Commonwealth Consolidated Regulations Commonwealth Consolidated RegulationsStatutory Rules 1995 No. 341 as amended
This compilation was prepared on 1 July 2008
taking into account amendments up to SLI 2008 No. 122
Prepared by the Office of
Legislative Drafting and Publishing,
Attorney‑General's Department, Canberra
Contents
Part 1 Preliminary
1.1 Name of regulations [see Note 1] 14
1.2 Commencement 14
Part 2 Interpretation
2.1 Interpretation 15
2.2 Period expressed in months 16
Part 3 Trade marks and trade mark rights
3.1 Classification of goods and services 17
3.2 Period in which action for infringement may be brought 17
Part 3A Assisted filing service
Division 1 General
3A.1 Purpose of Part 18
3A.2 Definitions for Part 18
Division 2 Request for filing assistance
3A.3 Request for filing assistance -- form of request 18
3A.4 AFS request -- assessment by Registrar 20
3A.5 AFS request -- formal requirements for amendment or proceeding to Part 4 application 20
Part 4 Application for registration
4.1 Applications -- approved form 23
4.2 Application in approved form -- requirements for filing 23
4.2AA Divisional application -- additional requirement for filing 24
4.2A AFS request submitted as application -- requirements for filing 24
4.3 Representation of trade marks 24
4.4 Specification of goods and/or services 26
4.5 Period for claiming priority for an application 27
4.6 How to claim priority 27
4.7 Publication of particulars of application 27
4.8 Examination of application -- report to applicant 28
4.9 Examination -- applicant's response to report 29
4.10 Examination -- further report to applicant 29
4.11 Examination -- additional requirements 30
4.12 Periods after which applications lapse 30
4.13 Deferment of acceptance 31
4.14 Period for which acceptance is deferred 33
4.15 Trade marks containing etc certain signs 36
4.15A Grounds for rejection -- trade mark identical etc to trade mark protected under Madrid Protocol 36
4.18 Request for expedited examination of application 38
4.19 Expedited examinations 39
Part 5 Opposition to registration
5.1 Time for filing notice of opposition 40
5.2 Extension of time for filing -- grounds 40
5.3 Extension of time for filing -- applications 41
5.4 Extension of time for filing -- grant of extension 41
5.5 Copy of earlier application to be available to opponent 42
5.6 Opposition proceedings 43
5.7 Evidence in support 43
5.8 Notice that opponent will not rely on evidence in support 43
5.9 Evidence in answer 43
5.10 Period for service of a copy of the evidence in answer 44
5.11 Notice that applicants will not rely on evidence in answer 44
5.12 Evidence in reply to evidence in answer 45
5.13 Notice that opponents will not rely on evidence in reply to evidence in answer 45
5.14 Hearing of opposition 46
5.15 Extension of period to serve evidence and service of further evidence 47
5.16 Conduct of opposition proceedings generally 48
5.17 Registrar to give notice of dismissal of proceedings 48
5.18 Grounds for opposition to registration of a trade mark -- trade mark identical etc to trade mark protected under Madrid Protocol 48
5.19 Amendment of notice of opposition 50
Part 6 Amendment of application for registration of a trade mark and other documents
6.1 Amendment of applications by Registrar 51
6.2 Request to amend before publication of details 51
6.3 Filing of declarations 51
6.4 Notification of amendments 52
6.5 Amendment after particulars published -- notice of opposition 52
6.6 Amendment after particulars published -- opposition proceedings 52
Part 7 Registration of trade marks
Division 1 Initial registration
7.1 Period in which a trade mark can be registered 53
7.2 Particulars to be entered in the Register 54
Division 2 Renewal of registration (general)
7.3 Period for request for renewal 54
7.4 Notice of renewal due -- when and how given 55
7.5 Notice of renewal 55
Division 3 Renewal of registration (registration delayed for 10 or more years after filing date)
7.6 Prescribed period (Act s 80A (3)) 55
5> 7.7 Notice about renewal (Act s 80C) 55
5> 7.8 Notice of renewal (Act s 80E) 56
Part 8 Amendment and cancellation of registration
8.1 Notice of cancellation 57
8.1A Notice of revocation 57
8.2 Amendment or cancellation -- matters for the court 58
8.3 Grounds for application for rectification of Register -- registered trade mark identical etc to trade mark protected under Madrid Protocol 58
Part 9 Removal of trade mark from register for non‑use
9.1 Applications for removal etc 59
9.2 Notification of applications 59
9.3 Notice of opposition to removal 59
9.4 Opposition proceedings before the Registrar 60
