Commonwealth Numbered Regulations - Explanatory Statements

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TRADE MARKS AMENDMENT REGULATIONS 2001 (NO. 3) 2001 NO. 247

EXPLANATORY STATEMENT

STATUTORY RULES 2001 No. 247

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. 3)

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. Section 189A of the Act enables the Governor-General to make regulations to implement Australia's obligations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol). Subsection 189A(3) of the Act provides that regulations made for the purposes of section 189A may be inconsistent with the Act, and will prevail over the Act to the extent of any inconsistency.

The Trade Marks and Other Legislation Amendment Act 2001 (TMOLA Act) amends the Act to give effect to the recommendations of a post implementation review of the trade marks legislation and to otherwise make minor and technical amendments. The TMOLA Act repeals several provisions of the Act, makes a number of amendments to provisions of the Act and inserts a new Division 3 of Part 7 into the Act.

The regulations make minor, consequential and technical amendments to the Trade Marks Regulations 1995 (the Regulations) following the amendments made by the TMOLA Act, including consequential amendments to Part 17A of the Regulations -- which already contains the substantive provisions relating to the Madrid Protocol and international trade marks. The more significant of the amendments:

•       implement a method of reckoning various periods expressed in months, which are prescribed or specified in the Regulations (e.g. the period of 3 months for filing notice of opposition to registration of a trade mark) -- the method accords with the Trade Mark Office's long-standing practice, and Australia's treaty obligations (items 2 and 3 of Schedule 1);

•       prescribe the periods, contents of notices and fees for the renewal of registration of a trade mark, where registration has been delayed for 10 or more years after its filing date (items 7, 26, 27 and 28 of Schedule 1);

•       remove the requirement for an objector to importation of goods infringing a trade mark to give a current copy of the particulars of registration of the registered trade mark, certified by the Registrar of Trade Marks, to the Customs CEO with the notice of objection. Instead, giving any document setting out those particulars is to be sufficient (item 9 of Schedule 1);

•       set out the requirements for an application for the consent of the Australian Competition and Consumer Commission (the Commission) for the assignment of a certification trade mark that has not yet been registered -- including the information to be included in the application, and the matters to which the Commission must have regard in considering the application (item 10 of Schedule 1); and

•       require the Registrar to deny effect in Australia to a change in ownership of a certification trade mark that is the subject of an international registration designating Australia, but which is not a protected international trade mark, until such time as the Commission consents to the change of ownership (item 24 of Schedule 1).

Details of the regulations may be found in the Attachment.

Regulations 1 to 3 and Schedule 1 commenced on the date of commencement of the TMOLA Act -- 19 September 2001. Schedule 2, which amends the classes of services in the Regulations to reflect the revised classes set out in the 8th edition of the World Intellectual Property Organization's International Classification of Goods and Services (Nice Classification), will commence on 1 January 2002 -- when the 8th edition of the Nice Classification comes into effect.

Attachment

Trade Marks Amendment Regulations 2001 (No. 3)

Details of the regulations are as follows:

Regulation 1 identifies the amending regulations as the Trade Marks Amendment Regulations 2001(No. 3).

Regulation 2 specifies that regulations 1 to 3 and Schedule 1 to the regulations commence when the Trade Marks and Other Legislation Act 2001 (the TMOLA Act) commences. Schedule 2 to the regulations will commence on 1 January 2002.

Regulation 3 specifies that Schedules 1 and 2 to the regulations amend the Trade Marks Regulations 1995 (the Regulations).

Item 1 of Schedule 1 amends regulation 2.1 by deleting the definition of the expression working day. That definition is inconsistent with the new definition inserted by item 2 of Schedule 1 to the TMOLA Act into section 6 of the Trade Marks Act 1995 (the Act).

Items 2 and 3 of Schedule 1 amend Part 2 of the Regulations by inserting a new definition of 'month' into regulation 2.1, referring in turn to regulation 2.2. These provisions provide that periods expressed in months are calculated according to the corresponding-day rule -- generally treating a period measured in months as ending on the day having the same number as the day of the event which commenced the period (e.g. a three month period commencing on the 15th of January would end on the 15th of March). Where the later month has no day with the same number, the period ends on the last day of that month (e.g. a one month period commencing on the 31st of August would end on the 30th of September). This method of calculation accords with Australia's long -standing practice, and treaty obligations as expressed in subrule 4(2) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (Common Regulations).

Item 4 of Schedule 1 amend paragraph 5.10(2)(a) of the Regulations by replacing the words "beginning on" with the word "from". This is to ensure that the period prescribed in that paragraph is specified in the same terms, and is consistent with, other periods prescribed in the regulations.

Items 5 and 6 of Schedule 1 insert new division headings into Part 7 of the Regulations. These items, along with item 7 below, divide Part 7 into 3 divisions, in line with the division of Part 7 of the Act into 3 divisions by items 17 and 24 in Schedule 1 to the TMOLA Act.

