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INTELLECTUAL PROPERTY LEGISLATION AMENDMENT REGULATIONS 2007 (NO. 1) (SLI NO 40 OF 2007)
EXPLANATORY STATEMENT
Select Legislative Instrument 2007 No. 40
Issued by the Authority of the Minister for Industry, Tourism and Resources
Designs Act 2003, Olympic Insignia Protection Act 1987, Patents Act 1990, Plant Breeder’s Rights Act 1994, and Trade Marks Act 1995
Intellectual Property Legislation Amendment Regulations 2007 (No. 1)
Subsection 149(1) of the Designs Act 2003 (the Designs Act), section 76 of the Olympic Insignia Protection Act 1987 (the OIP Act), subsection 228(1) of the Patents Act 1990 (the Patents Act), subsection 80(1) of the Plant Breeder’s Rights Act 1994 (the PBR Act), and subsection 231(1) of the Trade Marks Act 1995 (the TM Act) (collectively, the Acts) provide that the Governor-General may make regulations prescribing matters required or permitted by the Acts to be prescribed, or necessary or convenient to be prescribed for carrying out or giving effect to the Acts or for the conduct of any business relating to the Patent Office, Trade Marks Office or the Designs Office.
Section 227 of the Patents Act and section 223 of the TM Act provide for the payment of prescribed fees in accordance with the regulations for the purposes of the Patents Act or the TM Act respectively.
Paragraph 228(2)(t) of the Patents Act allows the Governor-General to make regulations modifying the operation of the Patents Act in relation to applications made under the Patent Cooperation Treaty (PCT). The PCT provides for cooperation in the filing, searching, and examination, of applications for the protection of inventions. In addition, subsection 228(5) of the Patents Act requires the Governor-General to make regulations setting out the English text of the PCT as in force for Australia on the commencing day of the Patents Act, and afterwards such regulations as are necessary to keep that English text up-to-date.
Section 189A of the TM Act allows the regulations to provide for such matters as are necessary to enable the performance of the obligations of Australia, or to obtain any advantage or benefit under the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks (Madrid Protocol).
The Regulations amend the Designs Regulations 2004 (Designs Regulations), the Olympic Insignia Protection Regulations 1993 (OIP Regulations), the Patents Regulations 1991 (Patents Regulations), the Plant Breeder’s Rights Regulations 1994 (PBR Regulations) and the Trade Marks Regulations 1995 (TM Regulations) to provide the administrative framework for the operation of new provisions to be introduced by of the Intellectual Property Laws Amendment Act 2006 (IP Laws Amendment Act) and the Trade Marks Amendment Act 2006 (TMA Act).
The Regulations also amend the Patents Regulations to:
· implement recent amendments to the Regulations under the Patent Cooperation Treaty (the PCT Rules) by updating Schedule 2A which sets out the English text of the PCT Rules; and
· amend the Patents Regulations and modify the operation of the Patents Act in relation to patent applications made under the PCT (PCT applications) to implement changes arising from the amendments to the PCT Rules.
The Regulations also amend the TM Regulations to:
· correct some technical errors; and
· ensure the TM Regulations implement the Madrid Protocol function as intended.
The Regulations amend the Patents Regulations, the TM Regulations and the Designs Regulations to update the list of Contracting Parties to the Paris Convention for the Protection of Industrial Property.
An overview of the Regulations is at Attachment A, and details of the Regulations are set out in Attachment B.
Extensive public consultations were undertaken with key stakeholders, industry representative groups and the public on the matters contained in the Regulations. These consultations included the issuing of various Official Notices, discussion papers and consultation papers. Copies of these documents were also available from the IP Australia website.
The Regulations commence on the following dates:
(a) on 27 March 2007 – regulations 1 to 10 and Schedules 1, 2, 3, 5 and 6;
(b) 1 April 2007 – Schedules 4 and 8;
(c) on the commencement of Part 2 of Schedule 1 to the Trade Marks Amendment Act 2006 – Schedule 7.
ATTACHMENT A
Overview of the Intellectual Property Legislation Amendment Regulations 2007 (No. 1)
Amendments to the Regulations as a Consequence of the Intellectual Property Laws Amendment Act 2006
The Intellectual Property Laws Amendment Act 2006 (the IP Laws Amendment Act) received the Royal Assent on 27 September 2006. A number of provisions of the IP Laws Amendment Act have already commenced. The remaining provisions will commence on 27 March 2007, 6 months after the Royal Assent. As a consequence, the Regulations provide:
· a framework to govern the consequences for non-payment of fees relating to trade marks;
· new provisions governing the consideration of applications for registration of certification trade marks;
· a new system for third party access to documents relating to trade marks;
· clarification of the requirements for an application for an innovation patent for a further invention disclosed in a first innovation patent (a ‘divisional application’);
· new provisions relating to the effect of the Designs Office, the Patent Office, the Trade Marks Office and the Plant Breeder’s Rights Office (the Offices) and their sub-offices not being open for business;
· the power for the Registrar of Plant Breeder’s Rights to subdelegate to a prescribed employee or class of employees;
· the framework for administrative revocation of trade marks; and
· other minor, technical and administrative amendments to ensure that the legislation functions as intended.
Amendments as a Consequence of the Trade Marks Amendment Act 2006
The Trade Marks Amendment Act 2006 (the TMA Act) amended the Trade Marks Act 1995 (the TM Act) to implement a number of changes subsequent to a review of the trade marks legislation conducted by IP Australia. The TMA Act received the Royal Assent on 23 October 2006. Parts 1 and 3 of Schedule 1 to the TMA Act commenced on Royal Assent. Part 2 of Schedule 1 has been proclaimed to commence on 27 March 2007. as a consequence, the Regulations provide:
· a new system that allows series trade marks in more than one class (multi-class) of goods or services;
· simplification of the system for divisional applications for trade marks;
· changes to the requirements for removal of a trade mark for non-use;
· provision of a new opposition process for amendments to trade mark applications; and
· other minor, technical and administrative amendments to ensure that the legislation functions as intended.
