Trade Marks Regulations (Amendment)

Overview

The Trade Marks Regulations 1986, amended by Statutory Rules 1986 No. 262, introduced an amendment to prohibit the use of "AUSTRADE" as a trade mark. This amendment was enacted under the authority of the Minister for Science and serves to align with the Trade Marks Act 1955. The primary objective of this legislative change was to address the gap in the protection of official trade promotion agencies by preventing the registration of their names as trade marks. This amendment ensures that "AUSTRADE," which is the name of an Australian government agency, cannot be registered as a trade mark, thereby safeguarding its official status and preventing potential misuse in commercial activities. The regulation does not affect any existing common law rights related to the use of the mark.

Scope and Application

The Trade Marks Regulations 1986, amended by Statutory Rule 1986 No. 262, serve to incorporate "AUSTRADE" as a prohibited mark under paragraph 29(1)(h) of the Trade Marks Act 1955. This amendment applies to any individual, entity, or organisation seeking to register the "AUSTRADE" mark as a trade mark within Australia. By inserting "AUSTRADE" into Part I of the Fifth Schedule of the Regulations, the amendment effectively prohibits the registration of this mark, potentially leading to its refusal if applied for post-amendment. This legislative action is applicable nationally, aligning with the overarching Trade Marks Act, and does not affect any pre-existing common law rights related to the use of the mark. The scope of the amendment is limited to the registration of the mark and does not extend to other areas such as the use of the mark in commerce, which may still be permissible under other legal frameworks.

Key Provisions

The Trade Marks Regulations have been amended by the Statutory Rules 1986 No. 262, issued under the authority of the Minister for Science, to prohibit the use of the term "AUSTRADE" as a trade mark. Section 29(1)(h) of the Trade Marks Act 1955 now explicitly includes "AUSTRADE" as a prohibited mark, which means that any application to register this term as a trade mark will be refused upon the regulation's coming into force. This amendment is significant in that it directly impacts the registration process for trade marks, ensuring that "AUSTRADE" cannot be registered under any circumstances, thereby protecting the integrity and function of the trade mark system in Australia. The obligations imposed by these changes are primarily on applicants seeking to register trade marks. They must now ensure that their proposed trade mark does not include the term "AUSTRADE," as such an application would be denied. This requirement aligns with the overarching goal of the Trade Marks Act, which is to provide a system that protects distinctive signs or indicators used on goods and services to differentiate them from those of others. By prohibiting "AUSTRADE," the legislation aims to avoid any confusion or misrepresentation that could arise from the use of a term associated with a governmental body like Austrade. Failure to comply with these provisions by attempting to register a trade mark that includes "AUSTRADE" could result in significant legal consequences. Under the Trade Marks Act, such an act could be seen as an infringement of the regulatory provisions, potentially leading to civil action for damages or an order to cease the use of the prohibited mark. Additionally, there may be criminal penalties if the infringement is deemed wilful. The specific penalties, however, are not detailed within the explanatory statement, but they can be found in the main body of the Trade Marks Act, which includes fines and imprisonment terms commensurate with the severity and intent behind the infringement. This ensures that the prohibition is both enforceable and serves as a deterrent against potential misuse.