Commonwealth Numbered Regulations Commonwealth Numbered Regulations
1 Subregulations 1.3(4) and (5)
Repeal the subregulations, substitute:
(4) If the Commissioner 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 Commissioner.
(5) The Commissioner 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 Chapter 5
Repeal the Chapter, substitute:
5.1 What this Chapter is about
This Chapter 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) the hearing of an opposition;
(e) associated matters.
General
In this Chapter:
"applicant" means:
(a) for a section 101M opposition--the patentee of an innovation patent; or
(b) for any other opposition--a person whose application or request under the Act or these Regulations is opposed by an opponent.
"notice of opposition" means a notice filed under regulation 5.4, 5.6 or 5.10.
"opponent" means:
(a) for a section 101M opposition--a person who files a notice of opposition under regulation 5.6; or
(b) for any other opposition--a person who files a notice of opposition under regulation 5.4 or 5.10.
"party" means an applicant or an opponent.
"procedural opposition" means an opposition begun by filing a notice of opposition under regulation 5.10.
section 101M opposition means an opposition under section 101M of the Act.
"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.
"substantive opposition" means:
(a) an opposition begun by filing a notice of opposition under regulation 5.4; or
(b) a section 101M opposition.
Note: The following terms are defined in Schedule 1 to the Act:
(a) approved form;
(b) complete specification;
(c) file;
(d) patent request;
(e) patentee;
(f) re-examination.
5.3 Commissioner may give direction about filing document or evidence
(1) If a document or evidence may or must be filed under this Chapter, the Commissioner may give a direction specifying:
(a) the number of copies of the document or evidence to be filed; and
(b) the form in which the document or evidence is to be filed; and
(c) the means by which the document or evidence is to be filed.
(2) The Commissioner may make or revoke the direction as the Commissioner sees fit.
(3) If a party does not comply with the direction, the Commissioner may:
(a) treat the document or evidence as not having been filed; or
(b) tell the party to comply with the direction.
Part 5.2 -- Filing of opposition documents
Division 5.2.1 -- Substantive opposition
5.4 Notice of opposition--standard patent opposition
(1) For section 59 of the Act, a person opposes the grant of a standard patent by filing a notice of opposition, in the approved form, within 3 months from the day the notice of acceptance is published under paragraph 49(5)(b) of the Act.
(2) For subsection 75(1) of the Act, a person opposes the grant of an extension of the term of a standard patent by filing a notice of opposition, in the approved form, within 3 months from the day the notice of acceptance is published under paragraph 74(2)(b) of the Act.
(3) The Commissioner must give an applicant in relation to a notice of opposition filed under subregulation (1) or (2) a copy of the notice of opposition as soon as practicable.
5.5 Statement of grounds and particulars--standard patent opposition
(1) An opponent in a substantive opposition, other than a section 101M opposition, must file a statement of grounds and particulars within 3 months from the day the notice of opposition is filed.
(2) The statement of grounds and particulars must be:
(a) in the approved form; and
(b) accompanied by a copy of each document mentioned in the statement, unless the document:
(i) is open to public inspection; and
(ii) relates to a provisional or complete application for a patent.
(3) The Commissioner must give the applicant a copy of the statement and accompanying documents as soon as practicable.
5.6 Notice of opposition and statement of grounds and particulars--section 101M opposition
(1) For section 101M of the Act, a person opposes an innovation patent that has been certified by filing the following documents:
(a) a notice of opposition in the approved form;
(b) a statement of grounds and particulars;
(c) a copy of each document mentioned in the statement, unless the document:
(i) is open to public inspection; and
(ii) relates to a provisional or complete application for a patent.
(2) The documents:
(a) may be filed at any time after the certification of the patent; and
(b) must be filed at the same time.
(3) The Commissioner must give copies of the documents to the applicant as soon as practicable.
(1) A party who intends to file evidence in a substantive opposition must:
(a) file the evidence within the relevant evidentiary period mentioned in regulation 5.8; and
(b) if the party files all the evidence before the end of the period--notify the Commissioner of that fact.
(2) The Commissioner must give a copy of any evidence filed by a party under regulation 5.8 to the other party:
(a) before the end of the period, if the Commissioner considers it appropriate to do so; or
(b) as soon as practicable after the relevant evidentiary period ends.
(3) The Commissioner must, as soon as practicable, notify:
(a) the other party of a notification under paragraph (1)(b); or
(b) if no notification is given under paragraph (1)(b)--the parties that:
(i) all the evidence for the period has been filed; or
(ii) no evidence was filed.
Evidence in support
(1) An opponent in a substantive opposition must file any evidence in support of the opposition:
(a) for a section 101M opposition--at the same time as the documents mentioned in subregulation 5.6(1); or
(b) for any other substantive opposition--within 3 months from the day the opponent files the statement of grounds and particulars under regulation 5.5.
Evidence in answer
(2) 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 Commissioner:
(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.
(3) 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 Commissioner notifies the applicant that no evidence in support was filed.
Evidence in reply
(4) If the applicant files evidence in answer under subregulation (2) or (3), the opponent must file any evidence in reply to the evidence in answer within 2 months from the day the Commissioner:
(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.
5.9 Extension of time for filing evidence
(1) The Commissioner may extend an evidentiary period mentioned in regulation 5.8:
(a) if requested in writing by a party; or
(b) on the Commissioner's own initiative.
(2) The Commissioner may extend the period only if the Commissioner is satisfied that:
(a) the party who intended to file evidence in the period:
(i) has made all reasonable efforts to comply with all relevant filing requirements under this Chapter; and
(ii) despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so; or
(b) there are exceptional circumstances that warrant the extension.
(3) The Commissioner must determine the length of the extended period having regard to what is reasonable in the circumstances.
(4) The Commissioner must notify the parties of the extension as soon as practicable.
