Federal Register of Legislation - Australian Government

Primary content

Trade Marks Amendment Regulations 2005 (No. 1)

Authoritative Version
  • - F2005L00759
  • No longer in force
SLI 2005 No. 52 Regulations as made
These Regulations amend the Trade Mark Regulations 1995.
Administered by: DITR
Registered 29 Mar 2005
Tabling HistoryDate
Tabled HR10-May-2005
Tabled Senate10-May-2005
Date of repeal 09 Aug 2013
Repealed by Industry, Innovation, Climate Change, Science, Research and Tertiary Education (Spent and Redundant Instruments) Repeal Regulation 2013

Trade Marks Amendment Regulations 2005 (No. 1)1

Select Legislative Instrument 2005 No. 52

I, PHILIP MICHAEL JEFFERY, Governor-General of the Commonwealth of Australia, acting with the advice of the Federal Executive Council, make the following Regulations under the Trade Marks Act 1995.

Dated 23 March 2005

P. M. JEFFERY

Governor-General

By His Excellency’s Command

IAN MACFARLANE


Contents

                        1     Name of Regulations                                                        2

                        2     Commencement                                                              2

                        3     Amendment of Trade Marks Regulations 1995                    2

Schedule 1             Amendments commencing on registration                    3

Schedule 2             Amendment commencing on 3 April 2005                     8

 


1              Name of Regulations

                These Regulations are the Trade Marks Amendment Regulations 2005 (No. 1).

2              Commencement

                These Regulations commence as follows:

                (a)    on the day after they are registered — regulations 1 to 3 and Schedule 1;

               (b)    on 3 April 2005 — Schedule 2.

3              Amendment of Trade Marks Regulations 1995

                Schedules 1 and 2 amend the Trade Marks Regulations 1995.



 

Schedule 1        Amendments commencing on registration

(regulation 3)

  

[1]           Subregulation 4.15A (1)

omit

Subject to

insert

For section 189A of the Act, and subject to

[2]           Subregulation 4.15A (1), at the foot

insert

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.

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]           Subregulation 4.15A (2)

omit

Subject to

insert

For section 189A of the Act, and subject to

[4]           Subregulation 4.15A (2), at the foot

insert

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.

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.

[5]           Subregulation 4.15A (3)

omit

If the Registrar in either case is satisfied:

insert

If, in a case mentioned in subregulation (1) or (2), the Registrar is satisfied:

[6]           Subregulation 4.15A (5)

omit

If the Registrar in either case is satisfied

insert

If, in a case mentioned in subregulation (1) or (2), the Registrar is satisfied

[7]           After regulation 5.17

insert

5.18        Grounds for opposition to registration of a trade mark — trade mark identical etc to trade mark protected under Madrid Protocol

         (1)   For section 189A of the Act, and in addition to anything in Part 5 of the Act, the registration of a trade mark may be opposed on the grounds for rejection 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.

         (2)   To avoid doubt, and subject to subsection 52 (2) of the Act:

                (a)    the registration of a trade mark may be opposed on the grounds mentioned in subregulation (1) even if the application for registration of the trade mark was lodged before the commencement of the Trade Marks Amendment Regulations 2005 (No. 1); and

               (b)    if:

                          (i)    a person filed a notice of opposition to the registration of a trade mark before the commencement of the Trade Marks Amendment Regulations 2005 (No. 1); and

                         (ii)    the notice is stated to have been filed on the grounds mentioned in regulation 4.15A (whether or not the notice states other grounds);

                        the notice of opposition is taken, on and after the commencement of those Regulations, to have been validly filed on the grounds mentioned in regulation 4.15A; and

                (c)    if:

                          (i)    a person filed a notice of opposition to the registration of a trade mark before the commencement of the Trade Marks Amendment Regulations 2005 (No. 1); and

                         (ii)    the notice is stated to have been filed on the grounds mentioned in section 44 of the Act (whether or not the notice states other grounds); and

                         (iii)    the person was not entitled to file the notice on those grounds;

                        the notice of opposition is taken, on and after the commencement of those Regulations, to have been validly filed on the grounds mentioned in section 44 of the Act.

5.19        Amendment of notice of opposition

         (1)   Subject to subregulation (2), the Registrar must, at the request of the person who has filed a notice of opposition to the registration of a trade mark, amend the notice of opposition to add as grounds for opposition the grounds for rejection mentioned in regulation 4.15A.

         (2)   Subregulation (1) applies only if:

                (a)    the notice of opposition was filed before the commencement of the Trade Marks Amendment Regulations 2005 (No. 1); and

               (b)    the request for amendment of the notice of opposition is made not later than 3 months after the commencement of those Regulations.

Note   Section 66 of the Act also allows, but does not require, the Registrar to amend a notice at the written request of the person who filed it if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.

[8]           After regulation 8.2

insert

8.3           Grounds for application for rectification of Register — registered trade mark identical etc to trade mark protected under Madrid Protocol

                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 the grounds mentioned in subregulation 5.18 (1).

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.

[9]           After paragraph 21.28 (1) (h)

insert

              (ha)    requesting an amendment of a notice of opposition under subregulation 5.19 (1);


 

Schedule 2        Amendment commencing on 3 April 2005

(regulation 3)

  

[1]           Schedule 10

after

Colombia

insert

Comoros

Note

1.       All legislative instruments and compilations are registered on the Federal Register of Legislative Instruments kept under the Legislative Instruments Act 2003. See www.frli.gov.au.