Commonwealth Consolidated Acts Commonwealth Consolidated Acts
Australian Wine and Brandy Corporation Act 1980
1
Subsection 4(1)
Insert:
"Federal Court" means the Federal Court of Australia.
2 Subsection 4(1)
Insert:
"pending" , in relation to an application for the registration of a trade mark under the Trade Marks Act 1995 , has the meaning given in that Act.
3 Subsection
4(1)
Insert:
"registered owner" , in relation to a trade mark, means the person in whose name the trade mark is registered under the Trade Marks Act 1995 .
4 Subsection 4(1)
Insert:
"registered trade mark" means a trade mark whose particulars are entered in the Register of Trade Marks under the Trade Marks Act 1995 .
5 Subsection 4(1)
Insert:
"Register of Trade Marks" means the register kept under section 207 of the Trade Marks Act 1995 .
6 Subsection 4(1)
Insert:
"trade mark" has the meaning given in the Trade Marks Act 1995 .
7 Subsection 40P(1)
Repeal the subsection, substitute:
(1) The functions of the Committee are:
(a) to deal with applications for the determination of geographical
indications for wine in relation to regions and localities in
(b) to make determinations of Australian GIs in accordance with this Part; and
(c) to make determinations for the omission of Australian GIs in accordance with this Part; and
(d) any other functions conferred on the Committee under this Part.
8 Subsection 40P(2)
Omit “function”, substitute “functions”.
9 Before section 40Q in Division 4
of Part VIB
Insert:
(1)
This Division deals with the determining of geographical indications (
GIs ) in relation to a region or locality in
Note:
Geographical
indications in relation to wine manufactured in an agreement country are not
determined under this Division. They are determined in the agreement between
(2) Subdivisions B and C deal with the powers of the Committee and applications for the determination of GIs. Subdivision D deals with objections to the determination of a GI on the basis of pre‑existing trade mark rights. GIs are determined under Subdivision E.
10 After section 40Q
Insert:
The Committee must not do a thing under Subdivision E in respect of a proposed GI unless the requirements of Subdivision D have been complied with.
11 After section 40R
Insert:
(1) The Presiding Member of the Committee must cause a notice under subsection (2) to be published if:
(a) an application under section 40R has been made for the determination of a geographical indication (the proposed GI ); or
(b) the Committee is considering determining a geographical indication (the proposed GI ) on its own initiative under section 40Q; or
(c) after an application under section 40R has been made, the Committee is considering, under paragraph 40T(3)(b), determining a geographical indication (the proposed GI ) that is different from the GI proposed in the application.
(2) The notice must:
(a) set out the proposed GI; and
(b) invite persons to make written objections to the Registrar of Trade Marks in relation to the proposed GI on a ground set out in section 40RB; and
(c) invite those objections to be made within the period of not less than one month stated in the notice.
Registered owner of a registered trade mark
(1) The registered owner of a registered trade mark may object to the determination of a proposed GI on one of the following grounds:
(a) that the trade mark consists of a word or expression that is identical to the proposed GI;
(b) that:
(i) the trade mark consists of a word or expression; and
(ii) the proposed GI is likely to cause confusion with that word or expression;
(c) that:
(i) the trade mark contains a word or expression; and
(ii) the proposed GI is likely to cause confusion with that word or expression; and
(iii) the owner has trade mark rights in that word or expression.
(2) The owner may object on the ground specified in paragraph (1)(c) even if there are conditions or limitations entered on the Register of Trade Marks suggesting that the owner does not have trade mark rights to that word or expression.
Trade mark pending
(3) If a person has an application pending for the registration of a trade mark under the Trade Marks Act 1995, the person may object to the determination of a proposed GI on one of the following grounds:
(a) that:
(i) the application was made in good faith; and
(ii) the trade mark consists of a word or expression that is identical to the proposed GI; and
(iii) prima facie, the requirements under the Trade Marks Act 1995 for accepting an application for registration of a trade mark would be satisfied in respect of the trade mark applied for;
(b) that:
(i) the application was made in good faith; and
(ii) the trade mark consists of a word or expression; and
(iii) the proposed GI is likely to cause confusion with that word or expression; and
(iv) prima facie, the requirements under the Trade Marks Act 1995 for accepting an application for registration of a trade mark would be satisfied in respect of the trade mark applied for;
(c) that:
(i) the application was made in good faith; and
(ii) the trade mark contains a word or expression; and
(iii) the proposed GI is likely to cause confusion with that word or expression; and
(iv) prima facie, the requirements under the Trade Marks Act 1995 for accepting an application for registration of a trade mark would be satisfied in respect of the trade mark applied for; and
(v) after registration, the applicant would have trade mark rights in the word or expression.