Amendments to the Trade Marks Regulations 1995
In addition to changes consequential to the TMA Act, the Regulations address other issues identified in the review but are not dependent on the TMA Act.
These include:
· implementing changes made to the Common Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol) to which Australia is a member;
· ensuring a consistent approach when examining international registrations designating Australia and directly filed applications; and
· other minor, technical and administrative amendments to ensure that the legislation functions as intended.
Patent Cooperation Treaty
The Patent Cooperation Treaty (PCT) Assembly made amendments to the Regulations under the PCT (the PCT Rules) in 2005 and 2006 which relate to missing elements and parts of the international application, restoration of the right of priority, rectification of obvious mistakes, and the addition of patent documents from the Republic of Korea to the PCT minimum documentation. These amendments are to be in force from 1 April 2007. Australia is a signatory to the PCT and hence is obligated to implement amendments to the PCT Rules.
The Regulations amend the Patents Regulations 1991 (Patents Regulations) to implement amendments to the PCT Rules by:
· updating the English text of the PCT Rules set out in Schedule 2A to the Patents Regulations; and
· amending the Patents Regulations and modifying the Patents Act 1990 (the Patents Act) to apply to PCT applications that are treated as patent applications under the Patents Act.
The Paris Convention for the Protection of Industrial Property
The Paris Convention for the Protection of Industrial Property (the Paris Convention) provides for the “right of priority” for nationals or residents of member countries. The right of priority means that an applicant can apply for an intellectual property right (IPR) in one country and make further applications for protection of the same IPR in other countries within a specified period of time. All of these applications are deemed to have the same “priority date” because they are regarded as having been filed on the same day as the earliest filed application. Australia is a signatory to the Paris Convention and hence is obligated to recognise the rights of nationals of any country to which the Paris Convention applies.
The Designs Regulations 2004 (Designs Regulations), the Patents Regulations and the TM Regulations are amended to include Montenegro and Yemen in the list of Convention countries to which the right of priority applies and to replace Serbia and Montenegro with Serbia only.
Details of Intellectual Property Legislation Amendment Regulations 2007 (No. 1)
Contents of Attachment B
Regulation 1 — Intellectual Property Legislation Amendment Regulations 2007 (No. 1)....... 7
Regulation 2 — Commencement................................................................................................... 7
Regulations 3–7 — Regulations amended.................................................................................... 7
Regulation 8 — Transitional provisions for Schedule 4............................................................... 7
Regulation 9 — Transitional provisions for Schedule 6............................................................... 8
Regulation 10 — Transitional provisions for Schedule 7............................................................. 8
Schedule 1 — Amendment of Designs Regulations 2004 commencing 27 March 2007............ 8
Item [1] — Regulations 11.32–11.34........................................................................................ 8
Items [2]–[4] — Schedule 1...................................................................................................... 9
Schedule 2 — Amendment of Olympic Insignia Protection Regulations 1993 commencing 27 March 2007 10
Item [1] — Regulations 6A–6C............................................................................................... 10
Schedule 3 — Amendments of Patents Regulations 1991 commencing 27 March 2007......... 10
Item [1] — Regulation 6A.2.................................................................................................... 10
Item [2] — Subparagraph 12.1(2)(iv)...................................................................................... 10
Item [3] — Regulations 22.10AA–22.10AC........................................................................... 11
Items [4]–[6] — Schedule 4.................................................................................................... 11
Schedule 4 — Amendments of Patents Regulations 1991 commencing 1 April 2007.............. 11
Item [1] — Subregulation 1.4(2).............................................................................................. 11
Items [2] and [3] — Subregulation 3.12(2).............................................................................. 11
Item [4] — Subregulations 8.3(1BA), (1BB) and (1BC).......................................................... 12
Item [5] — Subregulation 8.3(5).............................................................................................. 12
Items [6]–[72] — Schedule 2A............................................................................................... 12
Item [73] — Part 3 of Schedule 7............................................................................................ 12
Item [74] — Part 4 of Schedule 7............................................................................................ 12
Schedule 5 — Amendment of Plant Breeder’s Rights Regulations 1994 commencing 27 March 2007 12
Item [1] — Regulations 3B–3G............................................................................................... 12
Schedule 6 — Amendments of Trade Marks Regulations 1995 commencing 27 March 2007. 13
Items [2]–[6] — Regulations 16.2, 16.10 and16.12 and subregulations 16.10A(2) and 16.11(2) 13
Items [14] and [15] — Regulations 21.2 and 21.23................................................................. 13
Item [16] — Regulations 21.24A–21.24C............................................................................... 14
Items [19]–[21] — Schedule 10.............................................................................................. 14
Revoking registration of trade marks....................................................................................... 14
Item [1] — Regulations 8.1A................................................................................................... 14
Items [7] and [8] — Paragraphs 17A.27(1) (a) and (b), and 17A.27(2) (b) and (c).................. 14
Item [10] — Regulations 17A.42A–17A.42F.......................................................................... 14
Items [9] and [11] — Part 17A, Division 5, New headings....................................................... 15
Documents available for public inspection............................................................................... 15
Items [12] and [13] — Regulations 17A.72 and 21.11A.......................................................... 15
Items [17] and [18] — Schedule 9.......................................................................................... 15
Schedule 7 — Amendment of Trade Marks Regulations 1995 commencing on the commencement of Part 2 of Schedule 1 to the Trade Marks Amendment Act 2006................................................................ 15
