Part 23REPEAL AND TRANSITIONAL

PART 23—REPEAL AND TRANSITIONAL Division 1—Repeal Repeal 241. The Trade Marks Act 1955 is repealed. Division 2—Marks registered under the repealed Act Automatic registration under this Act 242.(1) All trade marks that, immediately before the commencement of this Act, were registered in Part A or B, or both Parts A and B, of the old register are registered trade marks for the purposes of this Act. (2) All trade marks that, immediately before the commencement of this Act, were registered as certification trade marks in Part C of the old register are registered certification trade marks for the purposes of this Act. (3) All trade marks that, immediately before the commencement of this Act, were registered as defensive trade marks in Part D of the old register are registered as defensive trade marks for the purposes of this Act. Associated trade marks 243. If 2 or more trade marks were entered as associated trade marks in the old register, no equivalent entry designating them as associated trade marks is to be made in the Register. Registration conclusive after 7 years 244.(1) This section applies in relation to: (a) a registered trade mark that: (i) immediately before the commencement of this Act, was registered in Part A of the old register; and (ii) has not at any time after the commencement of this Act ceased to be registered; and (b) a registered trade mark: (i) whose application for registration in Part A of the old register had been accepted under the repealed Act and was still pending before the Registrar immediately before the commencement of this Act; and (ii) that has not at any time after the commencement of this Act ceased to be registered. (2) In any legal proceedings: (a) the original registration under the repealed Act of a trade mark referred to in paragraph (l)(a); or (b) the original registration under this Act of a trade mark referred to in paragraph (l)(b); is taken to be valid in all respects after a period of 7 years from the date of registration of the trade mark unless it is shown that: (c) the original registration was obtained by fraud; or (d) an application for the registration of the trade mark would be rejected under section 42; or (e) the trade mark was not, at the commencement of the proceedings, capable of distinguishing the goods or services of the registered owner in relation to which the trade mark is used from the goods or services of other persons. Term of registration 245. The registration of an existing registered mark expires on the day on which it would have expired under the repealed Act if that Act had not been repealed. Renewal 246.(1) Subject to subsection (2), Division 2 of Part 7 applies in relation to the renewal of the registration of an existing registered mark. (2) If the registration of an existing registered mark is due to expire within 6 months after the commencement of this Act and the registration is renewed, the registration is to be renewed for a period of 14 years from the day on which the registration would have expired if it had not been renewed. Restoration of trade mark removed from old register for non-payment of renewal fee 247.(1) If: (a) a trade mark was removed from the old register under subsection 70(2) of the repealed Act because the registration of the trade mark had expired and had not been renewed; and (b) the registration of the trade mark had expired within 12 months before the commencing day; then, if the Registrar is satisfied that it is just to do so, the Registrar may, within 12 months from the day on which the registration expired: (c) make an entry in the Register to the effect that all particulars of the trade mark removed from the old register under the repealed Act are restored to the Register; and (d) renew the registration of the trade mark for the period beginning on the commencing day that, together with the period immediately before the commencing day during which the trade mark remained unregistered, equals 14 years. (2) The renewal may be subject to any conditions or limitations that the Registrar thinks fit to impose. (3) The Registrar must give notice of his or her decision in accordance with the regulations. (4) An application may be made to the Administrative Appeals Tribunal for the review of a decision of the Registrar under this section. Division 3—Matters pending at commencement of Act Applications, notices etc.—general 248.(1) Subject to this Division, an application, notice or request that: (a) was lodged with the Registrar in accordance with the repealed Act; and (b) was pending immediately before the commencement of this Act; is to be dealt with as if it had been made under this Act. (2) The application, notice or request may not be rejected on the ground that it was not filed in accordance with this Act. Application for registration of trade mark 249.(1) This section applies to an application for the registration of a trade mark in Part A or B of the old register if the application was pending immediately before the commencement of this Act. (2) Except as provided under subsection 248(2), Parts 3, 4 and 5 apply in relation to the application as if it had not been accepted under the repealed Act. (3) If the application had been accepted under the repealed Act but the trade mark had not been registered before the commencement of this Act, then, except as provided in subsection (4), the provisions of the repealed Act continue to apply until the Registrar makes a decision to register, or to refuse to register the trade mark, (4) If, when dealing with the application under the repealed Act as provided by subsection (3), the Registrar withdraws the acceptance of the application under subsection 44(3) of that Act, the Registrar must then continue to deal with the application under this Act as if it were an application whose acceptance had been revoked under subsection 36(1). (5) If the Registrar decides to register the trade mark, Part 7 applies. (6) The filing date in respect of the application is the day on which the application was lodged with the Trade Marks Office under the repealed Act. Divisional application in relation to pending application 250. If an application for the registration of a trade mark in the old register was pending, but had not been accepted, immediately before the commencement of this Act, the applicant may, within 6 months after the commencing day, apply under subsection 47(1) for a part of that trade mark to be registered as a trade mark. More than one application made on same day for registration of trade mark 251.