Trade Marks Amendment Regulations 1999 (No. 2)

Administered by Department of Resources, Energy and Tourism

Legislation au F1999B00179 Regulations Not in force Legislative Instrument

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Trade Marks Amendment Regulations 1999 (No. 2) 1999 No. 186

EXPLANATORY STATEMENT

STATUTORY RULES 1999 No. 186

Issued by the Authority of the Minister for Industry, Science and Resources

Trade Marks Act 1995

Trade Marks Amendment Regulations 1999 (No. 2)

The regulations amend the Trade Marks Regulations 1995 (the Regulations) to:

*       provide that the deferment period in relation to a request under subregulation 4.13(1) begins on the date the Trade Marks Office receives the request;

*       clarify that the Registrar of Trade Marks (the Registrar) is not required to give notice of an application under section 92 of the Act until the application fully complies with the requirements of the Act and Regulations;

include filing notice of a claim to a right of priority and applying for the registration of a trade mark registration under subsection 29(1) of the Act, and requesting deferment of acceptance as prescribed acts for the purposes of section 224 of the Act;

*       provide that a Community trade mark application is equivalent to an application made in a Convention country party to the Treaty Establishing the European Community;

*       update the schedules that modify the operation of Part 13 of the Act in relation to the External Territories;

*       clarify that the fee prescribed in item 12 of Schedule 8 to the Regulations applies only to counsel's attendance at a hearing; and

*       alter the hours of business of the Trade Marks Office specified in the Regulations.

Details of the amendments made by these regulations are as follows:

Regulation 1 identifies these regulations as the Trade Marks Amendment Regulations 1999 (No. 2).

Regulation 2 specifies that regulations 1, 2, 3 and Schedule 1 are to commence on gazettal; Schedule 2 is to commence on 6 September 1999.

Regulation 3 specifies that Schedules 1 and 2 amend the Regulations.

Item 1 of Schedule 1 amends regulation 4.14 of the Regulations to provide that the period of deferment under subregulation 4.13(1) commences on the date the Trade Marks Office receives the request.

Item 2 of Schedule 1 amends paragraph 4.14(3)(b) of the Regulations so that the period of deferment ends 6 months after deferment commences, rather than 6 months after the date of the notice of deferment.

Item 3 of Schedule 1 amends regulation 9.2 of the Regulations to clarify that the Registrar is to give notice of an application under section 92 of the Act within one month after the application is made in accordance with the requirements of the Act and Regulations.

Item 4 of Schedule 1 amends note 2 to regulation 13.2 of the Regulations, to replace the reference to 'Comptroller' with a reference to 'Customs CEO'.

Item 5 of Schedule 1 amends the heading to regulation 13.3 of the Regulations to replace the reference to 'Comptroller' with a reference to 'Customs CEO'.

Item 6 of Schedule 1 amends regulation 21.28 of the Regulations to clarify that both filing notice of a claim to priority and applying for registration of a trade mark within the six month period provided under subsection 29(1), are prescribed acts for the purposes of section 224 of the Act.

Item 7 of Schedule 1 amends regulation 21.28 of the Regulations to include the requesting of deferment of acceptance under subregulation 4.13(1), as a prescribed act for the purposes of section 224 of the Act.

Item 8 of Schedule 1 amends regulation 21.29 of the Regulations to include a new subregulation to provide that a Community trade mark application is equivalent to an application made in each Convention country party to the Treaty Establishing the European Community.

Items 9, 10 and 12 of Schedule 1 amend items 2.1, 3.2 and 4.1 of Schedule 3 to the Regulations to replace the references to 'Customs Ordinance 1913', with 'Customs Act 1913 of Norfolk Island'.

Item 11 of Schedule 1 amends item 4.1 of Schedule 3 to the Regulations to replace the reference to 'Minister' with 'Executive Member'.

Items 13, 14 and 15 of Schedule 1 amend Schedule 4 to the Regulations, to substitute 'Customs CEO' with 'Comptroller'.

