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The Trade Marks Regulations 1995 set out the practical rules for registering and managing trade marks under the Trade Marks Act: how applications are made and examined, pre‑filing assistance, opposition procedures, Madrid Protocol implementation for international filings, regulation of trade marks attorneys, certification/collective marks, and fees and administrative processes.
They affect businesses, attorneys, opponents and IP Australia, and matter because they turn the Act’s principles into enforceable procedures that ensure fair, transparent and treaty‑compliant trade mark protection.
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These Regulations are the Trade Marks Regulations 1995.
Note: A number of expressions used in these Regulations are defined in the Act, including Commission.
In these Regulations, unless the contrary intention appears:
accredited course of study means a course of study that is accredited by the Board under regulation 20.2A of the Patents Regulations 1991.
Act means the Trade Marks Act 1995.
AFS request has the meaning given by subregulation 3A.3(1).
ART means the Administrative Review Tribunal.
certificate of verification means a statement:
(a) that a document to which the statement relates:
(i) has been translated by a person who is proficient in both the language from which the document has been translated into English and English; and
(ii) is a true and complete translation of the accompanying document to the best of the knowledge of the person who signs the statement; and
(b) that is dated and signed.
Code of Conduct means the standard of practice titled “Code of Conduct for Patent and Trade Mark Attorneys” that is established by the Board from time to time.
Designated Manager has the same meaning as in the Patents Act 1990.
Disciplinary Tribunal means the Trans‑Tasman IP Attorneys Disciplinary Tribunal established by regulation 20.61 of the Patents Regulations 1991.
earlier application, in relation to an application for the registration of a trade mark for which a right of priority is claimed, means an application for the registration of that trade mark in a Convention country:
(a) that was filed, at the trade marks office (or its equivalent) of that Convention country, before the application for which the right of priority is claimed; and
(b) on which the claim for the right of priority is based.
expedited dispatch means a means of supplying documents that can reasonably be expected usually to be faster than ordinary post.
information system has the same meaning as in the Electronic Transactions Act 1999.
International Register has the meaning given by regulation 17A.2.
international registration has the meaning given by regulation 17A.2.
IRDA has the meaning given by regulation 17A.2.
Madrid Protocol means the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks, as signed at Madrid on 28 June 1989.
Madrid Regulations has the meaning given by regulation 17A.2.
month, for a period with a length expressed in months, has the meaning given by regulation 2.2.
official goods and services pick list: goods or services are specified, in an application to register a trade mark in respect of the goods or services, by using the official goods and services pick list if:
(a) the application is filed by means of a digital information system that is:
(i) made available by IP Australia; and
(ii) a preferred means of filing the application; and
(b) the applicant specifies the goods or services in the application by selecting the goods or services from a pre‑populated list of goods or services that is made available by the digital information system for that purpose.
Panel Chair, in relation to a Panel of the Disciplinary Tribunal, means:
(a) the President; or
(b) if the President is unable to perform his or her functions in relation to proceedings of the Panel because of a conflict of interest—the person appointed under subregulation 20.64(2) of the Patents Regulations 1991 to be the Panel Chair for the proceedings.
Panel of the Disciplinary Tribunal means a Panel constituted under regulation 20A.11.
President means the President of the Disciplinary Tribunal.
priority date, for a trade mark that is the subject of an IRDA or a protected international trade mark, has the meaning given by regulation 17A.3.
protected international trade mark has the meaning given by regulation 17A.2.
Record of International Registrations has the meaning given by regulation 17A.2.
Register of Trade Marks Attorneys means the register mentioned in section 228A of the Act.
requester has the meaning given by subregulation 3A.3(1).
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 expresses a contrary intention to section 2G and subsection 36(1) 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 provisions.
(1) In these Regulations, the Registrar may give a document to a person by: (a) making the document available to the person in an electronic form; and (b) notifying the person that the document is available. (2) If the Registrar gives a document to a person, the document is taken to have been given to the person on the day the document is dated by the Registrar.
(1) For the purposes of subsection 19(3) of the Act (which deals with the classification of goods and services): (a) goods are divided into the classes of goods described in column 2 of Part 1 of Schedule 1; and (b) services are divided into the classes of services described in column 2 of Part 2 of Schedule 1. (2) Each class of goods or services described in Schedule 1 has: (a) a class number corresponding to the item number of that class in column 1 of Part 1 or 2 of Schedule 1; and (b) a class heading corresponding to the description of that class in column 2 of Part 1 or 2 of Schedule 1.
For the purposes of paragraph 26(1)(b) of the Act (which deals with powers of the authorised user of a trade mark), the prescribed period is 2 months from the day on which the authorised user of a trade mark asks the registered owner of the trade mark to bring an action for infringement of the trade mark.
These Regulations are the Trade Marks Regulations 1995.
Note: A number of expressions used in these Regulations are defined in the Act, including Commission.
In these Regulations, unless the contrary intention appears:
accredited course of study means a course of study that is accredited by the Board under regulation 20.2A of the Patents Regulations 1991.
Act means the Trade Marks Act 1995.
AFS request has the meaning given by subregulation 3A.3(1).
ART means the Administrative Review Tribunal.
certificate of verification means a statement:
(a) that a document to which the statement relates:
(i) has been translated by a person who is proficient in both the language from which the document has been translated into English and English; and
(ii) is a true and complete translation of the accompanying document to the best of the knowledge of the person who signs the statement; and
(b) that is dated and signed.
Code of Conduct means the standard of practice titled “Code of Conduct for Patent and Trade Mark Attorneys” that is established by the Board from time to time.
Designated Manager has the same meaning as in the Patents Act 1990.
Disciplinary Tribunal means the Trans‑Tasman IP Attorneys Disciplinary Tribunal established by regulation 20.61 of the Patents Regulations 1991.
earlier application, in relation to an application for the registration of a trade mark for which a right of priority is claimed, means an application for the registration of that trade mark in a Convention country:
(a) that was filed, at the trade marks office (or its equivalent) of that Convention country, before the application for which the right of priority is claimed; and
(b) on which the claim for the right of priority is based.
expedited dispatch means a means of supplying documents that can reasonably be expected usually to be faster than ordinary post.
information system has the same meaning as in the Electronic Transactions Act 1999.
International Register has the meaning given by regulation 17A.2.
international registration has the meaning given by regulation 17A.2.
IRDA has the meaning given by regulation 17A.2.
Madrid Protocol means the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks, as signed at Madrid on 28 June 1989.
Madrid Regulations has the meaning given by regulation 17A.2.
month, for a period with a length expressed in months, has the meaning given by regulation 2.2.
official goods and services pick list: goods or services are specified, in an application to register a trade mark in respect of the goods or services, by using the official goods and services pick list if:
(a) the application is filed by means of a digital information system that is:
(i) made available by IP Australia; and
(ii) a preferred means of filing the application; and
(b) the applicant specifies the goods or services in the application by selecting the goods or services from a pre‑populated list of goods or services that is made available by the digital information system for that purpose.
Panel Chair, in relation to a Panel of the Disciplinary Tribunal, means:
(a) the President; or
(b) if the President is unable to perform his or her functions in relation to proceedings of the Panel because of a conflict of interest—the person appointed under subregulation 20.64(2) of the Patents Regulations 1991 to be the Panel Chair for the proceedings.
Panel of the Disciplinary Tribunal means a Panel constituted under regulation 20A.11.
President means the President of the Disciplinary Tribunal.
priority date, for a trade mark that is the subject of an IRDA or a protected international trade mark, has the meaning given by regulation 17A.3.
protected international trade mark has the meaning given by regulation 17A.2.
Record of International Registrations has the meaning given by regulation 17A.2.
Register of Trade Marks Attorneys means the register mentioned in section 228A of the Act.
requester has the meaning given by subregulation 3A.3(1).
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 expresses a contrary intention to section 2G and subsection 36(1) 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 provisions.
(1) In these Regulations, the Registrar may give a document to a person by: (a) making the document available to the person in an electronic form; and (b) notifying the person that the document is available. (2) If the Registrar gives a document to a person, the document is taken to have been given to the person on the day the document is dated by the Registrar.
(1) For the purposes of subsection 19(3) of the Act (which deals with the classification of goods and services): (a) goods are divided into the classes of goods described in column 2 of Part 1 of Schedule 1; and (b) services are divided into the classes of services described in column 2 of Part 2 of Schedule 1. (2) Each class of goods or services described in Schedule 1 has: (a) a class number corresponding to the item number of that class in column 1 of Part 1 or 2 of Schedule 1; and (b) a class heading corresponding to the description of that class in column 2 of Part 1 or 2 of Schedule 1.
For the purposes of paragraph 26(1)(b) of the Act (which deals with powers of the authorised user of a trade mark), the prescribed period is 2 months from the day on which the authorised user of a trade mark asks the registered owner of the trade mark to bring an action for infringement of the trade mark.
This Part provides for an assisted filing service to enable a person proposing to make an application under Part 4 of the Act to request: (a) a preliminary assessment from the Registrar concerning the likelihood of the application for the proposed trade mark being successful under Part 4 of the Act; and (b) information concerning the requirements for registration under Part 4 of the Act.
(1) A person proposing to submit an application under Part 4 of the Act (a requester) may submit a request for filing assistance (an AFS request) under this Part. (2) An AFS request must: (a) be supported by such material and attachments as required by the Registrar having regard to the requirements of Part 4 of the Act in relation to an application for registration; and (b) be accompanied by the fee prescribed for the AFS request. (3) An AFS request: (a) must be submitted in a manner required by the Registrar; and (b) must contain the name of the requester; and (c) must contain contact details that includes the business or residential address and a telephone number for the requester, and: (i) the fax number of the requester; or (ii) the email address of the requester; and (d) must include a representation of the trade mark that is sufficient to identify the trade mark; and (e) must specify the goods and/or services in relation to which the request is made; and (f) must not relate to a matter published by the Registrar on the IP Australia website to be a matter for which an AFS request is not available; and (g) if the AFS request relates to a matter for which the Registrar has published conditions on the IP Australia website—must comply with the conditions. (4) If the fee mentioned in paragraph (2)(b) remains unpaid 5 working days after an AFS request is submitted, the AFS request is incomplete and is taken not to have been submitted. (5) A requester may amend an AFS request before it is assessed by the Registrar by advising the Registrar of the details of the amendments and providing: (a) any material to be added to the AFS request; and (b) any other document required by the Registrar in relation to the amendment; and (c) any fee prescribed in relation to the amendment. (6) For the fee prescribed for an amendment mentioned in paragraph (5)(c), the Registrar may: (a) decide to waive the fee; or (b) decide not to waive the fee, and require that payment of the fee be made within the period of 5 working days after that decision. (7) The Registrar must amend the AFS request on receipt of an amendment: (a) that complies with subregulation (5); and (b) in respect of which the fee, if any, has been paid.
(1) After receiving an AFS request the Registrar must, as soon as practicable, assess the AFS request having regard to the requirements of Part 4 of the Act and form an opinion whether or not: (a) the AFS request would, if submitted in that form as an application for registration under Part 4 of the Act, be in accordance with that Part; and (b) there would be grounds under Division 2 of Part 4 of the Act for rejecting the AFS request. (2) After forming an opinion the Registrar must, as soon as practicable, inform the requester of: (a) the opinion; and (b) the procedural requirements of regulation 3A.5 for making an amendment to the AFS request; and (c) the procedural requirements for making an application for the registration of a trade mark under Part 4 of the Act. (3) The Registrar may inform the requester: (a) in writing, by mail, fax or email; or (b) by telephone; or (c) in person.
