ORGANISATION MONDIALE  
DU COMMERCE  IP/N/1/AUS/T/4 
13 août 2007 
 
 (07-3392) 
Conseil des aspects des droits de propriété  
intellectuelle qui touchent au commerce Original:   anglais 
 
 
 
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À LA  
PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE  
DE L'ARTICLE 63:2 DE L'ACCORD 
 
AUSTRALIE 
   Le présent document contient le texte
1 des lois et réglementations ci-après, notifiées par 
l'Australie au titre de l'article 63:2 de l'Accord (voir le document IP/N/1/AUS/2).  
 
 Page  
- Règlement de 1995 sur les marques – 1995 n° 341 modifiée –  
Dans sa version codifiée en vigueur le 1er novembre 1998 (y compris les modifications jusqu'au 
Règlement n° 265 de 1998) 2 
- Règlement de 1997 sur les marques (Modification) – 1997 n° 346 –  
Daté du 8 décembre 1997 70 
- Règlement n° 3 de 1998 portant modification du Règlement sur les marques – 1998 n° 343  
– Daté du 17 décembre 1998 76 
- Règlement n° 4 de 1998 portant modification du Règlement sur les marques – 1998 n° 346  
– Daté du 17 décembre 1998 80 
- Règlement n° 1 de 1999 portant modification du Règlement sur les marques – 1999 n° 153  
– Daté du 7 juillet 1999 88 
- Règlement n° 2 de 1999 portant modification du Règlement sur les marques – 1999 n° 186  
– Daté du 25 août 1999 91 
- Règlement n° 3 de 1999 portant modification du Règlement sur les marques – 1999 n° 196  
– Daté du 9 septembre 1999 99 
- Règlement n° 4 de 1999 portant modification du Règlement sur les marques – 1999 n° 350  
– Daté du 15 décembre 1999 102 
- Règlement n° 1 de 2001 portant modification du Règlement sur les marques – 2001 n° 33  
– Daté du 22 février 2001 105 
- Règlement n° 2 de 2001 portant modification du Règlement sur les marques – 2001 n° 185  
– Daté du 28 juin 2001 141 
- Règlement n° 3 de 2001 portant modification du Règlement sur les marques – 2001 n° 247  
– Daté du 13 septembre 2001 144 
- Règlement n° 1 de 2002 portant modification du Règlement sur les marques – 2002 n° 318  
– Daté du 12 décembre 2002 154 
- Règlement n° 1 de 2003 portant modification du Règlement sur les marques – 2003 n° 214  
– Daté du 14 août 2003 157 
- Règlement n° 1 de 2004 portant modification du Règlement sur les marques – 2004 n° 24  
– Daté du 19 février 2004 160 
- Règlement n° 2 de 2004 portant modification du Règlement sur les marques – 2004 n° 194  
– Daté du 24 juin 2004 162 
                                                      
1 En anglais seulement. IP/N/1/AUS/T/4 
Page 2  
 
  
 
 
Trade Marks Regulations 1995  
Statutory Rules 1995   No. 341 as amended  
made under the  
Trade Marks Act 1995 
__________________________________________________________________________________ 
   Consolidated as in force on 1 November 1998 
 
(includes amendments up to SR 1998 No. 265)  Prepared by the Office of Legislative Drafting, Attorney-General’s Department, Canberra  IP/N/1/AUS/T/4 
 Page 3 
 
 
  
 
 
Trade Marks Regulations 1995  Statutory Rules 1995   No. 341 as amended 
 made under the 
 
Trade Marks Act 1995 
 
 
Contents 
 
Part 1 Preliminary 
 
 1.1 Name of regulations [ see Note 1]  
 1.2 Commencement  
 
Part 2 Interpretation 
  2.1 Interpretation  
 
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 4 Application for registration 
 
 4.1 Applications — approved form   4.2 Applications — 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   4.16 Divisional applications relating to pa rt of trade mark — period for application  IP/N/1/AUS/T/4 
Page 4  
 
   4.17 Divisional applications relating to  excluded goods and/or services — prescribed 
periods  
 4.18 Request for expedited examination of application   4.19 Expedited examinations   
 
Part 5 Opposition to registration 
 
 5.1 Time for filing notice of opposition  
 5.2 Extension of time for filing — grounds   5.3 Extension of time for filing — applications   
 5.4 Extension of time for filing — grant of extension  
 5.5 Copy of earlier application to be available to opponent   5.6 Opposition proceedings   5.7 Evidence in support   5.8 Notice that opponent will not rely on evidence in support  
 5.9 Evidence in answer  
 5.10 Period for service of a copy of the evidence in answer   5.11 Notice that applicants will not rely on evidence in answer  
 5.12 Evidence in reply to evidence in answer   5.13 Notice that opponents will not rely on evidence in reply to evidence in answer  
 5.14 Hearing of opposition  
 5.15 Extension of period to serve evidence and service of further evidence  
 5.16 Conduct of opposition proceedings generally  
 5.17 Registrar to give notice of dismissal of proceedings  
 
Part 6 Amendment of application for registr ation of a trade mark and other documents 
  6.1 Amendment of applications by Registrar  
 6.2 Request to amend befo re publication of details  
 6.3 Filing of declarations   6.4 Notification of amendments  
 
Part 7 Registration of trade marks 
 
 7.1 Period in which a trade mark can be registered  
 7.2 Particulars to be entered in the Register   7.3 Period for request for renewal  
 7.4 Notice of renewal due — when and how given  
 7.5 Notice of renewal  
 
Part 8 Amendment and cancellation of registration  
 8.1 Notice of cancellation  
 8.2 Amendment or cancellation — matters for the court  
 
Part 9 Removal of trade mark from register for non-use  
 9.1 Applications for removal etc  
 9.2 Notification of applications  
 9.3 Notice of opposition to removal   9.4 Opposition proceedings before the Registrar  
  IP/N/1/AUS/T/4 
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  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 Notice to persons recorded as claimi ng 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 
  13.1 Notice of objection to importation — accompanying documents  
 13.2 Notice of objection to importation — authorised users   13.3 Period for compliance with Comptroller’s request for information etc   13.4 Modification of the Act in its application to Norfolk Island   13.5 Modification of the Act in its application to Christmas Island  
 13.6 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 sent to Commission with applications for registration  
 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 a dvertisement of adverse decision  
 16.8 Applications to vary rules  
 16.9 Consideration of applications to vary rules   16.10 Matters to be included in notices of variation   16.11 Assignment of registered certification trade marks  
 
Part 17 Defensive trade marks 
 
 17.1 Evidence in support of applications  
 
Part 19 Administration  
 19.1 Trade Marks Office and sub-offices — business hours  
 19.2 Persons to whom Registra r may delegate (Act, s 206 (1))  
 
Part 21 Miscellaneous  
 Division 1 Applications and other documents 
 
 21.1 Compliance with instructions on approved forms  
 21.2 Filing of documents — requirements as to form   21.3 Filing of documents — common requirements  IP/N/1/AUS/T/4 
Page 6  
 
   21.4 Filing of documents — treatment of non-complying documents  
 21.5 Filing of documents — date of receipt to be marked   21.6 Declarations   21.7 Declarations — additional material   21.8 Notification of service  
 21.9 Notice of withdrawal of applications etc  
 21.10 Withdrawal of application etc — Registrar’s notice to applicants   21.11 Change of address for service — notice to interested persons  
 
 Division 2 Proceedings before the Registrar 
  21.12 Applications for costs  
 21.13 Determination of costs   21.14 Conduct of proceedings generally   21.15 Hearings by Registrar  
 21.16 Registrar not required to hold hearings  
 21.17 Evidence in proceedings   21.18 Documents not in English   21.19 Registrar may use information available   21.20 Statements of reasons for decision  
 
 Division 3 General 
 
 21.21 What fees are payable  
 21.22 How fees are to be paid   21.23 Notice of non-payment of fee  
 21.24 Refunds etc of fees  
 21.25 Extension of time — application   21.26 Extension of time — notice of opposition   21.27 Extension of time — opposition proceedings   21.28 Extension of time — prescribed acts and documents   21.29 Convention countries  
 21.30 Rights of patent attorneys  
 21.31 Incapacity of certain persons   21.32 Destruction of documents   21.33 Directions not otherwise prescribed   21.34 Requirements cannot be complied with for reasonable cause   Part 22 Transitional provisions  
 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  
 
