report on, IRDA .................... 72
17A.13 Use of trade mark............................................................ 72
17A.14 Specification of goods and services ................................ 72
17A.14A Representation of trade marks ........................................ 73
17A.15 Claim for priority............................................................ 73
17A.16 Examination of IRDA—report to holder ........................ 74
17A.17 Examination—holder’s response to report...................... 74
17A.18 Examination—further report to holder............................ 74
17A.19 Examination—additional requirements .......................... 75
17A.20 Period within which final decision on examination
must be notified .............................................................. 75
17A.21 Deferment of acceptance ................................................ 76
17A.22 Period for which acceptance is deferred ......................... 77
17A.23 Expedited examination ................................................... 79
17A.24 Final decision on examination ........................................ 79
17A.25 Notice of final decision on examination ......................... 79
17A.26 Appeal............................................................................. 80
17A.27 Revocation of acceptance ............................................... 80
Subdivision 2—Grounds for rejecting IRDA 80
17A.28 Grounds for rejecting IRDA ........................................... 80
Subdivision C—Opposition to IRDA 81
17A.29 Definitions ...................................................................... 81
17A.30 Registrar may give direction about filing
document or evidence ..................................................... 81
17A.31 Notification and opportunity to make
representations ................................................................ 82
17A.32 Filing of notice of opposition.......................................... 82
17A.33 Filing of notice of intention to oppose ............................ 82
17A.34 Grounds for opposing IRDA........................................... 83
17A.34A Filing of statement of grounds and particulars................ 83
17A.34B Statement of grounds and particulars must be
adequate.......................................................................... 83
17A.34C Extension of time for filing—application ....................... 84
17A.34D Extension of time for filing—grant................................. 85
17A.34E Opposition may proceed in name of other person........... 85
17A.34F Amendment of notice of intention to oppose .................. 85
17A.34G Amendment of statement of grounds and
particulars ....................................................................... 86
17A.34H Filing of notice of intention to defend............................. 86
17A.34J Filing of evidence ........................................................... 87
17A.34K Extension of time for filing............................................. 88
17A.34L Registrar may allow cooling-off period .......................... 88
17A.34M Hearing ........................................................................... 89
17A.34N Decision on opposition ................................................... 90
17A.34P Appeal............................................................................. 90
17A.34Q Registrar may give direction........................................... 90
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17A.35 Registrar must notify parties of dismissal or
discontinuance of opposition .......................................... 91
Subdivision 3A—Cancellation or limitation of an international
registration 91
17A.35A Cancellation .................................................................... 91
17A.35B Duties and powers of Registrar—notification of
limitation by International Bureau .................................. 91
Subdivision 4—Extension of protection 92
17A.36 When trade mark becomes a protected
international trade mark .................................................. 92
17A.37 Notice that trade mark is a protected international
trade mark ....................................................................... 93
17A.38 Disclaimer....................................................................... 94
Division 4—Protected international trade marks—rights and
protection 95
17A.39 Rights given to, and protection of, protected
international trade marks ................................................ 95
17A.40 Circumstances in which action may not be brought........ 95
Division 5—Protected international trade marks—amendment
or cessation of protection 97
Subdivision 1—Amendment or cessation of protection because of
cancellation, limitation or non-renewal of
international registration 97
17A.41 Cancellation of international registration........................ 97
17A.41A Duties and powers of Registrar—notification of
limitation by International Bureau .................................. 97
17A.42 Failure to renew international registration ...................... 98
Subdivision 2—Amendment or cessation of protection by
Registrar 98
17A.42A Registrar’s powers to amend or cease protection ............ 98
17A.42B Notice to be given ......................................................... 100
17A.42C Hearings and procedure ................................................ 100
17A.42D Effect of amendment or cessation of protection by
Registrar ....................................................................... 100
17A.42E Registrar to notify Comptroller-General of
Customs ........................................................................ 101
17A.42F Appeals to Federal Court or Federal Magistrates
Court ............................................................................. 101
Subdivision 3—Amendment or cessation of protection by
prescribed court 101
17A.43 Amendment or cessation of protection—
contravention of condition ............................................ 101
17A.44 Amendment or cessation of protection—loss of
exclusive rights to use trade mark................................. 102
17A.45 Amendment or cessation of protection—other
specified grounds .......................................................... 102
17A.46 Amendment or cessation may not be granted if
holder not at fault etc .................................................... 103
17A.47 Duties and powers of Registrar ..................................... 104
Subdivision D—Cessation of protection for non-use 104
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17A.48 Definitions .................................................................... 104
17A.48A Registrar may give direction about filing
document or evidence ................................................... 105
17A.48B Notification and opportunity to make
representations .............................................................. 105
17A.48C Application for cessation of protection ......................... 105
17A.48D Cessation of protection ................................................. 106
17A.48E Notification of application ............................................ 106
17A.48F Filing of notice of opposition........................................ 106
17A.48G Filing of notice of intention to oppose .......................... 107
17A.48H Opponent must have address for service....................... 107
17A.48J Filing of statement of grounds and particulars.............. 107
17A.48K Statement of grounds and particulars must be
adequate........................................................................ 107
17A.48L Extension of time for filing—application ..................... 108
17A.48M Extension of time for filing—grant............................... 108
17A.48N Amendment of notice of intention to oppose ................ 109
17A.48P Amendment of statement of grounds and
particulars ..................................................................... 109
17A.48Q Filing of notice of intention to defend........................... 109
17A.48R Filing of evidence ......................................................... 110
17A.48S Request for hearing and circumstances in which
opposition taken to have ended..................................... 111
17A.48T Extension of time for filing........................................... 111
17A.48U Registrar may allow cooling-off period ........................ 112
17A.48V Hearing ......................................................................... 112
17A.48W Registrar may give direction......................................... 113
17A.48X Registrar must notify International Bureau................... 113
17A.48Y Registrar must notify parties of dismissal or
discontinuance of opposition ........................................ 113
17A.48Z Cessation of protection of protected international
trade mark ..................................................................... 114
Division 6—Collective and certification trade marks 115
17A.49 Collective trade marks .................................................. 115
17A.50 Certification trade marks .............................................. 115
Division 7—Transformation of cancelled international
registrations 117
17A.51 Application of Division ................................................ 117
17A.52 Transformation of IRDA .............................................. 117
17A.53 Transformation of protected international trade
mark.............................................................................. 117
Division 8—Concurrence between registration and international
registration 118
17A.54 Effect of registration and protection of the same
trade mark ..................................................................... 118
17A.55 Effect of cancellation, removal or expiry of
registered trade mark .................................................... 118
Division 9—Change in ownership of international registration 119
17A.56 Application of Division ................................................ 119
17A.57 Collective trade marks .................................................. 119
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17A.58 Protected certification trade marks ............................... 119
17A.58A Unprotected certification trade marks ........................... 119
17A.59 Trade marks affected by claimed interests and
rights ............................................................................. 119
17A.60 Recording change of ownership.................................... 120
Division 10—Recording of claimed interests and rights 121
17A.61 Application to have claims recorded............................. 121
17A.62 Recording of claims ...................................................... 121
17A.63 Notification of matters affecting trade mark ................. 121
17A.64 Record not proof etc of existence of right etc ............... 121
17A.65 Amendment or cancellation of record........................... 121
Division 11—Miscellaneous 122
17A.66 Record of International Registrations ........................... 122
17A.67 Inspection...................................................................... 122
17A.68 Evidence—the Record of International
Registrations ................................................................. 123
17A.69 Evidence—international instruments ............................ 123
17A.70 Correction of errors or omissions in Record of
International Registrations............................................ 123
17A.71 Passing off actions ........................................................ 124
17A.72 Documents to be made available for public
inspection...................................................................... 124
17A.73 Security for costs .......................................................... 124
17A.74 Address for service of documents ................................. 124
Part 19—Administration 127 19.1 Trade Marks Office and sub-offices—business
hours ............................................................................. 127
19.2 Persons to whom Registrar may delegate (Act, s
206(1)) .......................................................................... 127
Part 20—Registered trade marks attorneys 128
Division 1—General 128
20.1A Application of Part........................................................ 128
20.1 Interpretation ................................................................ 128
Division 2—Obtaining registration for first time 129
20.2 Form of application....................................................... 129
20.3 Evidence that applicant meets registration
requirements ................................................................. 129
20.4 Certificate of registration .............................................. 129
20.5 Evidence of academic qualifications............................. 129
20.6 Academic qualifications ............................................... 130
20.7 Evidence of knowledge requirements ........................... 130
20.8 Knowledge requirements .............................................. 130
20.9 Exemption from a requirement in Schedule 5 to
Patents Regulations....................................................... 131
20.10 Prescribed offences ....................................................... 131
20.11 Application of Schedule 5 to Patents Regulations ........ 132
Division 3—Accreditation of courses of study 133
20.12 Accreditation of courses of study.................................. 133
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Division 4—Board examinations 134
20.13 Board examinations ...................................................... 134
Division 5—Maintaining registration and removing and
restoring name to Register of Trade Marks
Attorneys 135
20.14 Maintaining registration and removing and
restoring name to Register of Trade Marks
Attorneys ...................................................................... 135
Division 5A—Suspension of registration 136
20.14A Requirement to notify of serious offence...................... 136
20.14B Suspension from Register—serious offence ................. 136
Division 6—Discipline 138
20.15 Discipline...................................................................... 138
Division 7—Rights of registered trade marks attorneys 139
20.16 Lien............................................................................... 139
Part 20A—Incorporated trade marks attorneys 140
Division 1—General 140
20A.1 Application of Part 20A................................................ 140
20A.2 Definitions .................................................................... 140
Division 2—Obtaining registration for first time 141
20A.3 Form of application....................................................... 141
20A.4 Certificate of registration .............................................. 141
Division 3—Maintaining registration 142
20A.5 Requirements for remaining on Register of Trade
Marks Attorneys ........................................................... 142
Division 4—Removal from Register of Trade Marks Attorneys 143
20A.6 Voluntary removal of name from Register of
Trade Marks Attorneys ................................................. 143
20A.7 Failure to pay annual registration fee............................ 143
20A.8 Failure to maintain professional indemnity
insurance....................................................................... 143
Division 5—Discipline 144
Subdivision A—General 144
20A.9 Definitions .................................................................... 144
20A.10 Board may apply for cancellation or suspension of
incorporated trade marks attorney’s registration........... 144
Subdivision B—Proceedings in Disciplinary Tribunal 145
20A.11 Procedure of Disciplinary Tribunal............................... 145
20A.12 Notification of hearing.................................................. 145
20A.13 Hearings to be public except in special
circumstances................................................................ 145
20A.14 Representation before Disciplinary Tribunal ................ 146
20A.15 Summoning of witnesses .............................................. 146
20A.16 Offences by persons appearing before Disciplinary
Tribunal ........................................................................ 146
20A.17 Protection of person constituting Disciplinary
Tribunal, witnesses etc.................................................. 147
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20A.18 Decision of Disciplinary Tribunal................................. 148
20A.19 Notification and publication of decisions of
Disciplinary Tribunal.................................................... 148
20A.20 Completion of outstanding business ............................. 149
20A.21 Former attorney may be required to provide
assistance ...................................................................... 149
Division 6—Returning to Register of Trade Marks Attorneys 151
20A.22 Restoring name to Register of Trade Marks
Attorneys ...................................................................... 151
Part 21—Miscellaneous 152
Division 1—Applications and other documents 152
21.1 Compliance with instructions on approved forms......... 152
21.2 Filing of documents—requirements as to form............. 152
21.3 Filing of documents—common requirements............... 152
21.4 Filing of documents—treatment of non-complying
documents..................................................................... 152
21.5 Filing of documents—date of receipt to be marked ...... 153
21.6 Declarations .................................................................. 153
21.7 Declarations—additional material ................................ 153
21.8 Notification of service .................................................. 154
21.9 Notice of withdrawal of applications etc ...................... 154
21.10 Withdrawal of application etc—Registrar’s notice
to applicants.................................................................. 154
21.11 Change of address for service—notice to
interested persons.......................................................... 154
21.11A Documents to be made available for public
inspection...................................................................... 155
Division 2—Proceedings before the Registrar 156
21.12 Applications for costs ................................................... 156
21.13 Award of costs .............................................................. 156
21.14 Conduct of proceedings generally................................. 156
21.15 Opportunity to be heard by Registrar............................ 157
21.16 Written submissions and oral hearings ......................... 158
21.17 Evidence in proceedings ............................................... 158
21.18 Documents not in English............................................. 159
21.19 Registrar may use information available....................... 159
21.20 Statements of reasons for decision................................ 159
Division 2A—Extensions of time 160
21.20A Definitions .................................................................... 160
21.20B Notice of opposition ..................................................... 160
21.20C Notification and opportunity to make
representations .............................................................. 160
21.20D Practice and procedure.................................................. 160
21.20E Hearing ......................................................................... 161
21.20F Registrar may give direction......................................... 161
21.20G Registrar must notify parties of dismissal or
discontinuance of opposition ........................................ 162
Division 3—General 163
21.21 What fees are payable ................................................... 163
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21.21AA Approved means ........................................................... 164
21.21A No action permitted until fee paid................................. 164
21.22 How fees are to be paid................................................. 164
21.23 Notice of non-payment of fee ....................................... 165
21.24 Refunds etc of fees........................................................ 165
21.24A Period for doing certain acts—office not open for
business......................................................................... 165
21.24B Days when office not open for business ....................... 165
21.24C Period for doing certain acts—acts to which
section 223A does not apply ......................................... 166
21.25 Extension of time—application .................................... 166
21.28 Extension of time—prescribed acts and documents...... 167
21.29 Convention countries .................................................... 168
21.30 Rights of registered patent attorneys............................. 168
21.31 Incapacity of certain persons ........................................ 168
21.33 Directions not otherwise prescribed.............................. 169
21.34 Requirements cannot be complied with for
reasonable cause ........................................................... 169
21.35 Review of decisions ...................................................... 169
Part 22—Transitional provisions 171
Division 1—General 171
22.1 Application of the Act................................................... 171
22.2 Fees payable in relation to certain matters .................... 171
22.3 Certain delegations continue......................................... 172
22.4 Certain deferments continue ......................................... 172
22.5 Certain extensions of time continue.............................. 173
22.6 Deferment of acceptance—certain applications............ 173
22.7 Trade marks attorneys................................................... 173
22.8 Trade marks attorney examination requirements .......... 173
Division 2—Amendments made by particular instruments 175
22.9 Amendments made by the Intellectual Property
Legislation Amendment (Raising the Bar)
Regulation 2013 (No. 1)................................................ 175
22.10 Amendments made by the Customs and Other
Legislation Amendment (Australian Border Force)
Regulation 2015............................................................ 178
22.11 Amendments made by the Trade Marks
Amendment (Fees) Regulation 2016 ............................. 178
22.12 Amendments made by the Intellectual Property
Legislation Amendment (Fee Review)
Regulation 2016............................................................ 178
22.13 Amendment made by Schedule 5 to the
Intellectual Property Legislation Amendment
(Single Economic Market and Other Measures)
Regulation 2016............................................................ 178
Schedule 1—Classification of goods and services 180
Part 1—Classes of goods 180
Part 2—Classes of services 183
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Schedule 2—Signs that may not be registered as trade
marks 184
Schedule 3—Modifications of Part 13 of the Act
(Norfolk Island) 185
Schedule 4—Modifications of Part 13 of the Act
(Christmas Island) 187
Schedule 5—Modifications of Part 13 of the Act
(Cocos (Keeling) Islands) 189
Schedule 6—Offices of persons to whom registrar may
delegate 191
Schedule 7—Requirements for documents 192
Schedule 8—Costs, expenses and allowances 193
Part 1—Costs 193
Part 2—Expenses and allowances 194
Division 1—Expenses 194
Division 2—Allowances 195
Schedule 9—Fees 196 1 Table of fees ................................................................. 196
Endnotes 199
Endnote 1—About the endnotes 199
Endnote 2—Abbreviation key 200
Endnote 3—Legislation history 201
Endnote 4—Amendment history 204
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Part 1—Preliminary
1.1 Name of regulations
These Regulations are the Trade Marks Regulations 1995.
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Part 2 Interpretation
Regulation 2.1
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Part 2—Interpretation
2.1 Interpretation
In these Regulations, unless the contrary intention appears:
AAT means the Administrative Appeals Tribunal.
ACCC means the Australian Competition and Consumer Commission
established under the Trade Practices Act 1974.
accredited course of study means a course of study that is accredited by the
Board under regulation 20.2A of the Patents Regulations 1991.
Act means the Trade Marks Act 1995.
AFS request has the meaning given by subregulation 3A.3(1).
approved means, for doing an action, means the means specified for the action
by the Registrar in a notice made under regulation 21.21AA and published by the
Registrar.
Board means the Professional Standards Board for Patent and Trade Marks
Attorneys established by section 227A of the Trade Marks Act 1990.
certificate of verification means a statement:
(a) that a document to which the statement relates:
(i) has been translated by a person who is proficient in both the language
from which the document has been translated into English and
English; and
(ii) is a true and complete translation of the accompanying document to
the best of the knowledge of the person who signs the statement; and
(b) that is dated and signed.
Code of Conduct means the standard of practice titled “Code of Conduct for
Patent and Trade Mark Attorneys” that is established by the Board from time to
time.
Designated Manager has the same meaning as in the Patents Act 1990.
Disciplinary Tribunal means the Patent and Trade Marks Attorneys Disciplinary
Tribunal established by regulation 20.61 of the Patents Regulations 1991.
earlier application, in relation to an application for the registration of a trade
mark for which a right of priority is claimed, means an application for the
registration of that trade mark in a Convention country:
(a) that was filed, at the trade marks office (or its equivalent) of that
Convention country, before the application for which the right of priority is
claimed; and
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(b) on which the claim for the right of priority is based.
International Register has the meaning given by regulation 17A.2.
international registration has the meaning given by regulation 17A.2.
IRDA has the meaning given by regulation 17A.2.
Madrid Protocol means the Protocol Relating to the Madrid Agreement
concerning the International Registration of Marks, as signed at Madrid on
28 June 1989.
month, for a period with a length expressed in months, has the meaning given by
regulation 2.2.
priority date, for a trade mark that is the subject of an IRDA or a protected
international trade mark, has the meaning given by regulation 17A.3.
protected international trade mark has the meaning given by regulation 17A.2.
Record of International Registrations has the meaning given by
regulation 17A.2.
Register of Trade Marks Attorneys means the register mentioned in
section 228A of the Act.
requester has the meaning given by subregulation 3A.3(1).
2.2 Period expressed in months
In these Regulations, a period expressed in months and dating from an event,
ends:
(a) on the day, in the relevant subsequent month, which has the same number
as the day of the event; or
(b) if the relevant subsequent month has no day with the same number—on the
last day of the month.
Note: This provision expresses a contrary intention to section 2G and subsection 36(1) of the
Acts Interpretation Act 1901, and is in accordance with the Madrid Protocol. The
difference between the two occurs when the initiating event is on the last day of a
calendar month, which has fewer days than the month in which the period ends. For
example, a period of 3 months from an event on 30 September ends on 30 December
under this rule; it would end on 31 December under the Acts Interpretation Act 1901
provisions.
2.3 Giving of documents by Registrar
(1) In these Regulations, the Registrar may give a document to a person by:
(a) making the document available to the person in an electronic form; and
(b) notifying the person that the document is available.
(2) If the Registrar gives a document to a person, the document is taken to have been
given to the person on the day the document is dated by the Registrar.
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Regulation 3.1
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Part 3—Trade marks and trade mark rights
3.1 Classification of goods and services
(1) For the purposes of subsection 19(3) of the Act (which deals with the
classification of goods and services):
(a) goods are divided into the classes of goods described in column 2 of Part 1
of Schedule 1; and
(b) services are divided into the classes of services described in column 2 of
Part 2 of Schedule 1.
(2) Each class of goods or services described in Schedule 1 has:
(a) a class number corresponding to the item number of that class in column 1
of Part 1 or 2 of Schedule 1; and
(b) a class heading corresponding to the description of that class in column 2
of Part 1 or 2 of Schedule 1.
3.2 Period in which action for infringement may be brought
For the purposes of paragraph 26(1)(b) of the Act (which deals with powers of
the authorised user of a trade mark), the prescribed period is 2 months from the
day on which the authorised user of a trade mark asks the registered owner of the
trade mark to bring an action for infringement of the trade mark.
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Part 3A—Assisted filing service
Division 1—General
3A.1 Purpose of Part
This Part provides for an assisted filing service to enable a person proposing to
make an application under Part 4 of the Act to request:
(a) a preliminary assessment from the Registrar concerning the likelihood of
the application for the proposed trade mark being successful under Part 4
of the Act; and
(b) information concerning the requirements for registration under Part 4 of the
Act.
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Division 2—Request for filing assistance
3A.3 Request for filing assistance—form of request
(1) A person proposing to submit an application under Part 4 of the Act (a requester)
may submit a request for filing assistance (an AFS request) under this Part.
(2) An AFS request must:
(a) be supported by such material and attachments as required by the Registrar
having regard to the requirements of Part 4 of the Act in relation to an
application for registration; and
(b) be accompanied by the fee prescribed for the AFS request.
(3) An AFS request:
(a) must be submitted in a manner required by the Registrar; and
(b) must contain the name of the requester; and
(c) must contain contact details that includes the business or residential
address and a telephone number for the requester, and:
(i) the fax number of the requester; or
(ii) the email address of the requester; and
(d) must include a representation of the trade mark that is sufficient to identify
the trade mark; and
(e) must specify the goods and/or services in relation to which the request is
made; and
(f) must not relate to a matter notified by the Registrar in the Official Journal
to be a matter for which an AFS request is not available; and
(g) if the AFS request relates to a matter for which the Registrar has notified
conditions in the Official Journal—must comply with the conditions.
(4) If the fee mentioned in paragraph (2)(b) remains unpaid 5 working days after an
AFS request is submitted, the AFS request is incomplete and is taken not to have
been submitted.
(5) A requester may amend an AFS request before it is assessed by the Registrar by
advising the Registrar of the details of the amendments and providing:
(a) any material to be added to the AFS request; and
(b) any other document required by the Registrar in relation to the amendment;
and
(c) any fee prescribed in relation to the amendment.
(6) For the fee prescribed for an amendment mentioned in paragraph (5)(c), the
Registrar may:
(a) decide to waive the fee; or
(b) decide not to waive the fee, and require that payment of the fee be made
within the period of 5 working days after that decision.
(7) The Registrar must amend the AFS request on receipt of an amendment:
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(a) that complies with subregulation (5); and
(b) in respect of which the fee, if any, has been paid.
3A.4 AFS request—assessment by Registrar
(1) After receiving an AFS request the Registrar must, as soon as practicable, assess
the AFS request having regard to the requirements of Part 4 of the Act and form
an opinion whether or not:
(a) the AFS request would, if submitted in that form as an application for
registration under Part 4 of the Act, be in accordance with that Part; and
(b) there would be grounds under Division 2 of Part 4 of the Act for rejecting
the AFS request.
(2) After forming an opinion the Registrar must, as soon as practicable, inform the
requester of:
(a) the opinion; and
(b) the procedural requirements of regulation 3A.5 for making an amendment
to the AFS request; and
(c) the procedural requirements for making an application for the registration
of a trade mark under Part 4 of the Act.
(3) The Registrar may inform the requester:
(a) in writing, by mail, fax or email; or
(b) by telephone; or
(c) in person.
3A.5 AFS request—formal requirements for amendment or proceeding to Part 4
application
(1) The requester may, within 5 working days after being informed by the Registrar
under subregulation 3A.4(2):
(a) amend the AFS request under subregulation 3A.5(2); or
(b) submit the AFS request as an application for registration of a trade mark
under Part 4 of the Act by payment of the fee prescribed for that Part.
(2) If the requester advises the Registrar under paragraph (1)(a) that the AFS request
is to be amended:
(a) for the purpose of adding one or more classes of goods or services to the
AFS request; or
(b) to significantly change the graphical representation of the trade mark;
the advice must include:
(c) details of the goods and/or services or the graphical representation; and
(d) any material to be attached to the AFS request; and
(e) any other document required by the Registrar; and
(f) any fee prescribed in relation to the amendment.
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(3) For the fee prescribed for an amendment mentioned in subregulation (2), the
Registrar may:
(a) decide to waive the fee; or
(b) decide not to waive the fee, and require that payment of the fee be made
within the period of 5 working days after that decision.
(4) For an amended AFS request to which subregulation (2) applies, and in respect
of which the fee mentioned in subregulation (3) has been paid or waived:
(a) the Registrar must amend the AFS request and as soon as practicable:
(i) assess the amended AFS request in accordance with regulation 3A.4;
and
(ii) inform the requester under subregulation 3A.4(2); and
(b) the period mentioned in subregulation (1) is extended to 5 working days
after the Registrar informs the requester in accordance with
subparagraph (a)(ii).
(5) If the requester advises the Registrar that the AFS request is to be amended for a
purpose other than that mentioned in subregulation (2), the Registrar:
(a) must amend the AFS request; and
(b) may assess the amended AFS request, insofar as the Registrar considers
practicable, having regard to:
(i) the complexity of the amendments requested; and
(ii) the length of time that remains of the period mentioned in
subregulation (1); and
(c) insofar as it has been practicable to assess the amended AFS request—must
inform the requester of the assessment.
(6) An AFS request is discontinued if a requester fails to submit an application under
Part 4 of the Act after following the procedure mentioned in subregulation (1).
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Part 4—Application for registration
4.1 Applications—approved form
(1) For subsection 27(2) of the Act (which deals with applications for registration),
an application for the registration of a trade mark must be:
(a) in an approved form; or
(b) an AFS request mentioned in Part 3A, in respect of which all fees were
paid within the prescribed time limits.
(2) Any material that is intended by the applicant to form part of the application for
registration of a trade mark:
(a) must be attached to the application; and
(b) is taken to be part of the application.
4.2 Application in approved form—requirements for filing
(1) To be taken to be filed, an application for registration of a trade mark that is in an
approved form must:
(a) state that the application is for registration of the trade mark, or contain a
clear indication to that effect; and
(b) include a representation of the trade mark that is sufficient to identify the
trade mark; and
(c) specify the goods and/or services in relation to which the application is
made; and
(d) include sufficient information to enable the Registrar to establish the
identity of the applicant; and
(e) contain sufficient information to enable the Registrar to contact the
applicant.
(2) If an application does not meet a requirement set out in paragraph (1)(a), (b), (c)
or (d), the Registrar must give to the applicant written notice of the requirement.
(3) If the applicant meets the requirement within a period of 2 months from the date
of the notice, the application is taken to be filed on the day on which the
requirement is met.
(4) If the applicant does not meet the requirement within that period, the application
is taken not to have been filed.
4.2AA Divisional application—additional requirement for filing
A divisional application must contain the following information:
(a) a statement that the application is a divisional application;
(b) a statement identifying the parent application.
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4.2A AFS request submitted as application—requirements for filing
An AFS request that is submitted as an application for registration of a trade
mark under this Part may be taken as having been filed only if the Registrar is
satisfied that all fees have been paid in respect of the application within the
period of 5 working days mentioned in subregulation 3A.5(1).
4.3 Representation of trade marks
(1) If practicable, the representation of a trade mark included in an application for
registration of the trade mark must not exceed 8 centimetres by 8 centimetres.
(2) In an application for the registration of 2 or more trade marks as a series, the
representation of each trade mark in the series must, if practicable, not exceed 8
centimetres by 8 centimetres.
(3) In an application for the registration of a trade mark that contains, or consists of,
a 3 dimensional shape:
(a) if practicable, the representation of the trade mark in the application must
be illustrated in a perspective that shows each feature of the trade mark;
and
(b) otherwise, the representation of the trade mark in the application must
include views of the trade mark that are necessary to show each feature of
the trade mark.
(4) If the Registrar reasonably believes that the views of a trade mark to which
paragraph (3)(a) or (b) applies are not sufficient to allow all features of the trade
mark to be properly examined, the Registrar may, by notice in writing, require
the applicant to give to the Registrar up to 6 additional views of the trade mark
that show the features sufficiently to permit proper examination of the trade
mark.
(5) If the representation of a trade mark in an application for registration of the trade
mark includes words of a language other than English, the applicant must file in
support of the application a translation of the words into English, if required to
do so by the Registrar at the time of application or later.
(6) If the representation of a trade mark in an application for registration of the trade
mark includes characters constituting words, being characters that are not roman
letters, the applicant must file in support of the application:
(a) a transliteration of the characters into roman letters, using the recognised
system of romanisation of the characters (if any); and
(b) a translation of the words into English.
(7) If a trade mark for which registration is sought contains or consists of a sign that
is a colour, scent, shape, sound or an aspect of packaging, or any combination of
those features, the application for registration of the trade mark must include a
concise and accurate description of the trade mark.
(8) If the Registrar reasonably believes that the description or representation of a
trade mark in an application for registration of the trade mark does not:
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(a) demonstrate the nature of the trade mark sufficiently; or
(b) show each feature of the trade mark sufficiently;
to permit proper examination of the trade mark, the Registrar may require the
applicant to give to the Registrar:
(c) a description, or further description, of the trade mark; and
(d) a specimen of the trade mark.
(9) If a representation of a single trade mark exceeds, or the representations of the
trade marks in a series of trade marks together exceed, 8 centimetres by 8
centimetres, the representation or representations:
(a) must be attached to the application for registration of the trade mark or
trade marks; and
(b) must be taken to be part of the application.
(10) The representation of a trade mark in an application for registration of the trade
mark must be of a kind and quality that:
(a) ensures that the features of the trade mark will be preserved in the course
of time; and
(b) is suitable for reproduction.
4.4 Specification of goods and/or services
(1) For the purposes of paragraph 27(3)(b) of the Act, the following subregulations
set out the manner of specifying, in an application for the registration of a trade
mark, the goods and/or services in respect of which registration is sought.
(2) The expression ‘all goods’, ‘all services’, ‘all other goods’, or ‘all other services’
must not be used in an application for registration of a trade mark to specify the
goods and/or services in respect of which registration is sought.
(3) The goods and/or services must be grouped according to the appropriate classes
described in Schedule 1.
(4) The applicant must nominate the class number that is appropriate to the goods or
services in each group.
(5) The groups must be listed in the order of their class numbers.
(6) The goods and/or services must, as far as practicable, be specified in terms
appearing in any listing of goods and services that is:
(a) published by the Registrar; and
(b) made available for inspection by the public at the Trade Marks Office and
its sub-offices (if any).
(7) If any of the goods and/or services cannot be specified using terms referred to in
subregulation (6), the applicant must provide sufficient information to enable the
Registrar to decide the classification of the goods and/or services.
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4.5 Period for claiming priority for an application
For the purposes of subsection 29(1) of the Act (which deals with claims for
priority), the prescribed period in relation to a claim for a right of priority for an
application is 2 working days after filing the application.
4.6 How to claim priority
(1) For the purposes of subsection 29(1) of the Act (which deals with claims for
priority), an applicant must claim a right of priority for an application by filing
notice of the claim.
(2) Any notice under subregulation (1) must specify, in respect of the earlier
application or, if there is more than 1 earlier application, in respect of each
earlier application:
(a) the Convention country in which the earlier application was filed at the
trade marks office (or its equivalent) of that Convention country; and
(b) the date on which the earlier application was filed.
(3) If, as a result of a claim for a right of priority, more than 1 priority date applies in
relation to an application, a person who claims a right of priority under
subsection 29(1) of the Act must specify the goods and/or services to which each
priority date relates.
(4) The applicant must inform the Registrar of the number allocated to each earlier
application in the trade marks office, or its equivalent, of the Convention country
in which each earlier application was filed.
4.7 Publication of particulars of application
(1) For the purposes of section 30 of the Act (which deals with publishing
particulars of applications), the Registrar must publish the following particulars
of the application:
(a) if a number has been allocated to the application in the Trade Marks
Office—the number;
(b) the applicant’s name;
(c) the date of filing the application;
(d) if the application is a divisional application—particulars of the parent
application;
(e) particulars of any claim for a right of priority for the application;
(f) the class number or numbers for the goods and/or services in respect of
which registration of the trade mark is sought.
(2) The particulars must be published in 1, or more than 1, of the following ways:
(a) publication in the Official Journal;
(b) listing in a computer database maintained by the Trade Marks Office;
(3) If, before 1 January 2001, an application by:
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(a) the Sydney Organising Committee for the Olympic Games constituted by
the Sydney Organising Committee for the Olympic Games Act 1993 of
New South Wales; or
(b) Sydney Paralympic Organising Committee Limited incorporated under the
law of New South Wales;
is accompanied by a written request by the applicant to postpone publication of
the particulars of the application, the Registrar must publish the particulars of the
application as soon as practicable after the expiration of 3 months after the date
on which the application was filed.
4.8 Examination of application—report to applicant
(1) For the purposes of section 31 of the Act (which deals with examination and
reporting), if in the course of an examination of an application the Registrar
reasonably believes that:
(a) the application has not been made in accordance with the Act or these
regulations; or
(b) there are grounds under Division 2 of Part 4 of the Act for rejecting it;
the Registrar must report that belief in writing to the applicant.
(2) A report under subregulation (1) must include notice of the date on which the
application will lapse if it is not accepted earlier.
(3) If the Registrar reasonably suspects that the provisions of paragraph 27(1)(b) of
the Act do not apply in relation to all of the goods and/or services specified in an
application for registration of a trade mark, the Registrar may require the
applicant to make a declaration to the Registrar that those provisions apply to all
of those goods and/or services.
Note: Section 37 of the Act and regulation 4.12 deal with the lapsing of an application before
acceptance.
4.9 Examination—applicant’s response to report
(1) An applicant may respond in writing to the Registrar’s report under
regulation 4.8.
(2) The response may:
(a) contest a belief of the Registrar that is expressed in the report; and
(b) contest another matter that is mentioned in the report; and
(c) provide further documents or evidence in support of the application; and
(d) request that the application be amended in accordance with the Act.
Note: Section 65 of the Act relates to the amendment of an application after particulars of the
application have been published.
4.10 Examination—further report to applicant
(1) On receipt of a response under regulation 4.9, the Registrar must consider the
response.
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(2) If the Registrar continues to believe that:
(a) the application has not been made in accordance with the Act or these
regulations; or
(b) there are grounds under Division 2 of Part 4 of the Act for rejecting it;
the Registrar must report that belief in writing to the applicant.
(3) Unless acceptance of an application is deferred, a report under subregulation (2)
in relation to that application must include notice of the date on which the
application will lapse if it is not accepted earlier.
(4) Regulation 4.9 and this regulation apply to a report under subregulation (2) as if
it were a report under regulation 4.8.
4.11 Examination—additional requirements
(1) In the course of an examination of an application for which a right of priority is
claimed, the Registrar may require in writing the applicant to file:
(a) a copy of any earlier application certified in the trade marks office (or its
equivalent) of the Convention country in which it was filed; and
(b) if the earlier application is not in English:
(i) a translation of the earlier application into English; and
(ii) a certificate of verification relating to the translation.
(2) If the applicant is the successor in title to the person who made the earlier
application, the Registrar may require in writing the applicant to file
documentary evidence that is sufficient to establish the passing of title to the
applicant.
4.12 Periods after which applications lapse
(1) For the purposes of subsection 37(1) of the Act (which deals with lapsing), the
prescribed period, for an application in respect of which a report is made under
regulation 4.8, is:
(a) except as provided by paragraph (b)—15 months from the date of that
report (whether or not a further report is made under regulation 4.10); or
(b) if a further report raises grounds under Division 2 of Part 4 of the Act for
rejecting the application that were not raised in the report made under
regulation 4.8—15 months from the date of the further report.
(2) In determining the period of 15 months for the purposes of paragraph (1)(a) or
(b) in relation to an application, no account is to be taken of a period in which
acceptance of the application is deferred under regulation 4.13.
(3) An applicant may, before the end of a period prescribed in subregulation (1), or
that period as extended under section 224 of the Act or as a result of a previous
application of subregulation (4), request the Registrar in writing to extend the
period.
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(4) The Registrar must, in accordance with a request made under subregulation (3),
extend a period, unless:
(a) the period; or
(b) that period as extended under section 224 of the Act or as a result of a
previous application of this subregulation;
would be extended for more than 6 months after the end of the relevant period
prescribed in subregulation (1).
Note 1: If an extension of the time for acceptance of an application is sought after the end of a
prescribed period, or of an extended period mentioned in subregulation 4.12(3),
application must be made under section 224 of the Act.
Note 2: If a period prescribed in subregulation 4.12(1) has been extended by 6 months, any
application for a further extension of time must be made under section 224 of the Act.
4.13 Deferment of acceptance
(1) The Registrar may, at the request of the applicant in writing, defer acceptance of
an application for registration of a trade mark, if:
(a) the request is made within a period prescribed in subregulation 4.12(1); and
(b) the Registrar reasonably believes that there are grounds for rejecting the
application under subsection 44(1) or (2) of the Act, or
subregulation 4.15A(1) or (2), because of another trade mark:
(i) that is registered by another person; or
(ii) that is a protected international trade mark; or
(iii) in respect of which an application for registration, or an IRDA, has
been made by another person; and
(c) the applicant:
(i) is awaiting the finalisation of proceedings in respect of the application
for registration of the other trade mark or the IRDA; or
(ii) is seeking to satisfy the Registrar as to:
(A) a matter mentioned in paragraph 44(3)(a) or (b) of the Act or
4.15A(3)(a) or (b) of these Regulations; or
(B) the matters mentioned in subsection 44(4) of the Act or
subregulation 4.15A(5);
in relation to the applicant’s trade mark and the other trade mark; or
(iii) has filed an application under section 92 of the Act or
regulation 17A.48 in respect of the other trade mark and is awaiting
the finalisation of proceedings in respect of that application; or
(iv) has begun proceedings to have the Register or the Record of
International Registrations rectified in respect of the other trade mark
and the proceedings have not been determined or otherwise disposed
of; or
(v) is awaiting renewal of the registration of the other trade mark in the
period of 6 months after registration of the other trade mark has
expired, or removal of the other trade mark from the Register; or
(vi) is awaiting renewal of the international registration of the other trade
mark in the period of 6 months after the international registration has
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expired, or removal of the other trade mark from the International
Register.
(2) The Registrar may, on his or her own initiative, defer acceptance of the
application within a period that is prescribed in subregulation 4.12(1) or that is
extended under section 224 of the Act or subregulation 4.12(4), if:
(a) the time within which proceedings mentioned in paragraph (b) may be
begun, or an application mentioned in paragraph (c) may be made, has not
ended; or
(b) appeal proceedings under a provision of the Act have begun in a prescribed
court in relation to the application; or
(c) an application has been made to the AAT for review of a decision of the
Registrar in relation to the first-mentioned application; or
(d) the Registrar is informed in writing that the applicant has died.
(3) The Registrar must defer acceptance of an application for registration of a
certification trade mark when a copy of the rules governing the use of the
certification trade mark is sent to the Commission in accordance with
regulation 16.2.