Item [1] — Paragraph 4.2(1)(d).............................................................................................. 15
Items [3] and [20] — Subregulation 4.3(5) and Regulation 17A.14A....................................... 16
Items [5], [21], and [44] — Subparagraphs 4.13(1)(c)(v) and 17A.21(1)(c)(v), and Schedule 9 16
Item [7] — Regulations 6.5 and 6.6......................................................................................... 16
Items [40] – [43] — Schedule 9.............................................................................................. 16
Divisional Applications.............................................................................................................. 16
Item [2] — Regulation 4.2AA................................................................................................. 17
Items [4], [8], [9] — Paragraphs 4.7(1)(d), 7.2(e) and 7.2(f)................................................... 17
Item [6] —Regulations 4.16 and 4.17...................................................................................... 17
Item [38] — Paragraphs 21.28(1)(c), (d) and (e)..................................................................... 17
Removal of trade mark from the Register for non-use.............................................................. 17
Items [10] and [11] — Regulation 9.1 and subregulation 9.2(2)................................................ 17
Item [12] — Subregulation 9.4(4)............................................................................................ 18
Item [39] — Paragraphs 21.28(1)(ea), (i), (l), and (m)............................................................. 18
Protection of international trade marks................................................................................... 18
Item [13] — Regulation 17A.2................................................................................................ 19
Items [14] and [17] — Regulation 17A.2 and Subregulations 17A.10 (1) and (3)..................... 19
Items [15], [35] and [45] — Regulation 17A.2 and paragraphs 17A.4(1)(b), 17A.28(2)(b), 17A.52(2)(a) and 17A.53(2)(a) and the note in subregulation 17A.48(4)............................................................. 19
Item [16] — Regulation 17A.9................................................................................................ 19
Items [18] and [19] — Regulation 17A.14............................................................................... 20
Item [22] — Subregulation 17A.33(3)..................................................................................... 20
Item [23] — Subregulation 17A.34(2)..................................................................................... 20
Items [24], [30] and [34] — Regulations 17A.35A, 17A.35B and 17A.41A and Paragraph 17A.45(2)(e) 21
Item [25] and [26] — Subregulations 17A.36(2A) and 17A.36(3A)........................................ 22
Item [27] — Subregulation 17A.38(1A).................................................................................. 22
Items [28] and [29] — Subregulation 17A.39(1) and paragraph 17A.39(2)(e)......................... 22
Items [31]–[33] — Regulation 17A.43, and subregulations 17A.44(2) and 17A.45(1)............. 23
Item [36] — Subregulation 17A.48(7)..................................................................................... 23
Item [37] — Regulation 17A.73.............................................................................................. 23
Schedule 8 — Amendments of Trade Marks Regulations 1995 commencing 1 April 2007...... 24
Item [1] — Regulation 17A.2.................................................................................................. 24
This regulation provides that the title of the Regulations is the Intellectual Property Legislation Amendment Regulations 2007 (No. 1).
This regulation provides that:
· Schedules 1–3, 5 and 6 to the Regulations commence on 27 March 2007 to coincide with the commencement of the Intellectual Property Laws Amendment Act 2006 (the IP Laws Amendment Act);
· Schedule 4 to the Regulations commence on 1 April 2007 to coincide with the commencement of the new Regulations under the Patent Cooperation Treaty (PCT Rules);
· Schedule 7 to the Regulations commence at the same time as Part 2 of Schedule 1 to the Trade Marks Amendment Act 2006 (the TMA Act); and
· Schedule 8 to the Regulations commences on 1 April 2007 to coincide with the commencement of new regulations made to the Common Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol).
These regulations provide that the:
· Designs Regulations 2004 (Designs Regulations) are amended as set out in Schedule 1;
· Olympic Insignia Protection Regulations 1993 (OIP Regulations) are amended as set out in Schedule 2;
· Patents Regulations 1991 (Patents Regulations) are amended as set out in Schedules 3 and 4;
· Plant Breeder’s Rights Regulations 1994 (PBR Regulations) are amended as set out in Schedule 5;
· Trade Marks Regulations 1995 (TM Regulations) are amended as set out in Schedules 6, 7 and 8.
This regulation provides transitional provisions for Schedule 4. These arrangements ensure that the amendments to the text of the PCT Rules, which is contained in Schedule 2A to the Patents Regulations, apply in line with the transitional arrangements approved by the Assembly of the International Patent Cooperation Union (the PCT Assembly) at meetings in 2005 and 2006.
This regulation provides transitional provisions for Schedule 6. These ensure that the amendments do not adversely affect the rights of current trade mark applicants and owners and are consistent with transitional provisions in the IP Laws Amendment Act.
This regulation provides transitional provisions for Schedule 7. These ensure that the amendments do not adversely affect the rights of current trade mark applicants and owners and are consistent with transitional provisions in the TMA Act.
The Designs Office, the Patent Office, the Plant Breeder’s Rights Office and the Trade Marks Office (the Offices) are located in Canberra. There are also sub-offices of the Designs, Patent, Plant Breeder’s Rights and Trade Marks Offices located in each of the State capitals. Acts to be done in prescribed periods under Chapter 2 of the Olympic Insignia Protection Act 1987 (the OIP Act) must be done at the Designs Office in Canberra.
Schedule 12 to the IP Laws Amendment Act will amend the Designs Act 2003 (the Designs Act), the OIP Act, the Patents Act 1990 (the Patents Act), the Plant Breeder’s Rights Act 1994 (the PBR Act), and the Trade Marks Act 1995 (the TM Act) (the Acts) to clarify the effect of the Offices and their State sub-offices not being open for business. Schedule 12 will insert the following new provisions into the Acts:
· a new section 136A in a new Part 4A in Chapter 11 of the Designs Act;
· a new section 14A in the OIP Act;
· a new section 222A in the Patents Act;
· a new section 76A and two new definitions in subsection 3(1) of the PBR Act; and
· a new section 223A in the TM Act.
The new sections are substantially identical.
Regulation 11.32 sets out a prescribed circumstance for subsection 136A(1) of the Designs Act. The effect of this provision is that:
· if an act was to be done at the office or a sub-office that was closed for business on the last day of the relevant period; and
· the act was not done by that time
then the act may be done on the next business day at the Office or sub-office of an Office that was closed for business on the last day of the relevant period.
