This Act has been repealed and is no longer in force. It is retained for historical reference.
Jurisdiction
Commonwealth
Act Number
260 of 1913
Collection
legislative instrument
Plain English Summary
7/10 complexity
These Regulations set out the procedural rules, required forms, fee levels and the goods classification used to operate the Trade Marks Act 1905–1912, and they cancel earlier 1906/1907 regulations. They govern how trade mark applications are filed, examined, advertised, opposed, renewed, assigned and recorded, and create special procedures for standardization and the Commonwealth trade mark. Applicants, proprietors, opponents and agents must pay prescribed fees (Second Schedule, Reg 5), meet documentary and timing rules (Forms, Regs 6,15,23), and submit to decisions by the Registrar, Examiners, the Minister, and courts (Regs 29–35, 42–50, 68–76).
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Current sections
Direct links to the current provisions in Trade Marks Regulations 1913 (Provisional).
1
Source text: opening excerpt
Sourced from the Federal Register of Legislation (legislation.gov.au), CC BY 4.0.
1 Trade Marks Regulations 1913 (Provisional)
STATUTORY RULES.
1913. No. 260.
PROVISIONAL REGULATIONS UNDER THE TRADE MARKS ACT 1905-1912.
I, THE GOVERNOR-GENERAL in and over the Commonwealth of Australia, acting with the advice of the Federal Executive Council, do hereby certify that, on account of urgency, the following Regulations under the Trade Marks Act 1905-1912 should come into immediate operation, and make the Regulations to come into operation forthwith as Provisional Regulations.
Statutory Rules, 1906, No. 122, and 1907, No. 90, being Regulations under the Trade Marks Act 1905, which came into operation on the 28th December, 1906, and 29th August, 1907, respectively, are hereby cancelled.
Dated this 8th day of October, One thousand nine hundred and thirteen.
DENMAN,
Governor-General.
By His Excellency’s Command,
W. H. IRVINE,
Attorney-General.
TRADE MARKS REGULATIONS.
PART I.—PRELIMINARY.
Division 1.—General Provisions.
Short title.
These Regulations may be cited as the Trade Marks Regulations 1913.
Parts.
These Regulations are divided into parts as follows:—
Part I.—Preliminary.
Division 1. General Provisions.
Division 2. Agents.
Part II.—Registration of Trade Marks.
Division 1. Applications.
Division 2. Procedure on Applications.
Division 3. Opposition.
Division 4. Renewal of Registration.
Part III.—Appeals.
Division 1. Appeal to the Law Officer.
Division 2. Appeals to High Court or Supreme Court.
Part IV—Assignments and Transmissions.
Part V.—The Register of Trade Marks.
Division 1. General.
Division 2. Correction of the Register by the Registrar.
Division 3. Rectification of the Register by the Court.
Part VI.—Standardization Trade Marks.
Part VII.—The Commonwealth Trade Mark.
Part VIII.—Miscellaneous.
Definitions.
In these Regulations–
“The Act” means the Trade Marks Act 1905-1912.
“The Official Journal” means the Australian Official Journal of Trade Marks.
Classification of goods.
4. (1) The Classification of goods for the purposes of the Act and these Regulations shall be as set out in the First Schedule.
(2) If any doubt arises as to the class to which any particular description of goods belongs, it shall be determined by the Registrar.
Fees.
5. (1) The Fees to be paid in connection with applications, registrations and other matters under the Act and these Regulations, shall be as set out in the Second Schedule.
(2) Fees must be paid in cash.
(3) Registration of a trade mark, or series of trade marts, shall not be effected until the prescribed registration fees have been paid.
Forms.
6. (1) Where in these Regulations any form is referred to, the reference is to a form in the Third Schedule.
(2) The forms contained in the Third Schedule may, as far as they are applicable, be used in any proceeding under the Act or these Regulations to which they are appropriate.
Hours of business.
Except in the case of holidays observed under the Commonwealth Public Service Act 1902-1911, the Trade Marks Office shall be open to the public on week days (other than Saturdays) from 10 a.m. to 4 p.m., and on Saturdays from 10 a.m. to Noon.
Address for service.
If the Registrar so requires, every applicant or opponent shall state an address for service at some place in or near to the city in which the Trade Marks Office is situate.
Address for service of foreign proprietor.
The Registrar may require the proprietor of a registered trade mark, who does not reside or carry on business within Australia, to give an address for service within Australia, and in such case such address may be treated as the actual address of the proprietor for all purposes connected with such trade mark.
Size, &c., of documents.
