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TRADE MARKS AMENDMENT REGULATIONS 2001 (NO. 1) 2001 NO. 33
EXPLANATORY STATEMENTSTATUTORY RULES 2001 No. 33
Issued by the Authority of the Parliamentary Secretary to the Minister for Industry, Science and Resources
Trade Marks Act 1995
Trade Marks Amendment Regulations 2001 (No. 1)
Section 231 of the Trade Marks Act 1995 (the Act) provides for the Governor-General to make regulations for the purposes of the Act and for the conduct of any business relating to the Trade Marks Office.
New section 189A of the Act to be inserted by the Trade Marks Amendment (Madrid Protocol) Act 2000 (Madrid Protocol Act), enables the Governor-General to make regulations to implement Australia's proposed obligations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol), and to obtain for Australia any advantage or benefit under the Protocol. New subsection 189A(3) of the Act provides that those regulations may be inconsistent with the Act, and will prevail over the Act to the extent of any inconsistency. Section 4 of the Acts Interpretation Act 1901 provides for the exercise of statutory powers between passage and commencement of an Act.
The Madrid Protocol is a multilateral treaty administered by the World Intellectual Property Organization (WIPO), to which Australia proposes to accede in 2001. The Madrid Protocol Act will commence on a date to be fixed by Proclamation, and by 7 September 2001 at the latest. It would be intended to proclaim that the Madrid Protocol Act will commence at the date of the coming into force of the Madrid Protocol in Australia - three months after the date of deposit of the Instrument of Accession.
The regulations implement Australia's proposed obligations under the Madrid Protocol, by amending the Trade Marks Regulations 1995, and modifying or adapting the provisions of the Act to provide principally for the following matters:
• the Trade Marks Office's procedure for dealing with Australian applications to the International Bureau of WIPO ('International Bureau) for international registration of trade marks (international applications') - Division 2 of Part 17A inserted by proposed Item 12 in Schedule 1;
• the Trade Marks Office's procedure for dealing with requests to extend to Australia the protection that results from international registration of trade marks - Division 3 of Part 17A inserted by proposed Item 12 in Schedule 1;
• the protection given in Australia to protected international trade marks - those trade marks to which the Trade Marks Office has extended the protection that results from international registration - Division 4 of Part 17A inserted by proposed Item 12 in Schedule 1;
• proceedings for ceasing the effect in Australia of protected international trade marks Division 5 of Part 17A inserted by proposed Item 12 in Schedule 1; and
• the effect in Australia of the ceasing, cancellation or amendment of international registrations -Division 5 of Part 17A inserted by proposed Item 12 in Schedule 1.
Details of the amendments made by these regulations are in the Attachment.
As indicated above, the regulations will commence on the date of commencement of the Trade Marks Amendment (Madrid Protocol) Act 2000 - a date to be fixed by Proclamation, and by 7 September 2001 at the latest.
Attachment
Trade Marks Amendment Regulations 2001 (No. 1)
Details of the regulations are as follows:
Regulation 1 identifies the amending regulations as the Trade Marks Amendment Regulations 2000 (No. 1).
Regulation 2 specifies that the regulations commence when the Trade Marks Amendment (Madrid Protocol) Act 2000 (the Madrid Protocol Act) commences.
Regulation 3 specifies that Schedule. 1 amends the Trade Marks Regulations 1995 (the Regulations).
Items 1 and 2 of Schedule 1 amend regulation 2.1 of the Regulations by inserting several new definitions for use in the Regulations. The definitions ensure consistent treatment throughout the Regulations of the expressions relating to Protected International Trade Marks under the Madrid Protocol, by applying the definitions of those terms inserted by item 12 of this Schedule.
Item 3 of Schedule 1 amends regulation 4,13 in Part 4 of the Regulations to allow the Registrar of Trade Marks (the Registrar') to defer acceptance of an application for registration of a trade mark, where that application would be subject to rejection under the new regulation 4.15A (inserted by item 10 below). An application for registration is to be rejected where the trade mark is substantially identical with, or deceptively similar to, a trade mark that is the subject of 'an international registration designating Australia´ (i.e. a request to extend to Australia the protection that results from international registration of the trade mark) or a 'protected international trade mark' (i.e. a trade mark to which the protection resulting from international registration of that trade mark has been extended to Australia).
