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TRADE MARKS REGULATIONS 1995

- made under the Trade Marks Act 1995

Table of Provisions

PART 1--PRELIMINARY

  • 1.1 Name of regulations

PART 2--INTERPRETATION

  • 2.1 Interpretation
  • 2.2 Period expressed in months
  • 2.3 Giving of documents by Registrar

PART 3--TRADE--MARKS AND TRADE MARK RIGHTS

  • 3.1 Classification of goods and services
  • 3.2 Period in which action for infringement may be brought

PART 3A--ASSISTED--FILING SERVICE

Division 1--General

  • 3A.1 Purpose of Part

Division 2--Request for filing assistance

  • 3A.3 Request for filing assistance--form of request
  • 3A.4 AFS request--assessment by Registrar
  • 3A.5 AFS request--formal requirements for amendment or proceeding to Part 4 application

PART 4--APPLICATION--FOR REGISTRATION

  • 4.1 Applications--approved form
  • 4.2 Application in approved form--requirements for filing
  • 4.2AA Divisional application--additional requirement for filing
  • 4.2A AFS request submitted as application--requirements for filing
  • 4.3 Representation of trade marks
  • 4.4 Specification of goods and/or services
  • 4.5 Period for claiming priority for an application
  • 4.6 How to claim priority
  • 4.7 Publication of particulars of application
  • 4.8 Examination of application--report to applicant
  • 4.9 Examination--applicant's response to report
  • 4.10 Examination--further report to applicant
  • 4.11 Examination--additional requirements
  • 4.12 Periods after which applications lapse
  • 4.13 Deferment of acceptance
  • 4.14 Period for which acceptance is deferred
  • 4.15 Trade marks containing etc certain signs
  • 4.15A Grounds for rejection--trade mark identical etc to trade mark protected under Madrid Protocol
  • 4.18 Request for expedited examination of application
  • 4.19 Expedited examinations

PART 5--OPPOSITION--TO REGISTRATION

Division 1--Preliminary

Division 2--Filing of opposition documents

Subdivision A--Notice of opposition

Division 3--Cooling-off period for opposition

  • 5.16 Registrar may allow cooling - off period

Division 4--Hearing of opposition

Division 5--Miscellaneous

  • 5.18 Copy of earlier Convention application to be available to opponent
  • 5.19 Registrar may give direction
  • 5.20 Registrar must notify parties of dismissal or discontinuance of opposition

PART 6--AMENDMENT--OF APPLICATION FOR REGISTRATION OF A TRADE MARK AND OTHER DOCUMENTS

Division 1--Amendment of application for registration of trade mark and other documents

  • 6.1 Amendment of applications by Registrar
  • 6.2 Request to amend before publication of details
  • 6.3 Filing of declarations
  • 6.4 Notification of amendments

Division 2--Opposition to amendment after particulars published

PART 7--REGISTRATION--OF TRADE MARKS

Division 1--Initial registration

  • 7.1 Period in which a trade mark can be registered
  • 7.2 Particulars to be entered in the Register

Division 2--Renewal of registration (general)

  • 7.3 Period for request for renewal
  • 7.4 Notice of renewal due--when and how given
  • 7.5 Notification of renewal

Division 3--Renewal of registration (registration delayed for 10 or more years after filing date)

  • 7.6 Prescribed period (Act s 80A(3))
  • 7.7 Notification about renewal
  • 7.8 Notification of renewal

PART 8--AMENDMENT--AND CANCELLATION OF REGISTRATION

  • 8.1 Notice of cancellation
  • 8.2 Amendment or cancellation--matters for the court
  • 8.3 Grounds for application for rectification of Register--registered trade mark identical etc to trade mark protected under Madrid Protocol
  • 8.4 Amendment because of inconsistency with international agreements--notice of opposition
  • 8.5 Amendment because of inconsistency with international agreements--opposition practice and procedure
  • 8.6 Amendment because of inconsistency with international agreements--hearing
  • 8.7 Amendment because of inconsistency with international agreements--opposition directions
  • 8.8 Amendment because of inconsistency with international agreements--notification of dismissal or discontinuance of opposition

PART 9--REMOVAL--OF TRADE MARK FROM REGISTER FOR NON-USE

Division 1--Preliminary

Division 2--Application for removal

  • 9.5 Application for removal
  • 9.6 Notification of application

Division 3--Filing of opposition documents

Subdivision A--Notice of opposition

Division 4--Cooling-off period for opposition

  • 9.19 Registrar may allow cooling - off period

Division 5--Hearing of opposition

Division 6--Miscellaneous

  • 9.21 Registrar may give direction
  • 9.22 Registrar must notify parties of dismissal or discontinuance of opposition
  • 9.23 Removal of trade mark from register

