Trade Marks Amendment Act 2006
No. 114, 2006
An Act to amend the Trade Marks Act 1995, and for related purposes
Contents
1............ Short title............................................................................................ 1
2............ Commencement.................................................................................. 1
3............ Schedule(s).......................................................................................... 2
Schedule 1—Amendments 3
Part 1—Amendments commencing on Royal Assent 3
Trade Marks Act 1995 3
Part 2—Amendments commencing on Proclamation 13
Trade Marks Act 1995 13
Part 3—Minor and technical amendments 23
Trade Marks Act 1995 23
Trade Marks Amendment Act 2006
No. 114, 2006
An Act to amend the Trade Marks Act 1995, and for related purposes
[Assented to 23 October 2006]
The Parliament of Australia enacts:
1 Short title
This Act may be cited as the Trade Marks Amendment Act 2006.
2 Commencement
(1) Each provision of this Act specified in column 1 of the table commences, or is taken to have commenced, in accordance with column 2 of the table. Any other statement in column 2 has effect according to its terms.
Commencement information
Column 1
Column 2
Column 3
Provision(s)
Commencement
Date/Details
1. Sections 1 to 3 and anything in this Act not elsewhere covered by this table
The day on which this Act receives the Royal Assent.
23 October 2006
2. Schedule 1, Part 1
The day on which this Act receives the Royal Assent.
23 October 2006
3. Schedule 1, Part 2
A single day to be fixed by Proclamation.
However, if any of the provision(s) do not commence within the period of 6 months beginning on the day on which this Act receives the Royal Assent, they commence on the first day after the end of that period.
27 March 2007
(see F2007L00392)
4. Schedule 1, Part 3
The day on which this Act receives the Royal Assent.
23 October 2006
Note: This table relates only to the provisions of this Act as originally passed by the Parliament and assented to. It will not be expanded to deal with provisions inserted in this Act after assent.
(2) Column 3 of the table contains additional information that is not part of this Act. Information in this column may be added to or edited in any published version of this Act.
3 Schedule(s)
Each Act that is specified in a Schedule to this Act is amended or repealed as set out in the applicable items in the Schedule concerned, and any other item in a Schedule to this Act has effect according to its terms.
Schedule 1—Amendments
Part 1—Amendments commencing on Royal Assent
Trade Marks Act 1995
1 Readers guide (after the material relating to Parts 15, 16 and 17 in the summary of the Act)
Insert:
Part 17A: Enables the making of regulations to enable the performance of the obligations of Australia, or to obtain for Australia any advantage or benefit, under the Madrid Protocol. Those regulations prevail over this Act to the extent of any inconsistency.
2 Readers guide (list of terms defined in section 6)
Insert the following terms in their appropriate alphabetical positions:
“month”
“registered trade marks attorney”
“working day”.
3 Section 6
Insert:
month: the end of a period with a length expressed in months is worked out under section 6A.
4 After section 6
Insert:
6A Periods expressed in months
For the purposes of this Act, a period expressed in months and dating from an event ends:
(a) on the day, in the relevant subsequent month, which has the same number as the day of the event; or
(b) if the relevant subsequent month has no day with the same number—on the last day of the month.
Note: This provision displaces section 36 of the Acts Interpretation Act 1901, and is in accordance with the Madrid Protocol. The difference between the two occurs when the initiating event is on the last day of a calendar month, which has fewer days than the month in which the period ends. For example, a period of 3 months from an event on 30 September ends on 30 December under this rule; it would end on 31 December under the Acts Interpretation Act 1901 provision.
5 Application
The amendments made by items 3 and 4 apply to:
(a) periods starting after the day on which this Act receives the Royal Assent; and
(b) periods that started on or before that day and that have not ended by that day.
6 Paragraph 15(a)
After “wine is made”, insert “from grapes grown”.
7 Subsection 22(1)
After “any rights”, insert “appearing in the Register to be”.