The applicant for registration could attempt to overcome an objection under the new regulation 4.15A, in a number of ways including bringing proceedings under the Act to prevent the cited mark becoming protected, or to remove any protection. If the applicant for registration succeeds in the proceedings against the cited mark, the rejection under new regulation 4.15A may be removed. Following that, the Registrar may be able to accept the application for registration (i.e. if there are no other grounds for rejection).
Generally an applicant must put the application for registration in order for acceptance by the Registrar, within 15 months of the Registrar examining and reporting on the application (i.e. all grounds for rejection must be overcome in that time). The amendments to regulation 4.13 will allow the Registrar to defer the end of the period for acceptance of an application for registration, so as to allow the applicant sufficient time to complete any proceedings against the cited mark, and, where appropriate, for the Registrar to accept the application.
Items 4, 5, 6, 7 and 8 of Schedule 1 amend regulation 4.14 in Part 4 of the Regulations to provide for the various periods of deferment of acceptance of an application for registration of a trade mark, where acceptance of that application has been deferred because the application would be subject to rejection under new regulation 4.15A - i.e. the application is deferred under regulation 4.13 as amended by item 3. The period of deferment in each case is determined by the provisions set out in subregulations 4.14 (2) and (3) of the Regulations. The amendments made by items 4, 5, 6, 7 and 8 ensure that the deferment period applying, where the applicant is conducting a proceeding under the Act to prevent a cited mark becoming protected, or to remove any protection, is the same as the deferment period for conducting a similar proceeding to prevent a cited mark becoming registered, or to cancel the registration of the cited mark. By way of example, the amendment made by item 4 ensures that where acceptance is deferred because the applicant is opposing protection of the cited mark, the deferment period will continue until those proceedings are finalised - just as it would be where the applicant was opposing registration of the cited mark.
Item 9 of Schedule 1 amends paragraph 4.15 (a) of the Regulations by inserting the expression "Protected International Trade Mark " into the list of expressions prescribed for the purposes of paragraph 39(2)(a) of the Act. This prevents anyone from obtaining that expression as a registered trade mark, or as a protected international trade mark - it is an expression that should be available for all persons to use legitimately, just as they may do with the expression "Registered" which is also prohibited from registration.
Item 10 of Schedule 1 amends Part 4 of the Regulations by inserting a new regulation 4.15A to provide a new ground for rejecting applications for registration of trade marks, additional to those in sections 39 to 44 of the Act. The new ground is framed in line with that set out in section 44 of the Act, so that an application for registration of a trade mark must be rejected where that trade mark is substantially identical with, or deceptively similar to, a trade mark that is the subject of an international registration designating Australia, or a protected international trade mark. This only occurs where the international registration designating Australia, or the resulting protected international trade mark, has an earlier priority date than the application for registration. This ensures that conflicts between registered and protected marks are prevented, in the same manner as applies to applications for registration and registered marks. Nevertheless, such a trade mark may be accepted for registration (subject to any condition or limitation that the Registrar thinks fit to impose) if there has been honest concurrent use of the two trade marks, or there has been continuous use of the applicant's trade mark before the priority date of the international registration designating Australia, or because of any other relevant circumstances.
Item 11 of Schedule 1 amends Part 17 of the Regulations by inserting a new regulation 17.2 to apply the provisions relating to defensive trade marks, in Part 17 of the Act, to protected international trade marks. Registration of a defensive trade mark is allowed where the trade mark has become so well known, in relation to some goods or services sold by the owner of the trade mark, that it would be confusing if it was used in relation to other goods and services by someone else. Although the Madrid Protocol does not make provision for defensive trade marks, this amendment will allow protected international trade marks to enjoy defensive registration in the Register of Trade Marks, on the same conditions as registered trade marks.
Item 12 of Schedule 1. amends the Regulations by inserting a new Part 17A to provide the substantial and procedural framework for international registrations designating Australia and protected international trade marks. New Part 17A is divided into a number of divisions:
• Division 1 (new regulations 17A.1-17A.4) sets out the purpose of the Part, and defines a number of expressions used, in the Part;
• Division 2 (new regulations 17A.5-17A.10) contains provisions that govern applications made through the Trade Marks Office to the International Bureau of the World Intellectual Property Organization ('International Bureau') for international registration of trade marks, and subsequent communications between the Trade Marks Office and the International Bureau in respect of those international registrations;
• Division 3 (new regulations 17A.11 - 17A.38) contains provisions that set out the course of events that international registrations designating Australia can follow before becoming protected international trade marks
- Subdivision 1 (new regulations 17A11-17A.27) provides for the Registrar
** to examine and report on. each international registration designating Australia
** to decide to accept, accept with conditions or limitations, or to reject each international registration designating Australia and
** to notify the Registrar's report and final decision to the holder of the international registration designating Australia, through the International Bureau. Additionally, the holder will be notified directly of a number of matters.