Regulation 11.33 identifies the days on which the Office is not open for business. These days include Saturday, Sunday, Australia Day and Anzac Day and any day that is prescribed by the Director General of IP Australia and published in the Official Journal of Designs. These days may for example include public holidays which vary from year to year or by location.
Regulation 11.34 identifies the acts for which the period cannot be extended under section 136A of the Designs Act. The method of calculating time periods that is set out in the Acts Interpretation Act 1901 applies to these acts.
A prescribed period for filing a document at the Designs Office ends on a Saturday. The following Monday is Anzac Day. The Designs Office in Canberra and all of the State sub-offices are open on the following Tuesday. The effect of the proposed change is that the document will be filed in time at the Designs Office in Canberra in person or by receipt of post or by fax on the following Tuesday. It can also be filed in time on that Tuesday at any of the State sub-offices in person or by receipt of post.
The Canberra Day holiday is celebrated in the ACT on a Monday in March each year. The Designs Office in Canberra is closed for business on that day, but is open on the next day, a Tuesday. The prescribed period for requesting examination of a design ends on Canberra Day. On that day, the request for examination can be filed at any of the State sub-offices in person or by receipt of post. The request can be filed in Canberra on Canberra Day via fax. The effect of the change is that the request will be filed in time at the Designs Office in Canberra in person, by receipt of post, or by fax on the following Tuesday. However, on that Tuesday, the request cannot be filed in time at any of the State sub-offices by any means.
The prescribed period for paying the fee for registration of a Design ends on a Saturday. Applying the rule for Saturdays (see above), that payment can be made on the Monday at the Designs Office or at any of the State sub-offices. On the following Monday and Tuesday, the Designs Office is closed because of the hazard of bushfires near Canberra. The Designs Office re-opens on the following Wednesday. On that Wednesday, the Director General of IP Australia declares the Monday and Tuesday to be days on which the Designs Office was closed for the purposes of section 136A of the Designs Act—see subsection 136A(4). As a result, on that Wednesday, the fee can be paid at the Designs Office in person, by receipt of post or by fax to IP Australia. On the Monday the payment can be made at any of the State sub-offices that are open. The payment cannot to be made at any State sub-office on the Tuesday or Wednesday, and still be in time.
The Paris Convention for the Protection of Industrial Property (the Paris Convention) provides right of priority for nationals or residents of member countries to claim the date they first filed an application for a design in a Convention country, as the date of filing of applications for a design in other Convention countries.
Schedule 1 to the Designs Regulations 2003 is amended to include Montenegro and Yemen in the list of Convention countries to which the right of priority applies and replaces the current listing of Serbia and Montenegro with Serbia only.
This reflects the fact that:
· Montenegro has acceded to the Paris Convention, with effect from 3 June 2006;
· Serbia continues the legal identity of the state union of Serbia and Montenegro with effect from 19 September 2006; and
· Yemen has acceded to the Paris Convention, with effect from 15 February 2007.
These amendments reflect those in item [1] of Schedule 1 to these Amending Regulations. The notes relating to item [1] of Schedule 1 contain an explanation of the effect of these provisions.
Regulations 6A-6C have the same effect as regulations 11.32–11.34 of the Designs Regulations 2004.
Items 1 and 2 of Schedule 10 to the IP Laws Amendment Act will amend section 79C of the Patents Act. Item 1 clarifies that a complete application for an innovation patent for a second invention disclosed in a first innovation patent (‘divisional application’) must be made in accordance with the regulations. Item 2 sets out a series of terminating events for the period in which a divisional application may be made from an innovation patent. Subparagraph 79C(2)(b)(iv) of the Patents Act allows a period to be prescribed in the regulations, at the end of which the period for making a divisional application is terminated.
Subregulation 6A.2(1) is remade to put it beyond doubt that an application made under section 79C of the Patents Act must comply with the requirements currently prescribed.
Subregulation 6A.2(2) is amended to set the period under subparagraph 79C(2)(b)(iv) to one month from the date on which the Commissioner publishes a notice that examination has occurred.
Item 2 in Schedule 8 to the IP Laws Amendment Act amended paragraphs 133(2)(a) and (b) of the Patents Act.
Section 133 of the Patents Act provides two grounds on which the Federal Court can make an order under subsection 133(1) of the Patents Act that a patentee grant an applicant a licence to work the patented invention (a compulsory licence). The ground in paragraph 133(2)(a) of the Patents Act existed prior to the IP Laws Amendment Act. The ground in paragraph 133(2)(b) is a new competition test.
Subparagraph 12.1(2)(iv) is amended to align the drafting with new subparagraph 12.1(2)(iva). This amended subparagraph has the same effect as the current provision. That is, an application must set out ‘facts supporting an assertion that the reasonable requirements of the public with respect to the patented invention have not been satisfied’.
New subparagraph 12.1(2)(iva) requires that an application must include facts supporting the assertion that the patentee has contravened, or is contravening, Part IV of the Trade Practices Act 1974 or an applicable law.
These amendments reflect those in item [1] of Schedule 1 to these Amending Regulations. The notes relating to item [1] of Schedule 1 contain an explanation of the effect of these provisions.
Regulations 22.10AA-22.10AC have the same effect as regulations 11.32–11.34 of the Designs Regulations 2004.
These amendments reflect those in items [2]–[4] in Schedule 1 to these Amending Regulations. See notes relating to items [2]–[4] ofn Schedule 1 for an explanation of the effect of these provisions.
This item amends subregulation 1.4(2) of the Patents Regulations to specify that the English text of the Patent Cooperation Treaty (PCT) in force for Australia as at 1 April 2007 is the text set out in Schedules 2 and 2A to the Patents Regulations.