Schedule 1 Classification of goods and services  
  Part 1 Classes of goods  
 Part 2 Classes of services  
  IP/N/1/AUS/T/4 
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  Schedule 2 Signs that may not be registered as trade marks  
 Schedule 3 Modifications of Part 13 of the Act — Norfolk Island  
 Part 1 Classification of goods and services 
 Part 2   
 
Schedule 4 Modifications of Part 13 of the Act — Christmas Island   Schedule 5 Modifications of Part 13 of the Act — Cocos (Keeling) Islands  
 
Schedule 6 Offices of persons to whom registrar may delegate   Schedule 7 Requirements for documents in paper form   
Schedule 8 Costs, expenses and allowances  
 
 Part 1 Costs  
 Part 2 Expenses and Allowances   
 
Schedule 9 Fees  
 
Schedule 10 Convention countries   
 IP/N/1/AUS/T/4 
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  Part 1  Preliminary 
 
1.1 Name of regulations [see Note 1]   
 
 These regulations are the Trade Marks Regulations 1995 . 
 
1.2 Commencement 
 
 These regulations commence on 1 January 1996.   Part 2  Interpretation 
  
2.1 Interpretation 
  In these regulations, unless the contrary intention appears: 
 
  Act  means the Trade Marks Act 1995 . 
 
  certificate of verification  means a statement: 
 
  (a) that a document to which the statement relates: 
                            (i) has been translated by a person who is proficient in both the language 
from which the document has been translated into English and English; and 
                           (ii) is a true and complete translation of the accompanying document to 
the best of the knowledge of the person who signs the statement; and 
   (b) that is dated and signed. 
 
  earlier application , in relation to an application for the registration of a trade mark 
for which a right of priority is claimed, means an application for the registration of 
that trade mark in a Convention country: 
               (a) that was filed, at the trade marks office (or its equivalent) of that Convention 
country, before the application for which the right of priority is claimed; and 
              (b) on which the claim for the right of priority is based. 
  working day  means a day other than a Saturday, a Sunday or a public holiday for the 
purposes of the Australian Public Service. 
  
Part 3  Trade marks and trade mark rights 
  
3.1 Classification of goods and services 
 
 (1) For the purposes of subsection 19 (3) of the Act (which deals with the classification 
of goods and services): 
 
              (a) goods are divided into the classes of goods described in column 2 of Part 1 of 
Schedule 1; and 
              (b) services are divided into the classes of services described in column 2 of Part 
2 of Schedule 1.  IP/N/1/AUS/T/4 
 Page 9 
 
 
   
 (2) Each class of goods or services described in Schedule 1 has:                (a) a class number corresponding to the item number of that class in column 1 of 
Part 1 or 2 of Schedule 1; and 
              (b) a class heading correspon ding to the description of that class in column 2 of 
Part 1 or 2 of Schedule 1. 
 
3.2 Period in which action for infringement may be brought 
   For the purposes of paragraph 26 (1) (b) of  the Act (which deals with powers of the 
authorised user of a trade mark), the pr escribed period is 2 months from the day on 
which the authorised user of a trade mark asks the registered owner of the trade mark 
to bring an action for infringement of the trade mark. 
 Part 4  Application for registration 
  
4.1 Applications — approved form 
 
 (1) For the purposes of subsection 27 (2) of th e Act (which deals with applications for 
registration), an application for the regist ration of a trade mark must be in an 
approved form. 
  (2) Any material that is intended by the a pplicant to form part of the application for 
registration of a trade mark: 
 
  (a) must be attached to the application; and 
  (b) is taken to be part of the application.  
4.2 Applications — requirements for filing 
 
 (1) In order for an application for registration of a trade mark to be taken to be filed, the 
application must: 
               (a) state that the application is for registration of the trade mark, or contain a 
clear indication to that effect; and 
              (b) include a representation of  the trade mark that is sufficient to identify the 
trade mark; and 
              (c) specify the goods and/or services in relation to which the application is made; 
and 
  (d) specify the name of the applicant; and   (e) contain sufficient information to enab le the Registrar to contact the applicant. 
 
 (2) If an application does not meet a requireme nt set out in paragraph (1) (a), (b), (c) 
or (d), the Registrar must give to the applicant written notice of the requirement. 
  (3) If the applicant meets the requirement within a period of 2 months from the date of 
the notice, the application is taken to be filed on the day on which the requirement is 
met. 
  (4) If the applicant does not meet the requirem ent within that period, the application is 
taken not to have been filed. 
 IP/N/1/AUS/T/4 
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  4.3 Representation of trade marks 
 
 (1) If practicable, the representation of a tr ade mark included in an application for 
registration of the trade mark must not exceed 8 centimetres by 8 centimetres. 
 
 (2) In an application for the registration of 2 or more trade marks as a series, the 
representation of each trade mark in the series must, if practicable, not exceed 8 centimetres by 8 centimetres. 
  (3) In an application for the registration of a trade mark that contains, or consists of, a 3 
dimensional shape: 
               (a) if practicable, the represen tation of the trade mark in the application must be 
illustrated in a perspective that shows each feature of the trade mark; and 
              (b) otherwise, the representati on of the trade mark in the application must include 
views of the trade mark that are necessary to show each feature of the trade 
mark. 
  (4) If the Registrar reasonably believes th at the views of a trade mark to which 
paragraph (3) (a) or (b) applies are not su fficient to allow all features of the trade 
mark to be properly examined, the Registrar may, by notice in writing, require the 
applicant to give to the Registrar up to 6 a dditional views of the trade mark that show 
the features sufficiently to permit pr oper examination of the trade mark. 
  (5) If the representation of a trade mark in an application for registration of the trade 
mark includes words of a language other than  English, the applicant must file in 
support of the application a translation of the words into English. 
  (6) If the representation of a trade mark in an application for registration of the trade 
mark includes characters constituting word s, being characters that are not roman 
letters, the applicant must file in support of the application: 
 
              (a) a transliteration of th e characters into roman letters, using the recognised 
system of romanisation of the characters (if any); and 
  (b) a translation of the words into English.   (7) If a trade mark for which registration is s ought contains or consists of a sign that is a 
colour, scent, shape, sound or an aspect of packaging, or any combination of those 
features, the application for registration of the trade mark must include a concise and accurate description of the trade mark. 
  (8) If the Registrar reasonably believes that  the description or representation of a trade 
mark in an application for registration of the trade mark does not: 
 
  (a) demonstrate the nature of the trade mark sufficiently; or   (b) show each feature of the trade mark sufficiently;   to permit proper examination of the trade mark, the Registrar may require the 
applicant to give to the Registrar: 
  (c) a description, or further description, of the trade mark; and 
  (d) a specimen of the trade mark.   IP/N/1/AUS/T/4 
 Page 11 
 
 
   (9) If a representation of a single trade mark  exceeds, or the representations of the trade 
marks in a series of trade marks together  exceed, 8 centimetres by 8 centimetres, the 
representation or representations: 
               (a) must be attached to the application for registration of the trade mark or trade 
marks; and 
  (b) must be taken to be part of the application.   (10) The representation of a trade mark in an application for registration of the trade mark 
must be of a kind and quality that: 
 
              (a) ensures that the featur es of the trade mark will be preserved in the course of 
time; and 
  (b) is suitable for reproduction.  4.4 Specification of goods and/or services 
 
 (1) For the purposes of paragraph 27 (3) (b) of  the Act, the following subregulations set 
out the manner of specifying, in an application for the registration of a trade mark, the goods and/or services in respect of which registration is sought. 
 
 (2) The expression “all goods”, “all services”, “all other goods”, or “all other services” 
must not be used in an application for re gistration of a trade mark to specify the 
goods and/or services in respect of which registration is sought. 
  (3) The goods and/or services must be grouped according to the appropriate classes 
described in Schedule 1. 
  (4) The applicant must nominate the class number that is appropriate to the goods or 
services in each group. 
  (5) The groups must be listed in the order of their class numbers. 
 
