Commonwealth Numbered Regulations - Explanatory Statements

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TRADE MARKS REGULATIONS (AMENDMENT) 1996 NO. 3

STATUTORY RULES 1996 No. 3

Issued by the Authority of the Minister for Small Business, Customs and Construction

Trade Marks Act 1995

Trade Marks Regulations (Amendment)

The Statutory Rules amend the Trade Marks Regulations (the Regulations) to:

*       amend regulation 9 of the Regulations to make it clear that if an application for the removal of a trade mark from the Register relies on both the grounds specified in subsection 92(4) of the new Act, the declaration which must accompany the application must support both grounds, and conversely, if only one of the grounds is relied on, the declaration must support that ground;

*       include new subregulation 22.1(3) to ensure that trade marks lodged prior to 1 January 1996 and published by the prescribed mews, are taken to be published under section 30 of the Trade Marks Act 1995 (the new Act) for the purposes of the new Act;

*       amend regulation 22.4 of the Regulations to replace the reference to subparagraph 4.13 (1) (b) (i) with a reference to subregulation 4.13 (1). Regulation 22.4 provides that if the Registrar has deferred acceptance of an application for registration of a trade mark under the Trade Marks Act 1955 (the 1955 Act) and the deferment was in force immediately before 1 January 1996, it will continue to be in force under subparagraph 4.13 (1) (b) (i). The amendment is required because the power to defer an application is located in subregulation 4.13 (1) in its entirety and not in any of its paragraphs;

*       amend regulation 22.4 of the Regulations to ensure the appropriate determination of the end point of a deferment period continued under regulation 22.4;

*       insert new regulation 22.6 into the Regulations to allow the Registrar, at the request of the applicant in writing, to defer acceptance of an application for registration of a trade mark under regulation 4.13 of the Regulations where the applicant has fled an application under section 23 of the 1955 Act in respect of another trade mark and is awaiting the finalisation of the section 23 proceedings;

*       amend Schedule 6 to the Regulations to include reference to the offices of Administrative Service Officer, Class 2 and Administrative Service Officer, Class 1, and therefore provide for delegation of the Registrar's powers and functions, as appropriate, to the occupants of these offices;

*       amend Item 2 of Schedule 9 to the Regulations, which provides that a fee must be paid by an applicant requesting a divisional application under subsection 45 (1) of the new Act, to include a reference to subsections 242 (2) and (3) of the new Act. Subsections 242 (2) and (3) provide for transitional arrangements that apply in respect of making divisional applications where the initial application was lodged under the 1955 Act;

*       amend Schedule 9 to the Regulations to allow the Registrar to levy a fee for an application made under section 247 of the new Act; to make it clear that Items 13 and 14 are to apply to a single registration only, and to correct minor drafting errors in Item 20; and

*       amend Schedule 10 to the Regulations to include Armenia into the list of Convention Countries, Armenia was inadvertently omitted from the list of Convention countries set out in Schedule 10 to the Regulations when they were made. Armenia, for the purposes of the Australian legislation, became a Convention Country on 23 February 1995. The amendment is retrospective to 1 January 1996, to ensure continuity of effect from the 1955 Act.

Details of the amendments made by these Statutory Rules are as follows:

Regulation 1 sets the commencement date for regulation 9 to be 1 January 1996.

Regulation 2 identifies the Trade Marks Regulations as those to be amended.

Regulation 3 amends regulation 9.1 by substituting a reworded subparagraph 9.1(b)(ii) which provides that a declaration made under regulation 9.1 must set out the findings of that inquiry. that support the grounds referred to in section 92(4) of the Act in reliance on which the application is made.

Regulation 4 amends regulation 22.1 by adding subregulation 22.1(3) which provides that if the particulars of an application for the registration of a trade mark have been published by the prescribed means before the commencement of the Regulations, they are taken to have been published under section 30 of the Act.

Regulation 5.1 amends regulation 22.4 by omitting "subparagraph 4.13(1)(b)(i)" and substituting "subregulation 4.13(1)".

Regulation 5.2 amends regulation 22.4 by adding subregulations 22.4(2) and (3) which ensure appropriate determination of the end point of a deferment period continued under regulation 22.4.

Regulation 6 inserts a new regulation 22,6 which provides that reference in subparagraph 4.13 (1)(c)(iii) to an application under section 92 and reference in subparagraph 14.3(c) to -proceedings under section 92 are taken to be references to an application under section 23 of the 1955 Act and proceedings under section 23, respectively. This regulation applies if a request for deferment under regulation 4.13 has been lodged by an applicant who applied for registration of a trade mark under the 1955 Act and in order to progress that application has lodged an application under section 23 of the of the 1955 Act to remove a trade mark from the register.

Regulation 7 amends Schedule 6 by adding to the fist of prescribed offices "Administrative Service Officer, Class 2" and "Administrative Service Officer, Class 1".

Regulation 8.1 a mends Schedule 9 by substituting a reworded Item 2.

Regulation 8.2 amends Schedule 9 by substituting a reworded Item 5.

Regulation 8.3 amends Schedule 9 by replacing 'Registration!' in Item 13 with "Single registration".

Regulation 8.4 amends Schedule 9 by replacing "registration" in Item 14 with "a singe registration".

Regulation 8,5 amends Schedule 9 by substituting a corrected Item 20.

Regulation 9 amends Schedule 10 by inserting "Armenia" in the list of Convention countries.