Trade Marks Amendment (Madrid Protocol) Act 2000

Administered by Department of Industry, Science and Resources

Legislation au C2004A00709 In force Act

Legislation content

 

 

 

 

Trade Marks Amendment (Madrid Protocol) Act 2000

 

No. 117, 2000

 

 

 

 

Trade Marks Amendment (Madrid Protocol) Act 2000

 

No. 117, 2000

 

 

 

 

An Act to amend the Trade Marks Act 1995, and for related purposes

 

 

Contents

1 Short title...................................

2 Commencement...............................

3 Schedule(s)..................................

Schedule 1—Protected international trade marks under the Madrid Protocol

Trade Marks Act 1995

 

Trade Marks Amendment (Madrid Protocol) Act 2000

No. 117, 2000

 

 

 

An Act to amend the Trade Marks Act 1995, and for related purposes

[Assented to 7 September 2000]

The Parliament of Australia enacts:

1  Short title

  This Act may be cited as the Trade Marks Amendment (Madrid Protocol) Act 2000.

2  Commencement

 (1) Subject to subsection (2), this Act commences on a day to be fixed by Proclamation.

 (2) If this Act does not commence under subsection (1) within the period of 12 months beginning on the day on which it receives the Royal Assent, it commences on the first day after the end of that period.

3  Schedule(s)

  Each Act that is specified in a Schedule to this Act is amended or repealed as set out in the applicable items in the Schedule concerned, and any other item in a Schedule to this Act has effect according to its terms.


Schedule 1—Protected international trade marks under the Madrid Protocol

 

Trade Marks Act 1995

1  Section 6 (at the end of the definition of registered trade mark)

Add:

Note: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

2  At the end of subsection 20(1)

Add:

Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

3  At the end of subsection 44(1)

Add:

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

4  At the end of subsection 44(2)

Add:

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

5  At the end of subsection 120(1)

Add:

Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

6  At the end of subsection 120(2)

Add:

Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

7  At the end of subsection 120(3)

Add:

Note 4: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

8  At the end of subsection 121(1)

Add:

Note 4: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

9  At the end of section 131

Add:

Note: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

10  At the end of subsection 145(1)

Add:

Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

11  At the end of subsection 146(1)

Add:

Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

12  At the end of section 148

Add:

Note 4: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

13  At the end of subsection 151(4)

Add:

Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

14  After Part 17

Insert:

Part 17A—Protected international trade marks under the Madrid Protocol

 

189A  Regulations implementing the Madrid Protocol

 (1) The regulations may provide for such matters as are necessary to enable the performance of the obligations of Australia, or to obtain for Australia any advantage or benefit, under the Madrid Protocol.

 (2) In particular (but without limiting subsection (1)), the regulations may deal with the following matters:

 (a) the procedure for dealing with applications for international registration of trade marks that are to be filed with the International Bureau through the intermediary of the Trade Marks Office;

 (b) the procedure for dealing with requests to extend to Australia the protection resulting from international registration of trade marks;

 (c) the protection given to protected international trade marks in Australia;

 (d) the circumstances in which such protection ceases and the procedures to be followed in cases of cessation;

 (e) the cancellation of an international registration at Australia’s request, as contemplated by Article 6 of the Madrid Protocol;

 (f) the effect of cancelling an international registration.

 (3) Regulations made for the purposes of this section:

 (a) may be inconsistent with this Act; and

 (b) prevail over this Act (including any other regulations or other instruments made under this Act), to the extent of any inconsistency.

 (4) In this section:

International Bureau means the International Bureau of the World Intellectual Property Organization.

international registration of a trade mark means registration of the mark in the register of the International Bureau.

Madrid Protocol means the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks, as signed at Madrid on 28 June 1989.

protected international trade mark means a trade mark to which protection resulting from international registration of the mark is extended in Australia in accordance with the regulations.