Trade mark not registered
(4) If a person claims to have trade mark rights in a trade mark that is not registered, the person may object to the determination of a proposed GI on one of the following grounds:
(a) that:
(i) the trade mark consists of a word or expression that is identical to the proposed GI; and
(ii) the person has trade mark rights in that word or expression; and
(iii) the rights were acquired through use in good faith;
(b) that:
(i) the trade mark consists of or contains a word or expression; and
(ii) the proposed GI is likely to cause confusion with that word or expression; and
(iii) the person has trade mark rights in that word or expression; and
(iv) the rights were acquired through use in good faith.
Notice of objection to be given to Committee
(1) If:
(a) the Registrar of Trade Marks receives an objection in relation to the proposed GI on a ground set out in section 40RB; and
(b) the objection is received within the period stated in the notice under section 40RA;
the Registrar of Trade Marks must in writing notify the Committee of the receipt and terms of the objection.
Registrar of Trade Marks to make decision on whether ground made out or not
(2) If an objection is notified to the Committee under subsection (1), the Registrar of Trade Marks must decide in writing whether the ground of objection is or is not made out.
Registrar may make recommendation to Committee to determine a GI
(3) If:
(a) the Registrar of Trade Marks decides that the ground of objection is made out; and
(b) the Registrar of Trade Marks is satisfied that it is reasonable in the circumstances to recommend to the Committee that the proposed GI be determined despite the objection having been made out;
the Registrar of Trade Marks may make the recommendation. The recommendation must be in writing.
Note 1: For example, it may be reasonable for the Registrar of Trade Marks to make such a recommendation if the Registrar of Trade Marks is satisfied that the proposed GI was in use before the trade mark rights arose.
Note 2: If a recommendation is made under subsection (3), the Committee may determine the GI (see subsection 40SA(4)).
(4)
In determining under paragraph (3)(b) whether it is reasonable in
the circumstances to make the recommendation to the Committee, the Registrar
of Trade Marks must have regard to
Regulations
(5) Regulations may set out the procedure to be followed in making a decision under subsection (2) or (3). The procedures may include the charging of fees, the holding of hearings and the taking of evidence.
Notice to be given by Registrar of Trade Marks
(1) After the Registrar of Trade Marks has made a decision under section 40RC in relation to the proposed GI, the Registrar of Trade Marks must, in writing, inform the following of the outcome of the decision and of any recommendation that has been made under subsection 40RC(3):
(a) the person who proposed the GI, if there was an application under section 40R for the GI;
(b) the person who objected to the determination of the proposed GI;
(c) the Committee.
Notice to be given by Committee
(2) After receiving notice of a decision under subsection (1), the Presiding Member must cause a notice to be published:
(a) setting out the proposed GI; and
(b) stating that a decision of the Registrar of Trade Marks has been made in relation to the proposed GI; and
(c) setting out the terms of the decision and any recommendation made under subsection 40RC(3) in relation to the proposed GI.
(3) The notice under subsection (2) is to be published in the manner that the Committee thinks appropriate.
(1) If:
(a) a decision has been made that a ground of objection to a proposed GI has been made out; and
(b) a person applies in writing to the Registrar of Trade Marks for a decision that circumstances have changed since that decision was made such that the ground of objection no longer exists;
the Registrar of Trade Marks may, in writing, make a decision that the ground of objection no longer exists.
Note: If the Registrar of Trade Marks makes a decision under this section, the Committee may determine the GI (see subsection 40SA(5)).
(2) Regulations may set out the procedure to be followed in making a decision under subsection (1). The procedures may include the charging of fees, the holding of hearings and the taking of evidence.
