Author: bannes
Company: Attorney-General's Department

EXPLANATORY STATEMENT

Select Legislative Instrument 2005 No. 52

Issued by the Authority of the Minister for Industry, Tourism and Resources

Trade Marks Act 1995

Trade Marks Amendment Regulations 2005 (No. 1)

The Trade Marks Act 1995 (the Act) provides for the registration and protection of trade mark rights in Australia. One of the benefits granted to the owner of a registered trade mark is the ability, under specific circumstances, to oppose and prevent registration of later applied for marks.

Subsection 231(1) of the Act provides that the Governor-General may make regulations prescribing matters required or permitted by the Act to be prescribed, or necessary or convenient to be prescribed for carrying out or giving effect to the Act and for the conduct of any business relating to the Trade Marks Office.  Section 189A of the Act provides that the regulations may provide for such matters as are necessary to enable the performance of Australia’s obligations, or to obtain for Australia any advantage or benefit, under the Madrid Protocol (the Protocol). Subsection 189A(3) provides that regulations made under this power may be inconsistent with the Act, and prevail over the Act (including any other regulations or other instruments made under the Act), to the extent of any inconsistency.

The Australian Government acceded to the Protocol on July 11, 2001. The Protocol enables a trade mark owner to seek protection for their trade mark in several countries at once by filing a single application with their own national or regional trade mark office. Under the Protocol, the protection given to a registered trade mark in each Contracting Party should be the same as if the mark had been deposited directly with the office of that Contracting Party. The Act and Trade Marks Regulations 1995 (the Principal Regulations) were amended to give effect to the Protocol in Australia. 

The main purpose of the Regulations is to rectify an omission made at the time the regulations implementing the Protocol in Australia were prepared. To ensure that Australia is fully meeting its obligations under the Protocol, and to provide greater certainty for users of the trade marks system, Schedule 1 to the Regulations provides mechanisms for:

1.	opposing the registration of a domestic trade mark on the basis that it conflicts with prior rights held in another trade mark protected pursuant to the Madrid Protocol; and

2.	cancellation or amendment of a registered trade mark on the basis that it conflicts with prior rights held in another trade mark protected pursuant to the Madrid Protocol.

The Regulations also contain a provision adding a new Convention country.  The Paris Convention for the Protection of Industrial Property (Paris Convention), of which Australia is a Contracting Party, is an international agreement that facilitates simultaneous protection of industrial property in member countries (‘Convention countries’).  Subsection 225(1) of the Act provides that the regulations may declare a foreign country to be a Convention country for the purposes of the Act.  Schedule 10 to the Principal Regulations lists the Convention countries by name.  This schedule must be updated each time a country accedes to the Paris Convention.  On 3 January 2005 Comoros deposited its instrument of accession to the Paris Convention.  Comoros will become bound by the Paris Convention on 3 April 2005.

The Regulations amend the list of Convention countries in Schedule 10 to the Principal Regulations to insert ‘Comoros’ into the list of Convention countries.  This meets Australia’s international obligations under the Paris Convention.  

No consultation was undertaken prior to making these Regulations.  This is because the Regulations are of a minor or machinery nature only, and do not substantially change the law.  The amendments are required in order for Australia to meet its international obligations under the Madrid Protocol and the Paris Convention.

Details of the Regulations may be found in the Attachment.

Regulations 1 to 3 and Schedule 1 commence on the day after they are registered on the Federal Register of Legislative Instruments. Schedule 2 commences on 3 April 2005.

Attachment

Trade Marks Amendment Regulations 2005 (No. 1)

Details of the Regulations are as follows:

Regulation 1 identifies the Regulations as the Trade Marks Amendment Regulations 2005 (No. 1).

Regulation 2 specifies that Regulations 1 to 3 and Schedule 1 to the Regulations commence on the day after they are registered on the Federal Register of Legislative Instruments, and Schedule 2 to the Regulations commences on 3 April 2005. 

Regulation 3 specifies that Schedules 1 and 2 to the Regulations amend the Trade Marks Regulations 1995 (the Principal Regulations). 

Schedule 1 – Amendments commencing on registration

Item 1 alters the wording of subregulation 4.15A(1) to add a reference to the power under which the subregulation is made.

Item 2 adds a note after subregulation 4.15A(1) which alerts readers to the fact that regulations made for the purposes of section 189A of the Act (the power to make regulations for the purpose of implementing the Madrid Protocol (the Protocol) in Australia) may be inconsistent with the Act, and prevail over the Act to the extent of any inconsistency. The note also refers readers to Division 2 of Part 4 of the Act, which includes the primary provisions relating to the grounds for rejection of a trade mark application to which those contained in subregulation 4.15A(1) are an adjunct.

Item 3 alters the wording of subregulation 4.15A(2) to add a reference to the power under which the subregulation is made.
 