(4) The Registrar must notify an applicant in writing:
(a) if the applicant requests the Registrar to defer acceptance of an
application—of the Registrar’s decision to defer, or not to defer,
acceptance of the application; and
(b) if the Registrar otherwise defers acceptance of an application—of the
provision under which acceptance of the application is deferred.
4.14 Period for which acceptance is deferred
(1) The period for which acceptance of an application is deferred (the deferment
period) begins immediately after:
(a) for deferral under subregulation 4.13(1)—the date the Trade Marks Office
receives the request; or
(b) for deferral under subregulation 4.13(2) or (3)—the date of the notice of
deferment issued under subregulation 4.13(4).
(2) The deferment period ends:
(a) when the application is withdrawn; or
(b) if paragraph (a) does not apply—when the Registrar is reasonably satisfied
that there are no longer grounds for rejecting the application under
subsection 44(1) or (2) of the Act or subregulation 4.15A(1) or (2); or
(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
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(b) if acceptance is deferred because of subparagraph 4.13(1)(c)(ii)—at the end
of 6 months from the date of commencement of deferment; and
(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:
(i) proceedings mentioned in paragraph 4.13(2)(b) may be begun; or
(ii) an application mentioned in paragraph 4.13(2)(c) may be made; and
(g) if acceptance is deferred because of paragraph 4.13(2)(b) or (c)—at the end
of:
(i) 3 months after the determination, or other disposal, of the proceedings
or review; or
(ii) such time as the court to which any appeal is brought or the AAT, or a
court to which any appeal arising from review by the AAT is brought,
allows;
(h) if acceptance is deferred because of paragraph 4.13(2)(d)—at the end of a
period after the death of the applicant that the Registrar reasonably regards
as sufficient in the circumstances; and
(j) if acceptance is deferred because of subregulation 4.13(3):
(i) if the Commission gives a certificate under subsection 175(2) of the
Act in respect of the application—when the Registrar accepts the
certification trade mark for registration; and
(ii) if the Commission does not give a certificate under that subsection—
at the end of 2 months after the date of the notice to the Registrar
under subsection 175(4) of the Act.
(4) If acceptance of an application is deferred as a result of the operation of more
than 1 of the provisions of paragraph 4.13(1)(c) and subregulation 4.13(2), the
deferment period ends in accordance with the relevant provision of
subregulation (3) under which the deferment period ends later or last, as the case
requires.
(5) The Registrar must notify the applicant in writing of:
(a) the end of a period of deferment; and
(b) if acceptance is deferred under subregulation 4.13(1)—the last day of the
relevant period prescribed by paragraph 4.12(1)(a) or (b).
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Regulation 4.15
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4.15 Trade marks containing etc certain signs
For the purposes of paragraph 39(2)(a) of the Act (which deals with signs), the
following signs are prescribed:
(a) the words ‘Patent’, ‘Patented’, ‘By Royal Letters Patent’, ‘Protected
International Trade Mark’, ‘Registered’, ‘Registered Design’, ‘Copyright’
‘Plant Breeder’s Rights’, ‘EL rights’, or words or symbols to the same
effect (including the symbols ‘©’ and ‘®’);
(b) the words ‘To counterfeit this is a forgery’, or words to the same effect;
(c) a representation of the Arms, or of a flag or seal, of the Commonwealth or
of a State or Territory;
(d) a representation of the Arms or emblem of a city or town in Australia or of
a public authority or public institution in Australia;
(da) a representation of a flag of a country that is a member of the International
Union for the Protection of Industrial Property;
(e) a representation of a mark notified by the International Union for the
Protection of Industrial Property as not entitled to registration under
international arrangements;
(f) a sign specified in Schedule 2.
Note 1: For the meaning of EL rights, see section 5 of the Circuit Layouts Act 1989.
Note 2: A list of the marks mentioned in paragraph 4.15(e) is available at the Trade Marks
Office and sub-offices (if any).
4.15A Grounds for rejection—trade mark identical etc to trade mark protected
under Madrid Protocol
(1) For section 189A of the Act, and subject to subregulations (3) and (5), an
application for the registration of a trade mark (applicant’s trade mark) in
respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively
similar to:
(i) a protected international trade mark; or
(ii) a trade mark in respect of which the Registrar has received
notification of an IRDA;
held by another person in respect of similar goods or closely related
services; and
(b) the priority date for the registration of the applicant’s trade mark in respect
of the applicant’s goods is not earlier than the priority date for the other
trade mark in respect of the similar goods or closely related services.
Note: Under subsection 189A(3) of the Act, regulations made for the purposes of
section 189A:
(a) may be inconsistent with the Act; and
(b) prevail over the Act (including any other regulations or other instruments made under the Act), to the extent of any inconsistency.
Division 2 of Part 4 of the Act includes provisions relating to the grounds on which an
application for the registration of a trade mark must be rejected.
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(2) For section 189A of the Act, and subject to subregulations (3) and (5), an
application for the registration of a trade mark (applicant’s trade mark) in
respect of services (applicant’s services) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively
similar to:
(i) a protected international trade mark; or
(ii) a trade mark in respect of which the Registrar has received
notification of an IRDA;
held by another person in respect of similar services or closely related
goods; and
(b) the priority date for the registration of the applicant’s trade mark in respect
of the applicant’s services is not earlier than the priority date for the other
trade mark in respect of the similar services or closely related goods.
Note: Under subsection 189A(3) of the Act, regulations made for the purposes of
section 189A:
(a) may be inconsistent with the Act; and
(b) prevail over the Act (including any other regulations or other instruments made under the Act), to the extent of any inconsistency.
Division 2 of Part 4 of the Act includes provisions relating to the grounds on which an
application for the registration of a trade mark must be rejected.
(3) If, in a case mentioned in subregulation (1) or (2), the Registrar is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s
trade mark subject to any conditions or limitations that the Registrar thinks fit to
impose.
(4) If the applicant’s trade mark has been used only in a particular area, the
limitations may include that the use of the trade mark is to be restricted to that
particular area.
(5) If, in a case mentioned in subregulation (1) or (2), the Registrar is satisfied that
the applicant, or the applicant and the predecessor in title of the applicant, have
continuously used the applicant’s trade mark for a period:
(a) beginning before the priority date for the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant’s trade
mark;
the Registrar must not reject the application because of the existence of the other
trade mark.
Note: Section 44 of the Act provides for rejection of an application on the grounds that the
trade mark is substantially identical with, or deceptively similar to, a registered trade
mark or a trade mark for which registration is being sought.
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Regulation 4.18
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4.18 Request for expedited examination of application
(1) A person who applies, or has applied, for the registration of a trade mark:
(a) may request in writing expedited examination of the application; and
(b) must include with the request a declaration stating the reasons for the
request.
(2) As soon as practicable after making a decision in relation to a request, the
Registrar must give written notice of the decision to the person who made the
request.
4.19 Expedited examinations
(1) The Registrar must, to the extent that is practicable, examine applications for the
registration of trade marks in relation to which requests under regulation 4.18 are
granted:
(a) in the order in which the requests are filed; and
(b) before examination of an application for registration of a trade mark in
relation to which:
(i) a request under regulation 4.18 is not made; or
(ii) a request made under that regulation is not granted.
(2) In the absence of a request for expedited examination of an application for
registration of a trade mark, the Registrar may expedite examination of the
application if he or she reasonably believes that expedited examination is
warranted.
(3) The relationship of an application mentioned in subregulation (2) to another
application for registration of a trade mark is a relevant circumstance for the
purposes of that subregulation.
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Preliminary Division 1
Regulation 5.1
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Part 5—Opposition to registration
Division 1—Preliminary
5.1 What Part 5 is about
This Part sets out requirements for the following:
(a) the filing of notices of opposition and associated documents;
(b) the amending of filed documents;
(c) the dismissal of an opposition;
(d) a cooling-off period for an opposition;
(e) the hearing of an opposition;
(f) associated matters.
5.2 Definitions
In this Part:
notice of intention to defend means a notice filed under regulation 5.13.
notice of intention to oppose means a notice filed under regulation 5.6.
notice of opposition means:
(a) a notice of intention to oppose; and
(b) a statement of grounds and particulars.
party means an applicant or opponent.
statement of grounds and particulars means a statement by an opponent that
sets out:
(a) the grounds on which the opponent intends to rely; and
(b) the facts and circumstances forming the basis for the grounds.
trade mark application means an application for registration of a trade mark
under section 27 of the Act.
Note: The following terms are defined in section 6 of the Act:
(a) applicant;
(b) approved form;
(c) employee;
(d) file;
(e) month;
(f) opponent;
(g) person.
5.3 Registrar may give direction about filing document or evidence
(1) If a document or evidence may or must be filed under this Part, the Registrar
may give a direction specifying:
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(a) how many copies of the document or evidence must be filed; and
(b) the form in which the document or evidence is to be filed; and
(c) the means by which the document or evidence is to be filed.
(2) If a party does not comply with the direction, the Registrar may:
(a) treat the document or evidence as not having been filed; or
(b) tell the party to comply with the direction.
(3) The Registrar may make or revoke the direction as the Registrar sees fit.
(4) Regulation 5.4 does not apply to the Registrar’s decision to make or revoke the
direction.
5.4 Notification and opportunity to make representations
(1) This regulation applies if:
(a) a party makes a request to the Registrar under this Part; or
(b) the Registrar proposes to make a decision on the Registrar’s own initiative
under this Part.
(2) The Registrar must:
(a) for paragraph (1)(a)—notify the other party of the request, including by
giving the other party a copy of the request; or
(b) for paragraph (1)(b)—notify the parties of the proposed decision.
(3) If the Registrar proposes to grant the request, the Registrar must give the parties
an opportunity to make representations:
(a) in writing; or
(b) at a hearing; or
(c) by other means that the Registrar states in the notification.
(4) The Registrar must notify the parties of the decision.
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Regulation 5.5
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Division 2—Filing of opposition documents
Subdivision A—Notice of opposition
5.5 Filing of notice of opposition
A notice of opposition is taken to be filed when the notice of intention to oppose
and the statement of grounds and particulars have been filed under
regulations 5.6 and 5.7.
5.6 Filing of notice of intention to oppose
(1) For subsection 52(2) of the Act, the period for filing a notice of intention to
oppose is 2 months from the day the acceptance of the trade mark application is
advertised in the Official Journal under paragraph 34(b) of the Act.
(2) The notice must be in an approved form.
(3) The Registrar must give a copy of the notice to the applicant.
5.7 Filing of statement of grounds and particulars
(1) A statement of grounds and particulars must be filed within one month from the
day the notice of intention to oppose is filed.
(2) The statement must be in an approved form.
5.8 Statement of grounds and particulars must be adequate
(1) The Registrar must assess the adequacy of a statement of grounds and
particulars.
(2) If the Registrar decides that the statement is adequate, the Registrar must give a
copy of the statement to the applicant.
(3) If the Registrar decides that the statement is inadequate:
(a) the Registrar may direct the opponent to rectify the inadequacy by filing
more information on the basis for one or more of the grounds; or
(b) if all the grounds are inadequately particularised, the Registrar may dismiss
the opposition; or
(c) if only some of the grounds are inadequately particularised, the Registrar
may:
(i) delete from the statement some or all of the material that is
inadequate; and
(ii) treat the result as the statement for the purposes of these Regulations;
and
(iii) give a copy of the amended statement to the opponent.
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Division 2 Filing of opposition documents
Regulation 5.9
24 Trade Marks Regulations 1995
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(4) If the Registrar decides that the statement is still inadequate after the information
is filed under paragraph (3)(a):
(a) the Registrar may dismiss the opposition; or
(b) the Registrar may:
(i) delete from the statement some or all of the material that is
inadequate; and
(ii) treat the result as the statement for the purposes of these Regulations;
and
(iii) give a copy of the amended statement to the opponent.
(5) If the Registrar decides that the information filed under paragraph (3)(a) rectifies
the inadequacy of the statement, the Registrar must give a copy of the statement
and the information filed in relation to paragraph (3)(a) to the applicant.
(6) The opponent may apply to the Administrative Appeals Tribunal for review of a
decision under this regulation to dismiss the opposition or delete material from
the statement of grounds and particulars.
(7) Regulation 5.4 does not apply to this regulation.
5.9 Extension of time for filing—application
(1) A person who intends to oppose an application under subsection 52(1) of the Act
may request the Registrar to extend:
(a) the period for filing a notice of intention to oppose under
subregulation 5.6(1); or
(b) the period for filing a statement of grounds and particulars under
subregulation 5.7(1).
(2) A request under paragraph (1)(a) or (b) may be made:
(a) within the period for filing the document in question; or
(b) before the trade mark is entered on the Register under section 69 of the
Act.
Note: See subparagraph (3)(b)(ii) and subregulation 5.10(2) in relation to the consequences of
making the request after the filing period has ended.
(3) The request must:
(a) be in an approved form; and
(b) be accompanied by a declaration stating:
(i) the facts and circumstances forming the basis for the grounds; and
(ii) if the period for filing the notice or the statement of grounds and
particulars has ended—the reason why the request was not made
within the period.
Note: Regulations 21.6 and 21.7 deal with making and filing declarations.
(4) The request may be made only on either or both of the following grounds:
(a) an error or omission by the person, the person’s agent, the Registrar or an
employee;
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(b) circumstances beyond the control of the person, other than an error or
omission by the person, the person’s agent, the Registrar or an employee.
5.10 Extension of time for filing—grant
(1) The Registrar may grant a request under subregulation 5.9(1) for an extension of
time only if the Registrar is satisfied that the grounds set out in the request justify
the extension.
(2) However, if the request is made after the period for filing the notice or statement
of grounds and particulars has ended, the Registrar must not grant the extension
unless the Registrar is satisfied that there is sufficient reason for the delay in
making the request.
(3) The Registrar must decide the length of the extended period having regard to
what is reasonable in the circumstances.
5.11 Amendment of notice of intention to oppose
(1) An opponent may request the Registrar to amend a notice of intention to oppose
to correct a clerical error or obvious mistake.
(2) If an opposition is proceeding in the name of another person (the new opponent)
under section 53 of the Act, the new opponent may request the Registrar to
amend the notice of intention to oppose to record the new opponent’s name.
(3) The Registrar may grant the request on terms that the Registrar considers
appropriate.
(4) If the Registrar grants the request, the Registrar must give a copy of the amended
notice of intention to oppose to the applicant.
(5) Regulation 5.4 does not apply to a request under subregulation (1) or (2).
5.12 Amendment of statement of grounds and particulars
(1) An opponent may request the Registrar to amend the statement of grounds and
particulars to:
(a) correct an error or omission in the grounds of opposition or the facts and
circumstances forming the basis for the grounds; or
(b) amend a ground of opposition; or
(c) add a new ground of opposition; or
(d) to amend the facts and circumstances forming the basis for the grounds.
(2) The Registrar may grant the request on terms that the Registrar considers
appropriate.
(3) However, the Registrar may grant a request to:
(a) amend a ground of opposition; or
(b) add a new ground of opposition;
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Division 2 Filing of opposition documents
Regulation 5.13
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only if the Registrar is satisfied that the amendment or addition relates to
information of which the opponent could not reasonably have been aware at the
time of filing the statement.
(4) If the Registrar grants the request, the Registrar must give a copy of the amended
statement to the applicant.
Subdivision B—Notice of intention to defend
5.13 Filing of notice of intention to defend
(1) For subsection 52A(2) of the Act, a notice of intention to defend must be filed
within one month from the day the applicant is given a copy of the statement of
grounds and particulars.
(2) The Registrar must give a copy of the notice to the opponent.
Subdivision C—Evidence
5.14 Filing of evidence
(1) The Registrar must notify the parties that:
(a) all the evidence for an evidentiary period mentioned in this regulation has
been filed; or
(b) no evidence was filed for the period.
(2) The Registrar must give a copy of any evidence filed by a party under this
regulation to the other party:
(a) before the end of the relevant evidentiary period, if the Registrar considers
it appropriate to do so; or
(b) after the evidentiary period ends.
Evidence in support
(3) An opponent must file any evidence in support of the opposition within 3 months
from the day the opponent is given a copy of the notice of intention to defend.
Evidence in answer
(4) If the opponent files evidence in support of the opposition, the applicant must file
any evidence in answer to the evidence in support within 3 months from the day
the Registrar:
(a) gives the applicant:
(i) all the evidence in support; or
(ii) if the opponent files the evidence in support in instalments—the final
instalment of the evidence in support; and
(b) notifies the applicant that all the evidence in support has been filed.
(5) If the opponent does not file any evidence in support of the opposition, the
applicant must file any evidence in answer to the statement of grounds and
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particulars within 3 months from the day the Registrar notifies the applicant that
no evidence in support was filed.
Evidence in reply
(6) If the applicant files evidence in answer under subregulation (4) or (5), the
opponent must file any evidence in reply to the evidence in answer within 2
months from the day the Registrar:
(a) gives the opponent:
(i) all the evidence in answer; or
(ii) if the applicant files the evidence in answer in instalments—the final
instalment of the evidence in answer; and
(b) notifies the opponent that all the evidence in answer has been filed.
5.15 Extension of time for filing
(1) A party may request the Registrar to extend a period for filing evidence
mentioned in regulation 5.14.
(2) The Registrar may extend the period only if the Registrar is satisfied that:
(a) the party:
(i) has made all reasonable efforts to comply with all relevant filing
requirements of this Part; and
(ii) despite acting promptly and diligently at all times to ensure the filing
of the evidence within the period, is unable to do so; or
(b) there are exceptional circumstances that justify the extension.
(3) The Registrar:
(a) must decide the length of the extended period having regard to what is
reasonable in the circumstances; and
(b) may do so on terms that the Registrar considers appropriate.
(4) In this regulation:
exceptional circumstances includes the following:
(a) a circumstance beyond the control of a party that prevents the party from
complying with a filing requirement under this Part;
(b) an error or omission by the Registrar or an employee that prevents a party
from complying with a filing requirement under this Part;
(c) an order of a court or a direction by the Registrar that the opposition be
stayed.
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Division 3 Cooling-off period for opposition
Regulation 5.16
28 Trade Marks Regulations 1995
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Division 3—Cooling-off period for opposition
5.16 Registrar may allow cooling-off period
(1) This regulation applies to an opposition if:
(a) the notice of opposition has been filed; and
(b) the Registrar has not made a decision on the opposition under
subsection 55(1) of the Act; and
(c) the opposition has not been dismissed under section 222 of the Act or
regulation 5.8.
(2) If the Registrar is satisfied that the parties agree to a cooling-off period, the
Registrar must allow a cooling-off period of 6 months.
(3) The Registrar must extend the cooling-off period for 6 months if, before the end
of the period, the Registrar is satisfied that the parties agree to the extension.
(4) The Registrar must not:
(a) further extend the cooling-off period; or
(b) allow more than one cooling-off period for an opposition.
(5) If a party files a notice, in an approved form, requesting the Registrar to
discontinue the cooling-off period, the Registrar must do so.
(6) The Registrar may direct the parties on steps the parties must take:
(a) if the cooling-off period is discontinued; or
(b) otherwise—when the cooling-off period ends.
(7) The opposition resumes:
(a) if the cooling-off period is discontinued; or
(b) otherwise—when the cooling-off period ends.
(8) If:
(a) the cooling-off period begins during the period mentioned in
regulation 5.13 or an evidentiary period mentioned in regulation 5.14; and
(b) the opposition resumes;
the period mentioned in regulation 5.13 or 5.14 restarts when the opposition
resumes.
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Hearing of opposition Division 4
Regulation 5.17
Trade Marks Regulations 1995 29
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Division 4—Hearing of opposition
5.17 Hearing
(1) This regulation applies to an opposition if:
(a) the opposition has not:
(i) been dismissed under section 222 of the Act or paragraph 5.8(3)(b) or
5.8(4)(a); or
(ii) been decided under subsection 55(1) of the Act; and
(b) the trade mark application to which the opposition relates has not lapsed
under section 54A of the Act.
(2) An applicant may request the Registrar to hold a hearing if:
(a) the evidentiary period mentioned in subregulation 5.14(3) has ended; and
(b) either:
(i) all evidence for the opposition proceeding has been filed; or
(ii) no evidence has been filed in that period.
(3) A party may request the Registrar to hold a hearing if:
(a) an evidentiary period mentioned in any of subregulations 5.14(4) to (6) has
ended; and
(b) either:
(i) all evidence for the opposition proceeding has been filed; or
(ii) no evidence has been filed in that period.
(4) The Registrar:
(a) must hold a hearing of the opposition if requested by a party; or
(b) may decide, on the Registrar’s own initiative, to hold a hearing of the
opposition.
(5) The hearing may, at the Registrar’s discretion, be:
(a) an oral hearing; or
(b) by written submissions.
(6) If the Registrar decides on an oral hearing:
(a) the Registrar must notify the parties of the date, time and place of the
hearing; and
(b) the opponent must file a summary of submissions at least 10 business days
before the hearing; and
(c) the applicant must file a summary of submissions at least 5 business days
before the hearing.
(7) The Registrar may take into account a party’s failure to file a summary of
submissions under subregulation (6) in making an award of costs.
Note: Regulations 21.15 and 21.16 deal with hearings.
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Part 5 Opposition to registration
Division 5 Miscellaneous
Regulation 5.18
30 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 5—Miscellaneous
5.18 Copy of earlier Convention application to be available to opponent
(1) In opposition proceedings relating to an application in respect of which the
applicant claims a right of priority, an opponent may request the Registrar for a
copy of an earlier application to be made available.
(2) On receiving the request, the Registrar must require the applicant to file:
(a) a copy of the earlier application certified in the trade marks office (or its
equivalent) of the Convention country in which it was filed; and
(b) if the earlier application is not in English:
(i) a translation of the earlier application into English; and
(ii) a certificate of verification relating to the translation.
(3) Subregulation (2) does not apply if the applicant has already filed the relevant
documents.
(4) The Registrar must give a copy of the documents to the opponent.
(5) If the applicant is the successor in title to the person who made the earlier
application, the Registrar may require the applicant to provide documentary
evidence that is sufficient to establish the passing of title to the applicant.
5.19 Registrar may give direction
(1) The Registrar may give a direction in relation to an opposition to which this Part
applies:
(a) if requested by a party in writing; or
(b) on the Registrar’s own initiative.
(2) If the Registrar proposes to give a direction, the Registrar must give the parties
an opportunity to make representations about the direction.
(3) A direction must not be inconsistent with the Act or these Regulations.
(4) The Registrar must notify the parties of the direction as soon as practicable.
5.20 Registrar must notify parties of dismissal or discontinuance of opposition
If an opposition is dismissed under section 222 of the Act or regulation 5.8 or
discontinued, the Registrar must notify the parties of the dismissal or
discontinuance.
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Amendment of application for registration of a trade mark and other documents Part 6
Amendment of application for registration of trade mark and other documents Division 1
Regulation 6.1
Trade Marks Regulations 1995 31
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Part 6—Amendment of application for registration of a
trade mark and other documents
Division 1—Amendment of application for registration of trade mark
and other documents
6.1 Amendment of applications by Registrar
(1) For the purposes of subsection 63(2) of the Act (which deals with amendment), if
the Registrar proposes to amend an application for the registration of a trade
mark, the Registrar must give notice in writing to the applicant:
(a) setting out the proposed amendment and the reason for making the
amendment; and
(b) stating that the proposed amendment will be made at the end of a
reasonable period stated in the notice, unless the applicant objects to the
amendment within that period.
(2) If an applicant objects to an amendment proposed by the Registrar within the
period mentioned in paragraph (1)(b), the Registrar must not make the
amendment unless the objection is withdrawn.
6.2 Request to amend before publication of details
For the purposes of paragraph 64(b) of the Act (which deals with amendments
before publication), the period for requesting an amendment is 14 days after
filing the application for the registration of the trade mark.
6.3 Filing of declarations
If a person requests an amendment under section 64 of the Act (which deals with
amendments before publication) or paragraph 66(a) of the Act (which deals with
amendment of other documents), the Registrar may require the applicant to file a
declaration stating:
(a) that a clerical error or obvious mistake was made in the application; and
(b) the circumstances in which the error or mistake was made.
Note: Regulations 21.6 and 21.7 deal with making and filing declarations.
6.4 Notification of amendments
If the Registrar amends an application, notice or document under Part 6 of the
Act, the Registrar must give notice in writing of the amendment to:
(a) the person who requested the amendment; and
(b) any other person that the Registrar thinks appropriate.
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Part 6 Amendment of application for registration of a trade mark and other documents
Division 2 Opposition to amendment after particulars published
Regulation 6.5
32 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 2—Opposition to amendment after particulars published
6.5 Definitions
In this Division:
notice of opposition means a notice filed under subregulation 6.6(1).
party means an applicant or opponent.
Note: The following terms are defined in section 6 of the Act:
(a) applicant;
(b) approved form;
(c) file;
(d) month;
(e) person.
6.6 Notice of opposition
(1) For subsection 65A(4) of the Act, a person may oppose a request for amendment
by filing a notice of opposition, in an approved form, within one month from the
advertisement of the request for amendment in the Official Journal under
subsection 65A(3) of the Act.
(2) The Registrar must give a copy of the notice to the applicant.
6.7 Notification and opportunity to make representations
(1) This regulation applies if:
(a) a party makes a request to the Registrar under this Division; or
(b) the Registrar proposes to make a decision on the Registrar’s own initiative
under this Division.
(2) The Registrar must:
(a) for paragraph (1)(a)—notify the other party of the request, including by
giving the other party a copy of the request; or
(b) for paragraph (1)(b)—notify the parties of the proposed decision.
(3) If the Registrar proposes to grant the request, the Registrar must give the parties
an opportunity to make representations:
(a) in writing; or
(b) at a hearing; or
(c) by other means that the Registrar states in the notification.
(4) The Registrar must notify the parties of the Registrar’s decision.
6.8 Practice and procedure
The Registrar may:
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(a) decide the practice and procedure to be followed in an opposition to which
this Division applies; and
(b) direct the parties accordingly.
6.9 Hearing
(1) The Registrar:
(a) must hold a hearing of the opposition if requested by a party in writing; or
(b) may decide, on the Registrar’s own initiative, to hold a hearing of the
opposition.
(2) The hearing may, at the Registrar’s discretion, be:
(a) an oral hearing; or
(b) by written submissions.
(3) If the Registrar decides on an oral hearing:
(a) the Registrar must notify the parties of the date, time and place of the
hearing; and
(b) the opponent must file a summary of submissions at least 10 business days
before the hearing; and
(c) the applicant must file a summary of submissions at least 5 business days
before the hearing.
(4) The Registrar may take into account a party’s failure to file a summary of
submissions under subregulation (3) in making an award of costs.
Note: Regulations 21.15 and 21.16 deal with hearings.
(5) The Registrar must:
(a) decide the opposition; and
(b) notify the parties of the Registrar’s decision.
6.10 Registrar may give direction
(1) The Registrar may give a direction in relation to an opposition to which this
Division applies:
(a) if requested by a party in writing; or
(b) on the Registrar’s own initiative.
(2) If the Registrar proposes to give a direction, the Registrar must give the parties
an opportunity to make representations about the direction.
(3) A direction must not be inconsistent with the Act or these Regulations.
(4) The Registrar must notify the parties of the direction as soon as practicable.
6.11 Registrar must notify parties of dismissal or discontinuance of opposition
If an opposition is dismissed or discontinued, the Registrar must notify the
parties of the dismissal or discontinuance.
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Part 7 Registration of trade marks
Division 1 Initial registration
Regulation 7.1
34 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Part 7—Registration of trade marks
Division 1—Initial registration
7.1 Period in which a trade mark can be registered
(1) For the purposes of subsection 68(1) of the Act (which deals with registration),
the period for the registration of a trade mark that has been accepted for
registration is:
(a) except if paragraph (b) applies—the period from the beginning of the day
on which the acceptance is advertised in the Official Journal to the end of:
(i) the day that is 6 months after that day; or
(ii) if a later day is specified under subregulation (2) or (3)—the day
specified in that subregulation; and
(b) in the case of the death of an applicant for registration of the trade mark—
within 12 months of the date of death or within such further period as the
Registrar reasonably allows.
(2) If:
(a) proceedings in relation to the registration of the trade mark before a
prescribed court or the AAT are not determined or otherwise disposed of;
and
(b) the prescribed court or the AAT is satisfied that the registration of the trade
mark cannot take place on or before the first-mentioned day in
subparagraph (1)(a)(i);
the prescribed court or the AAT may specify for the purposes of
subparagraph (1)(a)(ii) a day that is later than the first-mentioned day in
subparagraph (1)(a)(i).
(3) If:
(a) proceedings in relation to the registration of the trade mark are before the
Registrar; and
(b) the Registrar is reasonably satisfied that:
(i) the registration of the trade mark cannot take place on or before the
first-mentioned day in subparagraph (1)(a)(i); and
(ii) it is appropriate to do so;
the Registrar may specify, for the purposes of subparagraph (1)(a)(ii), a day that
is later than the first-mentioned day in subparagraph (1)(a)(i).
7.2 Particulars to be entered in the Register
For the purposes of paragraph 69(2)(c) of the Act (which deals with particulars),
the following other particulars of a trade mark must be entered in the Register:
(a) if the trade mark is registered as a certification trade mark, a collective
trade mark or a defensive trade mark—an indication to that effect;
(b) the date of the registration;
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(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.
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Part 7 Registration of trade marks
Division 2 Renewal of registration (general)
Regulation 7.3
36 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 2—Renewal of registration (general)
7.3 Period for request for renewal
For the purposes of subsection 75(1) of the Act (which deals with requests for
renewal), the period within which a person may request the Registrar to renew
the registration of a trade mark is 12 months ending on the day on which the
registration of the trade mark expires.
7.4 Notice of renewal due—when and how given
(1) For the purposes of section 76 of the Act (which deals with notice of renewal
due), the period in relation to notifying a registered owner that renewal of the
registration of a trade mark is due is 2 months ending on the day on which the
registration of the trade mark expires.
(2) A notice that the renewal is due must include:
(a) a statement of the date on which the registration of the trade mark will
expire; and
(b) a statement of any fee payable.
7.5 Notice of renewal
For the purposes of subsection 77(2) of the Act (which deals with renewal), a
notice of the renewal of the registration of a trade mark must include:
(a) a statement that the registration is renewed; and
(b) the period for which it is renewed.
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Regulation 7.6
Trade Marks Regulations 1995 37
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
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.
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Part 8 Amendment and cancellation of registration
Regulation 8.1
38 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Part 8—Amendment and cancellation of registration
8.1 Notice of cancellation
(1) The Registrar must, after receiving a request from the owner of a registered trade
mark under subsection 84(1) of the Act, cancel registration of the trade mark if
the Registrar is not obliged under subsection 84(2) of the Act to notify a person.
(2) If the Registrar must notify a person under that subsection, the notice must state
that unless:
(a) the request from the owner is sooner withdrawn; or
(b) a prescribed court determines that the Registrar must not cancel registration
of the trade mark;
the Registrar will cancel the trade mark at the end of a period of 2 months from
the date of the notice.
(3) If:
(a) before the end of the period of 2 months, each person who is notified
advises the Registrar in writing that the person does not object to
cancellation of registration of the trade mark—the Registrar must cancel
registration of the trade mark; or
(b) paragraph (a) does not apply—the Registrar must cancel registration of the
trade mark after the end of that period;
unless the request from the owner is withdrawn or a prescribed court determines
otherwise.
8.1A Notice of revocation
For subsection 84A(4) of the Act, a notice by the Registrar must be:
(a) in writing; and
(b) sent, as the case requires, to the address for service of each of the
following:
(i) the registered owner;
(ii) the person recorded under Part 11 of the Act.
8.2 Amendment or cancellation—matters for the court
For the purposes of paragraph 89(2)(a) of the Act (which deals with amendment
or cancellation by a prescribed court), a prescribed court, in making a decision
under subsection 89(1) of the Act on an application for rectification of the
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;
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(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.
8.4 Amendment because of inconsistency with international agreements—notice
of opposition
(1) For subsection 83A(4) of the Act, a person may oppose a request for amendment
by filing a notice of opposition with the Registrar.
(2) A notice of opposition must be:
(a) in an approved form; and
(b) filed within 1 month after the request for amendment is advertised in the
Official Journal.
(3) The opponent must serve a copy of the notice on the registered owner of the
registered trade mark.
8.5 Amendment because of inconsistency with international agreements—
opposition proceedings
For subsection 83A(4) of the Act, regulations 5.7 to 5.17 (inclusive) apply to an
opposition to a request for amendment as if references to the applicant, other
than in regulation 5.15, were references to the registered owner of the registered
trade mark who has requested an amendment.
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Part 9 Removal of trade mark from Register for non-use
Division 1 Preliminary
Regulation 9.1
40 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Part 9—Removal of trade mark from Register for non-use
Division 1—Preliminary
9.1 What Part 9 is about
This Part sets out requirements for the following:
(a) the making and notification of an application for removal;
(b) the filing of notices of opposition and associated documents;
(c) the amending of filed documents;
(d) the dismissal of an opposition;
(e) the hearing of an opposition;
(f) associated matters.
9.2 Definitions
In this Part:
application for removal means an application for removal of a trade mark from
the Register.
notice of intention to defend means a notice filed under regulation 9.15.
notice of intention to oppose means a notice filed under regulation 9.8.
notice of opposition means:
(a) a notice of intention to oppose; and
(b) a statement of grounds and particulars.
opponent means a person who files:
(a) a notice of intention to oppose; and
(b) a statement of grounds and particulars.
party means an applicant or opponent.
statement of grounds and particulars means a statement by an opponent that
sets out:
(a) the grounds for removal that the opponent intends to rebut; and
(b) the facts and circumstances that form the basis for the opposition to the
removal.
Note: The following terms are defined in section 6 of the Act:
(a) applicant;
(b) approved form;
(c) employee;
(d) file;
(e) month;
(f) person.
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Regulation 9.3
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9.3 Registrar may give direction about filing document or evidence
(1) If a document or evidence may or must be filed under this Part, the Registrar
may give a direction specifying:
(a) how many copies of the document or evidence must be filed; and
(b) the form in which the document or evidence is to be filed; and
(c) the means by which the document or evidence is to be filed.
(2) If a party does not comply with the direction, the Registrar may:
(a) treat the document or evidence as not having been filed; or
(b) tell the party to comply with the direction.
(3) The Registrar may make or revoke the direction as the Registrar sees fit.
(4) Regulation 9.4 does not apply to the Registrar’s decision to make or revoke the
direction.
9.4 Notification and opportunity to make representations
(1) This regulation applies if:
(a) a party makes a request to the Registrar under this Part; or
(b) the Registrar proposes to make a decision on the Registrar’s own initiative
under this Part.
(2) The Registrar must:
(a) for paragraph (1)(a)—notify the other party of the request, including by
giving the other party a copy of the request; or
(b) for paragraph (1)(b)—notify the parties of the proposed decision.
(3) If the Registrar proposes to grant the request, the Registrar must give the parties
an opportunity to make representations:
(a) in writing; or
(b) at a hearing; or
(c) by other means that the Registrar states in the notification.
(4) The Registrar must notify the parties of the Registrar’s decision.
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Division 2 Application for removal
Regulation 9.5
42 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 2—Application for removal
9.5 Application for removal
For paragraph 92(2)(a) of the Act, an application for removal must be in an
approved form.
9.6 Notification of application
For subsection 95(1) of the Act, the Registrar must, within one month from the
filing of the application, give a copy of the application to each person who, in the
Registrar’s opinion, should receive one.
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Filing of opposition documents Division 3
Regulation 9.7
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Division 3—Filing of opposition documents
Subdivision A—Notice of opposition
9.7 Filing of notice of opposition
A notice of opposition is taken to be filed when the notice of intention to oppose
and the statement of grounds and particulars have been filed under
regulations 9.8 and 9.9.
9.8 Filing of notice of intention to oppose
(1) For subsection 96(2) of the Act, the period for filing a notice of intention to
oppose is 2 months from the day the application for removal is advertised in the
Official Journal.
(2) The notice must be in an approved form.
(3) The Registrar must give a copy of the notice to the applicant.
9.9 Filing of statement of grounds and particulars
(1) A statement of grounds and particulars must be filed within one month from the
day the notice of intention to oppose is filed.
(2) The statement must be in an approved form.
9.10 Statement of grounds and particulars must be adequate
(1) The Registrar must assess the adequacy of a statement of grounds and particulars
filed under regulation 9.9.
(2) If the Registrar decides that the statement is adequate, the Registrar must give a
copy of the statement to the applicant.
(3) If the Registrar decides that the statement is inadequate, the Registrar may:
(a) direct the opponent to rectify the inadequacy by filing more information on
the basis for the opposition to the grounds for removal; or
(b) dismiss the opposition.
(4) If the Registrar decides that the information filed under paragraph (3)(a) rectifies
the inadequacy of the statement, the Registrar must give a copy of the statement
and the information to the applicant.
(5) For subsection 99A(1) of the Act, the Registrar may dismiss the opposition if:
(a) the Registrar decides that the statement is inadequate; or
(b) the Registrar has directed the opponent to file information under
paragraph (3)(a) and:
(i) the opponent fails to file the information; or
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Division 3 Filing of opposition documents
Regulation 9.11
44 Trade Marks Regulations 1995
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(ii) the Registrar decides that the information filed does not rectify the
inadequacy of the statement.
(6) Regulation 9.4 does not apply to this regulation.
Note: For review rights in relation to a decision by the Registrar to dismiss an opposition, see
subsection 99A(2) of the Act.
9.11 Extension of time for filing—application
(1) A person who intends to oppose an application for removal may request the
Registrar to extend:
(a) the period for filing a notice of intention to oppose under
subregulation 9.8(1); or
(b) the period for filing a statement of grounds and particulars under
subregulation 9.9(1).
(2) A request under paragraph (1)(a) or (b) may be made within the period for filing
the document in question.
Note: See subparagraph (3)(b)(ii) and subregulation 9.12(2) in relation to the consequences of
making the request after the filing period has ended.
(3) The request must:
(a) be in an approved form; and
(b) be accompanied by a declaration stating:
(i) the facts and circumstances forming the basis for the grounds; and
(ii) if the period for filing the notice of intention to oppose or the
statement of grounds and particulars has ended—the reason why the
request was not made within the period.
Note: Regulations 21.6 and 21.7 deal with making and filing declarations.
(4) The request may be made only on either or both of the following grounds:
(a) an error or omission by the person, the person’s agent, the Registrar or an
employee;
(b) circumstances beyond the control of the person, other than an error or
omission by the person, the person’s agent, the Registrar or an employee.
9.12 Extension of time for filing—grant
(1) The Registrar may grant a request under subregulation 9.11(1) for an extension
of time only if the Registrar is satisfied that the grounds set out in the request
justify the extension.