(1) The requester may, within 5 working days after being informed by the Registrar under subregulation 3A.4(2), or within an extended period as decided by the Registrar under regulation 3A.7: (a) amend the AFS request under subregulation 3A.5(2); or (b) submit the AFS request as an application for registration of a trade mark under Part 4 of the Act by payment of the fee prescribed by item 35 of the table in subclause 1(1) of Schedule 9. (2) If the requester advises the Registrar under paragraph (1)(a) that the AFS request is to be amended: (a) for the purpose of adding one or more classes of goods or services to the AFS request; or (b) to significantly change the graphical representation of the trade mark; the advice must include: (c) details of the goods and/or services or the graphical representation; and (d) any material to be attached to the AFS request; and (e) any other document required by the Registrar; and (f) any fee prescribed in relation to the amendment. (3) For the fee prescribed for an amendment mentioned in subregulation (2), the Registrar may: (a) decide to waive the fee; or (b) decide not to waive the fee, and require that payment of the fee be made within the period of 5 working days after that decision. (4) For an amended AFS request to which subregulation (2) applies, and in respect of which the fee mentioned in subregulation (3) has been paid or waived: (a) the Registrar must amend the AFS request and as soon as practicable: (i) assess the amended AFS request in accordance with regulation 3A.4; and (ii) inform the requester under subregulation 3A.4(2); and (b) the period mentioned in subregulation (1) is extended to 5 working days after the Registrar informs the requester in accordance with subparagraph (a)(ii). (5) If the requester advises the Registrar that the AFS request is to be amended for a purpose other than that mentioned in subregulation (2), the Registrar: (a) must amend the AFS request; and (b) may assess the amended AFS request, insofar as the Registrar considers practicable, having regard to: (i) the complexity of the amendments requested; and (ii) the length of time that remains of the period mentioned in subregulation (1); and (c) insofar as it has been practicable to assess the amended AFS request—must inform the requester of the assessment. (6) An AFS request is discontinued if a requester fails to submit an application under Part 4 of the Act after following the procedure mentioned in subregulation (1).
(1) A requester may apply to the Registrar to extend the period for amending or submitting an AFS request under subregulation 3A.5(1). (2) The application must be made within the period of 2 months beginning immediately after the end of the period of 5 working days after the requester is informed by the Registrar under subregulation 3A.4(2). (3) The application must: (a) be in the approved form; and (b) be accompanied by a declaration stating the facts and circumstances forming the basis for the grounds for making the application.
Note: Regulations 21.6 and 21.7 deal with making and filing declarations.
(4) The application may be made only on any of the following grounds: (a) an error or omission by the requester, the requester’s agent, the Registrar or an employee; (b) circumstances beyond the control of the requester, other than an error or omission by the requester, the requester’s agent, the Registrar or an employee; (c) special circumstances exist that justify an extension of the period.
(1) The Registrar may grant the application only if the Registrar is satisfied that the grounds set out in the application justify the extension. (2) The Registrar must decide the length of the extended period having regard to what is reasonable in the circumstances. (3) The Registrar must not grant more than one extension for an AFS request.
(1) For subsection 27(2) of the Act (which deals with applications for registration), an application for the registration of a trade mark must be: (a) in an approved form; or (b) an AFS request mentioned in Part 3A, in respect of which all fees were paid within the prescribed time limits. (2) Any material that is intended by the applicant to form part of the application for registration of a trade mark: (a) must be attached to the application; and (b) is taken to be part of the application.
(1) To be taken to be filed, an application for registration of a trade mark that is in an approved form must: (a) state that the application is for registration of the trade mark, or contain a clear indication to that effect; and (b) include a representation of the trade mark that is sufficient to identify the trade mark; and (c) specify the goods and/or services in relation to which the application is made; and (d) include sufficient information to enable the Registrar to establish the identity of the applicant; and (e) contain sufficient information to enable the Registrar to contact the applicant. (2) If an application does not meet a requirement set out in paragraph (1)(a), (b), (c) or (d), the Registrar must notify the applicant of the requirement. (3) If the applicant meets the requirement within a period of 2 months from the date of the notification, the application is taken to be filed on the day on which the requirement is met. (4) If the applicant does not meet the requirement within that period, the application is taken not to have been filed.
A divisional application must contain the following information: (a) a statement that the application is a divisional application; (b) a statement identifying the parent application.
An AFS request that is submitted as an application for registration of a trade mark under this Part may be taken as having been filed only if the Registrar is satisfied that all fees have been paid in respect of the application within the period of 5 working days mentioned in subregulation 3A.5(1), or such extended period as decided by the Registrar under regulation 3A.7.
(1) If practicable, the representation of a trade mark included in an application for registration of the trade mark must not exceed 8 centimetres by 8 centimetres. (2) In an application for the registration of 2 or more trade marks as a series, the representation of each trade mark in the series must, if practicable, not exceed 8 centimetres by 8 centimetres. (3) In an application for the registration of a trade mark that contains, or consists of, a 3 dimensional shape: (a) if practicable, the representation of the trade mark in the application must be illustrated in a perspective that shows each feature of the trade mark; and (b) otherwise, the representation of the trade mark in the application must include views of the trade mark that are necessary to show each feature of the trade mark. (4) If the Registrar reasonably believes that the views of a trade mark to which paragraph (3)(a) or (b) applies are not sufficient to allow all features of the trade mark to be properly examined, the Registrar may, by notification to the applicant, require the applicant to give to the Registrar up to 6 additional views of the trade mark that show the features sufficiently to permit proper examination of the trade mark. (5) If the representation of a trade mark in an application for registration of the trade mark includes words of a language other than English, the applicant must file in support of the application a translation of the words into English, if required to do so by the Registrar at the time of application or later. (6) If the representation of a trade mark in an application for registration of the trade mark includes characters constituting words, being characters that are not roman letters, the applicant must file in support of the application: (a) a transliteration of the characters into roman letters, using the recognised system of romanisation of the characters (if any); and (b) a translation of the words into English. (7) If a trade mark for which registration is sought contains or consists of a sign that is a colour, scent, shape, sound or an aspect of packaging, or any combination of those features, the application for registration of the trade mark must include a concise and accurate description of the trade mark. (8) If the Registrar reasonably believes that the description or representation of a trade mark in an application for registration of the trade mark does not: (a) demonstrate the nature of the trade mark sufficiently; or (b) show each feature of the trade mark sufficiently; to permit proper examination of the trade mark, the Registrar may, by notification to the applicant, require the applicant to give to the Registrar: (c) a description, or further description, of the trade mark; and (d) a specimen of the trade mark. (9) If a representation of a single trade mark exceeds, or the representations of the trade marks in a series of trade marks together exceed, 8 centimetres by 8 centimetres, the representation or representations: (a) must be attached to the application for registration of the trade mark or trade marks; and (b) must be taken to be part of the application. (10) The representation of a trade mark in an application for registration of the trade mark must be of a kind and quality that: (a) ensures that the features of the trade mark will be preserved in the course of time; and (b) is suitable for reproduction.
(1) For the purposes of paragraph 27(3)(b) of the Act, the following subregulations set out the manner of specifying, in an application for the registration of a trade mark, the goods and/or services in respect of which registration is sought. (2) The expression ‘all goods’, ‘all services’, ‘all other goods’, or ‘all other services’ must not be used in an application for registration of a trade mark to specify the goods and/or services in respect of which registration is sought. (3) The goods and/or services must be grouped according to the appropriate classes described in Schedule 1. (4) The applicant must nominate the class number that is appropriate to the goods or services in each group. (5) The groups must be listed in the order of their class numbers. (6) The goods and/or services must, as far as practicable, be specified in terms appearing in any listing of goods and services that is: (a) published by the Registrar; and (b) made available for inspection by the public at the Trade Marks Office and its sub‑offices (if any). (7) If any of the goods and/or services cannot be specified using terms referred to in subregulation (6), the applicant must provide sufficient information to enable the Registrar to decide the classification of the goods and/or services.
For the purposes of subsection 29(1) of the Act (which deals with claims for priority), the prescribed period in relation to a claim for a right of priority for an application is 2 working days after filing the application.
(1) For the purposes of subsection 29(1) of the Act (which deals with claims for priority), an applicant must claim a right of priority for an application by filing notice of the claim. (2) Any notice under subregulation (1) must specify, in respect of the earlier application or, if there is more than 1 earlier application, in respect of each earlier application: (a) the Convention country in which the earlier application was filed at the trade marks office (or its equivalent) of that Convention country; and (b) the date on which the earlier application was filed. (3) If, as a result of a claim for a right of priority, more than 1 priority date applies in relation to an application, a person who claims a right of priority under subsection 29(1) of the Act must specify the goods and/or services to which each priority date relates. (4) The applicant must inform the Registrar of the number allocated to each earlier application in the trade marks office, or its equivalent, of the Convention country in which each earlier application was filed.
(1) For the purposes of section 30 of the Act (which deals with publishing particulars of applications), the Registrar must publish the following particulars of the application: (a) if a number has been allocated to the application in the Trade Marks Office—the number; (b) the applicant’s name; (c) the date of filing the application; (d) if the application is a divisional application—particulars of the parent application; (e) particulars of any claim for a right of priority for the application; (f) the class number or numbers for the goods and/or services in respect of which registration of the trade mark is sought. (2) The particulars must be published in a computer database maintained by the Trade Marks Office. (3) If, before 1 January 2001, an application by: (a) the Sydney Organising Committee for the Olympic Games constituted by the Sydney Organising Committee for the Olympic Games Act 1993 of New South Wales; or (b) Sydney Paralympic Organising Committee Limited incorporated under the law of New South Wales; is accompanied by a written request by the applicant to postpone publication of the particulars of the application, the Registrar must publish the particulars of the application as soon as practicable after the expiration of 3 months after the date on which the application was filed.
(1) For the purposes of section 31 of the Act (which deals with examination and reporting), if in the course of an examination of an application the Registrar reasonably believes that: (a) the application has not been made in accordance with the Act or these regulations; or (b) there are grounds under Division 2 of Part 4 of the Act for rejecting it; the Registrar must report that belief by notification to the applicant. (2) A report under subregulation (1) must include notification of the date on which the application will lapse if it is not accepted earlier. (3) If the Registrar reasonably suspects that the provisions of paragraph 27(1)(b) of the Act do not apply in relation to all of the goods and/or services specified in an application for registration of a trade mark, the Registrar may require the applicant to make a declaration to the Registrar that those provisions apply to all of those goods and/or services.
Note: Section 37 of the Act and regulation 4.12 deal with the lapsing of an application before acceptance.
(1) An applicant may respond in writing to the Registrar’s report under regulation 4.8. (2) The response may: (a) contest a belief of the Registrar that is expressed in the report; and (b) contest another matter that is mentioned in the report; and (c) provide further documents or evidence in support of the application; and (d) request that the application be amended in accordance with the Act.
Note: Section 65 of the Act relates to the amendment of an application after particulars of the application have been published.
(1) On receipt of a response under regulation 4.9, the Registrar must consider the response. (2) If the Registrar continues to believe that: (a) the application has not been made in accordance with the Act or these regulations; or (b) there are grounds under Division 2 of Part 4 of the Act for rejecting it; the Registrar must report that belief by notification to the applicant. (3) Unless acceptance of an application is deferred, a report under subregulation (2) in relation to that application must include notification of the date on which the application will lapse if it is not accepted earlier. (4) Regulation 4.9 and this regulation apply to a report under subregulation (2) as if it were a report under regulation 4.8.
(1) In the course of an examination of an application for which a right of priority is claimed, the Registrar may notify the applicant that the applicant is required to file: (a) a copy of any earlier application certified in the trade marks office (or its equivalent) of the Convention country in which it was filed; and (b) if the earlier application is not in English: (i) a translation of the earlier application into English; and (ii) a certificate of verification relating to the translation. (2) If the applicant is the successor in title to the person who made the earlier application, the Registrar may notify the applicant that the applicant is required to file documentary evidence that is sufficient to establish the passing of title to the applicant.
For the purposes of paragraph 34(b) of the Act, the decision must be published in a computer database maintained by the Trade Marks Office.
(1) For the purposes of subsection 37(1) of the Act (which deals with lapsing), the prescribed period, for an application in respect of which a report is made under regulation 4.8, is: (a) except as provided by paragraph (b)—15 months from the date of that report (whether or not a further report is made under regulation 4.10); or (b) if a further report raises grounds under Division 2 of Part 4 of the Act for rejecting the application that were not raised in the report made under regulation 4.8—15 months from the date of the further report. (2) In determining the period of 15 months for the purposes of paragraph (1)(a) or (b) in relation to an application, no account is to be taken of a period in which acceptance of the application is deferred under regulation 4.13. (3) An applicant may, before the end of a period prescribed in subregulation (1), or that period as extended under section 224 of the Act or as a result of a previous application of subregulation (4), request the Registrar in writing to extend the period. (4) The Registrar must, in accordance with a request made under subregulation (3), extend a period, unless: (a) the period; or (b) that period as extended under section 224 of the Act or as a result of a previous application of this subregulation; would be extended for more than 6 months after the end of the relevant period prescribed in subregulation (1).
Note 1: If an extension of the time for acceptance of an application is sought after the end of a prescribed period, or of an extended period mentioned in subregulation 4.12(3), application must be made under section 224 of the Act.
Note 2: If a period prescribed in subregulation 4.12(1) has been extended by 6 months, any application for a further extension of time must be made under section 224 of the Act.
