Trade Marks Regulations (Amendment) (Cth)

Statutory Rules 1992

No. 150 1

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Trade Marks Regulations2(Amendment)

I, The Governor-General of the Commonwealth of Australia, acting with the advice of the Federal Executive Council, make the following Regulations under the Trade Marks Act 1955.

 Dated 1 June 1992.

 

 BILL HAYDEN

 Governor-General

 By His Excellency’s Command,

  

ROSS FREE

Minister of State for Science and Technology

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1.   Commencement

1.1   Regulations 4, 5, 6, 7 and 9 commence on 1 July 1992.

[NOTE: The remainder of these Regulations commence on gazettal: see Acts Interpretation Act 1901, s.48]

2.   Amendment

2.1   The Trade Marks Regulations are amended as set out in these Regulations.

3.   New regulation 4a

3.1   After regulation 4, insert in Part II:

Exemption from, and refund of, certain fees

 “4a.(1)  The Registrar may:

• (a)

  exempt a person from the payment of a fee; or

• (b)

  remit any part of a fee; or

• (c)

  refund the whole or any part of a fee paid in respect of the lodgement of a document;

if the Registrar is reasonably satisfied that the action is justified, having regard to all the circumstances.

 “(2) If:

• (a)

  acceptance of an application for registration; or

• (b)

  registration;

of a trade mark has been delayed because of an error or omission on the part of an officer of, or employee in, the Trade Marks Office, the period that is, in the reasonable opinion of the Registrar, equal to the period of the delay that resulted from the error or omission is not, for the purpose of ascertaining the amount of a fee, to be taken into account.”.

4.   Regulation 52 (Costs)

4.1   Omit the regulation.

5.   New regulation 71a

5.1   After regulation 71, insert:

Costs

 “71a.(1)  The Registrar must not award costs, other than costs specified in Schedule 6, unless each party to the proceedings has had the reasonable opportunity to make a submission on the matter of the award of those costs.

 “(2) The Registrar may award an amount:

• (a)

  for costs in respect of a matter specified in column 2 of an item in Part 1 of Schedule 6; or

• (b)

  in respect of the expenses or allowances of a person in relation to any proceedings before the Registrar.

 “(3) An amount referred to in subregulation (2) must be taxed allowed and certified, by an officer of, or an employee in, the Trade Marks Office appointed by the Registrar for that purpose, in accordance with:

• (a)

  the amount specified in column 3 of that item; or

• (b)

  Part 2 in Schedule 6;

as the case may be.

 “(4)A taxation of costs is subject to review by the Registrar.”.

6.   Schedule 2 (Fees)

6.1   Omit the Schedule, substitute:

SCHEDULE 2 Regulation 4

FEES

Column 1 Item No.	Column 2 Matter	Column 3 Fee
1	On lodging:
(a) on a day, an application to register a trade mark, or a series of trade marks, in respect of goods or services in a prescribed class of goods or services	$150
(b) on the same day, an application to register the same trade mark, or the same series of trade marks, in respect of goods or services in another prescribed class of goods or services	$90
2	For registration of a trade mark or a series of trade marks—for each prescribed class of goods or services in which the goods or services in respect of which registration is effected are included	$260
3	On lodging:
(a) an application under section 19, 20, 21 or 23, subsection 36 (2) or section 74, 75, 87 or 127 of the Act, other than an application:	$55
(i) for cancellation of the entry of a trade mark; or
(ii) to enter a change of an address; or
(iii) to which the fee under paragraph (b) applies
(b) simultaneously, 2 or more applications under section 19, 21, 74, 75 or 87 of the Act that are to the same effect in respect of each trade mark to which the applications relate, other than an application referred to in subparagraph (a) (i) or (ii)	$55, plus $25 for each application after the first

SCHEDULE 2—continued

 