(1) If: (a) on the same day before the commencement of this Act, a person made more than one application each seeking the registration of the same trade mark but in respect of goods or services of different classes; and (b) those applications (“existing applications”) were pending, but had not been accepted, immediately before the commencement of this Act; the applicant may, at any time before any existing application is accepted, apply to the Registrar to have all the existing applications dealt with under this Act as if they were one application for the registration of the trade mark in respect of all goods and services specified in the existing applications. (2) If an application is made under subsection (1), the Registrar must deal with the existing applications as if they were a single application in respect of the trade mark made on the commencing day. (3) The filing date for the single application taken to have been made under subsection (2) is the day on which the existing applications were lodged, or would be taken to have been lodged (as the case may be), with the Trade Marks Office under the repealed Act. Application for registration of trade mark whose registration has been sought in Convention country 252.(1) This section applies if: (a) an application for the registration in Australia of a trade mark whose registration had been sought in a Convention country was made under section 109 of the. repealed Act: and (b) the application was still pending immediately before the commencement of this Act. (2) If the application had not been accepted under the repealed Act, the applicant (or the applicant’s successor in title) must, within 6 months after the commencing day but before the application is accepted, claim priority for the registration of the trade mark in accordance with section 27 in order to obtain registration from the date on which an application was made in a Convention country. If priority is so claimed and the trade mark is registered under this Act, subsection 73(2) applies in relation to the registration. (3) If: (a) the application had been accepted, but the trade mark had not been registered, under the repealed Act; and (b) the trade mark is registered under this Act; subsection 73(2) applies in relation to the registration as if priority had been claimed under section 27. Application for registration of a mark in Part C of the old register 253. Subject to Part 17, sections 249 to 252 apply to an application for the registration of a mark as a certification trade mark in Part C of the old register if the application was pending immediately before the commencement of this Act. Application for registration of defensive trade mark in Part D of the old register 254. Subject to Part 18, sections 249 to 252 apply to an application for the registration of a mark as a defensive trade mark in Part D of the old register if the application was pending immediately before the commencement of this Act. Amendment of application—specification of goods or services 255.(1.) If: (a) an application for the registration of a mark in Part A, B, C or D of the old register was pending, but had not been accepted, immediately before the commencement of this Act; and (b) the application had previously been amended; and (c) the application as amended did not relate to all of the goods or services specified in the application before its amendment; the applicant may, within 6 months alter the commencing day, apply to the Registrar for the application to be again amended so as to relate to some or all of the goods and services specified in the application before its amendment under the repealed Act, if: (d) the application is still pending, but has not been accepted, under this Act and (e) subsection 43(3) of the repealed Act would apply in relation to a further application for the registration of the mark in respect of the goods or services excluded from the original application, if that Act were still in force. (2) If an application is amended under subsection (1), it must (if necessary) be also amended so as to be in accordance with Part 4. Term of registration if filing date is earlier than commencement of this Act 256. If: (a) a trade mark, collective trade mark, certification trade mark or defensive trade mark is registered under this Act; and (b) the filing date in respect of the application for the registration of the trade mark is a date before the commencement of this Act; the registration or the trade mark is to expire 7 years after the filing date. Application for registration of assignment etc. 257. If an application for the registration in the old register of the assignment or transmission of an existing registered mark is pending on the commencement of this Act, this Act applies in relation to the application as if: (a) it were an application under section 109 for a record of the assignment or transmission to be