(1) The Registrar may, at the request of the applicant in writing, defer acceptance of an application for registration of a trade mark, if: (a) the request is made within a period prescribed in subregulation 4.12(1) or that period as extended under regulation 4.12 or section 224 of the Act; and (b) the Registrar reasonably believes that there are grounds for rejecting the application under subsection 44(1) or (2) of the Act, or subregulation 4.15A(1) or (2), because of another trade mark: (i) that is registered by another person; or (ii) that is a protected international trade mark; or (iii) in respect of which an application for registration, or an IRDA, has been made by another person; and (c) the applicant: (i) is awaiting the finalisation of proceedings in respect of the application for registration of the other trade mark or the IRDA; or (ii) is seeking to satisfy the Registrar as to: (A) a matter mentioned in paragraph 44(3)(a) or (b) of the Act or 4.15A(3)(a) or (b) of these Regulations; or (B) the matters mentioned in subsection 44(4) of the Act or subregulation 4.15A(5); in relation to the applicant’s trade mark and the other trade mark; or (iii) has filed an application under section 92 of the Act or regulation 17A.48C in respect of the other trade mark and is awaiting the finalisation of proceedings in respect of that application; or (iv) has begun proceedings to have the Register or the Record of International Registrations rectified in respect of the other trade mark and the proceedings have not been determined or otherwise disposed of; or (v) is awaiting renewal of the registration of the other trade mark in the period of 6 months after registration of the other trade mark has expired, or removal of the other trade mark from the Register; or (vi) is awaiting renewal of the international registration of the other trade mark in the period of 6 months after the international registration has expired, or removal of the other trade mark from the International Register. (2) The Registrar may, on his or her own initiative, defer acceptance of the application within a period that is prescribed in subregulation 4.12(1) or that is extended under section 224 of the Act or subregulation 4.12(4), if: (a) the time within which proceedings mentioned in paragraph (b) may be begun, or an application mentioned in paragraph (c) may be made, has not ended; or (b) appeal proceedings under a provision of the Act have begun in a prescribed court in relation to the application; or (c) an application has been made to the ART for review of a decision of the Registrar in relation to the first‑mentioned application; or (ca) the applicant has made a request to the Registrar to be heard in relation to the application; or (d) the Registrar is informed in writing that the applicant has died. (3) The Registrar must defer acceptance of an application for registration of a certification trade mark when a copy of the rules governing the use of the certification trade mark is sent to the Commission in accordance with regulation 16.2. (4) The Registrar must notify an applicant: (a) if the applicant requests the Registrar to defer acceptance of an application—of the Registrar’s decision to defer, or not to defer, acceptance of the application; and (b) if the Registrar otherwise defers acceptance of an application—of the provision under which acceptance of the application is deferred.
(1) The period for which acceptance of an application is deferred (the deferment period) begins immediately after: (a) for deferral under subregulation 4.13(1)—the date the Trade Marks Office receives the request; or (b) for deferral under subregulation 4.13(2) or (3)—the date of the notification of deferment issued under subregulation 4.13(4). (2) The deferment period ends: (a) when the application is withdrawn; or (b) if paragraph (a) does not apply—when the Registrar is reasonably satisfied that there are no longer grounds for rejecting the application under subsection 44(1) or (2) of the Act or subregulation 4.15A(1) or (2); or (c) if paragraphs (a) and (b) do not apply—in accordance with subregulation (3). (3) For the purposes of paragraph (2)(c), the deferment period ends: (a) if acceptance is deferred because of subparagraph 4.13(1)(c)(i)—when proceedings relating to the registration of, or the extension of protection to, the other trade mark are finalised; and (b) if acceptance is deferred because of subparagraph 4.13(1)(c)(ii)—at the end of 6 months from the date of commencement of deferment; and (c) if acceptance is deferred because of subparagraph 4.13(1)(c)(iii)—when proceedings under Part 9 of the Act or regulation 17A.48C in respect of the other trade mark are finalised; and (d) if acceptance is deferred because of subparagraph 4.13(1)(c)(iv)—when the proceedings to have the Register or the Record of International Registrations rectified in respect of the other trade mark are determined or otherwise disposed of; and (e) if acceptance is deferred because of subparagraph 4.13(1)(c)(v)—when the registration of the other trade mark is renewed or the other trade mark is removed from the Register; and (ea) if acceptance is deferred because of subparagraph 4.13(1)(c)(vi)—when the international registration of the other trade mark is renewed or the other trade mark is removed from the International Register; and (f) if acceptance is deferred because of paragraph 4.13(2)(a)—at the end of 2 months after the beginning of the period in which: (i) proceedings mentioned in paragraph 4.13(2)(b) may be begun; or (ii) an application mentioned in paragraph 4.13(2)(c) may be made; and (g) if acceptance is deferred because of paragraph 4.13(2)(b) or (c)—at the end of: (i) 3 months after the determination, or other disposal, of the proceedings or review; or (ii) such time as the court to which any appeal is brought or the ART, or a court to which any appeal arising from review by the ART is brought, allows; and (ga) if acceptance is deferred because of paragraph 4.13(2)(ca)—at the end of the earlier of the following days: (i) the day the applicant withdraws the request to be heard; (ii) the day the Registrar decides to accept or reject the application; and (h) if acceptance is deferred because of paragraph 4.13(2)(d)—at the end of a period after the death of the applicant that the Registrar reasonably regards as sufficient in the circumstances; and (j) if acceptance is deferred because of subregulation 4.13(3): (i) if the Commission gives a certificate under subsection 175(2) of the Act in respect of the application—when the Registrar accepts the certification trade mark for registration; or (ii) if the Commission does not give a certificate under that subsection—at the end of 2 months after the date of the notice to the Registrar under subsection 175(4) of the Act. (4) If acceptance of an application is deferred as a result of the operation of more than 1 of the provisions of paragraph 4.13(1)(c) and subregulation 4.13(2), the deferment period ends in accordance with the relevant provision of subregulation (3) under which the deferment period ends later or last, as the case requires. (5) The Registrar must notify the applicant of: (a) the end of a period of deferment; and (b) if acceptance is deferred under subregulation 4.13(1)—the last day of the relevant period prescribed by paragraph 4.12(1)(a) or (b).
For the purposes of paragraph 39(2)(a) of the Act (which deals with signs), the following signs are prescribed: (a) the words ‘Patent’, ‘Patented’, ‘By Royal Letters Patent’, ‘Protected International Trade Mark’, ‘Registered’, ‘Registered Design’, ‘Copyright’ ‘Plant Breeder’s Rights’, ‘EL rights’, or words or symbols to the same effect (including the symbols ‘©’ and ‘®’); (b) the words ‘To counterfeit this is a forgery’, or words to the same effect; (c) a representation of the Arms, or of a flag or seal, of the Commonwealth or of a State or Territory; (d) a representation of the Arms or emblem of a city or town in Australia or of a public authority or public institution in Australia; (da) a representation of a flag of a country that is a member of the International Union for the Protection of Industrial Property; (e) a representation of a mark notified by the International Union for the Protection of Industrial Property as not entitled to registration under international arrangements; (f) a sign specified in Schedule 2.
Note 1: For the meaning of EL rights, see section 5 of the Circuit Layouts Act 1989.
Note 2: A list of the marks mentioned in paragraph 4.15(e) is available at the Trade Marks Office and sub‑offices (if any).
(1) For section 189A of the Act, and subject to subregulations (3) and (5), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if: (a) the applicant’s trade mark is substantially identical with, or deceptively similar to: (i) a protected international trade mark; or (ii) a trade mark in respect of which the Registrar has received notification of an IRDA; held by another person in respect of similar goods or closely related services; and (b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the other trade mark in respect of the similar goods or closely related services.
Note: Under subsection 189A(3) of the Act, regulations made for the purposes of section 189A:
(a) may be inconsistent with the Act; and
(b) prevail over the Act (including any other regulations or other instruments made under the Act), to the extent of any inconsistency.
Note: Division 2 of Part 4 of the Act includes provisions relating to the grounds on which an application for the registration of a trade mark must be rejected.
(2) For section 189A of the Act, and subject to subregulations (3) and (5), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if: (a) the applicant’s trade mark is substantially identical with, or deceptively similar to: (i) a protected international trade mark; or (ii) a trade mark in respect of which the Registrar has received notification of an IRDA; held by another person in respect of similar services or closely related goods; and (b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the other trade mark in respect of the similar services or closely related goods.
Note: Under subsection 189A(3) of the Act, regulations made for the purposes of section 189A:
(a) may be inconsistent with the Act; and
(b) prevail over the Act (including any other regulations or other instruments made under the Act), to the extent of any inconsistency.
Note: Division 2 of Part 4 of the Act includes provisions relating to the grounds on which an application for the registration of a trade mark must be rejected.
(3) If, in a case mentioned in subregulation (1) or (2), the Registrar is satisfied: (a) that there has been honest concurrent use of the 2 trade marks; or (b) that, because of other circumstances, it is proper to do so; the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. (4) If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. (5) If, in a case mentioned in subregulation (1) or (2), the Registrar is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period: (a) beginning before the priority date for the other trade mark in respect of: (i) the similar goods or closely related services; or (ii) the similar services or closely related goods; and (b) ending on the priority date for the registration of the applicant’s trade mark; the Registrar must not reject the application because of the existence of the other trade mark.
Note: Section 44 of the Act provides for rejection of an application on the grounds that the trade mark is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark for which registration is being sought.
(1) A person who applies, or has applied, for the registration of a trade mark: (a) may request in writing expedited examination of the application; and (b) must include with the request a declaration stating the reasons for the request. (2) As soon as practicable after making a decision in relation to a request, the Registrar must give notification of the decision to the person who made the request.
(1) The Registrar must, to the extent that is practicable, examine applications for the registration of trade marks in relation to which requests under regulation 4.18 are granted: (a) in the order in which the requests are filed; and (b) before examination of an application for registration of a trade mark in relation to which: (i) a request under regulation 4.18 is not made; or (ii) a request made under that regulation is not granted. (2) In the absence of a request for expedited examination of an application for registration of a trade mark, the Registrar may expedite examination of the application if he or she reasonably believes that expedited examination is warranted. (3) The relationship of an application mentioned in subregulation (2) to another application for registration of a trade mark is a relevant circumstance for the purposes of that subregulation.
This Part sets out requirements for the following: (a) the filing of notices of opposition and associated documents; (b) the amending of filed documents; (c) the dismissal of an opposition; (d) a cooling‑off period for an opposition; (e) the hearing of an opposition; (f) associated matters.
In this Part:
notice of intention to defend means a notice filed under regulation 5.13.
notice of opposition means a notice of opposition under section 52 of the Act.
party means an applicant or opponent.
statement of grounds and particulars means a statement by an opponent that sets out:
(a) the grounds on which the opponent intends to rely; and
(b) the facts and circumstances forming the basis for the grounds.
trade mark application means an application for registration of a trade mark under section 27 of the Act.
Note: The following terms are defined in section 6 of the Act:
(a) applicant;
(b) approved form;
(c) employee;
(d) file;
(e) month;
(f) opponent;
(g) person.
(1) This regulation applies if: (a) a party makes a request to the Registrar under this Part; or (b) the Registrar proposes to make a decision on the Registrar’s own initiative under this Part. (2) The Registrar must: (a) for paragraph (1)(a)—notify the other party of the request, including by giving the other party a copy of the request; or (b) for paragraph (1)(b)—notify the parties of the proposed decision. (3) If the Registrar proposes to grant the request, the Registrar must give the parties an opportunity to make representations: (a) in writing; or (b) at a hearing; or (c) by other means that the Registrar states in the notification. (4) The Registrar must notify the parties of the decision.
(1) The components of a notice of opposition are: (a) a notice of intention to oppose; and (b) a statement of grounds and particulars. (2) A notice of opposition is taken to be filed when both of its components have been filed.
(1) For subsection 52(2) of the Act, the period for filing a notice of intention to oppose is 2 months from the day the acceptance of the trade mark application is published in a computer database maintained by the Trade Marks Office in accordance with regulation 4.11A. (2) The notice must be in an approved form. (3) The Registrar must give a copy of the notice to the applicant.
(1) A statement of grounds and particulars must be filed within one month from the day the notice of intention to oppose is filed. (2) The statement must be in an approved form.