PART 10--ASSIGNMENT--AND TRANSMISSION OF TRADE MARKS

  • 10.1 Applications for assignment etc to be recorded or entered
  • 10.2 Recording of assignment etc--trade marks not registered
  • 10.3 Particulars of recorded assignment or transmission to be published
  • 10.4 Recording of assignment etc of registered trade marks
  • 10.5 Notification to persons recorded as claiming right or interest in trade marks

PART 11--VOLUNTARY--RECORDING OF CLAIMS TO INTERESTS IN AND RIGHTS IN RESPECT OF TRADE MARKS

  • 11.1 Amendment of particulars--claimed interests or rights
  • 11.2 Amendment of name, address and address for service--claims not in the Register
  • 11.3 Cancellation of particulars--claimed interests or rights

PART 13--IMPORTATION--OF GOODS INFRINGING AUSTRALIAN TRADE MARKS

  • 13.1A Definition
  • 13.1 Action period
  • 13.2 Claim period
  • 13.3 Notice of objection to importation  prescribed document
  • 13.4 Notice of objection to importation--authorised users
  • 13.5 Claim for release of seized goods
  • 13.6 Period for compliance with request of Comptroller - General of Customs for information etc.
  • 13.7 Modification of the Act in its application to Norfolk Island
  • 13.8 Modification of the Act in its application to Christmas Island
  • 13.9 Modification of the Act in its application to Cocos (Keeling) Islands

PART 16--CERTIFICATION--TRADE MARKS

  • 16.1 Copy of rules to be filed
  • 16.2 Documents to be sent to Commission
  • 16.3 Initial assessment of applications by Commission
  • 16.4 Holding of conferences
  • 16.5 Consideration of applications
  • 16.6 Criteria for Commission consideration of rules
    • 16.7. Matters to be included in advertisement of adverse decision
  • 16.8 Applications to vary rules
    • 16.9. Consideration of applications to vary rules 16.10. Decision on variation of rules 16.10A. Assignment of unregistered certification trade marks
  • 16.11 Assignment of registered certification trade marks
  • 16.12 Publication of rules

PART 17--DEFENSIVE--TRADE MARKS

PART 17A--PROTECTED--INTERNATIONAL TRADE MARKS UNDER THE MADRID PROTOCOL

Division 1--General

Division 2--Application for international registration of a trade mark

Division 3--International registration designating Australia

Subdivision 1--General

Division 4--Protected international trade marks--rights and protection

Division 5--Protected international trade marks--amendment or cessation of protection

Subdivision 1--Amendment or cessation of protection because of cancellation, limitation or non-renewal of international registration

Division 6--Collective and certification trade marks

  • 17A.49 Collective trade marks
  • 17A.50 Certification trade marks

Division 7--Transformation of cancelled international registrations

Division 8--Concurrence between registration and international registration

  • 17A.54 Effect of registration and protection of the same trade mark
  • 17A.55 Effect of cancellation, removal or expiry of registered trade mark

Division 9--Change in ownership of international registration

  • 17A.56 Application of Division
  • 17A.57 Collective trade marks
  • 17A.58 Protected certification trade marks
  • 17A.58A Unprotected certification trade marks
  • 17A.59 Trade marks affected by claimed interests and rights
  • 17A.60 Recording change of ownership

Division 10--Recording of claimed interests and rights

  • 17A.61 Application to have claims recorded
  • 17A.62 Recording of claims
  • 17A.63 Notification of matters affecting trade mark
  • 17A.64 Record not proof etc of existence of right etc
  • 17A.65 Amendment or cancellation of record

Division 11--Miscellaneous

PART 19--ADMINISTRATION

  • 19.1 Trade Marks Office and sub - offices--business hours
  • 19.2 Persons to whom Registrar may delegate (Act, s 206(1))

PART 20--REGISTERED--TRADE MARKS ATTORNEYS

Division 1--General

  • 20.1A Application of Part
  • 20.1 Interpretation

Division 2--Obtaining registration for first time

  • 20.2 Form of application
  • 20.3 Evidence that applicant meets registration requirements
  • 20.4 Certificate of registration
  • 20.5 Evidence of academic qualifications
  • 20.6 Academic qualifications
  • 20.7 Evidence of knowledge requirements
  • 20.8 Knowledge requirements
  • 20.9 Exemption from a requirement in Schedule 5 to Patents Regulations
  • 20.10 Prescribed offences
  • 20.11 Application of Schedule 5 to Patents Regulations

Division 3--Accreditation of courses of study

  • 20.12 Accreditation of courses of study

Division 4--Board examinations

  • 20.13 Board examinations

Division 5--Maintaining registration and removing and restoring name to Register of Trade Marks Attorneys