entered in the Register; and (b) that application was filed on the commencement of this Act. Rectification of Register 258. If proceedings arising from an application to a court under section 22 (Rectification of Register) of the repealed Act are pending immediately before the commencement of this Act, the matter is to be decided under the repealed Act as if the old register were to be rectified, but any order made by the Court may only be in respect of the rectification of the Register. Action for removal of trade mark from Register for non-use 259. If proceedings arising from an application to the Registrar or a court under section 23 (Provisions as to non-use of trade mark) of the repealed Act are pending immediately before the commencement of this Act, the repealed Act continues to apply: (a) in relation to those proceedings; and (b) for the purposes of any appeal from an order or direction of the Registrar or the court under that section; as if the reference in subsection 23(1) to the Register were a reference to the. Register within the meaning of this Act, Action for infringement of trade mark etc. 260. Sections 62 to 67 and section 78 of the repealed Act continue to apply in relation to an action for the infringement of an existing registered mark that was pending immediately before the commencement of this Act. Action under this Act for infringement of trade mark under repealed Act 261. If: (a) before the commencement of this Act a person engaged in conduct that infringed a mark registered under the repealed Act; and (b) an action relating to that infringement was not pending immediately before the commencement of this Act; and (c) the mark is an existing registered mark for the purposes of this Act; then, subject to any law limiting the time within which such an action may be started, an action may be brought under this Act for that infringement of the trade mark. The registered owner (or a registered user) of the existing trade mark is not, however, entitled under this Act to any injunction or other relief to which he or she would not have been entitled under the repealed Act. Acts not constituting infringement of trade mark: 262.(1) This section applies if: (a) immediately before the commencement of this Act, a person was engaging in conduct that did not constitute an infringement of a mark registered under the repealed Act; and (b) the mark is an existing registered mark for the purposes of this Act; and (c) the person has, since the commencement of this Act, continuously engaged in, and is engaging in, that conduct; and (d) that conduct is an infringement of the existing registered mark under this Act. (2) In spite of section 129, the person does not infringe the existing registered mark by engaging in that conduct. Application of this Act—general 263.(1) Except as otherwise provided by this Division or the regulations, this Act applies in relation to any action or proceeding validly brought for the purposes of the repealed Act that were still pending immediately before the commencement of this Act as if it were an action or proceeding validly brought on the commencing day under the relevant provision of this Act. (2) Anything done under the repealed Act for the purposes of the action or proceeding Is taken to have been done: (a) on the commencing day; and (b) in accordance with this Act. Fees 264. No fee is payable under this Act in relation to an act that was done under the repealed Act and is taken, under this Division, to be an act done under this Act. Division 4—General The Registrar and Deputy Registrar 265. Persons holding office as Registrar of Trade Marks and Deputy Registrar of Trade Marks immediately before the commencement of this Act continue to hold those respective offices on and after that day. Address for service 266.(1) If, immediately before the commencement of this Act, the address for service of an applicant for the registration of a trade mark, or of an opponent to the registration, under subsection 132(1) or (2) of the repealed Act (“existing address”) was an address in Australia, that address remains the address for service of the applicant or opponent for the purposes of this Act until he or she notifies another address to the Registrar under section 224. (2) If the address appearing in the old register immediately before the commencement of this Act as the address of the proprietor or of a registered user of an existing registered mark (“existing address”) is an address in Australia, that address is the address for service of the registered owner of that mark or of the registered user for the purposes of this Act until the registered owner or registered user notifies another address to the Registrar under section 224. (3) If the existing address of a person immediately before the commencement of this Act was not an address in Australia, the person must give in writing to the Registrar an address in Australia as his or her address for service. Notices to Comptroller objecting to importation of goods 267.(1) If a notice under paragraph 103(3)(b) of the repealed Act objecting to the importation of goods infringing a registered trade mark had not been revoked before the commencement of this Act, then, subject to subsection (2), the notice continues to have effect for the purposes of Part 14 of this Act as if it were a notice given under section 141 of this Act. (2) The notice ceases to have effect: (a) it the Comptroller is given a notice under section 141 objecting to any importation of goods infringing the trade mark; or (b) at the end of 3 months from the commencing day; whichever first occurs. \[Minister’s second reading speech made in—House of Representatives on 18 October 1994 Senate on 7 November 1994\]