8 Transitional
The amendment made by item 7 does not apply to rights vested in another person but not appearing in the Register until the end of 6 months after the day on which this Act receives the Royal Assent.
9 At the end of section 22
Add:
(3) Equities in relation to a registered trade mark may be enforced against the registered owner, except to the prejudice of a purchaser in good faith for value.
Note: For registered owner and registered trade mark see section 6.
10 At the end of subsection 27(2)
Add:
; and (c) be made by a person or persons having legal personality.
11 Application and saving
(1) The amendment made by item 10 applies to applications for registration of trade marks made after the day on which this Act receives the Royal Assent.
(2) That amendment does not affect the validity of the registration of a trade mark:
(a) registered before the day on which this Act receives the Royal Assent; or
(b) registered on or after that day as a result of an application made before that day.
12 After subsection 27(2)
Insert:
(2A) Despite paragraph (2)(c), an application for registration of a collective trade mark need not be made by a person or persons having legal personality.
Note: For collective trade mark see section 162.
13 Application
The amendment made by item 12 applies to applications for registration of collective trade marks made after the day on which this Act receives the Royal Assent.
14 Paragraph 31(b)
Omit “under Division 2”, substitute “under this Act”.
15 At the end of section 31
Add:
Note: For this Act see section 6.
16 Paragraph 33(1)(b)
After “grounds”, insert “under this Act”.
17 Subsection 33(1) (note)
Repeal the note, substitute:
Note: For this Act see section 6.
18 Paragraph 33(3)(b)
After “grounds”, insert “under this Act”.
19 At the end of subsection 33(3)
Add:
Note: For this Act see section 6.
20 Application
The amendments made by items 16 to 19 apply to:
(a) applications for registration of trade marks made after the commencement of this item; and
(b) applications for registration of trade marks pending at that commencement.
21 Subsection 41(6)
Omit “not inherently”, substitute “not to any extent inherently”.
22 Subsection 52(4)
Omit “Division 2”, substitute “this Act”.
23 At the end of subsection 52(4)
Add:
Note: For this Act see section 6.
24 Section 55
Before “Unless”, insert “(1)”.
25 At the end of section 55
Add:
(2) Without limiting subsection (1), if the application was opposed on the ground specified in paragraph 62(a) (that the application, or a document filed in support of the application, was amended contrary to this Act), the Registrar may revoke the acceptance of the application and examine the application again under section 31.
Note: For examine and this Act see section 6.
26 Application
The amendment made by item 25 applies to:
(a) applications for registration of trade marks made after the commencement of this item; and
(b) applications for registration of trade marks pending but not accepted at that commencement.
27 Section 57
Omit “Division 2 of Part 4”, substitute “this Act”.
28 At the end of section 57
Add:
Note: For this Act see section 6.
29 After section 58
Insert:
58A Opponent’s earlier use of similar trade mark
(1) This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a) subsection 44(4); or
(b) a similar provision of the regulations made for the purposes of Part 17A.
Note: Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.
(2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:
(a) first used the similar trade mark in respect of:
(i) similar goods or closely related services; or
(ii) similar services or closely related goods;
before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and
(b) has continuously used the similar trade mark in respect of those goods or services since that first use.
Note: For predecessor in title see section 6.
30 Application
The amendment made by item 29 applies to:
(a) applications for registration of trade marks made after the commencement of this item; and
(b) applications for registration of trade marks pending but not accepted at that commencement.
31 Paragraph 60(a)
Repeal the paragraph, substitute:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
32 Section 60 (notes)
Repeal the notes, substitute:
Note: For priority date see section 12.
33 Paragraph 61(1)(b)
Repeal the paragraph, substitute:
(b) a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated;
if the relevant goods are similar to the designated goods or the use of a trade mark in respect of the relevant goods would be likely to deceive or cause confusion.
34 Application
The amendment made by item 33 applies to:
(a) applications for registration of trade marks made after the commencement of this item; and
(b) applications for registration of trade marks pending but not accepted at that commencement.
