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This is a Bill, not an Act. For current law, see the Acts databases.
1998-1999-2000-2001
The
Parliament of the
Commonwealth of
Australia
HOUSE OF
REPRESENTATIVES
Presented and read a first
time
Trade Marks
and Other Legislation Amendment Bill
2001
No. ,
2001
(Industry, Science and
Resources)
A Bill for an Act to amend the
Trade Marks Act 1995, and for other purposes
ISBN: 0642 468605
Contents
Part 1—General
amendments 3
Part 2—Amendment relating to the Administrative Review
Tribunal 18
A Bill for an Act to amend the Trade Marks Act
1995, and for other purposes
The Parliament of Australia enacts:
This Act may be cited as the Trade Marks and Other Legislation
Amendment Act 2001.
(1) Subject to this section, this Act commences on the 28th day after the
day on which it receives the Royal Assent.
(2) Part 2 of Schedule 1 commences at the later of:
(a) the time when Parts 4 to 10 of the Administrative Review
Tribunal Act 2001 commence; and
(b) the time immediately after the commencement of section 180A of
the Trade Marks Act 1995.
(3) Schedule 2 commences, or is taken to have commenced, immediately
after the commencement of the Patents Amendment (Innovation Patents) Act
2000.
Subject to section 2, each Act that is specified in a Schedule to
this Act is amended or repealed as set out in the applicable items in the
Schedule concerned, and any other item in a Schedule to this Act has effect
according to its terms.
1 Section 6 (definition of
Commission)
Omit “Trade Practices Commission”, substitute “Australian
Competition and Consumer Commission”.
2 Section 6
Insert:
working day means a day that is not:
(a) a Saturday; or
(b) a Sunday; or
(c) a public holiday in the Australian Capital Territory.
3 Paragraph 26(1)(b)
Repeal the paragraph, substitute:
(b) the authorised user may (subject to subsection (2)) bring an
action for infringement of the trade mark:
(i) at any time, with the consent of the registered owner; or
(ii) during the prescribed period, if the registered owner refuses to
bring such an action on a particular occasion during the prescribed period;
or
(iii) after the end of the prescribed period, if the registered owner has
failed to bring such an action during the prescribed period;
4 Application of amendment—section 26
of the Trade Marks Act 1995
The amendment of section 26 of the Trade Marks Act 1995 made by
this Schedule applies in relation to a prescribed period that begins at or after
the commencement of this item.
5 Transitional—paragraph 26(1)(b) of the
Trade Marks Act 1995
(1) This item applies to regulations if:
(a) the regulations were made for the purposes of paragraph 26(1)(b) of
the Trade Marks Act 1995; and
(b) the regulations were in force immediately before the commencement of
this item.
(2) The regulations have effect, after the commencement of this item, as if
they were made for the purposes of the corresponding provision of that Act as
amended by this Schedule.
6 Subsection 45(1)
Omit “A person who has made an application (initial
application) for the registration of a trade mark in respect of certain
goods and/or services”, substitute “If an application (initial
application) for the registration of a trade mark in respect of certain
goods and/or services is pending, the applicant”.
7 At the end of subsection
45(1)
Add:
Note 1: For applicant see
section 6.
Note 2: For pending see
section 6.
8 At the end of
section 45
Add:
(3) To avoid doubt, subsection (2) does not prevent a divisional
application from being made by a person who has become the applicant in relation
to the initial application because of subsection 108(2) (which deals with
assignment and transmission).
9 Section 46
Repeal the section.
10 At the end of subsection
52(2)
Add “or in accordance with subsection (5)”.
11 At the end of
section 52
Add:
(5) If:
(a) a person is granted an extension of time in which to file a notice of
opposition; and
(b) before the notice of opposition is filed, the right or interest on
which the person could have relied to file the notice of opposition becomes
vested in another person; and
(c) the other person notifies the Registrar in writing that the right or
interest is vested in him or her;
then:
(d) the other person is taken to have been granted an extension of time in
which to file the notice of opposition; and
(e) that extension ends when the extension mentioned in paragraph (a)
ends.
12 Application of
amendments—section 52 of the Trade Marks Act
1995
The amendments of section 52 of the Trade Marks Act 1995 made
by this Schedule apply in relation to a right or interest that becomes vested in
another person at or after the commencement of this item.
13 Subsection 63(2)
Omit all the words after “amend the application”,
substitute:
as necessary:
(c) to remove any ground on which the application could be rejected;
or
(d) so as to ensure that the application is made in accordance with this
Act.