Part 10 Assignment and transmission of trade marks
10.1 Applications for assignment etc to be recorded or entered 61
10.2 Recording of assignment etc -- trade marks not registered 61
10.3 Particulars of recorded assignment or transmission to be published 62
10.4 Recording of assignment etc of registered trade marks 63
10.5 Notice to persons recorded as claiming right or interest in trade marks 64
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 65
11.2 Amendment of name, address and address for service -- claims not in the Register 65
11.3 Cancellation of particulars -- claimed interests or rights 66
Part 13 Importation of goods infringing Australian trade marks
13.1 Notice of objection to importation ¾ accompanying documents 68
13.2 Notice of objection to importation -- authorised users 68
13.3 Period for compliance with Customs CEO's request for information etc 69
13.4 Modification of the Act in its application to Norfolk Island 69
13.5 Modification of the Act in its application to Christmas Island 69
13.6 Modification of the Act in its application to Cocos (Keeling) Islands 69
Part 16 Certification trade marks
16.1 Copy of rules to be filed 70
16.2 Documents to be sent to Commission 70
16.3 Initial assessment of applications by Commission 70
16.4 Holding of conferences 72
16.5 Consideration of applications 73
16.6 Criteria for Commission consideration of rules 74
5> 16.7 Matters to be included in advertisement of adverse decision 74
16.8 Applications to vary rules 75
5> 16.9 Consideration of applications to vary rules 75
5> 16.10 Decision on variation of rules 75
5> 16.10A Assignment of unregistered certification trade marks 76
16.11 Assignment of registered certification trade marks 77
16.12 Publication of rules 78
Part 17 Defensive trade marks
17.1 Evidence in support of applications 80
17.2 Defensive trade mark based on protected international trade mark 80
Part 17A Protected international trade marks under the Madrid Protocol
Division 1 General
17A.1 Purpose of Part 82
17A.2 Definitions for Part 82
17A.3 Meaning of priority date 83
17A.4 Meaning of date of effect 84
Division 2 Application for international registration of a trade mark
17A.5 Purpose of Division 84
17A.6 Eligibility to apply for international registration 85
17A.7 Application for international registration 85
17A.8 Functions of Registrar 85
17A.9 Time limit for Registrar to send application to International Bureau 86
17A.10 Subsequent designations 86
Division 3 International registration designating Australia
17A.11 Purpose of Division 87
17A.12 Registrar to examine, and report on, IRDA 87
17A.13 Use of trade mark 87
17A.14 Specification of goods and services 88
17A.14A Representation of trade marks 88
17A.15 Claim for priority 88
17A.16 Examination of IRDA -- report to holder 89
17A.17 Examination -- holder's response to report 90
17A.18 Examination -- further report to holder 90
17A.19 Examination -- additional requirements 91
17A.20 Period within which final decision on examination must be notified 91
17A.21 Deferment of acceptance 92
17A.22 Period for which acceptance is deferred 94
17A.23 Expedited examination 96
17A.24 Final decision on examination 97
17A.25 Notice of final decision on examination 97
17A.26 Appeal 98
17A.27 Revocation of acceptance 98
17A.28 Grounds for rejecting IRDA 99
17A.29 Opposition 100
17A.30 Extension of time for filing 100
17A.31 Grounds for opposing IRDA 100
17A.32 Circumstances in which opposition may proceed in name of a person other than the person who filed the notice 101
17A.33 Opposition proceedings 101
17A.34 Decision on opposition 102
17A.35 Appeal 102
international registration17A.35A Cancellation 103
17A.35B Duties and powers of Registrar -- notification of limitation by International Bureau 103
17A.36 When trade mark becomes a protected international trade mark 104
17A.37 Notice that trade mark is a protected international trade mark 106
17A.38 Disclaimer 107
Division 4 Protected international trade marks -- rights and protection
17A.39 Rights given to, and protection of, protected international trade marks 107
17A.40 Circumstances in which action may not be brought 109
Division 5 Protected international trade marks -- amendment or cessation of protection
because of cancellation, limitation or non‑renewal of international registration17A.41 Cancellation of international registration 109
17A.41A Duties and powers of Registrar -- notification of limitation by International Bureau 109
17A.42 Failure to renew international registration 111
Registrar17A.42A Registrar's powers to amend or cease protection 111
17A.42B Notice to be given 113
