Trade Marks Amendment Regulations 2002 (No. 1) 2002 No. 318
Statutory Rules 2002 No. 318
EXPLANATORY STATEMENT
Issued by the Authority of the Minister for Industry, Tourism and Resources
Trade Marks Act 1995
Trade Marks Amendment Regulations 2002 (No. 1)
Section 231 of the Trade Marks Act 1995 (the Act) provides that the Governor-General may make regulations for the purposes of the Act, for prescribing matters necessary or convenient to be prescribed for carrying out or giving effect to the Act and for the conduct of any business relating to the Trade Marks Office.
Subsection 225(1) of the Act provides that the regulations may declare a foreign country to be a Convention country for the purposes of the Act.
Where an initial application to register a trade mark under the Act has been amended to exclude goods and/or services, section 49 of the Act allows for a further application - a divisional application - to be made in relation to the excluded goods and/or services. Under regulation 6.4 of the Trade Marks Regulations the Registrar of Trade Marks is required to notify certain parties of the amendment, including the person who applied for the amendment. Regulation 4.17 currently sets the period in which the divisional application may be made at one month from the date of this notification. This is considered unduly restrictive.
In 1999 the Patents Regulations 1991 were amended to make mandatory the removal on request from, or restoration on request and payment of the appropriate fee within the prescribed period, of a person's name to the Register of Patent Attorneys. However, similar provisions were not changed in the Trade Marks Regulations 1995.
The purpose of the Regulations is to allow a divisional application for a trade mark application to be made any time from the date on which the amendment is requested to one month after the date of notification of the amendment. The purpose is also to make mandatory the removal from, or restoration of a person's name to, the Register of Trade Mark Attorneys if the preconditions are met, and to add the Seychelles to the list of Convention countries as a result of its recent accession to the Paris Convention for the Protection of Industrial Property (Paris Convention).
The Paris Convention enables nationals of member states to claim the date they first filed their application for a design as the date of filing in other Convention countries (Article 4). However, the applications must be filed in other Convention countries within 6 months of the filing date in the first country in order to obtain priority. One of the advantages of the right of priority is that when an applicant desires protection in more than one country, the applications are not required to be filed at the same time. The applicant has 6 months to decide which countries in which they wish to file applications and take any appropriate steps to gain protection. As Australia is a member of the Paris Convention this right also applies to Australian nationals filing applications overseas.
Details of the Regulations are in the Attachment.
Regulations 1 - 3 and Schedule 1 would commence on gazettal.
Attachment
Trade Marks Amendment Regulations 2002 (No. 1)
Regulation 1 identifies the Regulations as the Trade Marks Amendment Regulations 2002 (No.1).
Regulation 2 specifies that the Regulations are to commence on gazettal.
Regulation 3 provides Schedule 1 amends the Trade Marks Regulations.
Item 1 of Schedule 1 amends regulation 4.17 of the Trade Marks Regulations to extend the time period in which certain divisional applications can be made.
The current period under regulation 4.17 is too restrictive, so this item proposes to amend regulation 4.17 to allow the divisional application to be made at any time from the date on which the amendment is requested to one month after the date of the notification of the amendment.
Items 2 and 3 of Schedule 1 amends regulations 20.8 and 20.9 of the Trade Marks Regulations to make it clear that these provisions are mandatory, not discretionary. That is, if the specified preconditions are met the Designated Manager must restore a person's name to, or remove a person's name from, the Register of Trade Marks Attorneys.
Item 4 of Schedule 1 amends Schedule 10 to the Trade Mark Regulations to include the Seychelles in the list of Convention countries. This will reflect the fact that the Seychelles has acceded to the Paris Convention for the Protection of Industrial Property.
Overview
The Trade Marks Amendment Regulations 2002 (No. 1) were enacted to amend the Trade Marks Regulations 1995, providing flexibility in the process of making divisional applications for trade marks, updating the list of Convention countries, and formalising the procedure for managing entries in the Register of Trade Mark Attorneys. Enacted under the authority of the Minister for Industry, Tourism and Resources, these regulations aim to better align the trade marks legislative framework with international conventions and practical application processes. The primary objective is to ensure that trade mark applicants have a reasonable timeframe to file divisional applications after an amendment is made to exclude certain goods and/or services. Additionally, these regulations mandate the removal or restoration of a person's name from the Register of Trade Mark Attorneys upon meeting specified conditions, thereby reflecting changes already implemented in the Patents Regulations 1991. Furthermore, the regulations update the list of Convention countries to include the Seychelles, recognising its accession to the Paris Convention for the Protection of Industrial Property.
