Trade Marks Regulations (Amendment) (Cth)

TRADE MARKS REGULATIONS 1913.

Statutory Rules 1949, No. 40.(c)

Parts.

1. Regulation 2 of the Trade Marks Regulations 1913 is amended by inserting after the words “Division 4. Renewal of Registration.” the words “Part IIa.—Registered Users.”.

2. Regulation 3 of the Trade Marks Regulations 1913 is repealed and the following regulation inserted in its stead:—

Definitions.

“3. In these Regulations, unless the contrary intention appears—

‘applicant’ includes an applicant under any regulation contained in Part IIa.;

‘opponent’ includes a person who has given notice under sub-regulation (2) of regulation 68H of these Regulations;

‘the Act’ means the Trade Marks Act 1905-1948;

‘the Official Journal’ means The Australian Official Journal of Patents, Trade Marks and Designs.”.

Requisites of application.

3. Regulation 15 of the Trade Marks Regulations 1913 is amended by adding at the end thereof the following sub-regulation:—

“(2) Where an application for the registration of a trade mark specifies two or more different goods, or all the goods included in a class of goods, the application shall be accompanied by a statement signed by the applicant indicating whether the trade mark is used, or is presently intended to be used, by the applicant in respect of all the goods specified in the application or included in that class.

“(3) Where the applicant does not use, or presently intend to use, the trade mark in respect of the goods specified in the application or included in a class of goods so specified but—

(a) intends to assign the trade mark to a body corporate to be formed; or

(b) intends that some person should be permitted to use the trade mark as a registered user,

the application for registration of the trade mark shall be accompanied by a statement of the applicant’s intention.

(c) Made under the Trade Marks Act 1905-1948 on 29th June, 1949; notified in the Gazette on 30th June, 1949.

“(4) For the purposes of sub-section (6.) of section 33 of the Act, the period within which a body corporate shall be registered as the subsequent proprietor of a registered trade mark shall be six months from the date of advertisement in the Official Journal of the registration of the trade mark.

“(5) An application, for extension of the period referred to in the last preceding sub-regulation shall be in writing to the Registrar by the registered proprietor of the trade mark or by the applicant for registration as the subsequent proprietor of the trade mark.”.

Application for renewal of registration.

4. Regulation 64 of the Trade Marks Regulations 1913 is amended by adding at the end thereof the following sub-regulation:—

“(2) Where a person has been registered as a registered user of a trade mark, an application for renewal of the registration of the trade mark shall be accompanied by a declaration by the registered user stating whether the trade mark has been used by him in Australia as the registered user and specifying the goods in respect of which such user has taken place, the period of such user and the particular place in Australia of such user.”.

5. After Part II. of the Trade Marks Regulations 1913 the following Part is inserted :—

“Part IIa.—Registered Users.

Application for entry of registered user.

“68A. An application under section 31a of the Act for the registration of a person as a registered user of a trade mark shall be in accordance with Form PA and shall be signed by both parties to the application but—

(a) in the case of an application by a firm, the application may be signed by any member of the firm; and

(b)in the case of an application by a body corporate or an association, the application may be signed by a director or by the secretary or some principal officer of the body corporate or association.

Procedure where Registrar objects to register.

“68B.— (1) If the Registrar objects to grant the application, objects to grant it in relation to some of the proposed goods, or objects to grant it subject to the conditions or restrictions proposed by the applicant, the Registrar shall—

(a) give notice to each applicant in writing accordingly;

(b)state the grounds of his objection; and

(c)inform each applicant that he is entitled to be heard personally or by his agent.

“(2) An applicant who desires to be heard shall give notice to the Registrar accordingly within one month after the date of the notice under the last preceding sub-regulation.

“(3) If no applicant notifies the Registrar that he desires to be heard, the Registrar shall give such decision as he thinks proper.

 “(4) If an applicant notifies the Registrar that he desires to be heard, the Registrar shall fix a time for the hearing, and shall give to the applicant not less than ten days’ notice in writing of the time so fixed.

“(5) On the hearing the Registrar shall give such decision as he thinks proper and, before doing so, shall hear any applicant who appears.

Entry in Register.