 (6) The goods and/or services must, as far as practicable, be specified in terms appearing 
in any listing of goods and services that is: 
   (a) published by the Registrar; and 
              (b) made available for insp ection by the public at the Trade Marks Office and its 
sub-offices. 
  (7) If any of the goods and/or services cannot be specified using terms referred to in 
subregulation (6), the applicant must provi de sufficient information to enable the 
Registrar to decide the classification of the goods and/or services. 
 
4.5 Period for claiming priority for an application 
 
  For the purposes of subsection 29 (1) of the Act (which deals with claims for 
priority), the prescribed period in relation to  a claim for a right of priority for an 
application is 2 working days after filing the application. 
  IP/N/1/AUS/T/4 
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  4.6 How to claim priority 
 
 (1) For the purposes of subsection 29 (1) of  the Act (which deals with claims for 
priority), an applicant must claim a right of priority for an application by filing notice of the claim. 
 
 (2) Any notice under subregulation (1) must sp ecify, in respect of the earlier application 
or, if there is more than 1 earlier application, in respect of each earlier application: 
               (a) the Convention country in  which the earlier applicat ion was filed at the trade 
marks office (or its equivalent) of that Convention country; and 
  (b) the date on which the earlier application was filed; and               (c) if a number is allocated to the earlier application in the trade marks office (or 
its equivalent) of that Convention country — that number. 
 
 (3) If, as a result of a claim for a right of pr iority, more than 1 priority date applies in 
relation to an application, a person who claims a right of priority under subsection 29 (1) of the Act must specify the goods and/or services to which each priority date relates. 
 
4.7 Publication of particulars of application 
 
 (1) For the purposes of section 30 of the Act (which deals with publishing particulars of 
applications), the Registrar must publish the following particulars of the application: 
               (a) if a number has been  allocated to the application in the Trade Marks 
Office — the number; 
  (b) the applicant’s name;   (c) the date of filing the application;               (d) if the application is  a divisional application — particulars of the initial 
application; 
  (e) particulars of any claim for a right of priority for the application; 
              (f) the class number or numbers for the goods and/or services in respect of which 
registration of the trade mark is sought. 
  (2) The particulars must be published in 1, or more than 1, of the following ways:  
  (a) publication in the Official Journal ; 
  (b) listing in a computer database maintained by the Trade Marks Office;               (c) making a record of the a pplication available, in electronic or other form, in 
each of the sub-offices of the Trade Marks Office. 
  (3) If, before 1 January 2001, an application by: 
 
              (a) the Sydney Organising Committee for the Olympic Games constituted by the 
Sydney Organising Committee for the Olympic Games Act 1993 of New South Wales; or 
              (b) Sydney Paralympic Organising Committee Limited incorporated under the 
law of New South Wales; 
  is accompanied by a written request by th e applicant to postpone publication of the 
particulars of the application, the Regi strar must publish the particulars of the 
application as soon as practicable after the expiration of 3 months after the date on 
which the application was filed.  IP/N/1/AUS/T/4 
 Page 13 
 
 
   
4.8 Examination of application — report to applicant 
 (1) For the purposes of section 31 of the Act (which deals with examination and 
reporting), if in the course of an examin ation of an application the Registrar 
reasonably believes that: 
 
              (a) the application has not  been made in accordance with the Act or these 
regulations; or 
  (b) there are grounds under Division 2 of Part 4 of the Act for rejecting it;   the Registrar must report that belief in writing to the applicant. 
 
 (2) A report under subregulation (1) must include notice of the date on which the 
application will lapse if it is not accepted earlier. 
  (3) If the Registrar reasonably suspects that th e provisions of paragraph 27 (1) (b) of the 
Act do not apply in relation to all of the goods and/or services specified in an 
application for registration of a trade mark, the Registrar may require the applicant to 
make a declaration to the Registrar that those provisions apply to all of those goods 
and/or services. 
 
              Note     Section 37 of the Act and regulation 4.12 deal with the lapsing of an 
application before acceptance. 
 
4.9 Examination — applicant’s response to report 
 
 (1) An applicant may respond in writing to the Registrar’s report under regulation 4.8. 
 
 (2) The response may:    (a) contest a belief of the Registrar that is expressed in the report; and   (b) contest another matter that is mentioned in the report; and   (c) provide further documents or evid ence in support of the application; and 
  (d) request that the application be  amended in accordance with the Act. 
 
              Note     Section 65 of the Act relates to the amendment of an application after 
particulars of the application have been published. 
 4.10 Examination — further report to applicant 
 
 (1) On receipt of a response under regulation 4.9, the Registrar must consider the 
response. 
  (2) If the Registrar continues to believe that: 
 
              (a) the application has not  been made in accordance with the Act or these 
regulations; or 
  (b) there are grounds under Division 2 of Part 4 of the Act for rejecting it;   the Registrar must report that belief in writing to the applicant. 
 
 (3) Unless acceptance of an application is deferred, a re port under subregulation (2) in 
relation to that application must include notice of the date on which the application 
will lapse if it is not accepted earlier. 
 IP/N/1/AUS/T/4 
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   (4) Regulation 4.9 and this regulation appl y to a report under subregulation (2) as if it 
were a report under regulation 4.8. 
 
4.11 Examination — additional requirements 
  (1) In the course of an examination of an application for which a right of priority is 
claimed, the Registrar may require in writing the applicant to file: 
               (a) a copy of any earlier application certified in the trade marks office (or its 
equivalent) of the Convention coun try in which it was filed; and 
  (b) if the earlier application is not in English: 
    (i) a translation of the earlier application into English; and    (ii) a certificate of verification relating to the translation.  
 (2) If the applicant is the successor in title to  the person who made the earlier application, 
the Registrar may require in writing the appli cant to file documentary evidence that is 
sufficient to establish the passing of title to the applicant. 
 
4.12 Periods after which applications lapse 
  (1) For the purposes of subsection 37 (1) of the Act (which deals with lapsing), the 
prescribed period, for an application in respect of which a report is made under regulation 4.8, is: 
               (a) except as provided by pa ragraph (b) — 15 months from the date of that report 
(whether or not a further report is made under regulation 4.10); or 
              (b) if a further report raises grounds under Division 2 of Part 4 of the Act for 
rejecting the application that were not raised in the report made under 
regulation 4.8 — 15 months from the date of the further report. 
  (2) In determining the period of 15 months fo r the purposes of paragra ph (1) (a) or (b) in 
relation to an application, no account is to  be taken of a period in which acceptance of 
the application is deferred under regulation 4.13. 
  (3) An applicant may, before the end of a pe riod prescribed in subregulation (1), or that 
period as extended under section 224 of the Act or as a result of a previous 
application of subregulation (4), request th e Registrar in writing to extend the period. 
  (4) The Registrar must, in accordance with a re quest made under subregulation (3), 
extend a period, unless: 
   (a) the period; or 
              (b) that period as extended under section 224 of the Act or as a result of a 
previous application of this subregulation; 
  would be extended for more than 6 mont hs after the end of the relevant period 
prescribed in subregulation (1). 
 
Note 1     If an extension of the time for acceptance of an application is sought after the end of a 
prescribed period, or of an extended period me ntioned in subregulati on 4.12 (3), application 
must be made under section 224 of the Act. 
 
Note 2     If a period prescribed in subregulation 4.12 (1 ) has been extended by 6 months, any application 
for a further extension of time must be  made under section 224 of the Act.  IP/N/1/AUS/T/4 
 Page 15 
 
 
   
4.13 Deferment of acceptance 
  (1) The Registrar may, at the request of th e applicant in writing, defer acceptance of an 
application for registration of a trade mark, if: 
   (a) the request is made within a period prescribed in subregul ation 4.12 (1); and 
              (b) the Registrar reasonably believes that there are grounds for rejecting the 
application under subsection 44 (1) or (2) of the Act because of another trade 
mark: 
    (i) that is registered by another person; or                            (ii) in respect of which an application for registration has been made by 
another person; and 
 
  (c) the applicant:                            (i) is awaiting the finalisation of proceedings in respect of the 
application for registration of the other trade mark; or 
                          (ii) is seeking to satisfy the Registrar as to a matter mentioned in 
paragraph 44 (3) (a) or (b) of the Act or as to the matters mentioned in subsection 44 (4) of the Act in relation to the applicant’s trade 
mark and the other trade mark; or 
                           (iii) has filed an application under section 92 of the Act (which deals with 
the removal of trade marks) in respect of the other trade mark, and is 
awaiting the finalisation of proceedings in respect of that application; or 
                          (iv) has begun proceedings to have the Register rectified in respect of the 
other trade mark and the proceedings have not been determined or 
otherwise disposed of; or 
                          (v) is awaiting renewal of the registration of the other trade mark in the 
period of 12 months after registration of the other trade mark has expired, or removal of the other trade mark from the Register. 
 
