Trade Marks Amendment Regulations 2005 (No. 2) (Cth)

Trade Marks Amendment Regulations 2005 (No. 2)¹

Select Legislative Instrument 2005 No. 211

I, JOHN SANDERSON, Administrator of the Commonwealth of Australia, acting with the advice of the Federal Executive Council, make the following Regulations under the Trade Marks Act 1995.

Dated 15 September 2005

JOHN SANDERSON

Administrator

By His Excellency’s Command

IAN MACFARLANE

Minister for Industry, Tourism and Resources

Name of Regulations

These Regulations are the Trade Marks Amendment Regulations 2005 (No. 2).

Commencement

These Regulations commence on 3 October 2005.

Amendment of Trade Marks Regulations 1995

Schedule 1 amends the Trade Marks Regulations 1995.

Schedule 1 Amendments

(regulation 3)

[1] After Part 3

insert

Part 3A Assisted filing service

Division 1 General

3A.1Purpose of Part

This Part provides for an assisted filing service to enable a person proposing to make an application under Part 4 of the Act to request:

(a)a preliminary assessment from the Registrar concerning the likelihood of the application for the proposed trade mark being successful under Part 4 of the Act; and

(b)information concerning the requirements for registration under Part 4 of the Act.

3A.2Definitions for Part

In this Part:

AFS request has the meaning given by regulation 3A.3.

requester has the meaning given by regulation 3A.3.

Division 2 Request for filing assistance

3A.3Request for filing assistance — form of request

(1)A person proposing to submit an application under Part 4 of the Act (a requester) may submit a request for filing assistance (an AFS request) under this Part.

(2)An AFS request must:

(a)be supported by such material and attachments as required by the Registrar having regard to the requirements of Part 4 of the Act in relation to an application for registration; and

(b)be accompanied by the fee prescribed for the AFS request.

(3)An AFS request:

(a)must be submitted in a manner required by the Registrar; and

(b)must contain the name of the requester; and

(c)must contain contact details that includes the business or residential address and a telephone number for the requester, and:

(i)the fax number of the requester; or

(ii)the email address of the requester; and

(d)must include a representation of the trade mark that is sufficient to identify the trade mark; and

(e)must specify the goods and/or services in relation to which the request is made; and

(f)must not relate to a matter notified by the Registrar in the Official Journal to be a matter for which an AFS request is not available; and

(g)if the AFS request relates to a matter for which the Registrar has notified conditions in the Official Journal — must comply with the conditions.

(4)If the fee mentioned in paragraph (2) (b) remains unpaid 5 working days after an AFS request is submitted, the AFS request is incomplete and is taken not to have been submitted.

(5)A requester may amend an AFS request before it is assessed by the Registrar by advising the Registrar of the details of the amendments and providing:

(a)any material to be added to the AFS request; and

(b)any other document required by the Registrar in relation to the amendment; and

(c)any fee prescribed in relation to the amendment.

(6)For the fee prescribed for an amendment mentioned in paragraph (5) (c), the Registrar may:

(a)decide to waive the fee; or

(b)decide not to waive the fee, and require that payment of the fee be made within the period of 5 working days after that decision.

(7)The Registrar must amend the AFS request on receipt of an amendment:

(a)that complies with subregulation (5); and

(b)in respect of which the fee, if any, has been paid.

3A.4AFS request — assessment by Registrar

(1)After receiving an AFS request the Registrar must, as soon as practicable, assess the AFS request having regard to the requirements of Part 4 of the Act and form an opinion whether or not:

(a)the AFS request would, if submitted in that form as an application for registration under Part 4 of the Act, be in accordance with that Part; and

(b)there would be grounds under Division 2 of Part 4 of the Act for rejecting the AFS request.

(2)After forming an opinion the Registrar must, as soon as practicable, inform the requester of:

(a)the opinion; and

(b)the procedural requirements of regulation 3A.5 for making an amendment to the AFS request; and

(c)the procedural requirements for making an application for the registration of a trade mark under Part 4 of the Act.

(3)The Registrar may inform the requester:

(a)in writing, by mail, fax or email; or

(b)by telephone; or

(c)in person.

3A.5AFS request — formal requirements for amendment or proceeding to Part 4 application

(1)The requester may, within 5 working days after being informed by the Registrar under subregulation 3A.4 (2):

(a)amend the AFS request under subregulation 3A.5 (2); or

(b)submit the AFS request as an application for registration of a trade mark under Part 4 of the Act by payment of the fee prescribed for that Part.