(2) However, if the request is made after the period for filing the notice or statement
of grounds and particulars has ended, the Registrar must not grant the extension
unless the Registrar is satisfied that there is sufficient reason for the delay in
making the request.
(3) The Registrar must decide the length of the extended period having regard to
what is reasonable in the circumstances.
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9.13 Amendment of notice of intention to oppose
(1) An opponent may request the Registrar to amend a notice of intention to oppose
to correct a clerical error or obvious mistake.
(2) If an opposition is proceeding in the name of a person other than the opponent
under section 96A of the Act, the person may request the Registrar to amend the
notice of intention to oppose to record the person’s name.
(3) The Registrar may grant the request on terms that the Registrar considers
appropriate.
(4) If the Registrar grants the request, the Registrar must give a copy of the amended
notice of intention to oppose to the applicant.
(5) Regulation 9.4 does not apply to this regulation.
9.14 Amendment of statement of grounds and particulars
(1) An opponent may request the Registrar to amend the statement of grounds and
particulars to:
(a) correct an error or omission; or
(b) amend or add facts or circumstances that form the basis of the opposition to
the removal.
(2) The Registrar may grant the request on terms that the Registrar considers
appropriate.
(3) However, the Registrar may grant the request only if the Registrar is satisfied
that the amendment should be made.
(4) If the Registrar grants the request, the Registrar must give a copy of the amended
statement to the applicant.
Subdivision B—Notice of intention to defend
9.15 Filing of notice of intention to defend
(1) A notice of intention to defend must be filed within one month from the day the
applicant is given a copy of the statement of grounds and particulars.
(2) The Registrar must give the opponent a copy of the notice.
(3) If the applicant does not file the notice of intention to defend within the period
mentioned in subregulation (1), the Registrar may decide to:
(a) take the opposition to have succeeded; and
(b) refuse to remove the trade mark from the Register.
(4) The Registrar must notify the parties of the Registrar’s decision.
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Division 3 Filing of opposition documents
Regulation 9.16
46 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Subdivision C—Evidence
9.16 Filing of evidence
(1) The Registrar must notify the parties that:
(a) all the evidence for an evidentiary period mentioned in this regulation has
been filed; or
(b) no evidence was filed for the period.
(2) The Registrar must give a copy of any evidence filed by a party under this
regulation to the other party:
(a) before the end of the relevant evidentiary period, if the Registrar considers
it appropriate to do so; or
(b) after the evidentiary period ends.
Evidence in support
(3) An opponent must file any evidence in support of the opposition within 3 months
from the day the opponent is given a copy of the notice of intention to defend the
application for removal.
Evidence in answer
(4) If the opponent files evidence in support of the opposition, the applicant must file
any evidence in answer to the opponent’s evidence within 3 months from the day
the Registrar:
(a) gives the applicant:
(i) all the evidence in support; or
(ii) if the opponent files the evidence in support in instalments—the final
instalment of the evidence in support; and
(b) notifies the applicant that all the evidence in support has been filed.
(5) If the opponent does not file any evidence in support of the opposition,
regulation 9.17 applies.
Evidence in reply
(6) If the applicant files evidence in answer under subregulation (4), the opponent
must file any evidence in reply to the evidence in answer within 2 months from
the day the Registrar:
(a) gives the opponent:
(i) all the evidence in answer; or
(ii) if the applicant files the evidence in answer in instalments—the final
instalment of the evidence in answer; and
(b) notifies the opponent that all the evidence in answer has been filed.
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9.17 Request for hearing and circumstances in which opposition taken to have
ended
(1) If an opponent requests the Registrar, within the period for filing evidence in
support mentioned in subregulation 9.16(3), to hear the opposition, the Registrar
must do so.
(2) The opposition is taken to have ended, but not to have been discontinued or
dismissed, if the opponent does not:
(a) file evidence in support in accordance with subregulation 9.16(3); or
(b) ask for a hearing under subregulation (1).
(3) The application for removal is taken to be unopposed if:
(a) the opposition is taken to have ended under subregulation (2); and
(b) the Registrar is satisfied that the application for removal is in order.
Note 1: See section 97 of the Act in relation to what the Registrar must do if the application for
removal is unopposed.
Note 2: Regulations 21.15 and 21.16 deal with hearings.
9.18 Extension of time for filing
(1) A party may request the Registrar to extend a period for filing evidence
mentioned in regulation 9.16.
(2) The Registrar may extend the period only if the Registrar is satisfied that:
(a) the party:
(i) has made all reasonable efforts to comply with all relevant filing
requirements of this Part; and
(ii) despite acting promptly and diligently at all times to ensure the filing
of the evidence within the period, is unable to do so; or
(b) there are exceptional circumstances that justify the extension.
(3) The Registrar:
(a) must decide the length of the extended period having regard to what is
reasonable in the circumstances; and
(b) may do so on terms that the Registrar considers appropriate.
(4) In this regulation:
exceptional circumstances includes the following:
(a) a circumstance beyond the control of a party that prevents the party from
complying with a filing requirement under this Part;
(b) an error or omission by the Registrar or an employee that prevents a party
from complying with a filing requirement under this Part;
(c) an order of a court or a direction by the Registrar that the opposition be
stayed.
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Division 4 Cooling-off period for opposition
Regulation 9.19
48 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 4—Cooling-off period for opposition
9.19 Registrar may allow cooling-off period
(1) This regulation applies to an opposition if:
(a) the notice of opposition has been filed; and
(b) the Registrar has not decided to remove the trade mark under
subsection 101(1) of the Act; and
(c) the opposition has not been dismissed under regulation 9.10.
(2) If the Registrar is satisfied that the parties agree to a cooling-off period, the
Registrar must allow a cooling-off period of 6 months.
(3) The Registrar must extend the cooling-off period for 6 months if, before the end
of the period, the Registrar is satisfied that the parties agree to the extension.
(4) The Registrar must not:
(a) further extend the cooling-off period; or
(b) allow more than one cooling-off period for an opposition.
(5) If a party files a notice, in an approved form, requesting the Registrar to
discontinue the cooling-off period, the Registrar must do so.
(6) The Registrar may direct the parties on steps the parties must take:
(a) if the cooling-off period is discontinued; or
(b) otherwise—when the cooling-off period ends.
(7) The opposition resumes:
(a) if the cooling-off period is discontinued; or
(b) otherwise—when the cooling-off period ends.
(8) If:
(a) the cooling-off period begins during the period mentioned in
regulation 9.15 or an evidentiary period mentioned in regulation 9.16; and
(b) the opposition resumes;
the period mentioned in regulation 9.15 or 9.16 restarts when the opposition
resumes.
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Division 5—Hearing of opposition
9.20 Hearing
(1) This regulation applies to an opposition if the opposition has not been dismissed
under regulation 9.10 or discontinued.
(2) A party may request the Registrar to hold a hearing if an evidentiary period
mentioned in regulation 9.16 has ended; and either
(a) all evidence for the opposition proceeding has been filed; or
(b) no evidence has been filed in that period.
(3) The Registrar:
(a) must hold a hearing of the opposition if requested by a party in writing; or
(b) may decide, on the Registrar’s own initiative, to hold a hearing of the
opposition.
(4) The hearing may, at the Registrar’s discretion, be:
(a) an oral hearing; or
(b) by written submissions.
(5) If the Registrar decides on an oral hearing:
(a) the Registrar must notify the parties of the date, time and place of the
hearing; and
(b) the opponent must file a summary of submissions at least 10 business days
before the hearing; and
(c) the applicant must file a summary of submissions at least 5 business days
before the hearing.
(6) The Registrar may take into account a party’s failure to file a summary of
submissions under subregulation (5) in making an award of costs.
Note: Regulations 21.15 and 21.16 deal with hearings.
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Division 6 Miscellaneous
Regulation 9.21
50 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 6—Miscellaneous
9.21 Registrar may give direction
(1) The Registrar may give a direction in relation to an opposition to which this
Division applies:
(a) if requested by a party in writing; or
(b) on the Registrar’s own initiative.
(2) If the Registrar proposes to give a direction, the Registrar must give the parties
an opportunity to make representations about the direction.
(3) A direction must not be inconsistent with the Act or these Regulations.
(4) The Registrar must notify the parties of the direction as soon as practicable.
9.22 Registrar must notify parties of dismissal or discontinuance of opposition
If an opposition is dismissed under regulation 9.10 or discontinued, the Registrar
must notify the parties of the dismissal or discontinuance.
9.23 Removal of trade mark from register
If the Registrar dismisses the opposition under regulation 9.10, the Registrar
must remove the trade mark from the Register in respect of the goods, services,
or both, specified in the application for removal.
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Regulation 10.1
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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
(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.
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Regulation 10.3
52 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
10.3 Particulars of recorded assignment or transmission to be published
For the purposes of paragraph 108(1)(b) of the Act (which deals with assignment
and transmission):
(a) the following particulars of an assignment or transmission of a trade mark
for which registration is sought must be published:
(i) if a number has been allocated in the Trade Marks Office to the
application for registration of the trade mark—the number;
(ii) the name of the person to whom the trade mark is recorded as having
been assigned or transmitted;
(iii) the day on which the particulars of the assignment or transmission
were recorded; and
(b) if details of an application for registration of the trade mark have been
published in a way described in subregulation 4.7(2)—the particulars of the
assignment or transmission mentioned in paragraph (a) must be published
in the same way.
10.4 Recording of assignment etc of registered trade marks
(1) For the purposes of paragraph 110(1)(a) of the Act (which deals with assignment
and transmission), the Registrar must record particulars of the assignment or
transmission of a trade mark in accordance with this regulation, unless:
(a) the application to assign or transmit the trade mark is withdrawn; or
(b) a prescribed court determines otherwise.
(2) If there is no record made under Part 11 of the Act of a person claiming an
interest in, or a right in respect of, the trade mark, the Registrar must record the
particulars in the Register after ascertaining that a claim has not been recorded.
(3) If:
(a) there is a record made under Part 11 of the Act of a person, or persons,
claiming an interest in, or a right in respect of, the trade mark; and
(b) the Registrar has notified that person, or each of those persons, under
subregulation 10.5(1); and
(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.
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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.
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Part 11 Voluntary recording of claims to interests in and rights in respect of trade marks
Regulation 11.1
54 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Part 11—Voluntary recording of claims to interests in and
rights in respect of trade marks
11.1 Amendment of particulars—claimed interests or rights
(1) For the purposes of sections 115 and 119 of the Act (which deal with amendment
and cancellation of particulars), particulars of a claim to an interest in, or to a
right in respect of, a trade mark (other than the name, address or address for
service of a person whose claim is recorded) entered in the Register or recorded
under Division 3 of Part 11 of the Act may be amended in accordance with this
regulation.
(2) A request by a person to amend particulars of a claim to an interest in, or to a
right in respect of, a trade mark must be:
(a) in writing, in an approved form; and
(b) accompanied by material supporting the person’s entitlement to make the
request.
(3) The Registrar must amend the particulars in accordance with the request if:
(a) the request is made in accordance with subregulation (2); and
(b) the Registrar is reasonably satisfied that the person making the request is
entitled to make the request.
11.2 Amendment of name, address and address for service—claims not in the
Register
If a person:
(a) whose claim to an interest in, or to a right in respect of, a trade mark for
which registration is sought is recorded; and
(b) whose name, address or address for service has changed since the claim
was recorded;
gives notice of the new name or address to the Registrar, the Registrar must
amend the record accordingly.
Note: In relation to change of a person’s name, address or address for service that is recorded
in the Register, see sections 215 and 216 of the Act and regulation 21.3.
11.3 Cancellation of particulars—claimed interests or rights
(1) For the purposes of sections 115 and 119 of the Act (which deal with amendment
and cancellation of particulars), particulars of a claim to an interest in, or to a
right in respect of, a trade mark, entered in the Register or recorded under
Division 3 of Part 11 of the Act may be cancelled in accordance with this
regulation.
(2) A request to cancel particulars of a claim to an interest in, or to a right in respect
of, a trade mark must be made in writing:
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(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.
(5) Unless a request made under paragraph (2)(b) is withdrawn or a prescribed court
determines otherwise, the Registrar must, as soon as practicable:
(a) if, before the end of the period mentioned in paragraph (4)(b), a person the
particulars of whose claim are recorded informs the Registrar in writing
that the person does not object to cancellation of the particulars—cancel
the particulars in accordance with the request; or
(b) if paragraph (a) does not apply—cancel the particulars after the end of that
period in accordance with the request.
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Part 13 Importation of goods infringing Australian trade marks
Regulation 13.1A
56 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Part 13—Importation of goods infringing Australian trade
marks
13.1A Definition
In this Part, a reference to the Comptroller-General of Customs includes a
reference to:
(a) for Norfolk Island—the Collector as defined in the Customs Act 1913 of
Norfolk Island; and
(b) for Christmas Island—the Comptroller as defined in the Customs Act 1901
of Christmas Island; and
(c) for the Cocos (Keeling) Islands—the Comptroller as defined in the
Customs Act 1901 of the Cocos (Keeling) Islands.
13.1 Action period
For the definition of action period in section 6 of the Act, the period is 10
working days.
13.2 Claim period
For the definition of claim period in section 6 of the Act, the period is 10
working days.
13.3 Notice of objection to importationprescribed document
For subsection 132(1) of the Act, a document that sets out the particulars of
registration of the registered trade mark is prescribed.
13.4 Notice of objection to importation—authorised users
(1) For paragraph 132(3)(b) of the Act, the period is 2 months from the day the
request is made by the authorised user under subsection 132(2) of the Act.
(2) For paragraph 132(3)(e) of the Act, the authorised user must give to the
Comptroller-General of Customs documents that show:
(a) the authorised user has power to give a notice of objection under
subsection 132(1) of the Act; and
(b) the authorised user has made the request; and
(c) if the authorised user gives to the Comptroller-General of Customs the
notice after the period mentioned in subregulation (1) has ended—the
period has ended.
Note: Examples of documents for paragraph (2)(a) are:
(a) an agreement between the registered owner of a trade mark, and the authorised user of the trade mark, that the authorised user of the trade mark is able to give notice of objection; and
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(b) a declaration by the registered owner that the authorised user of the trade mark is able to give notice of objection.
13.5 Claim for release of seized goods
(1) For paragraph 136(3)(a) of the Act, the claim must be in a form approved by the
Comptroller-General of Customs.
(2) For paragraph 136(3)(b) of the Act, the claim must include the following
information:
(a) the designated owner’s full name, home or business address and address
for service;
(b) a telephone number for the designated owner;
(c) the grounds for seeking the release of the seized goods;
(d) if the designated owner’s home or business address is not in Australia:
(i) the full name and the home or business address of a person who is the
designated owner’s agent in Australia; and
(ii) an address for service for the person who is the designated owner’s
agent in Australia; and
(iii) a telephone number for the person; and
(iv) information showing that the person agreed to be the designated
owner’s agent;
(e) if a person or body other than the agent made arrangements on the
designated owner’s behalf for the seized goods to be brought to Australia:
(i) the full name, home or business address and address for service of the
person or body; and
(ii) a telephone number for the person or body.
Note: Examples of grounds for paragraph (c) are:
(a) that the goods do not infringe the notified trade mark; and
(b) that the importation of the goods does not infringe the notified trade mark.
13.6 Period for compliance with request of Comptroller-General of Customs for
information etc.
For the purposes of subsection 143(2) of the Act (which deals with giving
information to the Comptroller-General of Customs), the period for complying
with a request under subsection 143(1) of the Act is 10 working days from the
day on which the request is made.
13.7 Modification of the Act in its application to Norfolk Island
Part 13 of the Act in its application to Norfolk Island is modified as set out in
Schedule 3.
13.8 Modification of the Act in its application to Christmas Island
Part 13 of the Act in its application to Christmas Island is modified as set out in
Schedule 4.
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Regulation 13.9
58 Trade Marks Regulations 1995
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13.9 Modification of the Act in its application to Cocos (Keeling) Islands
Part 13 of the Act in its application to the Cocos (Keeling) Islands is modified as
set out in Schedule 5.
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Certification trade marks Part 16
Regulation 16.1
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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.
(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).
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60 Trade Marks Regulations 1995
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(4) If, in the period that ends 1 month after the date of the advertisement in the
Official Journal of an initial assessment:
(a) a person responds in writing to the Commission in relation to a notice
under subregulation (2) or an advertisement under subregulation (3); and
(b) no person requests the Commission in writing to hold a conference on a
matter included in the initial assessment;
the Commission must, before making a decision on the application:
(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).
16.4 Holding of conferences
(1) If, in the period that ends 1 month after the date of the advertisement in the
Official Journal of an initial assessment:
(a) a person requests the Commission in writing to hold a conference on a
matter included in the initial assessment; and
(b) no person otherwise responds in writing to the Commission in relation to a
notice under subregulation 16.3(2) or an advertisement under
subregulation 16.3(3);
the Commission must hold the conference before it makes a decision on the
application.
(2) As soon as practicable after the Commission receives a request under
subregulation (1) for a conference, the Commission must:
(a) invite the applicant and any other person mentioned in subregulation (1):
(i) to attend the conference; and
(ii) to make an oral or written submission at the conference on the views
expressed by another person that are mentioned in
subparagraph (b)(ii); and
(b) give to the applicant and any other person mentioned in subregulation (1):
(i) reasonable notice of the time, date and place of the conference; and
(ii) a reasonable opportunity to express views that are relevant to the
conference, either orally at, or by written submission before or during,
the conference; and
(iii) a copy of each written submission to which subparagraph (ii) refers
that is made by another person.
(3) If, in the period that ends 1 month after the date of the advertisement in the
Official Journal of an initial assessment:
(a) a person requests the Commission in writing to hold a conference on a
matter included in the initial assessment; and
(b) a person otherwise responds in writing to the Commission in relation to a
notice under subregulation 16.3(2) or an advertisement under
subregulation 16.3(3);
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the Commission must hold the conference before it makes a decision on the
application.
(4) As soon as practicable after the Commission receives a request under
subregulation (3) for a conference, the Commission must:
(a) invite the applicant and any person who has responded in writing to the
Commission:
(i) to attend the conference; and
(ii) to make an oral or written submission at the conference on the views
expressed by another person that are mentioned in
subparagraph (b)(ii); and
(b) give to the applicant and any person who has responded in writing to the
Commission:
(i) reasonable notice in writing of the time, date and place of the
conference; and
(ii) a reasonable opportunity to express views that are relevant to the
conference, either orally at, or by written submission before or during,
the conference; and
(iii) a copy of each response to which paragraph (3)(b) refers, and of each
written submission to which subparagraph (ii) refers, that is made by
another person.
(5) If a person who is invited to attend a conference:
(a) informs the Commission that the person does not wish to attend the
conference; or
(b) does not attend the conference;
the conference may proceed in the absence of the person.
16.5 Consideration of applications
(1) In considering an application for registration of a certification trade mark for the
purposes of making a decision under subsection 175(2), (3) or (4) of the Act
(which deal with consideration of applications), the Commission must have
regard to the matters specified in subregulation (2).
(2) The Commission must have regard to:
(a) the initial assessment; and
(b) any response in relation to a notice under subregulation 16.3(2) or an
advertisement under subregulation 16.3(3) that is relevant; and
(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.
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16.6 Criteria for Commission consideration of rules
For the purposes of paragraph 175(2)(b) of the Act (which deals with criteria for
rules governing use), the Commission must have regard to the following criteria:
(a) the principles relating to restrictive trade practices set out in Part IV of the
Trade Practices Act 1974;
(b) the principles relating to unconscionable conduct set out in Part IVA of that
Act;
(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 AAT for the review of the decision to which the advertisement
relates.
16.8 Applications to vary rules
(1) For the purposes of subsection 178(1) of the Act (which deals with the variation
of rules), the registered owner of a certification trade mark may apply to the
Commission to approve a variation of the rules governing the use of the
certification trade mark.
(2) An application to approve the variation of the rules governing the use of a
registered certification trade mark must:
(a) be in writing; and
(b) have with it a copy of the rules governing the use of the registered
certification trade mark that incorporate the proposed variation.
16.9 Consideration of applications to vary rules
(1) The Commission must make an initial assessment of an application for approval
of the variation of the rules governing the use of a registered certification trade
mark as soon as practicable after it receives the application.
(2) Subregulations 16.3(2), (3) and (4) and regulation 16.4 apply to an application to
approve the variation of the rules governing the use of a registered certification
trade mark as if a reference in those provisions to an application for registration
of a certification trade mark were a reference to an application to approve the
variation of the rules governing the use of a registered certification trade mark.
(3) Subregulation 16.5(2) applies to a decision whether to approve an application for
variation of the rules governing the use of a registered certification trade mark.
Note: Subsection 178(3) of the Act requires the Commission, in deciding whether to approve
a variation, to have regard to prescribed criteria, which are the criteria set out in
regulation 16.6.
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16.10 Decision on variation of rules
(1) The Commission may approve a variation of the rules if the Commission is
satisfied that the rules, as varied:
(a) would not be to the detriment of the public; and
(b) are satisfactory having regard to the criteria prescribed in regulation 16.6;
and
(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 AAT for review of the decision to which the notice relates.
Note: registered owner is defined in section 6 of the Act.
16.10A Assignment of unregistered certification trade marks
(1) An application to the Commission for its consent to the assignment of an
unregistered certification trade mark must:
(a) be made by the applicant for registration of the certification trade mark;
and
(b) state the name, address, and address for service of the prospective assignee;
and
(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.
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(2) If the prospective assignee does not propose, after the assignment, to apply the
same rules governing use of the certification trade mark as the applicant for
registration of the trade mark applies, or proposes to apply, the Commission must
have regard to the following matters in considering an application:
(a) whether under the proposed rules the attributes a person must have to
become an approved certifier are sufficient, in the opinion of the
Commission, to enable a person to competently assess whether or not
goods or services meet the certification requirements;
(b) whether the proposed rules would not be to the detriment of the public;
(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
(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.
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(2) The Registrar must publish the certified copy of the rules, provided to the
Registrar by the Commission in accordance with subsection 175(2) of the Act, as
soon as practicable after the Registrar advertises acceptance of the application in
the Official Journal in accordance with paragraph 176(3)(b) of the Act.
(3) The Registrar may publish the rules, or the certified copy of the rules, in any
manner the Registrar thinks fit, including (but not limited to):
(a) a listing in a computer database that is publicly available; or
(b) making the rules or certified copy of the rules available for public
inspection.
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Regulation 17.1
66 Trade Marks Regulations 1995
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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
(e) the reference in section 189 of the Act to a trade mark that is not registered
in the name of the registered owner included a trade mark that is not a
protected international trade mark held by the registered owner.
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Part 17A—Protected international trade marks under the
Madrid Protocol
Division 1—General
17A.1 Purpose of Part
This Part provides for matters that enable the performance of the obligations of
Australia, or obtain for Australia an advantage or benefit, under the Madrid
Protocol.
17A.2 Definitions for Part
change of ownership includes assignment or transmission.
Common Regulations means the Common Regulations under the Madrid
Agreement Concerning the International Registration of Marks and the Protocol
relating to that Agreement, as in force on 1 September 2009.
Contracting Party of the holder has the meaning given by Rule 1(xxvibis) of the
Common Regulations.
date of international registration means the date recorded in the International
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
(b) in relation to another international registration of a trade mark—the person
or persons in whose name or names the international registration of the
trade mark is recorded in the International Register.
International Bureau means the International Bureau of the World Intellectual
Property Organisation.
International Register means the register maintained by the International Bureau
for the purposes of the Protocol.
international registration of a trade mark means registration of the mark in the
International Register.
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Regulation 17A.3
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international registration designating Australia, or IRDA, means a request,
made under Article 3 ter
(1) or (2) of the Protocol, for extension to Australia of the
protection resulting from the international registration of a trade mark.
Office of origin has the meaning given by Article 2(2) of the Protocol.
priority date, for a trade mark that is the subject of an IRDA or a protected
international trade mark, has the meaning given by regulation 17A.3.
protected international trade mark means a trade mark to which protection
resulting from international registration of the mark is extended in Australia in
accordance with these Regulations.
Protocol means the Madrid Protocol.
Record of International Registrations means the record required to be kept by
regulation 17A.66.
17A.3 Meaning of priority date
(1) The priority date for a trade mark that is the subject of an IRDA in respect of
particular goods or services is the date that would be the date of effect of the
protection of the trade mark in respect of those goods or services if the trade
mark became a protected international trade mark.
(2) The priority date for a protected international trade mark in respect of particular
goods or services is the date of effect of the protection of the trade mark in
respect of those goods or services.
17A.4 Meaning of date of effect
(1) Subject to subregulation (2), the date of effect of the protection of a protected
international trade mark is:
(a) if the request for extension of protection to Australia was made under
Article 3 ter
(1) of the Protocol—the date of international registration of the
trade mark; or
(b) if the request for extension of protection to Australia was made under
Article 3 ter
(2) of the Protocol—the date of recording of the request.
(2) If:
(a) the request for extension of protection to Australia was in respect of a trade
mark whose registration had also been sought in 1 or more Convention
countries; and
(b) the holder claimed a right of priority under regulation 17A.15 for
protection of the trade mark in respect of particular goods or services; and
(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
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(e) if applications to register the trade mark were made in more than 1
Convention country—from (and including) the day on which the earliest of
those applications was made.
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Division 2 Application for international registration of a trade mark
Regulation 17A.5
70 Trade Marks Regulations 1995
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Division 2—Application for international registration of a trade
mark
17A.5 Purpose of Division
This Division makes provision for dealing with applications for international
registration of trade marks that are to be filed with the International Bureau
through the intermediary of the Trade Marks Office.
17A.6 Eligibility to apply for international registration
(1) A person who is:
(a) the registered owner of a registered trade mark; or
(b) an applicant for registration of a trade mark;
may apply for international registration of the trade mark.
(2) The person must:
(a) be an Australian citizen; or
(b) be domiciled in Australia; or
(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:
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(a) check the application; and
(b) certify that the information in the application corresponds with the
information held by the Registrar in respect of the application for
registration of the trade mark (the basic application) or the registration of
the trade mark (the basic registration), as the case requires; and
(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.
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Division 3 International registration designating Australia
Regulation 17A.11
72 Trade Marks Regulations 1995
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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.
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.
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(3) If the Registrar is reasonably satisfied that a term to be used in an IRDA to
specify goods or services in respect of which protection is sought:
(a) is too vague for the purposes of determining the scope of that protection; or
(b) is incomprehensible; or
(c) is linguistically incorrect;
then the term must not be used in the IRDA to specify the goods or services in
respect of which protection is sought.
17A.14A Representation of trade marks
If the representation of a trade mark in an IRDA includes words of a language
other than English, the holder of the IRDA must file a translation of the words
into English, if required to do so by the Registrar.
Note: Rule 9(4)(a)(xii) of the Common Regulations provides that a transliteration is required
if the trade mark consists of or contains matter in characters other than Latin characters
or numbers expressed in numerals other than Arabic or Roman numerals.
17A.15 Claim for priority
(1) If:
(a) a person has made an application for the registration of a trade mark in 1 or
more Convention countries; and
(b) within 6 months after the day on which that application, or the first of those
applications, was made, that person or another person (successor in title) of
whom that person is a predecessor in title makes an IRDA in respect of
some or all of the goods, services or goods and services in respect of which
registration was sought in that country or those countries;
that person or that person’s successor in title may claim a right of priority for the
protection of the trade mark in respect of any or all of those goods, services or
goods and services.
(2) The right of priority must be claimed in the IRDA that is notified to the Registrar
in accordance with this Division.
Note: Rule 9(4)(iv) of the Common Regulations contains requirements relating to claims for
priority.
(3) The priority claimed is for the protection of the trade mark in respect of the
goods, services or goods and services:
(a) if an application to register the trade mark was made in only 1 Convention
country—from (and including) the day on which the application was made
in that country; or
(b) if applications to register the trade mark were made in more than 1
Convention country—from (and including) the day on which the earliest of
those applications was made.
Note: For Convention country see section 225 of the Act.
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Regulation 17A.16
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17A.16 Examination of IRDA—report to holder
(1) If, in the course of an examination of an IRDA, the Registrar reasonably believes
that:
(a) the IRDA is not in accordance with this Division; or
(b) there are grounds under Subdivision 2 for rejecting it in whole or in part;
the Registrar must send a report in accordance with rule 17 of the Common
Regulations to the holder through the intermediary of the International Bureau.
(2) Such a report is a provisional refusal for the purposes of the Protocol.
(3) The report must include:
(a) notice of the date by which the Registrar must notify his or her final
decision on examination to the International Bureau; and
(b) notice that the Registrar is not required to consider any response by the
holder to the report unless the holder has notified the Registrar, in writing,
of the holder’s address for service in Australia.
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
(b) there are grounds under Subdivision 2 for rejecting it in whole or in part;
the Registrar must tell the holder, in writing, of that belief.
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(3) Unless the acceptance of an IRDA is deferred under regulation 17A.21, a report
under subregulation (2) about the IRDA must specify the date by which the
Registrar must notify his or her final decision on examination to the International
Bureau.
(4) Regulation 17A.17 and this regulation apply to a report under subregulation (2)
as if it were a report under regulation 17A.16.
17A.19 Examination—additional requirements
(1) In the course of an examination of an IRDA for which a right of priority is
claimed, the Registrar may, by writing, require the holder to file:
(a) a copy of any earlier application certified in the trade marks office
(however described) of the Convention country in which it was filed; and
(b) if the earlier application is not in English:
(i) a translation of the earlier application into English; and
(ii) a certificate of verification relating to the translation.
(2) If the holder is the successor in title to the person who made the earlier
application, the Registrar may, by writing, require the holder to file documentary
evidence that is sufficient to establish the passing of title to the holder.
17A.20 Period within which final decision on examination must be notified
(1) For an IRDA in respect of which a report is made under regulation 17A.16, the
Registrar must notify his or her decision under regulation 17A.24 (the final
decision on examination) to the International Bureau:
(a) if paragraph (b) does not apply—within 15 months from the date of that
report (whether or not a further report is made under regulation 17A.18); or
(b) if a further report raises grounds under Subdivision 2 for rejecting the
IRDA that were not raised in the report made under regulation 17A.16—
within 15 months from the date of the further report.
(2) In determining the period of 15 months for the purposes of paragraph (1)(a) or
(b) in relation to an IRDA, no account is to be taken of any period during which
acceptance of the IRDA is deferred under regulation 17A.21.
(3) The holder of an IRDA may, before the end of a period mentioned in
subregulation (1), or that period as extended under section 224 of the Act or as a
result of a previous application of subregulation (4), request the Registrar in
writing to extend the period.
(4) The Registrar must, in accordance with a request made under subregulation (3),
extend a period, unless:
(a) the period; or
(b) that period as extended under section 224 of the Act or as a result of a
previous application of this subregulation;
would be extended for more than 6 months after the end of the relevant period
mentioned in subregulation (1).
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Note 1: If an extension of the time for acceptance of an IRDA is sought after the end of a
period mentioned in subregulation (1), or of an extended period mentioned in
subregulation (3), application must be made under section 224 of the Act.
Note 2: If a period mentioned in subregulation (1) has been extended by 6 months, any
application for a further extension of time must be made under section 224 of the Act.
17A.21 Deferment of acceptance
(1) The Registrar may, at the written request of the holder, defer acceptance of an
IRDA if:
(a) the request is made within a period mentioned in subregulation 17A.20(1);
and
(b) the Registrar reasonably believes that there are grounds for rejecting the
IRDA under subsection 44(1) or (2) of the Act (as applied by
regulation 17A.28) because of another trade mark:
(i) that is registered by another person; or
(ii) that is a protected international trade mark; or
(iii) in respect of which an application for registration, or an IRDA, has
been made by another person; and
(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.
(2) The Registrar may, on his or her own initiative, defer acceptance of the IRDA
within the period mentioned in subregulation 17A.20(1), or (if such a period is
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extended under section 224 of the Act or subregulation 17A.20(4)) the extended
period, if:
(a) the time within which proceedings mentioned in paragraph (b) may be
begun, or an application mentioned in paragraph (c) may be made, has not
ended; or
(b) appeal proceedings under a provision of the Act have begun in a prescribed
court in relation to the IRDA; or
(c) an application has been made to the AAT 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).
(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
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(d) if acceptance is deferred because of subparagraph 17A.21(1)(c)(iv)—when
the proceedings to have the Register or the Record of International
Registrations rectified in respect of the other trade mark are determined or
otherwise disposed of; and
(e) if acceptance is deferred because of subparagraph 17A.21(1)(c)(v)—when
the registration of the other trade mark is renewed or the other trade mark
is removed from the Register; and
(f) if acceptance is deferred because of subparagraph 17A.21(1)(c)(vi)—when
the international registration of the other trade mark is renewed or the other
trade mark is removed from the International Register; and
(g) if acceptance is deferred because of paragraph 17A.21(2)(a)—at the end of
2 months after the beginning of the period in which:
(i) proceedings mentioned in paragraph 17A.21(2)(b) may be begun; or
(ii) an application mentioned in paragraph 17A.21(2)(c) may be made;
and
(h) if acceptance is deferred because of paragraph 17A.21(2)(b) or (c)—at the
end of:
(i) 3 months after the determination, or other disposal, of the proceedings
or review; or
(ii) such time as the court to which any appeal is brought, or the AAT, or
a court to which any appeal arising from review by the AAT is
brought, allows; and
(i) if acceptance is deferred because of paragraph 17A.21(2)(d)—at the end of
a period after the death of the holder that the Registrar reasonably regards
as sufficient in the circumstances; and
(j) if acceptance is deferred because of subregulation 17A.21(3):
(i) if the ACCC gives a certificate under subsection 175(2)of the Act (as
applied by regulation 17A.50) in respect of the IRDA—when the
Registrar accepts the IRDA in respect of the certification trade mark;
and
(ii) if the ACCC does not give such a certificate—at the end of 2 months
after the date of the notice to the Registrar under subsection 175(4) of
the Act (as applied by regulation 17A.50).
(4) If acceptance of an IRDA is deferred as a result of the operation of more than 1
of the provisions of paragraph 17A.21(1)(c) and subregulation 17A.21(2), the
deferment period ends in accordance with the relevant provision of
subregulation (3) under which the deferment period ends later or last, as the case
requires.
(5) The Registrar must inform the holder in writing of:
(a) the end of a period of deferment; and
(b) if acceptance is deferred under subregulation 17A.21(1)—the last day of
the relevant period mentioned in paragraph 17A.20(1)(a) or (b).
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17A.23 Expedited examination
Regulations 4.18 and 4.19 apply in relation to an IRDA as if a reference in those
regulations to an application for registration of a trade mark were a reference to
the IRDA.
17A.24 Final decision on examination
(1) The Registrar must, after the examination, accept the IRDA unless he or she is
satisfied that:
(a) it is not in accordance with this Division; or
(b) there are grounds for rejecting it.
(2) The Registrar may accept the IRDA subject to conditions or limitations.
(3) The Registrar must reject an IRDA, in whole or in part, if the Registrar is
satisfied that:
(a) it is not in accordance with this Division; or
(b) there are grounds for rejecting it, in whole or in part.
17A.25 Notice of final decision on examination
(1) If the Registrar decides to accept the IRDA as notified, the Registrar:
(a) must notify the decision in the Official Journal:
(i) specifying the particulars of the IRDA; and
(ii) stating that, unless a notice of opposition is filed within the period
allowed under paragraph 17A.29(2)(b), the trade mark that is the
subject of the IRDA will be protected in Australia in respect of the
goods, services or goods and services in respect of which protection
was sought; and
(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:
(a) must notify the International Bureau of the final decision on examination in
accordance with the Common Regulations; and
(b) must notify the holder, in writing, of the final decision on examination; and
(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.
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17A.26 Appeal
(1) Section 35 of the Act applies in relation to the Registrar’s decision under
regulation 17A.24 as if:
(a) the reference in that section to an applicant were a reference to the holder
of an IRDA; and
(b) the reference in that section to accepting an application were a reference to
accepting an IRDA; and
(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:
(a) the IRDA should not have been accepted, taking account of all the
circumstances that existed when the IRDA was accepted (whether or not
the Registrar knew then of their existence); and
(b) it is reasonable to revoke the acceptance, taking account of all the
circumstances;
the Registrar may revoke the acceptance of the IRDA.
(2) If the Registrar revokes the acceptance of the IRDA:
(a) the IRDA is taken never to have been accepted; and
(b) this Subdivision again applies in relation to the IRDA.
Subdivision 2—Grounds for rejecting IRDA
17A.28 Grounds for rejecting IRDA
(1) The grounds for rejecting an IRDA are the grounds set out in sections 39 to 44 of
the Act, as affected by subregulation (2).
(2) Sections 39 to 44 apply in relation to an IRDA as if:
(a) a reference in those sections:
(i) to an application for the registration of a trade mark were a reference
to the IRDA; and
(ii) to an applicant were a reference to the holder of the IRDA; and
(b) the reference in paragraph 41(3)(b) to the filing date in respect of an
application were a reference to the date of international registration or the
date of recording, as applicable, in respect of the IRDA; and
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(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.
(3) The ground set out in section 177 of the Act is a ground for rejecting an IRDA
that is for a certification trade mark.
Subdivision C—Opposition to IRDA
17A.29 Definitions
In this Subdivision:
extension of protection means the extension of protection in Australia to the
trade mark that is the subject of the IRDA.
notice of intention to defend means a notice filed under regulation 17A.34H.
notice of intention to oppose means a notice filed under regulation 17A.33.
notice of opposition means:
(a) a notice of intention to oppose; and
(b) a statement of grounds and particulars.
opponent means a person who files:
(a) a notice of intention to oppose; and
(b) a statement of grounds and particulars.
party means an IRDA holder or opponent.
statement of grounds and particulars means a statement by an opponent that
sets out:
(a) the grounds on which the opponent intends to rely; and
(b) the facts and circumstances forming the basis for the grounds.
Note: The following terms are defined in section 6 of the Act:
(a) applicant;
(b) approved form;
(c) employee;
(d) file;
(e) month;
(f) person.
17A.30 Registrar may give direction about filing document or evidence
(1) If a document or evidence may or must be filed under this Subdivision, the
Registrar may give a direction specifying:
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(a) how many copies of the document or evidence must be filed; and
(b) the form in which the document or evidence is to be filed; and
(c) the means by which the document or evidence is to be filed.
(2) If a party does not comply with the direction, the Registrar may:
(a) treat the document or evidence as not having been filed; or
(b) tell the party to comply with the direction.
(3) The Registrar may make or revoke the direction as the Registrar sees fit.
(4) Regulation 17A.31 does not apply to this regulation.
17A.31 Notification and opportunity to make representations
(1) This regulation applies if:
(a) a party makes a request to the Registrar under this Subdivision; or
(b) the Registrar proposes to make a decision on the Registrar’s own initiative
under this Subdivision.
(2) The Registrar must:
(a) for paragraph (1)(a)—notify the other party of the request, including by
giving the other party a copy of the request; or
(b) for paragraph (1)(b)—notify the parties of the proposed decision.
