Commonwealth Numbered Regulations - Explanatory Statements

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TRADE MARKS AMENDMENT REGULATIONS 2004 (NO. 2) 2004 NO. 194

Subsection 231(1) of the Trade Marks Act 1995 (the Act) provides that the Governor-General may make regulations prescribing matters required or permitted by the Act to be prescribed, or necessary or convenient to be prescribed for carrying out or giving effect to the Act and for the conduct of any business relating to the Trade Marks Office. Subsection 225(1) of the Act provides that the regulations may declare a foreign country to be a Convention country for the purposes of the Act.

The Regulations amend the list of Convention countries in Schedule 10 to the Trade Marks Regulations 1995 to:

•       insert 'Andorra' and 'Bhutan' into the list of Convention countries to reflect the accession of these countries to the Paris Convention for the Protection of Industrial Property;

•       replace 'Yugoslavia' with 'Serbia and Montenegro' in the list of Convention countries as a result of the change of name from the Federal Republic of Yugoslavia to Serbia and Montenegro in February 2003;

•       delete the reference to the 'United Republic of Tanzania', which is unnecessary because 'Tanzania' is also listed in the Schedule; and

•       make some minor changes to the entries in Schedule 4 for Cambodia, Macau, Sao Tome and Principe and Suriname so the entries for these Convention countries accord with the naming formats used by the United Nations and the World Trade Organization.

The effect of these changes is to allow applicants who have filed trade mark applications in the above countries on a particular date to claim that date when they subsequently file an application for their trade mark in Australia.

The Paris Convention, inter alia, enables nationals of Member States to claim the actual date they originally filed their trade mark application as the effective date of filing in other Convention countries (Article 4). However, the application must be filed in other Convention countries within six months of the original filing date in order to obtain priority. One of the advantages of this right of priority is that when a trade mark applicant wishes to obtain trade mark protection in several countries, the applications are not required to be filed at the same time. The applicant has six months to decide in what countries to file applications for protection. As Australia is a member of the Paris Convention, this right also applies to Australian nationals.

The Regulations commence on gazettal.