(1) An appeal lies to the Federal Court against a decision of the Registrar of Trade Marks, made under:
(a) subsection 40RC(2) (a decision that a ground of objection is or is not made out); and
(b) subsection 40RC(3) (a recommendation that a proposed GI be determined or a refusal to make such a recommendation); and
(c) section 40RE (a decision that a ground of objection no longer exists or a refusal to make such a decision).
(2) The jurisdiction of the Federal Court to hear and determine appeals against decisions of the Registrar of Trade Marks under this Act is exclusive of the jurisdiction of any other court except the jurisdiction of the High Court under section 75 of the Constitution.
(3) On hearing an appeal against a decision of the Registrar of Trade Marks under this Act, the Federal Court may do any one or more of the following:
(a) admit further evidence orally, or on affidavit or otherwise;
(b) permit the examination and cross‑examination of witnesses, including witnesses who gave evidence before the Registrar of Trade Marks;
(c) order an issue of fact to be tried as it directs;
(d) affirm, reverse or vary the Registrar of Trade Marks’s decision;
(e) give any judgment, or make any order, that, in all the circumstances, it thinks fit;
(f) order a party to pay costs to another party.
(4) The Registrar of Trade Marks may appear and be heard at the hearing of an appeal to the Federal Court against a decision of the Registrar of Trade Marks.
(5) Except with the leave of the Federal Court, an appeal does not lie to the Full Court of the Federal Court against a decision of a single judge of the Federal Court in the exercise of its jurisdiction to hear and determine appeals from decisions of the Registrar of Trade Marks.
(6) The regulations may make provision about the practice and procedure of the Federal Court in a proceeding under this section, including provision:
(a) prescribing the time for starting the action or proceeding or for doing any other act or thing; or
(b) for an extension of that time.
A decision made under this Division does not:
(a) create or affect a right under the Trade Marks Act 1995 or at common law in respect of a trade mark; or
(b) in any way pre‑empt or affect a decision of the Registrar of Trade Marks under the Trade Marks Act 1995 in respect of a pending application for the registration of a trade mark.
12 Before section 40S
Insert:
(1) If an objection was made to a proposed geographical indication ( GI ) under section 40RB, the Committee may only determine the GI in the circumstances set out in this section.
Grounds of objection not made out
(2) The Committee may determine a GI that was the subject of a decision under subsection 40RC(2), if:
(a) all appeals against, or reviews of, the decision (if any) in relation to the GI have been finalised; and
(b) the decision standing after the appeals and reviews have been finalised is that a ground of objection has not been made out in relation to the GI.
If grounds for objection made out and person agrees to determination of GI
(3) The Committee may determine a GI that is the subject of a decision that a ground of objection has been made out, if the person who objected to the determination of the GI has agreed, by notice in writing given to the Committee, to the determination of the GI.
If grounds for objection made out and a recommendation is made under subsection 40RC(3)
(4) The Committee may determine a GI that is the subject of a decision that a ground of objection has been made out, if:
(a) a recommendation has been made to the Committee under subsection 40RC(3) that the GI should be determined despite the ground of objection having been made out; and
(b) all appeals against, or reviews of, the decision that the GI should be determined (if any) have been finalised; and
(c) the decision standing after the appeals and reviews have been finalised is that the GI should be determined.
If grounds for objection made out and a decision is made under section 40RE
(5) The Committee may determine a GI that is the subject of a decision that a ground of objection has been made out, if:
(a) a decision has been made under section 40RE that the ground of objection no longer exists; and
(b) all appeals against, or reviews of, the decision that the ground no longer exists (if any) have been finalised; and
(c) the decision standing after the appeals and reviews have been finalised is that the ground no longer exists.
13 At the end of section 40T
Add:
(4) In determining a geographical indication, the Committee must not consider any submission to the extent that the submission asserts a trade mark right in respect of the proposed geographical indication.
14 At the
end of subsection 40X(2)
Add:
; and (c) if a decision has been made under section 40RC before the final determination, no application to the Administrative Appeals Tribunal may be made in respect of that decision under section 40RC. An appeal lies to the Federal Court under section 40RF from a decision under section 40RC.