Scope and Application
The Trade Marks Amendment Regulations 2002 (No. 1) amends the Trade Marks Regulations 1995, applying to individuals and entities involved in the registration and management of trade marks in Australia. This regulation is pertinent to trade mark attorneys and applicants who seek to file divisional applications or have their names added to or removed from the Register of Trade Mark Attorneys. Geographically, the regulation applies nationally within Australia, aligning with the provisions set out in the Trade Marks Act 1995. The amendments seek to extend the time period for making divisional applications, clarify the mandatory nature of certain actions concerning the Register of Trade Mark Attorneys, and update the list of Convention countries to include the Seychelles, reflecting its accession to the Paris Convention. Exclusions or exemptions are not explicitly stated within the explanatory statement, but the regulation's adjustments are focused on streamlining the application process and ensuring consistency with other intellectual property regulations. The application of these regulations is further extended or restricted through subordinate instruments as necessary to implement the changes outlined.
Key Provisions
The Trade Marks Amendment Regulations 2002 (No. 1) introduce significant changes to the Trade Marks Regulations 1995. The Regulations, as identified in Regulation 1, are designed to amend the Trade Marks Regulations to address certain procedural and administrative aspects of trade mark applications. Regulation 2 confirms that these Regulations will commence on the date of their gazette, ensuring that the changes take effect immediately. Regulation 3 states that Schedule 1 will amend the Trade Marks Regulations.
The main operative sections of these Regulations, found in Schedule 1, include amendments to Regulation 4.17, which extends the time period for making a divisional application for a trade mark. Under the current regulation, a divisional application must be made within one month from the notification of the amendment to the initial application. However, this period is considered too restrictive. Therefore, Regulation 1 of Schedule 1 proposes to allow the divisional application to be made at any time from the date on which the amendment is requested to one month after the date of the notification of the amendment, thus providing more flexibility for applicants.
Additionally, Regulations 2 and 3 of Schedule 1 clarify that certain provisions regarding the Register of Trade Mark Attorneys are mandatory, not discretionary. Specifically, if the preconditions are met, the Designated Manager must restore a person’s name to, or remove a person’s name from, the Register of Trade Marks Attorneys. This change ensures that the removal or restoration of names from the Register is not left to the discretion of the Designated Manager, but is instead required by law when certain conditions are fulfilled.
Regulation 4 of Schedule 1 includes an amendment to Schedule 10 of the Trade Marks Regulations to add the Seychelles to the list of Convention countries. This amendment reflects the Seychelles' recent accession to the Paris Convention for the Protection of Industrial Property. As a result, Australian trade mark applicants can now benefit from the right of priority in Seychelles, similar to other member states of the Paris Convention.
The obligations and requirements imposed by these Regulations are primarily on the Registrar of Trade Marks and the Designated Manager. For instance, the Registrar must now notify certain parties of an amendment to an initial trade mark application, including the person who applied for the amendment, as required by Regulation 6.4 of the Trade Marks Regulations. Furthermore, the Designated Manager must act in accordance with the mandatory provisions of Regulations 20.8 and 20.9, ensuring that names are removed from or restored to the Register of Trade Marks Attorneys when the specified conditions are met.
Regarding potential offences, penalties, or consequences for breach, the Regulations themselves do not explicitly outline specific penalties for non-compliance. However, the Trade Marks Act 1995 and associated regulations could impose penalties for breaches of the Act or its regulations. For instance, making a false statement or representation in relation to a trade mark application could lead to criminal penalties under section 122 of the Act, including fines and imprisonment. Similarly, failing to comply with the mandatory provisions regarding the Register of Trade Mark Attorneys might result in legal action or administrative penalties as outlined in the Act. The exact penalties would depend on the nature and severity of the breach.