(1) The Registrar must assess the adequacy of a statement of grounds and particulars. (2) If the Registrar decides that the statement is adequate, the Registrar must give a copy of the statement to the applicant. (3) If the Registrar decides that the statement is inadequate: (a) the Registrar may direct the opponent to rectify the inadequacy by filing more information on the basis for one or more of the grounds; or (b) if all the grounds are inadequately particularised, the Registrar may dismiss the opposition; or (c) if only some of the grounds are inadequately particularised, the Registrar may: (i) delete from the statement some or all of the material that is inadequate; and (ii) treat the result as the statement for the purposes of these Regulations; and (iii) give a copy of the amended statement to the opponent. (4) If the Registrar decides that the statement is still inadequate after the information is filed under paragraph (3)(a): (a) the Registrar may dismiss the opposition; or (b) the Registrar may: (i) delete from the statement some or all of the material that is inadequate; and (ii) treat the result as the statement for the purposes of these Regulations; and (iii) give a copy of the amended statement to the opponent. (5) If the Registrar decides that the information filed under paragraph (3)(a) rectifies the inadequacy of the statement, the Registrar must give a copy of the statement and the information filed in relation to paragraph (3)(a) to the applicant. (6) The opponent may apply to the ART for review of a decision under this regulation to dismiss the opposition or delete material from the statement of grounds and particulars. (7) Regulation 5.4 does not apply to this regulation.
(1) A person who intends to oppose an application under subsection 52(1) of the Act may request the Registrar to extend: (a) the period for filing a notice of intention to oppose under subregulation 5.6(1); or (b) the period for filing a statement of grounds and particulars under subregulation 5.7(1). (2) A request under paragraph (1)(a) or (b) may be made: (a) within the period for filing the document in question; or (b) before the trade mark is entered on the Register under section 69 of the Act.
Note: See subparagraph (3)(b)(ii) and subregulation 5.10(2) in relation to the consequences of making the request after the filing period has ended.
(3) The request must: (a) be in an approved form; and (b) be accompanied by a declaration stating: (i) the facts and circumstances forming the basis for the grounds; and (ii) if the period for filing the notice or the statement of grounds and particulars has ended—the reason why the request was not made within the period.
Note: Regulations 21.6 and 21.7 deal with making and filing declarations.
(4) The request may be made only on either or both of the following grounds: (a) an error or omission by the person, the person’s agent, the Registrar or an employee; (b) circumstances beyond the control of the person, other than an error or omission by the person, the person’s agent, the Registrar or an employee.
(1) The Registrar may grant a request under subregulation 5.9(1) for an extension of time only if the Registrar is satisfied that the grounds set out in the request justify the extension. (2) However, if the request is made after the period for filing the notice or statement of grounds and particulars has ended, the Registrar must not grant the extension unless the Registrar is satisfied that there is sufficient reason for the delay in making the request. (3) The Registrar must decide the length of the extended period having regard to what is reasonable in the circumstances.
(1) An opponent may request the Registrar to amend a notice of intention to oppose to correct a clerical error or obvious mistake. (2) If an opposition is proceeding in the name of another person (the new opponent) under section 53 of the Act, the new opponent may request the Registrar to amend the notice of intention to oppose to record the new opponent’s name. (3) The Registrar may grant the request on terms that the Registrar considers appropriate. (4) If the Registrar grants the request, the Registrar must give a copy of the amended notice of intention to oppose to the applicant. (5) Regulation 5.4 does not apply to a request under subregulation (1) or (2).
(1) An opponent may request the Registrar to amend the statement of grounds and particulars to: (a) correct an error or omission in the grounds of opposition or the facts and circumstances forming the basis for the grounds; or (b) amend a ground of opposition; or (c) add a new ground of opposition; or (d) to amend the facts and circumstances forming the basis for the grounds. (2) The Registrar may grant the request on terms that the Registrar considers appropriate. (3) However, the Registrar may grant a request to: (a) amend a ground of opposition; or (b) add a new ground of opposition; only if the Registrar is satisfied that the amendment or addition relates to information of which the opponent could not reasonably have been aware at the time of filing the statement. (4) If the Registrar grants the request, the Registrar must give a copy of the amended statement to the applicant.
(1) For subsection 52A(2) of the Act, a notice of intention to defend must be filed within 2 months from the day the applicant is given a copy of the statement of grounds and particulars. (2) The Registrar must give a copy of the notice to the opponent.
(1) A person may apply to the Registrar to extend the period for filing, under subsection 52A(1) of the Act, a notice of intention to defend. (2) The application must be made before the end of the period of 2 months beginning on the day after the end of the period mentioned in subregulation 5.13(1). (3) The application must: (a) be in the approved form; and (b) be accompanied by a declaration stating the facts and circumstances forming the basis for the grounds for making the application.
Note: Regulations 21.6 and 21.7 deal with making and filing declarations.
(4) The application may be made only on either or both of the following grounds: (a) an error or omission by the person, the person’s agent, the Registrar or an employee; (b) circumstances beyond the control of the person, other than an error or omission by the person, the person’s agent, the Registrar or an employee.
(1) The Registrar may grant an application under subregulation 5.13A(1) for an extension of time only if the Registrar is satisfied that the grounds set out in the application justify the extension. (2) However, if the application is made after the period mentioned in subregulation 5.13(1) has ended, the Registrar must not grant the extension unless the Registrar is satisfied that there is sufficient reason for the delay in making the application. (3) The Registrar must decide the length of the extended period having regard to what is reasonable in the circumstances.
(1) The Registrar must notify the parties that: (a) all the evidence for an evidentiary period mentioned in this regulation has been filed; or (b) no evidence was filed for the period. (2) The Registrar must give a copy of any evidence filed by a party under this regulation to the other party: (a) before the end of the relevant evidentiary period, if the Registrar considers it appropriate to do so; or (b) after the evidentiary period ends. Evidence in support (3) An opponent must file any evidence in support of the opposition within 3 months from the day the opponent is given a copy of the notice of intention to defend. Evidence in answer (4) If the opponent files evidence in support of the opposition, the applicant must file any evidence in answer to the evidence in support within 3 months from the day the Registrar: (a) gives the applicant: (i) all the evidence in support; or (ii) if the opponent files the evidence in support in instalments—the final instalment of the evidence in support; and (b) notifies the applicant that all the evidence in support has been filed. (5) If the opponent does not file any evidence in support of the opposition, the applicant must file any evidence in answer to the statement of grounds and particulars within 3 months from the day the Registrar notifies the applicant that no evidence in support was filed. Evidence in reply (6) If the applicant files evidence in answer under subregulation (4) or (5), the opponent must file any evidence in reply to the evidence in answer within 2 months from the day the Registrar: (a) gives the opponent: (i) all the evidence in answer; or (ii) if the applicant files the evidence in answer in instalments—the final instalment of the evidence in answer; and (b) notifies the opponent that all the evidence in answer has been filed.
(1) A party may request the Registrar to extend a period for filing evidence mentioned in regulation 5.14. (2) The Registrar may extend the period only if the Registrar is satisfied that: (a) the party: (i) has made all reasonable efforts to comply with all relevant filing requirements of this Part; and (ii) despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so; or (b) there are exceptional circumstances that justify the extension. (3) The Registrar: (a) must decide the length of the extended period having regard to what is reasonable in the circumstances; and (b) may do so on terms that the Registrar considers appropriate. (4) In this regulation:
exceptional circumstances includes the following:
(a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Part;
(b) an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement under this Part;
(c) an order of a court or a direction by the Registrar that the opposition be stayed.
(1) This regulation applies to an opposition if: (a) the notice of opposition has been filed; and (b) the Registrar has not made a decision on the opposition under subsection 55(1) of the Act; and (c) the opposition has not been dismissed under section 222 of the Act or regulation 5.8. (2) If the Registrar is satisfied that the parties agree to a cooling‑off period, the Registrar must allow a cooling‑off period of 6 months. (3) The Registrar must extend the cooling‑off period for 6 months if, before the end of the period, the Registrar is satisfied that the parties agree to the extension. (4) The Registrar must not: (a) further extend the cooling‑off period; or (b) allow more than one cooling‑off period for an opposition. (5) If a party files a notice, in an approved form, requesting the Registrar to discontinue the cooling‑off period, the Registrar must do so. (6) The Registrar may direct the parties on steps the parties must take: (a) if the cooling‑off period is discontinued; or (b) otherwise—when the cooling‑off period ends. (7) The opposition resumes: (a) if the cooling‑off period is discontinued; or (b) otherwise—when the cooling‑off period ends. (8) If: (a) the cooling‑off period begins during the period mentioned in regulation 5.13 or an evidentiary period mentioned in regulation 5.14; and (b) the opposition resumes; the period mentioned in regulation 5.13 or 5.14 restarts when the opposition resumes.
(1) This regulation applies to an opposition if: (a) the opposition has not: (i) been dismissed under section 222 of the Act or paragraph 5.8(3)(b) or 5.8(4)(a); or (ii) been decided under subsection 55(1) of the Act; and (b) the trade mark application to which the opposition relates has not lapsed under section 54A of the Act. (2) An applicant may request the Registrar to hold a hearing if: (a) the evidentiary period mentioned in subregulation 5.14(3) has ended; and (b) either: (i) all evidence for the opposition proceeding has been filed; or (ii) no evidence has been filed in that period. (3) A party may request the Registrar to hold a hearing if: (a) an evidentiary period mentioned in any of subregulations 5.14(4) to (6) has ended; and (b) either: (i) all evidence for the opposition proceeding has been filed; or (ii) no evidence has been filed in that period. (4) The Registrar: (a) must hold a hearing of the opposition if requested by a party; or (b) may decide, on the Registrar’s own initiative, to hold a hearing of the opposition. (5) The hearing may, at the Registrar’s discretion, be: (a) an oral hearing; or (b) by written submissions. (6) If the Registrar decides on an oral hearing: (a) the Registrar must notify the parties of the date, time and place of the hearing; and (b) the opponent must file a summary of submissions at least 10 business days before the hearing; and (c) the applicant must file a summary of submissions at least 5 business days before the hearing. (7) The Registrar may take into account a party’s failure to file a summary of submissions under subregulation (6) in making an award of costs.
Note: Regulations 21.15 and 21.16 deal with hearings.
(1) In opposition proceedings relating to an application in respect of which the applicant claims a right of priority, an opponent may request the Registrar for a copy of an earlier application to be made available. (2) On receiving the request, the Registrar must require the applicant to file: (a) a copy of the earlier application certified in the trade marks office (or its equivalent) of the Convention country in which it was filed; and (b) if the earlier application is not in English: (i) a translation of the earlier application into English; and (ii) a certificate of verification relating to the translation. (3) Subregulation (2) does not apply if the applicant has already filed the relevant documents. (4) The Registrar must give a copy of the documents to the opponent. (5) If the applicant is the successor in title to the person who made the earlier application, the Registrar may require the applicant to provide documentary evidence that is sufficient to establish the passing of title to the applicant.
(1) The Registrar may give a direction in relation to an opposition to which this Part applies: (a) if requested by a party in writing; or (b) on the Registrar’s own initiative. (2) If the Registrar proposes to give a direction, the Registrar must give the parties an opportunity to make representations about the direction. (3) A direction must not be inconsistent with the Act or these Regulations. (4) The Registrar must notify the parties of the direction as soon as practicable.
If an opposition is dismissed under section 222 of the Act or regulation 5.8 or discontinued, the Registrar must notify the parties of the dismissal or discontinuance.
(1) For the purposes of subsection 63(2) of the Act (which deals with amendment), if the Registrar proposes to amend an application for the registration of a trade mark, the Registrar must by notification to the applicant: (a) set out the proposed amendment and the reason for making the amendment; and (b) state that the proposed amendment will be made at the end of a reasonable period stated in the notification, unless the applicant objects to the amendment within that period. (2) If an applicant objects to an amendment proposed by the Registrar within the period mentioned in paragraph (1)(b), the Registrar must not make the amendment unless the objection is withdrawn.
For the purposes of paragraph 64(b) of the Act (which deals with amendments before publication), the period for requesting an amendment is 14 days after filing the application for the registration of the trade mark.
If a person requests an amendment under section 64 of the Act (which deals with amendments before publication) or paragraph 66(a) of the Act (which deals with amendment of other documents), the Registrar may require the applicant to file a declaration stating: (a) that a clerical error or obvious mistake was made in the application; and (b) the circumstances in which the error or mistake was made.
Note: Regulations 21.6 and 21.7 deal with making and filing declarations.
For the purposes of subsection 65A(3) of the Act, the request for the amendment must be published in a computer database maintained by the Trade Marks Office.
If the Registrar amends an application, notice or document under Part 6 of the Act, the Registrar must give notification of the amendment to: (a) the person who requested the amendment; and (b) any other person that the Registrar thinks appropriate.