Column 1 Item No.	Column 2 Matter	Column 3 Fee
4	On lodging notice of opposition under subsection 21 (3) or 49 (1) or paragraph 139 (4) (c) of the Act or subregulation 19 (3), 22 (4), 28 (5) or 30 (2)	$90
5	On application under paragraph 47 (1) (b) to lodge further evidence in opposition proceedings	$45
6	On appearing at a hearing under regulation 50 or 72	$80
7	On lodging a request under regulation 76	$80
8	On lodging an application for restoration under subsection 71 (1) of the Act	$185
9	On lodging an application under section 69 of the Act for renewal of the registration of a trade mark	$490
10	For supply of a certificate under subsection 17 (2) or (3) of the Act:
(a) for the first certificate	$75
(b) for each additional certificate that is the same, and supplied at the same time, as the first certificate	$55
11	For supply under subsection 17 (2) of the Act of an uncertified photographic copy of, or extract from, the Register or another document	$10
12	On lodging an application under the Act or Regulations for an extension of a time:
(a) if the application is lodged before the end of the time to be extended—for each month or part of a month for which the extension is granted	$55
(b) if the application is lodged after the time to be extended	$85, plus the amount payable under paragraph (a)
13	For taxing costs	$45

7.   Transitional

7.1   If the Registrar:

• (a)

  accepted an application for registration of a trade mark before 1 July 1992; and

• (b)

  registered the trade mark on or after 1 July 1992;

the fee for the registration is the fee payable under the Trade Marks Regulations as in force immediately before 1 July 1992.

8.   Schedule 4a (Convention countries for the purposes of the Act)

8.1   After “Gabon”, insert “Gambia”.

9.   New Schedule 6 (Costs, expenses and allowances)

9.1   After Schedule 5, insert:

 SCHEDULE 6Regulation 71a

 

COSTS, EXPENSES AND ALLOWANCES

PART 1—COSTS

 

Column 1 Item	Column 2 Matter	Column 3 Fee
1	Notice of opposition	$165
2	Evidence in support	$430
3	Receiving and perusing notice of opposition	$80
4	Receiving and perusing evidence in support	$185
5	Evidence in answer	$430
6	Receiving and perusing evidence in answer	$130
7	Evidence in reply	$215
8	Receiving and perusing evidence in reply	$80
9	Preparation of case for hearing	$325
10	Attendance at hearing by patent attorney, trade marks agent or solicitor without counsel	$165 per hour or $735 per day
11	Attendance at hearing by patent attorney, trade marks agent or solicitor instructing counsel	$130 per hour or $590 per day

SCHEDULE—continued

 

Column 1 Item	Column 2 Matter	Column 3 Fee
12	Counsel fees	$215 per hour or $970 per day

PART

 2—EXPENSES AND ALLOWANCES

Division 1—Expenses

 1. A person who has paid a fee prescribed in these Regulations in relation to proceedings before the Registrar may be paid the amount of the fee.

 2. A person attending proceedings before the Registrar must be paid a reasonable amount for allowances for:

• (a)

  transport between the usual place of residence of the person and the place that he or she attends for that purpose; and

• (b)

  if he or she is required to be absent overnight from his or her usual place of residence—meals and accommodation;

up to a daily maximum of $370.

Division 2—Allowances

 3. A person summoned to appear as a witness, because of his or her professional, scientific or other special skill or knowledge, before the Registrar must be paid:

• (a)

  if the person is remunerated in his or her occupation by wages, salary or fees—an amount equal to the amount of wages, salary or fees not paid to the person because of his or her attendance for that purpose; and

• (b)

  in any other case—an amount of not less than $92, or more than $462, for each day on which he or she so attends.

4. A person summoned to appear as a witness, other than a witness referred to in clause 3, before the Registrar must be paid:

• (a)

  if the person is remunerated in his or her occupation by wages, salary or fees—an amount equal to the amount of wages, salary or fees not paid to the person because of his or her attendance for that purpose; and

• (b)

  in any other case—an amount of not less than $52, or more than $86, for each day on which he or she so attends.

NOTES

1. Notified in the Commonwealth of Australia Gazette on 9 June 1992.

2. Statutory Rules 1958 No. 48 as amended by 1961 No. 36; 1973 No. 289; 1975 No. 202; 1977 No. 11 and 109; 1980 No. 319; 1982 Nos. 79 and 234; 1983 No. 312; 1984 No. 255; 1986 Nos. 261 and 262; 1987 No. 13; 1988 No. 102; 1989 Nos. 94 and 312; 1990 Nos. 30 and 241; 1991 Nos. 64 and 454.