 (2) The Registrar may, on his or her own in itiative, defer acceptance of the application 
within a period that is prescribed in subr egulation 4.12 (1) or that is extended under 
section 224 of the Act or subregulation 4.12 (4), if: 
               (a) the time within which pr oceedings mentioned in para graph (b) may be begun, 
or an application mentioned in paragrap h (c) may be made, has not ended; or 
              (b) appeal proceedings under a provision of the Act have begun in a prescribed 
court in relation to the application; or 
              (c) an application has been made to the Administrative Appeals Tribunal for 
review of a decision of the Registrar in relation to the first-mentioned application; or 
  (d) the Registrar is informed in  writing that the applicant has died. 
  (3) The Registrar must defer acceptance of an application for registration of a 
certification trade mark when a copy of the rules governing the use of the certification 
trade mark is sent to the Commissi on in accordance with regulation 16.2. 
 
 (4) The Registrar must notify an applicant in writing: IP/N/1/AUS/T/4 
Page 16  
 
   
              (a) if the applicant requests the Registrar to defer acceptance of an application — 
of the Registrar’s decision to defer, or not to defer, acceptance of the 
application; and 
              (b) if the Registrar othe rwise defers acceptance of an application — of the 
provision under which acceptance of  the application is deferred. 
 
4.14 Period for which acceptance is deferred 
 
 (1) The period for which acceptance of an application is deferre d (in this regulation 
called the deferment period ) begins immediately after the date of the notice of 
deferment issued under subregulation 4.13 (4). 
  (2) The deferment period ends:  
  (a) when the application is withdrawn; or 
              (b) if paragraph (a) does not  apply — when the Registrar is reasonably satisfied 
that there are no longer grounds for re jecting the application under subsection 
44 (1) or (2) of the Act; or 
              (c) if paragraphs (a) and (b) do not apply — in accordance with 
subregulation (3). 
 
 (3) For the purposes of paragraph (2 ) (c), the deferment period ends: 
               (a) if acceptance is defe rred because of subparagraph 4.13 (1) (c) (i) — when 
proceedings relating to the registration of the other trade mark are finalised; 
and 
              (b) if acceptance is deferre d because of subparagraph 4.13 (1) (c) (ii) — at the 
end of 6 months from the date of the notice of deferment; and 
              (c) if acceptance is defe rred because of subparagraph 4.13 (1) (c) (iii) — when 
proceedings under Part 9 of the Act in respect of the other trade mark are finalised; and 
              (d) if acceptance is defe rred because of subparagraph 4.13 (1) (c) (iv) — when 
the proceedings to have the Register re ctified in respect of the other trade 
mark are determined or otherwise disposed of; and 
              (e) if acceptance is deferre d because of subparagraph 4.13 (1) (c) (v) — when the 
registration of the other trade mark is renewed or the other trade mark is 
removed from the Register; and 
              (f) if acceptance is deferred because of paragraph 4.13 (2) (a) — at the end of 2 
months after the beginning of the period in which: 
    (i) proceedings mentioned in paragraph 4.13 (2) (b) may be begun; or    (ii) an application mentioned in paragraph 4.13 (2) (c) may be made; and 
 
              (g) if acceptance is deferred because of paragraph 4.13 (2) (b) or (c) — at the end 
of: 
                            (i) 3 m onths after the determination,  or other disposal, of the 
proceedings or review; or 
                           (ii) such  time as the court to which any appeal is brought or the 
Administrative Appeals Tribunal, or a court to which any appeal arising from review by the Tribunal is brought, allows; 
  IP/N/1/AUS/T/4 
 Page 17 
 
 
                (h) if acceptance is deferred because of paragraph 4.13 (2) (d) — at the end of a 
period after the death of the applicant th at the Registrar reasonably regards as 
sufficient in the circumstances; and 
  (j) if acceptance is deferred because of subregulation 4.13 (3):  
                          (i) if the Commission gives a certificate under subsection 175 (2) of the 
Act in respect of the application — when the Registrar accepts the 
certification trade mark for registration; and 
                          (ii) if the Commission does not give a certificate under that subsection —
 at the end of 2 months after the date of the notice to the Registrar 
under subsection 175 (4) of the Act. 
  (4) If acceptance of an application is deferred as a result of the operation of more than 1 
of the provisions of paragraph 4.13 (1) (c ) and subregulation 4.13 (2), the deferment 
period ends in accordance with the rele vant provision of subregulation (3) under 
which the deferment period ends later or last, as the case requires. 
  (5) The Registrar must notify the applicant in writing of:    (a) the end of a period of deferment; and               (b) if acceptance is deferr ed under subregulation 4.13 (1) — the last day of the 
relevant period prescribed by paragraph 4.12 (1) (a) or (b). 
 
4.15 Trade marks containing etc certain signs 
 
  For the purposes of paragraph 39 (2) (a) of the Act (which deals with signs), the 
following signs are prescribed: 
               (a) the words “Patent”, “Patented”, “By Royal Letters Patent”, “Registered”, 
“Registered Design”, “Copyright” “Plant Breeder’s Rights”, “EL rights”, or words or symbols to the same effect (including the symbols “©” and “®”); 
  (b) the words “To counterfeit this is a forgery”, or words to the same effect; 
              (c) a representation of the Arms, or of a flag or seal, of the Commonwealth or of 
a State or Territory; 
              (d) a representation of the Arms or emblem of a city or town in Australia or of a 
public authority or public institution in Australia; 
              (e) a representation of a mark notified by the International Union for the 
Protection of Industrial Property as not entitled to registration under 
international arrangements; 
               (f) a sign specified in Schedule 2.  
Note 1     For the meaning of EL rights , see section 5 of the Circuit Layouts Act 1989 . 
 
Note 2     A list of the marks mentioned in paragraph 4. 15 (e) is available at the Trade Marks Office and 
sub-offices. 
 
4.16 Divisional applications relating to part of trade mark — period for application 
 
  For the purposes of subsection 47 (2) of  the Act (which deals with divisional 
applications), the period in relation to a di visional application for the registration of 
part of a trade mark is 6 months after filing the initial application for the registration of the trade mark. 
 IP/N/1/AUS/T/4 
Page 18  
 
  4.17 Divisional applications relating to ex cluded goods and/or services — prescribed periods 
 
  For the purposes of subsections 49 (2) and (4 ) of the Act (which deal with divisional 
applications), the period in relation to a di visional application for the registration of 
the trade mark in respect of goods and/or services excluded from the initial 
application is 1 month from the date of the notice of the amendment of the initial 
application for the registration of the trade mark given under regulation 6.4. 
 
4.18 Request for expedited examination of application 
  (1) A person who applies, or has applied, for the registration of a trade mark: 
   (a) may request in writing expedited examination of the application; and 
  (b) must include with the request a decl aration stating the reasons for the request. 
 
 (2) As soon as practicable after making a deci sion in relation to a request, the Registrar 
must give written notice of the decision to the person who made the request. 
 
4.19 Expedited examinations 
 
 (1) The Registrar must, to the extent that is practicable, examine applications for the 
registration of trade marks in relation to which requests under regulation 4.18 are 
granted: 
   (a) in the order in which the requests are filed; and               (b) before examination of an application for registration of a trade mark in 
relation to which: 
    (i) a request under regulation 4.18 is not made; or    (ii) a request made under that regulation is not granted.   (2) In the absence of a request for expe dited examination of an application for 
registration of a trade mark, the Registrar may expedite examination of the 
application if he or she reasonably believ es that expedited examination is warranted. 
  (3) The relationship of an application me ntioned in subregulation (2) to another 
application for registration of a trade mark is a relevant circumstance for the purposes 
of that subregulation. 
 