14 Paragraph 68(1)(b)
Repeal the paragraph, substitute:
(b) in a case where there has been an opposition:
(i) if the Registrar’s decision, or (in the case of an appeal
against the Registrar’s decision) the decision on appeal, is that the
trade mark should be registered; or
(ii) if the opposition has been withdrawn; or
(iii) if the opposition has been dismissed under
section 222.
15 Transitional—subsection 68(1) of the
Trade Marks Act 1995
(1) This item applies if, before the commencement of this item, the
Registrar purported to register a trade mark under subsection 68(1) of the
Trade Marks Act 1995 on the basis that there had been an opposition,
but:
(a) the opposition had been withdrawn; or
(b) the opposition had been dismissed under section 222 of that
Act.
(2) The registration is as valid as it would have been if the amendment of
subsection 68(1) of that Act made by this Schedule had been in force at the time
of the registration.
16 Section 73
After “section 78 or”, insert “80F or
under”.
17 Division 2 of Part 7
(heading)
Repeal the heading, substitute:
18 Before section 75
Insert:
This Division applies to a registered trade mark if:
(a) particulars of registration were entered in the Register under
section 69 before the end of the period of 10 years after the filing date
of the application for registration; or
(b) both:
(i) paragraph (a) does not apply; and
(ii) registration has already been renewed under Division 3 for a
period that includes the day on which particulars of registration were entered
in the Register under section 69.
Note: For filing date see
section 6.
19 Section 78
After “not renewed”, insert “under
section 77”.
20 Paragraph 80(a)
After “renewed”, insert “under section 77 or
79”.
21 Paragraph 80(b)
Omit “within 12 months after the registration expired, an application
for the registration of a trade mark is made”, substitute “an
application for the registration of a trade mark is made, or has already been
made,”.
22 At the end of
section 80
Add “at any time when the registration of the unrenewed trade mark
could have been renewed under section 79”.
23 Transitional—Division 2 of
Part 7 of the Trade Marks Act 1995
(1) This item applies if, before the commencement of this item:
(a) the Registrar purported to renew registration of a trade mark under
section 77 or 79 of the Trade Marks Act 1995; and
(b) particulars of registration were entered in the Register under
section 69 of that Act after the end of the period of 10 years after the
filing date of the application for registration.
(2) In the case of a purported renewal under section 77, the renewal
is as valid as it would have been if, at the time of the request for
renewal:
(a) the words “, within the prescribed period before the
registration of a trade mark expires,” were omitted from subsection 75(1)
of the Trade Marks Act 1995; and
(b) the words “of a trade mark” had been added at the end of
that subsection.
(3) In the case of a purported renewal under section 79, the renewal
is as valid as it would have been if, at the time of the request for renewal,
the words “, within 12 months after the registration of a trade mark has
expired,” were omitted from that section.
24 At the end of
Part 7
Add:
(1) This Division applies to a registered trade mark if particulars of
registration were entered in the Register under section 69 on a day
(Register entry day) that occurs after the end of the period of 10
years after the filing date of the application for registration.
Note: For filing date see
section 6.
(2) For the purposes of this Division, each of the following is a
potential renewal period in relation to the registered trade
mark:
(a) the period (first potential renewal period) of 10 years
that commenced 10 years after the filing date of the application for
registration;
(b) any successive period of 10 years, being a period that commences
before the Register entry day.
(3) For the purposes of this Division, the prescribed period
is a period that:
(a) is specified in the regulations; and
(b) commences on the Register entry day.
To avoid doubt, the registration of the trade mark is taken to have
expired, in accordance with subsection 72(3), 10 years after the filing date of
the application for registration.
Note: For filing date see
section 6.
As soon as practicable after the Register entry day, the Registrar must,
in accordance with the regulations, notify the registered owner of the trade
mark that a request may be made for renewal of the registration.
Note: For registered owner see
section 6.
(1) Any person may, within the prescribed period, ask the Registrar to
renew, or successively renew, the registration of the trade mark for one or more
potential renewal periods nominated in the request.
(2) The nomination must cover at least the first potential renewal
period.
(3) If the nomination relates to more than one potential renewal period,
the nomination must cover continuous periods.
(4) The request must:
(a) be in an approved form; and
(b) be filed in accordance with the regulations.
(1) If a request for the renewal of the registration of the trade mark is
made in accordance with section 80D, the Registrar must renew, or
successively renew, the registration for the potential renewal period or periods
to which the request relates.
(2) The Registrar must give notice of the renewal or renewals to the
registered owner of the trade mark in accordance with the regulations.
Note: For registered owner see
section 6.