“68c. The entry in the Register of a registered user shall specify—

(a) the name, address and description of the registered user;

(b)the goods in respect of which the registration of the registered user has been effected;

(c) any conditions or restrictions to which the registration is subject; and

(d)the date on which the application for registration of the registered user was made and the date of registration of the registered user.

Notification of registration.

“68d. The Registrar shall send a notice in writing of the registration of a registered user to the registered proprietor of the trade mark, to the registered user, and to every other registered user of the trade mark, and shall advertise the registration in the Official Journal.

Application for variation.

“68e. An application by the registered proprietor of a trade mark for the variation of the registration of a registered user of that trade mark under paragraph (a) of sub-section (9.) of section 31a of the Act shall be made in accordance with Form PB, and shall be accompanied by a statement of the grounds on which it is made and, where the registered user consents, by the written consent of the registered user.

Application for cancellation by registered proprietor or registered user.

“68f. An application by the registered proprietor or any registered user of a trade mark for the cancellation of the registration of a registered user of that trade mark under paragraph (b)of sub-section (9.) of section 31a of the Act shall be in accordance with Form PC and shall be accompanied by a statement of the grounds on which the application is made.

Application for cancellation by any person.

“68g. An application by any person for the cancellation of the registration of a registered user under paragraph (c) of sub-section (9.) of section 31a of the Act shall be in accordance with Form PD and shall be accompanied by a statement of the grounds on which the application is made.

Notification and hearing.

“68H.—(1) The Registrar shall give notice in writing of any application under the last three preceding regulations to the registered proprietor and to each registered user (not being the applicant) of the trade mark.

“(2) Any person be notified who desires to be heard by the Registrar shall, within three months after the date of the notice, give notice in quadruplicate to the Registrar in accordance with Form PE and shall send therewith a statement in quadruplicate of the grounds upon which he desires to be heard.

“(3) The Registrar shall send a copy of the notice and statement to each other person to whom notice of the application was given.

418/51.—15.

 “(4) Each such other person may, within such time or times as the Registrar appoints, leave at the Trade Marks Office evidence relating to the application.

“(5) The Registrar may, after giving the applicant and any person to whom notice of the application was given who desires to be heard an opportunity of being heard, give such decision as he thinks proper.

Notification of cancellation.

“68j. Where the registration of a person as a registered user in respect of any goods is cancelled under sub-section (11.) of section 31a of the Act, the Registrar shall give notice in writing to each registered user affected by the cancellation.”.

6. Regulations 87 and 88 of the Trade Marks Regulations 1913 are repealed and the following regulation is inserted in their stead:—

Correction of Register.

“87.—(1) A request for the alteration of the Register under subsection (1.) of section 68 of the Act may be in accordance with Form R and a request for the alteration of the Register under sub-section (1a.) of that section may be in accordance with Form RA.

“(2) The request shall be lodged at the Trade Marks Office and shall be accompanied by the prescribed fee.”.

Amendment of the Second Schedule.

7. The Second Schedule to the Trade Marks Regulations 1913 is amended by inserting after item 6 the following items:—

£	s.	d.
“6a.	On application for registration of registered user...........................................	2	0	0
6b.	On application by the registered proprietor of a trade mark for variation of the registration of a registered user....................................................................	2	0	0
6c.	On application for the cancellation of entry of a registered user of a trade mark..................................................................................................................	2	0	0
6d.	On giving notice of desire to be heard on application to vary or cancel registration of registered user of a trade mark...............................................	3	0	0
6e.	On application by a registered user of a trade mark for correction or alteration of the Register............................................................................................	1	0	0”.

Third Schedule.

8.—(1.) The Third Schedule to the Trade Marks Regulations 1913 is amended by inserting after Form P the following Forms:—

Form PA.

“Commonwealth of Australia.

Trade Marks Act 1905-1948.

APPLICATION FOR REGISTRATION OF REGISTERED USER.

(To be accompanied by a statutory declaration made by the proprietor or by some person authorized to act on his behalf and approved by the Registrar, giving particulars and stating as required by section 31a (5.) of the Act.)