(2)If the requester advises the Registrar under paragraph (1) (a) that the AFS request is to be amended:

(a)for the purpose of adding one or more classes of goods or services to the AFS request; or

(b)to significantly change the graphical representation of the trade mark;

the advice must include:

(c)details of the goods and/or services or the graphical representation; and

(d)any material to be attached to the AFS request; and

(e)any other document required by the Registrar; and

(f)any fee prescribed in relation to the amendment.

(3)For the fee prescribed for an amendment mentioned in subregulation (2), the Registrar may:

(a)decide to waive the fee; or

(b)decide not to waive the fee, and require that payment of the fee be made within the period of 5 working days after that decision.

(4)For an amended AFS request to which subregulation (2) applies, and in respect of which the fee mentioned in subregulation (3) has been paid or waived:

(a)the Registrar must amend the AFS request and as soon as practicable:

(i)assess the amended AFS request in accordance with regulation 3A.4; and

(ii)inform the requester under subregulation 3A.4 (2); and

(b)the period mentioned in subregulation (1) is extended to 5 working days after the Registrar informs the requester in accordance with subparagraph (a) (ii).

(5)If the requester advises the Registrar that the AFS request is to be amended for a purpose other than that mentioned in subregulation (2), the Registrar:

(a)must amend the AFS request; and

(b)may assess the amended AFS request, insofar as the Registrar considers practicable, having regard to:

(i)the complexity of the amendments requested; and

(ii)the length of time that remains of the period mentioned in subregulation (1); and

(c)insofar as it has been practicable to assess the amended AFS request — must inform the requester of the assessment.

(6)An AFS request is discontinued if a requester fails to submit an application under Part 4 of the Act after following the procedure mentioned in subregulation (1).

[2] Subregulation 4.1 (1)

substitute

(1)For subsection 27 (2) of the Act (which deals with applications for registration), an application for the registration of a trade mark must be:

(a)in an approved form; or

(b)an AFS request mentioned in Part 3A, in respect of which all fees were paid within the prescribed time limits.

[3] Regulation 4.2, heading

substitute

4.2Application in approved form — requirements for filing

[4] Regulation 4.2

omit

In order for an application for registration of a trade mark to be taken to be filed, the application must:

insert

To be taken to be filed, an application for registration of a trade mark that is in an approved form must:

[5] After regulation 4.2

insert

4.2AAFS request submitted as application — requirements for filing

An AFS request that is submitted as an application for registration of a trade mark under this Part may be taken as having been filed only if the Registrar is satisfied that all fees have been paid in respect of the application within the period of 5 working days mentioned in subregulation 3A.5 (1).

[6] Regulation 21.4, note

substitute

Note Regulations 4.2 and 4.2A set out requirements with which applications for the registration of trade marks must comply to be taken as having been filed.

[7] Regulation 21.23

substitute

21.23Notice of non-payment of fee

For subsection 223 (5) of the Act (which deals with non‑payment of fees), the Registrar or the Customs CEO must, in writing or by telephone:

(a)if a fee mentioned in Part 3A has not been paid or waived within the period prescribed in that Part for the payment of the fee — advise the requester that the fee has not been paid and that the AFS request has been discontinued; or

(b)in any other case — notify the person concerned, or his or her agent, that the fee has not been paid, within 14 working days after the doing of the act, or the filing of the document, for which the fee is payable.

[8] Paragraph 21.28 (1) (r)

omit

Act.

insert

Act;

[9] After paragraph 21.28 (1) (r)

insert

(s)the filing of a document or the giving of advice to the Registrar under Part 3A.

[10] Paragraph 21.28 (2) (b)

omit

applies.

insert

applies;

[11] After paragraph 21.28 (2) (b)

insert

(c)any of the following documents required or permitted to be submitted under Part 3A:

(i)an AFS request;

(ii)a submission;

(iii)an attachment;

(iv)accompanying material;

(v)a written advice.

[12] Schedule 9, item 1

omit

(b) by another means

$150 for each class

insert

(b) by AFS request mentioned in regulation 4.2A	$90 for each class
(c) by another means	$150 for each class

[13] Schedule 9, after item 31

insert

32	AFS request under regulation 3A.3	$90 for each class
33	Inclusion of an additional class of goods or services in an AFS request under paragraph 3A.3 (5) (c) or 3A.5 (2) (f)	$90 for each class
34	Inclusion of an amendment in an AFS request that significantly changes the graphical representation of a trade mark under paragraph 3A.5 (2) (f)	$90 for each class

Note

All legislative instruments and compilations are registered on the Federal Register of Legislative Instruments kept under the Legislative Instruments Act 2003. See