Trade Marks Amendment Act 2006, Австралия

The Parliament of Australia enacts:

Schedule 1—Amendments

Part 1—Amendments commencing on Royal Assent

45 Divisional applications

(1) If a single application for the registration of a trade mark in respect of certain goods and/or services is pending (parent application), the applicant may make another application (divisional application) for the registration of the trade mark in respect of some only of the goods and/or services in respect of which registration is sought under the parent application.

Note: For applicant and pending see section 6.

(2) To avoid doubt, the parent application may itself be a divisional application.

Note: A divisional application may be made by a person who has become the applicant in relation to the parent application because of subsection 108(2) (which deals with assignment and transmission).

46 Rules relating to divisional applications

(1) A divisional application must:

(a)

be for the registration of the trade mark to which the parent application relates; and

(b)

specify the goods and/or services to which it relates; and

(c)

specify the goods and/or services that are to remain in the parent application.

51A Linking series applications

(1) Subsection (2) applies if:

(a)

before the commencement of this section, 2 or more applications (series applications) were made each seeking the registration of the same 2 or more trade marks in respect of goods or services of different classes; and

(b)

the filing date of each of the series applications is the same; and

(c)

each of the trade marks has the same owner.

Note: For filing date see section 6.

(2) The owner of the trade marks may apply to the Registrar, in writing, to have:

(a)

the series applications; or

(b)

so many of the series applications as are identified in the

application to the Registrar; dealt with under this Act as if they were one application for the registration of the trade marks in respect of all goods and services specified in the series applications or the identified series applications.

Note: For this Act see section 6.

(3) If an application is made under subsection (2), the Registrar must deal with the series applications that are the subject of the application under that subsection as if they were one application.

74 Subsection 63(1)

Omit “written”.

75 Subsection 63(1)

Omit “or 65”, substitute “, 65 or 65A”.

76 Paragraph 63(2)(b)

Omit “in writing”.

77 Section 65

Repeal the section, substitute:

65 Amendment after particulars of application have been published—request for amendment not advertised

(1)

If the particulars of the application have been published under section 30, the application may be amended as provided in this section.

(2)

An amendment may be made to the representation of the trade mark if the amendment does not substantially affect the identity of the trade mark as at the time when the particulars of the application were published.

(3)

An amendment may be made to an application to which section 51 applies to remove one or more trade marks from the application.

(4)

An amendment may be made to correct an error in the classification of goods or services specified in the application.

(5)

An amendment may be made to add to the class or classes of goods or services specified in the application one or more other classes of goods or services if the Registrar is of the opinion that it is fair and reasonable in all the circumstances to do so.

(6)

An amendment may be made to change the type of registration sought in the application (for example, an application for the registration of a trade mark as a certification trade mark may be

amended to an application for registration as a collective trade mark).

(7)

An amendment may be made to any other particular specified in the application unless the amendment would have the effect of extending the rights that (apart from the amendment) the applicant would have under the registration if it were granted.

65A Amendment after particulars of application have been published—request for amendment advertised

(1)

This section applies if:

(a)

the particulars of the application have been published under section 30; and

(b)

the amendment requested is not an amendment which could be made under section 65.

(2)

The application may be amended to correct a clerical error or an obvious mistake in the application if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to make the amendment under this section.

(3)

Subject to subsection (5), the Registrar must advertise the request for the amendment in the Official Journal.

(4)

Subject to subsection (5), a person may, as prescribed, oppose the granting of the request for the amendment.

(5)

If the Registrar is satisfied that a request for an amendment would not be granted even in the absence of opposition under subsection (4):

(a)

the Registrar need not advertise the request in accordance with subsection (3); and

(b)

the request cannot be opposed, despite subsection (4); and

(c)

the Registrar must refuse to grant the request.

78 Section 66

Omit “written” (wherever occurring).

79 After section 66

Insert:

66A Registrar may require certain requests to be in writing

The Registrar may require a request under section 63 or 66 to be in writing if the Registrar is of the opinion that the amendment requested is not minor.

80 Paragraph 78(b)

Omit “12 months”, substitute “6 months”.

81 Section 79

Omit “12 months”, substitute “6 months”.

Note: The heading to section 79 is altered by omitting “12” and substituting “6”.

82 Application

The amendments made by items 80 and 81 apply to trade marks whose registration expires at least 12 months after the commencement of this item.

83 After section 82

Insert:

82A Linking series registrations

(1) Subsection (2) applies if:

(a)

before the commencement of this section, 2 or more applications were made each seeking the registration of the same 2 or more trade marks in respect of goods or services of different classes; and

(b)

the filing date of each of those applications is the same; and

(c)

the trade marks are registered trade marks for the purposes of this Act with the same registered owner.

Note: For filing date, registered owner and registered trade mark see section 6.

(2) The registered owner may apply to the Registrar, in writing, to have those trade marks, or so many of those trade marks as are identified in the application to the Registrar, dealt with under this Act as if they were registered as a series in one registration in respect of all goods and services in respect of which the trade marks, or the identified trade marks, were registered.

Note: For this Act and registered owner see section 6.