(3) If the Registrar proposes to grant the request, the Registrar must give the parties
an opportunity to make representations:
(a) in writing; or
(b) at a hearing; or
(c) by other means that the Registrar states in the notification.
(4) The Registrar must notify the parties of the Registrar’s decision.
17A.32 Filing of notice of opposition
(1) A notice of opposition is taken to be filed when the notice of intention to oppose
and the statement of grounds and particulars have been filed under
regulations 17A.33 and 17A.34A.
(2) The Registrar must notify the International Bureau of the filing of the notice of
opposition in accordance with rule 17, as applicable, of the Common
Regulations.
17A.33 Filing of notice of intention to oppose
(1) If the Registrar advertises the acceptance of an IRDA in the Official Journal, a
person may oppose the extension of protection by filing a notice of intention to
oppose within 2 months from the advertisement of the acceptance.
(2) The notice must be in an approved form.
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(3) The Registrar must give a copy of the notice to the holder of the IRDA.
17A.34 Grounds for opposing IRDA
(1) The extension of protection may be opposed on any of the grounds on which an
IRDA may be rejected under Subdivision 2, except the ground that the trade
mark cannot be represented graphically.
(2) The extension of protection may also be opposed on any of the grounds set out in
sections 58 to 61 and 62A of the Act, as affected by subregulation (3).
(3) Sections 58 to 61 and 62A of the Act apply in relation to an IRDA as if:
(a) a reference in those sections:
(i) to an application for the registration of a trade mark were a reference
to the IRDA; and
(ii) to an applicant were a reference to the holder of the IRDA; and
(iii) to the registration of a trade mark were a reference to the extension of
protection in Australia to the trade mark that is the subject of the
IRDA; and
(b) the reference in paragraph 60(a) of the Act to the priority date for the
registration of the trade mark were a reference to the priority date for the
trade mark that is the subject of the IRDA.
(4) The extension of protection may also be opposed on the grounds that:
(a) a document filed in support of the IRDA was amended contrary to the Act;
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 provides for the amendment of documents filed with the
Registrar.
17A.34A Filing of statement of grounds and particulars
(1) A statement of grounds and particulars must be filed within one month from the
day the notice of intention to oppose is filed.
(2) The statement must be in an approved form.
17A.34B Statement of grounds and particulars must be adequate
(1) The Registrar must assess the adequacy of a statement of grounds and
particulars.
(2) If the Registrar decides that the statement is adequate, the Registrar must give a
copy of the statement to the holder of the IRDA.
(3) If the Registrar decides that the statement is inadequate:
(a) the Registrar may direct the opponent to rectify the inadequacy by filing
more information on the basis for one or more of the grounds; or
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(b) if all the grounds are inadequately particularised, the Registrar may dismiss
the opposition: or
(c) if only some of the grounds are inadequately particularised, the Registrar
may:
(i) delete from the statement some or all of the material that is
inadequate; and
(ii) treat the result as the statement for the purposes of these Regulations;
and
(iii) give a copy of the amended statement to the opponent.
(4) If the Registrar decides that the statement is still inadequate after the information
is filed under paragraph (3)(a):
(a) the Registrar may dismiss the opposition; or
(b) the Registrar may:
(i) delete from the statement some or all of the material that is
inadequate; and
(ii) treat the result as the statement for the purposes of these Regulations;
and
(iii) give a copy of the amended statement to the opponent.
(5) If the Registrar decides that the information filed under paragraph (3)(a) rectifies
the inadequacy of the statement, the Registrar must give a copy of the statement
and the information filed in relation to paragraph (3)(a) to the holder of the
IRDA.
(6) The opponent may apply to the Administrative Appeals Tribunal for review of a
decision under this regulation to dismiss the opposition or delete material from
the statement of grounds and particulars.
(7) Regulation 17A.31 does not apply to this regulation.
17A.34C Extension of time for filing—application
(1) A person who intends to oppose the extension of protection may request the
Registrar to extend:
(a) the period for filing a notice of intention to oppose under
subregulation 17A.33(1); or
(b) the period for filing a statement of grounds and particulars under
subregulation 17A.34A(1).
(2) A request under paragraph (1)(a) or (b) may be made:
(a) within the period for filing the document in question; or
(b) before the extension of protection of the IRDA is entered on the Record of
International Registrations under paragraph 17A.37(1)(b).
Note: See subparagraph (3)(b)(ii) and subregulation 17A.34D(2) in relation to the
consequences of making the request after the filing period has ended.
(3) The request must:
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(a) be in an approved form; and
(b) be accompanied by a declaration stating:
(i) the facts and circumstances forming the basis for the grounds; and
(ii) if the period for filing the notice or the statement of grounds and
particulars has ended—the reason why the request was not made
within the period.
Note: Regulations 21.6 and 21.7 deal with making and filing declarations.
(4) The request must be made only on either or both of the following grounds:
(a) an error or omission by the person, the person’s agent, the Registrar or an
employee;
(b) circumstances beyond the control of the person, other than an error or
omission by the person, the person’s agent, the Registrar or an employee.
(5) Subsection 52(5) of the Act applies to the request.
(6) Regulation 17A.31 does not apply to this regulation.
17A.34D Extension of time for filing—grant
(1) The Registrar may grant a request under subregulation 17A.34C(1) for an
extension of time if the Registrar is satisfied that the grounds set out in the
request justify the extension.
(2) However, if the request is made after the period for filing the notice or statement
of grounds and particulars has ended, the Registrar must not grant the extension
unless the Registrar is satisfied that there is sufficient reason for the delay in
making the request.
(3) The Registrar must decide the length of the extended period having regard to
what is reasonable in the circumstances.
17A.34E Opposition may proceed in name of other person
Section 53 of the Act applies to a notice of intention to oppose filed under this
Subdivision.
17A.34F Amendment of notice of intention to oppose
(1) An opponent may request the Registrar to amend a notice of intention to oppose
to correct a clerical error or obvious mistake.
(2) If an opposition proceeds in the name of another person under section 53 of the
Act, the person may request the Registrar to amend the notice of intention to
oppose to record the person’s name.
(3) The Registrar may grant a request under subregulation (1) or (2) on terms that
the Registrar considers appropriate.
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(4) If the Registrar grants the request, the Registrar must give a copy of the notice of
the amended intention to oppose to the IRDA holder.
(5) Regulation 17A.31 does not apply to this regulation.
17A.34G Amendment of statement of grounds and particulars
(1) An opponent may request the Registrar to amend the statement of grounds and
particulars to:
(a) correct an error or omission in the grounds of opposition or the facts and
circumstances forming the basis for the grounds; or
(b) amend a ground of opposition; or
(c) add a new ground of opposition; or
(d) to amend the facts and circumstances forming the basis for the grounds.
(2) The Registrar may grant the request on terms that the Registrar considers
appropriate.
(3) However, the Registrar may grant a request to:
(a) amend a ground of opposition; or
(b) add a new ground of opposition;
only if the Registrar is satisfied that the amendment or addition relates to
information of which the opponent could not reasonably have been aware at the
time of filing the statement.
(4) If the Registrar grants the request, the Registrar must give a copy of the amended
statement to the IRDA holder.
17A.34H Filing of notice of intention to defend
(1) The IRDA holder must file a notice of intention to defend within one month from
the day the Registrar notifies the International Bureau under
subregulation 17A.32(2).
(2) The holder must file an Australian address for service with the notice.
(3) The Registrar must give a copy of the notice to the opponent.
(4) If the holder does not file the notice within the period mentioned in
subregulation (1), the Registrar may decide to:
(a) take the opposition to have succeeded; and
(b) refuse protection to the holder.
(5) The Registrar is not required to take any action in response to a notice of
intention to defend filed under subregulation (1) unless the holder has notified
the Registrar, in writing, of the holder’s address for service in Australia.
(6) A requirement to:
(a) give a document to a person; or
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Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(b) give a person an opportunity to make written representations or to be
heard;
does not apply if no address for service of the person is recorded in the Record of
International Registrations.
(7) The Registrar must notify the parties of the Registrar’s decision.
17A.34J Filing of evidence
(1) The Registrar must notify the parties that:
(a) all the evidence for an evidentiary period mentioned in this regulation has
been filed; or
(b) no evidence was filed for the period.
(2) The Registrar must give a copy of any evidence filed by a party under this
regulation to the other party:
(a) before the end of the relevant evidentiary period, if the Registrar considers
it appropriate to do so; or
(b) after the evidentiary period ends.
Evidence in support
(3) An opponent must file any evidence in support of the opposition within 3 months
from the day the opponent is given a copy of the notice of intention to defend.
Evidence in answer
(4) If the opponent files evidence in support of the opposition, the IRDA holder must
file any evidence in answer to the evidence in support within 3 months from the
day the Registrar:
(a) gives the IRDA holder:
(i) all the evidence in support; or
(ii) if the opponent files the evidence in support in instalments—the final
instalment of the evidence in support; and
(b) notifies the IRDA holder that all the evidence in support has been filed.
(5) If the opponent does not file any evidence in support of the opposition, the IRDA
holder must file any evidence in answer to the statement of grounds and
particulars within 3 months from the day the Registrar notifies the IRDA holder
that no evidence in support was filed.
Evidence in reply
(6) If the IRDA holder files evidence in answer under subregulation (4) or (5), the
opponent must file any evidence in reply to the evidence in answer within 2
months from the day the Registrar:
(a) gives the opponent:
(i) all the evidence in answer; or
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Regulation 17A.34K
88 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(ii) if the IRDA holder files the evidence in answer in instalments—the
final instalment of the evidence in answer; and
(b) notifies the opponent that all the evidence in answer has been filed.
17A.34K Extension of time for filing
(1) A party may request the Registrar to extend a period for filing evidence
mentioned in regulation 17A.34J.
(2) The Registrar may extend the period only if the Registrar is satisfied that:
(a) the party:
(i) has made all reasonable efforts to comply with all relevant filing
requirements of this Subdivision; and
(ii) despite acting promptly and diligently at all times to ensure the filing
of the evidence within the period, is unable to do so; or
(b) there are exceptional circumstances that justify the extension.
(3) The Registrar:
(a) must decide the length of the extended period having regard to what is
reasonable in the circumstances; and
(b) may do so on terms that the Registrar considers appropriate.
(4) In this regulation:
exceptional circumstances includes the following:
(a) a circumstance beyond the control of a party that prevents the party from
complying with a filing requirement under this Subdivision;
(b) an error or omission by the Registrar or an employee that prevents a party
from complying with a filing requirement under this Subdivision;
(c) an order of a court or a direction by the Registrar that the opposition be
stayed.
17A.34L Registrar may allow cooling-off period
(1) This regulation applies to an opposition if:
(a) the notice of opposition has been filed; and
(b) the Registrar has not made a decision on the opposition under
regulation 17A.34N; and
(c) the opposition has not been dismissed under regulation 17A.34B.
(2) If the Registrar is satisfied that the parties agree to a cooling-off period, the
Registrar must allow a cooling-off period of 6 months.
(3) The Registrar must extend the cooling-off period for 6 months if, before the end
of the period, the Registrar is satisfied that the parties agree to the extension.
(4) The Registrar must not:
(a) further extend the cooling-off period; or
(b) allow more than one cooling-off period for an opposition.
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Regulation 17A.34M
Trade Marks Regulations 1995 89
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(5) If a party files a notice in an approved form requesting the Registrar to
discontinue the cooling-off period, the Registrar must do so.
(6) The Registrar may direct the parties on steps they must take:
(a) if the cooling-off period is discontinued; or
(b) otherwise—when the cooling-off period ends.
(7) The opposition resumes:
(a) if the cooling-off period is discontinued; or
(b) otherwise—when the cooling-off period ends.
(8) If:
(a) the cooling-off period begins during the period mentioned in
regulation 17A.34H or an evidentiary period mentioned in
regulation 17A.34J; and
(b) the opposition resumes;
the period mentioned in regulation 17A.34H or 17A.34J restarts when the
opposition resumes.
17A.34M Hearing
(1) This regulation applies to an opposition if:
(a) the opposition has not been dismissed under regulation 17A.34B; or
(b) the opposition has not been decided under regulation 17A.34N; or
(c) the opposition is not taken to have succeeded under regulation 17A.34H.
(2) The holder of an IRDA may request the Registrar to hold a hearing if:
(a) the evidentiary period mentioned in subregulation 17A.34J(3) has ended;
and
(b) either:
(i) all evidence for the opposition proceeding has been filed; or
(ii) no evidence has been filed in that period.
(3) A party may request the Registrar to hold a hearing if:
(a) an evidentiary period mentioned in any of subregulations 17A.34J(4) to (6)
has ended; and
(b) either:
(i) all evidence for the opposition proceeding has been filed; or
(ii) no evidence has been filed in that period.
(4) The Registrar:
(a) must hold a hearing of the opposition if requested by a party in writing; or
(b) may decide, on the Registrar’s own initiative, to hold a hearing of the
opposition.
(5) The hearing may, at the Registrar’s discretion, be:
(a) an oral hearing; or
(b) by written submissions.
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Regulation 17A.34N
90 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(6) If the Registrar decides on an oral hearing:
(a) the Registrar must notify the parties of the date, time and place of the
hearing; and
(b) the opponent must file a summary of submissions at least 10 business days
before the hearing; and
(c) the holder of the IRDA must file a summary of submissions at least 5
business days before the hearing.
(7) The Registrar may take into account a party’s failure to file a summary of
submissions under subregulation (6) in making an award of costs.
Note: Regulations 21.15 and 21.16 deal with hearings.
17A.34N Decision on opposition
(1) Unless the opposition proceedings are discontinued or dismissed, the Registrar
must decide:
(a) to refuse protection in respect of all of the goods or services listed in the
IRDA; or
(b) to extend protection in respect of some or all of the goods or services listed
in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which the grounds on which the IRDA was
opposed have been established.
(2) The Registrar must notify the International Bureau of the Registrar’s decision.
17A.34P Appeal
(1) Section 56 of the Act applies in relation to the Registrar’s decision on the
opposition as if a reference in that section:
(a) to an applicant were a reference to the holder of an IRDA; and
(b) to a decision under section 55 of the Act were a reference to a decision
under regulation 17A.34N.
(2) If an appeal is made, the Registrar must tell the International Bureau of the
decision on the appeal.
17A.34Q Registrar may give direction
(1) The Registrar may give a direction in relation to an opposition to which this
Division applies:
(a) if requested by a party in writing; or
(b) on the Registrar’s own initiative.
(2) If the Registrar proposes to give a direction, the Registrar must give the parties
an opportunity to make representations about the direction.
(3) A direction must not be inconsistent with the Act or these Regulations.
(4) The Registrar must notify the parties of the direction as soon as practicable.
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Regulation 17A.35
Trade Marks Regulations 1995 91
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
17A.35 Registrar must notify parties of dismissal or discontinuance of
opposition
If an opposition is dismissed under regulation 17A.34B or discontinued, the
Registrar must notify the parties of the dismissal or discontinuance.
Subdivision 3A—Cancellation or limitation of an international registration
17A.35A Cancellation
If the International Bureau cancels an international registration in whole or in
part the IRDA ceases, to the extent of the cancellation, when the international
registration is cancelled.
17A.35B Duties and powers of Registrar—notification of limitation by
International Bureau
(1) This regulation applies if the International Bureau notifies the Registrar that a
holder of an international registration in respect of a trade mark that is the subject
of an IRDA but has not become protected, has placed a limitation on the
registration.
(2) Subject to this regulation, a limitation mentioned in subregulation (1) has effect
from the date the limitation was recorded in the International Register in
accordance with Rule 27(1) of the Common Regulations.
(3) The Registrar may, within the declaration period declare, under Rule 27(5) of the
Common Regulations, that the limitation has:
(a) no effect on the IRDA; or
(b) partial effect on the IRDA.
(4) A declaration under subregulation (3):
(a) has effect from the date the limitation was recorded in the International
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.
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Regulation 17A.36
92 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(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.
(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;
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Regulation 17A.37
Trade Marks Regulations 1995 93
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
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
(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.32(2); or
(b) a notification of the possibility that oppositions may be filed after the
18-month period;
in respect of the IRDA, the trade mark that is the subject of the IRDA becomes a
protected international trade mark at the end of the 18-month period.
(6) If:
(a) within 18 months after the Registrar was notified of an IRDA, the
International Bureau receives notification of the possibility that oppositions
may be filed after the 18-month period; and
(b) opposition to the IRDA is filed within the opposition period; and
(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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Regulation 17A.38
94 Trade Marks Regulations 1995
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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.
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Protected international trade marks—rights and protection Division 4
Regulation 17A.39
Trade Marks Regulations 1995 95
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 4—Protected international trade marks—rights and
protection
17A.39 Rights given to, and protection of, protected international trade marks
(1) Subject to this Part, sections 20 to 26, Parts 12, 13 and 14 of the Act (except
section 128), and regulations 3.2, 13.1, 13.2 and 13.3 apply in relation to a
protected international trade mark.
(2) For that application, a reference in those sections, Parts or regulations:
(a) to a registered trade mark or a trade mark that is registered is taken to be a
reference to the protected international trade mark or a trade mark that is a
protected international trade mark; and
(b) to a registered owner of a trade mark is taken to be a reference to the holder
of the protected international trade mark; and
(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 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
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Regulation 17A.40
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(b) was done after the international registration had expired and before it was
renewed.
Note: Article 7(4) of the Protocol provides for a 6-month period of grace for renewal of
international registration.
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Regulation 17A.41
Trade Marks Regulations 1995 97
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 5—Protected international trade marks—amendment or
cessation of protection
Subdivision 1—Amendment or cessation of protection because of
cancellation, limitation or non-renewal of international
registration
17A.41 Cancellation of international registration
If the International Bureau cancels, in whole or in part, the international
registration of a trade mark that is a protected international trade mark, the trade
mark ceases to be a protected international trade mark, to the extent of the
cancellation, when the international registration is cancelled.
17A.41A Duties and powers of Registrar—notification of limitation by
International Bureau
(1) This regulation applies if the International Bureau notifies the Registrar that a
holder of an international registration in respect of a protected international trade
mark has placed a limitation on the registration.
(2) Subject to this regulation, a limitation mentioned in subregulation (1) has effect
from the date the limitation was recorded in the International Register in
accordance with Rule 27(1) of the Common Regulations.
(3) The Registrar may, within the declaration period declare, under Rule 27(5) of the
Common Regulations, that the limitation has:
(a) no effect on the protected international trade mark; or
(b) partial effect on the protected international trade mark.
(4) A declaration under subregulation (3):
(a) has effect from the date the limitation was recorded in the International
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.
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Regulation 17A.42
98 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(7) The Registrar must, after the expiration of the relevant appeal period, make any
amendment to the Record of International Registrations that is necessary to give
effect to a limitation allowed, or a declaration made, under this regulation.
(8) In this regulation:
declaration period means the period of 18 months after the International Bureau
notifies the Registrar that a holder of an international registration has imposed a
limitation on the registration.
limitation means a limitation, in respect of Australia, in relation to the goods or
services mentioned in an international registration recorded in the International
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 protected international trade mark) is not
renewed; and
(b) an application for the registration of the trade mark, or an IRDA, is made,
or has already been made, by a person other than the holder of the
unrenewed protected international trade mark;
the unrenewed protected international trade mark is taken to be a protected
international trade mark for the purposes of the application or the IRDA, at any
time when the registration of the unrenewed protected international trade mark
could have been renewed under Article 7 of the Protocol.
Subdivision 2—Amendment or cessation of protection by Registrar
17A.42A Registrar’s powers to amend or cease protection
(1) If all the conditions in subregulation (2) are met, the Registrar may do any of the
following:
(a) declare that the protection extended to a protected international trade mark
is ceased;
(b) impose a condition or limitation on the protection extended to a protected
international trade mark;
(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.
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Regulation 17A.42A
Trade Marks Regulations 1995 99
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(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;
(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).
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Regulation 17A.42B
100 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(5) The Registrar does not have a duty to consider whether or not to exercise a
power under this Subdivision, whether or not the Registrar has been requested to
do so.
17A.42B Notice to be given
(1) For paragraph 17A.42A(2)(a), the Registrar may give a written notice to the
holder by sending it to:
(a) the address for service in Australia recorded for the holder in the Record of
International Registrations; or
(b) if there is no address for service recorded for the holder in the Record of
International Registrations—the address for the holder.
(2) The Registrar may notify any person if the Registrar is satisfied that it would be
reasonable to do so in all the circumstances.
17A.42C Hearings and procedure
(1) The Registrar may conduct the following hearings under this Subdivision:
(a) a hearing at which the Registrar may determine whether or not to exercise a
power or powers mentioned in subregulation 17A.42A(1);
(b) a preliminary hearing at which the Registrar may give directions as to the
procedure to be adopted in a hearing mentioned in paragraph (a).
(2) The Registrar may determine the procedure to be adopted in a hearing under this
subdivision as the Registrar sees fit, according to the circumstances in the
particular case.
(3) Regulation 21.14 does not apply to a hearing under this subdivision.
Note: Regulation 21.14 provides for the conduct of proceedings generally under these
Regulations.
(4) The Registrar may hear any person if the Registrar is satisfied that it would be
reasonable to do so in all the circumstances.
17A.42D Effect of amendment or cessation of protection by Registrar
(1) This regulation applies if the Registrar exercises any of the powers mentioned in
subregulation 17A.42A(1).
(2) Subject to subregulation (3), the exercise by the Registrar of a power mentioned
in subregulation 17A.42A(1) is taken to have had effect from the date of effect of
the protection of the protected international trade mark, and in particular:
(a) any reduction in scope of the protection is taken to apply from that date;
and
(b) any condition or limitation imposed by the Registrar is taken to have had
effect from that date; and
(c) any removal or amendment of an entry in the Record of International
Registrations is taken to have had effect from that date.
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Note: See regulation 17A.4 for the meaning of date of effect.
(3) For subregulation (2), the exercise of a power mentioned in
subregulation 17A.42A(1) has effect as follows:
(a) for the application of a provision in Part 12, 13 or 14 of the Act as applied
by regulation 17A.39, or a provision in Part 13 of these regulations—from
the date the power is exercised;
(b) for the application of subsection 230(2) of the Act as applied by
regulation 17A.71:
(i) in relation to a defendant who was the holder of the protected
international trade mark before the exercise of the power—from the
date the power is exercised; or
(ii) in relation to a defendant who was an authorised user of the protected
international trade mark before the exercise of the power—from the
date the defendant becomes aware of the exercise of the power.
17A.42E Registrar to notify Comptroller-General of Customs
(1) If the Registrar exercises a power mentioned in subregulation 17A.42A(1) the
Registrar must notify the Comptroller-General of Customs in writing.
(2) Despite paragraph 17A.42D(3)(a), if the Comptroller-General of Customs seizes
under Part 13 of the Act goods in respect of which the protected international
trade mark was protected before the exercise of a power mentioned in
subregulation 17A.42A(1), the Commonwealth is not liable for any loss or
damage suffered because of the seizure unless:
(a) the Registrar gives the Comptroller-General of Customs written notice in
accordance with subregulation (1); and
(b) the seizure occurs after the notice is given to the Comptroller-General of
Customs.
(3) To avoid doubt, subregulation (2) does not, by itself, make the Commonwealth
liable if the circumstances described in paragraphs (2)(a) and (b) exist.
17A.42F Appeals to Federal Court or Federal Magistrates Court
A person who made submissions to the Registrar, or was heard by the Registrar,
during the course of proceedings mentioned in paragraph 17A.42C(1)(a), may
appeal to the Federal Court or Federal Magistrates Court from a decision of the
Registrar to exercise, or not exercise, a power mentioned in
subregulation 17A.42A(1).
Subdivision 3—Amendment or cessation of protection by prescribed court
17A.43 Amendment or cessation of protection—contravention of condition
A prescribed court may, on the application of the Registrar or an aggrieved
person, order that:
(a) the protection extended to a protected international trade mark cease; or
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102 Trade Marks Regulations 1995
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(b) an entry in the Record of International Registrations relating to the
protected international trade mark be removed or amended;
on the ground that a condition or limitation entered in the Record of International
Registrations in relation to the protected international trade mark has been
contravened.
17A.44 Amendment or cessation of protection—loss of exclusive rights to use
trade mark
(1) This regulation applies if section 24 or 25 of the Act, as applied by
regulation 17A.39, (applied section 24 or 25) applies in relation to a particular
protected international trade mark.
(2) A prescribed court may, on the application of the Registrar or an aggrieved
person, but subject to subregulation (3) and regulation 17A.46, order that:
(a) the protection extended to the protected international trade mark cease; or
(b) an entry in the Record of International Registrations relating to the
protected international trade mark be removed or amended;
having regard to the effect of applied section 24 or 25 (as the case requires) on
the right of the holder of the protected international trade mark to use the trade
mark, or any sign that is part of the trade mark, in relation to particular goods or
services.
(3) If applied section 24 or 25 applies in relation to the trade mark because the trade
mark contains a sign that:
(a) has become generally accepted within the relevant trade as the sign that
describes or is the name of an article, substance or service; or
(b) describes or is the name of:
(i) an article or substance that was formerly exploited under a patent; or
(ii) a service that was formerly provided as a patented process;
the court may decide not to make an order under subregulation (2).
(4) Instead, the court may allow the trade mark to continue to be protected in respect
of:
(a) the article or substance or other goods of the same description; or
(b) the service or other services of the same description;
subject to any condition or limitation that the court imposes.
17A.45 Amendment or cessation of protection—other specified grounds
(1) Subject to subregulation (2) and regulation 17A.46, a prescribed court may, on
the application of the Registrar or an aggrieved person, order that:
(a) the protection extended to a protected international trade mark cease; or
(b) an entry wrongly made or remaining in the Record of International
Registrations be removed or amended; or
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(c) a condition or limitation affecting the protection of a protected
international trade mark be entered in the Record of International
Registrations.
(2) An application under this regulation may be made on any of the following
grounds:
(a) any of the grounds on which the extension of protection could have been
opposed under regulation 17A.31;
(b) because of circumstances applying when the application under this
regulation is filed, the use of the trade mark is likely to deceive or cause
confusion;
(c) for a certification trade mark—the ground in section 177 of the Act as
applied by regulation 17A.50;
(d) if the application is in respect of an entry in the Record of International
Registrations, the entry was made, or has been amended, as a result of
fraud, false suggestion or misrepresentation.
(e) because the Registrar wrongfully made a declaration under
subregulation 17A.35B(3) or 17A.41A(3).
17A.46 Amendment or cessation may not be granted if holder not at fault etc
(1) The court may decide not to grant an application made:
(a) under regulation 17A.44; or
(b) on the ground that the trade mark is liable to deceive or confuse (a ground
referred to in paragraph 17A.45(2)(a)); or
(c) on the ground referred to in paragraph 17A.45(2)(c);
if the holder of the protected international trade mark satisfies the court that the
ground relied on by the applicant has not arisen through an act or fault of the
holder.
(2) In making a decision under subregulation (1), the court:
(a) must take into account the following matters, so far as they are relevant:
(i) the extent to which the public interest will be affected if protection of
the protected international trade mark is not ceased;
(ii) whether any circumstances that gave rise to the application have
ceased to exist;
(iii) the extent to which the trade mark distinguished the relevant goods
and services before the circumstances giving rise to the application
arose;
(iv) whether there is any order or other remedy, other than an order under
regulation 17A.44 or 17A.45, that would be adequate in the
circumstances; and
(b) may take into account any other matter that the court considers relevant.
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104 Trade Marks Regulations 1995
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17A.47 Duties and powers of Registrar
Section 90 of the Act applies, with the necessary modifications, for the purposes
of an application under regulation 17A.43, 17A.44 or 17A.45.
Note: Article 5(6) of the Protocol requires the Registrar to notify the International Bureau of
an invalidation of the effect of an international registration.
Subdivision D—Cessation of protection for non-use
17A.48 Definitions
In this Subdivision:
application for cessation of protection means an application to the Registrar for
cessation of protection of a trade mark that is, or may become, a protected
international trade mark.
cessation of protection means the cessation of protection of a trade mark that is a
protected international trade mark.
notice of intention to defend means a notice filed under regulation 17A.48Q.
notice of intention to oppose means a notice filed under regulation 17A.48G.
notice of opposition means:
(a) a notice of intention to oppose; and
(b) a statement of grounds and particulars.
opponent means a person who files:
(a) a notice of intention to oppose; and
(b) a statement of grounds and particulars.
party means an applicant or opponent.
statement of grounds and particulars means a statement by an opponent that
sets out:
(a) the grounds for cessation of protection that the opponent intends to rebut;
and
(b) the facts and circumstances that form the basis for the opposition to the
cessation of protection.
Note: The definitions of the following terms are in section 6 of the Act:
(a) applicant;
(b) approved form;
(c) employee;
(d) file;
(e) month;
(f) person.
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17A.48A Registrar may give direction about filing document or evidence
(1) If a document or evidence may or must be filed under this Subdivision, the
Registrar may give a direction specifying:
(a) the number of copies of the document or evidence to be filed; and
(b) the form in which the document or evidence is to be filed; and
(c) the means by which the document or evidence is to be filed.
(2) If a party does not comply with the direction, the Registrar may:
(a) treat the document or evidence as not having been filed; or
(b) tell the party to comply with the direction.
(3) The Registrar may make or revoke the direction as the Registrar sees fit.
(4) Regulation 17A.48B does not apply to the Registrar’s decision to make or revoke
the direction.
17A.48B Notification and opportunity to make representations
(1) This regulation applies if:
(a) a party makes a request to the Registrar under this Subdivision; or
(b) the Registrar proposes to make a decision on the Registrar’s own initiative
under this Subdivision.
(2) The Registrar must:
(a) for paragraph (1)(a)—notify the other party of the request, including by
giving the other party a copy of the request; or
(b) for paragraph (1)(b)—notify the parties of the proposed decision.
(3) If the Registrar proposes to grant the request, the Registrar must give the parties
an opportunity to make representations:
(a) in writing; or
(b) at a hearing; or
(c) by other means that the Registrar states in the notification.
(4) The Registrar must notify the parties of the Registrar’s decision.
17A.48C Application for cessation of protection
(1) A person may make an application for cessation of protection.
(2) However, an application may not be made under subregulation (1) if an action
concerning the protected international trade mark is pending in a prescribed
court.
(3) If subregulation (2) applies, a person may apply to the court for an order
directing the Registrar to cease protecting the protected international trade mark.
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106 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
17A.48D Cessation of protection
(1) Part 9 of the Act and Part 9 of these Regulations apply in relation to an
application for cessation of protection.
(2) For that application, a reference in those Parts:
(a) to a registered trade mark or a trade mark that is registered, or entered on
the Register, is taken to be a reference to a trade mark that is, or may
become, a protected international trade mark; and
(b) to removing a trade mark from the Register is taken to be a reference to the
cessation of protection of the trade mark; and
(c) to an application for registration of a trade mark is taken to be a reference
to an international registration designating Australia; and
(d) to an applicant for registration of a trade mark is taken to be a reference to
the holder of an international registration designating Australia; and
(e) to a registered owner of a trade mark is taken to be a reference to the holder
of a protected international trade mark; and
(f) to an application under section 92 is taken to be a reference to an
application for cessation of protection; and
(g) to the date the application for registration of the trade mark was filed, or
the filing date in respect of the registration of the trade mark, is taken to be
a reference to:
(i) if the request for extension of protection to Australia was made under
Article 3 ter
(1) of the Protocol—the date of international registration
of the trade mark; or
(ii) if the request for extension of protection to Australia was made under
Article 3 ter
2(2) of the Protocol—the date of recording of the request.
Note: The expressions date of international registration and date of recording are defined in
regulation 17A.2.
(3) Sections 96 to 101 of the Act apply in relation to the cessation of protection for
non-use.
17A.48E Notification of application
For subsection 95(1) of the Act, the Registrar must, within one month from the
filing of the application, give a copy of the application to each person who, in the
Registrar’s opinion, should receive one.
17A.48F Filing of notice of opposition
A notice of opposition is taken to be filed when the notice of intention to oppose
and the statement of grounds and particulars have been filed under
regulations 17A.48G and 17A.48J.
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17A.48G Filing of notice of intention to oppose
(1) For subsection 96(2) of the Act, the period for filing a notice of intention to
oppose the application for cessation of protection must be filed within 2 months
from the day the application for cessation of protection is advertised in the
Official Journal.
(2) The notice must be in an approved form.
(3) The Registrar must give a copy of the notice to the applicant.
17A.48H Opponent must have address for service
(1) This regulation applies despite any other regulation in this Subdivision.
(2) The Registrar is not required to take any action in response to a notice of
opposition filed under regulation 17A.48F unless the opponent has notified the
Registrar, in writing, of the opponent’s address for service in Australia.
(3) A requirement to give a document to an opponent, or to give the opponent an
opportunity to make written representations or to be heard, does not apply if no
address for service of the opponent is recorded in the Record of International
Registrations.
17A.48J Filing of statement of grounds and particulars
(1) A statement of grounds and particulars must be filed within one month from the
day the notice of intention to oppose is filed.
(2) The statement must be in an approved form.
17A.48K Statement of grounds and particulars must be adequate
(1) The Registrar must assess the adequacy of a statement of grounds and particulars
filed under regulation 17A.48J.
(2) If the Registrar decides that the statement is adequate, the Registrar must give a
copy of the statement to the applicant.
(3) If the Registrar decides that the statement is inadequate, the Registrar may:
(a) direct the opponent to rectify the inadequacy by filing more information on
the basis for the opposition to the cessation of protection; or
(b) dismiss the opposition.
(4) If the Registrar decides that the information filed under paragraph (3)(a) rectifies
the inadequacy of the statement, the Registrar must give a copy of the statement
and the information to the applicant.
(5) For subsection 99A(1) of the Act, the Registrar may dismiss the opposition if:
(a) the Registrar decides that the statement is inadequate; or
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108 Trade Marks Regulations 1995
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(b) the Registrar has directed the opponent to file information under
paragraph (3)(a) and:
(i) the opponent fails to file the information; or
(ii) the Registrar decides that the information filed does not rectify the
inadequacy of the statement.
(6) Regulation 17A.48B does not apply to this regulation.
Note: For review rights in relation to a decision by the Registrar to dismiss an opposition, see
subsection 99A(2) of the Act.
17A.48L Extension of time for filing—application
(1) A person who intends to oppose an application for cessation of protection may
request the Registrar to extend:
(a) the period for filing a notice of intention to oppose under
subregulation 17A.48G(1); or
(b) the period for filing a statement of grounds and particulars under
subregulation 17A.48J(1).
(2) A request under paragraph (1)(a) or (b) may be made within the period for filing
the document in question.
Note: See subparagraph (3)(b)(ii) and subregulation 17A.48M(2) in relation to the
consequences of making the request after the filing period has ended.
(3) The request must:
(a) be in an approved form; and
(b) be accompanied by a declaration stating:
(i) the facts and circumstances forming the basis for the grounds; and
(ii) if the period for filing the notice of intention to oppose or the
statement of grounds and particulars has ended—the reason why the
request was not made within the period.
Note: Regulations 21.6 and 21.7 deal with making and filing declarations.
(4) The request may be made only on either or both of the following grounds:
(a) an error or omission by the person, the person’s agent, the Registrar or an
employee;
(b) circumstances beyond the control of the person, other than an error or
omission by the person, the person’s agent, the Registrar or an employee.
17A.48M Extension of time for filing—grant
(1) The Registrar may grant a request under subregulation 17A.48L(1) for an
extension of time only if the Registrar is satisfied that the grounds set out in the
request justify the extension.
(2) However, if the request is made after the period for filing the notice or statement
of grounds and particulars has ended, the Registrar must not grant the extension
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unless the Registrar is satisfied that there is sufficient reason for the delay in
making the request.
(3) The Registrar must decide the length of the extended period having regard to
what is reasonable in the circumstances.
17A.48N Amendment of notice of intention to oppose
(1) An opponent may request the Registrar to amend a notice of intention to oppose
to correct a clerical error or obvious mistake.
(2) If an opposition is proceeding in the name of a person other than the opponent
under section 96A of the Act, the person may request the Registrar to amend the
notice of intention to oppose to record the person’s name.
(3) The Registrar may grant the request on terms that the Registrar considers
appropriate.
(4) If the Registrar grants the request, the Registrar must give a copy of the amended
notice of intention to oppose to the applicant.
(5) Regulation 17A.48B does not apply to a request under subregulation (1) or (2).
(6) Section 96A of the Act applies in relation to the opposition.
17A.48P Amendment of statement of grounds and particulars
(1) An opponent may request the Registrar to amend the statement of grounds and
particulars to:
(a) correct an error or omission; or
(b) amend or add facts or circumstances that form the basis of the opposition to
the cessation of protection.
(2) The Registrar may grant the request on terms that the Registrar considers
appropriate.
(3) However, the Registrar may grant the request only if the Registrar is satisfied
that the amendment should be made.
(4) If the Registrar grants the request, the Registrar must give a copy of the amended
statement to the applicant.
17A.48Q Filing of notice of intention to defend
(1) A notice of intention to defend must be filed within one month from the day the
applicant is given a copy of the statement of grounds and particulars.
(2) The Registrar must give the opponent a copy of the notice.
(3) If the applicant does not file the notice of intention to defend within the period
mentioned in subregulation (1), the Registrar may decide to:
(a) take the opposition to have succeeded; and
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(b) refuse to cease protection of the protected international trade mark.
(4) The Registrar must notify the parties of the Registrar’s decision.
17A.48R Filing of evidence
(1) The Registrar must notify the parties that:
(a) all the evidence for an evidentiary period mentioned in this regulation has
been filed; or
(b) no evidence was filed for the period.
(2) The Registrar must give a copy of any evidence filed by a party under this
regulation to the other party:
(a) before the end of the relevant evidentiary period, if the Registrar considers
it appropriate to do so; or
(b) after the evidentiary period ends.
Evidence in support
(3) An opponent must file any evidence in support of the opposition within 3 months
from the day the opponent is given a copy of the notice of intention to defend the
application for cessation of protection.
Evidence in answer
(4) If the opponent files evidence in support of the opposition, the applicant must file
any evidence in answer to the opponent’s evidence within 3 months from the day
the Registrar:
(a) gives the applicant:
(i) all the evidence in support; or
(ii) if the opponent files the evidence in support in instalments—the final
instalment of the evidence in support; and
(b) notifies the applicant that all the evidence in support has been filed.
(5) If the opponent does not file any evidence in support of the opposition,
regulation 17A.48S applies.
Evidence in reply
(6) If the applicant files evidence in answer under subregulation (4), the opponent
must file any evidence in reply to the evidence in answer within 2 months from
the day the Registrar:
(a) gives the opponent:
(i) all the evidence in answer; or
(ii) if the applicant files the evidence in answer in instalments—the final
instalment of the evidence in answer; and
(b) notifies the opponent that all the evidence in answer has been filed.
