Statutory Rules
1980 No. 319
REGULATIONS UNDER THE TRADE MARKS ACT 19551
I, THE GOVERNOR-GENERAL of the Commonwealth of Australia, acting with the advice of the Federal Executive Council, hereby make the following Regulations under the Trade Marks Act 1955.
Dated this twenty-ninth day of October 1980.
ZELMAN COWEN
Governor-General
By His Excellency’s Command,
KEVIN NEWMAN
Minister of State for Productivity
AMENDMENTS OF THE TRADE MARKS REGULATIONS2
Commencement
1. These Regulations shall come into operation on 1 November 1980.
Fees
2. Regulation 4 of the Trade Marks Regulations is amended by omitting from sub-regulation (3) “5” and substituting “3”.
Second Schedule
3. The Second Schedule to the Trade Marks Regulations is repealed and the following Schedule substituted:
SECOND SCHEDULE Regulation 4
FEES
Column 1 | Column 2 | Column 3 |
Item | Matter | Fee |
| | $ |
1 | On lodging an application to register a trade mark or a series of trade marks... | 45.00 |
2 | For registration of a trade mark or a series of trade marks................ | 80.00 |
3 | On lodging an application to the Registrar under section 19, 20, 21, 23, 74, 75, 87 or 127 or sub-section 36 (2) of the Act, not being an application for the cancellation of the entry of a trade mark or for change of address | 15.00 |
4 | On lodging notice of opposition................................ | 40.00 |
5 | On an application to lodge further evidence in opposition proceedings....... | 25.00 |
6 | On appearing at a hearing or on lodging a request under regulation 76....... | 50.00 |
7 | On lodging an application for restoration under section 71 of the Act........ | 120.00 |
8 | On lodging an application under section 69 of the Act for renewal of the registration of a trade mark—in respect of each registration | 200.00 |
9 | For entry in the Register of association of a trade mark under sub-section 36 (1) of the Act | 5.00 |
10 | For a certified copy of a certificate of registration..................... | 20.00 |
11 | For a certificate of the Registrar under section 17 of the Act.............. | 20.00 |
12 | For photographic copies of, or extracts from, the Register or other documents under section 17 of the Act—per document | 3.00 |
13 | On lodging an application for an extension of a time specified in the Act or these Regulations within which an act or thing is to be done— (i) for each month or part of a month for which the extension of time is applied for (ii) if lodged after the expiration of the time to be extended, the amount payable under paragraph (i) plus an amount of | 20.00 40.00 |
14 | For taxing costs | 20.00 |
Saving
4. Notwithstanding the amendment of the Trade Marks Regulations made by regulation 2, where an application to register a trade mark has been accepted before the date of commencement of these Regulations, the fee payable in respect of the registration of the trade mark is the fee that, but for these Regulations, would have been payable in respect of the registration of that trade mark immediately before that date.
NOTES
1. Notified in the Commonwealth of Australia Gazette on 31 October 1980.
2. Statutory Rules 1958 No. 48 as amended by Statutory Rules 1961 No. 36; 1973 No. 289; 1975 No. 202; 1977 No. 179; 1979 Nos. 11 and 109.
Overview
The Statutory Rules 1980 No. 319, which are regulations under the Trade Marks Act 1955, were introduced to provide further detail and refinement to the legislative framework governing trademarks in Australia. Enacted by the Governor-General of the Commonwealth of Australia, acting with the advice of the Federal Executive Council, these regulations aim to streamline the administration and enforcement of trademark law by addressing administrative and procedural aspects not fully covered by the primary Act. The overarching objective is to ensure the efficient and effective registration, maintenance, and protection of trademarks within Australia, thereby fostering a robust environment for intellectual property rights.
Scope and Application
The Trade Marks Regulations 1980, made under the Trade Marks Act 1955, provide a detailed framework for the administration of trade mark applications and registrations within Australia. These regulations apply to all entities, including individuals, companies, and other legal persons seeking to register a trade mark or engage in trade mark-related activities. The scope of these regulations encompasses various aspects of trade mark management, such as the payment of fees for different types of applications and actions, including applications for registration, opposition, restoration, and renewal, as well as the provision of certified copies and extracts from the Trade Marks Register. The regulations also include provisions for the taxation of costs. These regulations apply nationally, extending across the entire Commonwealth of Australia, thereby ensuring uniformity in the administration of trade marks across all states and territories. The regulations do not specify exclusions or exemptions, but they do outline fees for various actions, and they allow for adjustments and extensions of time through subordinate instruments. This comprehensive approach ensures that the registration and management of trade marks are conducted in a systematic and consistent manner throughout the country.
Key Provisions
The Trade Marks Regulations, made under the Trade Marks Act 1955, primarily deal with the fees associated with various actions related to trade marks. Regulation 2 amends the fee structure by reducing the fee for lodging an application to register a trade mark or a series of trade marks from $5 to $3 (Regulation 4(1)). Regulation 3 replaces the Second Schedule of the Trade Marks Regulations with a new schedule detailing specific fees for various trade mark-related actions (Schedule 2). These actions include the registration of a trade mark or a series of trade marks, which now costs $80 (Schedule 2(2)); lodging an application under specific sections of the Trade Marks Act, which now costs $15 (Schedule 2(3)); lodging notice of opposition, which costs $40 (Schedule 2(4)); and so forth.
The Regulations impose certain obligations on applicants, registrants, and other parties interacting with the Trade Marks Office. For instance, applicants must pay the specified fees when lodging applications or notices. The fee structure is designed to cover the administrative costs associated with processing trade mark applications, registrations, and other related actions. Additionally, Regulation 4 provides a saving clause to ensure that applicants who have already lodged their applications before the commencement of these Regulations will still pay the old fee rate, ensuring fairness and predictability in the fee structure.
Breaches of the Trade Marks Regulations can result in civil and criminal consequences. While the Regulations themselves do not explicitly state the penalties for non-compliance, the Trade Marks Act 1955 outlines potential penalties. For instance, knowingly making a false statement in an application or document can result in fines and imprisonment under section 121 of the Act. Similarly, using a registered trade mark in a way that is contrary to the provisions of the Act can also lead to civil actions for infringement. The specific penalties for these offences would depend on the severity and nature of the breach, as well as any relevant case law.