Part 5  Opposition to registration 
  
5.1 Time for filing notice of opposition 
   For the purposes of subsection 52 (2) of the Act (which deals with notice of 
opposition), the period for filing a notice of opposition is 3 months from the day on which the acceptance of the application is advertised in the Official Journal . 
 
5.2 Extension of time for filing — grounds 
 
 (1) A person may apply to the Registrar for an  extension of time in which to file a notice 
of opposition. 
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   (2) An application for an extension of tim e may be made within the period for filing a 
notice of opposition referred to in regulati on 5.1 on 1, or more than 1, of the 
following grounds and on no other ground: 
   (a) an error or omission by a trade marks officer; 
              (b) an error or omission by  the person applying for the extension of time, or by 
the person’s agent; 
              (c) circumstances beyond th e control of the person applying for the extension of 
time; 
              (d) the conduct of genuine negotiations between that person and the applicant for 
registration; 
  (e) the undertaking of genuine research to decide:     (i) whether opposition is justified; or    (ii) on the grounds of opposition. 
 
 (3) If the period for filing a notice of opposition has ended, an application for extension 
of time may be made at any time before the trade mark is registered on 1, or more than 1, of the grounds set out in paragrap h (2) (a), (b) or (c) and on no other ground. 
 
5.3 Extension of time for filing — applications 
 
  An application for an extension of time in which to file a notice of opposition must:    (a) be in an approved form; and   (b) be accompanied by a declaration stating: 
 
                           (i) the facts on which the grounds specified in the application are based; 
and 
                           (ii) if the period for filing a notice of opposition has ended — the reason 
why the application was not made before the end of that period.  
 
Note    Regulations 21.6 and 21.7 deal with making and filing declarations. 
 
5.4 Extension of time for filing — grant of extension 
 
 (1) Subject to subregulations (2) and (4), if  the Registrar is reasonably satisfied as to the 
grounds set out in an application for an extension of time to file a notice of opposition, the Registrar must grant the extension of time. 
  (2) The Registrar must not grant the extension of time, unless the Registrar: 
 
              (a) is reasonably satisfied th at the person applying for the extension of time has 
served a copy of the application, and the accompanying declaration, on the applicant for registration of the trade mark; and 
              (b) has given to both the person applying for the extension of time and the 
applicant for registration of the trade mark a reasonable opportunity to make 
representations concerning the app lication for extension of time. 
  (3) For the purposes of paragraph (2) (b), th e representations may be made in writing or 
at a hearing or by such other means as the Registrar reasonably allows. 
 IP/N/1/AUS/T/4 
Page 20  
 
   (4) If an application for extension of time is made after the period for filing a notice of 
opposition has ended, the Registrar must not grant the extension unless the Registrar is reasonably satisfied that there is suff icient reason for the application not being 
made before the end of that period. 
 
 (5) An extension of time must be for such period: 
              (a) in the case of an extension of time that is granted on a ground set out in 
paragraphs 5.2 (2) (a), (b) and (c) — as  the Registrar believes is reasonable; 
or 
             (b) in the case of an extension of time that is granted on a ground set out in 
paragraphs 5.2 (2) (d) and (e) — not  exceeding 3 months as the Registrar 
believes is reasonable. 
 
5.5 Copy of earlier application to be available to opponent 
 
 (1) In opposition proceedings relating to an a pplication in respect of which the applicant 
claims a right of priority, an opponent may in writing ask the Registrar for a copy of an earlier application to be made available. 
  (2) On receipt of a request under subregulation (1), the Registrar must require in writing 
the applicant to file: 
               (a) a copy of the earlier application certified in the trade marks office (or its 
equivalent) of the Convention coun try in which it was filed; and 
  (b) if the earlier application is not in English: 
 
   (i) a translation of the earlier application into English; and    (ii) a certificate of verification relating to the translation.   (3) If the applicant is the successor in title to  the person who made the earlier application, 
the Registrar may require in writing the a pplicant to provide documentary evidence 
that is sufficient to establish the passing of title to the applicant. 
  (4) Subregulation (2) does not apply if th e applicant has already filed the documents 
mentioned in that subregulation. 
 
 (5) The Registrar must send a copy of the documents mentioned in subregulation (2) to 
the opponent. 
 
5.6 Opposition proceedings 
 
  For the purposes of subsection 54 (2) of the Act (which deals with opposition 
proceedings), regulations 5.7 to 5.17 set out  the procedure to be followed in dealing 
with an opposition after a notice of opposition is filed. 
 
5.7 Evidence in support 
  (1) If the opponent intends to rely on evid ence in support of the opposition, the opponent 
must serve a copy of the evidence in suppor t on the applicant within 3 months from 
the day on which the notice of opposition is filed. 
  IP/N/1/AUS/T/4 
 Page 21 
 
 
   (2) As soon as practicable after the opponent  serves a copy of the evidence in support on 
the applicant, the opponent must file with the Registrar: 
   (a) the original evidence; and               (b) a statement setting out the date, place and manner of service of the copy of 
the evidence on the applicant. 
 
5.8 Notice that opponent will not rely on evidence in support 
 
 (1) If the opponent does not intend to rely on evidence in support of the opposition, the 
opponent must, within 3 months from the day on which the notice of opposition is 
filed, serve on the applicant a copy of a notice stating that the opponent does not intend to rely on evidence in support of the opposition. 
  (2) As soon as practicable after the opponent  serves a copy of the notice on the applicant, 
the opponent must file with the Registrar: 
   (a) the original notice; and               (b) a statement setting out the date, place and manner of service of the copy of 
the notice on the applicant. 
 5.9 Evidence in answer 
 
 (1) If the applicant intends to rely on eviden ce in answer to the opposition, the applicant 
must serve a copy of the evidence in answ er on the opponent within the period for 
service of a copy of that evidence under regulation 5.10. 
 
 (2) As soon as practicable after the applican t serves a copy of the evidence in answer on 
the opponent, the applicant must file with the Registrar: 
   (a) the original evidence; and               (b) a statement setting out the date, place and manner of service of the copy of 
the evidence on the opponent. 
 
5.10 Period for service of a copy of the evidence in answer 
 
 (1) If the opponent complies with regulation 5.7 or 5.8, the period for service of a copy of 
the evidence in answer to the opposition is 3 months from the day on which the 
opponent serves on the applicant: 
   (a) the copy of the evidence in support referred to in subregulation 5.7 (1); or   (b) the copy of the notice referred to in subregulation 5.8 (1).  
 (2) If the opponent does not comply with regulation 5.7 or 5.8: 
               (a) the period for service of a copy of the evidence in answer to the opposition is 
the period of 3 months beginning on the day notified by the Registrar under paragraph (b); and 
              (b) the Registrar must, afte r the end of the period of 3 months referred to in 
subregulations 5.7 (1) and 5.8 (1), notify the parties in writing of the day on which the period for service of a copy of the evidence in answer to an 
opposition is to begin. 
 IP/N/1/AUS/T/4 
Page 22  
 
  5.11 Notice that applicants will not rely on evidence in answer 
 
 (1) If an applicant does not intend to rely  on evidence in answer to the opposition, the 
applicant must serve on the opponent, within the period for service of a copy of the evidence in answer, a copy of a notice stating that the applicant does not intend to 
rely on evidence in answer to the opposition. 
  (2) As soon as practicable after the applicant serves a copy of the notice on the opponent, 
the applicant must file with the Registrar: 
 
  (a) the original notice; and 
              (b) a statement setting out the date, place and manner of service of the copy of 
the notice on the opponent. 
 
5.12 Evidence in reply to evidence in answer 
 
 (1) If an opponent intends to rely on evidence in reply to the eviden ce in answer to the 
opposition, the opponent must serve a copy of the evidence in repl y on the applicant 
within 3 months after the service on the opponent of a copy of the evidence in answer. 
 
 (2) As soon as practicable after the opponent serves a copy of the evidence in reply on 
the applicant, the opponent must file with the Registrar: 
   (a) the original evidence; and               (b) a statement setting out the date, place and manner of service of the copy of 
the evidence on the applicant. 
 
