Trade Marks Amendment Regulations 2004 (No. 2) 2004 No. 194
EXPLANATORY STATEMENT
STATUTORY RULES 2004 NO. 194
Issued by the Authority of the Minister for Industry, Tourism and Resources
Trade Marks Act 1995
Trade Marks Amendment Regulations 2004 (No. 2)
Subsection 231(1) of the Trade Marks Act 1995 (the Act) provides that the Governor-General may make regulations prescribing matters required or permitted by the Act to be prescribed, or 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.
The Regulations amend the list of Convention countries in Schedule 10 to the Trade Marks Regulations 1995 to:
• insert 'Andorra' and 'Bhutan' into the list of Convention countries to reflect the accession of these countries to the Paris Convention for the Protection of Industrial Property;
• replace 'Yugoslavia' with 'Serbia and Montenegro' in the list of Convention countries as a result of the change of name from the Federal Republic of Yugoslavia to Serbia and Montenegro in February 2003;
• delete the reference to the 'United Republic of Tanzania', which is unnecessary because 'Tanzania' is also listed in the Schedule; and
• make some minor changes to the entries in Schedule 4 for Cambodia, Macau, Sao Tome and Principe and Suriname so the entries for these Convention countries accord with the naming formats used by the United Nations and the World Trade Organization.
The effect of these changes is to allow applicants who have filed trade mark applications in the above countries on a particular date to claim that date when they subsequently file an application for their trade mark in Australia.
The Paris Convention, inter alia, enables nationals of Member States to claim the actual date they originally filed their trade mark application as the effective date of filing in other Convention countries (Article 4). However, the application must be filed in other Convention countries within six months of the original filing date in order to obtain priority. One of the advantages of this right of priority is that when a trade mark applicant wishes to obtain trade mark protection in several countries, the applications are not required to be filed at the same time. The applicant has six months to decide in what countries to file applications for protection. As Australia is a member of the Paris Convention, this right also applies to Australian nationals.
The Regulations commence on gazettal.
Overview
The Trade Marks Amendment Regulations 2004 (No. 2) were enacted to update the list of Convention countries under the Trade Marks Act 1995. The Trade Marks Amendment Regulations 2004 (No. 2) were made under the authority of the Minister for Industry, Tourism and Resources and aim to ensure that the regulations align with changes in country names and accession to international agreements such as the Paris Convention for the Protection of Industrial Property. These amendments were necessary to reflect the accession of Andorra and Bhutan to the Paris Convention, the name change of Yugoslavia to Serbia and Montenegro, and to streamline the country listings to match naming formats used by international bodies such as the United Nations and the World Trade Organization. By updating these regulations, the Act facilitates the process for Australian nationals and others to claim priority dates for trade mark applications filed in these countries, thereby simplifying the process of obtaining international trade mark protection.
Scope and Application
The Trade Marks Amendment Regulations 2004 (No. 2) amends the Trade Marks Regulations 1995 under the Trade Marks Act 1995. These regulations apply to entities and individuals who are involved in the filing and processing of trade mark applications in Australia, particularly those that need to rely on the priority date provisions of the Paris Convention. The geographic reach of these regulations extends to international trade and intellectual property, as they involve the updating of the list of Convention countries to reflect changes such as country accessions to the Paris Convention and name changes. The amendments include the addition of Andorra and Bhutan, the replacement of Yugoslavia with Serbia and Montenegro, and the removal of the redundant 'United Republic of Tanzania' entry. These changes ensure consistency with the naming formats used by the United Nations and the World Trade Organization, thus facilitating the international trade mark application process for Australian applicants and those from Convention countries. The Regulations do not specify exclusions, but their application is contingent on the filing of applications within the six-month priority period as stipulated by the Paris Convention.
Key Provisions
The Trade Marks Amendment Regulations 2004 (No. 2) primarily amend the list of Convention countries in Schedule 10 of the Trade Marks Regulations 1995. According to Section 231(1) of the Trade Marks Act 1995, these Regulations are necessary to carry out the Act effectively. The amendments reflect changes in international conventions and the renaming of certain countries. For instance, the Regulations insert Andorra and Bhutan into the list of Convention countries, acknowledging their accession to the Paris Convention for the Protection of Industrial Property. Additionally, the reference to Yugoslavia is replaced with Serbia and Montenegro, reflecting the name change from the Federal Republic of Yugoslavia. The Regulations also remove the redundant reference to the 'United Republic of Tanzania', since 'Tanzania' is already listed. Furthermore, minor changes to the entries for Cambodia, Macau, Sao Tome and Principe, and Suriname ensure consistency with naming formats used by the United Nations and the World Trade Organization.
These amendments impose certain obligations on trade mark applicants who wish to benefit from the Paris Convention's right of priority. Specifically, applicants must file their trade mark applications in the designated Convention countries within six months of the original filing date to claim priority. This provision allows applicants to file applications in multiple countries at their discretion, without the need to file simultaneously. This flexibility is particularly beneficial for applicants seeking trade mark protection in several jurisdictions. Australia, being a member of the Paris Convention, also adheres to these rules, ensuring that Australian nationals can avail themselves of the priority date in other Convention countries.
Failure to comply with the provisions of the Trade Marks Act 1995 and the Trade Marks Amendment Regulations 2004 (No. 2) can result in various consequences. While the specific offences and penalties are not detailed in the explanatory statement, breaches of trade mark laws generally carry significant civil and criminal penalties. These may include fines, imprisonment, and the possibility of the trade mark being declared invalid. The exact penalties can vary depending on the nature and severity of the breach, but they underscore the importance of adhering to the stipulated timelines and requirements for filing trade mark applications and claiming priority rights.