 

 

(118/00)


 

 

 

 

 

 

 

 

 

 

 

 

 

[Minister’s second reading speech made in—

House of Representatives on 28 June 2000

Senate on 17 August 2000]

 

Overview

The Trade Marks Amendment (Madrid Protocol) Act 2000 was enacted by the Parliament of Australia to amend the Trade Marks Act 1995 and address the need to facilitate the international registration of trademarks through the Madrid Protocol. This legislation was designed to harmonise and streamline the process of registering trademarks internationally, thereby reducing the complexity and cost associated with obtaining trademark protection in multiple jurisdictions. The Act specifically aims to incorporate the provisions of the Madrid Protocol into Australian law, allowing for the extension of international trademark registrations to Australia and ensuring that Australian trademark law is aligned with international standards. The policy objective of the Trade Marks Amendment (Madrid Protocol) Act 2000 is to enable Australia to meet its obligations under the Madrid Protocol and to secure any benefits that may arise from its implementation. By aligning Australian trademark law with the provisions of the Madrid Protocol, the Act seeks to provide a more efficient and cost-effective means for businesses to protect their trademarks in multiple countries, thereby fostering greater international trade and investment. The regulations under this Act are intended to govern the procedures for filing applications for international registration, extending international registrations to Australia, and the protection and cancellation of such registrations, ensuring a seamless integration of the Madrid Protocol into the Australian legal framework.

Scope and Application

The Trade Marks Amendment (Madrid Protocol) Act 2000 amends the Trade Marks Act 1995 to facilitate the international registration of trademarks under the Madrid Protocol. This Act applies to entities seeking to register trademarks internationally and extends the protection of these marks within Australia. The provisions of the Act apply throughout Australia, as it is a Commonwealth Act. It does not specify any exclusions, exemptions, or thresholds for the application of its provisions, but instead leaves the detailed implementation to regulations. These regulations may include provisions for the procedure of international trademark applications, the extension of international registrations to Australia, the protection of such trademarks, and the circumstances under which such protection may cease. The regulations can also address the cancellation of international registrations and the effect of such cancellations. The Act explicitly states that any regulations made under its authority may override provisions in the Trade Marks Act 1995 or other regulations made under the Act, in the case of any inconsistency.

Key Provisions

The Trade Marks Amendment (Madrid Protocol) Act 2000 amends the Trade Marks Act 1995, primarily to incorporate the Madrid Protocol Relating to the International Registration of Marks, signed in 1989. The Act introduces new provisions to facilitate international registration of trademarks, extending their protection to Australia. Section 189A outlines the regulations that may be made under the Act to implement the Madrid Protocol. These regulations can include procedures for handling international registration applications, requests to extend international registration protection to Australia, the protection afforded to protected international trademarks in Australia, circumstances under which such protection ends, cancellation of international registrations, and the effects of such cancellations. This provision allows for the flexibility to tailor the implementation of the Madrid Protocol to Australia's specific needs and circumstances. The Act imposes several obligations on the parties involved. Firstly, it mandates that any regulations made under the Act may provide for matters necessary to fulfill Australia's obligations under the Madrid Protocol and to secure any benefits for Australia. This includes establishing procedures for the application of international registration, requests for extending international registration protection to Australia, the protection of international trademarks, and the circumstances and processes for the cessation of such protection. Additionally, the Act requires that regulations can be inconsistent with the Trade Marks Act 1995 and prevail over it to the extent of any inconsistency. This ensures that the new provisions under the Madrid Protocol can be effectively implemented without being constrained by existing legislation. Failure to comply with the provisions of the Trade Marks Amendment (Madrid Protocol) Act 2000 can result in various legal consequences. While the Act itself does not explicitly state the penalties for breaches, the Trade Marks Act 1995 provides a framework for potential civil and criminal penalties. For instance, under section 126 of the Trade Marks Act 1995, it is an offence to use a trade mark that is deceptively similar to another registered trade mark, potentially leading to fines. Similarly, section 127 of the same Act makes it an offence to register a trade mark that is deceptively similar to an existing one, with potential fines and imprisonment. The penalties can vary depending on the severity of the infringement, with maximum penalties specified under the Trade Marks Act 1995 for various offences. These provisions underscore the importance of adhering to the regulations and obligations set forth by the Act to avoid legal repercussions.

Legal classification tags

Area of Law
Intellectual Property Law
Instrument
Act
Concepts
Commencement Provisions
Protected international trade marks under the Madrid Protocol
Regulations implementing the Madrid Protocol

Interactions

Authorises

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Sourced from the Federal Register of Legislation at 26 August 2026. For the latest information on Australian Government law please go to https://www.legislation.gov.au.