17A.42C Hearings and procedure 114
17A.42D Effect of amendment or cessation of protection by Registrar 114
17A.42E Registrar to notify Customs CEO 115
17A.42F Appeal to Federal Court 116
prescribed court17A.43 Amendment or cessation of protection -- contravention of condition 116
17A.44 Amendment or cessation of protection -- loss of exclusive rights to use trade mark 116
17A.45 Amendment or cessation of protection -- other specified grounds 117
17A.46 Amendment or cessation may not be granted if holder not at fault etc 118
17A.47 Duties and powers of Registrar 119
17A.48 Cessation of protection for non‑use 119
Division 6 Collective and certification trade marks
17A.49 Collective trade marks 121
17A.50 Certification trade marks 122
Division 7 Transformation of cancelled international registrations
17A.51 Application of Division 123
17A.52 Transformation of IRDA 124
17A.53 Transformation of protected international trade mark 124
Division 8 Concurrence between registration and international registration
17A.54 Effect of registration and protection of the same trade mark 125
17A.55 Effect of cancellation, removal or expiry of registered trade mark 126
Division 9 Change in ownership of international registration
17A.56 Application of Division 126
17A.57 Collective trade marks 126
17A.58 Protected certification trade marks 126
17A.58A Unprotected certification trade marks 127
17A.59 Trade marks affected by claimed interests and rights 127
17A.60 Recording change of ownership 128
Division 10 Recording of claimed interests and rights
17A.61 Application to have claims recorded 128
17A.62 Recording of claims 128
17A.63 Notification of matters affecting trade mark 128
17A.64 Record not proof etc of existence of right etc 128
17A.65 Amendment or cancellation of record 129
Division 11 Miscellaneous
17A.66 Record of International Registrations 129
17A.67 Inspection 130
17A.68 Evidence -- the Record of International Registrations 130
17A.69 Evidence -- international instruments 131
17A.70 Correction of errors or omissions in Record of International Registrations 131
17A.71 Passing off actions 132
17A.72 Documents to be made available for public inspection 132
17A.73 Security for costs 132
Part 19 Administration
19.1 Trade Marks Office and sub‑offices -- business hours 133
19.2 Persons to whom Registrar may delegate (Act, s 206 (1)) 133
Part 20 Registered trade marks attorneys
Division 1 General
20.1 Interpretation 134
Division 2 Obtaining registration for first time
20.2 Form of application 134
20.3 Evidence that applicant meets registration requirements 134
20.4 Certificate of registration 135
20.5 Evidence of academic qualifications 135
20.6 Academic qualifications 136
20.7 Evidence of knowledge requirements 136
20.8 Knowledge requirements 136
20.9 Exemption from a requirement in Schedule 5 to Patents Regulations 138
20.10 Prescribed offences 138
20.11 Application of Schedule 5 to Patents Regulations 139
Division 3 Accreditation of courses of study
20.12 Accreditation of courses of study 139
Division 4 Board examinations
20.13 Board examinations 139
Division 5 Maintaining registration, removal from Register and returning to Register
20.14 Maintaining registration, removal from Register and returning to Register 140
Division 6 Discipline
20.15 Discipline 140
Division 7 Rights of registered trade marks attorneys
20.16 Lien 141
Part 21 Miscellaneous
Division 1 Applications and other documents
21.1 Compliance with instructions on approved forms 142
21.2 Filing of documents -- requirements as to form 142
21.3 Filing of documents -- common requirements 143
21.4 Filing of documents -- treatment of non‑complying documents 143
21.5 Filing of documents -- date of receipt to be marked 143
21.6 Declarations 144
21.7 Declarations -- additional material 145
21.8 Notification of service 146
21.9 Notice of withdrawal of applications etc 146
21.10 Withdrawal of application etc -- Registrar's notice to applicants 146
21.11 Change of address for service -- notice to interested persons 147
21.11A Documents to be made available for public inspection 147
Division 2 Proceedings before the Registrar
21.12 Applications for costs 148
21.13 Determination of costs 149
21.14 Conduct of proceedings generally 149
21.15 Hearings by Registrar 150
21.16 Registrar not required to hold hearings 151
21.17 Evidence in proceedings 151
21.18 Documents not in English 152
21.19 Registrar may use information available 152
21.20 Statements of reasons for decision 152
Division 3 General
21.21 What fees are payable 153
21.21A No action permitted until fee paid 154
21.22 How fees are to be paid &nb