35 At the end of Division 2 of Part 5
Add:
62A Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
36 Application
The amendment made by item 35 applies to:
(a) applications for registration of trade marks made after the commencement of this item; and
(b) applications for registration of trade marks pending but not accepted at that commencement.
37 Section 86
After “person”, insert “or the Registrar”.
38 Subsection 87(1)
After “person”, insert “or the Registrar”.
39 Subsection 88(1)
After “person”, insert “or the Registrar”.
40 Paragraph 88(2)(a)
Omit “Division 2 of Part 5”, substitute “this Act”.
41 Paragraph 88(2)(c)
Omit all the words after “confusion”.
42 Subsection 88(2) (note 2)
Repeal the note, substitute:
Note 2: For file, registered owner and this Act see section 6.
43 After section 88
Insert:
88A Applications by Registrar
The Registrar must not make an application under section 86, 87 or 88 unless he or she considers the application desirable in the public interest.
44 Subsection 90(1)
Omit “A”, substitute “An aggrieved”.
45 Subsections 90(2) and (3)
Repeal the subsections, substitute:
(2) In relation to an application made by an aggrieved person, the Registrar may appear before the court and be heard at his or her discretion unless the court directs the Registrar to appear before the court.
(3) If the application is made by an aggrieved person, the applicant must give to the Registrar a copy of any order made by the court under this Division.
(4) The Registrar must comply with any order made by the court under this Division.
46 Subsection 92(1)
Repeal the subsection, substitute:
(1) Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.
47 Subsection 92(3)
Omit “aggrieved”.
48 Subsection 92(4) (note)
Repeal the note, substitute:
Note 1: For file and month see section 6.
Note 2: If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.
49 At the end of section 101
Add:
(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a) similar goods or closely related services; or
(b) similar services or closely related goods;
to those to which the application relates.
Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2: For registered owner see section 6.
50 Subsections 132(4) and (5)
Omit “2 years”, substitute “4 years”.
51 Application
The amendments made by item 50 apply to notices given under section 132 of the Trade Marks Act 1995 after the commencement of this item.
52 Subsection 177(1) (note 3)
Omit “the grounds”, substitute “the main grounds”.
53 Subsection 181(1)
Repeal the subsection.
54 Subsection 181(2)
Omit “(as affected by subsection (1))”.
55 Section 187 (note)
Repeal the note, substitute:
Note: Division 2 of Part 4 sets out the main grounds for rejecting an application but section 41 does not apply to defensive trade marks (see section 186). Division 2 of Part 5 sets out the main grounds for opposing registration.
56 Section 188
Repeal the section.
57 Paragraph 197(a)
Omit “further”.
58 Subsection 226(1)
After “issue”, insert “(electronically or otherwise)”.
59 Subsection 226(2)
Repeal the subsection.
60 Subsection 226(3)
After “publish”, insert “(electronically or otherwise)”.
61 Before section 227
Insert:
226B Certain proceedings do not lie
No criminal or civil action or proceeding lies against the Registrar, a Deputy Registrar or an employee for publishing, or otherwise making available, reasonably and in good faith, information required or permitted by this Act to be published or otherwise made available.
Note: For employee see section 6.
62 Application
The amendment made by item 61 applies to information published or otherwise made available after the commencement of this item.
Part 2—Amendments commencing on Proclamation
Trade Marks Act 1995
63 Readers guide (list of terms defined in section 6)
Omit the following term:
“association”.
64 Section 6 (definition of association)
Repeal the definition.
65 Section 6 (definition of date of registration)
Repeal the definition, substitute:
date of registration means:
(a) in relation to the registration of a trade mark in respect of particular goods or services other than a trade mark to which paragraph (b) applies—the day from which the registration of the trade mark in respect of those goods or services is taken to have had effect under subsection 72(1) or (2); or
(b) in relation to a trade mark to which subsection 239A(3) applies—the day referred to in subsection 239A(4).
