EXPLANATORY STATEMENT

 

Select Legislative Instrument 2005 No.211

 

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

 

Trade Marks Act 1995

 

Trade Marks Amendment Regulations 2005 (No 2)

 

Subsection 231(1) of the Trade Marks Act 1995 (the Act) provides that the Governor-General may make regulations prescribing matters required or permitted by the Act to be prescribed, or necessary or convenient to be prescribed for giving effect to the Act or for the conduct of any business relating to the Trade Marks Office.

 

The Act provides for the registration of trade marks and sets out and protects the rights deriving from registration.

 

These Regulations amend the Trade Marks Regulations 1995 to introduce a service to assist customers prior to filing trade mark applications under section 27 of the Act.  The Assisted Filing Service (AFS) provides customers with a preliminary assessment of their proposed trade mark and information on the requirements for registration under the Act, including possible options for overcoming any issues identified.

 

Seeking trade mark registration can be an important strategy for any business, large or small.  While large businesses regularly choose to employ the services of intellectual property professionals, an increasing number of small businesses and individuals are choosing to ‘self-file’ their trade mark registration application, often using the on-line services offered by IP Australia.  Applications from first time or inexperienced users of the trade mark registration system are frequently deficient in such areas as the distinctiveness of the trade mark and specification of the goods and services concerned. These deficiencies might have been avoided if the user had access to information about his/her specific case before filing an application. 

 

A survey in 2002 gauged the level of interest in an upfront service that provided a preliminary assessment of proposed trade marks and provided information on overcoming potential impediments to registration. A trial of the service conducted in late 2003 received a strong response from trade mark applicants.  This strong response to the trial was achieved with very limited marketing.  Data collected at the completion of the trial showed strong support for the service and high levels of satisfaction amongst users.

 

In addition, the AFS has been extensively canvassed with IP professionals, trade mark attorneys, patent attorneys and representatives of trade mark owners.  While there is broad support for the service, some concern was expressed about the potential for a conflict of interest because IP Australia would both provide advice and examine the application.  It was also suggested that the service could involve business or legal advice.  However, the AFS provides upfront essentially the same information currently provided at a later stage of the trade mark examination process. Also, IP Australia has developed procedures to ensure that the information the AFS provides is not commercial or legal advice.

 

The AFS improves the efficiency of the trade mark application process, particularly as it affects small to medium enterprises.  It is envisaged that this will encourage them to develop and market high quality goods and services and thus promote innovative and competitive industries in Australia.  The increased use of trade marks by this sector of Australian industry will also enable consumers to make informed choices, with confidence about the origin of goods and services.

 

IP Australia is a cost recovery agency and charges fees for its services. Under IP Australia’s financial framework agreed with the Department of Finance and Administration, IP Australia is required to set its fees consistent with the Government’s cost recovery policy. The AFS imposes fees on applicants reflecting the increase in effort required to deliver the more direct interaction between the customer and IP Australia. The fees for accessing the AFS are less than for filing an application for a trade mark, in order to provide an incentive for applicants who are unsure of their trade mark proposal to use the service.

 

Details of the Regulations may be found in the Attachment.

 

The Act specifies no condition that needs to be satisfied before the power to make the proposed Regulations may be exercised.

 

These regulations commence on 3 October 2005.

 

 

Details of the  Trade Marks Amendment Regulations 2005 (No. 2)

 

Regulation 1 – Name of Regulations

 

This regulation provides that the name of the Regulations is the Trade Marks Amendment Regulations 2005 (No. 2) (the  Regulations).

 

Regulation 2 – Commencement

 

This regulation provides for the Regulations to commence on 3 October 2005.

 

Regulation 3 – Amendment of Trade Marks Regulations 1995

 

This regulation provides that the Trade Marks Regulations 1995 (the principal Regulations) are amended as set out in Schedule 1.

 

Schedule 1 – Amendments

 

Item [1] – Part 3A

 

Item 1 inserts a new Part 3A into the principal Regulations.  This Part provides for an assisted filing service (AFS) to enable a person proposing to make an application under Part 4 of the Trade Marks Act 1995 (the Act) to receive a preliminary assessment of the proposed trade mark and information on the requirements for registration under the Act.  Part 3A provides a process for filing of an AFS request, provision of a preliminary assessment, and possible amendment of the request prior to transfer of the request as an application under Part 4 of the Act. There is also provision for discontinuance of the AFS request, if the applicant does not wish to proceed to Part 4 of the Act.

 

Regulation 3A.1 describes the purpose of Part 3A.

