Trade Marks Regulations (Amendment) 1992 No. 150
EXPLANATORY STATEMENT STATUTORY RULES 1992 No. 150
Issued by the Authority of the Minister of State for Science and Technology Trade Marks Act 1955
Trade Marks Regulations (Amendment)
The Statutory Rules amend the Trade Marks Regulations (the Regulations) to enable the Registrar of Trade Marks (the Registrar) to waive or refund fees in special circumstances; to enable costs awarded in any proceedings before the Registrar to be taxed, allowed and certified and to include the levels of those costs in a schedule to the Regulations; to declare Gambia to be a Convention country; and to vary certain fees payable under the Regulations. Details of the amendments are as follows:
Regulation 1 sets 1 July 1992 as the commencement day for regulations 4, 5, 6, 7 and
9.
Regulation 2 identifies the Trade Marks Regulations as those to be amended.
Regulation 3 inserts new regulation 4A to allow the Registrar to exempt a person from the payment of a fee, remit any part of a fee or refund the whole or any part of a fee, relating to the lodgement of a document, where the Registrar is reasonably satisfied that such an action is justified.
In addition, where the acceptance of an application for, or the registration of, a trade mark is delayed due to an error or omission by the Trade Marks Office, new regulation 4A enables the Registrar to waive the fee that would otherwise have been due for the period of time corresponding to that delay.
Regulation 4 omits regulation 52 from the Regulations.
Regulation 5 inserts new regulation 71A to enable parties to any proceedings before the Registrar to have the costs, expenses or allowances awarded against them taxed, allowed and certified by an officer of, or employee in, the Trade Marks Office.
Regulation 6 substitutes a revised Schedule 2. The items differ from existing items in the level of fees except for items 5, 6, 7, 11, 12 and 14 which remain unchanged. The overall effect of the revised fees is an increase of 3.5 per cent on average in fee levels. This increase will enable the Patent, Trade Marks and Designs Offices to meet their cost recovery obligations.
Regulation 7 is a transitional provision which ensures that the amending regulations do not affect registration fees for trade mark applications that were accepted before 1 July 1992.
Regulation 8 includes Gambia in the list of Convention countries in Schedule 4A to the Regulations.
Regulation 9 inserts new Schedule 6 which lists items and amounts of costs, expenses and allowances that can be awarded, taxed, allowed and certified in relation to proceedings before the Registrar.
Overview
The Trade Marks Regulations (Amendment) 1992 No. 150, issued by the Authority of the Minister of State for Science and Technology, amends the Trade Marks Regulations under the Trade Marks Act 1955. This legislation was enacted to address the need for greater flexibility in fee management and to accommodate changes in administrative costs and international obligations. The Trade Marks Regulations (Amendment) enables the Registrar of Trade Marks to waive or refund fees in special circumstances, provides a mechanism for taxing, allowing, and certifying costs in proceedings before the Registrar, declares Gambia as a Convention country, and adjusts certain fees payable under the Regulations. The policy objective behind these amendments is to ensure that the administration of trade marks remains efficient and responsive to the needs of applicants, while also allowing the Patent, Trade Marks and Designs Offices to meet their cost recovery obligations.
Scope and Application
The Trade Marks Regulations (Amendment) 1992 No. 150 amends the Trade Marks Regulations under the Trade Marks Act 1955, extending its application to include the ability of the Registrar of Trade Marks to waive or refund fees in specific circumstances, allow costs awarded in proceedings before the Registrar to be taxed, allowed, and certified, and include the levels of those costs in a schedule to the Regulations. These amendments apply to all entities and individuals interacting with the Trade Marks Office, including applicants for trade mark registration, existing registrants, and parties involved in proceedings before the Registrar. The amendments also declare Gambia as a Convention country, thus extending the geographic reach of the Regulations to include this nation. The amendments come into effect on 1 July 1992 and do not affect registration fees for applications accepted prior to this date. The application of these regulations may be further extended or restricted through subordinate instruments as necessary.
Key Provisions
The Trade Marks Regulations (Amendment) 1992 No. 150 amends the Trade Marks Regulations to include several key provisions. Firstly, it introduces the ability for the Registrar of Trade Marks to waive or refund fees in specific circumstances (Regulation 3, new regulation 4A). This includes situations where a person is exempt from paying a fee, has a part of a fee remitted, or receives a full or partial refund, if the Registrar is reasonably satisfied that such action is justified. Additionally, if the acceptance of an application or the registration of a trade mark is delayed due to an error or omission by the Trade Marks Office, the Registrar can waive the fee that would otherwise have been due for the period of the delay (Regulation 3, new regulation 4A).
These amendments impose certain obligations on the parties involved, particularly the Registrar of Trade Marks. The Registrar must now have a basis to reasonably satisfy that a fee exemption, remission, or refund is justified, as well as determine the appropriate fee to be waived in cases of delay caused by the Trade Marks Office (Regulation 3, new regulation 4A). Furthermore, the Registrar must ensure that the new provisions do not affect registration fees for trade mark applications that were accepted before 1 July 1992 (Regulation 7).
The Trade Marks Regulations (Amendment) 1992 No. 150 also introduces provisions regarding costs in proceedings before the Registrar. New regulation 71A allows parties to have the costs, expenses, or allowances awarded against them taxed, allowed, and certified by an officer of, or employee in, the Trade Marks Office (Regulation 5, new regulation 71A). Regulation 9 inserts a new Schedule 6 which lists items and amounts of costs, expenses, and allowances that can be awarded, taxed, allowed, and certified in relation to proceedings before the Registrar. This ensures that there is a clear framework for the assessment and certification of costs in such proceedings.
While the Trade Marks Regulations (Amendment) 1992 No. 150 does not explicitly outline specific offences, penalties, or consequences for breach, it does establish a framework for the management of fees and costs in relation to trade mark applications and proceedings. Non-compliance with the new provisions could potentially lead to disputes regarding the application of fees or costs, which may need to be resolved through the courts or other regulatory processes.