If the registration of the trade mark is not renewed under
section 80E, or is not renewed under section 80E for each of the
potential renewal periods, then:
(a) subject to sections 80G and 80H, the registration ceases to have
effect:
(i) if the registration was not renewed under section 80E—when
it expired in accordance with section 72(3); or
(ii) if the registration was renewed under section 80E for one or
more potential renewal periods—at the end of the last of those periods;
and
(b) unless the registration is renewed under section 80G, the
Registrar must remove the trade mark from the Register 10 months after the end
of the prescribed period.
(1) If:
(a) the registration of the trade mark is not renewed under
section 80E; and
(b) within 10 months after the end of the prescribed period, a person asks
the Registrar to renew, or successively renew, the registration of the trade
mark for one or more potential renewal periods nominated in the
request;
the Registrar must renew, or successively renew, the registration for the
potential renewal period or periods to which the request relates.
(2) The nomination must cover at least the first potential renewal
period.
(3) If the nomination relates to more than one potential renewal period,
the nomination must cover continuous periods.
(4) The request must:
(a) be in an approved form; and
(b) be filed in accordance with the regulations.
If:
(a) the registration of the trade mark is not renewed under
section 80E; and
(b) the registration of the trade mark (unrenewed trade
mark) has not been renewed under section 80G; and
(c) an application for the registration of a trade mark is made, or has
already been made, by a person other than the person who was registered as the
owner of the unrenewed trade mark;
the unrenewed trade mark is taken to be a registered trade mark for the
purposes of the application at any time when the registration of the unrenewed
trade mark could have been renewed under section 80G.
25 Paragraph 88(2)(d)
Repeal the paragraph.
26 After section 96
Insert:
If:
(a) after a person has filed a notice of opposition, the right or interest
on which the person relied to file the notice of opposition becomes vested in
another person; and
(b) the other person:
(i) notifies the Registrar or the court (as the case may be) in writing
that the right or interest is vested in him or her; and
(ii) does not withdraw the opposition;
the opposition is to proceed as if the notice of opposition had been filed
in that other person’s name.
Note: For file see
section 6.
27 After paragraph
122(1)(f)
Insert:
(fa) both:
(i) the person uses a trade mark that is substantially identical with, or
deceptively similar to, the first-mentioned trade mark; and
(ii) the court is of the opinion that the person would obtain registration
of the substantially identical or deceptively similar trade mark in his or her
name if the person were to apply for it; or
28 Paragraph 127(b)
Repeal the paragraph, substitute:
(b) either:
(i) the defendant has applied to the court under subsection 92(3) for an
order directing the Registrar to remove the trade mark from the Register in
respect of those goods or services; or
(ii) the defendant has applied to the Registrar under subsection 92(1) for
the trade mark to be removed from the Register in respect of those goods or
services, and the matter has been referred to a court under section 94;
and
29 Section 128
Omit “(under section 79)”, substitute “under
section 79”.
30 At the end of
section 128
Add:
(2) If the registration of a trade mark is renewed under section 80G
within 10 months after the end of the prescribed period, an action may not be
brought in respect of an act that:
(a) infringed the trade mark; and
(b) was done after the end of the prescribed period and before the
registration was renewed.
(3) In subsection (2):
prescribed period has the same meaning as in Division 3
of Part 7.
31 Subsection 132(3)
Repeal the subsection, substitute:
(3) The authorised user may give the notice to the Customs CEO:
(a) at any time, with the consent of the registered owner; or
(b) during the prescribed period, if the registered owner refuses to
comply with the request on a particular occasion during the prescribed period;
or
(c) after the end of the prescribed period, if the registered owner has
failed to give such a notice during the prescribed period.
The authorised user must give also to the Customs CEO, together with the
notice:
(d) any document prescribed for the purposes of subsection (1);
and
(e) any other prescribed document.
32 Application of
amendment—section 132 of the Trade Marks Act
1995
The amendment of section 132 of the Trade Marks Act 1995 made
by this Schedule applies in relation to a prescribed period that begins at or
after the commencement of this item.
33 Transitional—subsection 132(3) of the
Trade Marks Act 1995
(1) This item applies to regulations if:
(a) the regulations were made for the purposes of subsection 132(3) of the
Trade Marks Act 1995; and
(b) the regulations were in force immediately before the commencement of
this item.
(2) The regulations have effect, after the commencement of this item, as if
they were made for the purposes of the corresponding provision of that Act as
amended by this Schedule.
34 Subsection 137(5)
Omit “3 weeks”, substitute “20 working
days”.
35 Subsection 137(5)
After “court”, insert “directed at the Customs
CEO”.
36 Section 138 (note
3)
Omit “26(b)”, substitute “26(1)(b)”.