- Subdivision 2 (new regulation 17A.28) sets out the grounds for rejecting an international registration designating Australia by adopting, with necessary modifications, the provisions of the Act setting out the grounds for rejecting applications for registration of trade marks
- Subdivision 3 (new regulations 17A.29-17A.35)
** provides that any person may oppose the extension of protection in Australia to the trade mark that is the subject of the international registration designating Australia (new regulation 1.7A.29)
** adopts with necessary modifications the grounds for opposing registration of a trade mark (new regulation 17A. 3 1)
** adopts the procedures to be followed in opposition proceedings against registration of trade marks, with necessary modifications, including requiring the holder of the international registration designating Australia to file an address for service in Australia within 3 months after the filing of the notice of opposition (or that period. as extended under section 224 of the Act), if the holder wishes to be heard in the proceedings (new regulation 17A.33).
** provides that at the end of the opposition proceedings, the Registrar must decide to refuse or to extend protection to the international registration designating Australia - with or without conditions or limitations (new regulation 17A.34)
** provides for notification of the opposition, and the decision on it, to the holder of the international registration designating Australia through the International Bureau (new subregulations 17A.29(3) and 17A.34(2)) and
** provides for appeal to the Federal Court of Australia against the decision on the opposition proceedings (new regulation 17A.35).
- Subdivision 4 (new regulations 17A.36-38)
** sets out the various circumstances in which the trade mark in the international registration designating Australia can become a protected international trade mark (new regulation 17A.36)
** provides for notification ' in the Official Journal of Trade Marks that a trade mark has become a protected international trade mark, and for recording that fact in the publicly accessible Record of International Registrations, along with any conditions or limitations to which the protection is subject (new regulation 17A.37)
** allows the holder of the protected international trade mark to voluntarily disclaim rights in respect of a part of the trade mark, as applicants for registration of trade marks and registered owners of trade marks can do currently to resolve conflicts with other parties (new regulation 17A.38)
• ivision 4 (new regulations 17A.39 and 17A.40) applies to protected international trade marks a number of provisions of the Act and Regulations concerning the rights enjoyed by registered trade marks, and proceedings to protect those rights;
• Division 5 (new regulations 17A.411-17A.48) provides for the cessation or restriction of protection of protected international trade marks in a number of different circumstances
- where the International Bureau. cancels the international registration of the protected international trade mark (e.g. where the International Bureau cancels the international registration at the request of the Office of origin: the foreign trade marks office where the intentional application was made) (new regulation 17A.41)
- where the holder of the international registration of the protected international trade mark fails to renew the international registration before it expires, subject to the grace period of 6 months provided in the Protocol (new regulation 17A.42)
- where a prescribed court (i.e. the Federal Court, or a Supreme Court of a State or Territory) orders that the protection of the mark be ceased, or a related entry in the database entry be removed or amended, on the range of grounds that apply to registered trade marks (new regulations 17A.43-17A.47)
- where the Registrar ceases protection of a mark for non-use, on the same grounds in Part 9 of the Act for which registered trade marks may be removed from the Register (new regulation 17A.48)
• Division 6 (new regulations 17A.49 and 17A.50) provides for collective trade marks or certification trade marks to be the subject ' of international registrations designating Australia, and to become protected international trade marks
- collective trade marks distinguish the goods or services of members of an association (but not a body corporate) from the goods or services of persons who are not members
- certification trade marks distinguish goods or services that have been certified by the owner of the trade mark, in relation to quality, accuracy or some other characteristic, including (in the case of goods) origin, material or mode of manufacture (e.g. the Woolmark).
