Trade Marks Regulations (Amendment) 1994 No. 318
EXPLANATORY STATEMENT STATUTORY RULES 1994 No. 318
Issued by the Authority of the Minister for Small Business, Customs and Construction
Trade Marks Act 1955
Trade Marks Regulations (Amendment)
The Statutory Rules amend the Trade Marks Regulations (the Regulations) to provide a mechanism for early consideration of certain applications for registration of trade marks; to revise certain fees payable under the Regulations; to revise the costs and an allowance that may be awarded in proceedings before the Registrar; and to make minor consequential and drafting changes to the Regulations. Details of the amendments are as follows:
Regulation 1 sets 1 October 1994 as the commencement day for these Regulations. Regulation 2 identifies the Trade Marks Regulations as those to be amended.
Regulation 3 amends subregulation 4(3), consequent on the renumbering of fee items in Schedule 2 to the Regulations.
Regulation 4 inserts regulations 7A and 7B which allow for expedited examination of applications for registration of a trade mark, on the request of the applicant. The request must be in writing, state reasons for requesting expedited examination, arid be accompanied by the prescribed fee. Where these requirements are met, the Registrar must determine whether or not to grant the request for expedited examination. Also, the Registrar may expedite examination on the Registrar's own initiative, if it is warranted having regard to all the circumstances. Regulation 7B provides that, as far as practicable, expedited applications for registration of a trade mark will be examined before other applications and in the order in which requests to expedite them are lodged.
Regulation 5 revises certain fee items in Schedule 2 to the Regulations, to better align the amounts of the fee items with the costs of the actions for which the fees are prescribed. Items 6, 7, 8 and 9, substituted for omitted items 7 and 8, revise the fees for hearings before the Registrar, to more adequately reflect the costs associated with both the preparation and conduct of the hearings. In particular, the fee items for appearing at certain hearings before the Registrar have been replaced by items for informing the Registrar of the desire to be heard. New item 16 prescribes the fee for requesting expedited examination under regulation 7A. Certain items have been renumbered, to maintain consecutive numbering.
The Australian Industrial Property Organisation (ALPO), which incorporates the Patent, Trade Marks and Designs Offices, operates on a Group 2 Trust Account
arrangement. AIPO is required to recover all of its costs from fees charged by the Patent, Trade Marks and Designs Offices. AIPO is committed to containing cost increases for normal operations within inflation and to achieve productivity gains at least equal to the efficiency dividend required of the Australian Public Service.
Fees for certain services performed by the Patent, Trade Marks and Designs Offices are increased with effect from 1 October 1994. The aggregate effect of these fee increases will be to raise an additional $2.6 million revenue in the period to the end of 1995, given the predicted composition of demand. Cost increases over this period, flowing from AIPO's move to accrual-based pricing, expected changes in accommodation costs, and inflation, are expected to amount to approximately $4 million. The shortfall will be absorbed through productivity increases in AIPO. The aggregate increase in fees since commencing full cost recovery in 1984 remains less than CPI.
To achieve the additional revenue required to the end of 1995, the fee levels of 9 of the 13 fee items prescribed in Schedule 2 to the Regulations, prior to amendment, have been increased.
Regulation 6 revises Schedule 6 to the Regulations, which sets out the items and amounts of costs, expenses and allowances that may be awarded against parties to proceedings before the Registrar. The amounts of the cost items (in Part 1 of Schedule 6), and the daily maximum amount that may be paid for meals and accommodation to a person attending proceedings before the Registrar (specified in paragraph 2(b) in Part 2 of Schedule 6) are set to retain parity with the amounts of costs that may be awarded in the Supreme Court of the Australian Capital Territory. The revised amounts in Schedule 6 reflect increases in the amounts of costs that may be awarded in that Court. Also, the wording in some of the amounts has been amended to reflect the latest drafting style.