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17A.48S Request for hearing and circumstances in which opposition taken to
have ended
(1) If an opponent requests the Registrar, within the period for filing evidence in
support mentioned in subregulation 17A.48R(3), to hear the opposition, the
Registrar must do so.
(2) The opposition is taken to have ended, but not to have been discontinued or
dismissed, if the opponent does not:
(a) file evidence in support in accordance with subregulation 17A.48R(3); or
(b) ask for a hearing under subregulation (1).
(3) The application for cessation of protection is taken to be unopposed if:
(a) the opposition is taken to have ended under subregulation (2); and
(b) the Registrar is satisfied that the application for cessation of protection is in
order.
Note 1: See section 97 of the Act in relation to what the Registrar must do if the application for
cessation of protection is unopposed.
Note 2: Regulations 21.15 and 21.16 deal with hearings.
17A.48T Extension of time for filing
(1) A party may request the Registrar to extend a period for filing evidence
mentioned in regulation 17A.48R.
(2) The Registrar may extend the period only if the Registrar is satisfied that:
(a) the party:
(i) has made all reasonable efforts to comply with all relevant filing
requirements of this Subdivision; and
(ii) despite acting promptly and diligently at all times to ensure the filing
of the evidence within the period, is unable to do so; or
(b) there are exceptional circumstances that justify the extension.
(3) The Registrar:
(a) must decide the length of the extended period having regard to what is
reasonable in the circumstances; and
(b) may do so on terms that the Registrar considers appropriate.
(4) In this regulation:
exceptional circumstances includes the following:
(a) a circumstance beyond the control of a party that prevents the party from
complying with a filing requirement under this Subdivision;
(b) an error or omission by the Registrar or an employee that prevents a party
from complying with a filing requirement under this Subdivision;
(c) an order of a court or a direction by the Registrar that the opposition be
stayed.
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112 Trade Marks Regulations 1995
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17A.48U Registrar may allow cooling-off period
(1) This regulation applies to an opposition if:
(a) the notice of opposition has been filed; and
(b) the Registrar has not decided to remove the trade mark under
subsection 101(1) of the Act; and
(c) the opposition has not been dismissed under regulation 17A.48K.
(2) If the Registrar is satisfied that the parties agree to a cooling-off period, the
Registrar must allow a cooling-off period of 6 months.
(3) The Registrar must extend the cooling-off period for 6 months if, before the end
of the period, the Registrar is satisfied that the parties agree to the extension.
(4) The Registrar must not:
(a) further extend the cooling-off period; or
(b) allow more than one cooling-off period for an opposition.
(5) If a party files a notice, in an approved form, requesting the Registrar to
discontinue the cooling-off period, the Registrar must do so.
(6) The Registrar may direct the parties on steps the parties must take:
(a) if the cooling-off period is discontinued; or
(b) otherwise—when the cooling-off period ends.
(7) The opposition resumes:
(a) if the cooling-off period is discontinued; or
(b) otherwise—when the cooling-off period ends.
(8) If:
(a) the cooling-off period begins during the period mentioned in
regulation 17A.48Q or an evidentiary period mentioned in
regulation 17A.48R; and
(b) the opposition resumes;
the period mentioned in regulation 17A.48Q or 17A.48R restarts when the
opposition resumes.
17A.48V Hearing
(1) This regulation applies to an opposition if the opposition has not been dismissed
under regulation 17A.48K or discontinued.
(2) A party may request the Registrar to hold a hearing if an evidentiary period
mentioned in regulation 17A.48R has ended; and either:
(a) all evidence for the opposition proceeding has been filed; or
(b) no evidence has been filed in that period.
(3) The Registrar:
(a) must hold a hearing of the opposition if requested by a party in writing; or
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(b) may decide, on the Registrar’s own initiative, to hold a hearing of the
opposition.
(4) The hearing may, at the Registrar’s discretion, be:
(a) an oral hearing; or
(b) by written submissions.
(5) If the Registrar decides on an oral hearing:
(a) the Registrar must notify the parties of the date, time and place of the
hearing; and
(b) the opponent must file a summary of submissions at least 10 business days
before the hearing; and
(c) the applicant must file a summary of submissions at least 5 business days
before the hearing.
(6) The Registrar may take into account a party’s failure to file a summary of
submissions under subregulation (5) in making an award of costs.
Note: Regulations 21.15 and 21.16 deal with hearings.
17A.48W Registrar may give direction
(1) The Registrar may give a direction in relation to an opposition to which this
Division applies:
(a) if requested by a party in writing; or
(b) on the Registrar’s own initiative.
(2) If the Registrar proposes to give a direction, the Registrar must give the parties
an opportunity to make representations about the direction.
(3) A direction must not be inconsistent with the Act or these Regulations.
(4) The Registrar must notify the parties of the direction as soon as practicable.
17A.48X Registrar must notify International Bureau
If the result of an action under this Subdivision is that the Registrar decides, or is
directed by a court:
(a) to cease protection of a protected international trade mark in respect of
some or all of the goods or services covered by the protection; or
(b) that the trade mark should be protected subject to conditions or limitations;
the Registrar must, if no appeal has been made at the end of any relevant appeal
period, notify the International Bureau of that decision or order.
17A.48Y Registrar must notify parties of dismissal or discontinuance of
opposition
If an opposition is dismissed under regulation 17A.48K or discontinued, the
Registrar must notify the parties of the dismissal or discontinuance.
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Part 17A Protected international trade marks under the Madrid Protocol
Division 5 Protected international trade marks—amendment or cessation of protection
Regulation 17A.48Z
114 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
17A.48Z Cessation of protection of protected international trade mark
If the Registrar dismisses the opposition under regulation 17A.48K, the Registrar
must cease protection in respect of the goods, services, or both, specified in the
application for cessation of protection.
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Protected international trade marks under the Madrid Protocol Part 17A
Collective and certification trade marks Division 6
Regulation 17A.49
Trade Marks Regulations 1995 115
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 6—Collective and certification trade marks
17A.49 Collective trade marks
(1) The provisions of this Part, of the Act as applied by this Part, and sections 164 to
167 of the Act, apply in relation to a collective trade mark that is the subject of
an IRDA or that is a protected international trade mark.
Note: See section 162 of the Act for the meaning of collective trade mark.
(2) For that application:
(a) a reference to a trade mark is taken to include a collective trade mark; and
(b) a reference to an application for the registration of a collective trade mark
is taken to be a reference to an IRDA in respect of the collective trade
mark; and
(c) a reference to an association in whose name a collective trade mark is
registered is taken to be a reference to the association that is the holder of
the relevant protected international collective trade mark; and
(d) despite subparagraph 17A.28(2)(a)(ii), a reference in section 41 of the Act
to the applicant is taken to be a reference to the members of the association
that is the holder of the relevant IRDA; and
(e) the use of a collective trade mark by a member of the association that is the
holder of the relevant IRDA or protected international collective trade
mark is taken to be a use of the collective trade mark by the holder.
(3) In this regulation:
protected international collective trade mark means a collective trade mark that
is a protected international trade mark.
17A.50 Certification trade marks
(1) Part 16 of the Act and Part 16 of these Regulations (except regulation 16.1) apply
in relation to a certification trade mark that is the subject of an IRDA or that is a
protected international trade mark.
Note: See section 169 of the Act for the meaning of certification trade mark.
(2) For that application, a reference in those Parts:
(a) to an application for registration of a certification trade mark is taken to be
a reference to an IRDA in respect of a certification trade mark; and
(b) to an applicant for registration of a certification trade mark is taken to be a
reference to the holder of an IRDA in respect of a certification trade mark;
and
(c) to a registered certification trade mark, or a certification trade mark that is
registered, is taken to be a reference to a certification trade mark that is a
protected international trade mark; and
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Division 6 Collective and certification trade marks
Regulation 17A.50
116 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(d) to the registered owner of a registered trade mark is taken to be a reference
to the holder of a protected international trade mark that is a certification
trade mark; and
(e) to goods or services in respect of which a certification trade mark is
registered is taken to be a reference to goods or services in respect of which
a certification trade mark is protected; and
(f) to assignment of a certification trade mark is taken to be a reference to
change of ownership of a certification trade mark.
(3) Also for that application:
(a) a reference in section 170 of the Act to another provision of the Act is
taken to be a reference to that other provision as it is applied by this Part to
a trade mark that is the subject of an IRDA or that is a protected
international trade mark; and
(b) each reference in section 170 and 171 of the Act to a certification trade
mark is taken to be a reference to a certification trade mark that is the
subject of an IRDA or that is a protected international trade mark; and
(c) each reference in Part 16 of these Regulations to the prospective assignee is
taken to be a reference to the new holder of the international registration in
respect of Australia who is identified in the notification to the Registrar
under Rule 27(1) of the Common Regulations.
(4) For subsection 173(1) of the Act, the holder of an IRDA in respect of a
certification trade mark must file a copy of the rules governing the use of the
certification trade mark with the Registrar as soon as practicable after the
Registrar is notified of the IRDA.
(5) When the holder files a copy of the rules in accordance with subregulation (4),
the holder must notify the Registrar, in writing, of the holder’s address for
service in Australia.
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Protected international trade marks under the Madrid Protocol Part 17A
Transformation of cancelled international registrations Division 7
Regulation 17A.51
Trade Marks Regulations 1995 117
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 7—Transformation of cancelled international registrations
17A.51 Application of Division
This Division applies if:
(a) the international registration of a trade mark is cancelled, in whole or in
part, by the International Bureau at the request of the Office of origin, in
accordance with Article 6(4) of the Protocol; and
(b) the trade mark is the subject of an IRDA or is a protected international
trade mark; and
(c) within 3 months after the date on which the international registration was
cancelled, the person who held the international registration files with the
Trade Marks Office an application for registration of the trade mark (a
transformation application); and
(d) the transformation application is in relation to any of the goods and
services to which the cancellation applies that were listed in the IRDA, or
covered by the protected international trade mark, immediately before the
cancellation.
17A.52 Transformation of IRDA
(1) If the trade mark is the subject of an IRDA, the Act and these Regulations apply
for the purposes of the transformation application as if it were an application for
registration.
(2) However:
(a) the filing date for the transformation application is taken to be the date of
international registration or the date of recording, as applicable; and
(b) anything already done under this Part for the purposes of the IRDA is to be
treated as having been done for the purposes of the transformation
application.
17A.53 Transformation of protected international trade mark
(1) If the trade mark is a protected international trade mark, the Registrar must
register the trade mark.
(2) The date of registration of the trade mark is taken to be:
(a) the date of international registration or the date of recording, as applicable;
or
(b) if the IRDA in respect of the trade mark included a priority claim, the
priority date allowed under that claim.
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Part 17A Protected international trade marks under the Madrid Protocol
Division 8 Concurrence between registration and international registration
Regulation 17A.54
118 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 8—Concurrence between registration and international
registration
Note: The Protocol makes provision for this as ‘Replacement of a National or Regional
Registration by an International Registration’: see Article 4bis.
17A.54 Effect of registration and protection of the same trade mark
(1) This regulation applies if:
(a) a trade mark that is a registered trade mark becomes a protected
international trade mark; and
(b) the registered owner of the trade mark is the holder of the protected
international trade mark; and
(c) all the goods and services covered by the registered trade mark are covered
by the protected international trade mark.
(2) The date of effect of protection of the protected international trade mark in
respect of all the goods and services covered by the registered trade mark is
taken to be the date of registration of the registered trade mark.
(3) The protected international trade mark has the priority date of the registered trade
mark in respect of all the goods and services covered by the registered trade
mark.
(4) The holder of the protected international trade mark may file an application in
the approved form for particulars of the international registration of the trade
mark to be entered in the Register.
(5) If the Registrar receives an application under subregulation (4), the Registrar
must:
(a) enter the particulars in the Register; and
(b) notify the International Bureau in accordance with rule 21 of the Common
Regulations.
(6) This regulation does not affect the rights and protections conferred under the Act
in respect of the registered trade mark.
17A.55 Effect of cancellation, removal or expiry of registered trade mark
(1) Subregulations 17A.54(2) and (3) cease to apply if:
(a) the registration of the trade mark is cancelled (otherwise than at the request
of the registered owner); or
(b) the trade mark is removed from the Register.
(2) However, if the registration of the trade mark expires or is cancelled at the
request of the registered owner, those subregulations continue to apply.
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Protected international trade marks under the Madrid Protocol Part 17A
Change in ownership of international registration Division 9
Regulation 17A.56
Trade Marks Regulations 1995 119
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 9—Change in ownership of international registration
17A.56 Application of Division
This Division applies if the Registrar receives notification from the International
Bureau of a change of ownership of the international registration of a trade mark
that is the subject of an IRDA or is a protected international trade mark.
Note: Change of ownership is defined in regulation 17A.2 to include assignment or
transmission.
17A.57 Collective trade marks
If the trade mark is a collective trade mark, the Registrar must make a declaration
in accordance with rule 27(4) of the Common Regulations that the change of
ownership has no effect in Australia.
17A.58 Protected certification trade marks
(1) If the trade mark is a certification trade mark that is a protected international
trade mark, the Registrar must make a declaration to the International Bureau in
accordance with rule 27(4) of the Common Regulations that, subject to
subregulation (2), the change of ownership has no effect in Australia.
(2) If the Registrar receives evidence in writing of the consent of the ACCC to the
change of ownership, the Registrar must notify the International Bureau that the
change of ownership may be given effect in Australia.
17A.58A Unprotected certification trade marks
(1) If the trade mark is a certification trade mark that is the subject of an IRDA, and:
(a) a copy of the IRDA and the rules governing the use of the certification
trade mark has been received by the ACCC; and
(b) the trade mark has not become a protected international trade mark;
the Registrar must make a declaration to the International Bureau in accordance
with Rule 27(4) of the Common Regulations that, subject to subregulation (2),
the change of ownership has no effect in Australia.
(2) If the Registrar receives evidence in writing of the consent of the ACCC to the
change of ownership, the Registrar must notify the International Bureau that the
change of ownership may be given effect in Australia.
17A.59 Trade marks affected by claimed interests and rights
(1) If a person is recorded under regulation 17A.62 as claiming an interest in, or a
right in respect of, the trade mark, the Registrar must:
(a) make a declaration to the International Bureau in accordance with
rule 27(4) of the Common Regulations that, subject to subregulation (2),
the change of ownership has no effect in Australia; and
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Division 9 Change in ownership of international registration
Regulation 17A.60
120 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(b) give notice in writing to the person stating that the change of ownership
will have effect at the end of 2 months from the date of the notice unless
the person serves on the Registrar an order of a prescribed court directing
the Registrar not to withdraw the declaration.
(2) At the end of the 2-month period, if a court order has not been served on the
Registrar as mentioned in paragraph (1)(b), the Registrar must notify the
International Bureau that the change of ownership may be given effect in
Australia.
17A.60 Recording change of ownership
If the change of ownership has effect in Australia, the Registrar must record it in
the Record of International Registrations.
Note: If regulation 17A.57, 17A.58 or 17A.59 does not apply to the trade mark, the change of
ownership of the international registration has effect in Australia in accordance with the
Protocol.
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Recording of claimed interests and rights Division 10
Regulation 17A.61
Trade Marks Regulations 1995 121
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 10—Recording of claimed interests and rights
17A.61 Application to have claims recorded
(1) A person who claims an interest in, or a right in respect of, a trade mark that is
the subject of an IRDA or is a protected international trade mark may apply to
the Registrar to have particulars of the claim recorded by the Registrar.
(2) An application by a person under subregulation (1) must:
(a) be made in an approved form; and
(b) be accompanied by material supporting the person’s interest in, or a right in
respect of, the trade mark; and
(b) be filed with the Trade Marks Office.
17A.62 Recording of claims
If the application is made in accordance with regulation 17A.61, the Registrar
must record in the Record of International Registrations particulars of the claim.
17A.63 Notification of matters affecting trade mark
The Registrar must notify each person who has a claim recorded in respect of a
trade mark of any matter affecting the trade mark that is notified to the Registrar
by the International Bureau.
17A.64 Record not proof etc of existence of right etc
The fact that a record has been made by the Registrar under this Division that a
person claims an interest in, or a right in respect of, a trade mark is not proof or
evidence that the person has the right or interest claimed.
17A.65 Amendment or cancellation of record
(1) Particulars recorded under this Division may be:
(a) amended in accordance with subregulations 11.1(2) and (3); or
(b) cancelled in accordance with subregulations 11.3(2), (3), (4) and (5).
(2) Those subregulations apply for the purposes of this regulation as if a reference to
the owner of the trade mark were a reference to the holder of the relevant IRDA
or protected international trade mark.
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Division 11 Miscellaneous
Regulation 17A.66
122 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 11—Miscellaneous
17A.66 Record of International Registrations
(1) The Registrar must maintain a Record of International Registrations for the
purposes of this Part.
(2) The Record of International Registrations must include the following particulars
in respect of each IRDA notified to the Registrar by the International Bureau:
(a) the name of the holder;
(b) the address of the holder;
(c) the goods, services or goods and services in respect of which protection is
sought;
(d) the claims of interest (if any) affecting the trade mark that is the subject of
the IRDA;
(e) any other particulars that are required by the Act, these Regulations, the
Protocol or the Common Regulations to be recorded in respect of the
IRDA;
(f) any other particulars relating to the IRDA that the Registrar reasonably
believes to be appropriate.
(3) The Record of International Registrations must include the following particulars
in respect of each protected international trade mark:
(a) the name of the holder;
(b) the address of the holder;
(ba) the address for service of the holder;
(c) the goods, services or goods and services in respect of which the trade
mark is protected;
(d) the conditions (if any) and limitations (if any) subject to which the trade
mark is protected;
(e) the claims of interest (if any) and disclaimers (if any) affecting the
protected international trade mark;
(f) any other particulars that are required by the Act, these Regulations, the
Protocol or the Common Regulations to be recorded in respect of the
protected international trade mark;
(g) any other particulars relating to the protected international trade mark that
the Registrar reasonably believes to be appropriate.
17A.67 Inspection
(1) The Record of International Registrations must be available at the Trade Marks
Office for inspection by any person during the hours when the Office is open for
business.
(2) Subregulation (1) is satisfied if a person who wants to inspect the Record of
International Registrations is given access to a computer terminal from which he
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Miscellaneous Division 11
Regulation 17A.68
Trade Marks Regulations 1995 123
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
or she can read on a screen, or obtain a printed copy of, the particulars or other
matters recorded in it.
17A.68 Evidence—the Record of International Registrations
(1) The Record of International Registrations is evidence of any particular or other
matter entered in it.
(2) A copy of, or extract from, the Record of International Registrations that is
certified by the Registrar to be a true record or extract is admissible in any
proceedings as if it were the original.
Note: Section 211 of the Act makes provision in relation to certificates given by the Registrar
and certified copies of documents held in the Trade Marks Office.
17A.69 Evidence—international instruments
(1) In any proceedings relating to a trade mark that is the subject of an IRDA or is a
protected international trade mark, a copy of any of the following documents is
admissible in evidence:
(a) the WIPO Gazette of International Marks published by the International
Bureau;
(b) an entry in or extract from the International Register, issued by the
International Bureau;
(c) any other instrument, or an entry in or extract from any other instrument,
issued by the International Bureau.
(2) In any such proceedings:
(a) an instrument that purports to have been issued by the International Bureau
is taken to have been issued by the International Bureau unless the contrary
is proved; and
(b) an instrument that purports to be the WIPO Gazette of International Marks
published by the International Bureau is taken to be that Gazette unless the
contrary is proved.
(3) Also in any such proceedings, evidence of the Protocol or the Common
Regulations may be adduced by producing a book or pamphlet containing the
Protocol or the Common Regulations that purports to have been printed by
authority of:
(a) the World Intellectual Property Organization; or
(b) another person or body that the court considers to be a reliable source of
information.
17A.70 Correction of errors or omissions in Record of International
Registrations
(1) The Registrar may, on his or her own initiative, correct any error or omission in
the Record of International Registrations.
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Division 11 Miscellaneous
Regulation 17A.71
124 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(2) A prescribed court may, on the application of an aggrieved person, order that the
Registrar rectify the Record of International Registrations by:
(a) entering anything wrongly omitted from it; or
(b) correcting any error in it.
(3) Section 90 of the Act applies, with the necessary modifications, for the purposes
of an application under subregulation (2).
17A.71 Passing off actions
Subsection 230(2) of the Act applies for the purposes of an action for passing off
arising out of the use of a protected international trade mark in the same way as it
applies for the purposes of an action for passing off arising out of the use of a
registered trade mark.
17A.72 Documents to be made available for public inspection
Section 217A of the Act and regulation 21.11A apply in relation to:
(a) a trade mark that is the subject of an IRDA; or
(b) a protected international trade mark;
as if the reference in subsection 217A(1) to the time particulars of the application
for registration of the trade mark are published under section 30 were a reference
to the time of inclusion of the particulars of the IRDA in the Record of
International Registrations under subregulation 17A.66(2).
17A.73 Security for costs
If a person who neither resides nor carries on business in Australia:
(a) gives notice of opposition to an IRDA under regulation 17A.29; or
(b) applies to the Registrar under regulation 17A.48 for the cessation of the
protection extended to a protected international trade mark;
the Registrar may require the person to give security for the costs of the
proceeding and may, if security is not given, dismiss the proceeding.
17A.74 Address for service of documents
Application of regulation
(1) This regulation applies in relation to the following persons:
(a) the holder of an IRDA;
(b) the holder of a protected international trade mark;
(c) a person who applies under regulation 17A.61 to have a claim recorded;
(d) a person whose claim is recorded under regulation 17A.62;
(e) a person who, under regulation 17A.29, opposes the extension of protection
in Australia to a trade mark that is the subject of an IRDA;
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Regulation 17A.74
Trade Marks Regulations 1995 125
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(f) a person who applies under subregulation 17A.48(1) for a trade mark that
is, or may become, a protected international trade mark to cease to be
protected;
(g) a person who opposes an application under subregulation 17A.48(1).
Note: The address for service of a person who is not mentioned in subregulation (1) is
covered by section 215 of the Act.
Address for service
(2) An address for service must be an address in Australia.
(3) If the person notifies the Registrar of an address for service, the Registrar must
enter the address in the Record of International Registrations as the person’s
address for service.
(4) If the address changes to another address:
(a) the person must notify the Registrar of the new address; and
(b) the Registrar must amend the Record of International Registrations
accordingly.
(5) If the person ceases to have an address for service in respect of the IRDA or
protected international trade mark:
(a) the person must notify the Registrar that the person no longer has an
address for service; and
(b) the Registrar must remove the address from the Record of International
Registrations.
Note: See subregulation (9).
(6) If the Registrar is satisfied that the address for service notified by the person is
no longer an address of the person, the Registrar must remove the address from
the Record of International Registrations and notify the person of the removal.
Note: See subregulation (9).
Service
(7) If the Act provides, or these Regulations provide, that a document is to be served
on, or given or sent to, the person, the document may be left at, or sent by post
to, the address for service of the person.
Note: Section 29 of the Acts Interpretation Act 1901 and section 160 of the Evidence Act
1995 may govern when service on an address in Australia is taken to be effected.
(8) Subregulation (7) does not affect the operation of section 28A of the Acts
Interpretation Act 1901.
Note: Section 28A of the Acts Interpretation Act 1901 provides that a document may be
served (this term includes given, or sent, to):
‘(a) on a natural person:
(i) by delivering it to the person personally; or
(ii) by leaving it at, or by sending it by pre-paid post to, the address of the place of residence or business of the person last known to the person serving the document; or
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Division 11 Miscellaneous
Regulation 17A.74
126 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(b) on a body corporate—by leaving it at, or sending it by pre-paid post to, the head office, a registered office or a principal office of the body corporate.’.
No address for service
(9) If no address for service is recorded for the person in the Record of International
Registrations:
(a) a requirement in the Act or these Regulations to serve a document on the
person is taken to be satisfied by posting the document to, or leaving it at, a
foreign address appearing in the Record for the person; and
(b) the requirement is taken to be satisfied on the day in Australia on which the
document is posted to, or left at, the foreign address.
Note: If subregulation (9) applies, and a document is required to be served in a prescribed
period, it will be sufficient compliance that the document is posted to the foreign
address on the final day in Australia of the prescribed period. It is not necessary for the
posted document to be received at the foreign address on or before that final day, as
reckoned in Australia or at the foreign address.
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Administration Part 19
Regulation 19.1
Trade Marks Regulations 1995 127
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Part 19—Administration
19.1 Trade Marks Office and sub-offices—business hours
The hours of business of the Trade Marks Office and each sub-office (if any) of
the Trade Marks Office are from 9 am to 5 pm on each day other than:
(a) a Saturday or a Sunday; or
(b) a public holiday:
(i) where the Office or sub-office (if any) is located; or
(ii) for the purposes of the Australian Public Service in that place.
19.2 Persons to whom Registrar may delegate (Act, s 206(1))
For subsection 206(1) of the Act, a person holding, or performing the duties of,
an office in the Trade Marks Office stated in Schedule 6 is a person to whom the
Registrar may delegate all or any of the Registrar’s powers or functions under the
Act.
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Part 20 Registered trade marks attorneys
Division 1 General
Regulation 20.1A
128 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Part 20—Registered trade marks attorneys
Division 1—General
20.1A Application of Part
This Part applies to:
(a) a trade marks attorney who is not an incorporated trade marks attorney; and
(b) an individual applying for registration as a trade marks attorney.
20.1 Interpretation
(1) In this Part:
AQF means the Australian Qualifications Framework.
serious offence means an offence that:
(a) involves obtaining property or a financial advantage by deception or
fraudulent conduct; and
(b) is either:
(i) an indictable offence against a law of the Commonwealth, a State or a
Territory (whether or not the offence may be dealt with summarily);
or
(ii) an offence against a law of a foreign country that would be an
indictable offence against a law of the Commonwealth, a State or a
Territory if committed in Australia (whether or not the offence could
be dealt with summarily if committed in Australia).
unsatisfactory professional conduct has the meaning given by regulation 20.32
of the Patents Regulations 1991.
(2) For regulation 20.6, the higher education sector comprises:
(a) universities; and
(b) higher education institutions other than universities; and
(c) higher education providers.
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Registered trade marks attorneys Part 20
Obtaining registration for first time Division 2
Regulation 20.2
Trade Marks Regulations 1995 129
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 2—Obtaining registration for first time
20.2 Form of application
An application for registration as a trade marks attorney must:
(a) be in writing, in a form approved by the Designated Manager; and
(b) be accompanied by evidence and material mentioned in regulation 20.3;
and
(c) be accompanied by the fee mentioned in item 28 of Schedule 9.
20.3 Evidence that applicant meets registration requirements
(1) An application for registration as a trade marks attorney must be accompanied by
the following:
(a) evidence that the Board is satisfied that the applicant has, or is entitled to
the award of, an academic qualification of a kind mentioned in
regulation 20.6;
(b) evidence that the Board is satisfied that the applicant has the knowledge of
intellectual property law and practice that is required for a person to
practise as a trade marks attorney;
(c) a declaration, by the applicant, that he or she:
(i) has not, in the 5 years preceding the application, committed an
offence prescribed by subregulation 20.10(1); and
(ii) is not under sentence of imprisonment for an offence prescribed by
subregulation 20.10(2);
(d) a declaration, by another person, that the applicant is of good fame,
integrity and character.
(2) A declaration under paragraph (1)(d) must contain details of the basis of the
opinion that the applicant is of good fame, integrity and character.
20.4 Certificate of registration
If the Designated Manager registers a person as a trade marks attorney, the
Designated Manager must give the person a certificate of registration.
20.5 Evidence of academic qualifications
(1) The Board must be satisfied that a person has a qualification mentioned in
regulation 20.6 if:
(a) the person makes an application in the form approved by the Board; and
(b) the application is accompanied by:
(i) evidence that the person has the qualification; and
(ii) the original or a certified copy of an academic record that shows the
units that make up the qualification.
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Regulation 20.6
130 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(2) The Board must, within 42 days of deciding whether or not it is satisfied that the
person has the qualification, notify the person, in writing, of its decision.
Note: A decision that a person does not have a qualification is reviewable under
regulation 21.35.
20.6 Academic qualifications
The Designated Manager must not approve an applicant for registration as a
trade marks attorney unless the applicant has or is entitled to:
(a) an AQF qualification from the higher education sector; or
(b) a qualification awarded by an overseas institution that the Board is satisfied
is equivalent to an AQF qualification from the higher education sector.
20.7 Evidence of knowledge requirements
(1) The Board must be satisfied that a person has a knowledge requirement
mentioned in regulation 20.8 if:
(a) the person makes an application in the form approved by the Board; and
(b) the application is accompanied by:
(i) evidence that the applicant has the relevant knowledge; and
(ii) the original or a certified copy of any academic record that shows the
study that contributes to the knowledge.
(2) The Board must, within 42 days of deciding whether or not it is satisfied that the
person has the knowledge requirement, notify the person, in writing, of its
decision.
Note: A decision that a person does not have a knowledge requirement is reviewable under
regulation 21.35.
20.8 Knowledge requirements
(1) The Designated Manager must not approve an applicant for registration as a
trade marks attorney unless the Board is satisfied that the applicant has the
knowledge of intellectual property law and practice that is required for a person
to practise as a trade marks attorney.
(2) Subject to subregulations (3), (4) and (5), the Board must, in satisfying itself
whether or not an applicant has the knowledge of intellectual property law and
practice that is required for a person to practise as a trade marks attorney, take
into account whether the applicant has qualifications that meet the minimum
requirements set out in Schedule 5 to the Patents Regulations 1991.
Note: Schedule 5 to the Patents Regulations 1991 applies to a trade marks attorney as
modified by regulation 20.11 of these Regulations.
(3) The Board may publish guidelines setting out criteria for deciding whether or not
areas of study:
(a) are likely to meet the minimum requirements set out in Schedule 5 to the
Patents Regulations 1991; and
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Trade Marks Regulations 1995 131
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(b) are likely to provide a person with the appropriate level of understanding to
practise as a trade marks attorney.
(4) The Board may be satisfied that an applicant has the knowledge of intellectual
property law and practice that is required for a person to practise as a trade marks
attorney, despite the fact that the applicant does not meet every requirement set
out in Schedule 5 to the Patents Regulations 1991.
(5) The Board is not able to be satisfied that the applicant has the knowledge of
intellectual property law and practice that is required for a person to practise as a
trade marks attorney if the knowledge requirements on which the applicant relies
were obtained more than 10 years prior to the application.
(6) If an applicant has been granted an exemption under regulation 20.9, the
applicant is taken to meet the requirement in Schedule 5 to the Patents
Regulations 1991 for which the exemption is granted.
Note: Subsection 228A(4) of the Act provides that the Designated Manager must register as a
trade marks attorney a person who satisfies certain conditions. Paragraph 228A(4)(a)
requires that a person hold such qualifications as are specified in, or ascertained in
accordance with, the Regulations.
20.9 Exemption from a requirement in Schedule 5 to Patents Regulations
(1) The Board may exempt an applicant from having to satisfy all or some of the
requirements mentioned in Schedule 5 to the Patents Regulations 1991.
(2) The Board must not give an exemption to an applicant unless:
(a) the applicant makes an application in the form approved by the Board; and
(b) the applicant gives the Board enough information for the Board to be
satisfied under paragraph (c); and
(c) the Board is satisfied that:
(i) the applicant has passed a course of study at a satisfactory level; and
(ii) the course of study has outcomes that are the same as, or similar to,
those of a knowledge requirement for which the exemption is sought.
(3) The Board may give an exemption under subregulation (1) if it is satisfied that
the applicant has successfully completed a relevant course of study within the 5
years preceding the application or within a longer period specified in writing by
the Board.
(4) An exemption under subregulation (1) is valid for 5 years from the date that the
exemption was granted or for a longer period specified in writing by the Board.
20.10 Prescribed offences
(1) For paragraph 228A(4)(c) of the Act, an offence against the Act, the Designs Act
2003 or the Patents Act 1990 is a prescribed offence.
(2) For paragraph 228A(4)(d) of the Act, an offence of dishonesty for which the
maximum penalty is imprisonment for at least 2 years is a prescribed offence.
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Division 2 Obtaining registration for first time
Regulation 20.11
132 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
20.11 Application of Schedule 5 to Patents Regulations
Schedule 5 to the Patents Regulations 1991 applies to obtaining registration as a
trade marks attorney for the first time as if item 5 in Part 5 provided:
‘5. A course of study must provide for a student to have an appropriate level of
understanding of the system of protecting and exploiting trade marks, both in
Australia and other countries.’
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Accreditation of courses of study Division 3
Regulation 20.12
Trade Marks Regulations 1995 133
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 3—Accreditation of courses of study
20.12 Accreditation of courses of study
Part 3 of Chapter 20 of the Patents Regulations 1991 applies to the accreditation
of a course of study for the purposes of Schedule 5 to the Patents
Regulations 1991 in its application to the registration of a trade marks attorney
under this Part as if references to ‘patent attorney’ were references to ‘trade
marks attorney’.
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Division 4 Board examinations
Regulation 20.13
134 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 4—Board examinations
20.13 Board examinations
Part 4 of Chapter 20 of the Patents Regulations 1991 applies to a requirement
referred to in Schedule 5 to the Patents Regulations 1991 in its application to the
registration of a trade marks attorney under this Part as if references to ‘patent
attorney’ were references to ‘trade marks attorney’.
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Division 5
Regulation 20.14
Trade Marks Regulations 1995 135
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 5—Maintaining registration and removing and restoring
name to Register of Trade Marks Attorneys
20.14 Maintaining registration and removing and restoring name to Register of
Trade Marks Attorneys
Parts 5, 6 and 7 of Chapter 20 of the Patents Regulations 1991 apply to a trade
marks attorney in its application to the registration of a trade marks attorney
under this Part as if:
(a) references to ‘patent attorney’ were references to ‘trade marks attorney’;
and
(b) references to the ‘Register of Patent Attorneys’ were references to the
‘Register of Trade Marks Attorneys’; and
(c) references to ‘trade marks attorney’ were references to ‘patent attorney’;
and
(d) the reference in paragraph 20.22(1)(a) of the Patents Regulations 1991 to
‘item 105 or 106 of Schedule 7’ were a reference to ‘item 29 or 30 of
Schedule 9’; and
(f) the reference in regulations 20.29, 20.30 and 20.31 of the Patents
Regulations 1991 to ‘item 107 of Schedule 7’ were a reference to ‘item 31
of Schedule 9’.
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Division 5A Suspension of registration
Regulation 20.14A
136 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 5A—Suspension of registration
20.14A Requirement to notify of serious offence
(1) A registered trade marks attorney who has been charged with a serious offence
must, within 14 days after being charged, notify the Designated Manager, in
writing, of the charge.
(2) If the registered trade marks attorney:
(a) fails to comply with subregulation (1); and
(b) does not have a reasonable excuse for failing to comply;
the failure to comply constitutes unsatisfactory professional conduct.
20.14B Suspension from Register—serious offence
(1) The Designated Manager may, by written notice to a registered trade marks
attorney, suspend the registered trade marks attorney’s registration if the
Designated Manager:
(a) is notified under subregulation 20.14A(1); or
(b) becomes aware that the registered trade marks attorney has been charged
with a serious offence.
(2) If the Designated Manager suspends the attorney’s registration:
(a) the suspension takes effect when the notice is given to the registered trade
marks attorney; and
(b) the Designated Manager must:
(i) give written notice to the Board of the suspension; and
(ii) by written notice, give the registered trade marks attorney 28 days
after the date of the notice (a show cause notice) within which to
show cause why the suspension should be lifted.
(3) The Designated Manager must consider any information provided by the
registered trade marks attorney in response to the show cause notice.
(4) The Designated Manager must immediately end the suspension if:
(a) the Designated Manager becomes aware that the charge is not proceeded
with or the prosecution of the charge is abandoned; or
(b) the Designated Manager becomes aware that the proceedings have been
completed without a conviction being recorded; or
(c) the proceedings have been completed with a conviction being recorded and
the Disciplinary Tribunal decides not to continue the suspension or cancel
the registered trade marks attorney’s registration; or
(d) the Designated Manager considers that the suspension is no longer
necessary.
(5) If the Designated Manager ends the suspension, the Designated Manager must
notify, in writing, each of the following that the suspension has ended:
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(a) the registered trade marks attorney;
(b) the Board;
(c) the Disciplinary Tribunal.
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Division 6 Discipline
Regulation 20.15
138 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 6—Discipline
20.15 Discipline
Part 8 of Chapter 20 of the Patents Regulations 1991 applies to a registered trade
marks attorney as if:
(a) references to a ‘registered patent attorney’ were references to a ‘registered
trade marks attorney’; and
(b) references to a ‘registered trade marks attorney’ were references to a
‘registered patent attorney’; and
(c) the reference in regulation 20.49 of the Patents Regulations 1991 to ‘the
Register of Patent Attorneys’ were a reference to ‘the Register of Trade
Marks Attorneys’; and
(d) the reference in subparagraph 20.33(2)(b)(i) of the Patents
Regulations 1991 to ‘regulation 20.6’ were a reference to ‘regulation 20.6
of the Trade Marks Regulations 1995’; and
(e) the reference in subparagraph 20.33(2)(b)(ii) of the Patents
Regulations 1991 to ‘regulation 20.8’ were a reference to ‘regulation 20.8
of the Trade Marks Regulations 1995’.
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Regulation 20.16
Trade Marks Regulations 1995 139
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 7—Rights of registered trade marks attorneys
20.16 Lien
A registered trade marks attorney has the same right of lien over documents and
property of a client as a solicitor.
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Part 20A Incorporated trade marks attorneys
Division 1 General
Regulation 20A.1
140 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Part 20A—Incorporated trade marks attorneys
Division 1—General
20A.1 Application of Part 20A
This Part applies to:
(a) an incorporated trade marks attorney; and
(b) a company applying for registration as an incorporated trade marks
attorney.
20A.2 Definitions
In this Part:
professional indemnity insurance means insurance for claims that may be made
against the company in relation to its business, practices or acts as an
incorporated trade marks attorney.
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Regulation 20A.3
Trade Marks Regulations 1995 141
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 2—Obtaining registration for first time
20A.3 Form of application
An application for registration as an incorporated trade marks attorney must:
(a) be in writing, in a form approved by the Designated Manager; and
(b) be accompanied by the following evidence and material:
(i) the name of each trade marks attorney director of the company;
(ii) evidence that the company is a registered company under the
Corporations Act 2001;
(iii) evidence that the company has adequate and appropriate professional
indemnity insurance; and
(c) be accompanied by the fee set out in item 36 of Schedule 9.
20A.4 Certificate of registration
If the Designated Manager registers a company as an incorporated trade marks
attorney, the Designated Manager must give the company a certificate of
registration as soon as practicable.
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Division 3 Maintaining registration
Regulation 20A.5
142 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 3—Maintaining registration
20A.5 Requirements for remaining on Register of Trade Marks Attorneys
(1) To remain on the Register of Trade Marks Attorneys, a registered incorporated
trade marks attorney must, for every year of registration, pay the annual
registration fee.