Item 7 of Schedule 1 amends Part 7 of the Regulations by inserting a new Division 3 into that Part -- relating to the renewal of registration of a trade mark, where registration has been delayed for 10 or more years after its filing date. Division 3 is comprised of three regulations -- regulations 7.6, 7.7 and 7.8. The new provisions are necessary following the insertion of a new Division 3 into Part 7 of the Act by item 24 in Schedule 1 to the TMOLA Act.

Regulation 7.6 prescribes the period of 2 months for the purposes of new Division 3 of Part 7 of the Act, inserted by item 24 in Schedule 1 to the TMOLA Act. That period is the period in which any person may ask the Registrar to renew the registration of a trade mark registered 10 or more years after its filing date (new section 80D of the Act). Subsection 80A(3) of the Act states that the prescribed period specified in the Regulations commences on the day that particulars of registration were entered in the Register of Trade Mark (the Register).

Regulation 7.7 is to prescribe the information that must be stated in a notice under section 80C of the Act -- the date on which the prescribed period expires, and the fee payable by the registered owner of the trade mark. Section 80C of the Act requires the Registrar of Trade Marks (the Registrar) to notify the registered owner that a request may be made for renewal of the registration.

Regulation 7.8 is to prescribe the information that must be stated in a notice under new section 80E of the Act -- that the registration is renewed, and the period or periods for which it is renewed. On renewing a registration under new section 80E of the Act, the Registrar must give notice of the renewal or renewals to the registered owner of the trade mark.

Item 8 of Schedule 1 amends paragraph 10.1(b) of the Regulations, consequential to the insertion of section 180A into Part 16 of the Act by item 43 in Schedule 1 to the TMOLA Act. Section 180A provides that the consent of the Australian Competition and Consumer Commission (the Commission) is required for the assignment of certification trade marks that have not yet been registered. Prior to the amendment, paragraph 10.1(b) of the Regulations required that an application for assignment of a registered certification trade mark be filed with evidence of the Commission's consent to the assignment. The amendment extends this requirement to applications for assignment of unregistered certification trade marks, as well as removing an erroneous reference to transmission.

Item 9 of Schedule 1 amends regulation 13.1 of the Regulations by removing the previous requirement to give a current certified copy of the particulars of registration of a registered trade mark to the Customs CEO with a notice of objection to the importation of goods infringing that trade mark (under Part 13 of the Act). Instead, giving an ordinary document setting out those particulars is now sufficient.

Item 10 of Schedule 1 inserts a regulation 16.10A into the Regulations consequential to the insertion of section 180A into the Act (see item 8 above). Subsection 180A(2) provides that an application for the Commission's consent must be in accordance with the regulations. The regulation sets out those requirements, including the information to be included in the application (subregulation (1)), and the matters to which the Commission must have regard in considering the application (subregulation (2)). These requirements are the same as those that already applied to applications for the Commission's consent to assignment of a registered certification trade mark.

Item 11 of Schedule 1 inserts a definition of 'change of ownership' into regulation 17A.2 of the Regulations. The expression 'change of ownership' is used in the Madrid Protocol and the Common Regulations, rather than the expressions 'assignment' and 'transmission' used in the Act and Regulations. The amendment, along with the amendments made by items 21 and 29 below, ensures that Division 9 of Part 17A of the Regulations is consistent with the Madrid Protocol and the Common Regulations, while also ensuring that the expression 'change of ownership' encompasses all transactions comprised in the expressions 'assignment' or 'transmission'.

Item 12 of Schedule 1 inserts a subregulation (3) into regulation 17A.30 of the Regulations, consequential on the insertion of subsection 52(5) into the Act by item 11 in Schedule 1 to the TMOLA Act. The subregulation applies the provisions of subsection 52(5) to applications (made under regulation 17A.30) for extensions of time for filing a notice of opposition under regulation 17A.29. Under regulation 17A.29, a person may file a notice of opposition to the extension of protection in Australia to a trade mark that is the subject of an international registration designating Australia (IRDA).

Item 13 of Schedule 1 amends regulation 17A.42 to provide for an unrenewed protected international trade mark to continue to be taken to be a protected international trade mark for the purposes of an application or IRDA -- whether it is made at any time prior, or subsequent, to the expiry of the international registration -- until the international registration is no longer capable of being renewed under Article 7 of the Madrid Protocol. Article 7 provides that an international registration may be renewed up to 6 months following its expiry.

Item 14 of Schedule 1 omits paragraph 17A.45(2)(c) of the Regulations, which set out one of the grounds on which an application may be made to a prescribed court for an order amending or ceasing protection of a protected international trade mark. The equivalent ground applying to trade mark registrations, in paragraph 88(2)(d) of the Act, was repealed by item 25 of Schedule 1 to the TMOLA Act.