Application is hereby made by (1) who is

the	applicant for registration (2)	of Trade Mark No. , in
	registered proprietor

Class in respect of (3)

that (4) of (5)

trading as (6) who hereby joins in the application, may be registered as a registered user of the above-numbered trade mark in respect of (7) subject to the following conditions or restrictions:—(8)

 (9) The proposed permitted use is to end on

The proposed permitted use is without limit of period.

Applicant’s address for service is (10)

Dated this day of , 19 .

(11) Signature of Proprietor of the Trade Mark.

(11) Signature of the Proposed Permitted User.

To the Registrar of Trade Marks,

Commonwealth of Australia.

(1) Here insert full name, address and description of the proprietor.

(2) Strike out the words which are inapplicable.

(3) Here insert the specification of goods in the register.

(4) Here insert full name, address and description of the proposed registered user. The names of all Partners in a firm must be given in full. In the case of a body corporate brief particulars of the country of incorporation should be stated.

(5) Here insert full trade or business address of the proposed registered user.

(6) Here insert trading style (if any).

(7) Here insert designation of goods (which must be comprised in the specification).

(8) Write ‘None’ if there are no conditions or restrictions.

(9) Strike out words that are not applicable.

(10) Insert an address for service within Australia.

(11) Signature.

Form PB.

“Commonwealth of Australia.

Trade Marks Act 1905-1948.

APPLICATION BY THE REGISTERED PROPRIETOR OF A TRADE MARK FOR VARIATION OF THE REGISTRATION OF A REGISTERED USER THEREOF WITH REGARD TO THE GOODS OR THE CONDITIONS OR RESTRICTIONS (SECTION 31a (9.) OF THE ACT).

(To be accompanied by a statement of the grounds on which the application is made and the written consent (if given) of the registered user.)

Application is hereby made by (1) the proprietor

of Trade Mark No. registered in Class in respect

of (2) that the registration of (3)

as a registered user of the above-numbered trade mark in respect of (4) may be varied in the following manner:—(5)

Dated the day of , 19 

(6)

To the Registrar of Trade Marks,

Commonwealth of Australia.

(1) Here insert the full name, address and description of the registered proprietor.

(2) Here insert the specification in the register.

(3) Here insert the full name, address and description of the registered user.

(4) Here insert the goods in respect of which the user is registered.

(5) Here state in terms the manner in which it is requested that the entry should be varied.

(6) Signature.

Form PC.

“Commonwealth of Australia.

Trade Marks Act 1905-1948.

APPLICATION BY THE REGISTERED PROPRIETOR OF A TRADE MARK OR BY ANY OF THE REGISTERED USERS OF THE TRADE MARK FOR THE CANCELLATION OF ENTRY OF A REGISTERED USER THEREOF (SECTION 31a (9.) OF THE ACT).

(To be accompanied by a statement of the grounds for the application.)

Application is hereby made by (1)being (2)		the
		a
registered proprietor	of the Trade Mark No. registered
registered user

in Class in respect of (3)

for the cancellation of the entry under the above-mentioned registration of (4)

as a registered user of the trade mark in respect of (5)

The grounds for this application are set forth in the accompanying statement.

Dated this day of 19

(6)

To the Registrar of Trade Marks,

Commonwealth of Australia.

(1) Here insert the full name, address and description of the applicant or applicants.

(2) Strike out the words that are not applicable.

(3) Here insert the specification in the register.

(4) Here insert the full name, address and description of the registered user whose entry is sought to be cancelled.

(5) Here insert the goods in respect of which the registered user is entered.

(6) Signature.

Form PD.

“Commonwealth of Australia.

Trade Marks Act 1905-1948.

APPLICATION FOR CANCELLATION OF ENTRY OF A REGISTERED USER OF A TRADE MARK (SECTION 31a (9.) (c) OF THE ACT).

(To be accompanied by a statement of the grounds for the application.)

In the matter of Trade Mark No.

registered in Class in the

name of (1) 

Application is hereby made by (2)(whose address for service in the Commonwealth of Australia in these proceedings is

) for the cancellation of the entry under the above-mentioned

registration of (3)  as the registered user thereof in respect of (4)

The grounds of this application, particulars of which are given in detail in the accompanying statement of case are (5)

Dated this day of 19

(6)

To the Registrar of Trade Marks,

Commonwealth of Australia.

(1) Here insert the name, address and description of the registered proprietor as entered in the register.