15 At the end of subsection 40Y(1)
Add:
Note: Under section 40RF, an appeal lies to the Federal Court from a decision under section 40RC.
16 Application
The amendments made by items 1 to 15 of this Schedule apply to applications for determination of geographical indications that have not been finally determined under section 40W of the Australian Wine and Brandy Corporation Act 1980 on the day this item commences.
17 After Division 4 of Part VIB
Insert:
(1) This Division deals with determining the omission from the Register of geographical indications ( Australian GIs ) determined under Division 4.
(2) The grounds for omission are that an Australian GI is not in use (see Subdivision B) or is no longer required (see Subdivision C).
Note: Subsection 40ZD(3) also deals with changes to the Register.
The Committee may, either on its own initiative or on an application made in accordance with section 40ZAC, determine that an Australian GI is to be omitted from the Register on the ground that the GI is not in use.
(1) A person (the applicant ) may apply in the prescribed form to the Committee to omit an Australian GI from the Register on the ground that the GI is not in use.
(2) The application must be accompanied by such fee (if any) charged by the Corporation for the making of such an application.
(3) The Corporation may waive the fee.
(4) If the application is not accompanied by the fee, and the fee is not waived by the Corporation, the application is treated as having never been made.
(1) For the purposes of determining the application, the Committee may, by notice in writing, require the applicant to provide such further information as the Committee directs, within the period specified in the notice.
(2) If the applicant does not comply with this requirement, the application is taken to have been withdrawn.
(3) A notice must include a statement about the effect of the above.
If the Committee:
(a) receives an application under section 40ZAC; or
(b) proposes on its own initiative that an Australian GI should be omitted from the Register on the ground that the GI is not in use;
the Presiding Member of the Committee must cause a notice to be published in the manner that the Committee thinks appropriate:
(c) setting out the Australian GI; and
(d) stating that an application under section 40ZAC has been made, or that the Committee is proposing to make a determination to omit the GI on its own initiative; and
(e) inviting persons to make written submissions to the Committee in relation to the application or proposal within the period of not less than one month that is stated in the notice.
(1) After considering any submissions made to it in response to a notice under section 40ZAE, the Committee must determine whether to omit the Australian GI on the ground that the GI is not in use.
(2) The Committee may, in writing, make a determination to omit the GI on that ground if the Committee is satisfied of the following matters:
(a) that the GI has been registered for a period of more than 5 years before the date of the notice under section 40ZAE;
(b) that the GI has not been used during the period of 3 years before the date of the notice under section 40ZAE (see subsection (3));
(c) that no special circumstances exist in relation to the region or locality indicated by the GI that would preclude the making of a determination to omit the GI from the Register (see subsection (4)).
Meaning of GI not been used
(3) For the purposes of paragraph (2)(b), an Australian GI has not been used if:
(a) there has not been a production of wine for commercial use originating in the region or locality indicated by the GI; and
(b) wine originating in the region or locality indicated by the GI has
not been described and presented for sale within
Meaning of special circumstances
(4) For the purposes of paragraph (2)(c), special circumstances exist if:
(a) the region or locality indicated by the GI has been affected by fire, drought or some other disaster; and
(b) as a result of being so affected, there has not been a production of wine for commercial use originating in the region or locality indicated by the GI during the period of 3 years immediately before the date of the notice under section 40ZAE.
The Presiding Member of the Committee must cause:
(a) a notice to be given of the Committee’s determination to the applicant (if any); and
(b) if the determination made is to omit the Australian GI from the Register—a notice setting out the terms of the determination to be published in the manner that the Committee thinks appropriate.
(1) Application may be made to the Administrative Appeals Tribunal for review of the determination made under section 40ZAF.
(2) Despite paragraph 29(1)(d) and subsection 29(2) of the Administrative Appeals Tribunal Act 1975 , an application to the Tribunal for review of a determination under section 40ZAF must be made within 28 days after notice of the determination is published in accordance with section 40ZAG.
(3) Despite subsection 29(8) of the Administrative Appeals Tribunal Act 1975 , an application under subsection 29(7) of that Act in respect of a determination under section 40ZAF must be made before the time fixed by subsection (2) of this section ends.