 

Regulation 3A.2 introduces definitions for Part 3A.

 

Regulation 3A.3 provides for the filing of a request under the AFS scheme (called an ‘AFS request’) by the applicant (called the ‘requester’).  Under subregulation 3A.3(2), the requester must provide material and attachments that will enable the Registrar of Trade Marks (the Registrar) to perform a proper assessment under  regulation 3A.4 and must pay the prescribed fees. The AFS request must meet certain requirements as set out in subregulation 3A.3(3).  Under subregulation 3A.3(4), if a fee is not paid within 5 working days, the AFS request is taken to have not been submitted. Subregulations 3A.3(5), (6) and (7) provide for the requester to amend the AFS request before the Registrar assesses the request, and provides for the payment of additional fees in certain circumstances.

 

Regulation 3A.4 provides for the Registrar’s assessment of the AFS request.  Subregulation 3A.4(1) sets out the criteria to which the Registrar must have regard.  Subregulations 3A.4(2) and (3) set out the procedure for informing the requester of the opinion of the Registrar, procedural matters relating to progressing the AFS request under Part 3A and procedural matters relating to filing an application under Part 4 of the Act.

 

Regulation 3A.5 provides for two options for the requester. Under the first option, the requester may amend their request before submission as an application under Part 4 of the Act. The second option is to submit the request as an application under Part 4 of the Act. Note that unless the requester takes action to submit the request as an application for registration under Part 4 of the Act, within the relevant prescribed period, the request is automatically discontinued.  The prescribed periods are: within 5 working days of the initial opinion provided under Subregulation 3A.4(2); and, where a prescribed fee is required under paragraph 3A.5(3)(b) a further 5 working days to pay that fee; and a further 5 working days where a revised opinion is provided under paragraph 3A.5(4)(b).. 

 

Item [2] – Subregulation 4.1(1)

 

Item 2 replaces subregulation 4.1(1) with a new provision.  Under subsection 27(2) of the Act, an application for registration of a trade mark must be made in accordance with the regulations and filed, together with any prescribed document, in accordance with the regulations. The effect of the amendment to subregulation 4.1(1) is that, for the purposes of subsection 27(2) of the Act, an application for registration of a trade mark must be either in an approved form, or it must be an AFS request mentioned in  Part 3A in respect of which all fees were paid within the prescribed time limits.  The relevant time limits are prescribed in regulations 3A.3 and 3A.5. 

 

Item [3]  - Subregulation 4.2, heading

 

Item 3 substitutes a new heading for regulation 4.2.

 

Item [4] - Regulation 4.2

 

Item 4 limits the requirements for filing an application for registration of a trade mark that are set out in regulation 4.2 of the principal Regulations to applications that are in an approved form.  As a result, regulation 4.2 does not apply to applications for registration of a trade mark that are initially filed under Part 3A. 

 

Item [5] – After regulation 4.2

 

Item 5 inserts new regulation 4.2A, which prescribes the filing requirements for submitting an AFS request as an application for registration of a trade mark under Part 4 of the principal Regulations. 

 

Item [6] – Regulation 21.4, note

 

Item 6 replaces the Note at the foot of regulation 21.4 with a new Note, which includes a reference to regulation 4.2A. 

 

Item [7] – Regulation 21.23

 

Regulation 21.23 prescribes notification requirements where prescribed fees have not been paid.  Item 7 replaces this regulation with a new regulation to accommodate the shorter prescribed time limits in the proposed Part 3A.  The amended regulation 21.23:

·               enables notice to be given by telephone; and

·               prescribes that, if a fee mentioned in Part 3A of the Regulations has not been paid or waived within the prescribed periods, the requester is so advised and the AFS Request is discontinued. 

 

Item [8] – Paragraph 21.28(1)(r)

Item [9] – After paragraph 21.28(1)(r)

 

Items 8 and 9 inserts a new paragraph 21.28(1)(s) to prescribe the filing of a document or the giving of advice to the Registrar under Part 3A of the Regulations.  Extensions of time are not available in respect of these acts.

 

Item [10] – Paragraph 21.28(2)(b)

Item [11] – After paragraph 21.28(2)(b)

 

Items 10 and 11 inserts a new paragraph 21.28(2)(c) to prescribe the documents that are required or permitted to be supplied under Part 3A of the Regulations.  Extensions of time are not available in respect of these documents. 

 

Item [12] – Schedule 9, item 1

Item [13] – Schedule 9, after item 31

 

Items 12 and 13 inserts the fee items that would apply to AFS requests and applications for registration of trade marks that are based on AFS requests.