(5) 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 Chapter;
(b) an error or omission by the Commissioner that prevents a party from complying with a filing requirement under this Chapter;
(c) an order of a court, or a direction by the Commissioner, that the opposition be stayed pending the completion of a related proceeding or action under the Act.
Division 5.2.2 -- Procedural opposition
Leave to amend filed document
(1) For subsection 104(4) of the Act, a person opposes a request for leave to amend a filed document by filing a notice of opposition, in the approved form, within 2 months from the day the notice of the granting of leave to amend is published under subregulation 10.5(2).
Note: For the grounds on which an amendment may be opposed, see regulation 5.21.
Extension of time to do relevant act
(2) For subsection 223(6) of the Act, a person opposes the grant of an application for an extension of time to do a relevant act by filing a notice of opposition, in the approved form, within 2 months from the day the advertisement of the extension application is advertised under subsection 223(4) of the Act.
Application for grant of licence
(3) For subregulation 22.21(4), a person opposes the grant of a licence by filing a notice of opposition, in the approved form, within 2 months from the day the Commissioner gives the person a copy of the application under subregulation 22.21(3).
Commissioner to give copy of notice to applicant
(4) The Commissioner must give an applicant in relation to subregulation (1), (2) or (3) a copy of the notice of opposition as soon as practicable.
5.11 Statement of grounds and particulars
(1) An opponent in a procedural opposition must file a statement of grounds and particulars within one month from the day the notice of opposition is filed under regulation 5.10.
(2) The statement of grounds and particulars must be:
(a) in the approved form; and
(b) accompanied by a copy of each document mentioned in the statement of grounds and particulars, unless the document:
(i) is open to public inspection; and
(ii) relates to a provisional or complete application for a patent.
(3) The Commissioner must give the applicant a copy of the statement of grounds and particulars and accompanying documents as soon as practicable.
The Commissioner may:
(a) decide the practice and procedure to be followed in a procedural opposition; and
(b) direct the parties accordingly.
Part 5.3 -- Amendments to opposition documents
5.13 Application of regulation 22.22
Regulation 22.22 does not apply to an amendment made under this Part.
5.14 Notice of opposition--correction of errors or mistake
(1) An opponent may request the Commissioner in writing to amend the opponent's notice of opposition to correct a clerical error or obvious mistake.
(2) The Commissioner must give the parties an opportunity to make representations about the proposed amendment.
(3) The Commissioner must, as soon as practicable:
(a) notify the parties of the Commissioner's decision; and
(b) if the Commissioner decides to make the amendment--give the applicant a copy of the amended notice of opposition.
5.15 Notice of opposition--change of opponent
(1) This regulation applies if an opponent's right or interest in an opposition is transferred to another person (the new opponent ) during an opposition.
(2) The new opponent may:
(a) tell the Commissioner that the right or interest in the opposition has been transferred to the new opponent; and
(b) request the Commissioner in writing to amend the notice of opposition to record the new opponent's name.
(3) The Commissioner must give the applicant, the opponent and the new opponent an opportunity to make representations about the amendment.
(4) The Commissioner must:
(a) as soon as practicable:
(i) notify the parties of the Commissioner's decision; and
(ii) if the Commissioner decides to make the amendment--give the applicant a copy of the amended notice of opposition; and
(b) ensure that the opposition proceeds in the name of the new opponent.
5.16 Statement of grounds and particulars
(1) An opponent may request the Commissioner in writing to amend the opponent's statement of grounds and particulars:
(a) to correct an error or omission in the grounds of opposition; or
(b) to update the grounds of opposition to reflect an amendment to the patent request or complete specification to which the statement relates; or
(c) to amend the facts and circumstances forming the basis for the grounds.
(2) The Commissioner must:
(a) notify the applicant of the opponent's request; and
(b) give the parties an opportunity to make representations about the amendment.
(3) The Commissioner must not make the amendment if:
(a) the Commissioner is considering an application for dismissal of the opposition under Part 5.4; or
(b) for an opposition begun under subregulation 5.4(1):
(i) the applicant's complete specification is being re-examined; and
(ii) the re-examination is not completed as required by regulation 9.5.
(4) The Commissioner must make the amendment if:
(a) subregulation (3) does not apply; and
(b) the Commissioner is satisfied that the amendment should be made.
(5) The Commissioner must, as soon as practicable:
(a) notify the parties of the Commissioner's decision; and
(b) if the Commissioner decides to make the amendment--give the applicant a copy of the amended statement.
Part 5.4 -- Dismissal of opposition
(1) An applicant may request the Commissioner to dismiss an opposition:
(a) within one month from the day the Commissioner gives the applicant a copy of the statement of grounds and particulars under subregulation 5.5(3), 5.6(3) or 5.11(3); or
(b) if the applicant's complete specification is re-examined under subsection 97(1) of the Act--within one month from the day the re-examination is completed as required by regulation 9.5.
(2) The request must be in the approved form.
(3) The Commissioner must give the opponent a copy of the request as soon as practicable.
(4) If the Commissioner decides to dismiss the opposition, the Commissioner must, as soon as practicable, notify the parties of the decision.
Note: For the requirements the Commissioner must satisfy when exercising a discretionary power adversely to a person, see regulation 22.22.
5.18 Dismissal on initiative of Commissioner
(1) The Commissioner may dismiss an opposition if the Commissioner considers it appropriate to do so.
(2) The grounds on which the Commissioner may dismiss the opposition include an opponent's failure to file a statement of grounds and particulars or document mentioned in the statement in accordance with regulation 5.5, 5.6 or 5.11.
(3) If the Commissioner decides to dismiss the opposition, the Commissioner must notify the parties of the decision as soon as practicable.
Note: For the requirements the Commissioner must satisfy when exercising a discretionary power adversely to a person, see regulation 22.22.
Part 5.5 -- Hearing of opposition
5.19 Hearing and decision--re-examination
(1) This regulation applies to an opposition if:
(a) the applicant's complete specification is re-examined under subsection 97(1) of the Act; and
(b) the re-examination is completed as required by regulation 9.5.
