Trade Marks Amendment Regulations 2001 (No. 3) 1
Statutory Rules 2001 No. 2472 __________________________________________________________________________________
I, PETER JOHN HOLLINGWORTH, Governor-General of the Commonwealth of Australia, acting with the advice of the Federal Executive Council, make the following Regulations under the Trade Marks Act 1995.
Dated 13 September 2001
PETER HOLLINGWORTH Governor-General
By His Excellency’s Command
WARREN ENTSCH Parliamentary Secretary to the Minister for Industry, Science and Resources __________________________________________________________________________________
2
Contents
1 Name of Regulations
2 Commencement
3 Amendment of Trade Marks Regulations 1995
Schedule 1 Amendments commencing on commencement of the Trade Marks and Other Legislation Act 2001
Schedule 2 Amendment commencing on 1 January 2002
_______________
1 Name of Regulations
These Regulations are the Trade Marks Amendment Regulations 2001 (No. 3).
2 Commencement
These Regulations commence as follows:
(a) on the commencement of the Trade Marks and Other Legislation Act 2001 — regulations 1 to 3 and Schedule 1;
(b) on 1 January 2002 — Schedule 2.
Note The Trade Marks and Other Legislation Act 2001 is to commence on 19 September 2001: see subsection 2 (1).
3 Amendment of Trade Marks Regulations 1995
Schedules 1 and 2 amend the Trade Marks Regulations 1995.
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Schedule 1 Amendments commencing on commencement of the Trade Marks and Other Legislation Act 2001 (regulation 3)
[1] Regulation 2.1, after definition of Madrid Protocol
insert
month, for a period with a length expressed in months, has the meaning given by regulation 2.2.
[2] Regulation 2.1, definition of working day
omit
[3] After regulation 2.1
insert
2.2 Period expressed in months
In these Regulations, a period expressed in months and dating from an event, ends:
(a) on the day, in the relevant subsequent month, which has the same number as the day of the event; or
(b) if the relevant subsequent month has no day with the same number — on the last day of the month.
Note This provision displaces section 36 of the Acts Interpretation Act 1901, and is in accordance with the Madrid Protocol. The difference between the two occurs when the initiating event is on the last day of a calendar month, which has fewer days than the month in which the period ends. For example, a period of 3 months from an event on 30 September ends on 30 December under this rule; it would end on 31 December under the Acts Interpretation Act 1901 provision.
[4] Paragraph 5.10 (2) (a)
omit
beginning on
insert
from
[5] Part 7, after the Part heading
insert
Division 1 Initial registration
4
[6] After regulation 7.2
insert
Division 2 Renewal of registration (general)
[7] After regulation 7.5
insert
Division 3 Renewal of registration (registration delayed for 10 or more years after filing date)
7.6 Prescribed period (Act s 80A (3))
For subsection 80A (3) of the Act, the prescribed period is 2 months.
Note Paragraph 80A (3) (b) of the Act provides that the prescribed period commences on the Register entry day.
7.7 Notice about renewal (Act s 80C)
For section 80C of the Act (which deals with renewal of registration, where registration has been delayed for 10 or more years after the filing date of the application for registration) the Registrar’s notice to the registered owner of the trade mark must state:
(a) the date on which the prescribed period expires; and (b) the fee payable by the registered owner.
7.8 Notice of renewal (Act s 80E)
For section 80E of the Act (which deals with renewal within the prescribed period), a notice of the renewal of the registration of a trade mark must:
(a) state that the registration is renewed; and (b) state the period or periods for which it is renewed.
[8] Paragraph 10.1 (b)
omit
or transmission of a registered insert
of a
5
[9] Regulation 13.1
substitute
13.1 Notice of objection to importation ( accompanying documents
For the purposes of subsection 132 (2) of the Act (which deals with notices of objection), the following documents are prescribed in relation to a notice given under that subsection, namely a document setting out the particulars of registration of the registered trade mark.
[10] After regulation 16.10
insert
16.10A Assignment of unregistered certification trade marks
(1) An application to the Commission for its consent to the assignment of an unregistered certification trade mark must:
(a) be made by the applicant for registration of the certification trade mark; and (b) state the name, address, and address for service of the prospective assignee;
and (c) state whether the prospective assignee proposes, after assignment, to apply
the same rules governing use of the certification trade mark that the applicant for registration applies, or proposes to apply; and
(d) if the prospective assignee does not propose to apply those rules:
(i) state any variation of the rules that the prospective assignee proposes to apply after assignment; and
(ii) have with it a copy of the rules incorporating the proposed variation that the prospective assignee proposes to apply after assignment.
(2) In considering an application, the Commission must have regard to the following matters:
(a) whether the prospective assignee, or any prospective approved certifier within the meaning of paragraph 173 (2) (a) of the Act, is competent to certify the goods or services specified in the application for registration of the certification trade mark;
(b) if the prospective assignee does not propose, after the assignment, to apply the same rules governing use of the certification trade mark as the applicant for registration of the trade mark applies, or proposes to apply — whether, if the application were an application to approve the variation of those rules that the prospective assignee proposes to vary after the assignment, the application would be approved by the Commission.
[11] Regulation 17A.2, before definition of Common Regulations
insert
change of ownership includes assignment or transmission.
[12] After subregulation 17A.30 (2)
6
insert
(3) Subsection 52 (5) of the Act applies to an application for extension of time under subregulation (1).