(1) If the determination made by the Committee under section 40ZAF is a determination to omit the Australian GI from the Register, the Presiding Member must give a copy of the determination to the Registrar so that particulars of the determination can be omitted from the Register:
(a) if an application is made to the Administrative Appeals Tribunal under section 40ZAH for review of the determination—as soon as practicable after the decision of the Tribunal on the review is given; or
(b) otherwise—as soon as practicable after the 28th day after notice of the determination is published in accordance with section 40ZAG.
(2) When the Presiding Member gives a copy of the determination to the Registrar, the Presiding Member must also give a copy to the Chairperson of the Corporation.
(3) The determination of the Committee takes effect on the day on which particulars of the GI are omitted from the Register.
(1) A person (the applicant ) may apply in the prescribed form to the Committee to omit an Australian GI from the Register on the ground that the GI is no longer required.
(2) The application must be accompanied by a written statement from each of the following organisations supporting the application:
(a) a declared winemakers’ organisation (if any);
(b) a declared wine grape growers’ organisation (if any);
(c) the organisation or organisations representing winemakers in a
State or Territory wholly or partly covered by the region or locality in
(d) the organisation or organisations representing growers of wine
grapes in a State or Territory wholly or partly covered by the region or
locality in
(3) The application must also be accompanied by such fee (if any) charged by the Corporation for the making of such an application.
(4) The Corporation may waive the fee.
(5) If:
(a) the application is not accompanied by the fee, and the fee is not waived by the Corporation; or
(b) the application is not accompanied by the statements referred to in subsection (2);
then the application is taken never to have been made.
(1) For the purposes of determining the application, the Committee may, by notice in writing, require the applicant to provide such further information as the Committee directs, within the period specified in the notice.
(2) If the applicant does not comply with this requirement, the application is taken to have been withdrawn.
(3) A notice must include a statement about the effect of subsection (2).
After receiving an application under section 40ZAJ, the Presiding Member of the Committee must cause a notice to be published in the manner that the Committee thinks appropriate:
(a) stating that an application under section 40ZAJ has been made and setting out the Australian GI; and
(b) inviting:
(i) interested persons in relation to the GI (see section 40ZAM); and
(ii) members of the organisations referred to in subsection 40ZAJ(2); and
(iii) the organisations referred to in subsection 40ZAJ(2);
to object to the omission of the GI from the Register by making written submissions to the Committee within the period of not less than one month that is stated in the notice.
For the purposes of subparagraph 40ZAL(b)(i), an interested person in relation to an Australian GI is a person who the Committee is satisfied is:
(a) a winemaker who makes wine for commercial purposes from grapes grown in the region or locality indicated by the GI; or
(b) a grower of grapes who grows wine grapes in the region or locality indicated by the GI; or
(c) a person who owns or leases a tract of land that is:
(i) 5 hectares or more in size and situated in the region or locality indicated by the GI; and
(ii) capable of being used to grow grapes for commercial wine production; or
(d) a person who:
(i) has a mortgage, lien or other commercial interest over, or in relation to, a vineyard or other property used in the production of wine that is situated in the region or locality indicated by the GI; and
(ii) has the agreement of the owner of the property to that person making a submission to the Committee under section 40ZAL.
No submission made
(1) If no submissions have been made to the Committee in response to the notice under section 40ZAL, the Committee must make a determination in writing to omit the Australian GI from the Register on the grounds that the GI is no longer required.
Submission made
(2) If a submission has been made to the Committee, the Committee must make a determination in writing not to omit the GI from the Register.
The Presiding Member of the Committee must cause:
(a) notice to be given of the Committee’s determination to the applicant; and
(b) a notice setting out the terms of the determination to be published in any manner that the Committee thinks appropriate.
(1) If the determination made by the Committee under section 40ZAN is a determination to omit the Australian GI from the Register, the Presiding Member must give a copy of the determination to the Registrar so that particulars of the determination can be omitted from the Register as soon as is practicable.
(2) When the Presiding Member gives a copy of the determination to the Registrar, the Presiding Member must also give a copy to the Chairperson of the Corporation.
(3) The determination of the Committee takes effect on the day on which particulars of the GI are omitted from the Register.