(2) The Commissioner may hear and decide the opposition:
(a) on the Commissioner's own initiative, if the Commissioner considers it appropriate to do so; or
(b) at the opponent's request, if the request is made:
(i) less than one month after the re-examination is completed as required by regulation 9.5; and
(ii) in the approved form.
(3) The Commissioner must give the applicant a copy of a request under paragraph (2)(b) as soon as practicable.
(4) The Commissioner must notify the parties of the decision as soon as practicable.
5.20 Hearing and decision--other circumstances
(1) This regulation applies to an opposition if:
(a) the periods for filing evidence have ended; and
(b) the notice of opposition has not been withdrawn under regulation 5.26; and
(c) the opposition has not been dismissed under Part 5.4 or heard and decided under regulation 5.19.
(2) The Commissioner:
(a) must hold a hearing of the opposition i f requested by a party in writing; or
(b) may decide, on the Commissioner's own initiative, to hold a hearing of the opposition.
(3) The hearing may, at the Commissioner's discretion, be:
(a) an oral hearing; or
(b) by written submissions.
(4) If the Commissioner decides on an oral hearing:
(a) the Commissioner must notify the parties o f 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; and
(d) the Commissioner must give a copy of each party's summary of submissions to the other party as soon as practicable.
(5) The Commissioner must:
(a) decide the opposition; and
(b) notify the parties of the Commissioner's decision.
(6) The Commissioner, in making an award of costs in relation to an opposition under subregulation 22.8(2), may consider a failure by a party to file a summary of submissions under subregulation (4).
5.21 Opposition to amendment--grounds
For subsection 104(4) of the Act, an opposition to an amendment may be made only on the ground that the amendment is not allowable under:
(a) section 102 of the Act; or
(b) regulation 10.3.
Note: For the period for filing a notice of opposition to the allowance of an amendment, see subregulation 5.10(1).
5.22 Commissioner may give directions
(1) The Commissioner may give a direction in relation to an opposition to which this Chapter applies:
(a) if requested by a party in writing; or
(b) on the Commissioner's own initiative.
(2) If the Commissioner proposes to give a direction, the Commissioner 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 Commissioner must notify the parties of the direction as soon as practicable.
5.23 Commissioner may consult documents
(1) For the purposes of deciding an opposition, the Commissioner may consult a document that:
(a) is relevant to the opposition; and
(b) has not been filed under this Chapter; and
(c) is available in the Patent Office.
(2) If the Commissioner proposes to rely on the document, the Commissioner must give the parties:
(a) notice of the Commissioner's intention to do so; and
(b) a copy of, or access to, the document; and
(c) an opportunity to give evidence or make representations about the document.
5.24 Representations to Commissioner--formal requirements
A representation mentioned in a provision of this Chapter may be made to the Commissioner by any means approved by the Commissioner.
5.25 Extension of time for filing--amendment at Commissioner's direction
(1) This regulation applies if:
(a) the Commissioner directs an applicant to file a statement of proposed amendments under subsection 107(1) of the Act; and
(b) a period for filing a document under this Chapter begins or ends during the amendment period.
(2) The period for filing the document is extended by the equivalent of the amendment period.
(3) In this regulation:
"amendment period" means the period that:
(a) begins on the day the applicant is given an opportunity to be heard under subsection 107(2) of the Act; and
(b) ends on the day the Commissioner decides whether to allow the amendment.
(1) An opponent may withdraw an opposition at any time by filing a signed notice of withdrawal in the approved form.
(2) The Commissioner must give the applicant a copy of the notice of withdrawal as soon as practicable.
3 Chapter 6A
Repeal the Chapter, substitute:
Chapter 6A -- Divisional applications
6A.1 Divisional applications before grant--standard and innovation patents
(1) For paragraph 79B(2)(a) and subparagraph 79B(3)(b)(iv) of the Act, a further complete application must:
(a) be made in accordance with section 29 of the Act; and
(b) be filed:
(i) if the first application is for a standard patent--no later than 3 months from the day the notice of acceptance of the first application is published under paragraph 49(5)(b) of the Act; or
(ii) if the first application is for an innovation patent--before the grant of the patent under subsection 62(1) of the Act.
Note: For the definition of first application , see section 79B of the Act.
(2) For paragraph 79B(2)(b) of the Act, the particulars are:
(a) a statement that the application is a further complete application for section 79B of the Act; and
(b) the number of the first application.
6A.2 Divisional applications after grant--innovation patents
(1) For paragraph 79C(1A)(a) and subparagraph 79C(2)(b)(iv) of the Act, a further complete application must be:
(a) made in accordance with section 29 of the Act; and
(b) filed no later than one month from the day the notice of the occurrence of the examination of the first patent is published under paragraph 101E(2)(b) of the Act.
Note: For the definition of first patent , see section 79C of the Act.
(2) For paragraph 79C(1A)(b) of the Act, the particulars are:
(a) a statement that the application is a further complete application for section 79C of the Act; and
(b) the number of the first patent.
4 Subregulations 13.1A(1) and 13.1B(1)
Omit "subsection 141(1)", substitute "paragraph 141(1)(c)".
5 Subregulation 22.10(3)
Repeal the subregulation.
6 Regulation 22.10AC
Repeal the regulation, substitute:
For subsection 222A(7) of the Act, the following are prescribed:
(a) lodging a return under section 76A of the Act;
(b) an act done in relation to proceedings in a court or a tribunal;
(c) an act done under Chapter 20.
7 Subregulation 22.11(4)
Repeal the subregulation, substitute:
(4) For the definition of relevant act in subsection 223(11) of the Act, the following are prescribed:
(a) an action mentioned in Chapter 5, other than an action or step taken under regulation 5.4, 5.5, 5.10 or 5.11;
(b) filing, during the term of a standard patent under subsection 71(2) of the Act, an application under subsection 70(1) of the Act for an extension of the term of the patent;
(c) an action mentioned in Chapter 20.