66 Section 6 (paragraph (b) of the definition of filing date)
Repeal the paragraph, substitute:
(b) in relation to a divisional application for the registration of a trade mark—the filing date of the application that is the parent application (within the meaning of section 45) in relation to the divisional application; or
67 Subsection 27(5)
Omit “(other than an application under section 51 for the registration of 2 or more trade marks as a series)”.
68 Division 3 of Part 4
Repeal the Division, substitute:
Division 3—Divisional applications
45 Divisional applications
(1) If a single application for the registration of a trade mark in respect of certain goods and/or services is pending (parent application), the applicant may make another application (divisional application) for the registration of the trade mark in respect of some only of the goods and/or services in respect of which registration is sought under the parent application.
Note: For applicant and pending see section 6.
(2) To avoid doubt, the parent application may itself be a divisional application.
Note: A divisional application may be made by a person who has become the applicant in relation to the parent application because of subsection 108(2) (which deals with assignment and transmission).
46 Rules relating to divisional applications
(1) A divisional application must:
(a) be for the registration of the trade mark to which the parent application relates; and
(b) specify the goods and/or services to which it relates; and
(c) specify the goods and/or services that are to remain in the parent application.
Note: For divisional application and parent application see section 45.
(2) When a divisional application is made, the Registrar must, unless the parent application has lapsed, amend the parent application by excluding the goods and/or services in respect of which the divisional application is made.
Note: Section 204 requires the Registrar, where no time or period is specified for doing a thing, to do the thing as soon as practicable. However, it is possible that a parent application will lapse before it is practicable for the Registrar to amend it under subsection (2) of this section.
69 Application
The amendments made by items 66 and 68 apply to applications made after the commencement of this item.
70 Subsection 51(1)
Omit “similar goods or similar services within a single class”, substitute “goods and/or services”.
71 Paragraphs 51(1)(c) and (d)
Repeal the paragraphs, substitute:
(c) the colour of any part of the trade mark.
72 Application
The amendments made by items 70 and 71 apply to applications for registration made after the commencement of this item.
73 After section 51
Insert:
51A Linking series applications
(1) Subsection (2) applies if:
(a) before the commencement of this section, 2 or more applications (series applications) were made each seeking the registration of the same 2 or more trade marks in respect of goods or services of different classes; and
(b) the filing date of each of the series applications is the same; and
(c) each of the trade marks has the same owner.
Note: For filing date see section 6.
(2) The owner of the trade marks may apply to the Registrar, in writing, to have:
(a) the series applications; or
(b) so many of the series applications as are identified in the application to the Registrar;
dealt with under this Act as if they were one application for the registration of the trade marks in respect of all goods and services specified in the series applications or the identified series applications.
Note: For this Act see section 6.
(3) If an application is made under subsection (2), the Registrar must deal with the series applications that are the subject of the application under that subsection as if they were one application.
74 Subsection 63(1)
Omit “written”.
75 Subsection 63(1)
Omit “or 65”, substitute “, 65 or 65A”.
76 Paragraph 63(2)(b)
Omit “in writing”.
77 Section 65
Repeal the section, substitute:
65 Amendment after particulars of application have been published—request for amendment not advertised
(1) If the particulars of the application have been published under section 30, the application may be amended as provided in this section.
(2) An amendment may be made to the representation of the trade mark if the amendment does not substantially affect the identity of the trade mark as at the time when the particulars of the application were published.
(3) An amendment may be made to an application to which section 51 applies to remove one or more trade marks from the application.
(4) An amendment may be made to correct an error in the classification of goods or services specified in the application.
(5) An amendment may be made to add to the class or classes of goods or services specified in the application one or more other classes of goods or services if the Registrar is of the opinion that it is fair and reasonable in all the circumstances to do so.
(6) An amendment may be made to change the type of registration sought in the application (for example, an application for the registration of a trade mark as a certification trade mark may be amended to an application for registration as a collective trade mark).
