EXPLANATORY STATEMENT
STATUTORY RULES 1983 NO. 312
Issued by the Authority of the Minister for Science and Technology
The purpose of these amendments to the Trade Marks Regulations is to prescribe “MEDICARE” as a prohibited mark, and to amend the Classification of Goods and Services for the Purposes of the Registration of Marks in accordance with the changes made by the Committee of Experts under the Nice Agreement Concerning the International Classification of Goods and Services. Details of the proposed amendments are set out below.
Regulation 1 sets a date of commencement of 1 January 1984 for regulations 3, 5 and 7, which concern the classification of goods and services. The regulations concerning “MEDICARE” will come into effect from the date of notification in the Gazette.
Regulation 2 defines the Principal Regulations as the Trade Marks Regulations.
Regulation 3 amends regulation 6 by Including a reference to Part I and Part II of the Fourth Schedule. The new Fourth Schedule (amended by regulation 5) is divided into Classes of Goods (Part I) and Classes of Services (Part II).
Regulation 4 amends sub-regulation 13(2). The effect is that use as a trade mark of a mark specified in Part II of the Fifth Schedule will be prohibited from the date of coming into force of the regulations which included the specified mark in Part II.
Regulation 5 repeals the Fourth Schedule in the Regulations and substitutes a new Fourth Schedule. The effect is to incorporate into the regulations the amended Classification of Goods and Services.
Regulation 6 amends the Fifth Schedule by inserting the word “MEDICARE” in Part II of the Schedule. The effect is that “MEDICARE” will be a prohibited mark for the purposes of paragraph 29(1)(h) of the Act and its use (except where the word has previously been registered as a trade mark or used in good faith as a trade mark) will be prohibited, after regulations 4 and 6 come into force. Paragraph 29(1)(h) of the Act provides that the Registrar may refuse to accept an application for the registration of a trade mark which contains or consists of a mark, or a mark so nearly resembling such a mark as to be likely to be taken for that mark, which is specified in the regulations as being, for the purposes of the section, a prohibited mark.
Regulation 7 is a transitional provision.
With regard to the amendments dealing with “MEDICARE”, consultations have taken place with the Department of Health and the Attorney-General’s Department.
The proposal to amend the Fourth Schedule was notified in the Australian Official Journal of Patents, Trade Marks and Designs and submissions on the changes were invited from interested persons.
Overview
The Trade Marks Regulations 1983, as amended by Statutory Rules 1983 No. 312, introduced several significant changes, primarily addressing the issue of the misuse of the term "MEDICARE" as a trademark. Enacted under the authority of the Minister for Science and Technology, the amendments aimed to protect the integrity of the Medicare system by prohibiting its use as a trademark. The policy objective was to prevent any commercial exploitation or misrepresentation of the term "MEDICARE," thereby maintaining the public's trust in the government-run healthcare program. The regulations also updated the Classification of Goods and Services to align with international standards, enhancing the consistency and effectiveness of the trade mark registration process. The amendments came into effect from 1 January 1984, with specific provisions concerning "MEDICARE" taking effect from the date of notification in the Gazette.
Scope and Application
The Trade Marks Regulations 1983 are amended to address the prohibition of certain marks, specifically targeting the use of "MEDICARE" as a trade mark and updating the Classification of Goods and Services according to international standards. These amendments apply to all entities and persons engaged in trade mark activities within Australia, particularly those involved in the registration or use of trade marks. The geographic reach of these regulations is national, as they are part of the Commonwealth's legislative framework. The amendments come into effect from specific dates, with the classification updates beginning on 1 January 1984, and the prohibition of "MEDICARE" as a trade mark taking effect from the date of notification in the Gazette. The regulations provide a clear prohibition on the use of "MEDICARE" as a trade mark unless it has been previously registered or used in good faith. Transitional provisions are included to ensure a smooth implementation of the new regulations. The amendments do not specify exclusions or thresholds but focus on prohibiting specific marks and updating classification to align with international agreements.
Key Provisions
The Trade Marks Regulations, amended by Statutory Rules 1983 No. 312, introduce several key provisions that significantly affect the classification of goods and services and the use of specific marks as trade marks. Regulation 1 specifies that certain amendments, particularly those relating to the classification of goods and services (regulations 3, 5, and 7), will commence on 1 January 1984. Meanwhile, regulations concerning the prohibition of the mark “MEDICARE” will take effect from the date of notification in the Gazette. Regulation 2 defines the Principal Regulations as the Trade Marks Regulations, providing a clear reference point for the application and interpretation of these amendments.
The obligations imposed by these regulations are multifaceted. Firstly, Regulation 3 amends regulation 6 by incorporating references to Part I and Part II of the Fourth Schedule, which has been updated to reflect changes in the Classification of Goods and Services under the Nice Agreement. This ensures that the classification system aligns with international standards. Regulation 4 modifies sub-regulation 13(2) to prohibit the use of marks specified in Part II of the Fifth Schedule as trade marks from the date these regulations come into force. Regulation 5 repeals and replaces the existing Fourth Schedule with an updated version, thus aligning the classification system within the regulations with the latest international standards.
Moreover, Regulation 6 introduces a significant amendment to the Fifth Schedule by inserting the word “MEDICARE” in Part II, thereby designating it as a prohibited mark under paragraph 29(1)(h) of the Trade Marks Act. This means that the use of “MEDICARE” as a trade mark is prohibited, except where it has been previously registered or used in good faith as a trade mark. This provision aims to protect the integrity of the Medicare brand and prevent its use in a manner that might cause confusion or dilute its significance. Regulation 7 provides a transitional measure to facilitate the smooth implementation of these changes.
Failure to comply with these regulations can lead to various consequences. Under paragraph 29(1)(h) of the Trade Marks Act, the Registrar is empowered to refuse an application for the registration of a trade mark that includes or closely resembles a prohibited mark. This refusal can be a significant barrier for entities attempting to register marks that infringe upon prohibited terms such as “MEDICARE.” Additionally, using a prohibited mark as a trade mark can result in legal action, including injunctions and damages, as the Act provides for both civil and criminal penalties for violations. The specific penalties are not detailed in the Statutory Rules but would be in accordance with the Trade Marks Act and related legal frameworks.