• Division 7 (new regulations 17A.51-17A.53) provides for the transformation of an international registration that the International Bureau has cancelled, in whole or in part, at the request of the Office of origin, where the holder of the cancelled international registration files with the Trade Marks Office an application for registration of the trade mark
- where the cancelled international registration related to a protected international trade mark, the trade mark is registered immediately
- where the cancelled international registration designated Australia, but the mark had not yet become protected (e.g. it was under examination, or subject to opposition proceedings), it becomes an application for registration at the same stage (e.g. if the p international registration designating Australia had been accepted before it was cancelled, the application for registration gains accepted status without being examined again).
• Division 8 (new regulations 17A.54-17A.55) provides for concurrent registration and protection of a trade mark
- where a trade mark has been registered in Australia, it may also become a protected international trade mark (i.e. the mark is registered in Australia, is registered internationally, is the subject of an international registration designating Australia, and is protected following examination etc.)
- where the requirements of new subregulation 17A.54(1) are met, the date of effect and the priority date of the protected international trade mark are to be taken to be the date of registration and the priority date of the registered mark
** i.e. the protected international trade mark may be taken to have a date of effect and priority date that pre-dates the international registration
** this will ensure the continuing effect of the owner's rights in the mark that arose prior to the international registration, even although the Australian registration expires or is cancelled at the owner's request
** this will allow the owner of the mark to replace the owner's reliance on the Australian registration of the mark with reliance on the protected international trade mark alone
** the protected international trade mark will lose the benefit of those dates where the registered trade mark is cancelled at the order of a court, or is removed from the Register for non-use (new subregulation 17A.55(1))
• Division 9 (new regulations 17A.56-17A.60) provides for assignment or transmission of an international registration designating Australia or a protected international trade mark
- generally the role of the Trade Marks Office in such transactions will be minimal:
** the holder of the international registration can advise the International Bureau of the change in ownership directly
** the International Bureau records the change in ownership in the International Register
** where the ownership of' the mark in respect of Australia is changed, the International Bureau will advise the Trade Marks Office of it (e.g an international registration owned by a Danish company designates Australia, Bhutan and China. The holder assigns the rights in respect of Australia to an Australian. company. The change in ownership is recorded in the International Register, arid the International Bureau notifies the Trade Marks Office) and
** the Register records the assignment or transmission in the publicly accessible Record of International Registrations (new regulation 17A.60)
- the Registrar will exercise the right provided under the Madrid Protocol to declare that the change in ownership has no effect in Australia, where Australian trade marks law restricts assignment or transmission of the trade mark
** collective trade marks cannot be assigned or transmitted at all, as they indicate that goods or services originate from the members of a specific association
** certification trade marks may only be assigned or transmitted with the consent of the Australian Competition and Consumer Commission. When the Registrar receives this consent, the Registrar will notify the International Bureau that the assignment or transmission has effect in Australia
** trade marks affected by claims to interests in them, or rights in respect of them, recorded under Division '10 will only be effectively assigned or transmitted after the person claiming the interest or right has had a reasonable opportunity to commence legal proceedings to protect that interest or right.
• Division 10 (new regulations 17A.611-17A.65) provides for the Registrar to record claims of interests in, or rights in respect of. international registrations designating Australia and protected international trade marks (e.g. the rights of Australian creditors who have taken a security over the mark). These provisions are analogous to the current provisions in the Act and Regulations for recording such claims, with the difference that claims made under this Division will be recorded in the publicly accessible Record of International Registrations, not the Register of Trade Marks. Although the recording of the claim is not proof or evidence that the claimant has the right or interest (new regulation 17A.64), the claimant is notified of any assignment or transmission of the trade mark and can seek to prevent it having effect in Australia (see Division 9).
• Division 11 (new regulations 17A.66-17A.71) provides for several miscellaneous matters
- the Record of International Registrations and the details to be entered into it in respect of each international registration designating Australia and each protected international trade mark (new regulation 17A.66)
- public access to the Record of International Registrations (new regulation 17A.67)
- the status of entries in the Record of International Registrations as evidence (new regulation 17A.68)
- the status of the Madrid Protocol, the Common Regulations and documents issued by the International Bureau as evidence (new regulation 17A.69)
- correction by the Registrar of errors and omissions in the database, on the Registrar's initiative, or at the direction of a prescribed court (new regulation 17A.70)
- the application to protected international trade marks of the provision applying to registered trade marks limiting the award of damages in certain actions for passingoff (new regulation 17A.71)
Items 13 to 19 of Schedule 1 amend the Regulations by inserting into Schedule 9 to the Regulations several new fee items and amounts relating to international applications and registrations.