(2) The Designated Manager must, not later than 1 June in each year, give to each
registered incorporated trade marks attorney notice of the fee that is payable.
(3) The annual registration fee is payable on 1 July each year by a registered
incorporated trade marks attorney:
(a) whose name is on the Register of Trade Marks Attorneys on that day; and
(b) that has not asked the Designated Manager, under regulation 20A.6, to
remove its name from the Register of Trade Marks Attorneys.
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Regulation 20A.6
Trade Marks Regulations 1995 143
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 4—Removal from Register of Trade Marks Attorneys
20A.6 Voluntary removal of name from Register of Trade Marks Attorneys
If a trade marks attorney director of a registered incorporated trade marks
attorney asks the Designated Manager, in writing, to remove the name of the
incorporated trade marks attorney from the Register of Trade Marks Attorneys,
the Designated Manager must comply with the request.
20A.7 Failure to pay annual registration fee
If a registered incorporated trade marks attorney does not pay the annual
registration fee by 31 July in the year the fee is payable, the Designated Manager
must:
(a) remove the name of the attorney from the Register of Trade Marks
Attorneys; and
(b) notify, in writing, the attorney of the removal.
20A.8 Failure to maintain professional indemnity insurance
(1) If an incorporated trade marks attorney does not maintain adequate and
appropriate professional indemnity insurance, the Designated Manager may
remove the name of the attorney from the Register of Trade Marks Attorneys.
(2) If the Designated Manager removes the name of the incorporated trade marks
attorney from the Register of Trade Marks Attorneys, the Designated Manager
must notify, in writing, the attorney of the removal.
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Division 5 Discipline
Regulation 20A.9
144 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 5—Discipline
Subdivision A—General
20A.9 Definitions
In this Part:
former attorney means a person whose registration as an incorporated trade
marks attorney has been suspended or cancelled under this Division.
20A.10 Board may apply for cancellation or suspension of incorporated trade
marks attorney’s registration
(1) The Board may apply to the Disciplinary Tribunal to cancel or suspend an
incorporated trade marks attorney’s registration if:
(a) a registered trade marks attorney who is, or was, an employee or officer of
the incorporated trade marks attorney is found guilty of professional
misconduct under Division 5 of Part 20; and
(b) the professional misconduct occurred when the registered trade marks
attorney was an employee or officer of the incorporated trade marks
attorney; and
(c) the Disciplinary Tribunal has cancelled or suspended the trade marks
attorney’s registration.
(2) Before applying to the Disciplinary Tribunal, the Board may request an
incorporated trade marks attorney to provide the Board with information relating
to the professional misconduct.
(3) In deciding whether to apply to the Disciplinary Tribunal, the Board may
consider the following:
(a) the professional misconduct engaged in by the registered trade marks
attorney;
(b) the behaviour of the incorporated trade marks attorney’s officers and
employees;
(c) whether officers and employees of the incorporated trade marks attorney
have complied with the Code of Conduct;
(d) any information provided under subregulation (2).
(4) An application by the Board to the Disciplinary Tribunal must:
(a) be in writing; and
(b) set out the reasons why the Board considers the incorporated trade marks
attorney’s registration should be cancelled or suspended.
(5) The Board must give the incorporated trade marks attorney, as soon as
practicable after the application is made to the Disciplinary Tribunal, a copy of
the application.
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Regulation 20A.11
Trade Marks Regulations 1995 145
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Subdivision B—Proceedings in Disciplinary Tribunal
20A.11 Procedure of Disciplinary Tribunal
(1) The Disciplinary Tribunal may determine procedure that is not set out in this
Division.
(2) Proceedings before the Tribunal are to be conducted quickly and informally,
while allowing for proper consideration of the matter before the Tribunal.
(3) The Tribunal is not bound by the rules of evidence but may be informed on any
matter in the manner it chooses.
(4) The Tribunal may take evidence on oath or on affirmation and, for that purpose,
may administer an oath or affirmation.
20A.12 Notification of hearing
(1) The Disciplinary Tribunal must, as soon as practicable after receiving an
application under regulation 20A.10, fix a day, time and place to hear the
application.
(2) The Disciplinary Tribunal must, as soon as practicable, notify the incorporated
trade marks attorney and the Board of that day, time and place.
(3) The day of hearing must not be less than 21 days after the day the incorporated
trade marks attorney is notified of the hearing.
20A.13 Hearings to be public except in special circumstances
(1) A hearing before the Disciplinary Tribunal must be in public.
(2) However, if the Disciplinary Tribunal is reasonably satisfied that it is desirable to
do so, in the public interest or because of the confidential nature of any evidence
or matter, the Tribunal may:
(a) direct that a hearing, or a part of a hearing, is to take place in private and
give directions as to the persons who may be present; and
(b) give directions restricting or prohibiting the publication or disclosure of:
(i) evidence given before the Tribunal, whether in public or in private; or
(ii) matters contained in documents lodged with the Tribunal or received
in evidence by the Tribunal.
(3) A person commits an offence if the person:
(a) is given a direction under paragraph (2)(a) or (b); and
(b) does not comply with the direction.
Penalty: 5 penalty units.
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Regulation 20A.14
146 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
20A.14 Representation before Disciplinary Tribunal
(1) At the hearing before the Disciplinary Tribunal, the incorporated trade marks
attorney must be represented by a trade marks attorney director of the
incorporated trade marks attorney or a legal practitioner.
(2) A party to proceedings before the Disciplinary Tribunal, or a representative of
the party, may request the Tribunal to summon witnesses.
20A.15 Summoning of witnesses
(1) For the purpose of the hearing before the Disciplinary Tribunal, the Tribunal
may, by instrument in writing signed by the person constituting the Tribunal:
(a) summon a person to appear before the Tribunal to give evidence and to
produce any documents or articles mentioned in the summons; or
(b) summon a trade marks attorney director of the incorporated trade marks
attorney to appear before the Tribunal:
(i) to produce any documents or articles mentioned in the summons; and
(ii) to give evidence to identify the documents or articles.
(2) A trade marks attorney director who is summoned must appear in person.
20A.16 Offences by persons appearing before Disciplinary Tribunal
(1) A person commits an offence if the person:
(a) is summoned to appear before the Disciplinary Tribunal; and
(b) does not comply with the summons by:
(i) appearing as required by the summons; and
(ii) producing documents or articles as required by the summons; and
(iii) appearing and reporting to the Tribunal, as required.
Penalty: 10 penalty units.
(2) It is a defence to a prosecution for an offence against subregulation (1) if:
(a) the defendant is prevented or hindered from complying with the summons
by:
(i) a circumstance mentioned in Part 2.3 of the Criminal Code; or
(ii) any other circumstance that the Disciplinary Tribunal reasonably
considers is an impediment to the defendant complying with the
summons; or
(b) in relation to paragraph (1)(c)—the defendant is excused by the
Disciplinary Tribunal.
Note: A defendant bears an evidential burden in relation to the matters mentioned in
subparagraph (2)(a)(i) (see section 13.3 of the Criminal Code).
(3) A person commits an offence if:
(a) the person:
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(i) is not a trade marks attorney director to whom subregulation (5)
applies; and
(ii) appears as a witness before the Disciplinary Tribunal; and
(iii) has been paid expenses and allowances; and
(b) the expenses and allowances have been determined by the Disciplinary
Tribunal in accordance with Part 2 of Schedule 8 to the Patents
Regulations 1991; and
(c) the person refuses:
(i) to be sworn or make an affirmation; or
(ii) to answer a question relevant to the evidence that the person was
summoned to give.
Penalty: 10 penalty units.
(4) Strict liability applies to the physical element of an offence against
subregulation (3) that is constituted by:
(a) the circumstance mentioned in subparagraph (3)(a)(i); and
(b) the circumstance mentioned in paragraph (3)(b).
Note: For strict liability, see section 6.1 of the Criminal Code.
(5) A person commits an offence if the person:
(a) is a trade marks attorney director who has been summoned to appear at a
hearing before the Disciplinary Tribunal; and
(b) refuses:
(i) to be sworn or to make an affirmation; or
(ii) to answer a question relevant to the evidence that the person was
summoned to give.
Penalty: 10 penalty units.
(6) It is a defence to a prosecution for an offence against subregulation (3) or (5) if a
person mentioned in the subregulation refused to answer a question or to produce
a document or article because the answer to the question, or the document or
article, may tend to prove that the person has committed an offence against a law
of the Commonwealth or of a State or Territory.
20A.17 Protection of person constituting Disciplinary Tribunal, witnesses etc.
(1) A person:
(a) constituting the Disciplinary Tribunal; or
(b) appointed to the Disciplinary Tribunal under subregulation 20.64(2) of the
Patents Regulations 1991;
has, in the exercise of the powers and the performance of the functions of the
Tribunal under this Part, the same protection and immunity as a Justice of the
High Court.
(2) A member of the Board has, in exercising a power under this Part, the same
protection and immunity as a Justice of the High Court.
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Regulation 20A.18
148 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(3) A legal practitioner or other person appearing before the Disciplinary Tribunal
has the same protection and immunity as a barrister has in appearing for a party
in proceedings in the High Court.
(4) A person summoned to attend or appearing before the Disciplinary Tribunal as a
witness:
(a) has the same protection; and
(b) is, in addition to the penalties provided by this Part, subject to the same
liabilities;
as a witness in proceedings in the High Court.
20A.18 Decision of Disciplinary Tribunal
(1) After hearing an application for the cancellation or suspension of the
incorporated trade marks attorney’s registration, the Disciplinary Tribunal may:
(a) cancel the attorney’s registration as an incorporated trade marks attorney;
or
(b) suspend the attorney’s registration as an incorporated trade marks attorney.
(2) The Disciplinary Tribunal may also impose conditions on the attorney’s return to
the Register of Trade Marks Attorneys after the cancellation has been lifted or
the period of suspension has elapsed.
(3) In making a decision under this regulation, the Disciplinary Tribunal may
consider the following:
(a) the professional misconduct engaged in;
(b) the behaviour of the incorporated trade marks attorney’s officers and
employees;
(c) whether officers and employees of the incorporated trade marks attorney
had complied with the Code of Conduct;
(d) findings made about the conduct of the incorporated trade marks attorney
in any other proceedings brought before the Disciplinary Tribunal;
(e) findings made about the conduct of the incorporated trade marks attorney’s
employees and officers in any other proceedings brought before the
Disciplinary Tribunal;
(f) if the incorporated trade marks attorney failed, without reasonable excuse,
to provide information requested by the Board under
subregulation 20A.10(2)—the incorporated trade marks attorney’s failure
to provide requested information.
20A.19 Notification and publication of decisions of Disciplinary Tribunal
(1) The Disciplinary Tribunal must, within 14 days after making a decision under
regulation 20A.18:
(a) prepare a written statement that states:
(i) the decision of the Tribunal; and
(ii) the reasons for the decision; and
(iii) the findings on any material questions of fact; and
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Trade Marks Regulations 1995 149
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(iv) evidence or other material on which the findings of fact are based; and
(b) give a copy of the statement to:
(i) the incorporated trade marks attorney who is the subject of the
decision; and
(ii) the Board; and
(iii) the Designated Manager; and
(c) publish, in the Official Journal, a written statement that sets out the
decision of the Tribunal.
(2) If the registration of an incorporated trade marks attorney is suspended, the
Designated Manager must note the suspension and its duration in the Register of
Trade Marks Attorneys.
(3) If the registration of an incorporated trade marks attorney is cancelled, the
Designated Manager must remove the name of the incorporated trade marks
attorney from the Register of Trade Marks Attorneys.
20A.20 Completion of outstanding business
(1) If the Disciplinary Tribunal cancels the registration of an incorporated trade
marks attorney, the Tribunal may appoint a registered trade marks attorney to
complete the unfinished trade marks work of the former attorney.
(2) If the Disciplinary Tribunal suspends the registration of an incorporated trade
marks attorney, the Tribunal may appoint a registered trade marks attorney to
carry on the former attorney’s trade marks work for:
(a) the period of the suspension; or
(b) a specified period, not longer than the period of suspension.
(3) The Disciplinary Tribunal must not appoint a registered trade marks attorney
under subregulation (1) or (2) unless the registered trade marks attorney consents
to the appointment.
(4) A registered trade marks attorney appointed under subregulation (1) or (2) may
only act as a registered trade marks attorney for a client of the former attorney if
the client has given consent for the appointed attorney to act.
20A.21 Former attorney may be required to provide assistance
(1) A registered trade marks attorney appointed under subregulation 20A.20(1) or
(2) may, by written notice, request the former attorney to make available:
(a) information about the trade marks work that the appointed attorney may
reasonably require; or
(b) books, accounts or other documents about the trade marks work that the
appointed attorney may reasonably require; or
(c) money held by the former attorney:
(i) on behalf of a client; or
(ii) that has been paid by a client in relation to services not yet performed
for the client.
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Division 5 Discipline
Regulation 20A.21
150 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(2) A person commits an offence if the person:
(a) is a former attorney; and
(b) is given a notice under subregulation (1); and
(c) fails to comply with the notice.
Penalty: 5 penalty units.
(3) It is a defence to a prosecution for an offence against subregulation (2) if the
former attorney is prevented or hindered from complying with a request in the
notice by:
(a) a circumstance mentioned in Part 2.3 of the Criminal Code; or
(b) any other circumstance that the Disciplinary Tribunal reasonably considers
is an impediment to the defendant complying with the summons.
Note: A defendant bears an evidential burden in relation to the question of whether he or she
has a reasonable excuse (see section 13.3 of the Criminal Code).
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Returning to Register of Trade Marks Attorneys Division 6
Regulation 20A.22
Trade Marks Regulations 1995 151
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 6—Returning to Register of Trade Marks Attorneys
20A.22 Restoring name to Register of Trade Marks Attorneys
(1) This regulation sets out circumstances in which the Designated Manager must
restore to the Register of Trade Marks Attorneys the name of an incorporated
trade marks attorney that has been removed from the Register of Trade Marks
Attorneys under:
(a) regulation 20A.6, 20A.7 or 20A.8; or
(b) subsection 157A(7) of the Act.
(2) The Designated Manager must restore the name if:
(a) the attorney requests the Designated Manager, in the form approved by the
Designated Manager, to restore the name; and
(b) the request includes:
(i) the name of each trade marks attorney director of the company; and
(ii) evidence that the company is a registered company under the
Corporations Act 2001; and
(ii) evidence that the company has adequate and appropriate professional
indemnity insurance; and
(c) the request is made:
(i) if the name was removed under regulation 20A.7—on or before
1 September of the year that the name was removed from the Register
of Trade Marks Attorneys, or within a further period that the
Designated Manager allows; or
(ii) in any other case—within 3 years after the name was removed from
the Register of Trade Marks Attorneys; and
(d) the attorney pays:
(i) the annual registration fee for the year the reinstatement is made; and
(ii) the fee mentioned in item 39 of Schedule 9.
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Part 21 Miscellaneous
Division 1 Applications and other documents
Regulation 21.1
152 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Part 21—Miscellaneous
Division 1—Applications and other documents
21.1 Compliance with instructions on approved forms
If:
(a) an application, notice, request or declaration under the Act or these
regulations is required to be in an approved form; and
(b) a blank form that may be used in making an application, request or
declaration or giving notice:
(i) is supplied by the Registrar; and
(ii) contains directions about completing that form;
the person who completes the form must comply with those directions.
21.2 Filing of documents—requirements as to form
(1) A document to be filed at the Trade Marks Office must comply with the
requirements set out in Schedule 7.
(2) If the document does not comply with the requirements in Schedule 7, the
Registrar may return the document to the person from whom it was received with
a statement setting out the requirements that have not been complied with.
(4) If a person files a copy of a document, the Registrar may require the person to
file the original document.
21.3 Filing of documents—common requirements
(1) A person who files an application, notice or request must include in the
application, notice or request the business or residential address of:
(a) the person making the application or request or giving the notice; or
(b) the person on whose behalf the application, notice or request is made.
(2) If an address recorded in the Register or included in an application, notice or
request that is filed changes, the person whose address changes, or a person
acting on behalf of that person, must notify the Registrar of the new address.
(3) If the Registrar is notified of a new address, the Registrar must amend the
Register, application, notice or request accordingly.
Note: Section 212 of the Act also deals with the making and signing of applications, notices
and requests.
21.4 Filing of documents—treatment of non-complying documents
If a document received for filing at the Trade Marks Office fails to comply with
the Act or these regulations, the Registrar may:
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Applications and other documents Division 1
Regulation 21.5
Trade Marks Regulations 1995 153
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(a) treat the document as not having been filed at the Trade Marks Office; or
(b) treat the document as having been filed, but require the person who filed
the document to make, or cause to be made, any alterations to the
document that are necessary to enable the document to so comply.
Note: Regulations 4.2 and 4.2A set out requirements with which applications for the
registration of trade marks must comply to be taken as having been filed.
21.5 Filing of documents—date of receipt to be marked
(1) A document that is received for filing must be marked by the Registrar with the
date on which it is received.
(2) If the Trade Marks Office or a sub-office (if any) provides a facility for the
receipt of documents (other than documents filed electronically or by facsimile
transmission), when the Trade Marks Office or sub-office (if any) is not open to
the public for business, a document received by means of that facility is taken to
have been received on the day on which the Trade Marks Office or sub-office (if
any) was last open to the public for business before the document was received.
(3) Except as otherwise provided by the Act or these regulations, a document is
taken to be filed at the Trade Marks Office on the date on which it is received by
the Trade Marks Office.
21.6 Declarations
(1) A declaration required or permitted by the Act or these Regulations must be in an
approved form.
Note: Declaration forms in the approved form are available on the IP Australia website at
www.ipaustralia.gov.au.
(2) A declaration in the form of a statutory declaration, required or permitted to be
given to a person mentioned in subregulation (3), may be given to the person in
an electronic form by a means of electronic communication approved by the
Registrar.
Note: A declaration that is not in the form of statutory declaration may also be given in an
electronic form by means of an electronic communication: see section 11 of the
Electronic Transactions Act 1999.
(3) For subregulation (2), the following persons may be given declarations,
including statutory declarations, in electronic form by electronic means:
(a) the Registrar of Trade Marks;
(b) the Designated Manager;
(c) the Disciplinary Tribunal;
(d) the Professional Standards Board.
21.7 Declarations—additional material
(1) If:
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Division 1 Applications and other documents
Regulation 21.8
154 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(a) a person is required by the Act or these regulations to file a declaration or
serve a copy of the declaration; and
(b) it is not practicable to include in, or attach to, the declaration or copy any
material to which the declaration refers;
the person must file or serve the material to which the declaration refers, or a
copy of the material, at the same time as the declaration or as soon as practicable
after that time.
(2) A declaration is not taken to have been filed or served until any material to which
the declaration refers, or any copy of the material, is filed or served.
21.8 Notification of service
A person who is required by the Act or these regulations to serve a document on
another person must, as soon as practicable after the document is served, notify
the Registrar in writing of the date, place and manner of service.
21.9 Notice of withdrawal of applications etc
(1) For the purposes of section 214 of the Act (which deals with withdrawal of
applications, notices and requests):
(a) a person who has filed an application, notice or request; or
(b) another person in whom the right or interest in reliance on which the
application, notice or request was filed has become vested;
may withdraw the application, notice or request by giving notice in writing of the
withdrawal to the Registrar.
(2) If:
(a) the application, notice or request was filed by, or on behalf of, more than 1
person; or
(b) the right or interest mentioned in paragraph (1)(b) has become vested in
more than 1 person;
the notice of withdrawal must be signed by, or on behalf of, each of those
persons.
(3) If a person mentioned in paragraph (1)(b) withdraws an application, notice or
request, the Registrar may require in writing that person to file documentary
evidence that is sufficient to establish that the right or interest mentioned in that
paragraph is vested in the person.
21.10 Withdrawal of application etc—Registrar’s notice to applicants
If an application, notice or request is withdrawn in accordance with
regulation 21.9, the Registrar must notify in writing each person by, or on behalf
of whom, the application, notice or request was filed of the withdrawal.
21.11 Change of address for service—notice to interested persons
A person:
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Regulation 21.11A
Trade Marks Regulations 1995 155
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(a) who has filed an application, notice or request stating an address for
service; and
(b) who notifies the Registrar of another address for service for the purposes of
paragraph 215(1)(b) of the Act (which deals with address for service);
must give a copy of the notification to:
(c) any party to proceedings relating to the application, notice or request; and
(d) to any other person as directed by the Registrar.
21.11A Documents to be made available for public inspection
(1) For subsection 217A(1) of the Act each document held by the Registrar that
relates to a trade mark is prescribed, other than a document mentioned in
subregulation (2).
(2) For subregulation (1), the documents are:
(a) a document that would be privileged from production in legal proceedings
on the ground of legal professional privilege; and
(b) a document that is subject to an order of a court or tribunal that prohibits
disclosure of the document or information in the document; and
(c) a document:
(i) whose production the Registrar has required under paragraph 202(c)
of the Act; and
(ii) that the Registrar is satisfied should not be made available for public
inspection; and
(d) a document that solely contains evidence of the use or proposed use of a
trade mark; and
(e) a declaration stating the reasons for a request for expedited examination
under regulation 4.18; and
(f) a document filed by an applicant for an extension of time under
subsection 224(2) or (3) of the Act in relation to an application under those
provisions, other than the application for an extension of time; and
(g) a document filed in the course of opposition proceedings under the Act and
Regulations, other than the notice of opposition; and
(h) a document containing any information that the Registrar requires to be
held confidentially under paragraph 226A(1)(a) of the Act; and
(i) a document prepared by the Registrar, a Deputy Registrar or an employee
in the Trade Marks Office that contains information obtained from a
document to which any of paragraphs (a) to (h) applies, being information
that is the reason, or contributes to the reason, why that paragraph applies
to the document.
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Division 2 Proceedings before the Registrar
Regulation 21.12
156 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 2—Proceedings before the Registrar
21.12 Applications for costs
(1) For the purposes of section 221 of the Act (which deals with costs), a party to
proceedings before the Registrar may apply to the Registrar, in an approved
form, for an award of costs in relation to the proceedings.
(2) An application must be made:
(a) during the proceedings; or
(b) within 3 months from:
(i) the day on which the Registrar makes a decision in the proceedings
that ends those proceedings; or
(ii) the date of the Registrar’s notice to the party that the proceedings
have been discontinued or dismissed;
as the case requires.
(3) Before awarding costs in respect of the proceedings, the Registrar must give each
party to the proceedings a reasonable opportunity to be heard in relation to the
award of costs.
(4) If a bill of costs is filed in relation to the proceedings, the bill of costs must be
filed within 3 months from the day on which the costs are awarded.
21.13 Award of costs
(1) For section 221 of the Act, if a matter is mentioned in these Regulations as a
matter attracting the award of costs, costs may be awarded:
(a) in accordance with Schedule 8; or
(b) if the Registrar has a discretionary power in relation to the award of
costs—as the Registrar considers appropriate.
(2) The costs must be taxed, allowed and certified by an employee appointed by the
Registrar.
(3) The Registrar may review the taxation of costs by the employee.
(4) In this regulation:
costs does not include the costs mentioned in paragraph 105(2)(b) of the Act.
21.14 Conduct of proceedings generally
(1) The Registrar may, at the request of a party to proceedings before the Registrar,
other than opposition proceedings, give directions in relation to the procedure in
the proceedings.
(2) Directions given under subregulation (1) must not be inconsistent with these
regulations.
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Proceedings before the Registrar Division 2
Regulation 21.15
Trade Marks Regulations 1995 157
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(3) The Registrar must not give directions under subregulation (1) unless the
Registrar:
(a) is reasonably satisfied that any person affected by the proposed directions
has been notified of the proposed directions; and
(b) has given any person affected a reasonable opportunity to make
representations concerning the proposed directions; and
(c) is reasonably satisfied that the proposed directions are appropriate.
(4) For the purposes of paragraph (3)(b), representations may be made in writing or
at a hearing or by such other means as the Registrar reasonably allows.
(5) Subject to these regulations, the Registrar may determine the procedure to be
followed in proceedings before the Registrar.
Note: Regulation 5.19 deals with directions as to procedure in opposition proceedings.
21.15 Opportunity to be heard by Registrar
(1) This regulation applies if the Act or these Regulations provide for a person to be
heard by the Registrar.
(2) The Registrar may give the person an opportunity to be heard by:
(a) asking the person for written submissions; or
(b) notifying the person that on request to the Registrar, the person may be
heard by way of an oral hearing on a date, and at a time and place,
determined by the Registrar; or
(c) notifying the person of the date, time and place of an oral hearing.
(3) A request for a hearing must be in an approved form.
(4) The Registrar is not bound by the rules of evidence, but may be informed on any
matter that is before the Registrar in a way that the Registrar reasonably believes
to be appropriate.
(5) The Registrar may decide a matter if each person that is a party to the matter:
(a) notifies the Registrar that the person does not want to be heard; or
(b) does not file written submissions if requested under subregulation 21.16(1);
or
(c) does not request an oral hearing after being notified under paragraph (2)(b);
or
(d) does not attend an oral hearing if notified under subregulation 21.16(2).
(6) In the circumstances mentioned in subregulation (5), the Registrar may make a
decision by reference to relevant information that is held in the Trade Marks
Office.
(7) If the Registrar makes a decision in any of the circumstances mentioned in
subregulation (5), the Registrar must notify each party of the Registrar’s
decision.
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Division 2 Proceedings before the Registrar
Regulation 21.16
158 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
21.16 Written submissions and oral hearings
Written submissions
(1) If the Registrar decides that a person may be heard by way of written
submissions, the Registrar must:
(a) notify the person of the period in which the submissions must be filed
(being at least 10 business days); and
(b) determine the matter after considering the written submissions; and
(c) notify the person of the Registrar’s decision in relation to the matter.
Oral hearings
(2) If the Registrar decides that a person may be heard by way of an oral hearing, the
Registrar must give notice of the date, time and place of the hearing, to the
person, at least 10 business days before the day the hearing is to begin.
(3) The Registrar may adjourn an oral hearing from time to time or from place to
place by notifying the person.
(4) The Registrar may hold an oral hearing in which:
(a) a person appears in person; or
(b) a person participates by telephone or other means of telecommunications
that the Registrar reasonably allows.
(5) In addition to the Registrar’s other powers, the Registrar may direct a person to
provide a written summary of submissions.
(6) An oral hearing must be conducted with as little formality and technicality, and
as quickly, as the requirements of the Act, these Regulations and a proper
consideration of the matters before the Registrar, allow.
(7) Subject to these Regulations, the Registrar may give a direction that is
reasonably necessary for the conduct of the hearing.
(8) The Registrar must notify a person who appears at the hearing of the Registrar’s
decision in relation to the matter.
21.17 Evidence in proceedings
(1) Evidence that is given in writing in any proceedings before the Registrar must be
in the form of a declaration.
(2) The Registrar may require a person who has made a declaration that is filed in
the proceedings to attend before the Registrar to give evidence orally on oath or
affirmation instead of, or in addition to, the evidence contained in the
declaration.
(3) The Registrar may permit a party to cross-examine a person who attends under
subregulation (2).
Note: Regulations 21.6 and 21.7 deal with making and filing declarations.
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Proceedings before the Registrar Division 2
Regulation 21.18
Trade Marks Regulations 1995 159
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
21.18 Documents not in English
If a document that is filed as evidence in proceedings before the Registrar is not
in English, the party who files the document must file with it:
(a) a translation of the document into English; and
(b) a certificate of verification in relation to the translation.
21.19 Registrar may use information available
(1) If:
(a) information that is available to the Registrar is relevant to proceedings
before the Registrar; and
(b) the Registrar has reason to believe that the information is not known to a
party to the proceedings; and
(c) the Registrar proposes to take the information into account in making a
decision in the proceedings;
before making the decision the Registrar must:
(d) provide the information to the party; and
(e) give the party a reasonable opportunity to make representations about the
information.
(2) For the purposes of paragraph (1)(e), the representations may be made in writing
or at a hearing or by such other means as the Registrar reasonably allows.
21.20 Statements of reasons for decision
If:
(a) the Registrar notifies a party to proceedings before the Registrar of a
decision of the Registrar in the proceedings; and
(b) the party requests the Registrar in writing for the reasons for the decision;
the Registrar must comply with the request.
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Division 2A Extensions of time
Regulation 21.20A
160 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 2A—Extensions of time
21.20A Definitions
In this Division:
notice of opposition means a notice filed under subregulation 21.20B(1).
party means an applicant or opponent.
Note: The definitions of the following terms are in section 6 of the Act:
(a) applicant;
(b) approved form;
(c) file;
(d) month;
(e) person.
21.20B Notice of opposition
(1) For subsection 224(6) of the Act, a person may oppose a request for an extension
of time by filing a notice of opposition in an approved form within one month
from the advertisement of the request for the extensions in the Official Journal
under subsection 224(5) of the Act.
(2) The Registrar must give a copy of the notice to the applicant.
21.20C Notification and opportunity to make representations
(1) This regulation applies if:
(a) a party makes a request to the Registrar under this Division; or
(b) the Registrar proposes to make a decision on the Registrar’s own initiative
under this Division.
(2) The Registrar must:
(a) for paragraph (1)(a)—notify the other party of the request, including by
giving the other party a copy of the request; or
(b) for paragraph (1)(b)—notify the parties of the proposed decision.
(3) If the Registrar proposes to grant the request, the Registrar must give the parties
an opportunity to make representations:
(a) in writing; or
(b) at a hearing; or
(c) by other means that the Registrar states in the notification.
(4) The Registrar must notify the parties of the Registrar’s decision.
21.20D Practice and procedure
The Registrar may:
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Extensions of time Division 2A
Regulation 21.20E
Trade Marks Regulations 1995 161
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(a) decide the practice and procedure to be followed in an opposition to which
this Division applies; and
(b) direct the parties accordingly.
21.20E Hearing
(1) The Registrar:
(a) must hold a hearing of the opposition if requested by a party in writing; or
(b) may decide, on the Registrar’s own initiative, to hold a hearing of the
opposition.
(2) The hearing may, at the Registrar’s discretion, be:
(a) an oral hearing; or
(b) by written submissions.
(3) If the Registrar decides on an oral hearing:
(a) the Registrar must notify the parties of the date, time and place of the
hearing; and
(b) the opponent must file a summary of submissions at least 10 business days
before the hearing; and
(c) the applicant must file a summary of submissions at least 5 business days
before the hearing.
(4) The Registrar may take into account a party’s failure to file a summary of
submissions under subregulation (3) in making an award of costs.
Note: Regulations 21.15 and 21.16 deal with hearings.
(5) The Registrar must:
(a) decide the opposition; and
(b) notify the parties of the Registrar’s decision.
21.20F Registrar may give direction
(1) The Registrar may give a direction in relation to an opposition to which this
Division applies:
(a) if requested by a party in writing; or
(b) on the Registrar’s own initiative.
(2) If the Registrar proposes to give a direction, the Registrar must give the parties
an opportunity to make representations about the direction.
(3) A direction must not be inconsistent with the Act or these Regulations.
(4) The Registrar must notify the parties of the direction as soon as practicable.
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Division 2A Extensions of time
Regulation 21.20G
162 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
21.20G Registrar must notify parties of dismissal or discontinuance of
opposition
If an opposition is dismissed or discontinued, the Registrar must notify the
parties of the dismissal or discontinuance.
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General Division 3
Regulation 21.21
Trade Marks Regulations 1995 163
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Division 3—General
21.21 What fees are payable
(1) For subsection 223(1) of the Act (which deals with fees), the fees specified in an
item in Schedule 9 are payable in respect of a matter specified in that item.
(2) If a person asks the Registrar, under subsection 75(1) of the Act, to renew the
registration of a trade mark before it expires, the fee payable for the renewal is
the fee that would be payable if the person had asked for renewal of the
registration on the day when it would otherwise expire.
(3) Subregulation (4) applies if a person asks the Registrar, under section 79 of the
Act, to renew the registration of a trade mark after it expires.
(4) The fees payable for the renewal are:
(a) the fee that would have been payable if the person had asked for renewal of
the registration on the day when it expired; and
(b) the additional fee stated in item 10 of Schedule 9 for the period:
(i) beginning on the day after the day when the registration expires; and
(ii) ending on the day when the request for renewal is filed.
(5) If a person asks the Registrar, under section 80D of the Act, to renew the
registration of a trade mark for one or more potential renewal periods, the fee
payable is the sum of the fees payable for the potential renewal period or periods
requested by the person, as those fees were at the Register entry day.
(6) Subregulation (7) applies if a person asks the Registrar, under
paragraph 80G(1)(b) of the Act (which deals with renewal within 10 months
after the end of the prescribed period) to renew the registration of a trade mark
for one or more potential renewal periods.
(7) The fee payable for the renewal is:
(a) the sum of the fees payable for the potential renewal period or periods
requested by the person, as those fees were at the Register entry day; and
(b) the additional fee stated in item 12 of Schedule 9 for the period:
(i) beginning on the day after the day when the prescribed period expires;
and
(ii) ending on the day when the request for renewal is filed.
(8) Item 16 of Schedule 9, as in force on 1 July 2012, does not apply to a person in
relation to a hearing held after the commencement of this subregulation if the
person:
(a) requests the hearing, and pays the fee mentioned in item 14 of Schedule 9,
before the commencement of this subregulation; or
(b) pays the fee mentioned in item 16 of Schedule 9 for the hearing before the
commencement of this subregulation.
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Division 3 General
Regulation 21.21AA
164 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(9) Item 17 of Schedule 9, as in force on 1 July 2012, does not apply to a person in
relation to a hearing held after the commencement of this subregulation if the
person:
(a) pays the fee mentioned in item 15 of Schedule 9 for the hearing before the
commencement of this subregulation; or
(b) pays the fee mentioned in item 17 of Schedule 9 for the hearing before the
commencement of this subregulation.
21.21AA Approved means
(1) The Registrar may, by notice published by the Registrar, specify one or more
means for doing an action mentioned in Schedule 9.
Example of action: Filing an application.
(2) The means may be an electronic means or any other means.
Note: The means become approved means when they are published.
21.21A No action permitted until fee paid
(1) If a fee is payable in respect of the doing of an act by the Registrar or the
Comptroller-General of Customs, the Registrar or Comptroller-General of
Customs must not do the act until the fee has been paid.
(2) Subject to subregulation (3), if:
(a) a fee is payable in respect of the doing of an act by a person other than the
Registrar or the Comptroller-General of Customs; or
(b) a fee is payable in respect of the filing of a document;
the act is taken to have been done, or the document is taken to have been filed,
despite the failure to pay the fee.
Note: File has the meaning given by section 6 of the Act.
(3) If the Registrar or the Comptroller-General of Customs notifies under
regulation 21.23 the person concerned or his or her agent, that the fee has not
been paid, the act is not taken to have been done, or the document is not taken to
have been filed, before the day on which the fee is paid.
21.22 How fees are to be paid
(1) For the purposes of subsection 223(2) of the Act (which deals with payment of
fees), a fee, other than a fee payable under Part 13 of the Act, must be paid to the
Registrar.
(2) A fee payable under Part 13 of the Act must be paid to the Comptroller-General
of Customs.
(3) A fee must be paid in accordance with a direction given:
(a) in the case of a fee that is paid to the Registrar—by the Registrar; and
(b) in the case of a fee that is paid to the Comptroller-General of Customs—by
the Comptroller-General of Customs;
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as to the way in which it is to be paid.
21.23 Notice of non-payment of fee
For subregulation 21.21A(3), the Registrar or the Comptroller-General of
Customs must, in writing or by telephone:
(a) if a fee mentioned in Part 3A has not been paid or waived within the period
prescribed in that Part for the payment of the fee—advise the requester that
the fee has not been paid and that the AFS request has been discontinued;
or
(b) in any other case—notify the person concerned, or his or her agent, that the
fee has not been paid, within 14 working days after the doing of the act, or
the filing of the document, for which the fee is payable.
21.24 Refunds etc of fees
(1) If, because of an error or omission by an employee, a person becomes liable to
pay a fee for which the person would not otherwise have been liable, the
Registrar may:
(a) remit the whole or part of the fee; or
(b) if the fee has been paid—refund the whole or part of the fee to that person.
(2) If:
(a) the acceptance of an application for registration of a trade mark; or
(b) the registration of a trade mark;
is delayed because of an error or omission by an employee, the period that the
Registrar reasonably believes to be equal to the period of the delay resulting from
the error or omission is not to be taken into account for the purposes of
calculating the amount of the fee for the matter in relation to which the error or
omission was made.
21.24A Period for doing certain acts—office not open for business
For subsection 223A(1) of the Act, the circumstance is that the act is done at:
(a) the Trade Marks Office; or
(b) a sub-office (if any) of the Trade Marks Office;
that was not open for business.
Note: Subsection 223A(1) provides as follows:
‘(1) If the last day of a period provided by this Act (except this section) for doing an act is a
day when the Trade Marks Office, or a sub-office of the Trade Marks Office, is not
open for business, the act may be done in prescribed circumstances on the next day
when the office or sub-office is open for business.’.
21.24B Days when office not open for business
(1) For paragraph 223A(2)(a) of the Act, the days on which the Trade Marks Office,
or a sub-office of the Trade Marks Office, is not open for business are:
(a) Saturday; and
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(b) Sunday; and
(c) Australia Day; and
(d) Anzac Day.
(2) For paragraph 223A(2)(b) of the Act, the table sets out prescribed persons.
Item Person
1 The Director General of IP Australia
2 The Deputy Director General of IP Australia
3 Another person who:
(a) is an SES employee of IP Australia; and
(b) acts with the agreement of the Director General of IP Australia
4 Another person who:
(a) is an SES employee of IP Australia; and
(b) acts with the agreement of the Deputy Director General of IP Australia
5 Another person who:
(a) is an SES employee of IP Australia; and
(b) acts with the agreement of another SES employee of IP Australia
Note: SES employee is explained in section 34 of the Public Service Act 1999. That meaning
is applied generally to Commonwealth legislation by section 2B of the Acts
Interpretation Act 1901.
(3) For paragraph 223A(2)(b) of the Act, the prescribed way of publishing a
declaration is in the Official Journal of Trade Marks.
21.24C Period for doing certain acts—acts to which section 223A does not apply
For subsection 223A(7) of the Act, the following acts are prescribed:
(a) an act done in opposition proceedings, other than the filing of a notice or
request with the Trade Marks Office, under the following provisions:
(i) Part 5, 9 or 21 of the Act;
(ii) Part 5, 9, 17A or 21 of these Regulations;
(b) an act done in relation to proceedings in a court or a tribunal;
(c) the filing of a notice of opposition with a court under section 96 of the Act;
(d) an act done under Part 13 or 16 of the Act;
(e) an act done under Part 13, 16 or 20 of these Regulations.