Overview
The Trade Marks Regulations (Amendment) 1994 No. 318 was enacted to amend the Trade Marks Regulations, which are subordinate legislation under the Trade Marks Act 1955. This amendment was made to address gaps in the existing regulatory framework by introducing mechanisms for the early consideration of certain trade mark registration applications, revising certain fees, updating costs and allowances in proceedings before the Registrar, and making minor consequential and drafting changes. The amendments were issued by the Authority of the Minister for Small Business, Customs and Construction. The policy objective of these amendments was to better align the fees with the costs of services provided and to ensure the Australian Industrial Property Organisation could recover its costs through fees charged by the Patent, Trade Marks and Designs Offices.
Scope and Application
The Trade Marks Regulations (Amendment) 1994 No. 318 amends the Trade Marks Regulations to introduce provisions that facilitate a more efficient processing of trade mark applications, particularly by enabling the expedited examination of such applications upon request from the applicant. This amendment applies to any person or entity seeking to register a trade mark under the Trade Marks Act 1955. The expedited examination process is subject to specific conditions, including the need for a written request accompanied by a prescribed fee. The amendment also revises certain fees payable under the Trade Marks Regulations, ensuring they more accurately reflect the costs associated with the services provided by the Patent, Trade Marks and Designs Offices. Furthermore, the amendment updates the costs and allowances that may be awarded in proceedings before the Registrar, aligning them with the amounts that may be awarded in the Supreme Court of the Australian Capital Territory. These changes collectively aim to enhance the operational efficiency of the trade mark registration process while maintaining financial sustainability for the Australian Industrial Property Organisation, which oversees the Patent, Trade Marks and Designs Offices.
Key Provisions
The Trade Marks Regulations (Amendment) 1994 (No. 318) introduce several key changes to the Trade Marks Regulations under the Trade Marks Act 1955. Firstly, Regulation 4 introduces expedited examination procedures for trade mark applications, as per regulations 7A and 7B. These provisions allow applicants to request expedited examination of their applications by submitting a written request stating the reasons for the request, accompanied by the prescribed fee. The Registrar is then required to determine whether to grant the request. Additionally, the Registrar may expedite an examination on their own initiative if deemed warranted. Regulation 7B stipulates that, as far as practicable, expedited applications should be examined before other applications and in the order in which the requests to expedite them are lodged.
The amendments also revise certain fees under the Regulations. Regulation 5 adjusts the fee items in Schedule 2 to better align with the costs of the services provided. For example, fees for hearings before the Registrar have been adjusted to more accurately reflect the costs associated with the preparation and conduct of such hearings. New item 16 in Schedule 2 prescribes the fee for requesting expedited examination under regulation 7A. These changes are intended to ensure that the fees charged are commensurate with the costs incurred by the Australian Industrial Property Organisation (AIPO), which oversees the Patent, Trade Marks and Designs Offices.
Furthermore, Regulation 6 revises Schedule 6, which outlines the items and amounts of costs, expenses, and allowances that may be awarded against parties in proceedings before the Registrar. The revised amounts in Schedule 6 aim to maintain parity with the costs that may be awarded in the Supreme Court of the Australian Capital Territory, reflecting increases in those amounts. The changes also update the wording in some of the amounts to align with the latest drafting style.
The Trade Marks Regulations (Amendment) 1994 impose specific obligations on parties and entities governed by the Trade Marks Act 1955. Applicants for trade mark registration who wish to request expedited examination must submit a written request to the Registrar, stating the reasons for the request and paying the prescribed fee. The Registrar, in turn, has the responsibility to determine whether to grant the request for expedited examination. If the Registrar decides to expedite an examination, they must do so in accordance with the provisions of regulation 7B. Additionally, the Australian Industrial Property Organisation (AIPO) is required to recover all costs from fees charged by the Patent, Trade Marks and Designs Offices, ensuring that the costs do not exceed the efficiency dividend required of the Australian Public Service.
The Trade Marks Regulations (Amendment) 1994 also outline the consequences for non-compliance. While the Regulations do not explicitly state criminal or civil penalties for breaches, failure to comply with the requirements for requesting expedited examination or paying the prescribed fees could result in the Registrar denying the request for expedited examination. Additionally, the increased fees may have financial implications for applicants, as they are intended to better align with the costs incurred by AIPO. Non-compliance with the costs and allowances provisions in Schedule 6 could lead to disputes over the amounts awarded in proceedings before the Registrar, potentially affecting the financial outcomes for the parties involved.