These items amend subregulation 3.12(2) of the Patents Regulations by inserting new subsubparagraphs that provide for the restoration of the right of priority provided that the restored right of priority has not been found to be ineffective under Rule 49ter.1 of the Regulations under the PCT (the PCT Rules).
The right of priority means that an applicant can apply for an intellectual property right (IPR) in one country and make further applications for protection of the same IPR in other countries within a specified period of time. All of these applications are deemed to have the same “priority date” because they are regarded as having been filed on the same day as the earliest filed application.
This item amends regulation 8.3 of the Patents Regulations to substitute subsection 89(5) of the Patents Act. The substitute subsection specifies that the description, drawings and claims for the purposes of the Patents Act include amendments/rectifications made under the PCT unless the rectification has been disregarded under PCT Rule 91.3 (f).
This item amends regulation 8.3 of the Patents Regulations to include an amended definition of international filing date in Schedule 1 to the Patent Act for circumstances where the Commissioner treats another date as the international filing date under PCT Rule 82ter.
These items amend Schedule 2A to the Patents Regulations to update the text of the PCT Rules to accord with the amendments made to the PCT Rules by the PCT Assembly at their 2005 and 2006 meetings. The amendments to the PCT Rules relate to missing elements and parts of the international application, restoration of the right of priority, rectification of obvious mistakes, and the addition of patent documents from the Republic of Korea to the PCT minimum documentation.
This item introduces new fee item 308 into Part 3 of Schedule 7 to the Patents Regulations for processing requests for restoration of the right of priority under PCT Rule 26bis. The quantum of the fee is $200 which is equivalent to the comparable fee payable for a two month extension under subsection 223(2A) of the Patents Act.
This item reflects the reductions to the international filing fee for international applications filed in electronic form that were made by the PCT Assembly at their 2006 meeting. The basic filing fee is 1,400 Swiss francs and it is paid for the benefit of the International Bureau. The fee reductions range from 100 Swiss francs to 300 Swiss francs depending on the electronic format of the application.
Schedule 15 to the IP Laws Amendment Act substituted new section 59 into the PBR Act. Subsection 59(3) of the PBR Act allows the Registrar of Plant Breeder’s Rights to delegate his or her powers under the PBR Act and the PBR Regulations to a prescribed employee or to employees in a prescribed class. Subsection 59(4) allows a person to whom a power or function has been delegated by the Minister or the Secretary (under subsections 59(1) and 59(2) respectively) to subdelegate the delegated powers or function. As with subsection 59(3), the person is only able to sub-delegate these powers to prescribed employees or to prescribed classes of employees. The term ‘employee’ used in new subsections 59(3) and (4) is defined in subsection 59(7), as meaning ‘a person who is engaged under the Public Service Act 1999 or otherwise for or on behalf of the Commonwealth and whose duties involve providing assistance to the Registrar.’
Regulations 3B–3D set the classes of employees to whom the Registrar’s, Minister’s and Secretary’s powers may be delegated or subdelegated respectively.
These amendments reflect those in item [1] of Schedule 1 to these Amending Regulations. The notes relating to item [1] of Schedule 1 contain an explanation of the effect of these provisions.
Regulations 3E–3G have the same effect as regulations 11.32–11.34 of the Designs Regulations 2004.
Part 2 of Schedule 3 to the IP Laws Amendment Act will amend the TM Act to allow the TM Regulations to set out the administrative procedures for processing Certification Trade Marks. Items [2]–[6] set out these administrative procedures.
Regulations 16.2 and 16.10, and subregulations 16.10A(2) and 16.11(2) as amended replicate the relevant procedures that were deleted from the TM Act by Part 2 of Schedule 3.
Regulation 16.12 replicates the procedure for publication of rules that is being deleted from the TM Act and would require rules be published when they are filed.
Item 1 of Schedule 2 to the IP Laws Amendment Act will amend subsection 223 of the TM Act to create a framework for the TM Regulations to govern the consequences for non-payment of fees relating to trade marks. Items [14] and [15] set out these consequences.
Regulation 21.21A provides the consequences for non-payment of fees. If the TM Act or TM Regulations require the Registrar or Customs CEO to do an act, then the Registrar or Customs CEO must not do that act until the relevant fee has been paid. If another person is required to do an act, such as filing a document, that act may be done despite a failure to pay the fee.
Regulation 21.23 is amended to change a reference regarding the non-payment of fees from the TM Act to the TM Regulations.
These amendments reflect those in item [1] of Schedule 1 to these Amending Regulations. The notes relating to item [1] of Schedule 1 contain an explanation of the effect of these provisions.
Regulations 21.24A-21.24C have the same effect as regulations 11.32–11.34 of the Designs Regulations 2004.
These amendments reflect those in items [2]–[4] of Schedule 1 to these Amending Regulations. See notes relating to items [2]–[4] of Schedule 1 for an explanation of the effect of these provisions.
Schedule 1 to the IP Laws Amendment Act will amend the TM Act to allow the revocation of trade marks.
Regulation 8.1A requires the Registrar to send a written notice that the Registrar proposes to revoke the registration of a trade mark to the trade mark owner at their address for service and any person who has recorded an interest in the trade mark. An address for service is a street address for the service of documents in Australia.
Paragraphs 17A.27(1) (a) and (b) and 17A.27(2) (a) and (b) have the same effect as subsection 38(1) of the TM Act but applied to International Registrations Designating Australia (IRDAs). These regulations allow the Registrar to revoke the acceptance of IRDAs.
Regulations 17A.42A–F have the same effect as sections 84A–D of the TM Act but applied to Protected International Trade Marks (PITMs). These regulations allow the Registrar to revoke PITMs.
Items [9] and [11] insert new headings in Division 5 of Part 17A as a consequence of regulations 17A42.A-F. These headings assist users to find provisions.