In this Division:
notice of opposition means a notice filed under subregulation 6.6(1).
party means an applicant or opponent.
Note: The following terms are defined in section 6 of the Act:
(a) applicant;
(b) approved form;
(c) file;
(d) month;
(e) person.
(1) For subsection 65A(4) of the Act, a person may oppose a request for amendment by filing a notice of opposition, in an approved form, within one month from the publication of the request for the amendment in a computer database maintained by the Trade Marks Office in accordance with regulation 6.3A. (2) The Registrar must give a copy of the notice to the applicant.
(1) This regulation applies if: (a) a party makes a request to the Registrar under this Division; or (b) the Registrar proposes to make a decision on the Registrar’s own initiative under this Division. (2) The Registrar must: (a) for paragraph (1)(a)—notify the other party of the request, including by giving the other party a copy of the request; or (b) for paragraph (1)(b)—notify the parties of the proposed decision. (3) If the Registrar proposes to grant the request, the Registrar must give the parties an opportunity to make representations: (a) in writing; or (b) at a hearing; or (c) by other means that the Registrar states in the notification. (4) The Registrar must notify the parties of the Registrar’s decision.
The Registrar may: (a) decide the practice and procedure to be followed in an opposition to which this Division applies; and (b) direct the parties accordingly.
(1) The Registrar: (a) must hold a hearing of the opposition if requested by a party in writing; or (b) may decide, on the Registrar’s own initiative, to hold a hearing of the opposition. (2) The hearing may, at the Registrar’s discretion, be: (a) an oral hearing; or (b) by written submissions. (3) If the Registrar decides on an oral hearing: (a) the Registrar must notify the parties of the date, time and place of the hearing; and (b) the opponent must file a summary of submissions at least 10 business days before the hearing; and (c) the applicant must file a summary of submissions at least 5 business days before the hearing. (4) The Registrar may take into account a party’s failure to file a summary of submissions under subregulation (3) in making an award of costs.
Note: Regulations 21.15 and 21.16 deal with hearings.
(5) The Registrar must: (a) decide the opposition; and (b) notify the parties of the Registrar’s decision.
(1) The Registrar may give a direction in relation to an opposition to which this Division applies: (a) if requested by a party in writing; or (b) on the Registrar’s own initiative. (2) If the Registrar proposes to give a direction, the Registrar must give the parties an opportunity to make representations about the direction. (3) A direction must not be inconsistent with the Act or these Regulations. (4) The Registrar must notify the parties of the direction as soon as practicable.
If an opposition is dismissed or discontinued, the Registrar must notify the parties of the dismissal or discontinuance.
(1) For the purposes of subsection 68(1) of the Act (which deals with registration), the period for the registration of a trade mark that has been accepted for registration is: (a) except if paragraph (b) applies—the period from the beginning of the day on which the acceptance is published in a computer database maintained by the Trade Marks Office in accordance with regulation 4.11A to the end of: (i) the day that is 6 months after that day; or (ii) if a later day is specified under subregulation (2) or (3)—the day specified in that subregulation; and (b) in the case of the death of an applicant for registration of the trade mark—within 12 months of the date of death or within such further period as the Registrar reasonably allows. (2) If: (a) proceedings in relation to the registration of the trade mark before a prescribed court or the ART are not determined or otherwise disposed of; and (b) the prescribed court or the ART is satisfied that the registration of the trade mark cannot take place on or before the first‑mentioned day in subparagraph (1)(a)(i); the prescribed court or the ART may specify for the purposes of subparagraph (1)(a)(ii) a day that is later than the first‑mentioned day in subparagraph (1)(a)(i). (3) If: (a) proceedings in relation to the registration of the trade mark are before the Registrar; and (b) the Registrar is reasonably satisfied that: (i) the registration of the trade mark cannot take place on or before the first‑mentioned day in subparagraph (1)(a)(i); and (ii) it is appropriate to do so; the Registrar may specify, for the purposes of subparagraph (1)(a)(ii), a day that is later than the first‑mentioned day in subparagraph (1)(a)(i).
For the purposes of paragraph 69(2)(c) of the Act (which deals with particulars), the following other particulars of a trade mark must be entered in the Register: (a) if the trade mark is registered as a certification trade mark, a collective trade mark or a defensive trade mark—an indication to that effect; (b) the date of the registration; (c) the date on which the Registrar enters the particulars of the registration in the Register under subsection 69(1) of the Act; (d) the particulars of any right of priority claimed under section 29 of the Act; (e) the filing date of the parent application on which any divisional application is based; (f) any number allocated to the parent application for registration of the trade mark; (g) the class numbers of the goods and/or services in respect of which the trade mark is registered; (h) the address of the owner of the trade mark; (i) any other particulars relating to the trade mark that the Registrar reasonably believes to be appropriate.
For the purposes of paragraph 71(a) of the Act, the registration must be published in a computer database maintained by the Trade Marks Office.
For the purposes of subsection 75(1) of the Act (which deals with requests for renewal), the period within which a person may request the Registrar to renew the registration of a trade mark is 12 months ending on the day on which the registration of the trade mark expires.
(1) For the purposes of section 76 of the Act (which deals with notice of renewal due), the period in relation to notifying a registered owner that renewal of the registration of a trade mark is due is 2 months ending on the day on which the registration of the trade mark expires. (2) A notice that the renewal is due must include: (a) a statement of the date on which the registration of the trade mark will expire; and (b) a statement of any fee payable.
For the purposes of subsection 77(2) of the Act (which deals with renewal), a notification of the renewal of the registration of a trade mark must include: (a) a statement that the registration is renewed; and (b) the period for which it is renewed.
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.
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 notification 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.
For section 80E of the Act (which deals with renewal within the prescribed period), a notification 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.
(1) The Registrar must, after receiving a request from the owner of a registered trade mark under subsection 84(1) of the Act, cancel registration of the trade mark if the Registrar is not obliged under subsection 84(2) of the Act to notify a person. (2) If the Registrar must notify a person under that subsection, the notification must state that unless: (a) the request from the owner is sooner withdrawn; or (b) a prescribed court determines that the Registrar must not cancel registration of the trade mark; the Registrar will cancel the trade mark at the end of a period of 2 months from the date of the notification. (3) If: (a) before the end of the period of 2 months, each person who is notified advises the Registrar in writing that the person does not object to cancellation of registration of the trade mark—the Registrar must cancel registration of the trade mark; or (b) paragraph (a) does not apply—the Registrar must cancel registration of the trade mark after the end of that period; unless the request from the owner is withdrawn or a prescribed court determines otherwise.
For the purposes of paragraph 89(2)(a) of the Act (which deals with amendment or cancellation by a prescribed court), a prescribed court, in making a decision under subsection 89(1) of the Act on an application for rectification of the Register, must take into account the following matters, so far as they are relevant: (a) the extent to which the public interest will be affected if registration of the trade mark is not cancelled; (b) whether any circumstances that gave rise to the application have ceased to exist; (c) the extent to which the trade mark distinguished the relevant goods and/or services before the circumstances giving rise to the application arose; (d) whether there is any order or other remedy, other than an order for rectification, that would be adequate in the circumstances.
For section 189A of the Act, and in addition to anything in Part 8 of the Act, an application for the rectification of the Register in relation to a trade mark may be made on any of the grounds mentioned in regulation 4.15A.
Note: Under subsection 189A(3) of the Act, regulations made for the purposes of section 189A:
(a) may be inconsistent with the Act; and
(b) prevail over the Act (including any other regulations or other instruments made under the Act), to the extent of any inconsistency.
For the purposes of subsection 83A(3) of the Act, the request for the amendment must be published in a computer database maintained by the Trade Marks Office.
(1) For subsection 83A(4) of the Act, a person may oppose a request for amendment by filing a notice of opposition with the Registrar. (2) A notice of opposition must be: (a) in an approved form; and (b) filed within 1 month after the request for amendment is published in a computer database maintained by the Trade Marks Office in accordance with regulation 8.3A. (3) The Registrar must give a copy of the notice to the registered owner of the registered trade mark.
The Registrar may: (a) decide the practice and procedure to be followed in an opposition under subsection 83A(4) of the Act; and (b) direct the registered owner of the registered trade mark who made the request for amendment, and a person (an opponent) who filed a notice of opposition, accordingly.
(1) The Registrar: (a) must hold a hearing of an opposition under subsection 83A(4) of the Act if requested by the registered owner of the registered trade mark, or an opponent, in writing; or (b) may decide, on the Registrar’s own initiative, to hold a hearing of the opposition. (2) The hearing may, at the Registrar’s discretion, be: (a) an oral hearing; or (b) by written submissions. (3) If the Registrar decides on an oral hearing: (a) the Registrar must notify the registered owner of the registered trade mark, and each opponent, of the date, time and place of the hearing; and (b) the registered owner of the registered trade mark must file a summary of submissions at least 5 business days before the hearing; and (c) each opponent must file a summary of submissions at least 10 business days before the hearing. (4) If the registered owner of the registered trade mark, or an opponent, fails to file a summary of submissions under subregulation (3), the Registrar may take that failure into account in making an award of costs. (5) The Registrar must: (a) decide the opposition; and (b) notify the registered owner of the registered trade mark, and each opponent, of the Registrar’s decision. (6) Regulations 21.15 and 21.16 do not apply in relation to an opposition under subsection 83A(4) of the Act.
(1) The Registrar may give a direction in relation to an opposition under subsection 83A(4) of the Act: (a) if requested by the registered owner of the registered trade mark, or an opponent, in writing; or (b) on the Registrar’s own initiative. (2) If the Registrar proposes to give a direction, the Registrar must give the registered owner of the registered trade mark, and each opponent, an opportunity to make representations about the direction. (3) A direction must not be inconsistent with the Act or these Regulations. (4) The Registrar must notify the registered owner of the registered trade mark, and each opponent, of the direction as soon as practicable.
If an opposition under subsection 83A(4) of the Act is dismissed under section 222 of the Act or is discontinued, the Registrar must notify the registered owner of the registered trade mark, and each opponent, of the dismissal or discontinuance.
This Part sets out requirements for the following: (a) the making and notification of an application for removal; (b) the filing of notices of opposition and associated documents; (c) the amending of filed documents; (d) the dismissal of an opposition; (e) the hearing of an opposition; (f) associated matters.
In this Part:
application for removal means an application for removal of a trade mark from the Register.
notice of intention to defend means a notice filed under regulation 9.15.
notice of opposition means a notice of opposition under section 96 of the Act.
opponent means a person who files:
(a) a notice of intention to oppose; and
(b) a statement of grounds and particulars.
party means an applicant or opponent.
statement of grounds and particulars means a statement by an opponent that sets out:
(a) the grounds for removal that the opponent intends to rebut; and
(b) the facts and circumstances that form the basis for the opposition to the removal.
Note: The following terms are defined in section 6 of the Act:
(a) applicant;
(b) approved form;
(c) employee;
(d) file;
(e) month;
(f) person.
(1) This regulation applies if: (a) a party makes a request to the Registrar under this Part; or (b) the Registrar proposes to make a decision on the Registrar’s own initiative under this Part. (2) The Registrar must: (a) for paragraph (1)(a)—notify the other party of the request, including by giving the other party a copy of the request; or (b) for paragraph (1)(b)—notify the parties of the proposed decision. (3) If the Registrar proposes to grant the request, the Registrar must give the parties an opportunity to make representations: (a) in writing; or (b) at a hearing; or (c) by other means that the Registrar states in the notification. (4) The Registrar must notify the parties of the Registrar’s decision.
For paragraph 92(2)(a) of the Act, an application for removal must be in an approved form.
(1) For subsection 95(1) of the Act, the Registrar must, within one month from the filing of the application, give a copy of the application to each person who, in the Registrar’s opinion, should receive one. (2) For the purposes of subsections 95(2) and (3) of the Act, the application must be published in a computer database maintained by the Trade Marks Office.
(1) The components of a notice of opposition are: (a) a notice of intention to oppose; and (b) a statement of grounds and particulars. (2) A notice of opposition is taken to be filed when both of its components have been filed.
(1) For subsection 96(2) of the Act, the period for filing a notice of intention to oppose is 2 months from the day the application for removal is published in a computer database maintained by the Trade Marks Office. (2) The notice must be in an approved form. (3) The Registrar must give a copy of the notice to the applicant.
(1) A statement of grounds and particulars must be filed within one month from the day the notice of intention to oppose is filed. (2) The statement must be in an approved form.
