TRADE MARKS AMENDMENT (FEES) REGULATION 2016 (F2016L00694) EXPLANATORY STATEMENT

Commonwealth Numbered Regulations - Explanatory Statements

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TRADE MARKS AMENDMENT (FEES) REGULATION 2016 (F2016L00694)

 EXPLANATORY STATEMENT

Select Legislative Instrument No.   , 2016

Issued by the Authority of the Minister for Industry, Innovation and Science

Trade Marks Act 1995

Trade Marks Amendment (Fees) Regulation 2016

Legislative Authority

Subsection 231(1) of the Trade Marks Act 1995 ('Act') provides that the Governor-General may make regulations prescribing matters required or permitted by the Acts to be prescribed, or necessary or convenient to be prescribed for carrying out or giving effect to the Act.

Section 223 of the Act provides for the payment of prescribed fees in accordance with the regulations made for the purpose of the Act.

The Act does not specify any condition that must be met before the power to make the Regulation may be exercised.

The Regulation

The Trade Marks Amendment (Fees) Regulation 2016 ('Regulation') amends the Trade Marks Regulations 1995 ('Principal Regulations') to correct an error in two fees prescribed in Schedule 9 to the Principal Regulations ('Schedule 9'). These are the fees prescribed in items 1(d) and 32 of Schedule 9 for the two parts of the assisted filing service ('AFS') governed by Part 3A of the Principal Regulations.

A person proposing to submit an application for registration of a trade mark has the option of using the two part AFS process. The AFS is designed to particularly assist small and medium enterprises that are not regular users of the trade mark system. In Part 1, a person submits an AFS request seeking an assessment of whether or not the trade mark could be registered for particular goods and/or services in one or more classes. When the person receives IP Australia's assessment of the trade mark, the person can then decide whether or not to proceed with Part 2. This involves submitting the assessed AFS request as a substantive application for registration of a trade mark for some or all of those goods and/or services. The AFS allows someone to avoid seeking registration of a trade mark that couldn't be registered for some good or service (e.g. the mark "Peaches" for stone-fruit).

IP Australia is a listed entity for the purposes of the Public Governance, Performance and Accountability Act 2013. The Trade Marks Office operates within IP Australia. In 2011-2012, IP Australia considered the appropriate levels of its prescribed fees as part of developing its Cost Recovery Implementation Statement ('CRIS') for 2012-2016, in compliance with the Australian Government Cost Recovery Guidelines. The approved CRIS determined that:

*         the fee for making an AFS request ('Part 1 fee') should be $120 for each class of goods and/or services. This ensures adequate recovery of the costs of assessing whether or not a trade mark can be registered for particular goods and/or services

*         the fee for submitting the AFS request as a substantive application for registration of a trade mark ('Part 2 fee') should be $80 for each class of goods and/or services. This reflects the lesser cost of processing an assessed application up to its acceptance by the Registrar of Trade Marks.

The Part 1 fee is prescribed in item 32 in Schedule 9. The Part 2 fee is prescribed in paragraph 1(d) in Schedule 9. IP Australia has recently discovered that the amounts of these two prescribed fees do not match the amounts approved in the CRIS. The prescribed fees also do not match the amounts published on IP Australia's website or the amounts charged to applicants. The error was due to the amounts for these two fees being inadvertently transposed in drafting instructions issued in 2012 for amendments to the fees. Item 32 in Schedule 9 to the Principal Regulations incorrectly prescribes $80 and paragraph 1(d) in Schedule 9 incorrectly prescribes $120.

The error has resulted in a number of persons being charged more than the prescribed fee for making their AFS requests, and charged less than the prescribed fee for submitting the AFS request as a substantive application for registration of a trade mark. For some of those persons, the overcharging and the undercharging result in the correct total fee being paid and therefore no refund being owed in respect of those transactions. However, in respect of those people who did not proceed to submission of a request as a substantive application, IP Australia is proceeding to identify those persons and to arrange refunds of the overcharged amount.

From the date of its commencement, the Regulation corrects the error in Schedule 9 by amending item 1(d) and item 32 to prescribe the correct amounts approved in the CRIS. That is, item 1(d) of Schedule 9 prescribes $80 for each class and item 32 of Schedule 9 prescribes $120 for each class.

The amendments apply to AFS requests submitted on or after commencement of the proposed Regulation. That is, all AFS requests submitted before commencement incur the current fees prescribed in Schedule 9 and refunds for overpayments would be arranged where appropriate. All AFS requests filed on or after commencement incur the amended fees and so result in the correct fees being paid.

Public consultation on the Regulation is unnecessary as the purpose of the amendment to the Principal Regulations is to correct an error in implementing the approved CRIS, which was publicly consulted on in 2011-2012. The amendment is also required to ensure that the prescribed fees reflect the cost to IP Australia of the relevant actions.

Commencement of the Regulation

The Regulation commences on the day after it is registered in the Federal Register of Legislation.