Division 5A--Suspension of registration

  • 20.14A Requirement to notify of serious offence
  • 20.14B Suspension from Register--serious offence

Division 6--Discipline

Division 7--Rights of registered trade marks attorneys

PART 20A--INCORPORATED--TRADE MARKS ATTORNEYS

Division 1--General

Division 2--Obtaining registration for first time

  • 20A.3 Form of application
  • 20A.4 Certificate of registration

Division 3--Maintaining registration

Division 4--Removal from Register of Trade arks Attorneys

Division 5--Discipline

Subdivision A--General

Division 6--Returning to Register of Trade arks Attorneys

PART 21--MISCELLANEOUS

Division 1--Applications and other documents

  • 21.1 Compliance with instructions on approved forms
  • 21.2 Requirements for filing documents
  • 21.3 Filing of documents--common requirements
  • 21.4 Consequences for documents not meeting filing requirements
  • 21.5 Filing of documents--date of receipt to be marked
  • 21.5A Consequences for evidence not meeting filing requirements
  • 21.6 Declarations
  • 21.7 Declarations--additional material
  • 21.7A Service by post
  • 21.8 Notification of service
  • 21.9 Notice of withdrawal of applications etc
  • 21.10 Notification of withdrawal of application etc.
  • 21.11 Change of address for service--notice to interested persons
  • 21.11A Documents to be made available for public inspection

Division 2--Proceedings before the Registrar

  • 21.12 Applications for costs
  • 21.13 Award of costs
  • 21.14 Conduct of proceedings generally
  • 21.15 Opportunity to be heard by Registrar
  • 21.16 Written submissions and oral hearings
  • 21.17 Giving of oral evidence
  • 21.19 Registrar may use information available
  • 21.20 Statements of reasons for decision

Division 2A--Extensions of time

Division 3--General

  • 21.21 What fees are payable
  • 21.21A No action permitted until fee paid
  • 21.22 How fees are to be paid
  • 21.23 Notice of non - payment of fee
  • 21.23A Exemption from fees
  • 21.24 Refunds etc of fees
  • 21.24A Period for doing certain acts--office not open for business
  • 21.24B Days when office not open for business
  • 21.24C Period for doing certain acts--acts to which section 223A does not apply
  • 21.25 Extension of time--application
  • 21.28 Extension of time--prescribed acts and documents
  • 21.29 Convention countries
  • 21.30 Rights of registered patent attorneys
  • 21.31 Incapacity of certain persons
  • 21.33 Directions not otherwise prescribed
  • 21.34 Requirements cannot be complied with for reasonable cause
  • 21.35 Review of decisions

PART 22--APPLICATION--, SAVING AND TRANSITIONAL PROVISIONS

Division 1--General

  • 22.1 Application of the Act
  • 22.2 Fees payable in relation to certain matters
  • 22.3 Certain delegations continue
  • 22.4 Certain deferments continue
  • 22.5 Certain extensions of time continue
  • 22.6 Deferment of acceptance--certain applications
  • 22.7 Trade marks attorneys
  • 22.8 Trade marks attorney examination requirements

Division 2--Amendments made by particular instruments

  • 22.9 Amendments made by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1)
  • 22.10 Amendments made by the Customs and Other Legislation Amendment (Australian Border Force) Regulation 2015
  • 22.11 Amendments made by the Trade Marks Amendment (Fees) Regulation 2016
  • 22.12 Amendments made by the Intellectual Property Legislation Amendment (Fee Review) Regulation 2016
  • 22.13 Amendment made by Schedule 5 to the Intellectual Property Legislation Amendment (Single Economic Market and Other Measures) Regulation 2016

Division 3--Transitional provisions for Schedule 4 to the Intellectual Property Laws Amendment Act 2015 and Schedule 2 to the Intellectual Property Legislation Amendment (Single Economic Market and Other Measures) Regulation 2016

  • 22.14 Definitions
  • 22.15 Transitional--registration as a trade marks attorney
  • 22.16 Continuation of certain disciplinary proceedings--individuals
  • 22.17 Continuation of certain disciplinary proceedings--incorporated trade marks attorneys

Division 4--Amendments made by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Regulations 2018

  • 22.18 Amendments made by Part 2 of Schedule 1
  • 22.19 Amendments made by Part 1 of Schedule 2
  • 22.20 Amendments made by Part 2 of Schedule 2
  • 22.21 Amendments made by Part 3 of Schedule 2
  • 22.22 Amendments made by Part 4 of Schedule 2
  • 22.23 Amendments made by Part 8 of Schedule 2
  • 22.24 Amendments made by Part 10 of Schedule 2

Division 5--Amendments made by the Intellectual Property Laws Amendment (Fee Amounts and Other Measures) Regulations 2020

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