[13] Subregulation 17A.42 (2)
substitute
(2) However, if:
(a) the international registration of a trade mark that is a protected international trade mark (unrenewed protected international trade mark) is not renewed; and
(b) an application for the registration of the trade mark, or an IRDA, is made, or has already been made, by a person other than the holder of the unrenewed protected international trade mark;
the unrenewed protected international trade mark is taken to be a protected international trade mark for the purposes of the application or the IRDA, at any time when the registration of the unrenewed protected international trade mark could have been renewed under Article 7 of the Protocol.
[14] Paragraph 17A.45 (2) (c)
omit
[15] Paragraph 17A.48 (4) (f)
omit
subregulation (1).
insert
subregulation (1); and
[16] After paragraph 17A.48 (4) (f)
insert
(g) to the day on which the application for registration of the trade mark was filed, or the filing date in respect of the application for registration of the trade mark, is taken to be a reference to:
(A) if the request for extension of protection to Australia was made under Article 3ter (1) of the Protocol — the date of international registration of the trade mark; or
(B) if the request for extension of protection to Australia was made under Article 3ter (2) of the Protocol — the date of recordal of the request.
Note The expressions date of international registration and date of recordal are defined in regulation 17A.2.
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[17] Paragraph 17A.50 (2) (e)
omit
protected.
insert
protected; and
[18] After paragraph 17A.50 (2) (e)
insert
(f) to assignment of a certification trade mark is taken to be a reference to change of ownership of a certification trade mark.
[19] Paragraph 17A.50 (3) (b)
omit
mark.
insert
mark; and
[20] After paragraph 17A.50 (3) (b)
insert
(c) each reference in Part 16 of these Regulations to the prospective assignee is taken to be a reference to the new holder of the international registration in respect of Australia who is identified in the notification to the Registrar under Rule 27 (1) of the Common Regulations.
[21] Regulation 17A.56
omit
an assignment or transmission
insert
a change of ownership
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[22] Regulation 17A.56, note
substitute
Note Change of ownership is defined in regulation 17A.2 to include assignment or transmission.
[23] Regulation 17A.58, heading
substitute
17A.58 Protected certification trade marks
[24] After regulation 17A.58
insert
17A.58A Unprotected certification trade marks
(1) If the trade mark is a certification trade mark that is the subject of an IRDA, and:
(a) a copy of the IRDA and the rules governing the use of the certification trade mark has been received by the ACCC; and
(b) the trade mark has not become a protected international trade mark; the Registrar must make a declaration to the International Bureau in accordance with Rule 27 (4) of the Common Regulations that, subject to subregulation (2), the change of ownership has no effect in Australia.
(2) If the Registrar receives evidence in writing of the consent of the ACCC to the change of ownership, the Registrar must notify the International Bureau that the change of ownership may be given effect in Australia.
[25] Paragraph 21.13 (3) (b)
after
case
insert
of
[26] After subregulation 21.21 (4)
insert
(5) If a person asks the Registrar, under section 80D of the Act, to renew the registration of a trade mark for one or more potential renewal periods, the fee payable is the sum of the fees payable for the potential renewal period or periods requested by the person, as those fees were at the Register entry day.
(6) Subregulation (7) applies if a person asks the Registrar, under paragraph 80G (1) (b) of the Act (which deals with renewal within 10 months after the end of the prescribed period) to renew the registration of a trade mark for one or more potential renewal periods.
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(7) The fee payable for the renewal is:
(a) the sum of the fees payable for the potential renewal period or periods requested by the person, as those fees were at the Register entry day; and
(b) the additional fee stated in item 9A of Schedule 9 for the period:
(i) beginning on the day after the day when the prescribed period expires; and
(ii) ending on the day when the request for renewal is filed.
[27] Paragraph 21.28 (1) (k)
omit
section 79
insert
sections 79, 80D or 80G
[28] Schedule 9, after item 9
insert
9A Each potential renewal period requested by a person under section 80D of the Act:
(a) in respect of goods or services in a single prescribed class
$300
(b) in respect of goods or services in more than 1 prescribed class
$300 plus $150 for each additional class
(c) where the request for renewal is made within 10 months after the end of the prescribed period, under paragraph 80G (1) (b) of the Act
in addition to any fee in relation to paragraph (a) or (b), but regardless of the number of potential renewal periods requested — $65 for each class and for each month, or part of a month, after the end of the prescribed period
[29] Further amendments — change of ownership
The following provisions are amended by omitting each mention of ‘assignment or transmission’ and inserting ‘change of ownership’: • regulation 17A.57
• subregulations 17A.58 (1) and (2)
• paragraphs 17A.59 (1) (a) and (b)
• subregulation 17A.59 (2)
• regulation 17A.60, heading and note.
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Schedule 2 Amendment commencing on 1 January 2002 (regulation 3)
[1] Schedule 1, Part 2, item 42
substitute
42 Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services
43 Services for providing food and drink; temporary accommodation
44 Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services
45 Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals
__________________________________________________________________________________ Notes
1. These Regulations amend Statutory Rules 1995 No. 341, as amended by 1996 Nos. 3, 184 and 272; 1997 No. 346; 1998 Nos. 258, 265, 343 and 346; 1999 Nos. 153, 186, 196 and 350; 2001 Nos. 33 and 185.
2. Notified in the Commonwealth of Australia Gazette on 14 September 2001.