5.13 Notice that opponents will not rely on evidence in reply to evidence in answer 
 
 (1) If an opponent does not intend to rely on evidence in reply to th e evidence in answer 
to the opposition, the opponent must serve on the applicant, within 3 months after the 
service on the opponent of a copy of the evidence in answer, a copy of a notice 
stating that the opponent does not intend to re ly on evidence in reply to the evidence 
in answer to the opposition. 
  (2) As soon as practicable after the opponent  serves a copy of the notice on the applicant, 
the opponent must file with the Registrar: 
   (a) the original notice; and               (b) a statement setting out the date, place and manner of service of the copy of 
the notice on the applicant. 
 5.14 Hearing of opposition 
 
 (1) An applicant may ask the Registrar to hear the parties to opposition proceedings, if: 
   (a) the opponent serves a copy of a notice under subregulation 5.8 (1); or 
  (b) at the end of the period for service of: 
              (i) a copy of the evidence in support under subregulation 5.7 (1); or    (ii) a copy of the notice under subregulation 5.8 (1);  IP/N/1/AUS/T/4 
 Page 23 
 
 
    the opponent has not served a copy of the evidence in support or a copy of the 
notice. 
  (2) A party to opposition proceedings may ask the Registrar to hear the parties to the 
opposition proceedings, if: 
 
  (a) the applicant serves a copy of a notice under subregulation 5.11 (1); or   (b) at the end of the period for service of:     (i) a copy of the evidence in answer under subregulation 5.9 (1); or 
   (ii) a copy of the notice under subregulation 5.11 (1); 
  the applicant has not served a copy of th e evidence in answer or a copy of the 
notice; or 
               (c) the opponent serves a copy of the evidence in reply under 
subregulation 5.12 (1) or a copy of a notice under subregulation 5.13 (1); or 
  (d) at the end of the period for serving:     (i) a copy of the evidence in reply under subregulation 5.12 (1); or    (ii) a copy of a notice under subregulation 5.13 (1);   the opponent has not served a copy of the evidence in reply or a copy of the 
notice. 
  (3) The Registrar must comply with a request  made in accordance with subregulation (1) 
or (2). 
 
 (4) If: 
   (a) an applicant may make a request to  the Registrar under subregulation (1); or 
              (b) a party to opposition pr oceedings may make a request to the Registrar under 
subregulation (2); 
  and a request is not made, the Registrar may, on his or her own initiative, give an 
opportunity to the parties to the opposition proceedings to be heard in relation to 
those proceedings. 
 
  Note    Regulations 21.15 and 21.16 deal with hearings. 
 
5.15 Extension of period to serve evidence and service of further evidence 
 
 (1) A party to the opposition proceed ings may apply to the Registrar: 
 
              (a) for an extension of the period for serving a copy of the evidence under 
regulation 5.7, 5.10 or 5.12; or 
  (b) for permission to serve a copy of further evidence on the other party. 
  (2) The Registrar may grant an applica tion on reasonable terms specified by the 
Registrar. 
  (3) The Registrar must not grant an application unless the Registrar:                (a) is reasonably satisfied th at the applicant has served a copy of the application, 
and of any documents accompanying the application, on the other party; and IP/N/1/AUS/T/4 
Page 24  
 
                (b) has given the parties a reasonable opportunity to make representations 
concerning the application; and 
  (c) is reasonably satisfied that:                             (i) in the case of an application to which paragraph (1) (a) applies — the 
extension of the period for serving a copy of the evidence; and 
                           (ii) in th e case of an application to which paragraph (1) (b) applies — 
permission to serve a copy of further evidence; 
   is appropriate.  
 (4) For the purposes of paragraph (3) (b), th e representations may be made in writing or 
at a hearing or by such other means as the Registrar reasonably allows. 
  (5) If the Registrar grants an application u nder paragraph (1) (b) on terms that include 
service of a copy of the further evidence w ithin a specified period, a party to the 
opposition proceedings may apply to the Regist rar for an extension of that period. 
  (6) Subregulations (2), (3) and (4) apply to an application under subregulation (5). 
 
5.16 Conduct of opposition proceedings generally 
  (1) The Registrar may, at the request of a party to the opposition proceedings or on the 
initiative of the Registrar, give a direc tion in relation to the procedure in the 
proceedings. 
  (2) A direction given under subregulation (1 ) must not be inconsistent with these 
regulations. 
  (3) The Registrar must not give a direction unless the Registrar:                (a) is reasonably satisfied th at parties to the proceedings have been notified of 
the proposed direction; and 
              (b) has given the parties a reasonable opportunity to make representations 
concerning the proposed direction; and 
  (c) is reasonably satisfied that th e proposed direction is appropriate. 
  (4) For the purposes of paragraph (3) (b), th e representations may be made in writing or 
at a hearing or by such other means as the Registrar reasonably allows. 
 
5.17 Registrar to give notice of dismissal of proceedings 
 
  If opposition proceedings are dismissed under section 222 of the Act (which deals 
with security for costs) or discontinued, the Registrar must notify the parties in 
writing that the opposition proceedings ha ve been dismissed or discontinued. 
 
Part 6 Amendment of application for registr ation of a trade mark and other documents 
 6.1 Amendment of applications by Registrar  
 
 (1) For the purposes of subsection 63 (2) of th e Act (which deals with amendment), if the 
Registrar proposes to amend an application for the registration of a trade mark, the Registrar must give notice in writing to the applicant: 
  IP/N/1/AUS/T/4 
 Page 25 
 
 
               (a) setting out the proposed amendment and the reason for making the 
amendment; and 
             (b) stating that the proposed amendment will be made at the end of a reasonable 
period stated in the notice, unless th e applicant objects to the amendment 
within that period. 
 
 (2) If an applicant objects to an amendment proposed by the Registrar within the period 
mentioned in paragraph (1) (b), the Regi strar must not make the amendment unless 
the objection is withdrawn. 
 6.2 Request to amend before publication of details 
 
  For the purposes of paragraph 64 (b) of the Act (which deals with amendments before 
publication), the period for requesting an amendment is 14 days after filing the 
application for the registration of the trade mark. 
 
6.3 Filing of declarations 
 
  If a person requests an amendment under section 64 of the Act (which deals with 
amendments before publication) or paragr aph 66 (a) of the Act (which deals with 
amendment of other documents), the Regist rar may require the applicant to file a 
declaration stating: 
   (a) that a clerical error or obvious mistake was made in the application; and 
  (b) the circumstances in which the error or mistake was made. 
 
Note    Regulations 21.6 and 21.7 deal with making and filing declarations. 
 
6.4 Notification of amendments 
   If the Registrar amends an application, notice or document under Part 6 of the Act, 
the Registrar must give notice in writing of the amendment to: 
   (a) the person who requested the amendment; and   (b) any other person that the Registrar thinks appropriate. 
 
Part 7  Registration of trade marks 
 7.1 Period in which a trade mark can be registered 
 
 (1) For the purposes of subsection 68 (1) of th e Act (which deals with registration), the 
period for the registration of a trade mark that has been accepted for registration is: 
               (a) except if paragraph (b) applies — the period from the beginning of the day on 
which the acceptance is advertised in the Official Journal to the end of: 
 
   (i) the day that is 6 months after that day; or 
                           (ii) if a later day is specified under subregulation (2) or (3) — the day 
specified in that subregulation; and 
               (b) in the case of the death of an applicant for registration of the trade mark — 
within 12 months of the date of deat h or within such further period as the 
Registrar reasonably allows. IP/N/1/AUS/T/4 
Page 26  
 
   
 (2) If:                (a) proceedings in relation to the registration of the trade mark before a 
prescribed court or the Administrative Appeals Tribunal are not determined 
or otherwise disposed of; and 
              (b) the prescribed court or the Tribunal is satisfied that the registration of the 
trade mark cannot take place on or before the first-mentioned day in subparagraph (1) (a) (i); 
  the prescribed court or the Tribunal may specify for the purposes of 
subparagraph (1) (a) (ii) a day that is later than the first-mentioned day in 
subparagraph (1) (a) (i). 
  (3) If:  
              (a) proceedings in relation to the registration of the trade mark are before the 
Registrar; and 
  (b) the Registrar is reasonably satisfied that:                             (i) the registration of the trade mark cannot take place on or before the 
first-mentioned day in subparagraph (1) (a) (i); and 
   (ii) it is appropriate to do so; 
  the Registrar may specify, for the purposes of  subparagraph (1) (a) (ii), a day that is 
later than the first-mentioned day in subparagraph (1) (a) (i). 
 