21.25 Extension of time—application
For the purposes of subsections 224(2) and (3) of the Act (which deal with
extensions of time), an application for an extension of time for doing a relevant
act:
(a) must be in an approved form; and
(b) must be accompanied by a declaration stating:
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(i) the facts on which the grounds specified in the application are based;
and
(ii) if the period for doing the relevant act has ended—the reason why the
application was not made before the period ended.
Note: Regulations 21.6 and 21.7 deal with making and filing declarations.
21.28 Extension of time—prescribed acts and documents
(1) For the purposes of paragraph (a) of the definition of relevant act in
subsection 224(8) of the Act, the following acts are prescribed:
(a) complying with the requirements of subregulation 4.2(1);
(aa) filing notice of a claim to a right of priority under subsection 29(1) of the
Act;
(b) applying for the registration of a trade mark in the circumstances described
in paragraph 29(1)(b) of the Act;
(c) making a divisional application for the registration of a trade mark under
subsection 45(1) of the Act;
(f) filing evidence under regulation 5.14, 9.16, 17A.34J or 17A.48P;
(j) requesting that an application for the registration of a trade mark be
amended under paragraph 64(b) of the Act;
(k) requesting renewal of the registration of a trade mark under sections 79,
80D or 80G of the Act;
(n) complying with the authorised user’s request referred to in regulation 13.2;
(o) complying with a request for information referred to in regulation 13.3;
(p) responding to a notice under subregulation 16.3(2);
(q) responding to an advertisement under subregulation 16.3(3);
(r) making a claim for priority under section 29 of the Act for an application
for the registration of a trade mark in the circumstances mentioned in
section 244 of the Act;
(s) the filing of a document or the giving of advice to the Registrar under
Part 3A;
(t) an action or step prescribed in Part 20.
(2) For the purposes of paragraph (b) of the definition of relevant act in
subsection 224(8) of the Act, the following documents are prescribed:
(a) a notice of opposition to the registration of a trade mark under section 52 of
the Act;
(b) a notice of opposition to which section 96 of the Act or
subregulation 17A.32(1), regulation 17A.48F or subregulation 21.20B(1)
applies;
(c) any of the following documents required or permitted to be submitted
under Part 3A:
(i) an AFS request;
(ii) a submission;
(iii) an attachment;
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(iv) accompanying material;
(v) a written advice.
21.29 Convention countries
(1) For the definition of Convention country in subsection 6(1) of the Act, the
following countries are prescribed:
(a) a foreign country that is a signatory to the Paris Convention for the
Protection of Industrial Property of 20 March 1883, as in force from time
to time;
(b) a foreign country that is a full member of the World Trade Organization.
Note 1: For signatories to the Paris Convention for the Protection of Industrial Property, see
www.wipo.int.
Note 2: For full members of the World Trade Organization, see www.wto.org.
(2) For the purposes of subsection 225(2) of the Act, an application for the
registration of a trade mark, being an application that is made under the treaty
done at Bangui in the Central African Republic on 2 March 1977 entitled the
Agreement Relating to the Creation of an African Intellectual Property
Organisation, Constituting a Revision of the Agreement Relating to the Creation
of an African and Malagasy Office of Industrial Property (a treaty subsisting
between 2 or more Convention countries), is, in accordance with the terms of that
treaty, declared to be equivalent to an application made in each of those
Convention countries.
(3) For the purposes of subsection 225(2) of the Act, an application for the
registration of a trade mark, being an application that is made under the Benelux
Convention Concerning Trademarks done at Brussels on 19 March 1962 (being a
treaty subsisting between 2 or more Convention countries), is, in accordance with
the terms of that treaty, declared to be equivalent to an application made in each
Convention country that is a High Contracting party within the meaning of that
treaty.
(4) For subsection 225(2) of the Act, an application, under the terms of the Treaty
Establishing the European Community done at Rome on 25 March 1957, for
registration of a European Community trade mark is equivalent to an application
made in each Convention country party to the treaty.
21.30 Rights of registered patent attorneys
A registered patent attorney has the same right of lien over documents and
property of a client as a solicitor.
21.31 Incapacity of certain persons
(1) If a person is incapable of doing anything required or permitted by the Act or
these regulations to be done because of infancy or physical or mental disability, a
court may, on the application of a person acting on behalf of the incapable person
or of another person interested in the thing being done:
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(a) do the thing; or
(b) appoint a person to do the thing;
in the name, and on behalf, of the incapable person.
(2) A thing done in the name of, and on behalf of, an incapable person is taken to
have been done by that person as if the person had not been incapable when the
thing was done.
21.33 Directions not otherwise prescribed
If the Registrar reasonably believes that it is necessary for the proper conduct of
proceedings for a person to perform an act, file a document or produce evidence
that the person is not required by the Act or these regulations to perform, file or
produce, the Registrar may give notice in writing to the person requiring him or
her:
(a) to perform the act; or
(b) file the document; or
(c) to produce the evidence;
that is specified in the notice.
21.34 Requirements cannot be complied with for reasonable cause
If:
(a) under these regulations, a person is required to do an act or thing, sign a
document, make a declaration or file or give to the Registrar a document or
evidence; and
(b) the Registrar is reasonably satisfied that the person cannot comply with the
requirement;
subject to any condition that the Registrar may reasonably impose, the Registrar
may dispense with the requirement.
21.35 Review of decisions
(1) In this regulation:
decision has the same meaning as in the Administrative Appeals Tribunal Act
1975.
(2) Application may be made to the AAT for review of a decision of:
(a) the Board under the following provisions:
(i) regulation 20.5 (‘evidence of academic qualifications’);
(ii) regulation 20.7 (‘evidence of knowledge requirements’); or
(b) the Designated Manager under the following provisions of the Patents
Regulations 1991 in their application to trade marks attorneys:
(i) regulation 20.28 (‘failure to comply with continuing professional
education requirements’);
(ii) subregulation 20.29(3) (imposing a condition when restoring
attorney’s name to Register of Trade Marks Attorneys);
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(iii) regulation 20.31 (‘returning to the Register in other circumstances’);
or
(ba) the Designated Manager under the following provisions:
(i) regulation 20.14B (suspending registration for serious offence);
(ii) regulation 20A.8 (failing to maintain professional indemnity
insurance); or
(bb) the Disciplinary Tribunal under regulation 20A.18 (decision of
Disciplinary Tribunan( � or
(c) the Disciplinary Tribunal under the following provisions of the Patents
Regulations 1991 in their application to trade marks attorneys:
(i) regulation 20.43 (‘decision of Disciplinary Tribunal’);
(ii) regulation 20.44 (‘penalties—professional misconduct’);
(iii) regulation 20.45 (‘penalties—unsatisfactory professional conduct’);
(iv) regulation 20.46 (‘finding that attorney was unqualified at time of
registration’);
(v) regulation 20.47 (‘finding that registration obtained by fraud’).
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Part 22—Transitional provisions
Division 1—General
22.1 Application of the Act
(1) If:
(a) an application for the registration of a trade mark is lodged under the Trade
Marks Act 1955; and
(b) the Registrar has issued a report on the application under the Trade Marks
Act 1955; and
(c) immediately before the commencement of these regulations, the
application is pending and has not been accepted;
the report is taken to have been issued by the Registrar under the Act on the date
on which it was issued under the Trade Marks Act 1955.
(2) If:
(a) an application under the Trade Marks Act 1955 for the registration of a
trade mark is amended under the Trade Marks Act 1955; and
(b) immediately before the commencement of these regulations, the
application is pending and has not been accepted;
the amendment is taken to have been made under the Act on the date on which it
was made under the Trade Marks Act 1955.
(3) If the particulars of an application for the registration of a trade mark have been
published before the commencement of these regulations:
(a) in the Official Journal; or
(b) by listing in a computer database maintained by the Trade Marks Office; or
(c) by making a record of the application available, in electronic or other form,
in each of the sub-offices of the Trade Marks Office;
then, for the purposes of subsection 45(2), paragraph 64(a), subsection 65(1) and
paragraph 83(1)(a) of the Act, those particulars are taken to have been published
under section 30 of the Act.
22.2 Fees payable in relation to certain matters
(1) Subject to subregulation (2), a fee payable in relation to proceedings:
(a) relating to an application for the registration of a trade mark of a kind
mentioned in subsection 241(2) of the Act (which deals with pending
applications for registration of trade marks); or
(b) of a kind mentioned to which section 251 of the Act (which deals with
action for removal of trade marks from the Register for non-use) applies;
is the fee that would have been payable if these regulations had applied to the
proceedings.
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(2) The fee payable for the registration of a trade mark of a kind mentioned in
subsection 241(2) of the Act is the fee that was payable under regulations made
under the Trade Marks Act 1955, being the regulations as in force when the
application was accepted.
(5) If:
(a) under the repealed Act the registration of a trade mark expires in 1995; and
(b) a request is made to renew the registration of the trade mark within the
period of 12 months following the expiry;
the fee payable in relation to the request is the fee that would have been payable
for lodgment of an application for restoration of the trade mark under
subsection 71(1) of the repealed Act.
22.3 Certain delegations continue
If, immediately before the commencement of these regulations, a person:
(a) was a delegate of the Registrar of Trade Marks under the repealed Act; and
(b) was exercising the powers of the Registrar in relation to a matter to which,
under Division 3 of Part 22 of the Act, the repealed Act continues to apply;
the delegation of that person continues in relation to the matter.
22.4 Certain deferments continue
(1) If:
(a) the Registrar has deferred acceptance of an application for registration of a
trade mark under subsection 33(3) of the Trade Marks Act 1955; and
(b) the deferment was in force immediately before the commencement of these
regulations;
the deferment is in force under subregulation 4.13(1) after the commencement of
these regulations as if the Registrar had deferred acceptance of the application on
the day on which it was deferred under the Trade Marks Act 1955.
(2) Subject to paragraph 4.14(2)(a), the deferment period for an application referred
to in subregulation (1) ends:
(a) when the Registrar is reasonably satisfied that there are no longer grounds
for rejecting the application under subsection 44(1) or (2) of the Act
because of another trade mark in respect of which an application for
registration has been made by another person; or
(b) if the period does not end in accordance with paragraph (a)—when
proceedings in respect of the application for registration of the other trade
mark are finalised.
(3) If acceptance of the application is deferred as a result of the operation of more
than 1 provision of these regulations, the deferment period ends in accordance
with whichever of the provisions of:
(a) paragraph (2)(b); and
(b) subregulation 4.14(3), other than paragraph 4.14(3)(a);
under which the deferment period ends later or last, as the case requires.
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22.5 Certain extensions of time continue
If:
(a) the Registrar has extended a period of time under section 130 or 131 of the
Trade Marks Act 1955; and
(b) the extended period of time had not ended before the commencement of
these regulations;
the period ends when it would have ended if that section had continued to be in
force.
22.6 Deferment of acceptance—certain applications
If:
(a) an applicant requests the Registrar to defer acceptance of an application for
registration of a trade mark because of another trade mark that is registered
by another person; and
(b) the applicant has lodged an application under section 23 of the Trade
Marks Act 1955 in respect of the other trade mark;
then:
(c) regulation 4.13 applies in relation to the first-mentioned application as if
the reference in subparagraph 4.13(1)(c)(iii) to an application under
section 92 were a reference to an application under section 23 of the Trade
Marks Act 1955; and
(d) regulation 4.14 applies in relation to that application as if the reference in
paragraph 4.14(3)(c) to Part 9 of the Trade Marks Act 1995 were a
reference to section 23 of the Trade Marks Act 1955.
22.7 Trade marks attorneys
For registration as a trade marks attorney, a person is taken to meet the
requirements of subregulation 20.1(1) until 27 January 2001 if the person:
(a) was, on 28 February 1998, registered as a patent attorney under section 198
of the Patents Act 1990; or
(b) met the requirements of paragraphs 198(2)(c) and (d) of the Patents Act
1990 as in force on 26 January 1999; or
(c) is a legal practitioner who acted for a client in trade mark matters before
27 January 1999, and makes a declaration to that effect; or
(d) is a person to whom note 4 to subsection 156(2) of the Trade Marks Act
1995 applies.
22.8 Trade marks attorney examination requirements
(1) For a person who passed an examination, or was exempted from having to pass
the examination, for at least 1 subject under Schedule 5 of the Patents
Regulations 1991 as in force on 26 January 1999, the period of 5 years for
paragraph 20.3A(1)(b) of the Patents Regulations 1991 is taken to commence on
27 January 1999.
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(2) Subregulation (3) applies to a person who has passed an examination, or been
exempted from having to pass the examination, for at least 1 subject mentioned
in Schedule 5 as in force on 26 January 1999.
(3) A pass in an examination for a subject mentioned in column 1 of the following
table is taken to be a pass for paragraph 20.1(1)(a) in a topic group mentioned in
column 2 of the table:
Column 1
Subject
Column 2
Topic group
Legal Process Group A—Legal process and overview of
intellectual property
Patent Attorneys’ Practice, Part 2 Group B—Professional conduct
Trade Marks law of Australia and the Practice of
the Trade Marks Office
Group C—Trade mark law
Patent Attorneys’ Practice, Part 1 and Patent
Attorneys’ Practice, Part 2
Group D—Trade mark practice
(4) For registration as a trade marks attorney, a person is taken to have passed an
examination for Patent Attorney’s Practice 1 and Patent Attorney’s Practice 2 if
the person:
(a) before 27 January 1999, passed an examination for a subject that the Board
considers is equivalent to topic groups A and C mentioned in Schedule 5 to
the Patents Regulations 1991; and
(b) applies for registration as a trade marks attorney before 27 January 2001;
and
(c) provides a declaration by an employer or the employer’s representative that
the person’s principal field of practice for 2 continuous years has been in
trade marks matters.
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Division 2—Amendments made by particular instruments
22.9 Amendments made by the Intellectual Property Legislation Amendment
(Raising the Bar) Regulation 2013 (No. 1)
(1) The amendments of these Regulations made by the items of Part 2 of Schedule 3
to the Intellectual Property Legislation Amendment (Raising the Bar)
Regulation 2013 (No. 1) apply as set out in the following table.
Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
1 all items of Part 2 the matters referred to in subitem 32(7) of Schedule 3 to
the Intellectual Property Laws Amendment (Raising the
Bar) Act 2012
2 items 10 to 30 an opposition proceeding commenced by the filing of a
notice of intention to oppose on or after 15 April 2013
However, if:
(a) an application was advertised before 15 April 2013;
and
(b) a notice of intention to oppose is filed on or after
15 April 2013;
the reference in subregulations 5.6(1), 9.8(1), 17A.33(1)
and 17A.48G(1) to 2 months is taken to be a reference to 3
months
Also, if:
(a) an opposition proceeding was commenced before
15 April 2013; and
(b) a document or evidence was not served in relation to
the opposition proceeding before 15 April 2013; and
(c) the document or evidence is required to be served on or
after 15 April 2013;
then:
(d) a requirement in Part 5, 6 or 9, Subdivision 3 of
Division 3 of Part 17A, Subdivision 3 or Subdivision 4
of Division 5 of Part 17A, as in force immediately
before 15 April 2013, for a party to serve a document
or evidence on a person is taken to be a requirement to
file the document or evidence; and
(e) a reference to a document or evidence having been
served is taken to be a reference to the document or
evidence having been filed; and
(f) the Registrar must give a copy of the document or
evidence to the person; and
(g) if:
(i) under Part 5, 6 or 9, Subdivision 3 of Division 3
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Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
of Part 17A, Subdivision 3 or Subdivision 4 of
Division 5 of Part 17A, as in force immediately
before 15 April 2013, a period for the person to
do an action was calculated from the date that a
party served the document or evidence; and
(ii) the Registrar does not give the document or
evidence to the person on the filing date;
the Registrar must extend the period for the person to
do the action by a number of days equal to the number
of days between when the document or evidence was
filed and when the Registrar gave the document or
evidence to the person
3 item 11 (new regulation 5.3),
item 14 (new regulation 9.3),
item 16 (new
regulation 17A.30) and
item 17 (new
regulation 17A.48A)
an opposition proceeding commenced before 15 April
2013
4 item 11 (new regulation 5.17),
item 13 (new regulation 6.9),
item 14 (new regulation 9.20),
item 16 (new
regulation 17A.34M), item 17
(new regulation 17A.48V) and
item 18 (new
regulation 21.20E)
an opposition proceeding commenced before 15 April
2013 in which the Registrar has not set a hearing date, or
issued a notice of hearing to the parties, before 15 April
2013
However:
(a) a reference in regulation 5.17 to paragraph 5.8(3)(b) or
subregulation 5.8(4) is taken not to apply; and
(b) a reference in regulation 5.17 to regulation 5.14 is
taken to be a reference to regulations 5.7 to 5.13 as in
force immediately before 15 April 2013; and
(c) a reference in paragraph 6.9(1)(a) to a party requesting
a hearing is taken to include the conditions set out in
subregulations 5.14(1) and (2) as in force immediately
before 15 April 2013; and
(d) a reference in regulation 9.20 to regulation 9.10 is
taken not to apply; and
(e) a reference in regulation 9.20 to regulation 9.16 is
taken to be a reference to regulation 9.4 as in force
immediately before 15 April 2013; and
(f) a reference in regulation 17A.34M to
regulation 17A.34B or 17A.34H is taken not to apply;
and
(g) a reference in regulation 17A.34M to
regulation 17A.34J is taken to be a reference to
regulation 17A.33 as in force immediately before
15 April 2013; and
(h) a reference in regulation 17A.34M to
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Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
regulation 17A.34N is taken to be a reference to
regulation 17A.34 as in force immediately before
15 April 2013; and
(i) a reference in regulation 17A.48V to
regulation 17A.48K is taken not to apply; and
(j) a reference in regulation 17A.48V to
regulation 17A.48R is taken to be a reference to
subregulation 17A.48(5) as in force immediately
before 15 April 2013; and
(k) a reference in paragraph 21.20E(1)(a) to a party
requesting a hearing is to include the conditions set out
in subregulations 5.14(1) and (2) as in force
immediately before 15 April 2013; and
(l) regulation 5.14, as in force immediately before
15 April 2013, is taken not to apply
5 item 11 (new regulation 5.15),
item 14 (new regulation 9.18),
item 16 (new
regulation 17A.34K), item 17
(new regulation 17A.48T) and
item 24 (Schedule 9, new
item 6)
an opposition proceeding commenced before 15 April
2013 in which an extension of time is requested for a
period that commences on or after 15 April 2013
However:
(a) a reference in subregulation 5.15(1) to regulation 5.14
is taken to be a reference to regulations 5.7 to 5.13 as
in force immediately before 15 April 2013; and
(b) a reference in subregulation 9.18(1) to regulation 9.16
is taken to be a reference to regulation 9.4 as in force
immediately before 15 April 2013; and
(c) a reference in subregulation 17A.34K(1) to
regulation 17A.34J is taken to be a reference to
regulation 17A.33 as in force immediately before
15 April 2013; and
(d) a reference in subregulation 17A.48T(1) to
regulation 17A.48R is taken to be a reference to
subregulation 17A.48(5) as in force immediately
before 15 April 2013; and
(e) paragraph 5.15(1)(a) and subparagraph 5.15(3)(c)(i), as
in force immediately before 15 April 2013, are taken
not to apply
(2) The amendment of these Regulations made by item 41 of Schedule 4 to the
Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013
(No. 1) applies in relation to a charge that:
(a) is laid against a registered trade mark attorney on or after 15 April 2013;
and
(b) alleges the commission of a serious offence.
(3) The amendments of these Regulations made by item 95 of Schedule 6 to the
Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013
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Part 22 Transitional provisions
Division 2 Amendments made by particular instruments
Regulation 22.10
178 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(No. 1) apply in relation to a hearing for which the Registrar issues a hearing
notice, or an invitation to be heard, on or after 15 April 2013.
22.10 Amendments made by the Customs and Other Legislation Amendment
(Australian Border Force) Regulation 2015
(1) An instrument in force under subregulation 13.5(1) immediately before 1 July
2015 has effect on and after that day as if it were an instrument of the
Comptroller-General of Customs in force under that subregulation.
(2) A notification under subregulation 17A.42E(1) before 1 July 2015 is taken on
and after that day to have been a notification under that subregulation to the
Comptroller-General of Customs.
(3) A fee paid before 1 July 2015 to the Customs CEO as mentioned in
subregulation 21.22(2) is taken on and after that day to have been a fee paid to
the Comptroller-General of Customs.
(4) A direction of the Customs CEO that was in force under subregulation 21.22(3)
immediately before 1 July 2015 continues in force on and after that day as if it
were a direction of the Comptroller-General of Customs.
(5) An advice or notification by the Customs CEO under regulation 21.23 before
1 July 2015 is taken on and after that day to have been an advice or notification
under that regulation by the Comptroller-General of Customs.
22.11 Amendments made by the Trade Marks Amendment (Fees)
Regulation 2016
The amendments of Schedule 9 made by items 2 and 3 of the Trade Marks
Amendment (Fees) Regulation 2016 apply in relation to an AFS request that is
submitted on or after the commencement of those items.
22.12 Amendments made by the Intellectual Property Legislation Amendment
(Fee Review) Regulation 2016
Despite the repeal of item 9 of Schedule 9 by Part 4 of Schedule 1 to the
Intellectual Property Legislation Amendment (Fee Review) Regulation 2016 (the
amending Regulation), that item continues to apply in relation to the registration
of a trade mark of a kind mentioned in that item if the application for registration
was filed before the commencement of the amending Regulation.
22.13 Amendment made by Schedule 5 to the Intellectual Property Legislation
Amendment (Single Economic Market and Other Measures)
Regulation 2016
The amendment of these Regulations made by item 1 of Schedule 5 to the
Intellectual Property Legislation Amendment (Single Economic Market and
Other Measures) Regulation 2016 applies in relation to an IRDA if notification
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Transitional provisions Part 22
Amendments made by particular instruments Division 2
Regulation 22.13
Trade Marks Regulations 1995 179
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
of the IRDA is received by the Registrar from the International Bureau on or
after commencement of that item.
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Schedule 1 Classification of goods and services
Part 1 Classes of goods
180 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Schedule 1—Classification of goods and services (regulation 3.1)
Part 1—Classes of goods
Item number
(Class number)
Class of goods
(Class heading)
1 Chemicals used in industry, science and photography, as well as in
agriculture, horticulture and forestry; unprocessed artificial resins,
unprocessed plastics; manures; fire extinguishing compositions; tempering
and soldering preparations; chemical substances for preserving foodstuffs;
tanning substances; adhesives used in industry
2 Paints, varnishes, lacquers; preservatives against rust and against deterioration
of wood; colourants; mordants; raw natural resins; metals in foil and powder
form for painters, decorators, printers and artists
3 Bleaching preparations and other substances for laundry use; cleaning,
polishing, scouring and abrasive preparations; soaps; perfumery, essential
oils, cosmetics, hair lotions; dentifrices
4 Industrial oils and greases; lubricants; dust absorbing, wetting and binding
compositions; fuels (including motor spirit) and illuminants; candles, wicks
for lighting
5 Pharmaceutical and veterinary preparations; sanitary preparations for medical
purposes; dietetic food and substances adapted for medical or veterinary use,
food for babies; dietary supplements for humans and animals; plasters,
materials for dressings; material for stopping teeth, dental wax; disinfectants;
preparations for destroying vermin; fungicides, herbicides
6 Common metals and their alloys; metal building materials; transportable
buildings of metal; materials of metal for railway tracks; non-electric cables
and wires of common metal; ironmongery, small items of metal hardware;
pipes and tubes of metal; safes; ores
7 Machines and machine tools; motors and engines (except for land vehicles);
machine coupling and transmission components (except for land vehicles);
agricultural implements, other than hand operated; incubators for eggs;
automatic vending machines
8 Hand tools and implements (hand operated); cutlery; side arms; razors
9 Scientific, nautical, surveying, photographic, cinematographic, optical,
weighing, measuring, signalling, checking (supervision), life-saving and
teaching apparatus and instruments; apparatus and instruments for conducting,
switching, transforming, accumulating, regulating or controlling electricity;
apparatus for recording, transmission or reproduction of sound or images;
magnetic data carriers, recording discs; compact discs, DVDs and other digital
recording media; mechanisms for coin-operated apparatus; cash registers,
calculating machines, data processing equipment, computers; computer
software; fire-extinguishing apparatus
10 Surgical, medical, dental and veterinary apparatus and instruments, artificial
limbs, eyes and teeth; orthopaedic articles; suture materials
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Classes of goods Part 1
Trade Marks Regulations 1995 181
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Item number
(Class number)
Class of goods
(Class heading)
11 Apparatus for lighting, heating, steam generating, cooking, refrigerating,
drying, ventilating, water supply and sanitary purposes
12 Vehicles; apparatus for locomotion by land, air or water
13 Firearms, ammunition and projectiles; explosives; fireworks
14 Precious metals and their alloys; jewellery, precious stones; horological and
chronometric instruments
15 Musical instruments
16 Paper and cardboard; printed matter; bookbinding material; photographs;
stationery; adhesives for stationery or household purposes; artists’ materials;
paintbrushes; typewriters and office requisites (except furniture); instructional
and teaching material (except apparatus); plastic materials for packaging;
printers’ type; printing blocks
17 Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica
and substitutes for all these materials; plastics in extruded form for use in
manufacture; packing, stopping and insulating materials; flexible pipes, not of
metal
18 Leather and imitations of leather; animal skins, hides; trunks and travelling
bags; umbrellas and parasols; walking sticks; whips, harness and saddlery
19 Building materials (non-metallic); non-metallic rigid pipes for building;
asphalt, pitch and bitumen; non-metallic transportable buildings; monuments,
not of metal
20 Furniture, mirrors, picture frames; unworked or semi-worked bone, horn,
ivory, whalebone or mother-of-pearl; shells; meerschaum; yellow amber
21 Household or kitchen utensils and containers; combs and sponges; brushes
(except paintbrushes); brush-making materials; articles for cleaning purposes;
steelwool; unworked or semi-worked glass (except glass used in building);
glassware, porcelain and earthenware
22 Ropes and string, nets; tents, awnings and tarpaulins, sails; sacks; padding and
stuffing materials (except of paper, cardboard, rubber or plastics); raw fibrous
textile materials
23 Yarns and threads, for textile use
24 Textiles and substitutes for textiles; bed covers; table covers
25 Clothing, footwear, headgear
26 Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and
needles; artificial flowers
27 Carpets, rugs, mats and matting, linoleum and other materials for covering
existing floors; wall hangings (non-textile)
28 Games and playthings; gymnastic and sporting articles; decorations for
Christmas trees
29 Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and
cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk
products; edible oils and fats
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Part 1 Classes of goods
182 Trade Marks Regulations 1995
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Item number
(Class number)
Class of goods
(Class heading)
30 Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and
preparations made from cereals; bread, pastry and confectionery; ices; sugar,
honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces
(condiments); spices; ice
31 Agricultural, horticultural and forestry products; raw and unprocessed grains
and seeds; fresh fruits and vegetables; natural plants and flowers; live
animals; foodstuffs for animals; malt
32 Beers; mineral and aerated waters and other non-alcoholic beverages; fruit
beverages and fruit juices; syrups and other preparations for making
beverages
33 Alcoholic beverages (except beers)
34 Tobacco; smokers’ articles; matches
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Classification of goods and services Schedule 1
Classes of services Part 2
Trade Marks Regulations 1995 183
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Part 2—Classes of services
Item number
(Class number)
Class of services
(Class heading)
35 Advertising; business management; business administration; office functions
36 Insurance; financial affairs; monetary affairs; real estate affairs
37 Building construction; repair; installation services
38 Telecommunications
39 Transport; packaging and storage of goods; travel arrangement
40 Treatment of materials
41 Education; providing of training; entertainment; sporting and cultural
activities
42 Scientific and technological services and research and design relating thereto;
industrial analysis and research services; design and development of computer
hardware and software
43 Services for providing food and drink; temporary accommodation
44 Medical services; veterinary services; hygienic and beauty care for human
beings or animals; agriculture, horticulture and forestry services
45 Legal services; security services for the protection of property and
individuals; personal and social services rendered by others to meet the needs
of individuals
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Schedule 2 Signs that may not be registered as trade marks
184 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Schedule 2—Signs that may not be registered as trade
marks (paragraph 4.15(f))
Austrade
C.E.S.
Olympic Champion
Repatriation
Returned Airman
Returned Sailor
Returned Soldier
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Modifications of Part 13 of the Act (Norfolk Island) Schedule 3
Trade Marks Regulations 1995 185
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Schedule 3—Modifications of Part 13 of the Act
(Norfolk Island) Note See regulation 13.7.
1 After section 131
Insert:
131A Definitions
In this Part:
Customs Act 1901 (NI) means the Customs Act 1901 in its application to
Norfolk Island in accordance with the Norfolk Island Customs Ordinance 2016.
designated owner, in relation to goods imported into Norfolk Island, means:
(a) the person identified as the owner of the goods on the entry made in
relation to the goods under section 68 of the Customs Act 1901 (NI); or
(b) if no such entry exists—the person determined to be the owner of the goods
under section 133A of the Act.
2 Paragraph 133(1)(b)
Omit “Customs Act 1901”, substitute “Customs Act 1901 (NI)”.
3 Section 133A
Omit “Customs Act 1901”, substitute “Customs Act 1901 (NI)”.
3A Section 133A (note)
Omit “section 6”, substitute “section 131A”.
3B Subsection 134(1) (note)
Repeal the note, substitute:
Note 1: For designated owner see section 131A.
Note 2: For objector see section 6.
3C Subsection 134A(1) (note)
Repeal the note, substitute:
Note 1: For designated owner see section 131A.
Note 2: For objector and seized goods see section 6.
3D Subsection 135(2) (note)
Repeal the note, substitute:
Note 1: For designated owner see section 131A.
Note 2: For seized goods, objector and notified trade mark see section 6.
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186 Trade Marks Regulations 1995
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3E Subsection 136(1) (note)
Repeal the note, substitute:
Note 1: For designated owner see section 131A.
Note 2: For seized goods see section 6.
3F Subsections 136C(1) and 136D(1) (note)
Repeal the note, substitute:
Note 1: For designated owner see section 131A.
Note 2: For objector and seized goods see section 6.
3G Section 136E (note)
Repeal the note, substitute:
Note 1: For designated owner see section 131A.
Note 2: For seized goods see section 6.
3H Subsection 137(3) (note)
Repeal the note, substitute:
Note 1: For designated owner see section 131A.
Note 2: For seized goods see section 6.
5 Section 140
Omit “of the Commonwealth”, substitute “in force in Norfolk Island”.
8 Further amendments—Norfolk Island
The following provisions are amended by omitting each mention of “Australia”
and substituting “Norfolk Island”:
(a) section 131;
(b) subsection 133(1);
(c) paragraph 134(4)(a);
(d) subparagraph 136C(2)(b)(ii);
(e) section 143.
9 Section 144
Repeal the section.
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Modifications of Part 13 of the Act (Christmas Island) Schedule 4
Trade Marks Regulations 1995 187
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Schedule 4—Modifications of Part 13 of the Act
(Christmas Island) Note See regulation 13.8.
1 After section 131
Insert:
131A Definitions
In this Part:
Comptroller means the Comptroller of the Indian Ocean Territories Customs
Service.
designated owner, in relation to goods imported into Christmas Island, means
the person identified as the owner of the goods on the entry made in relation to
the goods under subsection 68(2) or (3) of the Customs Act 1901 of Christmas
Island.
2 Paragraph 133(1)(b)
After “Customs Act 1901”, insert “of Christmas Island”.
3 Section 133A
After “Customs Act 1901”, insert “of Christmas Island”.
4 Section 140
Omit “of the Commonwealth”, substitute “in force in Christmas Island”.
5 Further amendments—Christmas Island
The following provisions are amended by omitting each mention of “Australia”
and inserting “Christmas Island”:
(a) section 131;
(b) subsection 133(1);
(c) paragraph 134(4)(a);
(d) subparagraph 136C(2)(b)(ii);
(e) section 143.
6 Further amendments—Comptroller
The following provisions are amended by omitting each mention of
“Comptroller-General of Customs” and inserting “Comptroller”:
(a) sections 131 and 132;
(b) section 133, including the heading;
(c) sections 134 to 137;
(d) section 139, including the note;
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188 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(e) sections 140 to 143.
7 Further amendments—Territory of Christmas Island
The following provisions are amended by omitting each mention of
“Commonwealth” and inserting “Territory of Christmas Island”:
(a) section 133;
(b) subsection 134(5);
(c) section 135;
(d) subsection 136A(1);
(e) section 136E;
(f) paragraph 137(3)(b);
(g) section 139, including the heading;
(h) section 142, including the heading.
8 Section 144
Repeal the section.
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Modifications of Part 13 of the Act (Cocos (Keeling) Islands) Schedule 5
Trade Marks Regulations 1995 189
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Schedule 5—Modifications of Part 13 of the Act
(Cocos (Keeling) Islands) Note See regulation 13.9.
1 After section 131
Insert:
131A Definitions
In this Part:
Comptroller means the Comptroller of the Indian Ocean Territories Customs
Service.
designated owner, in relation to goods imported into Christmas Island, means
the person identified as the owner of the goods on the entry made in relation to
the goods under subsection 68(2) or (3) of the Customs Act 1901 of Cocos
(Keeling) Islands.
2 Paragraph 133(1)(b)
After “Customs Act 1901”, insert “of the Cocos (Keeling) Islands”.
3 Section 133A
After “Customs Act 1901”, insert “of the Cocos (Keeling) Islands”.
4 Section 140
Omit “of the Commonwealth”, substitute “in force in the Cocos (Keeling) Islands”.
5 Further amendments—the Cocos (Keeling) Islands
The following provisions are amended by omitting each mention of “Australia”
and inserting “the Cocos (Keeling) Islands”:
(a) section 131;
(b) subsection 133(1);
(c) paragraph 134(4)(a);
(d) subparagraph 136C(2)(b)(ii);
(e) section 143.
6 Further amendments—Comptroller
The following provisions are amended by omitting each mention of
“Comptroller-General of Customs” and inserting “Comptroller”:
(a) sections 131 to 132;
(b) section 133, including the heading;
(c) sections 134 to 137;
(d) section 139, including the note;
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190 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
(e) sections 140 to 143.
7 Further amendments—Cocos (Keeling) Islands
The following provisions are amended by omitting each mention of
“Commonwealth” and inserting “Cocos (Keeling) Islands”:
(a) section 133;
(b) subsection 134(5);
(c) section 135;
(d) subsection 136A(1);
(e) section 136E;
(f) paragraph 137(3)(b);
(g) section 139, including the heading;
(h) section 142, including the heading.
8 Section 144
Repeal the section.
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Offices of persons to whom registrar may delegate Schedule 6
Trade Marks Regulations 1995 191
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Schedule 6—Offices of persons to whom registrar may
delegate (regulation 19.2)
Executive level 2
Executive level 1
Executive level 1—Examiner of Trade Marks
APS level 6—Examiner of Trade Marks
APS level 5—Examiner of Trade Marks
APS level 4—Examiner of Trade Marks
APS level 3—Examiner of Trade Marks
APS level 6
APS level 5
APS level 4
APS level 3
APS level 2
APS level 1
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Schedule 7 Requirements for documents
192 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Schedule 7—Requirements for documents (regulation 21.2)
1. Documents, except documents mentioned in regulations 4.11, 5.18 and 21.18,
must be written in English.
2. Documents must be durable.
4. The contents of a document must be legible.
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Costs, expenses and allowances Schedule 8
Costs Part 1
Trade Marks Regulations 1995 193
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Schedule 8—Costs, expenses and allowances (subregulation 21.13(3))
Part 1—Costs
Item Column 1
Matter
Column 2
Amount
1 Notice of intention to oppose $200
2 Statement of grounds and particulars $200
3 Receiving and perusing statement of grounds and particulars $130
4 Notice of intention to defend $200
5 Notice of opposition filed under subregulation 6.6(1) or 21.20B(1) $200
6 Receiving and perusing a notice of opposition filed under
subregulation 6.6(1) or 21.20B(1)
$130
7 Evidence in support $700
8 Receiving and perusing evidence in support $300
9 Evidence in answer $700
10 Receiving and perusing evidence in answer $210
11 Evidence in reply $350
12 Receiving and perusing evidence in reply $130
13 Preparation of cases for hearing $525
14 Attendance at hearing by registered patent attorney, registered
trade marks attorney or solicitor without counsel
$260 an hour, but not
more than $1,170 a
day
15 Attendance at hearing by registered patent attorney, registered
trade marks attorney or solicitor instructing counsel
$200 an hour, but not
more than $900 a day
16 Counsel fees for attendance at a hearing $300 an hour, but not
more than $1,350 a
day
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Schedule 8 Costs, expenses and allowances
Part 2 Expenses and allowances
194 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Part 2—Expenses and allowances
Division 1—Expenses
1. A person who has paid a fee prescribed in these regulations in relation to
proceedings before the Registrar may be paid the amount of the fee.
2. A person attending proceedings before the Registrar must be paid:
(a) a reasonable amount for allowances for transport between the usual place
of residence of the person and the place that he or she attends for that
purpose; and
(b) if the person is required to be absent overnight from his or her usual place
of residence—a reasonable amount for allowances up to a daily maximum
of $700 for meals and accommodation.
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Expenses and allowances Part 2
Trade Marks Regulations 1995 195
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Division 2—Allowances
3. A person who, because of his or her professional, scientific or other special skill
or knowledge, is summoned to appear as a witness before the Registrar must be
paid:
(a) if the person is remunerated in his or her occupation by wages, salary or
fees—an amount equal to the amount of wages, salary or fees not paid to
the person because of his or her attendance for that purpose; and
(b) in any other case—an amount of not less than $140, or more than $700, for
each day on which he or she so attends.
4. A person summoned to appear as a witness, other than a witness referred to in
clause 3, before the Registrar must be paid:
(a) if the person is remunerated in his or her occupation by wages, salary or
fees—an amount equal to the amount of wages, salary or fees not paid to
the person because of his or her attendance for that purpose; and
(b) in any other case—an amount of not less than $80, or more than $130, for
each day on which he or she so attends.
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Schedule 9 Fees
196 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Schedule 9—Fees Note: See regulation 21.21.
1 Table of fees
The following table sets out fees that are payable in relation to matters specified
in the table.