(7) An amendment may be made to any other particular specified in the application unless the amendment would have the effect of extending the rights that (apart from the amendment) the applicant would have under the registration if it were granted.
65A Amendment after particulars of application have been published—request for amendment advertised
(1) This section applies if:
(a) the particulars of the application have been published under section 30; and
(b) the amendment requested is not an amendment which could be made under section 65.
(2) The application may be amended to correct a clerical error or an obvious mistake in the application if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to make the amendment under this section.
(3) Subject to subsection (5), the Registrar must advertise the request for the amendment in the Official Journal.
(4) Subject to subsection (5), a person may, as prescribed, oppose the granting of the request for the amendment.
(5) If the Registrar is satisfied that a request for an amendment would not be granted even in the absence of opposition under subsection (4):
(a) the Registrar need not advertise the request in accordance with subsection (3); and
(b) the request cannot be opposed, despite subsection (4); and
(c) the Registrar must refuse to grant the request.
78 Section 66
Omit “written” (wherever occurring).
79 After section 66
Insert:
66A Registrar may require certain requests to be in writing
The Registrar may require a request under section 63 or 66 to be in writing if the Registrar is of the opinion that the amendment requested is not minor.
80 Paragraph 78(b)
Omit “12 months”, substitute “6 months”.
81 Section 79
Omit “12 months”, substitute “6 months”.
Note: The heading to section 79 is altered by omitting “12” and substituting “6”.
82 Application
The amendments made by items 80 and 81 apply to trade marks whose registration expires at least 12 months after the commencement of this item.
83 After section 82
Insert:
82A Linking series registrations
(1) Subsection (2) applies if:
(a) before the commencement of this section, 2 or more applications were made each seeking the registration of the same 2 or more trade marks in respect of goods or services of different classes; and
(b) the filing date of each of those applications is the same; and
(c) the trade marks are registered trade marks for the purposes of this Act with the same registered owner.
Note: For filing date, registered owner and registered trade mark see section 6.
(2) The registered owner may apply to the Registrar, in writing, to have those trade marks, or so many of those trade marks as are identified in the application to the Registrar, dealt with under this Act as if they were registered as a series in one registration in respect of all goods and services in respect of which the trade marks, or the identified trade marks, were registered.
Note: For this Act and registered owner see section 6.
(3) If an application is made under subsection (2), the Registrar must deal with the trade marks, or the identified trade marks, as if they were one registration.
84 Subsection 128(1)
Omit “12 months”, substitute “6 months”.
85 Application
The amendment made by item 84 applies to trade marks whose registration expires at least 12 months after the commencement of this item.
86 Subsection 133(3)
Repeal the subsection, substitute.
(3) Subject to subsection (3A), the Customs CEO may decide not to seize the goods unless he or she has been given by the objector (or by one or more of the objectors) a written undertaking acceptable to the Customs CEO to repay to the Commonwealth the expenses of seizing the goods.
Note: For objector see section 6.
(3A) The Customs CEO may decide not to seize the goods unless he or she has been given by the objector (or one or more of the objectors), instead of an undertaking, security in an amount that the Customs CEO considers sufficient to repay to the Commonwealth the expenses of seizing the goods if:
(a) an amount payable under an undertaking given by the objector (or one or more of the objectors) in relation to other goods has not been paid in accordance with the undertaking; and
(b) the Customs CEO considers it reasonable in all the circumstances to require the security.
(3B) An undertaking may be withdrawn or varied if the Customs CEO consents in writing to a written request from the objector or objectors to do so.
87 At the end of section 133
Add:
(5) In this section:
expenses of seizing goods means the expenses that may be incurred by the Commonwealth if the goods were seized.
88 Section 141
Omit “subsection 133(3)”, substitute “subsection 133(3A)”.
89 After section 141
Insert:
141A Failure to comply with undertaking etc.
(1) If an amount payable under an undertaking in relation to goods covered by a notice given under section 132 is not paid in accordance with the undertaking, the Customs CEO may decide not to seize goods covered by the notice until the amount owing is paid.