8 Subregulations 22.21(3) and (4)
Repeal the subregulations, substitute:
(3) The Commissioner must give a copy of the application to:
(a) a person whose application was restored under section 150 of the Act; or
(b) a patent applicant or patentee of the application or patent for which an extension of time was granted under section 223 of the Act; or
(c) the patent applicant or patentee of the application or patent to which subsection 41(4) of the Act applies;
and to any other person the Commissioner believes to have an interest in the application.
(4) A person mentioned in subregulation (3) may oppose the grant of the licence to which the application relates.
9 Part 2 of Schedule 7 (table items 216 to 220)
Repeal the items, substitute:
|
216 |
Filing a notice of opposition under regulation 5.4, 5.6 or 5.10 |
$600 |
|
217 |
Filing a request under subregulation 5.17(1) for dismissal of opposition |
$600 |
|
218 |
Filing an application under subregulation 5.9(1) for an extension of time |
$500 for each month or part of a month for which the extension is sought |
|
219 |
Making a representation to the Commissioner, under subregulation 5.14(2) or 5.15(3) or paragraph 5.16(2)(b), objecting to a proposed amendment |
$600 |
|
220 |
Making a representation to the Commissioner under subregulation 5.22(2) objecting to a proposed direction |
$600 |
10 After regulation 2.2
Insert:
2.3 Giving of documents by Registrar
(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.
11 Part 5
Repeal the Part, substitute:
Part 5 -- Opposition to registration
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 intention to oppose" means a notice filed under regulation 5.6.
"notice of opposition" means:
(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 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.
5.3 Registrar may give direction about filing document or evidence
(1) If a document or evidence may or must be filed under this Part, the Registrar may give a direction specifying:
(a) how many copies of the document or evidence must be filed; and
(b) the form in which the document or evidence is to be filed; and
(c) the means by which the document or evidence is to be filed.
(2) If a party does not comply with the direction, the Registrar may:
(a) treat the document or evidence as not having been filed; or
(b) tell the party to comply with the direction.
(3) The Registrar may make or revoke the direction as the Registrar sees fit.
(4) Regulation 5.4 does not apply to the Registrar's decision to make or revoke the direction.
5.4 Notification and opportunity to make representations
(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.
Division 2 -- Filing of opposition documents
Subdivision A -- Notice of opposition
5.5 Filing of notice of opposition
A notice of opposition is taken to be filed when the notice of intention to oppose and the statement of grounds and particulars have been filed under regulations 5.6 and 5.7.
5.6 Filing of notice of intention to oppose
(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 advertised in the Official Journal under paragraph 34(b) of the Act.
(2) The notice must be in an approved form.
(3) The Registrar must give a copy of the notice to the applicant.
5.7 Filing of statement of grounds and particulars
(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.
5.8 Statement of grounds and particulars must be adequate
(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 Administrative Appeals Tribunal 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.
5.9 Extension of time for filing--application
(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 app roved 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.
5.10 Extension of time for filing--grant
(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.
5.11 Amendment of notice of intention to oppose
(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).
5.12 Amendment of statement of grounds and particulars
(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.
Subdivision B -- Notice of intention to defend
5.13 Filing of notice of intention to defend
(1) For subsection 52A(2) of the Act, a notice of intention to defend must be filed within one month 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) 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.
5.15 Extension of time for filing
(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.
Division 3 -- Cooling-off period for opposition
5.16 Registrar may allow cooling-off period
(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.
Division 4 -- Hearing of opposition
(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.
5.18 Copy of earlier Convention application to be available to opponent
(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.
5.19 Registrar may give direction
(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.
5.20 Registrar must notify parties of dismissal or discontinuance of opposition
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.
12 Before regulation 6.1
Insert:
Division 1 -- Amendment of application for registration of trade mark and other documents
13 Regulations 6.5 and 6.6
Repeal the regulations, substitute:
Division 2 -- Opposition to amendment after particulars published
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 advertisement of the request for amendment in the Official Journal under subsection 65A(3) of the Act.
(2) The Registrar must give a copy of the notice to the applicant.
6.7 Notification and opportunity to make representations
(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 requ est , 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.
6.10 Registrar may give direction
(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.
6.11 Registrar must notify parties of dismissal or discontinuance of opposition
If an opposition is dismissed or discontinued, the Registrar must notify the parties of the dismissal or discontinuance.
14 Part 9
Repeal the Part, substitute:
Part 9 -- Removal of trade mark from Register for non-use
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 intention to oppose" means a notice filed under regulation 9.8.
"notice of opposition" means:
(a) a notice of intention to oppose; and
(b) a statement of grounds and particulars.
"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.
9.3 Registrar may give direction about filing document or evidence
(1) If a document or evidence may or must be filed under this Part, the Registrar may give a direction specifying:
(a) how many copies of the document or evidence must be filed; and
(b) the form in which the document or evidence is to be filed; and
(c) the means by which the document or evidence is to be filed.
(2) If a party does not comply with the direction, the Registrar may:
(a) treat the document or evidence as not having been filed; or
(b) tell the party to comply with the direction.
(3) The Registrar may make or revoke the direction as the Registrar sees fit.
(4) Regulation 9.4 does not apply to the Registrar's decision to make or revoke the direction.
9.4 Notification and opportunity to make representations
(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 requ est , 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.
Division 2 -- Application for removal
For paragraph 92(2)(a) of the Act, an application for removal must be in an approved form.
9.6 Notification of application
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.
Division 3 -- Filing of opposition documents
Subdivision A -- Notice of opposition
9.7 Filing of notice of opposition
A notice of opposition is taken to be filed when the notice of intention to oppose and the statement of grounds and particulars have been filed under regulations 9.8 and 9.9.
9.8 Filing of notice of intention to oppose
(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 advertised in the Official Journal .
(2) The notice must be in an approved form.
(3) The Registrar must give a copy of the notice to the applicant.
9.9 Filing of statement of grounds and particulars
(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.