Details of the Regulation are set out in the Attachment.

The Regulation is a legislative instrument for the purposes of the Legislation Act 2003.


ATTACHMENT

 

Details of the Trade Marks Amendment (Fees) Regulation 2016

Section 1 - Name of Regulation

This section provides that the title of the Regulation is the Trade Marks Amendment (Fees) Regulation 2016.

Section 2 - Commencement

This section provides that the Regulation commences the day after it is registered in the Federal Register of Legislation.

Section 3 - Authority

This section provides that the Regulation is made under the Trade Marks Act 1995.

Section 4 - Schedules

This section provides that each instrument that is specified in a Schedule to this instrument is amended or repealed as set out in the applicable items in the Schedule concerned, and any other item in a Schedule to this instrument has effect according to its terms.

Schedule 1 - Amendments

Item 1 -- new regulation 22.11

This item inserts a new regulation 22.11 into the Trade Marks Regulations 1995 ('Principal Regulations') to provide for the application of the amendments proposed in items 2 and 3. The proposed amendments apply to AFS requests submitted on or after commencement of the Regulation. That is, the previous fees continue to apply to an AFS request submitted before commencement. Any applicants that paid the fee set out in the 2012-2016 CRIS for Part 1, but did not proceed to Part 2 of the AFS process, were overcharged by IP Australia and this will be addressed by way of refunds. All AFS requests submitted on or after commencement incur the amended fees and so result in the correct fees being paid.

Items 2 and 3 -- Schedule 9 (table item 1, column headed "Fee", fee relating to paragraph (d)); Schedule 9 (table item 32, column headed "Fee")

These items amend Schedule 9 to the Principal Regulations by replacing the incorrect amount of $120 per class in the fee relating to paragraph (d) of item 1 with the correct amount of $80 per class; and by replacing the current amount of $80 per class in the fee in item 32 with the correct amount of $120 per class. An AFS request allows a trade mark to be assessed in respect of goods and/or services in one or more classes, before registration of the trade mark is sought for any of those goods and/or services.

These items correct errors in the drafting instructions issued for the amendments to the Principal Regulations made on 1 July 2012 by item 23 in Schedule 1 to the Intellectual Property Legislation Amendment Regulation 2012 (No. 1).


 

STATEMENT OF COMPATIBILITY WITH HUMAN RIGHTS

Prepared in accordance with Part 3 of the Human Rights (Parliamentary Scrutiny) Act 2011

Trade Marks Amendment (Fees) Regulation 2016

This Disallowable Legislative Instrument ('Instrument') is compatible with the human rights and freedoms recognised or declared in the international instruments listed in section 3 of the Human Rights (Parliamentary Scrutiny) Act 2011.

 

Overview of the Instrument

 

This Instrument amends the Trade Marks Regulations 1995 ('Principal Regulations') to correct an error in two fees prescribed in Schedule 9 to the Principal Regulations ('Schedule 9'). These are the fees prescribed in items 1(d) and 32 of Schedule 9 for the two parts of the assisted filing service ('AFS') governed by Part 3A of the Principal Regulations.

A person proposing to submit an application for registration of a trade mark has the option of using the two part AFS process. In Part 1, a person submits an AFS request seeking an assessment of whether or not the trade mark could be registered for particular goods and/or services in one or more classes. When the person receives IP Australia's assessment of the trade mark, the person can then decide whether or not to proceed with Part 2. This involves submitting the assessed AFS request as a substantive application for registration of a trade mark for some or all of those goods and/or services. The AFS allows someone to avoid seeking registration of a trade mark that couldn't be registered for some good or service (e.g. the mark "Peaches" for stone-fruit).

IP Australia is a listed entity for the purposes of the Public Governance, Performance and Accountability Act 2013. The Trade Marks Office operates within IP Australia. In 2011-2012, IP Australia considered the appropriate levels of its prescribed fees as part of developing its Cost Recovery Implementation Statement ('CRIS') for 2012-2016 in compliance with the Australian Government Cost Recovery Guidelines. The approved CRIS determined that:

*         the fee for making an AFS request should be $120 for each class of goods and/or services

*         the fee for submitting the AFS request as a substantive application for registration of a trade mark should be $80 for each class of goods and/or services.

The amounts for those fees were inadvertently transposed in drafting instructions issued in 2012 for amendments to the fees in the Principal Regulations.

The Instrument corrects the error by amending paragraph 1(d) and item 32 of Schedule 9 to prescribe the correct amounts approved in the CRIS. That is, an amount of $80 for each class is prescribed in paragraph (d) of table item 1 of Schedule 9, and an amount of $120 for each class is prescribed in table item 32 of Schedule 9.

Human rights implications

This Instrument does not engage any of the applicable rights or freedoms.

 

Conclusion

 

The Instrument is compatible with human rights as it does not raise any human rights issues.

 

The Hon Christopher Pyne MP, Minister for Industry, Innovation and Science


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