EXPLANATORY STATEMENT
Select Legislative Instrument 2006 No. 356
Issued by the Authority of the Minister for Industry, Tourism and Resources
Trade Marks Act 1995
Trade Marks Amendment Regulations 2006 (No. 1)
Section 231 of the Trade Marks Act 1995 (the Act) provides in part that the Governor-General may make regulations for the purposes of the Act, prescribing matters required or permitted by the Act to be prescribed.
Section 189A of the Act states that regulations may provide for such matters as are necessary to enable the performance of the obligations of Australia, or to obtain any advantage or benefit, under the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks (the Madrid Protocol) signed by Australia at Madrid on 28 June 1989.
The main purpose of the Regulations is to ensure that certain amendments made to the Act by Part 1 of Schedule 1 to the Trade Marks Amendment Act 2006 (the Amendment Act) apply appropriately to trade marks governed by Part 17A of the Trade Marks Regulations 1995 (the Principal Regulations). Part 17A of the Principal Regulations is made under the provisions of section 189A of the Act and deals with protected international trade marks under the Madrid Protocol.
Since the commencement of Part 1 of Schedule 1 to the Amendment Act on 23 October 2006, the law applying to the opposition to registration and removal of trade marks under the general provisions of the trade marks legislation has differed from the law applying to trade marks governed by Part 17A of the Principal Regulations. This complicates the administration of the trade marks legislation, which, as far as possible, is required to be the same for both classes of marks. It may also confuse foreign trade mark owners who own some trade marks governed by the general provisions and some trade marks governed by Part 17A of the Regulations. The Regulations remove this confusion and provide consistency of treatment between these classes of trade marks.
A further purpose of the Regulations is to update the list of classes of goods and services in respect of which a trade mark may be registered, set out in Schedule 1 to the Principal Regulations.
Australia is party to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 1957, later revised at Stockholm in 1967 and at Geneva in 1977 and amended in 1979 (the Nice Agreement). Every five years the International Classification of Goods and Services (Nice Classification) is reviewed and updated by the Committee of Experts of the Special Union for the International Classification of Goods and Services for the Purposes of Registration of Marks (Nice Union).
The Twentieth Session of the Nice Union held in 2005 approved a number of changes to the Nice Classification, for implementation with effect from 1 January 2007. These include changes to certain class headings. As Australia lists the class headings in Schedule 1 to the Principal Regulations, it is necessary to update that Schedule with effect from 1 January 2007.
In summary, the amending Regulations:
amend Part 17A of the Principal Regulations to ensure that the changes made to the Act by Part 1 of Schedule 1 to the Amendment Act apply appropriately to international registrations designating Australia and to protected international trade marks; and
amend three class headings in Schedule 1 to the Principal Regulations to give effect to the changes to the Nice Classification approved at the 2005 Nice Union.
The following public consultations were undertaken in relation to matters contained in Schedule 1 of the amending Regulations:
a consultation paper was circulated to key stakeholders; and
the consultation paper was also published on IP Australia’s website inviting public comment.
Consultations were not undertaken in relation to matters contained in Schedule 2 of the amending Regulations which give effect to the changes to the Nice Classification approved at the 2005 Nice Union. These changes merely meet an obligation under an international agreement by repeating or adopting the terms of all or part of an instrument for which the agreement provides, and are not likely to have a direct or a substantial indirect effect on business and are not likely to restrict competition.
Details of the amending Regulations are in the Attachment.
Regulations 1 to 4 and Schedule 1 commence on the day after they are registered on the Federal Register of Legislative Instruments. Regulations 5 and 6 and Schedule 2 commence on 1 January 2007, the date the changes to the Nice Classification come into effect.
ATTACHMENT
Details of the Trade Marks Amendment Regulations 2006 (No. 1)
Regulation 1 — Name of Regulations
This regulation provides that the title of the Regulations is the Trade Marks Amendment Regulations 2006 (No. 1).