Items 16, 17 and 18 of Schedule 1 amend Schedule 5 to the Regulations, to substitute 'Customs CEO' with 'Comptroller .

Item 19 of Schedule 1 amends item 12 of Schedule 8 to the Regulations to clarify that the fee specified in this item only applies to counsel's attendance at a hearing.

Item 20 of Schedule 1 amends regulations 13.3, 21.22, 21.23 and Schedule 3 to the Regulations, to replace the references to 'Comptroller' with 'Customs CEO'.

Item 1 of Schedule 2 amends regulation 19.1 to extend the hours of business of the Trade Marks Office, from 10 am to 4 pm, to 9 am to 5 pm.

 

Overview

The Trade Marks Amendment Regulations 1999 (No. 2) were enacted to amend the Trade Marks Regulations 1995, providing a framework for the administration of trade marks in Australia. These regulations were introduced to address various issues and clarify certain aspects of the trade mark application and registration process, thereby enhancing the efficiency and effectiveness of the Trade Marks Office. Enacted by the Parliament of Australia under the authority of the Minister for Industry, Science and Resources, the primary objective of these regulations is to streamline processes, update terminology, and ensure compliance with international trade mark practices. The changes introduced by these regulations aim to improve the clarity and enforceability of trade mark law, ensuring that the system remains current with both domestic and international developments.

Scope and Application

The Trade Marks Amendment Regulations 1999 (No. 2) primarily apply to the administration and regulation of trade marks in Australia under the Trade Marks Act 1995. These regulations affect entities and individuals involved in the registration, maintenance, and enforcement of trade marks, as well as the operations of the Trade Marks Office. The amendments clarify procedures such as the deferment of acceptance for applications, the timing of notifications to applicants, and the equivalence of Community trade mark applications to those made in Convention countries. The regulations also update schedules that modify the operation of Part 13 of the Act in relation to External Territories, and they adjust the fee structure for counsel's attendance at hearings. The regulations extend to the Commonwealth of Australia and are applicable nationwide, but they also reference changes for Norfolk Island and other External Territories. The regulations do not specify any exclusions or exemptions, and their application is further defined and possibly extended through subordinate instruments such as further regulations or notifications under the Trade Marks Act 1995.

Key Provisions

The Trade Marks Amendment Regulations 1999 (No. 2) introduce several significant changes to the Trade Marks Regulations 1995, primarily aiming to refine and clarify the processes involved in the application and management of trade marks. Under regulation 4.14 (item 1 of Schedule 1), the deferment period for a request under subregulation 4.13(1) now starts on the date the Trade Marks Office receives the request. Regulation 9.2 (item 3 of Schedule 1) stipulates that the Registrar is not required to notify an application under section 92 of the Trade Marks Act 1995 until the application fully complies with the Act and Regulations. Additionally, regulation 21.28 (item 6 of Schedule 1) now includes filing notice of a claim to a right of priority and applying for the registration of a trade mark as prescribed acts under section 224 of the Act. These regulations impose specific obligations on applicants and the Registrar. Applicants must ensure their applications fully comply with the requirements of the Trade Marks Act and the Regulations before the Registrar is mandated to notify the application (regulation 9.2). Furthermore, applicants must adhere to the prescribed timelines for filing notice of a claim to priority and applying for registration within six months as stipulated under regulation 21.28 (item 6 of Schedule 1). The Registrar, on the other hand, must wait until an application complies with the Act and Regulations before issuing a notice of application (regulation 9.2). The Trade Marks Amendment Regulations 1999 (No. 2) do not explicitly state specific penalties or consequences for non-compliance with these regulations. However, non-compliance with the Trade Marks Act 1995 or its associated regulations could lead to civil or criminal consequences, including fines and imprisonment, depending on the nature and severity of the breach. The penalties for infringement or non-compliance are generally outlined in the Trade Marks Act itself, where contraventions may incur penalties that can be significant, depending on the circumstances of the breach.

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Intellectual Property Law
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Regulation
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Repeal & Amendment
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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.