9.10 Statement of grounds and particulars must be adequate
(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.
9.11 Extension of time for filing--application
(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 app roved 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.
9.12 Extension of time for filing--grant
(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.
9.13 Amendment of notice of intention to oppose
(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.
9.14 Amendment of statement of grounds and particulars
(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.
Subdivision B -- Notice of intention to defend
9.15 Filing of notice of intention to defend
(1) A notice of intention to defend must be filed within one month 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), 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) 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.
9.17 Request for hearing and circumstances in which opposition taken to have ended
(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.
9.18 Extension of time for filing
(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.
Division 4 -- Cooling-off period for opposition
9.19 Registrar may allow cooling-off period
(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.
Division 5 -- Hearing of opposition
(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.
9.21 Registrar may give direction
(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.
9.22 Registrar must notify parties of dismissal or discontinuance of opposition
If an opposition is dismissed under regulation 9.10 or discontinued, the Registrar must notify the parties of the dismissal or discontinuance.
9.23 Removal of trade mark from register
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.
15 At the end of regulation 17A.28
Add:
(3) The ground set out in section 177 of the Act is a ground for rejecting an IRDA that is for a certification trade mark.
16 Subdivision 3 of Division 3 of Part 17A
Repeal the Subdivision, substitute:
Subdivision C -- Opposition to IRDA
In this Subdivision:
"extension of protection" means the extension of protection in Australia to the trade mark that is the subject of the IRDA.
"notice of intention to defend" means a notice filed under regulation 17A.34H.
"notice of intention to oppose" means a notice filed under regulation 17A.33.
"notice of opposition" means:
(a) a notice of intention to oppose; and
(b) a statement of grounds and particulars.
"opponent" means a person who files:
(a) a notice of intention to oppose; and
(b) a statement of grounds and particulars.
"party" means an IRDA holder 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.
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.
17A.30 Registrar may give direction about filing document or evidence
(1) If a document or evidence may or must be filed under this Subdivision, the Registrar may give a direction specifying:
(a) how many copies of the document or evidence must be filed; and
(b) the form in which the document or evidence is to be filed; and
(c) the means by which the document or evidence is to be filed.
(2) If a party does not comply with the direction, the Registrar may:
(a) treat the document or evidence as not having been filed; or
(b) tell the party to comply with the direction.
(3) The Registrar may make or revoke the direction as the Registrar sees fit.
(4) Regulation 17A.31 does not apply to this regulation.
17A.31 Notification and opportunity to make representations
(1) This regulation applies if:
(a) a party makes a request to the Registrar under this Subdivision; or
(b) the Registrar proposes to make a decision on the Registrar's own initiative under this Subdivision.
(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.
17A.32 Filing of notice of opposition
(1) A notice of opposition is taken to be filed when the notice of intention to oppose and the statement of grounds and particulars have been filed under regulations 17A.33 and 17A.34A.
(2) The Registrar must notify the International Bureau of the filing of the notice of opposition in accordance with rule 17, as applicable, of the Common Regulations.
17A.33 Filing of notice of intention to oppose
(1) If the Registrar advertises the acceptance of an IRDA in the Official Journal , a person may oppose the extension of protection by filing a notice of intention to oppose within 2 months from the advertisement of the acceptance.
(2) The notice must be in an approved form.
(3) The Registrar must give a copy of the notice to the applicant.
17A.34 Grounds for opposing IRDA
(1) The extension of protection may be opposed on any of the grounds on which an IRDA may be rejected under Subdivision 2, except the ground that the trade mark cannot be represented graphically.
(2) The extension of protection may also be opposed on any of the grounds set out in sections 58 to 61 and 62A of the Act, as affected by subregulation (3).
(3) Sections 58 to 61 and 62A of the Act apply in relation to an IRDA as if:
(a) a reference in those sections:
(i) to an application for the registration of a trade mark were a reference to the IRDA; and
(ii) to an applicant were a reference to the holder of the IRDA; and
(iii) to the registration of a trade mark were a reference to the extension of protection in Australia to the trade mark that is the subject of the IRDA; and
(b) the reference in paragraph 60(a) of the Act to the priority date for the registration of the trade mark were a reference to the priority date for the trade mark that is the subject of the IRDA.
(4) The extension of protection may also be opposed on the grounds that:
(a) a document filed in support of the IRDA was amended contrary to the Act; or
(b) the Registrar accepted the IRDA on the basis of evidence provided, or a representation made, by the holder that was false in a material particular.
Note: Section 66 of the Act provides for the amendment of documents filed with the Registrar.
17A.34A Filing of statement of grounds and particulars
(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.
17A.34B Statement of grounds and particulars must be adequate
(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 Administrative Appeals Tribunal for review of a decision under this regulation to dismiss the opposition or delete material from the statement of grounds and particulars.
(7) Regulation 17A.31 does not apply to this regulation.
17A.34C Extension of time for filing--application
(1) A person who intends to oppose the extension of protection may request the Registrar to extend:
(a) the period for filing a notice of intention to oppose under subregulation 17A.33(1); or
(b) the period for filing a statement of grounds and particulars under subregulation 17A.34A(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 extension of protection of the IRDA is entered on the Record of International Registrations under paragraph 17A.37(1)(b).
Note: See subparagraph (3)(b)(ii) and subregulation 17A.34D(2) in relation to the consequences of making the request after the filing period has ended.
(3) The request must:
(a) be in an app roved 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 must 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.
(5) Subsection 52(5) of the Act applies to the request.
(6) Regulation 17A.31 does not apply to this regulation.
17A.34D Extension of time for filing--grant
(1) The Registrar may grant a request under subregulation 17A.34C(1) for an extension of time 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.
17A.34E Opposition may proceed in name of other person
Section 53 of the Act applies to a notice of intention to oppose filed under this Subdivision.
17A.34F Amendment of notice of intention to oppose
(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 proceeds in the name of another person under section 53 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 a request under subregulation (1) or (2) on terms that the Registrar considers appropriate.