Regulation 2 — Commencement
This regulation provides for:
Regulations 1 to 4 and Schedule 1 to commence on the day after they are registered on the Federal Register of Legislative Instruments; and
Regulations 5 and 6 and Schedule 2 to commence on 1 January 2007.
Regulation 3 — Schedule 1
This regulation specifies that Schedule 1 amends the Trade Marks Regulations 1995.
Regulation 4 — Schedule 1 — transitional
This regulation provides for transitional arrangements in relation to the amendments that made by Schedule 1. The amendments to items [1] and [2] of Schedule 1 apply to all IRDAs that have not been accepted or rejected at the commencement of these Regulations. Subregulation 4(2) explains that IRDA has the meaning given by regulation 17A.2 of the Principal Regulations. This is an international registration designating Australia – a request, made under Article 3ter (1) or (2) of the Madrid Protocol, for extension to Australia of the protection resulting from the international registration of a trade mark.
Regulation 5 — Schedule 2
This regulation specifies that Schedule 2 amends the Trade Marks Regulations 1995.
Regulation 6 — Schedule 2 — transitional
This regulation provides for transitional arrangements in relation to the amendments that are proposed to be made by Schedule 2.
Schedule 1 — Amendments commencing on registration
Items [1] and [2] — subregulations 17A.31 (2) and (3)
Part 17A of the Principal Regulations provides for matters that enable the performance of Australia’s obligations under the Madrid Protocol.
Subregulations 17A.31 (2) and (3) provide the grounds for opposing the extension of protection to a trade mark that is subject to an IRDA. These items include a reference to section 62A of the Act. Section 62A is a new provision inserted into the Act by in Schedule 1 to the Amendment Act. Section 62A provides for the registration of a trade mark to be opposed on the grounds that the application was made in bad faith. The amendments made by these items ensure that trade marks that are subject to IRDAs can be opposed on the same grounds as can be marks registered under the general provisions of the trade marks legislation.
Item [3] — paragraph 17A.45 (2)(b)
Subregulation 17A.45 (2) provides for other specified grounds for opposing IRDAs. This item substitutes two new paragraphs: (b) and (c) for existing paragraph 17A.45 (2) (b). Currently there is no paragraph 17A.45 (2) (c).
Paragraph (b) provides consistency with amendments made by the Amendment Act to section 88 of the Act. Section 88 was amended to make it clear that any trade mark may be removed from the Register of Trade Marks, if its use is likely to deceive or cause confusion to consumers at the time an application to remove it from the Register is made. This new paragraph ensures that a court can amend or cease the protection extended to a protected international trade mark on the same ground.
Paragraph (c) is a consequential amendment to ensure that a certification trade mark that is a protected international trade mark continues to be subject to the same grounds for amendment or ceasing protection by a court, as is a registered certification trade mark. As a result of amendments made by the Amendment Act to sections 88 and 181 of the Act, it is unclear whether or not the additional ground in section 177 of the Act continues to apply to amending or ceasing protection of a protected international certification trade mark. This new paragraph ensures that the additional ground continues to apply.
Items [4] and [5] — subregulations 17A.48 (1) and (2)
Regulation 17A.48 provides for the cessation of protection for non-use. A condition of registration of a trade mark is that it must be used or intended to be used. When a trade mark has not been used for the required period, it can be removed from the Register so that other traders may use the trade mark.
Subregulations 17A.48 (1) and (2) are amended so that anyone, not just a person aggrieved, may make an application for a trade make to be removed from the Register due to non-use. The amendments are similar to those made to section 92 of the Act by the Amendment Act.
Schedule 2 — Amendments commencing on 1 January 2007
Item [1] — Schedule 1, Part 1, item 21
Schedule 1 to the Principal Regulations describes the classes into which goods and services are to be divided for the purposes provided of the Act.
Schedule 1, Part 1, item 21 is amended to align the description of Class 21 with a change approved by the Nice Union to the Nice Classification.
Items [2] and [3] — Schedule 1, Part 2, items 42 and 45
Schedule 1, Part 2, items 42 and 45 are amended to align the descriptions of Classes 42 and 45 with changes approved by the Nice Union to the Nice Classification.