(1) The Registrar must assess the adequacy of a statement of grounds and particulars filed under regulation 9.9. (2) If the Registrar decides that the statement is adequate, the Registrar must give a copy of the statement to the applicant. (3) If the Registrar decides that the statement is inadequate, the Registrar may: (a) direct the opponent to rectify the inadequacy by filing more information on the basis for the opposition to the grounds for removal; or (b) dismiss the opposition. (4) If the Registrar decides that the information filed under paragraph (3)(a) rectifies the inadequacy of the statement, the Registrar must give a copy of the statement and the information to the applicant. (5) For subsection 99A(1) of the Act, the Registrar may dismiss the opposition if: (a) the Registrar decides that the statement is inadequate; or (b) the Registrar has directed the opponent to file information under paragraph (3)(a) and: (i) the opponent fails to file the information; or (ii) the Registrar decides that the information filed does not rectify the inadequacy of the statement. (6) Regulation 9.4 does not apply to this regulation.
Note: For review rights in relation to a decision by the Registrar to dismiss an opposition, see subsection 99A(2) of the Act.
(1) A person who intends to oppose an application for removal may request the Registrar to extend: (a) the period for filing a notice of intention to oppose under subregulation 9.8(1); or (b) the period for filing a statement of grounds and particulars under subregulation 9.9(1). (2) A request under paragraph (1)(a) or (b) may be made within the period for filing the document in question.
Note: See subparagraph (3)(b)(ii) and subregulation 9.12(2) in relation to the consequences of making the request after the filing period has ended.
(3) The request must: (a) be in an approved form; and (b) be accompanied by a declaration stating: (i) the facts and circumstances forming the basis for the grounds; and (ii) if the period for filing the notice of intention to oppose or the statement of grounds and particulars has ended—the reason why the request was not made within the period.
Note: Regulations 21.6 and 21.7 deal with making and filing declarations.
(4) The request may be made only on either or both of the following grounds: (a) an error or omission by the person, the person’s agent, the Registrar or an employee; (b) circumstances beyond the control of the person, other than an error or omission by the person, the person’s agent, the Registrar or an employee.
(1) The Registrar may grant a request under subregulation 9.11(1) for an extension of time only if the Registrar is satisfied that the grounds set out in the request justify the extension. (2) However, if the request is made after the period for filing the notice or statement of grounds and particulars has ended, the Registrar must not grant the extension unless the Registrar is satisfied that there is sufficient reason for the delay in making the request. (3) The Registrar must decide the length of the extended period having regard to what is reasonable in the circumstances.
(1) An opponent may request the Registrar to amend a notice of intention to oppose to correct a clerical error or obvious mistake. (2) If an opposition is proceeding in the name of a person other than the opponent under section 96A of the Act, the person may request the Registrar to amend the notice of intention to oppose to record the person’s name. (3) The Registrar may grant the request on terms that the Registrar considers appropriate. (4) If the Registrar grants the request, the Registrar must give a copy of the amended notice of intention to oppose to the applicant. (5) Regulation 9.4 does not apply to this regulation.
(1) An opponent may request the Registrar to amend the statement of grounds and particulars to: (a) correct an error or omission; or (b) amend or add facts or circumstances that form the basis of the opposition to the removal. (2) The Registrar may grant the request on terms that the Registrar considers appropriate. (3) However, the Registrar may grant the request only if the Registrar is satisfied that the amendment should be made. (4) If the Registrar grants the request, the Registrar must give a copy of the amended statement to the applicant.
(1) A notice of intention to defend must be filed within 2 months from the day the applicant is given a copy of the statement of grounds and particulars. (2) The Registrar must give the opponent a copy of the notice. (3) If the applicant does not file the notice of intention to defend within the period mentioned in subregulation (1) or that period as extended, the Registrar may decide to: (a) take the opposition to have succeeded; and (b) refuse to remove the trade mark from the Register. (4) The Registrar must notify the parties of the Registrar’s decision.
(1) A person may apply to the Registrar to extend the period for filing a notice of intention to defend. (2) The application must be made before the end of the period of 2 months beginning on the day after the end of the period mentioned in subregulation 9.15(1). (3) The application must: (a) be in the approved form; and (b) be accompanied by a declaration stating the facts and circumstances forming the basis for the grounds for making the application.
Note: Regulations 21.6 and 21.7 deal with making and filing declarations.
(4) The application may be made only on either or both of the following grounds: (a) an error or omission by the person, the person’s agent, the Registrar or an employee; (b) circumstances beyond the control of the person, other than an error or omission by the person, the person’s agent, the Registrar or an employee.
(1) The Registrar may grant an application under subregulation 9.15A(1) for an extension of time only if the Registrar is satisfied that the grounds set out in the application justify the extension. (2) However, if the application is made after the period mentioned in subregulation 9.15(1) has ended, the Registrar must not grant the extension unless the Registrar is satisfied that there is sufficient reason for the delay in making the application. (3) The Registrar must decide the length of the extended period having regard to what is reasonable in the circumstances.
(1) The Registrar must notify the parties that: (a) all the evidence for an evidentiary period mentioned in this regulation has been filed; or (b) no evidence was filed for the period. (2) The Registrar must give a copy of any evidence filed by a party under this regulation to the other party: (a) before the end of the relevant evidentiary period, if the Registrar considers it appropriate to do so; or (b) after the evidentiary period ends. Evidence in support (3) An opponent must file any evidence in support of the opposition within 3 months from the day the opponent is given a copy of the notice of intention to defend the application for removal. Evidence in answer (4) If the opponent files evidence in support of the opposition, the applicant must file any evidence in answer to the opponent’s evidence within 3 months from the day the Registrar: (a) gives the applicant: (i) all the evidence in support; or (ii) if the opponent files the evidence in support in instalments—the final instalment of the evidence in support; and (b) notifies the applicant that all the evidence in support has been filed. (5) If the opponent does not file any evidence in support of the opposition, regulation 9.17 applies. Evidence in reply (6) If the applicant files evidence in answer under subregulation (4), the opponent must file any evidence in reply to the evidence in answer within 2 months from the day the Registrar: (a) gives the opponent: (i) all the evidence in answer; or (ii) if the applicant files the evidence in answer in instalments—the final instalment of the evidence in answer; and (b) notifies the opponent that all the evidence in answer has been filed.
(1) If an opponent requests the Registrar, within the period for filing evidence in support mentioned in subregulation 9.16(3), to hear the opposition, the Registrar must do so. (2) The opposition is taken to have ended, but not to have been discontinued or dismissed, if the opponent does not: (a) file evidence in support in accordance with subregulation 9.16(3); or (b) ask for a hearing under subregulation (1). (3) The application for removal is taken to be unopposed if: (a) the opposition is taken to have ended under subregulation (2); and (b) the Registrar is satisfied that the application for removal is in order.
Note 1: See section 97 of the Act in relation to what the Registrar must do if the application for removal is unopposed.
Note 2: Regulations 21.15 and 21.16 deal with hearings.
(1) A party may request the Registrar to extend a period for filing evidence mentioned in regulation 9.16. (2) The Registrar may extend the period only if the Registrar is satisfied that: (a) the party: (i) has made all reasonable efforts to comply with all relevant filing requirements of this Part; and (ii) despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so; or (b) there are exceptional circumstances that justify the extension. (3) The Registrar: (a) must decide the length of the extended period having regard to what is reasonable in the circumstances; and (b) may do so on terms that the Registrar considers appropriate. (4) In this regulation:
exceptional circumstances includes the following:
(a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Part;
(b) an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement under this Part;
(c) an order of a court or a direction by the Registrar that the opposition be stayed.
For the purposes of subparagraph 98(2)(b)(ii) of the Act (which deals with restoration of trade marks), a thing referred to in paragraph 98(2)(b) of the Act is: (a) filing evidence in support in accordance with subregulation 9.16(3); or (b) requesting a hearing in accordance with subregulation 9.17(1).
(1) This regulation applies to an opposition if: (a) the notice of opposition has been filed; and (b) the Registrar has not decided to remove the trade mark under subsection 101(1) of the Act; and (c) the opposition has not been dismissed under regulation 9.10. (2) If the Registrar is satisfied that the parties agree to a cooling‑off period, the Registrar must allow a cooling‑off period of 6 months. (3) The Registrar must extend the cooling‑off period for 6 months if, before the end of the period, the Registrar is satisfied that the parties agree to the extension. (4) The Registrar must not: (a) further extend the cooling‑off period; or (b) allow more than one cooling‑off period for an opposition. (5) If a party files a notice, in an approved form, requesting the Registrar to discontinue the cooling‑off period, the Registrar must do so. (6) The Registrar may direct the parties on steps the parties must take: (a) if the cooling‑off period is discontinued; or (b) otherwise—when the cooling‑off period ends. (7) The opposition resumes: (a) if the cooling‑off period is discontinued; or (b) otherwise—when the cooling‑off period ends. (8) If: (a) the cooling‑off period begins during the period mentioned in regulation 9.15 or an evidentiary period mentioned in regulation 9.16; and (b) the opposition resumes; the period mentioned in regulation 9.15 or 9.16 restarts when the opposition resumes.
(1) This regulation applies to an opposition if the opposition has not been dismissed under regulation 9.10 or discontinued. (2) A party may request the Registrar to hold a hearing if an evidentiary period mentioned in regulation 9.16 has ended; and either (a) all evidence for the opposition proceeding has been filed; or (b) no evidence has been filed in that period. (3) The Registrar: (a) must hold a hearing of the opposition if requested by a party in writing; or (b) may decide, on the Registrar’s own initiative, to hold a hearing of the opposition. (4) The hearing may, at the Registrar’s discretion, be: (a) an oral hearing; or (b) by written submissions. (5) If the Registrar decides on an oral hearing: (a) the Registrar must notify the parties of the date, time and place of the hearing; and (b) the opponent must file a summary of submissions at least 10 business days before the hearing; and (c) the applicant must file a summary of submissions at least 5 business days before the hearing. (6) The Registrar may take into account a party’s failure to file a summary of submissions under subregulation (5) in making an award of costs.
Note: Regulations 21.15 and 21.16 deal with hearings.
(1) The Registrar may give a direction in relation to an opposition to which this Division applies: (a) if requested by a party in writing; or (b) on the Registrar’s own initiative. (2) If the Registrar proposes to give a direction, the Registrar must give the parties an opportunity to make representations about the direction. (3) A direction must not be inconsistent with the Act or these Regulations. (4) The Registrar must notify the parties of the direction as soon as practicable.
If an opposition is dismissed under regulation 9.10 or discontinued, the Registrar must notify the parties of the dismissal or discontinuance.
If the Registrar dismisses the opposition under regulation 9.10, the Registrar must remove the trade mark from the Register in respect of the goods, services, or both, specified in the application for removal.
For the purposes of paragraphs 107(2)(b) and 109(2)(b) of the Act (which deal with assignment and transmission), the following documents are prescribed: (a) a document that establishes the title to a trade mark of the assignee, or of the person to whom the trade mark has been transmitted; (b) evidence in writing of consent of the Commission to the assignment of a certification trade mark.
(1) For the purposes of paragraph 108(1)(a) of the Act (which deals with assignment and transmission), the Registrar must record particulars of the assignment or transmission of a trade mark in accordance with this regulation unless: (a) the application to assign or transmit the trade mark is withdrawn; or (b) a prescribed court determines otherwise. (2) If there is no record made under Part 11 of the Act of a person claiming an interest in, or a right in respect of, the trade mark, the Registrar must record the particulars after ascertaining that a claim has not been recorded. (3) If: (a) there is a record made under Part 11 of the Act of a person, or persons, claiming an interest in, or a right in respect of, the trade mark; and (b) the Registrar has notified that person, or each of those persons, under subregulation 10.5(1); and (c) that person or each of those persons has, within the period of 2 months from the date of the notice mentioned in paragraph (b), given written notice to the Registrar consenting to the assignment or transmission; the Registrar must record the particulars after the Registrar has received the last notice consenting to the assignment or transmission. (4) If: (a) paragraphs (3)(a) and (b) apply; and (b) the person, or any of the persons, notified by the Registrar under subregulation 10.5(1) has not consented in writing to the assignment or transmission of the trade mark within the period of 2 months from the date of the notice; the Registrar must record the particulars as soon as practicable after the end of that period.
For the purposes of paragraph 108(1)(b) of the Act (which deals with assignment and transmission): (a) the following particulars of an assignment or transmission of a trade mark for which registration is sought must be published: (i) if a number has been allocated in the Trade Marks Office to the application for registration of the trade mark—the number; (ii) the name of the person to whom the trade mark is recorded as having been assigned or transmitted; (iii) the day on which the particulars of the assignment or transmission were recorded; and (b) if details of an application for registration of the trade mark have been published in a way described in subregulation 4.7(2)—the particulars of the assignment or transmission mentioned in paragraph (a) must be published in the same way.