(4) If the Registrar grants the request, the Registrar must give a copy of the notice of the amended intention to oppose to the IRDA holder.
(5) Regulation 17A.31 does not apply to this regulation.
17A.34G Amendment of statement of grounds and particulars
(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 IRDA holder.
17A.34H Filing of notice of intention to defend
(1) The IRDA holder must file a notice of intention to defend within one month from the day the Registrar notifies the International Bureau under subregulation 17A.32(2).
(2) The holder must file an Australian address for service with the notice.
(3) The Registrar must give a copy of the notice to the opponent.
(4) If the holder does not file the notice within the period mentioned in subregulation (1), the Registrar may decide to:
(a) take the opposition to have succeeded; and
(b) refuse protection to the holder.
(5) The Registrar is not required to take any action in response to a notice of intention to defend filed under subregulation (1) unless the opponent has notified the Registrar, in writing, of the opponent's address for service in Australia.
(6) A requirement to:
(a) give a document to a person; or
(b) give a person an opportunity to make written representations or to be heard;
does not apply if no address for service of the person is recorded in the Record of International Registrations.
(7) The Registrar must notify the parties of the Registrar's decision.
(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 IRDA holder must file any evidence in answer to the evidence in support within 3 months from the day the Registrar:
(a) gives the IRDA holder:
(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 IRDA holder that all the evidence in support has been filed.
(5) If the opponent does not file any evidence in support of the opposition, the IRDA holder must file any evidence in answer to the statement of grounds and particulars within 3 months from the day the Registrar notifies the IRDA holder that no evidence in support was filed.
Evidence in reply
(6) If the IRDA holder 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 IRDA holder 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.
17A.34K Extension of time for filing
(1) A party may request the Registrar to extend a period for filing evidence mentioned in regulation 17A.34J.
(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 Subdivision; 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 Subdivision;
(b) an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement under this Subdivision;
(c) an order of a court or a direction by the Registrar that the opposition be stayed.
17A.34L Registrar may allow cooling-off period
(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 regulation 17A.34N; and
(c) the opposition has not been dismissed under regulation 17A.34B.
(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 they 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 17A.34H or an evidentiary period mentioned in regulation 17A.34J; and
(b) the opposition resumes;
the period mentioned in regulation 17A.34H or 17A.34J restarts when the opposition resumes.
(1) This regulation applies to an opposition if:
(a) the opposition has not been dismissed under regulation 17A.34B; or
(b) the opposition has not been decided under regulation 17A.34N;or
(c) the opposition is not taken to have succeeded under regulation 17A.34H.
(2) An applicant may request the Registrar to hold a hearing if:
(a) the evidentiary period mentioned in subregulation 17A.34J(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 17A.34J(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 in writing; 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.
17A.34N Decision on opposition
(1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.
(2) The Registrar must notify the International Bureau of the Registrar's decision.
(1) Section 56 of the Act applies in relation to the Registrar's decision on the opposition as if a reference in that section:
(a) to an applicant were a reference to the holder of an IRDA; and
(b) to a decision under section 55 of the Act were a reference to a decision under regulation 17A.34N.
(2) If an appeal is made, the Registrar must tell the International Bureau of the decision on the appeal.
17A.34Q Registrar may give direction
(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.
17A.35 Registrar must notify parties of dismissal or discontinuance of opposition
If an opposition is dismissed under regulation 17A.34B or discontinued, the Registrar must notify the parties of the dismissal or discontinuance.
17 Subdivision 4 of Division 5 of Part 17A
Repeal the Subdivision, substitute:
Subdivision D -- Cessation of protection for non-use
In this Subdivision:
"application for cessation of protection" means an application to the Registrar for cessation of protection of a trade mark that is, or may become, a protected international trade mark.
"cessation of protection" means the cessation of protection of a trade mark that is a protected international trade mark.
"notice of intention to defend" means a notice filed under regulation 17A.48Q.
"notice of intention to oppose" means a notice filed under regulation 17A.48G.
"notice of opposition" means:
(a) a notice of intention to oppose; and
(b) a statement of grounds and particulars.
"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 cessation of protection that the opponent intends to rebut; and
(b) the facts and circumstances that form the basis for the opposition to the cessation of protection.
Note: The definitions of the following terms are in section 6 of the Act:
(a) applicant;
(b) approved form;
(c) employee;
(d) file;
(e) month;
(f) person.
17A.48A Registrar may give direction about filing document or evidence
(1) If a document or evidence may or must be filed under this Subdivision, the Registrar may give a direction specifying:
(a) the number of copies of the document or evidence to be filed; and
(b) the form in which the document or evidence is to be filed; and
(c) the means by which the document or evidence is to be filed.
(2) If a party does not comply with the direction, the Registrar may:
(a) treat the document or evidence as not having been filed; or
(b) tell the party to comply with the direction.
(3) The Registrar may make or revoke the direction as the Registrar sees fit.
(4) Regulation 17A.48B does not apply to the Registrar's decision to make or revoke the direction.
17A.48B Notification and opportunity to make representations
(1) This regulation applies if:
(a) a party makes a request to the Registrar under this Subdivision; or
(b) the Registrar proposes to make a decision on the Registrar's own initiative under this Subdivision.
(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 requ est , 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.
17A.48C Application for cessation of protection
(1) A person may make an application for cessation of protection.
(2) However, an application may not be made under subregulation (1) if an action concerning the protected international trade mark is pending in a prescribed court.
(3) If subregulation (2) applies, a person may apply to the court for an order directing the Registrar to cease protecting the protected international trade mark.
17A.48D Cessation of protection
(1) Part 9 of the Act and Part 9 of these Regulations apply in relation to an application for cessation of protection.