(3) If an application is made under subsection (2), the Registrar must deal with the trade marks, or the identified trade marks, as if they were one registration.

84 Subsection 128(1)

Omit “12 months”, substitute “6 months”.

85 Application

The amendment made by item 84 applies to trade marks whose registration expires at least 12 months after the commencement of this item.

86 Subsection 133(3)

Repeal the subsection, substitute.

(3) Subject to subsection (3A), the Customs CEO may decide not to seize the goods unless he or she has been given by the objector (or by one or more of the objectors) a written undertaking acceptable to the Customs CEO to repay to the Commonwealth the expenses of seizing the goods.

Note: For objector see section 6.

(3A) The Customs CEO may decide not to seize the goods unless he or she has been given by the objector (or one or more of the objectors), instead of an undertaking, security in an amount that the Customs CEO considers sufficient to repay to the Commonwealth the expenses of seizing the goods if:

(a)

an amount payable under an undertaking given by the objector (or one or more of the objectors) in relation to other goods has not been paid in accordance with the undertaking; and

(b)

the Customs CEO considers it reasonable in all the circumstances to require the security.

(3B) An undertaking may be withdrawn or varied if the Customs CEO consents in writing to a written request from the objector or objectors to do so.

87 At the end of section 133

Add: (5) In this section:

expenses of seizing goods means the expenses that may be incurred by the Commonwealth if the goods were seized.

88 Section 141

Omit “subsection 133(3)”, substitute “subsection 133(3A)”.

89 After section 141

Insert:

141A Failure to comply with undertaking etc.

(1)

If an amount payable under an undertaking in relation to goods covered by a notice given under section 132 is not paid in accordance with the undertaking, the Customs CEO may decide not to seize goods covered by the notice until the amount owing is paid.

(2)

An amount not paid under an undertaking:

(a)

is a debt due by the objector, or by the objectors jointly or each of them separately, to the Commonwealth; and

(b)

may be recovered by an action taken in a court of competent jurisdiction.

Note: For objector see section 6.

(3) If the amount paid under an undertaking in relation to goods covered by a notice given under section 132 is in accordance with the undertaking but is not sufficient to meet the expenses incurred by the Commonwealth as a result of the action taken by the Customs CEO under this Part because of the notice, the amount of the difference between those expenses and the amount paid:

(a)

is a debt due by the objector, or by the objectors jointly or each of them separately, to the Commonwealth; and

(b)

may be recovered by an action taken in a court of competent jurisdiction.

90 Transitional provision

(1)

This item applies if:

(a)

before the commencement of this item, a notice under section 132 of the unamended Trade Marks Act was in force in relation to goods; and

(b)

before the commencement of this item, a security under subsection 133(3) of that Act was given to the Customs CEO to be applied towards the expenses of the Commonwealth incurred in relation to the goods under Part 13 of that Act; and

(c)

after the commencement of this item, the Customs CEO has been given a written undertaking under subsection 133(3) of the amended Trade Marks Act to repay those expenses to the Commonwealth; and

(d)

the undertaking is in force.

(2)

On application in writing to the Customs CEO by the objector or objectors concerned, the Customs CEO must:

(a)

if none of the security has been applied towards the expenses mentioned in paragraph (1)(b)—return the security to the person who gave it; or

(b)

otherwise—refund the amount of the balance of the security to the person who gave it.

(3)

In this item:

amended Trade Marks Act means the Trade Marks Act 1995 as in force immediately after the commencement of this item.

unamended Trade Marks Act means the Trade Marks Act 1995 as in force immediately before the commencement of this item.

91 Section 162 (note)

Repeal the note.

92 At the end of Division 2 of Part 22

Add:

239A Linked trade marks

(1) Subsection (2) applies if:

(a)

the same trade mark was registered before 1 January 1996 in respect of goods or services of different classes; and

(b)

all the applications for the trade marks were lodged (or were taken under the repealed Act to have been lodged) on the same day with the Trade Marks Office; and

(c)

the trade marks are registered trade marks for the purposes of this Act with the same registered owner.

Trade Marks Act 1995

93 Readers guide (appendix)

Repeal the appendix, substitute:

Appendix - Obtaining registration of a trade mark

* An Appeal may be made to the Federal Court aginst the decision of the Registrar.

Unbroken lines signify the most likely course of events. Note: Fees and time limits may apply at various stages of this process.

94 At the end of subsection 29(1)

Add: Note: For month see section 6.

95 Section 78 (note)

Before “Register”, insert “month and”.

96 At the end of section 79

Add: Note: For month see section 6.

97 At the end of section 80F

Add: Note: For month see section 6.

98 At the end of subsection 80G(1)

Add: Note: For month see section 6.

99 Subsection 100(1) (note 2)

After “file”, insert “, month”.

100 At the end of section 128

Add: Note: For month see section 6.

101 Subsection 143(2) (note)

Omit “Note”, substitute “Note 1”.

102 At the end of subsection 143(2)

Add: Note 2: For month see section 6.

103 At the end of subsection 224(5)

Add: Note: For month see section 6.

[Minister’s second reading speech made in— Senate on 21 June 2006 House of Representatives on 12 October 2006]

(94/06)