(1) For the purposes of paragraph 110(1)(a) of the Act (which deals with assignment and transmission), the Registrar must record particulars of the assignment or transmission of a trade mark in accordance with this regulation, unless: (a) the application to assign or transmit the trade mark is withdrawn; or (b) a prescribed court determines otherwise. (2) If there is no record made under Part 11 of the Act of a person claiming an interest in, or a right in respect of, the trade mark, the Registrar must record the particulars in the Register after ascertaining that a claim has not been recorded. (3) If: (a) there is a record made under Part 11 of the Act of a person, or persons, claiming an interest in, or a right in respect of, the trade mark; and (b) the Registrar has notified that person, or each of those persons, under subregulation 10.5(1); and (c) that person or each of those persons has, within the period of 2 months from the date of the notification mentioned in paragraph (b), given written notice to the Registrar consenting to the assignment or transmission; the Registrar must record the particulars in the Register after the Registrar has received the last notice consenting to the assignment or transmission. (4) If: (a) paragraphs (3)(a) and (b) apply; and (b) the person, or any of the persons, notified by the Registrar under subregulation 10.5(1) has not consented in writing to the assignment or transmission of the trade mark within the period of 2 months from the date of the notification; the Registrar must record the particulars in the Register as soon as practicable after the end of that period. (5) For the purposes of subsection 110(3) of the Act, the recording or registration must be published in a computer database maintained by the Trade Marks Office.
(1) For the purposes of section 111 of the Act, the Registrar must notify a person recorded under Part 11 of the Act as claiming an interest in, or a right in respect of, a trade mark that the Registrar will record the assignment or transmission of the trade mark at the end of a period of 2 months from the date of the notification, unless: (a) the application to assign or transmit the trade mark is withdrawn; or (b) a prescribed court determines otherwise; or (c) each person to whom the Registrar must notify under this subregulation has already notified the Registrar in writing that the person consents to the assignment or transmission. (2) Each notification under subregulation (1) in respect of a particular trade mark must be given on the same day.
(1) For the purposes of sections 115 and 119 of the Act (which deal with amendment and cancellation of particulars), particulars of a claim to an interest in, or to a right in respect of, a trade mark (other than the name, address or address for service of a person whose claim is recorded) entered in the Register or recorded under Division 3 of Part 11 of the Act may be amended in accordance with this regulation. (2) A request by a person to amend particulars of a claim to an interest in, or to a right in respect of, a trade mark must be: (a) in writing, in an approved form; and (b) accompanied by material supporting the person’s entitlement to make the request. (3) The Registrar must amend the particulars in accordance with the request if: (a) the request is made in accordance with subregulation (2); and (b) the Registrar is reasonably satisfied that the person making the request is entitled to make the request.
If a person: (a) whose claim to an interest in, or to a right in respect of, a trade mark for which registration is sought is recorded; and (b) whose name, address or address for service has changed since the claim was recorded; gives notice of the new name or address to the Registrar, the Registrar must amend the record accordingly.
Note: In relation to change of a person’s name, address or address for service that is recorded in the Register, see sections 215 and 216 of the Act and regulation 21.3.
(1) For the purposes of sections 115 and 119 of the Act (which deal with amendment and cancellation of particulars), particulars of a claim to an interest in, or to a right in respect of, a trade mark, entered in the Register or recorded under Division 3 of Part 11 of the Act may be cancelled in accordance with this regulation. (2) A request to cancel particulars of a claim to an interest in, or to a right in respect of, a trade mark must be made in writing: (a) by the person whose claim is recorded; or (b) by the owner of the trade mark; or (c) together by the person whose claim is recorded and the owner of the trade mark; or (d) if the request has with it the written consent to the cancellation of 1 of the persons mentioned in paragraph (c)—by the other person mentioned in that paragraph. (3) If a request is made under paragraph (2)(a), (c) or (d), the Registrar must cancel the particulars in accordance with the request. (4) If a request is made under paragraph (2)(b), the Registrar must notify the person whose claim is recorded that: (a) the request has been made; and (b) unless the request is withdrawn or a prescribed court orders otherwise, the Registrar will cancel particulars of the claim in accordance with the request as soon as practicable after the end of a period of 2 months from the date of the notification. (5) Unless a request made under paragraph (2)(b) is withdrawn or a prescribed court determines otherwise, the Registrar must, as soon as practicable: (a) if, before the end of the period mentioned in paragraph (4)(b), a person the particulars of whose claim are recorded informs the Registrar in writing that the person does not object to cancellation of the particulars—cancel the particulars in accordance with the request; or (b) if paragraph (a) does not apply—cancel the particulars after the end of that period in accordance with the request.
In this Part, a reference to the Comptroller‑General of Customs includes a reference to: (b) for Christmas Island—the Comptroller as defined in the Customs Act 1901 of Christmas Island; and (c) for the Cocos (Keeling) Islands—the Comptroller as defined in the Customs Act 1901 of the Cocos (Keeling) Islands.
For the definition of action period in section 6 of the Act, the period is 10 working days.
For the definition of claim period in section 6 of the Act, the period is 10 working days.
For subsection 132(1) of the Act, a document that sets out the particulars of registration of the registered trade mark is prescribed.
(1) For paragraph 132(3)(b) of the Act, the period is 2 months from the day the request is made by the authorised user under subsection 132(2) of the Act. (2) For paragraph 132(3)(e) of the Act, the authorised user must give to the Comptroller‑General of Customs documents that show: (a) the authorised user has power to give a notice of objection under subsection 132(1) of the Act; and (b) the authorised user has made the request; and (c) if the authorised user gives to the Comptroller‑General of Customs the notice after the period mentioned in subregulation (1) has ended—the period has ended.
Note: Examples of documents for paragraph (2)(a) are:
(a) an agreement between the registered owner of a trade mark, and the authorised user of the trade mark, that the authorised user of the trade mark is able to give notice of objection; and
(b) a declaration by the registered owner that the authorised user of the trade mark is able to give notice of objection.
For the purposes of subsection 136(3) of the Act, the claim must include the following information: (a) the designated owner’s full name, home or business address and address for service; (b) a telephone number for the designated owner; (c) the grounds for seeking the release of the seized goods; (d) if the designated owner’s home or business address is not in Australia: (i) the full name and the home or business address of a person who is the designated owner’s agent in Australia; and (ii) an address for service for the person who is the designated owner’s agent in Australia; and (iii) a telephone number for the person; and (iv) information showing that the person agreed to be the designated owner’s agent; (e) if a person or body other than the agent made arrangements on the designated owner’s behalf for the seized goods to be brought to Australia: (i) the full name, home or business address and address for service of the person or body; and (ii) a telephone number for the person or body.
Note: Examples of grounds for paragraph (c) are:
(a) that the goods do not infringe the notified trade mark; and
(b) that the importation of the goods does not infringe the notified trade mark.
For the purposes of subsection 143(2) of the Act (which deals with giving information to the Comptroller‑General of Customs), the period for complying with a request under subsection 143(1) of the Act is 10 working days from the day on which the request is made.
Part 13 of the Act in its application to Norfolk Island is modified as set out in Schedule 3.
Part 13 of the Act in its application to Christmas Island is modified as set out in Schedule 4.
Part 13 of the Act in its application to the Cocos (Keeling) Islands is modified as set out in Schedule 5.
For the purposes of subsection 173(1) of the Act, (which deals with rules governing use) an applicant for registration of a certification trade mark must file a copy of the rules governing the use of the certification trade mark at, or as soon as practicable after, the time of filing of the application.
(1) If, after examining an application, the Registrar is satisfied that: (a) the application has been made in accordance with this Act; and (b) there are no grounds for rejecting it; the Registrar must send to the Commission copies of the documents mentioned in subregulation (2). (2) For subregulation (1), the documents are: (a) the application for registration; and (b) a notification of any amendment made to the application for registration of a certification trade mark; and (c) a copy of the rules governing the use of the certification trade mark; and (d) any other document that is relevant to the application.
(1) For the purposes of subsection 175(1) of the Act (which deals with consideration of applications), the Commission must make an initial assessment of an application and of any documents received under regulation 16.2 in relation to the application as soon as practicable after receipt. (2) As soon as practicable after the initial assessment, the Commission must: (a) notify the applicant and the Registrar of the initial assessment; and (b) state in the notice to the applicant that the initial assessment will be published in a computer database maintained by the Trade Marks Office in accordance with subregulation (3); and (c) state in the notice to the applicant that the applicant, or another person, may: (i) respond in writing to the Commission; and (ii) request the Commission in writing to hold a conference; in relation to the initial assessment not more than 1 month after the date of the publication in the computer database maintained by the Trade Marks Office. (3) After receiving notice from the Commission, the Registrar must: (a) publish the initial assessment in a computer database maintained by the Trade Marks Office; and (b) include in the publication a statement mentioned in paragraph (2)(c). (4) If, in the period that ends 1 month after the date the initial assessment is published in a computer database maintained by the Trade Marks Office in accordance with subregulation (3): (a) a person responds in writing to the Commission in relation to a notice under subregulation (2) or a publication under subregulation (3); and (b) no person requests the Commission in writing to hold a conference on a matter included in the initial assessment; the Commission must, before making a decision on the application: (c) give to the applicant and each respondent a copy of each response to which paragraph (a) refers that is received from another person; and (d) invite the applicant and each respondent to make a written submission on each response mentioned in paragraph (c).
(1) If, in the period that ends 1 month after the date the initial assessment is published in a computer database maintained by the Trade Marks Office in accordance with subregulation 16.3(3): (a) a person requests the Commission in writing to hold a conference on a matter included in the initial assessment; and (b) no person otherwise responds in writing to the Commission in relation to a notice under subregulation 16.3(2) or a publication under subregulation 16.3(3); the Commission must hold the conference before it makes a decision on the application. (2) As soon as practicable after the Commission receives a request under subregulation (1) for a conference, the Commission must: (a) invite the applicant and any other person mentioned in subregulation (1): (i) to attend the conference; and (ii) to make an oral or written submission at the conference on the views expressed by another person that are mentioned in subparagraph (b)(ii); and (b) give to the applicant and any other person mentioned in subregulation (1): (i) reasonable notice of the time, date and place of the conference; and (ii) a reasonable opportunity to express views that are relevant to the conference, either orally at, or by written submission before or during, the conference; and (iii) a copy of each written submission to which subparagraph (ii) refers that is made by another person. (3) If, in the period that ends 1 month after the date the initial assessment is published in a computer database maintained by the Trade Marks Office in accordance with subregulation 16.3(3): (a) a person requests the Commission in writing to hold a conference on a matter included in the initial assessment; and (b) a person otherwise responds in writing to the Commission in relation to a notice under subregulation 16.3(2) or a publication under subregulation 16.3(3); the Commission must hold the conference before it makes a decision on the application. (4) As soon as practicable after the Commission receives a request under subregulation (3) for a conference, the Commission must: (a) invite the applicant and any person who has responded in writing to the Commission: (i) to attend the conference; and (ii) to make an oral or written submission at the conference on the views expressed by another person that are mentioned in subparagraph (b)(ii); and (b) give to the applicant and any person who has responded in writing to the Commission: (i) reasonable notice in writing of the time, date and place of the conference; and (ii) a reasonable opportunity to express views that are relevant to the conference, either orally at, or by written submission before or during, the conference; and (iii) a copy of each response to which paragraph (3)(b) refers, and of each written submission to which subparagraph (ii) refers, that is made by another person. (5) If a person who is invited to attend a conference: (a) informs the Commission that the person does not wish to attend the conference; or (b) does not attend the conference; the conference may proceed in the absence of the person.
(1) In considering an application for registration of a certification trade mark for the purposes of making a decision under subsection 175(2), (3) or (4) of the Act (which deal with consideration of applications), the Commission must have regard to the matters specified in subregulation (2). (2) The Commission must have regard to: (a) the initial assessment; and (b) any response in relation to a notice under subregulation 16.3(2) or a publication under subregulation 16.3(3) that is relevant; and (c) any relevant submission that is made to the Commission in writing about the initial assessment, whether or not the submission is made in relation to a conference; and (d) any relevant oral submission made during a conference; and (e) any other relevant matter.