Item 4 adds a note after subregulation 4.15A(2) which alerts readers to the fact that regulations made for the purposes of section 189A of the Act (the power to make regulations for the purpose of implementing the Protocol in Australia) may be inconsistent with the Act, and prevail over the Act to the extent of any inconsistency. The note also refers readers to Division 2 of Part 4 of the Act, which includes the primary provisions relating to the grounds for rejection of a trade mark application to which those contained in subregulation 4.15A(2) are an adjunct.

Item 5 amends subregulation 4.15A(3) to clarify that the previous reference to “either case” in the subregulation refers to a case mentioned in subregulation 4.15A(1) or (2).

Item 6 amends subregulation 4.15A(5) to clarify that the previous reference to “either case” in the subregulation refers to a case mentioned in subregulation 4.15A(1) or (2).

Item 7 inserts new regulations 5.18 and 5.19.

Regulation 5.18 adds, as grounds for opposing the registration of a trade mark, that the opposed trade mark conflicts with prior rights held in another trade mark protected pursuant to the Protocol. Despite Australia’s treaty obligation to provide access to this mechanism, such a provision was overlooked when the regulations implementing the Protocol in Australia were prepared. Subregulation 5.18(1) stipulates that those grounds are the same as the grounds mentioned in regulation 4.15A for rejection of a trade mark application. The intention of this provision is to ensure that grounds of opposition available to owners of rights under a national application are also available, as was originally intended, to the owners of rights for which protection in Australia was sought by means of the Protocol.

The item also adds a note below subregulation 5.18(1) which alerts readers to the fact that regulations made for the purposes of section 189A of the Act (the power to make regulations for the purpose of implementing the Protocol in Australia) may be inconsistent with the Act, and prevail over the Act to the extent of any inconsistency.

Paragraph 5.18(2)(a) clarifies that the new ground may be used to oppose registration of a trade mark even where the application for the opposed mark was made before the commencement of the Regulations.

Paragraphs 5.18(2)(b) and (c) remove doubt about the validity of notices of opposition filed before commencement of the Regulations and stated to have been filed on the grounds in regulation 4.15A or section 44 of the Act where the rights relied on have been sought pursuant to the Protocol. Paragraph 5.18(2)(b) clarifies that notices relying on grounds in regulation 4.15A shall be taken to have been validly filed. Paragraph 5.18(2)(c) clarifies that notices relying on grounds in section 44 of the Act shall be taken to have been validly filed.

Regulation 5.19 requires the Registrar to amend a notice of opposition to add, as grounds for opposition, the grounds for rejection mentioned in regulation 4.15A when requested by the opponent.  This provision only applies if the notice of opposition was filed before commencement of the Regulations, and if the request for amendment of the notice of opposition was made within three months after the commencement.  When this provision applies, the Registrar has no discretion whether to amend the notice of opposition or not — he or she will have to make the amendment.  For requests for amendment filed outside this period, section 66 of the Act applies.  Under this section, inter alia, a notice of opposition may be amended to add grounds of opposition where the Registrar considers that it is fair and reasonable to do so.  The item also adds a note after paragraph 5.19 to refer readers to section 66 of the Act.

Item 8 inserts new regulation 8.3 to add grounds for applying for rectification of the Register of Trade Marks on the basis that a registered trade mark conflicts with prior rights held in another trade mark protected pursuant to the Protocol. This also rectifies an omission made at the time the implementing regulations for the Protocol were prepared. It ensures consistency of treatment between marks applied for directly to the Registrar and those sought through the Protocol. The item also adds a note which alerts readers to the fact that regulations made for the purposes of section 189A of the Act (the power to make regulations for the purpose of implementing the Madrid Protocol in Australia) may be inconsistent with the Act, and prevail over the Act to the extent of any inconsistency.

Item 9 inserts new paragraph 21.28(1)(ha) to prescribe requesting an amendment of a notice of opposition under subregulation 5.19(1) for the purposes of paragraph (a) of the definition of 'relevant act' in subsection 224(8) of the Act. As a result, requesting an amendment under this subregulation is not a 'relevant act' for the purposes of section 224 of the Act, so that the time period for making the request is not capable of extension under section 224 of the Act. This is in effect a transitional provision giving opponents a limited time to take advantage of the fact that the Registrar has no discretion to make the amendment. If more than 3 months have elapsed, opponents will have to establish that it is fair and reasonable for the amendment to be made and the applicant will have an opportunity to present a contrary view. This is designed to preserve some balance between the competing rights of the respective parties.

Schedule 2 – Amendments commencing on 3 April 2005

Item 1 inserts ‘Comoros’ into the list of Convention countries in Schedule 10 to the Principal Regulations to reflect the accession of this country to the Paris Convention for the Protection of Industrial Property.