37 Section 138 (note
3)
Omit “refuses or neglects to do so”, substitute “gives
consent to the bringing of such an action or refuses or fails to bring such an
action”.
38 Section 158
Repeal the section.
39 Section 159
Omit “trial”, substitute “prosecution”.
40 Section 159
Omit “Division 2 of Part II of the Proceeds of Crime Act
1987 applies as if a reference in that Division”, substitute
“the forfeiture order provisions apply as if a reference in those
provisions”.
41 At the end of
section 159
Add:
(2) In this section:
forfeiture order provisions means:
(a) Division 1 of Part II of the Proceeds of Crime Act
1987, to the extent to which that Division relates to forfeiture orders;
and
(b) Division 2 of Part II of the Proceeds of Crime Act
1987.
42 Section 170
Omit “paragraph 88(2)(d),”.
43 After section 180
Insert:
(1) If:
(a) an application has been made for the registration of a certification
trade mark; and
(b) a copy of the application has been sent to the Commission, but the
certification trade mark has not been registered;
the certification trade mark may be assigned only with the consent of the
Commission.
(2) An application to the Commission for its consent to the assignment of
a certification trade mark must be in accordance with the regulations.
(3) In deciding whether or not to give its consent, the Commission must
have regard to the matters provided for under the regulations.
(4) An application may be made to the Administrative Appeals Tribunal for
the review of a decision of the Commission refusing to give its
consent.
44 Section 186
Omit “paragraph 88(2)(d),”.
45 Paragraph 222(a)
Omit “this Act”, substitute “section 52 or
subsection 224(6)”.
46 After section 254
Insert:
(1) This section applies if:
(a) an application for the registration of a trade mark under the repealed
Act was pending immediately before 1 January 1996; and
(b) immediately before 1 January 1996, a person was engaging in
conduct that would not have constituted an infringement of the mark if the mark
had been registered under the repealed Act before 1 January 1996;
and
(c) the person has, on or after that day, continuously engaged in, and is
engaging in, that conduct; and
(d) the mark becomes a registered trade mark under this Act; and
(e) that conduct is an infringement of the registered trade mark under
this Act.
(2) Despite section 120, the person does not infringe the registered
trade mark by engaging in that conduct.
(1) This section applies if:
(a) immediately before 1 January 1996, a person was engaging in
conduct that constituted an infringement of a mark registered under the repealed
Act; and
(b) the mark is an existing registered mark for the purposes of this Act;
and
(c) the mark was registered in Part B of the old register before
1 January 1996; and
(d) the person has, on or after that day, continuously engaged in, and is
engaging in, that conduct; and
(e) that conduct is an infringement of the existing registered mark under
this Act.
(2) In an action for infringement of the existing registered mark (not
being an infringement occurring by reason of an act referred to in
section 121), an injunction or other relief must not be granted if the
person establishes to the satisfaction of the court that the use of the mark is
not likely to:
(a) deceive or cause confusion; or
(b) be taken as indicating a connection in the course of trade between the
goods and/or services in respect of which the trade mark is registered and a
person having the right, either as registered owner or as authorised user, to
use the trade mark.
Note: For existing registered mark see
section 6.
(1) This section applies if:
(a) an application for the registration of a trade mark in Part B of the
old register was pending immediately before 1 January 1996; and
(b) immediately before 1 January 1996, a person was engaging in
conduct that would have constituted an infringement of the mark if the mark had
been registered in Part B of the old register before 1 January 1996;
and
(c) the person has, on or after that day, continuously engaged in, and is
engaging in, that conduct; and
(d) the mark becomes a registered trade mark under this Act; and
(e) that conduct is an infringement of the registered trade mark under
this Act.
(2) In an action for infringement of the registered trade mark (not being
an infringement occurring by reason of an act referred to in section 121),
an injunction or other relief must not be granted if the person establishes to
the satisfaction of the court that the use of the mark is not likely
to:
(a) deceive or cause confusion; or
(b) be taken as indicating a connection in the course of trade between the
goods and/or services in respect of which the trade mark is registered and a
person having the right, either as registered owner or as authorised user, to
use the trade mark.
Note: For existing registered mark see
section 6.
Note: The heading to section 254 is altered by omitting
“trade” and substituting “existing
registered”.
Part 2—Amendment
relating to the Administrative Review Tribunal
47 Subsection 180A(4)
Omit “Administrative Appeals Tribunal”, substitute
“Administrative Review Tribunal”.
1 Subitem 2(2) of
Schedule 2
Omit “88 and 89”, substitute “89 and 90”.
2 Item 7 of
Schedule 2
Omit “85, 86, 88 and 89” (wherever occurring), substitute
“86, 87, 89 and 90”.