Trade Marks Regulations (Amendment)

Overview

The Trade Marks Regulations 1987 were amended by Statutory Rules 1987 No. 13, issued under the authority of the Minister for Science, to address the misuse of certain terms in trade marks. The problem this amendment aimed to solve was the unauthorised use of "AUSTRALIA CARD" as a trade mark, which risked association with a term of historical and cultural significance. By adding "AUSTRALIA CARD" to the list of prohibited marks in the Fifth Schedule of the Regulations, the Act aimed to prevent its use as a trade mark, except in cases where it had been previously registered or used in good faith. This legislative action ensures that the term is not exploited for commercial gain without proper authorisation, thus preserving its integrity and the public's perception of its importance.

Scope and Application

The Trade Marks Regulations 1987, as amended by Statutory Rules 1987 No. 13, extend the application of the Trade Marks Act 1955 by prohibiting the use of certain marks in trade, including the addition of "AUSTRALIA CARD" as a prohibited mark under the Fifth Schedule. This amendment ensures that the term "AUSTRALIA CARD" cannot be registered as a trade mark or used as a trade mark unless it has been previously registered or used in good faith. The application of these regulations applies to any person or entity seeking to register or use the term "AUSTRALIA CARD" as a trade mark, prohibiting its use in a manner that might be misleading or associated with the original context of the term. The geographic reach of this legislation is national, operating under the Commonwealth's jurisdiction. This amendment does not introduce new exclusions, exemptions, or thresholds but rather extends the scope of prohibited marks within the existing legislative framework.

Key Provisions

The Trade Marks Regulations 1987 have been amended by this statutory rule to add "AUSTRALIA CARD" as a prohibited mark under the Trade Marks Act 1955. Specifically, section 29(1)(h) of the Act allows the Registrar of Trade Marks to refuse to accept an application for the registration of a trade mark that contains or closely resembles a mark specified as prohibited in the regulations. This new amendment, which comes into force with this rule, adds "AUSTRALIA CARD" to the list of prohibited marks, which is now set out in the Fifth Schedule of the Regulations (paragraph 29(1)(h)). Section 29(2) further provides that such a mark, unless it is a registered trade mark or has been used in good faith, cannot be used as a trade mark or part of a trade mark. The obligations imposed by these provisions are primarily on those seeking to register a trade mark that includes or closely resembles the prohibited mark "AUSTRALIA CARD". Any applicant must ensure that their proposed trade mark does not include this term, or a variant thereof, to avoid a refusal by the Registrar. Additionally, entities that have previously used "AUSTRALIA CARD" in good faith as a trade mark or have it registered prior to the amendment coming into force are exempted from these restrictions. For all other entities, using "AUSTRALIA CARD" as a trade mark or part of a trade mark, except under the specified exemptions, is prohibited. Failure to comply with these provisions can result in civil and criminal consequences. Under section 122 of the Trade Marks Act 1955, any person who uses a prohibited mark as a trade mark can be subject to penalties. The maximum penalty for such an offence is a fine of up to $11,000 for individuals and up to $55,000 for bodies corporate. Furthermore, ongoing use of a prohibited mark can also lead to injunctive relief to prevent further use, and in more serious cases, criminal prosecution could be initiated against the offender. These penalties underscore the importance of adhering to the provisions outlined in the amended Trade Marks Regulations.