(2) Here insert the name, address and description of the applicant for cancellation.

(3) Here insert the name, address and description of the registered user as entered in the register.

(4) Here insert the goods in respect of which the registered user is entered.

(5) Here insert one or more of the sub-paragraphs numbered (i), (ii) and (iii) of paragraph (c) of section 31a (9.) of the Act.

(6) Signature.

Form PE.

“Commonwealth of Australia.

Trade Marks Act 1905-1948.

NOTICE TO THE REGISTRAR OF DESIRE TO BE HEARD IN PROCEEDINGS FOR THE VARIATION OR CANCELLATION OF AN ENTRY OF A REGISTERED USER OF A TRADE MARK UNDER SECTION 31a (9.) OF THE ACT.

(To be accompanied by a statement of the grounds upon which the applicant desires to be heard.)

In the matter of Trade Mark No.

registered in Class in the name of (1) 

and

In the matter of a registration of (2) thereunder as a registered user of the Trade Mark.

In reply to the Registrar’s notification dated the day of 19  notice is hereby given of my desire to be heard in the proceedings in the above matter.

My address for service in the Commonwealth of Australia for these proceedings is

Dated the day of 19

(3)—

To the Registrar of Trade Marks,

Commonwealth of Australia.

(1) Here insert the name of the registered proprietor.

(2) Here insert the name, address and description of the registered user.

(3) Signature.”.

(2.) The Third Schedule to the Trade Marks Regulations 1913 is amended by omitting Form Q and inserting in its stead the following Form:—

Form Q.

“Commonwealth of Australia.

Trade Marks Act 1905-1948.

REQUEST TO ENTER NAME OF SUBSEQUENT PROPRIETOR OF TRADE MARK UPON THE REGISTER, WITH DECLARATION IN SUPPORT THEREOF.

(Place) 

(Date) 

You are hereby requested to enter in the Register of Trade Marks as proprietor of the Trade Mark No. , in Class , the name

of (1) who is entitled to the said Trade Marks(2)	and to
	without

the goodwill of the business concerned in the goods with respect to which the said Trade Mark is registered by virtue of (3)

In proof whereof		I	transmit the accompanying (4) with an attested copy thereof.
		we
I	do solemnly and
We (5)

sincerely declare that the above several statements are true and the particulars above set out comprise every material fact and document affecting the proprietorship of the said Trade Mark as above claimed.

I	make this solemn declaration conscientiously believing it to be true.
We

Dated this day of , 19 .

Declared before me at

 

The

  (6)

day of , 19

(7)

To the Registrar of Trade Marks,

Commonwealth of Australia.

(1) Here insert (in full) name, address, and occupation of applicant or applicants.

(2) Strike out the word or words which are inapplicable.

(3) Here insert particulars showing how transferee derives his title, e.g., in case of assignment set out ‘by virtue of a deed of assignment made between A.B. of the one part and ’ .

(4) Here insert the nature of the document.

(5) Here insert the name, address, and occupation of person making the declaration.

(6) To be signed by the person making the declaration, who must be a person entitled to the trade mark or his agent.

(7) To be signed by a Justice of the Peace or other person authorised by law to administer oaths or take declarations.”.

(3.) The Third Schedule to the Trade Marks Regulations 1913 is amended by inserting after Form R the following Form:—

Form RA.

“Commonwealth of Australia.

Trade Marks Act 1905-1943.

APPLICATION BY REGISTERED USER OF A TRADE MARK FOR CORRECTION OR ALTERATION OF THE REGISTER.

In the matter of Trade Mark No. registered in Class in the name of (1)

and

In the matter of a registration of (2) thereunder as a registered user of the Trade Mark.

Application is hereby made by (3)

as registered user of Trade Mark No. for(4)

for correction or alteration of the Register in the following manner: — (5)

 (6)

To the Registrar of Trade Marks,

Commonwealth of Australia.

(1) Here insert the name of the registered proprietor.

(2) Here insert the name, address and description of the registered user.

(3) Here insert the name, address and description of the registered user.

(4) Here insert the goods in respect of which the registered user is entered.

(5) Here set out desired correction in accordance with section 68 (1a.).

(6) Signature.”.