Schedule 4 to the IP Laws Amendment Act will amend the TM Act to make prescribed trade mark documents “available for public inspection” (API). This facilitates the speedy access by third parties to trade marks documents that are API. Access to documents that are not prescribed (non-API documents), or any part of them, is only available under the Freedom of Information Act 1982 (FOI Act).
Regulation 17A.72 applies the system for accessing document created by Schedule 4 to the IP Laws Amendment Act to IRDAs and PITMs.
Regulation 21.11A provides that all documents held by the Registrar are API, other than specifically identified documents which are not API. Paragraphs 21.11A(2)(a)–(j) identify categories of documents that are not API.
Item [17] amends the fee schedule to ensure that it is clear that there is only one fee for accessing trade mark documents.
Item [18] inserts a new provision setting out the fee for accessing trade mark documents. The fee for accessing trade mark documents is:
· $30 for requesting documents from a trade mark file; and
· $1 per page for each page in excess of 20 pages requested from that file.
Schedule 7 relates to new provisions which were introduced by the TMA Act, or provisions that resulted from a review of the trade marks system. The commencement date for the provisions in the TMA Act has been proclaimed to be 27 March 2007.
Paragraph 4.2(1)(d) requires trade mark applications to identify the applicant. Subsection 27(2) of the TM Act is amended by the TMA Act to clarify that only an applicant with legal personality can own a trade mark. As a result of this amendment current paragraph 4.2(1)(d) would require applicants to provide more information than is required under the Trademark Law Treaty (TLT) to obtain a filing date. Australia is a signatory of the TLT.
Paragraph 4.2(1)(d) is amended so that it only requires the maximum information permitted under the TLT.
Subregulation 4.3(5) requires trade mark applicants to supply an English translation of any words in their trade mark application that are not in English. The purpose of this provision is to enable other traders to avoid infringing the trade mark by using the same word or words in English or another language. However, some non-English words in roman letters (for example, Rouge – ‘red’, Cordon Bleu – ‘blue ribbon’, and Homme – ‘man’) have become well known by large segments of the Australian population. Subregulation 4.3(5) is amended so that trade mark applicants only need to supply translations when requested by the Registrar.
Regulation 17A.14A inserts a corresponding provision that allows the Registrar to request a translation of non-English words in IRDAs.
Part 2 of Schedule 1 to the TMA Act will amend sections 78, 79 and 128 of the TM Act to reduce from 12 months to 6 months the time allowed for renewing a trade mark registration after it expires. Subparagraphs 4.13(1)(c)(v) and 17A.21(1)(c)(v) and column 2 of item 10 of Schedule 9 align the time period allowed for renewing a trade mark registration after it expires with the TM Act.
Part 2 of Schedule 1 to the TMA Act will insert section 65A into the TM Act, which allows particulars of an application to be amended after publication. Subsection 65A(4) allows a person to oppose, as prescribed, the granting of a request to amend an application after publication.
Regulations 6.5 and 6.6 prescribe a scheme for opposing the granting of a request to amend an application after publication. The scheme is similar to the scheme for opposing requests for extensions of time set up by regulations 21.26 and 21.27.
Part 2 of Schedule 1 to the TMA Act will amend sections 27 and 51 of the TM Act to allow registrations of series trade marks in more than one class.
Schedule 9 items 3 and 4 are amended to provide fees for applying to register a series of trade marks in more than one class.
The divisional application system allows the filing of trade mark applications (divisional applications) that are continuations of earlier trade mark applications (parent applications). These divisional applications are for the same trade mark, but a reduced set of goods and/or services. They may claim the same priority date as the parent application.
Regulation 4.2AA makes it clear that for an application to be considered a divisional application it must, at the time of filing, contain the following information:
· a statement that the application is a divisional application; and
· a statement identifying the parent application.
Part 2 of Schedule 1 to the TMA Act amends section 45 of the TM Act to replace the tag “initial application” with the tag “parent application”. These tags are used to refer to an earlier trade mark application from which a later trade mark application claims priority. Items [4], [8] and [9] align the TM Regulations with the TM Act and replace the tag “initial application” with “parent application”.
Part 2 of Schedule 1 to the TMA Act amends the TM Act to insert a new system for divisional applications. Regulations 4.16 and 4.17 relate to the former system for divisional applications and are redundant in light of this amendment to the TM Act. This item deletes regulations 4.16 and 4.17.
Regulation 21.28 identifies acts for which a person cannot seek an extension of time, under section 224 of the TM Act. Paragraphs 21.28 (1) (c), (d) and (e) relate to the making of a divisional application and refer to sections 47 and 49 which are repealed by the TMA Act as part of the creation of the new system for divisional applications. This item replaces paragraphs 21.28 (1) (c), (d) and (e) with a new paragraph 21.28(1)(c).
There are significant advantages in having marks that are not being used removed from the Register, as this then increases the pool of trade marks available for traders to use. Section 92 of the TM Act and Part 9 of the TM Regulations set up the scheme for removing a trade mark from the Register when a trade mark is not being used.
Regulation 9.1 sets out the requirements for making an application for removal of a trade mark from the Register due to non-use under section 92 of the TM Act (application for removal). Regulation 9.1 currently requires an application for removal to include a declaration stating that inquiry into the use of the trade mark has been made by the applicant for removal and setting out the results of that inquiry (the non‑use declaration). The trade mark owner can oppose the application for removal due to non-use (a non-use opposition).
When there is a non‑use opposition, the focus of that process should be on whether there is evidence showing use of the trade mark, rather than the circumstances in which the application for removal was made. Amendments made by item [10] to regulation 9.1 remove the requirement for a non‑use declaration. This returns the focus of non‑use oppositions to the question of whether there is evidence showing there has been use of the trade mark.
Subregulation 9.2(2) is also amended as a consequence of item [10].
Paragraph 9.4(4)(b) sets out the process to be followed if, under subregulation 9.4(3), the opposition is taken to have ended because an opponent to an application for removal has neither served evidence in support nor requested a hearing. At present the process requires the Registrar to determine the application for removal under section 101 of the TM Act as the proceedings have not been discontinued or dismissed but have ended under subregulation 9.4(3).