(2) For that application, a reference in those Parts:
(a) to a registered trade mark or a trade mark that is registered, or entered on the Register, is taken to be a reference to a trade mark that is, or may become, a protected international trade mark; and
(b) to removing a trade mark from the Register is taken to be a reference to the cessation of protection of the trade mark; and
(c) to an application for registration of a trade mark is taken to be a reference to an international registration designating Australia; and
(d) to an applicant for registration of a trade mark is taken to be a reference to the holder of an international registration designating Australia; and
(e) to a registered owner of a trade mark is taken to be a reference to the holder of a protected international trade mark; and
(f) to an application under section 92 is taken to be a reference to an application for cessation of protection; and
(g) to the date the application for registration of the trade mark was filed, or the filing date in respect of the registration of the trade mark, is taken to be a reference to:
(i) if the request for extension of protection to Australia was made under Article 3 ter (1) of the Protocol--the date of international registration of the trade mark; or
(ii) if the request for extension of protection to Australia was made under Article 3 ter 2(2) of the Protocol--the date of recording of the request.
Note: The expressions date of international registration and date of recording are defined in regulation 17A.2.
(3) Sections 96 to 101 of the Act apply in relation to the cessation of protection for non-use.
17A.48E Notification of application
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.
17A.48F Filing of notice of opposition
A notice of opposition is taken to be filed when the notice of intention to oppose and the statement of grounds and particulars have been filed under regulations 17A.48G and 17A.48J.
17A.48G Filing of notice of intention to oppose
(1) For subsection 96(2) of the Act, the period for filing a notice of intention to oppose the application for cessation of protection must be filed within 2 months from the day the application for cessation of protection is advertised in the Official Journal .
(2) The notice must be in an approved form.
(3) The Registrar must give a copy of the notice to the applicant.
17A.48H Opponent must have address for service
(1) This regulation applies despite any other regulation in this Subdivision.
(2) The Registrar is not required to take any action in response to a notice of opposition filed under regulation 17A.48F unless the opponent has notified the Registrar, in writing, of the opponent's address for service in Australia.
(3) A requirement to give a document to an opponent, or to give the opponent an opportunity to make written representations or to be heard, does not apply if no address for service of the opponent is recorded in the Record of International Registrations.
17A.48J Filing of statement of grounds and particulars
(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.
17A.48K Statement of grounds and particulars must be adequate
(1) The Registrar must assess the adequacy of a statement of grounds and particulars filed under regulation 17A.48J.
(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 cessation of protection; 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 17A.48B 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.
17A.48L Extension of time for filing--application
(1) A person who intends to oppose an application for cessation of protection may request the Registrar to extend:
(a) the period for filing a notice of intention to oppose under subregulation 17A.48G(1); or
(b) the period for filing a statement of grounds and particulars under subregulation 17A.48J(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 17A.48M(2) in relation to the consequences of making the request after the filing period has ended.
(3) The request must:
(a) be in an app roved 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.
17A.48M Extension of time for filing--grant
(1) The Registrar may grant a request under subregulation 17A.48L(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.
17A.48N Amendment of notice of intention to oppose
(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 17A.48B does not apply to a request under subregulation (1) or (2).
(6) Section 96A of the Act applies in relation to the opposition.
17A.48P Amendment of statement of grounds and particulars
(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 cessation of protection.
(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.
17A.48Q Filing of notice of intention to defend
(1) A notice of intention to defend must be filed within one month 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), the Registrar may decide to:
(a) take the opposition to have succeeded; and
(b) refuse to cease protection of the protected international trade mark.
(4) The Registrar must notify the parties of the Registrar's decision.
(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 cessation of protection.
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 17A.48S 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.
17A.48S Request for hearing and circumstances in which opposition taken to have ended
(1) If an opponent requests the Registrar, within the period for filing evidence in support mentioned in subregulation 17A.48R(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 17A.48R(3); or
(b) ask for a hearing under subregulation (1).
(3) The application for cessation of protection 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 cessation of protection is in order.
Note 1: See section 97 of the Act in relation to what the Registrar must do if the application for cessation of protection is unopposed.
Note 2: Regulations 21.15 and 21.16 deal with hearings.
17A.48T Extension of time for filing
(1) A party may request the Registrar to extend a period for filing evidence mentioned in regulation 17A.48R.
(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 Subdivision; 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 Subdivision;
(b) an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement under this Subdivision;
(c) an order of a court or a direction by the Registrar that the opposition be stayed.
17A.48U Registrar may allow cooling-off period
(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 17A.48K.
(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 17A.48Q or an evidentiary period mentioned in regulation 17A.48R; and
(b) the opposition resumes;
the period mentioned in regulation 17A.48Q or 17A.48R restarts when the opposition resumes.
(1) This regulation applies to an opposition if the opposition has not been dismissed under regulation 17A.48K or discontinued.
(2) A party may request the Registrar to hold a hearing if an evidentiary period mentioned in regulation 17A.48R 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.
17A.48W Registrar may give direction
(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.
17A.48X Registrar must notify International Bureau
If the result of an action under this Subdivision is that the Registrar decides, or is directed by a court:
(a) to cease protection of a protected international trade mark in respect of some or all of the goods or services covered by the protection; or
(b) that the trade mark should be protected subject to conditions or limitations;
the Registrar must, if no appeal has been made at the end of any relevant appeal period, notify the International Bureau of that decision or order.
17A.48Y Registrar must notify parties of dismissal or discontinuance of opposition
If an opposition is dismissed under regulation 17A.48K or discontinued, the Registrar must notify the parties of the dismissal or discontinuance.
17A.48Z Cessation of protection of protected international trade mark
If the Registrar dismisses the opposition under regulation 17A.48K, the Registrar must cease protection in respect of the goods, services, or both, specified in the application for cessation of protection.
18 Regulation 21.13
Repeal the regulation, substitute:
(1) For section 221 of the Act, if a matter is mentioned in these Regulations as a matter attracting the award of costs, costs may be awarded:
(a) in accordance with Schedule 8; or
(b) if the Registrar has a discretionary power in relation to the award of costs--as the Registrar considers appropriate.