7.2 Particulars to be entered in the Register 
 
  For the purposes of paragraph 69 (2) (c) of the Act (which deals with particulars), the 
following other particulars of a trade mark must be entered in the Register: 
               (a) if the trade mark is re gistered as a certification trade mark, a collective trade 
mark or a defensive trade mark — an indication to that effect; 
  (b) the date of the registration; 
              (c) the date on which the Regi strar enters the particulars of the registration in the 
Register under subsection 69 (1) of the Act; 
  (d) the particulars of any right of priority claimed under section 29 of the Act;               (e) the filing date of the initial application on which an y divisional application is 
based; 
              (f) any number allocated to the initial application for registration of the trade 
mark; 
              (g) the class numbers of th e goods and/or services in respect of which the trade 
mark is registered; 
  (h) the address of the owner of the trade mark; 
              (i) any other particulars relating to the trade mark that the Registrar reasonably 
believes to be appropriate. 
 
7.3 Period for request for renewal 
   For the purposes of subsection 75 (1) of the Act (which deals with requests for 
renewal), the period within which a person may request the Registrar to renew the 
registration of a trade mark is 12 months ending on the day on which the registration 
of the trade mark expires. 
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 Page 27 
 
 
  7.4 Notice of renewal due — when and how given 
 
 (1) For the purposes of section 76 of the Act (which deals with notice of renewal due), 
the period in relation to notifying a register ed owner that renewal of the registration 
of a trade mark is due is 2 months ending on the day on which the registration of the 
trade mark expires. 
  (2) A notice that the renewal is due must include:                (a) a statement of the date on which the registration of the trade mark will expire; 
and 
  (b) a statement of any fee payable.  
7.5 Notice of renewal 
   For the purposes of subsection 77 (2) of th e Act (which deals with renewal), a notice 
of the renewal of the registration of a trade mark must include: 
   (a) a statement that the registration is renewed; and   (b) the period for which it is renewed.  Part 8  Amendment and cancellation of registration  8.1 Notice of cancellation  
 (1) The Registrar must, after receiving a request from the owner of a registered trade 
mark under subsection 84 (1) of the Act, cancel registration of the trade mark if the 
Registrar is not obliged under subsection 84 (2) of the Act to notify a person. 
  (2) If the Registrar must notify a person under that subsection, the notice must state that 
unless: 
 
  (a) the request from the owner is sooner withdrawn; or 
              (b) a prescribed court dete rmines that the Registrar must not cancel registration 
of the trade mark; 
  the Registrar will cancel the trade mark at the end of a period of 2 months from the 
date of the notice. 
 
 (3) If:                (a) before the end of the pe riod of 2 months, each pers on who is notified advises 
the Registrar in writing that the pers on does not object to cancellation of 
registration of the trade mark — the Registrar must cancel registration of the 
trade mark; or 
              (b) paragraph (a) does not apply — the Registrar must cancel registration of the 
trade mark after the end of that period; 
  unless the request from the owner is withdrawn or a prescribed court determines 
otherwise. 
 
8.2 Amendment or cancellation — matters for the court 
 
  For the purposes of paragraph 89 (2) (a) of the Act (which deals with amendment or 
cancellation by a prescribed court), a prescribed court, in making a decision under IP/N/1/AUS/T/4 
Page 28  
 
  subsection 89 (1) of the Act on an application for rectification of the Register, must 
take into account the following matt ers, so far as they are relevant: 
               (a) the extent to which the pu blic interest will be affected if registration of the 
trade mark is not cancelled; 
              (b) whether any circumstance s that gave rise to the application have ceased to 
exist; 
              (c) the extent to which th e trade mark distinguished the relevant goods and/or 
services before the circumstances giving rise to the application arose; 
              (d) whether there is any order or other remedy, other than an order for 
rectification, that would be adequate in the circumstances. 
 
Part 9  Removal of trade mark from register for non-use 
 9.1 Applications for removal etc 
 
  For the purposes of paragraph 92 (2) (a) of the Act (which deals with applications), 
an application for the removal of a trade mark from the Register: 
   (a) must be in an approved form; and               (b) must be accompanied by a declaration made by, or on behalf of, the 
applicant: 
                            (i) stating that an inquiry into the use of the trade mark has been 
conducted by, or on behalf of, the applicant; and 
                           (ii) setting out the findings of that inquiry that support the grounds 
referred to in subsection 92 (4) of  the Act in reliance on which the 
application is made. 
 
 Note    Regulations 21.6 and 21.7 deal with making and filing declarations. 
 
9.2 Notification of applications 
 
 (1) For the purposes of subsection 95 (1) of th e Act (which deals with notification), the 
Registrar must give notice of an application under section 92 of the Act within 1 
month after the application is filed in accordance with these regulations. 
  (2) The notice must be given by sending a co py of the application, and the accompanying 
declaration, to each person who, in the opi nion of the Registrar, needs to know that 
the application has been filed. 
 9.3 Notice of opposition to removal 
 
 (1) For the purposes of subsection 96 (2) of  the Act (which deals with notice of 
opposition), a notice of opposition to an app lication under section 92 of the Act must 
be filed with the Registrar within 3 mont hs from the day on which the application is 
advertised in the Official Journal . 
  (2) The opponent must serve a copy of the notice of opposition on the applicant as soon 
as practicable after the notice is filed. 
 
Note   For the requirement to notify the Regi strar of service, see regulation 21.8. 
  IP/N/1/AUS/T/4 
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  9.4 Opposition proceedings before the Registrar 
 
 (1) For the purposes of section 99 of the Act (which deals with opposition proceedings), 
regulations 5.7 to 5.17 (inclusive) apply, subj ect to subregulations (2) and (3), to an 
opposition to an application under section 92 of the Act. 
 
 (2) The Registrar must, if asked to do so by the opponent within the period for serving:    (a) a copy of the evidence in support under subregulation 5.7 (1); or   (b) a copy of the notice under subregulation 5.8 (1); 
  hear the parties to the opposition proceedings. 
  (3) If the opponent:                (a) does not serve a co py of the evidence in su pport in accordance with 
subregulation 5.7 (1); or 
  (b) serves a copy of a notice under subregulation 5.8 (1); or               (c) does not serve a copy of that notice within the time allowed in that 
subregulation; 
  and the opponent does not request a hear ing under subregulation (2), the opposition 
proceedings are taken to have ended, but ar e not taken to have been discontinued or 
dismissed. 
 
Note    Regulations 21.15 and 21.16 deal with hearings. 
 
 (4) If: 
               (a) under subregulation (3) opposition proceedings are ta ken to have ended, but 
are not taken to have been discontinued or dismissed; and 
              (b) the Registrar is satisfi ed that the grounds on whic h the opposed application 
was made have been established; 
  the Registrar must determine the appli cation in accordance with section 101 of the 
Act. 
 
Part 10  Assignment and transmission of trade marks 
 
10.1 Applications for assignment etc to be recorded or entered 
 
  For the purposes of paragraphs 107 (2) (b) a nd 109 (2) (b) of the Act (which deal with 
assignment and transmission), the following documents are prescribed: 
 
              (a) a document that establishes the title to a trade mark of the assignee, or of the 
person to whom the trade mark has been transmitted; 
              (b) evidence in writing of consent of the Commission to the assignment or 
transmission of a registered certification trade mark. 
 10.2 Recording of assignment etc — trade marks not registered 
 
 (1) For the purposes of paragraph 108 (1) (a) of the Act (which deals with assignment 
and transmission), the Registrar must record particulars of the assignment or transmission of a trade mark in accordance with this regulation unless: 
 
  (a) the application to assign or transmit the trade mark is withdrawn; or IP/N/1/AUS/T/4 
Page 30  
 
    (b) a prescribed court determines otherwise. 
  (2) If there is no record made under Part 11 of the Act of a person claiming an interest in, 
or a right in respect of, the trade mark, the Registrar must record the particulars after 
ascertaining that a claim has not been recorded. 
 
