Part 22MISCELLANEOUS

PART 22—MISCELLANEOUS Division 1—Applications and other documents Making and signing applications etc. 221. An application, notice or request required or permitted under this Act to be made or signed by a person may be made or signed, on behalf of that person, by: (b) a patent attorney; or (c) a person referred to in paragraph 135(l)(h) or (i) of the repealed Act. Filing of documents 222. A document may be filed at the Trade Marks Office by delivering the document to a sub-office of the Trade Marks Office either personally or by post or by any other prescribed means. Withdrawal of application etc. 223. A person who has filed an application, notice or request may withdraw it, in accordance with the regulations, at any time while it is still being considered by the Registrar. Address for service 224.(1) The address for service of a person who has filed an application, notice or request is: (a) the address for service stated in the application, notice or request; or (b) if the person has notified in writing another address to the Registrar—that other address. (2) When: (a) a trade mark is registered; or (b) an interest in, or a right in respect of, a trade mark that a person (including a registered user) has is recorded in the Register; the registered owner or the person must give to the Registrar his or her address for service and the Registrar must enter that address in the Register. (3) The registered owner of a registered trade mark or any person whose right or interest in a trade mark is recorded in the Register must notify the Registrar in writing of any change in his or her address for service and the Registrar must alter the Register accordingly. (4) An address for service must be an address in Australia. (5) If this Act provides that a document is to be served on, or given or sent to, a person: (a) the document may be served on, or sent by post to, the person at the address for service of the person; or (b) if the person does not have an address for service—the document may be served on an agent of the person in Australia or may be sent by post to any address of the person in Australia that is known to the Registrar. Death of Applicant etc. 225.(1) If all applicant for the registration of a trade mark dies before registration is granted on the application, his or her legal representative may proceed with the application. (2) If, at any time after a trade mark is registered, the Registrar is satisfied that the person in whose name the trade mark is registered had died (or, in the case of a body corporate, had ceased to exist) before registration was granted, the Registrar may amend the Register by substituting for the name entered in the Register the name of the person who should be the registered owner of the trade mark. Division 2—Proceedings before the Registrar or a court Description of registered trade mark 226. In an indictment, information, pleading or proceeding relating to a registered trade mark, the trade mark may be identified by its registration number. It is not necessary to reproduce or describe the trade mark. Evidence of trade usage 227. In an action or proceeding relating to a trade mark, evidence is admissible of the usage of the trade concerned and of any relevant trade mark, trade name or get-up legitimately used by other persons. Death of party to proceeding before Registrar 228. If a person who is party to a proceeding pending before the Registrar dies, the Registrar may: (a) on being so asked, substitute in the proceeding another person in the place of the deceased party if the Registrar is satisfied that the interest of the deceased party has been transmitted to that other person; or (b) allow the proceeding to continue without any substitution if the Registrar is of the opinion that the interest of the deceased party is sufficiently represented by the surviving parties. Costs awarded by Registrar 229.(1) Costs may be awarded by the Registrar either: (a) when proceedings before him or her are discontinued; or (b) when they are over. (2) If a party is ordered to pay the costs of another party, the costs may be recovered in a court of competent jurisdiction as a debt due by the first party to the other party. Costs of attendance of patent attorney 230. If: (a) a patent attorney has attended in court to assist a party at the hearing of an action or proceeding under this Act; and (b) an order is made for payment of the costs of that party; those costs may include an allowance for that attendance. Security for costs 231. If a person who neither resides nor carries on business in Australia: (a) gives notice of opposition under this Act; or (b) applies to the Registrar under Part 9 for a trade mark to be removed from, or not to be restored to, the Register; or (c) appeals to the Federal Court under this Act; the Registrar or the Federal Court (as the case may be) may require the person to give security for the costs of the proceeding or appeal and may, if security is not given, dismiss the proceeding or appeal. Passing off actions 232. In an action for passing off arising out of the use by the defendant of a registered trade mark: (a) of which he or she is the registered proprietor or a registered user; and (b) that is substantially identical with, or deceptively similar to, the trade mark of the plaintiff; damages may not be awarded against the defendant if the defendant satisfies the court: (c) that, at the time when the defendant began to use the trade mark, he or she was unaware, and had no reasonable means of finding out, that the trade mark of the plaintiff was in use; and (d) that, when the defendant became aware of the existence and nature of the plaintiff’s trade mark, he or she immediately ceased to use the trade mark in relation to the goods or services in relation to which it was used by the plaintiff. Division 3—General Fees 233.(1) The regulations may prescribe the fees to be paid for the purposes of this Act and may prescribe different fees in respect of the doing of an act according to the time when the act was done. (2) Prescribed fees are payable in accordance with the regulations. (3) If a fee is payable in respect of the doing of an act by the Registrar, the Commission or the Comptroller, the Registrar, Commission or Comptroller must not do the act until the fee has been paid. (4) Subject to subsection (5), if: (a) a fee is payable in respect of the doing of an act by a person other than the Registrar, the Commission or the Comptroller; or (b) a fee is payable in respect of the filing of a document; the act is taken to have been done, or the document is taken to have been filed, in spite of the failure to pay the fee. (5) If the Registrar, the Commission or the Comptroller notifies the person concerned, or his or her agent or attorney, in accordance with the regulations, that the fee has not been paid, the act is not taken to have been done, or the document is not taken to have been filed, before the clay on which the fee is paid. Extension of time 234.