(2) The costs must be taxed, allowed and certified by an employee appointed by the Registrar.
(3) The Registrar may review the taxation of costs by the employee.
(4) In this regulation:
"costs" does not include the costs mentioned in paragraph 105(2)(b) of the Act.
19 After Division 2 of Part 21
Insert:
Division 2A -- Extensions of time
In this Division:
"notice of opposition" means a notice filed under subregulation 21.20B(1).
"party" means an applicant or opponent.
Note: The definitions of the following terms are in section 6 of the Act:
(a) applicant;
(b) approved form;
(c) file;
(d) month;
(e) person.
(1) For subsection 224(6) of the Act, a person may oppose a request for an extension of time by filing a notice of opposition in an approved form within one month from the advertisement of the request for the extensions in the Official Journal under subsection 224(5) of the Act.
(2) The Registrar must give a copy of the notice to the applicant.
21.20C Notification and opportunity to make representations
(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 requ est , 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.
21.20F Registrar may give direction
(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.
21.20G Registrar must notify parties of dismissal or discontinuance of opposition
If an opposition is dismissed or discontinued, the Registrar must notify the parties of the dismissal or discontinuance.
20 Regulations 21.26 and 21.27
Repeal the regulations.
21 Paragraphs 21.28(1)(f) to (ha)
Repeal the paragraphs, substitute:
(f) filing evidence under regulation 5.14, 9.16, 17A.34J or 17A.48P;
22 Paragraph 21.28(2)(b)
Omit "subregulation 21.26 (1)", substitute "section 96 of the Act or subregulation 17A.32(1), regulation 17.48F or subregulation 21.20B(1)".
23 Part 1 of Schedule 8
Repeal the Part, substitute:
|
Item |
Column 1 Matter |
Column 2 Amount |
|
1 |
Notice of intention to oppose |
$200 |
|
2 |
Statement of grounds and particulars |
$200 |
|
3 |
Receiving and perusing statement of grounds and particulars |
$130 |
|
4 |
Notice of intention to defend |
$200 |
|
5 |
Notice of opposition filed under subregulation 6.6(1) or 21.20B(1) |
$200 |
|
6 |
Receiving and perusing a notice of opposition filed under subregulation 6.6(1) or 21.20B(1) |
$130 |
|
7 |
Evidence in support |
$700 |
|
8 |
Receiving and perusing evidence in support |
$300 |
|
9 |
Evidence in answer |
$700 |
|
10 |
Receiving and perusing evidence in answer |
$210 |
|
11 |
Evidence in reply |
$350 |
|
12 |
Receiving and perusing evidence in reply |
$130 |
|
13 |
Preparation of cases for hearing |
$525 |
|
14 |
Attendance at hearing by registered patent attorney, registered trade marks attorney or solicitor without counsel |
$260 an hour, but not more than $1,170 a day |
|
15 |
Attendance at hearing by registered patent attorney, registered trade marks attorney or solicitor instructing counsel |
$200 an hour, but not more than $900 a day |
|
16 |
Counsel fees for attendance at a hearing |
$300 an hour, but not more than $1,350 a day |
24 Schedule 9 (table item 6)
Repeal the item, substitute:
|
6 |
Filing an application for an extension under regulation 5.9, 5.15, 9.11, 9.18, 17A.34C, 17A.34K, 17A.48L or 17A.48T |
$150 for each month or part of a month for which the extension is sought |
25 Schedule 9 (table items 7 and 8)
Repeal the items, substitute:
|
7 |
Filing a notice of intention to oppose under: (a) section 52 of the Act or regulation 17A.33; or (b) section 96 of the Act or regulation 17A.48G |
$250 $150 |
|
8 |
Filing a notice of opposition under: (a) subsection 224(6) of the Act; or (b) section 65A of the Act |
$250 $250 |
26 Schedule 9 (table item 13)
Repeal the item, substitute:
|
13 |
Filing an application for removal of a trade mark from the Register: (a) for non-use under section 92 of the Act; or (b) for cessation of protection for non-use under Subdivision D of Division 5 of Part 17A |
$250 $150 |
27 Schedule 9 (table item 14)
Repeal the item, substitute:
|
14 |
Request for a hearing under regulation 5.17, 6.9, 9.17, 9.20, 17A.34M, 17A.48S, 17A.48V or 21.20E |
$600 |
28 Schedule 9 (table item 16)
Repeal the item, substitute:
|
16 |
Attendance at an oral hearing under regulation 5.17, 6.9, 9.17, 9.20, 17A.34M, 17A.48S, 17A.48V or 21.20E |
$600 for each day, or part of a day, less any amount paid under item 14 in relation to the hearing |
29 Schedule 9 (table item17)
Repeal the item, substitute:
|
17 |
Attendance at an oral hearing to which item 16 does not apply |
$400 less any amount paid under item 15 in relation to the hearing |
30 Schedule 9 (table item 20)
Repeal the item, substitute:
|
20 |
Requesting a decision under regulation 21.15 |
$300 |
31 Subregulation 9.05(5)
Repeal the subregulation, substitute:
(5) A person may oppose the amendment by filing a notice of opposition, in an approved form, within one month from the publication of the notice under subregulation (4).
Note: For the circumstances in which an extension of time can be sought, see section 137 of the Act.
(6) The Registrar must give a copy of the notice of opposition to the person who requested the amendment as soon as practicable.
(7) If the amendment is not opposed, the Registrar must amend the entry as requested.
(8) If the amendment is opposed, the Registrar must amend the entry if the Registrar decides to do so, subject to a decision of a tribunal or prescribed court in relation to the opposition.
32 Subregulation 11.13(3)
Repeal the subregulation, substitute:
(3) For subsection 137(5) of the Act, the person must file a notice of opposition, in an approved form, within one month from the advertisement of the application.
(3A) The Registrar must give a copy of the notice of opposition to the person who applied for the extension as soon as practicable.