Commonwealth Numbered Regulations - Explanatory Statements

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TRADE MARKS AMENDMENT REGULATIONS 2002 (NO. 1) 2002 NO. 318

Statutory Rules 2002 No. 318

EXPLANATORY STATEMENT

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

Trade Marks Act 1995

Trade Marks Amendment Regulations 2002 (No. 1)

Section 231 of the Trade Marks Act 1995 (the Act) provides that the Governor-General may make regulations for the purposes of the Act, for prescribing matters necessary or convenient to be prescribed for carrying out or giving effect to the Act and for the conduct of any business relating to the Trade Marks Office.

Subsection 225(1) of the Act provides that the regulations may declare a foreign country to be a Convention country for the purposes of the Act.

Where an initial application to register a trade mark under the Act has been amended to exclude goods and/or services, section 49 of the Act allows for a further application - a divisional application - to be made in relation to the excluded goods and/or services. Under regulation 6.4 of the Trade Marks Regulations the Registrar of Trade Marks is required to notify certain parties of the amendment, including the person who applied for the amendment. Regulation 4.17 currently sets the period in which the divisional application may be made at one month from the date of this notification. This is considered unduly restrictive.

In 1999 the Patents Regulations 1991 were amended to make mandatory the removal on request from, or restoration on request and payment of the appropriate fee within the prescribed period, of a person's name to the Register of Patent Attorneys. However, similar provisions were not changed in the Trade Marks Regulations 1995.

The purpose of the Regulations is to allow a divisional application for a trade mark application to be made any time from the date on which the amendment is requested to one month after the date of notification of the amendment. The purpose is also to make mandatory the removal from, or restoration of a person's name to, the Register of Trade Mark Attorneys if the preconditions are met, and to add the Seychelles to the list of Convention countries as a result of its recent accession to the Paris Convention for the Protection of Industrial Property (Paris Convention).

The Paris Convention enables nationals of member states to claim the date they first filed their application for a design as the date of filing in other Convention countries (Article 4). However, the applications must be filed in other Convention countries within 6 months of the filing date in the first country in order to obtain priority. One of the advantages of the right of priority is that when an applicant desires protection in more than one country, the applications are not required to be filed at the same time. The applicant has 6 months to decide which countries in which they wish to file applications and take any appropriate steps to gain protection. As Australia is a member of the Paris Convention this right also applies to Australian nationals filing applications overseas.

Details of the Regulations are in the Attachment.

Regulations 1 - 3 and Schedule 1 would commence on gazettal.

Attachment

Trade Marks Amendment Regulations 2002 (No. 1)

Regulation 1 identifies the Regulations as the Trade Marks Amendment Regulations 2002 (No.1).

Regulation 2 specifies that the Regulations are to commence on gazettal.

Regulation 3 provides Schedule 1 amends the Trade Marks Regulations.

Item 1 of Schedule 1 amends regulation 4.17 of the Trade Marks Regulations to extend the time period in which certain divisional applications can be made.

The current period under regulation 4.17 is too restrictive, so this item proposes to amend regulation 4.17 to allow the divisional application to be made at any time from the date on which the amendment is requested to one month after the date of the notification of the amendment.

Items 2 and 3 of Schedule 1 amends regulations 20.8 and 20.9 of the Trade Marks Regulations to make it clear that these provisions are mandatory, not discretionary. That is, if the specified preconditions are met the Designated Manager must restore a person's name to, or remove a person's name from, the Register of Trade Marks Attorneys.

Item 4 of Schedule 1 amends Schedule 10 to the Trade Mark Regulations to include the Seychelles in the list of Convention countries. This will reflect the fact that the Seychelles has acceded to the Paris Convention for the Protection of Industrial Property.


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