(2) An amount not paid under an undertaking:
(a) is a debt due by the objector, or by the objectors jointly or each of them separately, to the Commonwealth; and
(b) may be recovered by an action taken in a court of competent jurisdiction.
Note: For objector see section 6.
(3) If the amount paid under an undertaking in relation to goods covered by a notice given under section 132 is in accordance with the undertaking but is not sufficient to meet the expenses incurred by the Commonwealth as a result of the action taken by the Customs CEO under this Part because of the notice, the amount of the difference between those expenses and the amount paid:
(a) is a debt due by the objector, or by the objectors jointly or each of them separately, to the Commonwealth; and
(b) may be recovered by an action taken in a court of competent jurisdiction.
90 Transitional provision
(1) This item applies if:
(a) before the commencement of this item, a notice under section 132 of the unamended Trade Marks Act was in force in relation to goods; and
(b) before the commencement of this item, a security under subsection 133(3) of that Act was given to the Customs CEO to be applied towards the expenses of the Commonwealth incurred in relation to the goods under Part 13 of that Act; and
(c) after the commencement of this item, the Customs CEO has been given a written undertaking under subsection 133(3) of the amended Trade Marks Act to repay those expenses to the Commonwealth; and
(d) the undertaking is in force.
(2) On application in writing to the Customs CEO by the objector or objectors concerned, the Customs CEO must:
(a) if none of the security has been applied towards the expenses mentioned in paragraph (1)(b)—return the security to the person who gave it; or
(b) otherwise—refund the amount of the balance of the security to the person who gave it.
(3) In this item:
amended Trade Marks Act means the Trade Marks Act 1995 as in force immediately after the commencement of this item.
unamended Trade Marks Act means the Trade Marks Act 1995 as in force immediately before the commencement of this item.
91 Section 162 (note)
Repeal the note.
92 At the end of Division 2 of Part 22
Add:
239A Linked trade marks
(1) Subsection (2) applies if:
(a) the same trade mark was registered before 1 January 1996 in respect of goods or services of different classes; and
(b) all the applications for the trade marks were lodged (or were taken under the repealed Act to have been lodged) on the same day with the Trade Marks Office; and
(c) the trade marks are registered trade marks for the purposes of this Act with the same registered owner.
Note: For registered owner and registered trade mark see section 6.
(2) The registered owner may apply to the Registrar, in writing, to have those trade marks, or so many of those trade marks as are identified in the application, dealt with under this Act as if they were one registered trade mark in relation to the goods or services in respect of which the trade marks, or the identified trade marks, were registered.
(3) If an application is made under subsection (2), the Registrar must deal with the trade marks, or the identified trade marks, as if they were a single trade mark.
(4) The date of registration of the single trade mark is taken to be the day on which the applications mentioned in paragraph (1)(b) were lodged, or were taken to have been lodged (as the case may be), with the Trade Marks Office under the repealed Act.
Part 3—Minor and technical amendments
Trade Marks Act 1995
93 Readers guide (appendix)
Repeal the appendix, substitute:
94 At the end of subsection 29(1)
Add:
Note: For month see section 6.
95 Section 78 (note)
Before “Register”, insert “month and”.
96 At the end of section 79
Add:
Note: For month see section 6.
97 At the end of section 80F
Add:
Note: For month see section 6.
98 At the end of subsection 80G(1)
Add:
Note: For month see section 6.
99 Subsection 100(1) (note 2)
After “file”, insert “, month”.
100 At the end of section 128
Add:
Note: For month see section 6.
101 Subsection 143(2) (note)
Omit “Note”, substitute “Note 1”.
102 At the end of subsection 143(2)
Add:
Note 2: For month see section 6.
103 At the end of subsection 224(5)
Add:
Note: For month see section 6.
[Minister’s second reading speech made in—
Senate on 21 June 2006
(94/06)
House of Representatives on 12 October 2006]