Item Matter Fee
1 Filing an application to register a trade mark under
subsection 27(5) or 45(1) of the Act in respect of goods or
services in one or more of the prescribed classes:
(a) by approved means
(b) in addition to the fee for paragraph (a), if the goods and
services are specified in the application otherwise than by
using the official Goods and Services pick list
(c) by another means
(d) by AFS request mentioned in regulation 4.2A
$250 for each class
$80 for each class
$350 for each class
$130 for each class
3 Filing an application to register 2 or more trade marks as a
series under section 51 of the Act:
(a) by approved means
(b) in addition to the fee for paragraph (a), if the goods and
services are specified in the application otherwise than by
using the official Goods and Services pick list
(c) by another means
$400 for each class
$80 for each class
$500 for each class
4 Requesting an amendment under section 64, 65 or 65A of the
Act to include an additional prescribed class of goods or
services in an application:
(a) application under section 51 for a series of trade marks; $500 for each class
(b) any other case $350 for each class
5 Filing an application for an extension of a period under
subregulation 4.12(3) or regulation 17A.20
$100 for each month or part
of a month for which the
extension is sought
5A Filing an application under subsection 224(2) of the Act:
(a) for an extension of time on a ground specified in
paragraph 224(2)(a) of the Act; or $100 for each month or part
of a month for which the
extension is sought
(b) for an extension of time on a ground specified in
paragraph 224(2)(b) of the Act $100
5B Filing an application under subsection 224(3) of the Act for an
extension of time on a ground specified in paragraph 224(3)(b)
of the Act
$100 for each month or part
of a month for which the
extension is sought
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Trade Marks Regulations 1995 197
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Item Matter Fee
6 Filing an application for an extension under regulation 5.9,
5.15, 9.11, 9.18, 17A.34C, 17A.34K, 17A.48L or 17A.48T
$150 for each month or part
of a month for which the
extension is sought
7 Filing a notice of opposition under section 52 of the Act or a
notice of intention to oppose under regulation 17A.33
$250
8 Filing a notice of opposition under:
(a) subsection 224(6) of the Act; or
(b) section 65A of the Act
$250
$250
10 Renewal of a single registration of a trade mark under
section 75 of the Act in respect of goods or services in 1 or
more of the prescribed classes:
(a) fee paid by approved means; $400 for each class
(b) fee paid by another means $450 for each class
and, in addition, if the request for renewal is made within 6
months after the expiry date to which section 79 of the Act
refers
$100 for each month, or
part of a month, after the
expiry date
11 Each potential renewal period requested by a person under
section 80D of the Act in respect of goods or services in 1 or
more of the prescribed classes
$450 for each class
12 Each potential renewal period requested by a person under
paragraph 80G(1)(b) of the Act in respect of goods and
services in 1 or more of the prescribed classes
$450 for each class
and, in addition, if the request for renewal is made within 10
months after the end of the prescribed period, regardless of the
number of potential renewal periods requested
$100 for each month, or
part of a month, after the
end of the prescribed
period
13 Filing an application for removal of a trade mark from the
Register for non-use under section 92 of the Act
$250
13A Filing an application for cessation of protection for non-use
under Subdivision D of Division 5 of Part 17A
$250
14 Request for a hearing under regulation 5.17, 6.9, 9.17, 9.20,
17A.34M, 17A.48S, 17A.48V or 21.20E
$600
15 Request for an oral hearing in relation to any other matter $400
16 Attendance at an oral hearing under regulation 5.17, 6.9, 9.17,
9.20, 17A.34M, 17A.48S, 17A.48V or 21.20E
$600 for each day, or part
of a day, less any amount
paid under item 14 in
relation to the hearing
17 Attendance at an oral hearing to which item 16 does not apply $400 less any amount paid
under item 15 in relation to
the hearing
20 Requesting a decision under regulation 21.15 $300
21 Request for not more than 3 documents relating to a single
trade mark application, a single trade mark registration or a
single AFS request
$50 for each document
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198 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Item Matter Fee
22 Request for 4 or more documents relating to a single trade
mark application, a single trade mark registration or a single
AFS request
$200 for each request
25 Applying for admission to sit for an examination conducted by
the Board
$400
26 Applying for a grant of a supplementary examination
conducted by the Board
$200
27 A report of reasons for failure of an examination conducted by
the Board
$200
28 Applying for registration as a trade marks attorney $200
29 Annual registration of a trade marks attorney $350
30 Annual registration fee payable for combined registration as a
trade marks attorney and patent attorney
$550
31 Applying to be restored to the Register, as authorised by
regulation 20.14
$250
32 Submitting an AFS request under regulation 3A.3 $200 for each class of
goods or services to which
the request relates
33 Inclusion of an additional class of goods or services in an AFS
request under paragraph 3A.3(5)(c) or 3A.5(2)(f)
$200 for each class
34 Inclusion of an amendment in an AFS request that
significantly changes the graphical representation of a trade
mark under paragraph 3A.5(2)(f)
$150 for each class
36 Applying for registration as an incorporated trade marks
attorney
$300
37 Annual registration of an incorporated trade marks attorney $350
38 Annual registration fee payable for combined registration as an
incorporated trade marks attorney and an incorporated patent
attorney
$550
39 Applying to be restored to the Register of Trade Marks
Attorneys, as authorised by regulation 20A.22
$250
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 1—About the endnotes
Trade Marks Regulations 1995 199
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Endnotes
Endnote 1—About the endnotes
The endnotes provide information about this compilation and the compiled law.
The following endnotes are included in every compilation:
Endnote 1—About the endnotes
Endnote 2—Abbreviation key
Endnote 3—Legislation history
Endnote 4—Amendment history
Abbreviation key—Endnote 2
The abbreviation key sets out abbreviations that may be used in the endnotes.
Legislation history and amendment history—Endnotes 3 and 4
Amending laws are annotated in the legislation history and amendment history.
The legislation history in endnote 3 provides information about each law that has amended (or
will amend) the compiled law. The information includes commencement details for amending
laws and details of any application, saving or transitional provisions that are not included in
this compilation.
The amendment history in endnote 4 provides information about amendments at the provision
(generally section or equivalent) level. It also includes information about any provision of the
compiled law that has been repealed in accordance with a provision of the law.
Editorial changes
The Legislation Act 2003 authorises First Parliamentary Counsel to make editorial and
presentational changes to a compiled law in preparing a compilation of the law for
registration. The changes must not change the effect of the law. Editorial changes take effect
from the compilation registration date.
If the compilation includes editorial changes, the endnotes include a brief outline of the
changes in general terms. Full details of any changes can be obtained from the Office of
Parliamentary Counsel.
Misdescribed amendments
A misdescribed amendment is an amendment that does not accurately describe the
amendment to be made. If, despite the misdescription, the amendment can be given effect as
intended, the amendment is incorporated into the compiled law and the abbreviation “(md)”
added to the details of the amendment included in the amendment history.
If a misdescribed amendment cannot be given effect as intended, the abbreviation “(md not
incorp)” is added to the details of the amendment included in the amendment history.
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 2—Abbreviation key
200 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Endnote 2—Abbreviation key
ad = added or inserted o = order(s)
am = amended Ord = Ordinance
amdt = amendment orig = original
c = clause(s) par = paragraph(s)/subparagraph(s)
C[x] = Compilation No. x /sub-subparagraph(s)
Ch = Chapter(s) pres = present
def = definition(s) prev = previous
Dict = Dictionary (prev…) = previously
disallowed = disallowed by Parliament Pt = Part(s)
Div = Division(s) r = regulation(s)/rule(s)
ed = editorial change reloc = relocated
exp = expires/expired or ceases/ceased to have renum = renumbered
effect rep = repealed
F = Federal Register of Legislation rs = repealed and substituted
gaz = gazette s = section(s)/subsection(s)
LA = Legislation Act 2003 Sch = Schedule(s)
LIA = Legislative Instruments Act 2003 Sdiv = Subdivision(s)
(md) = misdescribed amendment can be given SLI = Select Legislative Instrument
effect SR = Statutory Rules
(md not incorp) = misdescribed amendment Sub-Ch = Sub-Chapter(s)
cannot be given effect SubPt = Subpart(s)
mod = modified/modification underlining = whole or part not
No. = Number(s) commenced or to be commenced
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 3—Legislation history
Trade Marks Regulations 1995 201
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Endnote 3—Legislation history
Number and year FRLI registration or
gazettal
Commencement Application, saving and
transitional provisions
1995 No. 341 6 Nov 1995 1 Jan 1996 (r 1.2)
1996 No. 3 25 Jan 1996 r 9: 1 Jan 1996 (r 1.1)
Remainder: 25 Jan 1996 (r 1)
—
1996 No. 184 21 Aug 1996 21 Aug 1996 (r 1) —
1996 No. 272 11 Dec 1996 r 3: 1 Jan 1997 (r 1.1)
Remainder: 11 Dec 1996 (r
1)
—
1997 No. 346 9 Dec 1997 r 3 and 4: 1 Feb 1998 (r 1.2)
r 5 and 6: 1 Jan 1998 (r 1.1)
Remainder: 9 Dec 1997 (r 1)
r 3
1998 No. 258 12 Aug 1998 12 Aug 1998 (r 2) —
1998 No. 265 26 Aug 1998 r 5: 1 Nov 1998 (r 2.1)
Remainder: 26 Aug 1998 (r
2.2)
—
1998 No. 343 22 Dec 1998 22 Dec 1998 (r 2) —
1998 No. 346 22 Dec 1998 27 Jan 1999 (r 2) —
1999 No. 153 14 July 1999 14 July 1999 (r 2) —
1999 No.186 1 Sept 1999 r 1–3 and Sch 1: 1 Sept 1999
(r 2(1))
Remainder: 6 Sept 1999 (r
2(b))
—
1999 No. 196 10 Sept 1999 10 Sept 1999 (r 2) —
1999 No. 350 22 Dec 1999 22 Dec 1999 (r 2) —
2001 No. 33 1 Mar 2001 11 July 2001 (r 2) —
2001 No. 185 5 July 2001 5 July 2001 (r 2) —
2001 No. 247 14 Sept 2001 r 1–3 and Sch 1: 19 Sept
2001 (r 2(a))
Remainder: 1 Jan 2002
(r 2(b))
—
2002 No. 173 11 July 2002 Sch 3: 11 July 2002 (r 2(a))
Sch 6: 1 Sept 2002 (r 2(b))
—
2002 No. 318 19 Dec 2002 19 Dec 2002 (r 2) —
2003 No. 214 21 Aug 2003 24 July 2003 (r 2) —
2004 No. 24 26 Feb 2004 11 Mar 2004 (r 2) —
2004 No. 194 1 July 2004 1 July 2004 (r 2) —
2005 No. 52 29 Mar 2005 (F2005L00759) r 1–3 and Sch 1: 30 Mar 2005
(r 2(a))
Remainder: 3 Apr 2005
(r 2(b))
—
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 3—Legislation history
202 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Number and year FRLI registration or
gazettal
Commencement Application, saving and
transitional provisions
2005 No. 211 16 Sept 2005 (F2005L02660) 3 Oct 2005 (r 2) —
2006 No. 355 15 Dec 2006 (F2006L03971) Sch 4: 1 Mar 2007 (r 2) —
2006 No. 356 18 Dec 2006 (F2006L03976) r 1–4 and Sch 1: 19 Dec 2006
(r 2(a))
Remainder: 1 Jan 2007
(r 2(b))
r 4
2007 No. 40 23 Mar 2007 (F2007L00650) r 9, 10, Sch 6 and 7: 27 Mar
2007 (r 2(a), (c))
Sch 8: 1 Apr 2007 (r 2(b))
r 9, 10
2008 No. 122 23 June 2008 (F2008L02119) r 5 and Sch 2: 1 July 2008 (r
2)
r 5
2008 No. 279 19 Dec 2008 (F2008L04588) Sch 3: 1 Jan 2009 (r 2) —
2009 No. 150 26 June 2009 (F2009L02472) Sch 3: 1 July 2009 (r 2) —
2009 No. 332 27 Nov 2009 (F2009L04297) Sch 2: 12 Dec 2009 (r 2) —
2010 No. 248 15 Oct 2010 (F2010L02682) 16 Oct 2010 (r 2) —
2011 No. 62 16 May 2011 (F2011L00773) Sch 3: 1 July 2011 (r 2) —
2011 No. 217 29 Nov 2011 (F2011L02480) Sch 1 (items 5.1–5.3): 27 Dec
2011 (r 2(a))
Sch 2 (items 2.1–2.9): 1 Jan
2012 (r 2(b))
—
2012 No. 66 14 May 2011 (F2012L01031) Sch 2 (items 1–15): 1 July
2012 (s 2(a)(iii))
Sch 2 (item 15): 1 Oct 2012
(s 2(b))
s 4
31, 2013 18 Mar 2013 (F2013L00479) Sch 3 (items 10–30), Sch 4
(items 30–48, Sch 5
(items 2–4), Sch 6 (items 87–
99) and Sch 7 (items 3, 4): 15
Apr 2013 (s 2)
—
88, 2015 19 June 2015 (F2015L00852) Sch 3 (items 4, 5) and Sch 5
(items 15–31): 20 June 2015
(s 2(1) (items 4, 6)
—
90, 2015 19 June 2015 (F2015L00854) Sch 2 (items 200–218):
1 July 2015 (s 2(1) item 2)
—
Name Registration Commencement Application, saving and
transitional provisions
Trade Marks Amendment
(Fees) Regulation 2016
6 May 2016 (F2016L00694) 7 May 2016 (s 2(1) item 1) —
Intellectual Property
Legislation Amendment (Fee
Review) Regulation 2016
19 Aug 2016 (F2016L01306) 10 Oct 2016 (s 2(1) item 1) —
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 3—Legislation history
Trade Marks Regulations 1995 203
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Name Registration Commencement Application, saving and
transitional provisions
Intellectual Property
Legislation Amendment
(Single Economic Market
and Other Measures)
Regulation 2016
14 Nov 2016 (F2016L01754) Sch 2: awaiting
commencement (s 2(1)
item 2)
Sch 4 (items 3–10), Sch 5
and Sch 6 (items 1–8): 15
Nov 2016 (s 2(1) items 3, 4)
—
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 4—Amendment history
204 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Endnote 4—Amendment history
Provision affected How affected
Part 1
r 1.1 ............................................... rs 1998 No 258
r 1.2 ............................................... rep LIA s 48D
Part 2
r 2.1 ............................................... am 1998 No 346; 2001 No 33, 2012; No 247; 2012 No 66; No 31, 2013; No 88, 2015;
F2016L01306; F2016L01754
r 2.2 ............................................... ad 2001 No 247
am 2011 No 217
r 2.3 ............................................... ad No 31, 2013
Part 3A
Part 3A .......................................... ad 2005 No 211
Division 1
r 3A.1 ............................................ ad 2005 No 211
r 3A.2 ............................................ ad 2005 No 211
rep F2016L01306
Division 2
r 3A.3 ............................................ ad 2005 No 211
r 3A.4 ............................................ ad 2005 No 211
r 3A.5 ............................................ ad 2005 No 211
Part 4
r 4.1 ............................................... am 2005 No 211
r 4.2 ............................................... am 2005 No 211; 2007 No 40
r 4.2AA.......................................... ad 2007 No 40
r 4.2A ............................................ ad 2005 No 211
r 4.3 ............................................... am 2007 No 40
r 4.4 ............................................... am No 31, 2013
r 4.5 ............................................... am 1997 No 346
r 4.6 ............................................... am 1999 No 196
r 4.7 ............................................... am 1996 No 184; 2007 No 40; No 31, 2013
r 4.13 ............................................. am 2001 No 33; 2007 No 40; No 31, 2013
r 4.14 ............................................. am 1999 No 186; 2001 No 33; No 31, 2013
r 4.15 ............................................. am 2001 No 33; No 31, 2013; F2016L01754
r 4.15A .......................................... ad 2001 No 33
am 2005 No 52
r 4.16 ............................................. rep 2007 No 40
r 4.17 ............................................. am 2002 No 318
rep 2007 No 40
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 4—Amendment history
Trade Marks Regulations 1995 205
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Provision affected How affected
Part 5
Part 5 ............................................. rs No 31, 2013
Division 1
r 5.1 ............................................... rs No 31, 2013
r 5.2 ............................................... am 2003 No 214
rs No 31, 2013
r 5.3 ............................................... rs No 31, 2013
r 5.4 ............................................... rs No 31, 2013
Division 2
Subdivision A
r 5.5 ............................................... rs No 31, 2013
r 5.6 ............................................... rs No 31, 2013
r 5.7 ............................................... rs No 31, 2013
r 5.8 ............................................... rs No 31, 2013
r 5.9 ............................................... rs No 31, 2013
r 5.10 ............................................. am 2001 No 247
rs No 31, 2013
r 5.11 ............................................. rs No 31, 2013
r 5.12 ............................................. rs No 31, 2013
Subdivision B
r 5.13 ............................................. rs No 31, 2013
Subdivision C
r 5.14 ............................................. rs No 31, 2013
r 5.15 ............................................. rs No 31, 2013
Division 3
r 5.16 ............................................. rs No 31, 2013
Division 4
r 5.17 ............................................. rs No 31, 2013
Division 5
r 5.18 ............................................. ad 2005 No 52
rs No 31, 2013
r 5.19 ............................................. ad 2005 No 52
rs No 31, 2013
r 5.20 ............................................. ad No 31, 2013
Part 6
Division 1
Division 1 heading......................... ad No 31, 2013
Division 2
Division 2 ...................................... ad No 31, 2013
r 6.5 ............................................... ad 2007 No 40
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 4—Amendment history
206 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Provision affected How affected
rs No 31, 2013
r 6.6 ............................................... ad 2007 No 40
rs No 31, 2013
r 6.7 ............................................... ad No 31, 2013
r 6.8 ............................................... ad No 31, 2013
r 6.9 ............................................... ad No 31, 2013
r 6.10 ............................................. ad No 31, 2013
r 6.11 ............................................. ad No 31, 2013
Part 7
Division 1
Division 1 heading......................... ad 2001 No 247
r 7.1 ............................................... am No 31, 2013 (md)
r 7.2 ............................................... am 2007 No 40
Division 2
Division 2 heading......................... ad 2001 No 247
Division 3
Division 3 ...................................... ad 2001 No 247
r 7.6 ............................................... ad 2001 No 247
r 7.7 ............................................... ad 2001 No 247
r 7.8 ............................................... ad 2001 No 247
Part 8
r 8.1A ............................................ ad 2007 No 40
r 8.3 ............................................... ad 2005 No 52
r 8.4 ............................................... ad 2010 No 248
r 8.5 ............................................... ad 2010 No 248
Part 9
Part 9 ............................................. rs No 31, 2013
Division 1
r 9.1 ............................................... am 1996 No 3
rs 2007 No 40; No 31, 2013
r 9.2 ............................................... am 1999 No 186; 2007 No 40
rs No 31, 2013
r 9.3 ............................................... rs No 31, 2013
r 9.4 ............................................... am 2007 No 40
rs No 31, 2013
Division 2
r 9.5 ............................................... ad No 31, 2013
r 9.6 ............................................... ad No 31, 2013
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 4—Amendment history
Trade Marks Regulations 1995 207
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Provision affected How affected
Division 3
Subdivision A
r 9.7 ............................................... ad No 31, 2013
r 9.8 ............................................... ad No 31, 2013
r 9.9 ............................................... ad No 31, 2013
r 9.10 ............................................. ad No 31, 2013
r 9.11 ............................................. ad No 31, 2013
r 9.12 ............................................. ad No 31, 2013
r 9.13 ............................................. ad No 31, 2013
r 9.14 ............................................. ad No 31, 2013
Subdivision B
r 9.15 ............................................. ad No 31, 2013
Subdivision C
r 9.16 ............................................. ad No 31, 2013
r 9.17 ............................................. ad No 31, 2013
r 9.18 ............................................. ad No 31, 2013
Division 4
r 9.19 ............................................. ad No 31, 2013
Division 5
r 9.20 ............................................. ad No 31, 2013
Division 6
r 9.21 ............................................. ad No 31, 2013
r 9.22 ............................................. ad No 31, 2013
r 9.23 ............................................. ad No 31, 2013
Part 10
r 10.1 ............................................. am 2001 No 247
Part 11
r 11.1 ............................................. am 2012 No 66
Part 13
r 13.1A .......................................... ad No 31, 2013
am No 90, 2015
r 13.1 ............................................. rs 2001 No 247; No 31, 2013
r 13.2 ............................................. am 1999 No 186
rs No 31, 2013
r 13.3 ............................................. ad No 31, 2013
r 13.4 ............................................. ad No 31, 2013
am No 90, 2015
r 13.5 ............................................. ad No 31, 2013
am No 90, 2015
r 13.3 ............................................. am 1999 No 186
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 4—Amendment history
208 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Provision affected How affected
renum r 13.6 .................................. No 31, 2013
r 13.6 ............................................. am No 90, 2015
r 13.4
renum r 13.7 .................................. No 31, 2013
r 13.5
renum r 13.8 .................................. No 31, 2013
r 13.6
renum r 13.9 .................................. No 31, 2013
Part 16
r 16.2 ............................................. rs 2007 No 40
r 16.7 ............................................. am No 31, 2013
r 16.10 ........................................... rs 2007 No 40
am No 31, 2013
r 16.10A......................................... ad 2001 No 247
am 2007 No 40
r 16.11 ........................................... am 2007 No 40
r 16.12 ........................................... ad 2007 No 40
Part 17
r 17.2 ............................................. ad 2001 No 33
Part 17A
Part 17A ........................................ ad 2001 No 33
Division 1
r 17A.1 .......................................... ad 2001 No 33
r 17A.2 .......................................... ad 2001 No 33
am 2001 No 247; 2007 No 40; 2011 No 62
r 17A.3 .......................................... ad 2001 No 33
r 17A.4 .......................................... ad 2001 No 33
am 2007 No 40
Division 2
r 17A.5 .......................................... ad 2001 No 33
r 17A.6 .......................................... ad 2001 No 33
r 17A.7 .......................................... ad 2001 No 33
r 17A.8 .......................................... ad 2001 No 33
r 17A.9 .......................................... ad 2001 No 33
am 2007 No 40
r 17A.10......................................... ad 2001 No 33
am 2007 No 40
Division 3
Subdivision 1
r 17A.11......................................... ad 2001 No 33
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 4—Amendment history
Trade Marks Regulations 1995 209
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Provision affected How affected
r 17A.12......................................... ad 2001 No 33
r 17A.13......................................... ad 2001 No 33
r 17A.14......................................... ad 2001 No 33
am 2007 No 40; F2016L01754
r 17A.14A...................................... ad 2007 No 40
r 17A.15......................................... ad 2001 No 33
r 17A.16......................................... ad 2001 No 33
am F2016L01754
r 17A.17......................................... ad 2001 No 33
am F2016L01754
r 17A.18......................................... ad 2001 No 33
r 17A.19......................................... ad 2001 No 33
r 17A.20......................................... ad 2001 No 33
r 17A.21......................................... ad 2001 No 33
am 2007 No 40; No 31, 2013
r 17A.22......................................... ad 2001 No 33
am No 31, 2013
r 17A.23......................................... ad 2001 No 33
r 17A.24......................................... ad 2001 No 33
r 17A.25......................................... ad 2001 No 33
am 2011 No 62
r 17A.26......................................... ad 2001 No 33
r 17A.27......................................... ad 2001 No 33
am 2007 No 40
Subdivision 2
r 17A.28......................................... ad 2001 No 33
am 2007 No 40; No 31, 2013
Subdivision 3 heading ................... rep No 31, 2013
Subdivision C
Subdivision C ................................ ad No 31, 2013
r 17A.29......................................... ad 2001 No 33
rs No 31, 2013
r 17A.30......................................... ad 2001 No 33
am 2001 No 247
rs No 31, 2013
r 17A.31......................................... ad 2001 No 33
am 2006 No 356
rs No 31, 2013
r 17A.32......................................... ad 2001 No 33
rs No 31, 2013
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 4—Amendment history
210 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Provision affected How affected
r 17A.33......................................... ad 2001 No 33
am 2007 No 40; 2011 No 62
rs No 31, 2013
am No 88, 2015
r 17A.34......................................... ad 2001 No 33
am 2007 No 40
rs No 31, 2013
r 17A.34A...................................... ad No 31, 2013
r 17A.34B...................................... ad No 31, 2013
am No 88, 2015
r 17A.34C...................................... ad No 31, 2013
r 17A.34D...................................... ad No 31, 2013
r 17A.34E ...................................... ad No 31, 2013
r 17A.34F ...................................... ad No 31, 2013
r 17A.34G...................................... ad No 31, 2013
r 17A.34H...................................... ad No 31, 2013
am No 88, 2015; F2016L01754
r 17A.34J ....................................... ad No 31, 2013
r 17A.34K...................................... ad No 31, 2013
r 17A.34L ...................................... ad No 31, 2013
r 17A.34M ..................................... ad No 31, 2013
am No 88, 2015
r 17A.34N...................................... ad No 31, 2013
r 17A.34P ...................................... ad No 31, 2013
r 17A.34Q...................................... ad No 31, 2013
r 17A.35......................................... ad 2001 No 33
rs No 31, 2013
Subdivision 3A
r 17A.35A...................................... ad 2007 No 40
r 17A.35B...................................... ad 2007 No 40
Subdivision 4
r 17A.36......................................... ad 2001 No 33
am 2007 No 40; No 88, 2015
r 17A.37......................................... ad 2001 No 33
am F2016L01754
r 17A.38......................................... ad 2001 No 33
am 2007 No 40
Division 4
r 17A.39......................................... ad 2001 No 33
am 2007 No 40; No 88, 2015
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 4—Amendment history
Trade Marks Regulations 1995 211
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Provision affected How affected
r 17A.40......................................... ad 2001 No 33
Division 5
Subdivision 1
Subdivision 1 heading ................... ad 2007 No 40
r 17A.41......................................... ad 2001 No 33
r 17A.41A...................................... ad 2007 No 40
r 17A.42......................................... ad 2001 No 33
am 2001 No 247
Subdivision 2
r 17A.42A...................................... ad 2007 No40
r 17A.42B...................................... ad 2007 No 40
am F2016L01754
r 17A.42C...................................... ad 2007 No 40
r 17A.42D...................................... ad 2007 No 40
r 17A.42E ...................................... ad 2007 No 40
am No 90, 2015
r 17A.42F ...................................... ad 2007 No 40
am No 31, 2013
Subdivision 3
Subdivision 3 heading ................... ad 2007 No 40
r 17A.43......................................... ad 2001 No 33
am 2007 No 40
r 17A.44......................................... ad 2001 No 33
am 2007 No 40
r 17A.45......................................... ad 2001 No 33
am 2001 No 247; 2006 No 356; 2007 No 40
r 17A.46......................................... ad 2001 No 33
r 17A.47......................................... ad 2001 No 33
Subdivision 4 heading ................... ad 2007 No 40
rep No 31, 2013
Subdivision D
Subdivision D................................ ad No 31, 2013
r 17A.48......................................... ad 2001 No 33
am 2001 No 247; 2006 No 356; 2007 No 40; 2011 No 62
rs No 31, 2013
r 17A.48A...................................... ad No 31, 2013
r 17A.48B...................................... ad No 31, 2013
r 17A.48C...................................... ad No 31, 2013
r 17A.48D...................................... ad No 31, 2013
r 17A.48E ...................................... ad No 31, 2013
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 4—Amendment history
212 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Provision affected How affected
r 17A.48F ...................................... ad No 31, 2013
r 17A.48G...................................... ad No 31, 2013
r 17A.48H...................................... ad No 31, 2013
am F2016L01754
r 17A.48J ....................................... ad No 31, 2013
r 17A.48K...................................... ad No 31, 2013
r 17A.48L ...................................... ad No 31, 2013
r 17A.48M ..................................... ad No 31, 2013
r 17A.48N...................................... ad No 31, 2013
r 17A.48P ...................................... ad No 31, 2013
r 17A.48Q...................................... ad No 31, 2013
r 17A.48R...................................... ad No 31, 2013
r 17A.48S ...................................... ad No 31, 2013
r 17A.48T ...................................... ad No 31, 2013
r 17A.48U...................................... ad No 31, 2013
r 17A.48V...................................... ad No 31, 2013
r 17A.48W..................................... ad No 31, 2013
r 17A.48X...................................... ad No 31, 2013
r 17A.48Y...................................... ad No 31, 2013
r 17A.48Z ...................................... ad No 31, 2013
Division 6
r 17A.49......................................... ad 2001 No 33
r 17A.50......................................... ad 2001 No 33
am 2001 No 247; F2016L01754
Division 7
r 17A.51......................................... ad 2001 No 33
r 17A.52......................................... ad 2001 No 33
am 2007 No 40
r 17A.53......................................... ad 2001 No 33
am 2007 No 40
Division 8
r 17A.54......................................... ad 2001 No 33
r 17A.55......................................... ad 2001 No 33
Division 9
r 17A.56......................................... ad 2001 No 33
am 2001 No 247
r 17A.57......................................... ad 2001 No 33
am 2001 No 247
r 17A.58......................................... ad 2001 No 33
am 2001 No 247
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 4—Amendment history
Trade Marks Regulations 1995 213
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Provision affected How affected
r 17A.58A...................................... ad 2001 No 247
r 17A.59......................................... ad 2001 No 33
am 2001 No 247
r 17A.60......................................... ad 2001 No 33
am 2001 No 247
Division 10
r 17A.61......................................... ad 2001 No 33
am 2012 No 66
r 17A.62......................................... ad 2001 No 33
r 17A.63......................................... ad 2001 No 33
r 17A.64......................................... ad 2001 No 33
r 17A.65......................................... ad 2001 No 33
Division 11
r 17A.66......................................... ad 2001 No 33
am 2011 No 62
r 17A.67......................................... ad 2001 No 33
r 17A.68......................................... ad 2001 No 33
r 17A.69......................................... ad 2001 No 33
r 17A.70......................................... ad 2001 No 33
r 17A.71......................................... ad 2001 No 33
r 17A.72......................................... ad 2007 No 40
r 17A.73......................................... ad 2007 No 40
r 17A.74......................................... ad 2011 No 62
am F2016L01754
Part 19
r 19.1 ............................................. am 1999 No 186; No 31, 2013
r 19.2 ............................................. rs 1998 No 258
Part 20
Part 20 ........................................... ad 1998 No 346
rs 2008 No 122
Division 1
r 20.1A .......................................... ad No 31, 2013
r 20.1 ............................................. ad 1998 No 346
am 2001 No 185
rs 2008 No 122
am No 31, 2013; F2016L01754
Division 2
r 20.2 ............................................. ad 1998 No 346
rs 2008 No 122
r 20.3 ............................................. ad 1998 No 346
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 4—Amendment history
214 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Provision affected How affected
am 2002 No 173
rs 2008 No 122
am 2009 No 150; 2012 No 66
r 20.4 ............................................. ad 1998 No 346
rs 2008 No 122
r 20.5 ............................................. ad 1998 No 346
rs 2008 No 122
r 20.6 ............................................. ad 1998 No 346
rs 2008 No 122
am F2016L01754
r 20.7 ............................................. ad 1998 No 346
am 2002 No 173
rs 2008 No 122
r 20.8 ............................................. ad1998 No 346
am 2002 No 173; 2002 No 318
rs 2008 No 122
am 2009 No 150
r 20.9 ............................................. ad 1998 No 346
am 1999 No 153; 2002 No 173; 2002 No 318
rs 2008 No 122
r 20.10 ........................................... ad 1998 No 346
rs 2008 No 122
r 20.11 ........................................... ad 1998 No 346
rs 2008 No 122
am F2016L01754
Division 3
r 20.12 ........................................... ad 2008 No 122
Division 4
r 20.13 ........................................... ad 2008 No 122
Division 5
Division 5 heading......................... rs No 31, 2013
r 20.14 ........................................... ad 2008 No 122
am No 31, 2013; No 88, 2015
Division 5A
Division 5A ................................... ad No 31, 2013
r 20.14A......................................... ad No 31, 2013
r 20.14B......................................... ad No 31, 2013
Division 6
r 20.15 ........................................... ad 2008 No 122
am No 88, 2015; F2016L01754
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 4—Amendment history
Trade Marks Regulations 1995 215
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Provision affected How affected
Division 7
r 20.16 ........................................... ad 2008 No 122
Part 20A
Part 20A ........................................ ad No 31, 2013
Division 1
r 20A.1 .......................................... ad No 31, 2013
r 20A.2 .......................................... ad No 31, 2013
Division 2
r 20A.3 .......................................... ad No 31, 2013
r 20A.4 .......................................... ad No 31, 2013
Division 3
r 20A.5 .......................................... ad No 31, 2013
Division 4
r 20A.6 .......................................... ad No 31, 2013
r 20A.7 .......................................... ad No 31, 2013
r 20A.8 .......................................... ad No 31, 2013
Division 5
Subdivision A
r 20A.9 .......................................... ad No 31, 2013
r 20A.10......................................... ad No 31, 2013
am F2016L01754
Subdivision B
r 20A.11......................................... ad No 31, 2013
rs F2016L01754
r 20A.11A...................................... ad F2016L01754
r 20A.11B...................................... ad F2016L01754
r 20A.11C...................................... ad F2016L01754
r 20A.11D...................................... ad F2016L01754
r 20A.12......................................... ad No 31, 2013
am F2016L01754
r 20A.13......................................... ad No 31, 2013
am F2016L01754
r 20A.14......................................... ad No 31, 2013
am F2016L01754
r 20A.15......................................... ad No 31, 2013
am F2016L01754
r 20A.16......................................... ad No 31, 2013
am F2016L01754
r 20A.17......................................... ad No 31, 2013
am F2016L01754
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 4—Amendment history
216 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Provision affected How affected
r 20A.18......................................... ad No 31, 2013
am F2016L01754
r 20A.19......................................... ad No 31, 2013
am F2016L01754
r 20A.20......................................... ad No 31, 2013
am F2016L01754
r 20A.21......................................... ad No 31, 2013
am F2016L01754
Division 6
r 20A.22......................................... ad No 31, 2013
Part 21
Division 1
r 21.1 ............................................. am 2012 No 66
r 21.2 ............................................. am 1998 No 343; 2009 No 332
r 21.3 ............................................. am 1998 No 343
r 21.4 ............................................. am 2005 No 211
r 21.5 ............................................. am No 31, 2013
r 21.6 ............................................. am 1998 No 346; 2009 No 150
rs 2012 No 66
am F2016L01754
r 21.7A .......................................... ad F2016L01754
r 21.11A......................................... ad 2007 No 40
Division 2
r 21.13 ........................................... am 2001 No 247; 2003 No 214
rs No 31, 2013
r 21.14 ........................................... am No 88, 2015
r 21.15 ........................................... rs No 31, 2013
r 21.16 ........................................... rs No 31, 2013
Division 2A
Division 2A ................................... ad No 31, 2013
r 21.20A......................................... ad No 31, 2013
r 21.20B......................................... ad No 31, 2013
r 21.20C......................................... ad No 31, 2013
r 21.20D......................................... ad No 31, 2013
r 21.20E......................................... ad No 31, 2013
r 21.20F ......................................... ad No 31, 2013
r 21.20G......................................... ad No 31, 2013
Division 3
r 21.21 ........................................... am 1998 No 265; 2001 No 247; 2002 No 173; 2012 No 66
r 21.21AA...................................... ad 2012 No 66
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 4—Amendment history
Trade Marks Regulations 1995 217
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Provision affected How affected
r 21.21A......................................... ad 2007 No 40
am No 88, 2015; No 90, 2015
r 21.22 ........................................... am 1998 No 343; 1999 No 186; No 90, 2015
r 21.23 ........................................... am 1999 No 186
rs 2005 No 211
am 2007 No 40; No 90, 2015
r 21.24 ........................................... am 2003 No 214
r 21.24A......................................... ad 2007 No 40
am No 31, 2013
r 21.24B......................................... ad 2007 No 40
am 2011 No 62; No 2011 No 217
r 21.24C......................................... ad 2007 No 40
r 21.26 ........................................... rep No 31, 2013
r 21.27 ........................................... rep No 31, 2013
r 21.28 ........................................... am 1999 No 186; 2001 No 247; 2005 No 52; 2005 No 211; 2007 No 40; 2008 No 122;
No 31, 2013; No 88, 2015
r 21.29 ........................................... am 1999 No 186; No 31, 2013
r 21.30 ........................................... rs 1998 No 346
r 21.32 ........................................... rep No 88, 2015
r 21.35 ........................................... ad 1998 No 346
am 2008 No 122; No 31, 2013 (md); F2016L01754
Part 22
Division 1
Division 1 heading......................... ad No 31, 2013
r 22.1 ............................................. am 1996 No 3
r 22.2 ............................................. am 1997 No 346
r 22.4 ............................................. am 1996 No 3
r 22.6 ............................................. ad 1996 No 3
r 22.7 ............................................. ad 1998 No 346
am 2012 No 66
r 22.8 ............................................. ad 1998 No 346
am 2012 No 66
Division 2
Division 2 ...................................... ad No 31, 2013
r 22.9 ............................................. ad No 31, 2013
r 22.10 ........................................... ad No 90, 2015
r 22.11 ........................................... ad F2016L00694
r 22.12 ........................................... ad F2016L01306
r 22.13 ........................................... ad F2016L01754
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 4—Amendment history
218 Trade Marks Regulations 1995
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Provision affected How affected
Division 3 ...................................... ad F2016L01754
r 22.14 ........................................... ad F2016L01754
r 22.15 ........................................... ad F2016L01754
r 22.16 ........................................... ad F2016L01754
r 22.17 ........................................... ad F2016L01754
Schedule 1
Schedule 1 ..................................... am 1996 No 272; 2001 No 247; 2006 No 356; 2011 No 217; F2016L01754
Schedule 3
Schedule 3 ..................................... am 1999 No 186
rs No 31, 2013
am No 90, 2015; F2016L01754
Schedule 4
Schedule 4 ..................................... am 1999 No 186
rs No 31, 2013
am No 90, 2015; F2016L01754
Schedule 5
Schedule 5 ..................................... am 1999 No 186
rs No 31, 2013
am No 90, 2015; F2016L01754
Schedule 6
Schedule 6 ..................................... am 1996 No 3
rs 1998 No 258
Schedule 7
Schedule 7 heading........................ rs 1998 No 343
Schedule 7 ..................................... am 1998 No 343; No 88, 2015
Schedule 8
Schedule 8 ..................................... am 1998 No 346; 1999 No 186; 2006 No 355; No 31, 2013
Schedule 9
Schedule 9 heading........................ rs F2016L01306
Schedule 9 ..................................... am 1996 No 3
rs 1997 No 346
am 1998 No 265; 1998 No 346; 2001 No 33; 2001 No 247
rs 2002 No 173
am 2005 No 211; 2006 No 355; 2007 No 40; 2008 No 122
rs 2012 No 66
am No 31, 2013; No 88, 2015; F2016L00694; F2016L01306
Schedule 10 ................................... am 1996 No 3
rs 1996 No 272; 1997 No 346
am 1998 No 258; 1998 No 343; 1999 No 350; 2002 No 173; 2002 No 318; 2004 No 24;
2004 No 194; 2005 No 52; 2007 No 40; 2008 No 279; 2012 No 66
Authorised Version F2016C00994 registered 22/11/2016
Endnotes
Endnote 4—Amendment history
Trade Marks Regulations 1995 219
Compilation No. 41 Compilation date: 15/11/16 Registered: 22/11/16
Provision affected How affected
rep No 31, 2013
Authorised Version F2016C00994 registered 22/11/2016