Items 15 and 16 of Schedule 1 insert paragraph (g) into subregulation 17A.48(4) of the Regulations. Regulation 17A.48 provides for applications to the Registrar for cessation of protection of a protected international trade mark, on the same grounds for which registered trade marks may be removed from the Register. Part 9 of the Act and Part 9 of the Regulations are applied to such applications, with modification of various expressions used in those Parts. Paragraph 17A.48(4)(g) modifies the expressions the day on which the application for registration of the trade mark was filed and the filing date in respect of the application for registration of the trade mark, occurring in those Parts, to refer to the relevant date applying to the protected international trade mark under the Madrid Protocol.

Items 17 and 18 of Schedule 1 insert paragraph (f) into subregulation 17A.50(2) of the Regulations, consequentially on the amendment made by item 11 above. Regulation 17A.50 applies the general provisions relating to certification trade marks -- in Part 16 of the Act and Part 16 of the Regulations -- to a certification trade mark that is the subject of an IRDA, or is a protected international trade mark. Subregulation 17A.50(2) modifies the various expressions used in those Parts. The new paragraph is to modify any reference to assignment of a certification trade mark to refer to change of ownership of such a mark instead.

Items 19 and 20 of Schedule 1 insert paragraph (c) into subregulation 17A.50(3) of the Regulations, consequentially on the insertion of regulation 16.10A by item 10 above. Subregulation 17A.50(3) modifies expressions used in specific provisions relating to certification trade marks. Paragraph 17A.50(3)(g) is to modify the references to the prospective assignee in regulations 16.10A and 16.11 to refer to the new holder of the international registration -- as notified to the Registrar by the International Bureau of the World Intellectual Property Organization (WIPO).

Item 21 of Schedule 1 is to amend regulation 17A.56 by replacing an occurrence of the expression 'an assignment or transmission' with the expression 'a change of ownership'. See item 11 above.

Item 22 of Schedule 1 substitutes a new note for the current note to regulation 17A.56 to the Regulations. The new note refers to the definition inserted by item 11 above.

Item 23 of Schedule 1 substitutes a new title for the current title of regulation 17A.58 (which governs changes of ownership of certification trade marks that are protected international trade marks), consequentially on the amendment made by item 24 below.

Item 24 of Schedule 1 inserts a regulation 17A.58A into Division 9 of Part 17A of the Act, consequentially on the insertion of section 180A into the Act (see item 8 above). In the same manner as current regulation 17A.58, regulation 17A.58A requires the Registrar to deny effect in Australia to a change in ownership of a certification trade mark that is the subject of an IRDA, but is not a protected international trade mark. As with current regulation 17A.58, regulation 17A.58A will require the Registrar to give effect to the change of ownership if the Commission consents to it. Section 180A of the Act provides that consent of the Commission is not required for an unregistered certification trade mark before a copy of application (and other prescribed documents) have been sent to the Commission.

Item 25 of Schedule 1 amends paragraph 21.13(3)(b) of the Regulations to correct a grammatical error.

Item 26 of Schedule 1 inserts subregulations (5), (6) and (7) into regulation 21.21 of the Regulations to provide for the calculation of the fee payable when requesting renewal under new Division 3 of Part 7 of the Act -- which provides for renewal of a registration delayed for 10 or more years after the filing date. These subregulations provides that where renewal is requested under new section 80D of the Act (i.e. within the prescribed period of 2 months; see item 7 above), the fee payable is the sum of the fees payable for the potential renewal period(s) nominated in the request. Where the renewal is requested under paragraph 80G(1)(b) of the Act (i.e. after the end of the prescribed period of 2 months, but before the end of the 10 month grace period), the fee payable is the sum of the fees payable for the potential renewal period(s) nominated in the request, and the additional fee for the period from the expiry of the prescribed period to the day when the request is filed -- see fee item 9A inserted by item 28 below.

Item 27 of Schedule 1 amends paragraph 21.28(1)(k) of the Regulations to provide that the periods for requesting renewal under sections 80D or 80G of the Act cannot be extended under the extension of time provisions in section 224 of the Act. Those sections govern requests for renewal of registration of a trade mark, where its registration has been delayed for 10 or more years after its filing date. The periods for requesting renewal are fixed at 2 months commencing on the Register entry day (for requests under sections 80D), and 10 months commencing at the end of the 2 month period (for requests under sections 80G) -- allowing a total period of
12 months to renew such registrations.

Item 28 of Schedule 1 amends Schedule 9 to the Regulations by inserting fee item 9A setting out the fees payable when requesting renewal under new Division 3 of Part 7 of the Act -- which provides for renewal of a registration delayed for 10 or more years after the filing date.

Item 29 of Schedule 1 is to amend Division 9 of Part 17A of the Act by replacing all remaining occurrences of the expression 'assignment or transmission' in the Division with the expression 'change of ownership'. See item 11 above.

Item 1 of Schedule 2 amends Part 2 of Schedule 1 to the Regulations (Classes of services) to reflect changes in the classes of services set out in the 8th edition of WIPO's International Classification of Goods and Services (Nice Classification), which will come into effect on 1 January 2002.


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