In practical terms, this situation is akin to one where removal has been sought but no opposition has been lodged. In that case, subsection 97(1) of the TM Act provides that the trade mark is removed from the Register to the extent of the non-use application.
Subregulation 9.4(4) is amended so that the process for determining an opposition to an application for removal where no evidence in support is filed is the same as the process where an application for removal is not opposed.
Australia is a member of the Trademark Law Treaty (TLT), concluded at Geneva in 1994. The TLT has been revised and a new treaty, the Singapore Treaty on the Law of Trademarks (Singapore Treaty), was adopted at the Diplomatic Conference for the Adoption of the Revised Trademark Law Treaty on 27th March 2006 in Singapore.
The removal of paragraphs 21.28(1)(ea), (i), (l), and (m) makes the TM Regulations consistent with the Singapore Treaty, in order to assist Australian applicants and registered owners. The removal of these paragraphs allows the Registrar to extend the time for doing a number of relevant acts.
Items [13] to [37] and [45] of Schedule 7 deal with Part 17A of the TM Regulations which provides for matters that enable the performance of the obligations of Australia, or obtain for Australia an advantage or benefit, under the Madrid Protocol. Terms used in Part 17A are defined in Section 189A of the TM Act and in regulation 17A.2. The Madrid Protocol is a treaty providing for the International Registration of trade marks and is administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO).
The Articles and Common Rules of the Madrid Protocol are available from the WIPO website - http://www.wipo.int/madrid/en/legal_texts/
The Common Regulations under the Madrid Protocol have been amended since the Protocol came into force, which need to be reflected in Part 17A. Regulation 17A.2 is amended so that it refers to the most recent version of the Madrid Protocol.
The Common Regulations were amended in 2002 to:
· include a new definition for “Contracting Party of the holder” (Rule 1(xxvibis)); and
· allow subsequent designations to be made through the Office of the Contracting Party of the holder (Rule 24).
Regulation 17A.2 is amended by inserting a definition of the “Contracting Party of the holder”.
Subregulations 17A.10 (1) and (3) are amended to refer to the “Office of the Contracting Party of the holder”.
The use of the word ‘recordal’ ceased in the Common Regulations when they were amended in 2002 and was replaced with the word ‘recording’.
Regulation 17A.2, subregulation 17A.48(4) and paragraphs 17A.4(1)(b), 17A.28(2)(b), 17A.52(2)(a) and 17A.53(2)(a) are amended to use the term “recording”. The amendments also correct paragraph numbering in paragraph 17A.48(4)(g).
Regulation 17A.9 provides that the Registrar must take all reasonable steps to ensure that international applications are received by the IB within 2 months after the date on which it is filed with the Registrar. Regulation 17A.5 provides that the purpose of Part 17A Division 2 is to provide for dealing with international applications that are to be filed with the IB “through the intermediary of the Trade Marks Office”. Section 6 of the TM Act also defines ‘file’ as ‘to file at the Trade Marks Office.’
Due to these provisions it is not necessary to state “file with the Registrar”. Regulation 17A.9 is amended to remove references to the Registrar.
After checking the specification of an international application, the IB notifies the Office of origin and the applicant if it considers any terms used to specify the goods and services in the international application are too vague for the purposes of classification, or are incomprehensible or linguistically incorrect.
Regulation 17A.14 outlines circumstances in which the Registrar may refuse an International Registration (IR). These circumstances include the IR containing the terms ‘all goods’, ‘all services’, ‘all other goods’ or ‘all other services’. However there is no provision for the Registrar to refuse an IR if a term is identified as being too vague for the purposes of classification, is incomprehensible or linguistically incorrect.
Regulation 17A.14 is amended allowing the Registrar to refuse an IR where a term is identified as being too vague for the purposes of classification, is incomprehensible or linguistically incorrect.
Subregulation 17A.33(3) provides that in opposition proceedings for an international registration designating Australia (IRDA) the holder must notify the Registrar of an address for service in Australia within three months of an opposition being filed. If a holder does not do this, then the requirements to serve documents on a holder, and give a holder the opportunity to make written representations or to be heard do not apply. However, it is not clear whether a holder may notify an address for service outside the three months period.
This regulation makes it clear that an address for service in Australia must be notified before there is a requirement to serve copies of documents on a holder, or give a holder an opportunity to make written representations or to be heard. It is in the interest of all parties involved in opposition proceedings for an address for service in Australia to be notified when a holder intends to continue seeking protection for an IRDA.
Subregulation 17A.33 is amended to remove the three month time limit for notifying an address for service in Australia.
Subregulation 17A.34(2) requires the Registrar to tell the IB of the decision on an opposition to an IRDA as soon as practicable after the end of the appeal period mentioned in 17A.36. However, the Madrid Protocol requires that the Registrar tells the IB of the decision once all possibilities of review or appeal before the Office have passed.
Subregulation 17A.34(2) is amended to be consistent with the Madrid Protocol.
Regulation 17A.51 provides for transformation of IRDAs and PITMs where cancellation of the IR occurs under Article 6 of the Madrid Protocol. Regulations 17A.52 and 17A.53 set out the transformation process where an IRDA or PITM is transformed into a national application or registration.
Regulation 17A.41 provides for the cessation of protection of a PITM where the IB has notified IP Australia of cancellation of the relevant IR. However, there is no similar provision relating to the effect on an IRDA in the same situation.
Regulation 17A.35A sets out the effect on an IRDA of the IB cancelling the IR upon which the IRDA is based. When the IB cancels an IR, the IRDA upon which that IR is based ceases to have effect to the extent of the cancellation. The IRDA ceases to have effect from the time the IR is cancelled.