Subject to any directions from time to time given by the Registrar, all applications, notices, statements, counter-statements, representations of marks, papers having representations affixed, and other documents required by the Act or these Regulations to be left at or sent to the Trade Marks Office or a sub-office, shall be upon foolscap paper of a size of 13 inches by 8 inches, and shall have on the left thereof a margin of not less than one inch and a half.
Division 2.—Agents.
Appointment of agent.
Any applicant, opponent, or proprietor may appoint some person residing in Australia to be his agent to represent him in relation to a trade mark, either generally or for any specified purpose.
Form of appointment.
The appointment of an agent must be in writing, and may be in accordance with Form A., and must be lodged with the Registrar.
Agent to represent principal.
Applications, notices of opposition, and documents may be signed by an agent on behalf of his principal, and all communications between the Registrar and the principal may be sent to the agent, and service on the agent shall be deemed service on the principal.
Registrar’s discretion as to agents.
The Registrar shall not be bound to recognise as an agent, or to receive further communications from, any person who has been convicted criminally or whose name has been removed from the Register of Patent Attorneys kept under the provisions of the Patents Act 1903-1909, and not
since restored. Subject to the approval of the Minister, the Registrar may also refuse to receive communications from any agent whose conduct in the Registrar’s opinion is calculated to prejudice the applicant’s interest, and may call on the applicant either to appoint a more suitable agent, or to communicate directly with the Registrar.
PART II.—REGISTRATION OF TRADE MARKS.
Division 1.—Applications.
Requisites of application.
An application for the registration of a trade mark must be made in writing, and must set out the name, address and description of the applicant, and his address for service, and must contain a representation of the trade mark, and be accompanied by twelve additional representations thereof, which shall be facsimiles of the representation contained in the application. Seven of the additional representations are to be affixed as hereafter provided, and five unaffixed.
16. (1) An application must be signed by the applicant or by an agent on his behalf, but the following shall be sufficient:—
(a) If the application is made by a firm, the firm’s signature thereto may be made by any member of the firm.
(b) If the application is made by a body corporate or an association, it may be signed by a director or by the secretary or some principal officer thereof, on behalf of the body corporate or association.
(2) Where an application is signed by an agent on behalf of the applicant, the application must be accompanied by an authority by the applicant to the agent.
Representation of trade marks
17. (1) Where possible, a representation of the trade mark must be affixed to the square in the form of application.
(2) Where the representation exceeds the square in size, the representation must be mounted on linen, and part of the mounting affixed to the square, and the rest folded over.
Representation in special cases.
Where the representation cannot be affixed to the square in the form of application, a specimen or copy of the trade mark may be lodged with the application either in full size or on a reduced scale, and in such manner and form as the Registrar directs.
Foreign words.
Where a trade mark contains words other than English words or in other than Roman characters, a translation of the words shall, if the Registrar so requires, be indorsed on or affixed to the application and each additional representation of the trade mark lodged with it.
Representation of a series of trade marks.
Where an application relates to a series of trade marks, a representation of each trade mark of the series shall be affixed as aforesaid to the form of application, and to each of the accompanying Forms C.
Registrar may require fresh representation.
The Registrar may, if dissatisfied with the representation of a trade mark, require a fresh representation, either before he proceeds with the application, or before he registers the trade mark.
Form of application.
The application may be in accordance with such of the Forms B, B1, B2, or B3, as is applicable to the case, but in the case of applications in Form B2, a declaration in accordance with Form D must accompany the application.
Applications when lodged to be indorsed with actual time of lodgment.
Every application for registration of a trade mark shall be indorsed with the actual time of its receipt, either at the Trade Marks Office or at a Sub-office. For the purposes of this Regulation, the time at which an application is lodged in a State, according to the standard or legal time in that State, shall be reckoned as the actual time of lodgment of the application.
Manner of recording applications.
Applications for registration of trade marks sent by prepaid letter through the post, shall as far as practicable, be recorded in the order in which the letters containing them were delivered at the Trade Mark Office or Sub-office; or in the case of letters delivered at the same time, in the order in which they are opened.
Restriction on use of certain words in trade marks.