For the purposes of paragraph 175(2)(b) of the Act (which deals with criteria for rules governing use), the Commission must have regard to the following criteria: (a) the principles relating to restrictive trade practices set out in Part IV of the Competition and Consumer Act 2010; (b) the principles relating to unconscionable conduct set out in Part 2‑2 of the Australian Consumer Law (within the meaning of that Act); (c) the principles relating to unfair practices, safety and product information set out in Parts 3‑1, 3‑3 and 3‑4 of the Australian Consumer Law.
For the purposes of paragraph 175(4)(b) of the Act (which deals with publication of a decision of the Commission not to give a certificate), the publication of the matter must: (a) be in a computer database maintained by the Trade Marks Office; and (b) include a statement to the effect that, subject to the Administrative Review Tribunal Act 2024, application may be made to the ART for the review of the decision to which the publication relates.
For the purposes of paragraph 176(3)(b) of the Act, the decision must be published in a computer database maintained by the Trade Marks Office.
(1) For the purposes of subsection 178(1) of the Act (which deals with the variation of rules), the registered owner of a certification trade mark may apply to the Commission to approve a variation of the rules governing the use of the certification trade mark. (2) An application to approve the variation of the rules governing the use of a registered certification trade mark must: (a) be in writing; and (b) have with it a copy of the rules governing the use of the registered certification trade mark that incorporate the proposed variation.
(1) The Commission must make an initial assessment of an application for approval of the variation of the rules governing the use of a registered certification trade mark as soon as practicable after it receives the application. (2) Subregulations 16.3(2), (3) and (4) and regulation 16.4 apply to an application to approve the variation of the rules governing the use of a registered certification trade mark as if a reference in those provisions to an application for registration of a certification trade mark were a reference to an application to approve the variation of the rules governing the use of a registered certification trade mark. (3) Subregulation 16.5(2) applies to a decision whether to approve an application for variation of the rules governing the use of a registered certification trade mark.
Note: Subsection 178(3) of the Act requires the Commission, in deciding whether to approve a variation, to have regard to prescribed criteria, which are the criteria set out in regulation 16.6.
(1) The Commission may approve a variation of the rules if the Commission is satisfied that the rules, as varied: (a) would not be to the detriment of the public; and (b) are satisfactory having regard to the criteria prescribed in regulation 16.6; and (c) provide that the attributes a person must have to become an approved certifier are sufficient to enable the person to assess competently whether goods or services meet the certification requirements. (2) If the Commission approves a variation of the rules, the Commission must: (a) notify the registered owner, in writing, of its decision to approve a variation of the rules; and (b) certify in writing that it is satisfied of the matters mentioned in subsection 178(3) of the Act and in subregulation (1); and (c) send a copy of the certificate to the Registrar; and (d) send a certified copy of the rules as varied to the Registrar. (3) If the Commission decides not to approve a variation of the rules, the Commission must notify the Registrar and the registered owner, in writing, of its decision not to approve a variation of the rules. (4) The Registrar must publish in a computer database maintained by the Trade Marks Office notice of the Commission’s decision to approve or not approve a variation of the rules. (5) The notice published under subregulation (4) must include a statement to the effect that, subject to the Administrative Review Tribunal Act 2024, application may be made to the ART for review of the decision to which the notice relates.
Note: registered owner is defined in section 6 of the Act.
(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) 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, the Commission must have regard to the following matters in considering an application: (a) whether under the proposed rules the attributes a person must have to become an approved certifier are sufficient, in the opinion of the Commission, to enable a person to competently assess whether or not goods or services meet the certification requirements; (b) whether the proposed rules would not be to the detriment of the public; (c) whether the proposed rules are satisfactory, having regard to the criteria prescribed in regulation 16.6.
(1) An application to the Commission for its consent to the assignment of a registered certification trade mark must: (a) be made by the registered owner 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 to continue after assignment to apply the same rules governing use of the registered certification trade mark that the registered owner of the trade mark applies; and (d) if the prospective assignee does not propose to continue 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) If the prospective assignee does not propose after the assignment to continue to apply the same rules governing use of the registered certification trade mark as the registered owner of the trade mark applies, the Commission must have regard to the following matters in considering an application: (a) whether under the proposed rules the attributes a person must have to become an approved certifier are sufficient, in the opinion of the Commission, to enable a person to competently assess whether or not goods or services meet the certification requirements; (b) whether the proposed rules would not be to the detriment of the public; (c) whether the proposed rules are satisfactory, having regard to the criteria prescribed in regulation 16.6.
(1) The Registrar must publish the rules governing the use of the certification trade mark as soon as practicable after a copy of the rules is filed in accordance with subsection 173(1) of the Act. (2) The Registrar must publish the certified copy of the rules, provided to the Registrar by the Commission in accordance with subsection 175(2) of the Act, as soon as practicable after the Registrar publishes acceptance of the application in a computer database maintained by the Trade Marks Office in accordance with regulation 16.7A. (3) The Registrar may publish the rules, or the certified copy of the rules, in any manner the Registrar thinks fit, including (but not limited to): (a) a listing in a computer database that is publicly available; or (b) making the rules or certified copy of the rules available for public inspection.
An applicant for registration of a defensive trade mark must file evidence in support of the application at, or as soon as practicable after, the time of filing of the application.
(1) This regulation applies if, because of the extent to which a protected international trade mark has been used in relation to all or any of the goods or services in respect of which it is protected, it is likely that the use of the trade mark in relation to other goods or services would be taken to indicate that there is a connection between those other goods or services and the holder of the protected international trade mark. (2) The holder of the protected international trade mark may apply for its registration as a defensive trade mark in respect of any or all of the other goods or services. (3) Part 17 of the Act applies for the purposes of an application under subregulation (2) as if: (a) a reference in that Part to a registered trade mark were a reference to the protected international trade mark; and (b) a reference in that Part to goods or services in respect of which a trade mark is registered were a reference to goods or services protected by the protected international trade mark; and (c) a reference in that Part to the registered owner of a trade mark were a reference to the holder of the protected international trade mark; and (d) the reference in paragraph 187(c) of the Act to a trade mark that is not registered as a trade mark in the name of the applicant included a trade mark that is not a protected international trade mark held by the applicant; and (e) the reference in section 189 of the Act to a trade mark that is not registered in the name of the registered owner included a trade mark that is not a protected international trade mark held by the registered owner.
This Part provides for matters that enable the performance of the obligations of Australia, or obtain for Australia an advantage or benefit, under the Madrid Protocol.
change of ownership includes assignment or transmission.
Contracting Party of the holder has the meaning given by Rule 1(xxvibis) of the Madrid Regulations.
date of international registration means the date recorded in the International Register as the international registration date for a trade mark in respect of which a request was made under Article 3ter (1) of the Protocol for extension of protection to Australia.
date of recording means the date recorded in the International Register as the recordal date for a request made under Article 3ter (2) of the Protocol for extension of protection to Australia.
holder means:
(a) in relation to an IRDA or a protected international trade mark—the person or persons in whose name or names the international registration of the trade mark is recorded in the Record of International Registrations; and
(b) in relation to another international registration of a trade mark—the person or persons in whose name or names the international registration of the trade mark is recorded in the International Register.
International Bureau means the International Bureau of the World Intellectual Property Organisation.
International Register means the register maintained by the International Bureau for the purposes of the Protocol.
international registration of a trade mark means registration of the mark in the International Register.
international registration designating Australia, or IRDA, means a request, made under Article 3ter (1) or (2) of the Protocol, for extension to Australia of the protection resulting from the international registration of a trade mark.
Madrid Regulations means the Regulations under the Madrid Protocol, as the Regulations are in force for Australia on 1 November 2024.
Note 1: The Regulations could in 2025 be viewed on the World Intellectual Property Organization website (www.wipo.int).
Note 2: For Madrid Protocol, see regulation 2.1 of these Regulations.
Office of origin has the meaning given by Article 2(2) of the Protocol.
priority date, for a trade mark that is the subject of an IRDA or a protected international trade mark, has the meaning given by regulation 17A.3.
protected international trade mark means a trade mark to which protection resulting from international registration of the mark is extended in Australia in accordance with these Regulations.
Protocol means the Madrid Protocol.
Record of International Registrations means the record required to be kept by regulation 17A.66.
(1) The priority date for a trade mark that is the subject of an IRDA in respect of particular goods or services is the date that would be the date of effect of the protection of the trade mark in respect of those goods or services if the trade mark became a protected international trade mark. (2) The priority date for a protected international trade mark in respect of particular goods or services is the date of effect of the protection of the trade mark in respect of those goods or services.
(1) Subject to subregulation (2), the date of effect of the protection of a protected international trade mark is: (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 recording of the request. (2) If: (a) the request for extension of protection to Australia was in respect of a trade mark whose registration had also been sought in 1 or more Convention countries; and (b) the holder claimed a right of priority under regulation 17A.15 for protection of the trade mark in respect of particular goods or services; and (c) the trade mark is a protected international trade mark; the protection of the trade mark is taken to have had effect: (d) if an application to register the trade mark was made in only 1 Convention country—from (and including) the day on which the application was made in that country; or (e) if applications to register the trade mark were made in more than 1 Convention country—from (and including) the day on which the earliest of those applications was made. (3) This regulation has effect subject to regulation 17A.54.
This Division makes provision for dealing with applications for international registration of trade marks that are to be filed with the International Bureau through the intermediary of the Trade Marks Office.
(1) A person who is: (a) the registered owner of a registered trade mark; or (b) an applicant for registration of a trade mark; may apply for international registration of the trade mark. (2) The person must: (a) be an Australian citizen; or (b) be domiciled in Australia; or (c) have a real and effective industrial or commercial establishment in Australia.
Note: These requirements are stated in Article 2(1)(ii) of the Protocol.
(3) Two or more persons may jointly apply for international registration of a trade mark as allowed by rule 8 of the Madrid Regulations.
(1) Subject to subregulation (2), the application must: (a) comply with the requirements of the Protocol; and (b) be filed with the International Bureau through the intermediary of the Trade Marks Office. (2) The applicant must use the official form issued by the International Bureau or another form that requires the same information and uses the same format as the official form.
(1) The Registrar must perform the functions, under the Protocol, of the Office of origin in relation to: (a) the application; and (b) if the application results in an international registration, the international registration. (2) In particular, the Registrar must: (a) check the application; and (b) certify that the information in the application corresponds with the information held by the Registrar in respect of the application for registration of the trade mark (the basic application) or the registration of the trade mark (the basic registration), as the case requires; and (c) if the application results in an international registration—notify the International Bureau if the basic application or the basic registration is withdrawn, restricted or cancelled or lapses, expires or otherwise ceases to have effect in respect of some or all of the goods or services listed in the international registration: (i) within 5 years after the date of the international registration; or (ii) after that time, if the action that resulted in the basic application or the basic registration being so affected began before the end of that 5 year period.
Note: The detailed functions for the Office of origin are set out in the Protocol and the Madrid Regulations.
The Registrar must take all reasonable steps to ensure that the application is received by the International Bureau within 2 months after the date on which it is filed.
(1) The holder of an international registration for which the Trade Marks Office is the Office of the Contracting Party of the holder may make a request for territorial extension in accordance with Article 3ter (2) of the Protocol. (2) The request may be made to the International Bureau through the intermediary of the Trade Marks Office. (3) If a request is made through the Trade Marks Office, the Registrar must perform the functions, under the Protocol, of the Office of the Contracting Party of the holder in relation to the request.
This Division makes provision for dealing with a request to extend to Australia the protection resulting from international registration of a trade mark.
If the Registrar receives from the International Bureau a notification of an IRDA, the Registrar must examine and report on: (a) whether the IRDA is in accordance with this Division; and (b) whether there are grounds under Subdivision 2 for rejecting it.
(1) The holder of an IRDA: (a) must be using, or must intend to use, the trade mark that is the subject of the IRDA in relation to the goods, services or goods and services listed in the IRDA; or (b) must have authorised, or intend to authorise, another person to use the trade mark in relation to those goods, services or goods and services; or (c) must intend to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods, services or goods and services. (2) If there is reason to suspect that the holder does not meet a requirement of subregulation (1) in relation to any of the goods or services mentioned in the IRDA, the Registrar may require the holder to make a declaration to the Registrar that those provisions apply to all of those goods and services.
(1) The expression ‘all goods’, ‘all services’, ‘all other goods’ or ‘all other services’ must not be used in an IRDA to specify the goods or services in respect of which protection is sought. (2) If a term has been identified by the International Bureau as being: (a) too vague for the purposes of classification; or (b) incomprehensible; or (c) linguistically incorrect; the term must not be used in an IRDA to sp
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