Under Rule 27(5) of the Common Regulations, the Registrar may declare that a limitation in respect of Australia of the goods, services or goods and services listed in an IR has no or some effect. If the Registrar declares that the limitation has no effect in Australia and sends a copy of the declaration to the IB during the declaration period, then the IRDA or PITM is to be taken never to have been amended in accordance with the limitation. If the Registrar declares that the limitation has some partial effect in Australia and sends a copy of the declaration to the IB during the declaration period, then the IRDA or PITM is to be taken to have been amended in accordance with the limitation as affected by the declaration—from the date the limitation was recorded in the International Register in accordance with rule 27(1) of the Common Regulations. However, there is currently no process in the TM Regulations for doing this.
Regulation 17A.35B sets out the effects of declarations under Rule 27(5) of the Common Regulations and limitations on IRDAs.
Subregulation (1) sets out the circumstances for which the regulation is applicable. That is when the IB notifies the Registrar of a limitation to an IR that is the subject of an IRDA.
Subregulation (2) sets out from when a limitation has effect. That is from the date the limitation is recorded in the International Register.
Subregulation (3) allows the Registrar to declare that a limitation has no or only partial effect.
Subregulation (4) sets out from when and in what circumstances a declaration has effect.
Subregulations (5)–(7) allow the holder of an IRDA to appeal a declaration under subregulation (3) and set out from when the court’s decision would have effect and when the Registrar must make amendments to the Record of International Registration.
Item [30] inserts regulation 17A.41A which sets out the effects of declarations under Rule 27(5) of the Common Regulations and limitations on PITMs. The parts of this regulation have the same effect for PITMs as the corresponding provisions in regulation 17A.35B have for IRDAs.
Item [34] inserts paragraph 17A.45(2)(e) which allows an aggrieved person to apply to the court to amend or cease the protection extended to a PITM on the basis that the Registrar wrongly made a declaration under new subregulation 17A.35B(3) or 17A.41A(3).
Subparagraph 68(1)(b)(ii) and (iii) of the TM Act allow the Registrar to register a trade mark that has been accepted where an opposition is filed but the opposition is withdrawn or dismissed under section 222 of the TM Act. Regulation 17A.36 allows a person to oppose an IRDA becoming a PITM. However, it does not allow the Registrar to allow an IRDA to become a PITM where an opposition is filed but the opposition is withdrawn or dismissed.
Subregulations 17A.36(2A) and (3A) enable the Registrar to allow an IRDA to become a PITM where an opposition is filed but the opposition is withdrawn or dismissed. This provides a consistent approach to the opposition process.
Subregulation 17A.38(1) allows the holder of an IRDA to notify the Registrar in writing if the holder disclaims any exclusive right to use, or authorise the use of, a specified part of a relevant trade mark (a disclaimed element). This is equivalent to section 74 of the TM Act. A disclaimer properly made in both circumstances “may not be revoked”.
Since regulation 17A.38 was drafted the Madrid Protocol has been amended to allow an element of an International Application (IA) to be disclaimed. When this happens the IB notifies the Registrar that an element of the IA has been disclaimed. (Rule 9(4)(b)(v) of the Common Regulations under the Madrid Protocol were amended in 2002.)
Regulation 17A.38 is amended by inserting subregulation (1A) which allows a notice disclaiming an element of an IRDA or PITM to be given to the Registrar by the holder or the IB.
Subregulation 17A.39(1) applies specific sections of the TM Act and TM Regulations to PITMs. These include sections 20 to 26, Parts 12, 13 and 14 of the Act (except section 128), and regulations 3.2, 13.1, 13.2 and 13.3.
Subregulation 17A.39(2) provides a concordance between words used to describe the process for extending protection to IRs and the process for registering locally filed applications. This is because different words are utilised under the Madrid Protocol and the TM Act and TM Regulations to describe the same or similar concept (for example registered trade mark and protected international trade mark),
Regulation 21.32 allows the destruction of some documents. These documents:
· do not include the Register or documents of legal and historical interest; and
· must relate to trade marks the registration of which ceased at least 25 years before the date of the order.
Similar provisions do not exist for PITMs.
Subregulation 17A.39 is amended by including a reference to regulation 21.32 and providing concordance between trade marks and PITMS which have ceased.
Part 2 of Schedule 1 to the TMA Act amends sections 86–88 of the TM Act to allow the Registrar to initiate court action.
Regulation 17A.43, and subregulations 17A.44(2) and 17A.45(1) are amended to allow the Registrar to initiate court action with respect to PITMs. This aligns these regulations with sections 86–88 of the TM Act.
Subregulation 17A.48(7) requires the Registrar to notify the IB of their decision or a court order at the end of proceedings. Under the Common Regulations, the Registrar is required to notify the IB of their decision or a court order only when the decision or court order is no longer subject to appeal.
Subregulation 17A.48(7) is amended to make it clear that the Registrar notifies the IB of their decision or a court order only if no appeal has been lodged.
Section 222 of the TM Act allows the Registrar to require a person (who neither resides nor carries on business in Australia) to pay security for costs if that person has given notice of opposition under section 52 or subsection 224(6) of the TM Act, or has applied under section 92 of the TM Act for a trade mark to be removed from the Register. If security is not given, the Registrar may dismiss the proceeding.
There is no similar provision in the TM Act or TM Regulations explicitly allowing the Registrar to require security for costs where a person files an opposition relating to an IRDA under regulation 17A.29 or an application for cessation of protection of a PITM under regulation 17A.48.
Item [37] inserts regulation 17A.73 enabling the Registrar to require security for costs when hearing an opposition relating to an IRDA or application for cessation of protection of a PITM. This aligns these processes with the equivalent process for trade marks.
The Common Regulations under the Madrid Protocol were amended in October 2006 and are to be in force from 1 April 2007. These amendments need to be reflected in Part 17A. Regulation 17A.2 is amended so that it refers to the most recent version of the Madrid Protocol.