(1) If, because of an error or omission by the Registrar, a Deputy Registrar or an employee, a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Registrar must extend the time for doing the act. (2) If. because of: (a) an error or omission by the person concerned or by his or her agent or attorney; or (b) circumstances beyond the control of the person concerned; a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Registrar may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act. (3) If: (a) a relevant act that a person is required to do within a certain time is not, or cannot be, done within that time; and (b) on application made by that person in accordance with the regulations, the Registrar is of the opinion that special circumstances exist that justify an extension of that time; the Registrar may extend the time for doing the act. (4) The time allowed for doing a relevant act may be extended, whether before or after that time has expired. (5) If an application is made for an extension of time for more than 3 months, the Registrar must advertise the application in the Official Journal. (6) A person may, as prescribed, oppose the granting of the application. (7) An application may be made to the Administrative Appeals Tribunal for the review of a decision of the Registrar not to extend the time for the doing of an act. (8) An action cannot be brought in respect of an infringement of a trade mark committed between: (a) the day on which the trade mark was removed from the Register because a particular act was not done within a particular period; and (b) the day on which the trade mark is restored to the Register because the act was done within the period as extended under this section. (9) In this section: “relevant act” means: (a) any act (other than a prescribed act) done in relation to a trade mark; or (b) the filing of any document (other than a prescribed document) for the purposes of this Act; or (c) any proceedings under this Act (other than court proceedings). Convention countries 235. The regulations may declare a foreign country to be a Convention country for the purposes of this Act. Publication of Official Journal etc. 236.(1) The Registrar must issue at regular intervals, as determined by the Registrar, an Official Journal of Trade Marks containing: (a) the matters that are required under this Act to be advertised in the Official Journal; and (b) any other matter that the Registrar thinks fit. (2) The Registrar must make arrangements for selling copies of the Official Journal. (3) The Registrar may prepare, publish and sell documents relating to trade marks as the Registrar thinks fit. Notice regarding review of decision by Administrative Appeals Tribunal 237.(1) If, under a provision of this Act, an application may be made to the Administrative Appeals Tribunal for the review of a decision of a person: (a) the person must give a written notice of the decision to any person affected by it; and (b) the notice must include a statement to the effect that, subject to the Administrative Appeals Tribunal Act 1975, application may be made to the Administrative Appeals Tribunal for the review of the decision to which the notice relates by or on behalf of the person or persons whose interests are affected by the decision. (2) Failure to comply with subsection (1) in relation to a decision does not affect the validity of the decision. (3) In this section: “decision” has the same meaning as in the Administrative Appeals Tribunal Act 1975. Use of trade mark for export trade 238. If: (a) a trade mark is applied in Australia to goods that are to be exported from Australia (“export goods”); or (b) any other act is done in Australia to export goods which, if done in relation to goods to be dealt with in the course of trade in Australia, would constitute a use of the trade mark in Australia; the application of the trade mark or the other act is taken, for the purposes of this Act, to constitute use of the trade mark in relation to the export goods. Rights etc. of patent attorney 239.(1) A patent attorney: (a) is entitled to prepare documents, transact business and conduct proceedings for the purposes of this Act: and (b) has any right or privilege that is prescribed. (2) This section does not authorise a patent attorney to prepare a document that is to be issued from or filed in a court or to transact business or to conduct proceedings in a court. Regulations 240.(1) The Governor-General may make regulations: (a) prescribing matters required or permitted by this Act to be prescribed; or (b) prescribing matters necessary or convenient to be prescribed for carrying out or giving effect to this Act; or (c) prescribing matters necessary or convenient to be prescribed for the conduct of any business relating to the Trade Marks Office. (2) Without limiting subsection (1), the regulations may: (a) provide for appeals against decisions of the Registrar made under the regulations; and (b) require persons to make statutory declarations in support of any application, notice or request filed under this Act; and (c) provide for the making of a declaration, or the doing of an act, under this Act on behalf of a person who, because of infancy or physical or mental disability, is unable to make the declaration or do the act; and (d) provide for the refund, in specific circumstances, of the whole or part of a fee paid in respect of the filing of a document; and (e) provide for the remission of, or the exemption of specified classes of persons from the payment of, the whole or part of a fee; and (f) give power to the Registrar: (i) to require, in specified circumstances, a person applying under Part 9 for a trade mark to be removed from, or not to be restored to. the Register to give security for any costs that may arise from the proceedings; and (ii) not to proceed with the application if security is not given; and (iii) to refund to the applicant any amount given as security and not applied in settling costs awarded against the defendant; and (g) provide for the destruction of documents relating to a trade mark at least 25 years after the registration of the trade mark has ceased; and (h) prescribe as penalties for offences against the regulations fines not exceeding 10 penalty units; and (i) make transitional or consequential provision as necessary or convenient because of the repeal of the repealed Act and the enactment of this Act; and (j) provide for regulations made under the repealed Act to continue to have effect (with any prescribed alterations) for specified purposes of this Act.