The Registrar may refuse to accept any application upon which the following appear:—
(a) The words “Patent,” “Patented,” “By Royal Letters Patent,” “Registered,” “Registered Design,” “Copyright,” “Entered at Stationers Hall,” “To Counterfeit this is Forgery,” or words to the like effect; or
(b) The word “Royal” or any word of similar import, if the use of the word in the trade mark might lead people to think that the applicant had Royal or Government patronage, or authorization; or
(c) Any representation of the King, the Queen, or any member of the Royal Family; or
(d) Any representation of the Royal arms, or Royal crests, or arms or crests so nearly resembling them as to be likely to lead to mistake, or of the Royal Crowns, or of the British National Flags; or
(e) Any representation of the arms, flag, or seal of the Commonwealth or of any State; or
(f) Any representation of the arms of any foreign state or country; or
(g) Any representation of the arms or emblems of any city or town in the Commonwealth, or of any Commonwealth or State public authority or public institution:
Provided always that nothing contained in this Regulation shall preclude the Registrar from allowing the registration of any mark properly registered under a State Trade Marks Act, or any mark in use at the commencement of the Trade Marks Act 1905, which could have been lawfully registered under a State Trade Marks Act in force at the commencement of the Trade Marks Act 1905, in the State in which the trade mark was then used, had an application for its registration been made prior to the commencement of the Trade Marks Act 1905.
Use of arms of foreign State.
Where representations of the arms of a foreign State or place appear on a mark the Registrar may call for such justification as he may deem necessary for their use.
Use of arms of city, &c.
Where a representation of the arms or emblems of any city, borough, town, place, society, body corporate, or institution appears on a mark, the applicant shall, if so required, furnish the Registrar with a consent from such official as the Registrar may consider entitled to give consent to the use of such arms or emblems.
Use of name or representation of persons.
Where the names or representations of living persons appear on a trade mark, the applicant shall, if so required, furnish the Registrar with consents from such persons before the Registrar proceeds to register the mark. In the case of persons recently dead, the Registrar may call for consents from their legal representatives before proceeding with registration of a trade mark on which their names or representations appear.
Division 2.—Procedure on Applications.
Acknowledgment of application
On receipt of the application the Registrar shall furnish the applicant with an acknowledgment thereof.
Acceptance of application.
If the Examiner reports favorably upon the application and the Registrar is of opinion that the trade mark is. in compliance with the Act, and no bar to its registration exists, the Registrar shall accept the application.
Notice of refusal.
If the Examiner reports adversely to the application notice of the objection shall be given to the applicant. The notice shall state the grounds of the objection and shall inform the applicant that he is entitled to be heard personally or by his agent.
Notice of application for hearing.
Within one month from the receipt of the notice or such further time as is fixed by the notice, the applicant shall notify the Registrar whether or not he desires to be heard upon the matter, and in default of his doing so the application shall be deemed to be abandoned.
Notice of hearing.
If the applicant notifies the Registrar that he desires to be heard the Registrar shall fix a time for the hearing, and shall give to the applicant not less than ten days’ notice of the time so fixed, and if the applicant fails to appear personally, or by his agent, at the time fixed for the hearing, the application shall be deemed to be abandoned.
Hearing.
On the hearing, the Registrar shall hear the applicant, and shall consider the application, and shall decide whether to accept it with or without modifications or conditions, or to refuse it.
Advertisement of application.
Every application for the registration of a trade mark which has been accepted shall be advertised by the Registrar in the Official Journal.
Means of advertising trade mark to be supplied.
For the purposes of the advertisement the applicant may be required to furnish a type-high block or electrotype (or more than one, if necessary) of the trade mark, of such surface measurement as is directed by the Registrar, or such other information or means of advertising the trade mark as is required by the Registrar; and the Registrar, if dissatisfied with any block or electrotype furnished by the applicant may require a fresh block or electrotype before proceeding with the advertisement.
Advertisement of series.
When an application relates to a series of trade marks, the applicant may be required to furnish a wood block or electrotype (or more than one, if necessary) of any or of each of the trade marks constituting the series; and the Registrar may, if he thinks fit, insert with the advertisement of the application a statement of the extent to which the several trade marks differ from one another.
Action where representation of trade mark not advertised.
If no representation of the trade mark is inserted in connexion with the advertisement, or if the trade mark is limited to a particular colour or colours, and in all cases in which he deems it desirable, the Registrar shall state in the advertisement the place where a specimen or representation of the trade mark is deposited for exhibition.
Registrar may refuse to register after acceptance in some cases.
In pursuance of Section 47 of the Act, the Registrar need not register a mark where in his opinion the circumstances of the case warrant a refusal to register or where the mark has been accepted in error. In such cases the Registrar may withdraw his acceptance and refuse to register the mark; but any such refusal shall be deemed a refusal under sub-section 3 of Section 33 of the Act, and an applicant shall have there after he same right of being heard, and of appealing, as he would have had if the mark had been refused in the first instance.
Where trade mark contains a description of the goods.
Where the, name or a description of any goods appears on a trade mark the Registrar may refuse to register such mark in respect of any goods other than the goods so named or described
This is an opening excerpt, not the complete document.