 (3) If:                (a) there is a record ma de under Part 11 of the Act of a person, or persons, 
claiming an interest in, or a right in respect of, the trade mark; and 
              (b) the Registrar has no tified that person, or each  of those persons, under 
subregulation 10.5 (1); and 
              (c) that person or each of those persons has, within the period of 2 months from 
the date of the notice mentioned in pa ragraph (b), given written notice to the 
Registrar consenting to the assignment or transmission; 
  the Registrar must record the particular s after the Registrar has received the last 
notice consenting to the assignment or transmission. 
  (4) If:    (a) paragraphs (3) (a) and (b) apply; and 
              (b) the person, or an y of the persons, notified by the Registrar under 
subregulation 10.5 (1) has not consen ted in writing to the assignment or 
transmission of the trade mark within the period of 2 months from the date of the notice; 
  the Registrar must record the particular s as soon as practicable after the end of that 
period. 
 
10.3 Particulars of recorded assignment  or transmission to be published 
 
  For the purposes of paragraph 108 (1) (b ) of the Act (which deals with assignment 
and transmission): 
 
              (a) the following particulars of an assignment or transmission of a trade mark for 
which registration is sought must be published: 
                            (i) if a number has been allocated in the Trade Marks Office to the 
application for registration of the trade mark — the number; 
                           (ii) the na me of the person to whom the trade mark is recorded as having 
been assigned or transmitted; 
                           (iii) the day on which the particulars of the assignment or transmission 
were recorded; and 
 
              (b) if details of an app lication for registration of the trade mark have been 
published in a way described in subregul ation 4.7 (2) — the particulars of the 
assignment or transmission mentioned in  paragraph (a) must be published in 
the same way. 
 10.4 Recording of assignment etc of registered trade marks 
 
 (1) For the purposes of paragraph 110 (1) (a) of the Act (which deals with assignment 
and transmission), the Registrar must record particulars of the assignment or transmission of a trade mark in accord ance with this regulation, unless:  IP/N/1/AUS/T/4 
 Page 31 
 
 
   
  (a) the application to assign or transmit the trade mark is withdrawn; or   (b) a prescribed court determines otherwise.   (2) If there is no record made under Part 11 of the Act of a person claiming an interest in, 
or a right in respect of, the trade mark, the Registrar must record the particulars in the 
Register after ascertaining that a claim has not been recorded. 
  (3) If:  
              (a) there is a record ma de under Part 11 of the Act of a person, or persons, 
claiming an interest in, or a right in respect of, the trade mark; and 
              (b) the Registrar has no tified that person, or each  of those persons, under 
subregulation 10.5 (1); and 
              (c) that person or each of those persons has, within the period of 2 months from 
the date of the notice mentioned in paragraph (b), given written notice to the 
Registrar consenting to the assignment or transmission; 
  the Registrar must record the particular s in the Register after the Registrar has 
received the last notice consenting to the assignment or transmission. 
  (4) If: 
 
  (a) paragraphs (3) (a) and (b) apply; and 
              (b) the person, or an y of the persons, notified by the Registrar under 
subregulation 10.5 (1) has not consen ted in writing to the assignment or 
transmission of the trade mark within the period of 2 months from the date of 
the notice; 
  the Registrar must record the particulars in the Register as s oon as practicable after 
the end of that period. 
10.5 Notice to persons recorded as claimi ng right or interest in trade marks 
 
 (1) For the purposes of section 111 of the Act,  the Registrar must give notice in writing 
to a person recorded under Part 11 of the Act as claiming an interest in, or a right in 
respect of, a trade mark stating that th e Registrar will record the assignment or 
transmission of the trade mark at the end of a period of 2 months from the date of the notice, unless: 
 
  (a) the application to assign or transmit the trade mark is withdrawn; or 
  (b) a prescribed court determines otherwise; or               (c) each person to whom th e Registrar must give notice under this subregulation 
has already notified the Registrar in wr iting that the person consents to the 
assignment or transmission. 
 
 (2) Each notice under subregulation (1) in respect of a particular trade mark must be 
given on the same day. 
 
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  
 (1) For the purposes of sections 115 and 119 of  the Act (which deal with amendment and 
cancellation of particulars), particulars of a cl aim to an interest in, or to a right in 
respect of, a trade mark (other than th e name, address or address for service of a IP/N/1/AUS/T/4 
Page 32  
 
  person whose claim is recorded) entered in the Register or recorded under Division 3 
of Part 11 of the Act may be amended in accordance with this regulation. 
  (2) A request to amend particulars of a claim to an interest in, or to a right in respect of, a 
trade mark must be made in writing: 
 
              (a) together by the person whose claim is recorded and the owner of the trade 
mark; or 
              (b) if the request has with  it the written consent to the amendment of 1 of the 
persons mentioned in paragraph (a) — by  the other person mentioned in that 
paragraph. 
  (3) If a request is made in accordance with subregulation (2), the Registrar must amend 
the particulars in accordance with the request. 
 11.2 Amendment of name, address and address for service — claims not in the Register 
 
  If a person:               (a) whose claim to an interest  in, or to a right in respect of, a trade mark for 
which registration is sought is recorded; and 
             (b) whose name, address or address for service has changed since the claim was 
recorded; 
  gives notice of the new name or address to the Registrar, the Registrar must amend 
the record accordingly. 
 
Note     In relation to change of a person’s name, addr ess or address for service that is recorded in the 
Register, see sections 215 and 216 of the Act and regulation 21.3. 
 
11.3 Cancellation of particulars — claimed interests or rights 
 
 (1) For the purposes of sections 115 and 119 of  the Act (which deal with amendment and 
cancellation of particulars), particulars of a cl aim to an interest in, or to a right in 
respect of, a trade mark, entered in the Regi ster or recorded under Division 3 of Part 
11 of the Act may be cancelled in accordance with this regulation. 
  (2) A request to cancel particulars of a claim to an interest in, or to a right in respect of, a 
trade mark must be made in writing: 
 
  (a) by the person whose claim is recorded; or 
  (b) by the owner of the trade mark; or               (c) together by the person whose claim is recorded and the owner of the trade 
mark; or 
              (d) if the request has with  it the written consent to the cancellation of 1 of the 
persons mentioned in paragraph (c) — by  the other person mentioned in that 
paragraph. 
  (3) If a request is made under paragraph (2) (a ), (c) or (d), the Registrar must cancel the 
particulars in accordance with the request. 
 
 (4) If a request is made under paragraph (2) (b), the Registrar must notify in writing the 
person whose claim is recorded that: 
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 Page 33 
 
 
    (a) the request has been made; and 
              (b) unless the request is withdrawn or a prescribed court orders otherwise, the 
Registrar will cancel particulars of th e claim in accordance with the request 
as soon as practicable after the end of a period of 2 months from the date of the notice. 
 
 (5) Unless a request made under paragraph (2) (b) is withdrawn or a prescribed court 
determines otherwise, the Registrar must, as soon as practicable: 
               (a) if, before the end of the period mentioned in paragraph (4) (b), a person the 
particulars of whose claim are recorded  informs the Registrar in writing that 
the person does not object to cancellation of the particulars — cancel the particulars in accordance with the request; or 
              (b) if paragraph (a) does not apply — cancel the particulars after the end of that 
period in accordance with the request. 
 
Part 13  Importation of goods infringing Australian trade marks 
 13.1 Notice of objection to importation — accompanying documents 
 
  For the purposes of subsection 132 (1) of the Act (which deals with notices of 
objection), the following documents are prescr ibed in relation to a notice given under 
that subsection, namely a copy of the particulars of registration of the registered trade mark that is: 
   (a) certified by the Registrar as being a true copy; and 
              (b) issued no more than 2 months before the date of the notice given under that 
subsection. 
 
13.2 Notice of objection to importation — authorised users 
 
 (1) For the purposes of subsection 132 (3) of the Act (which deals with notices of 
objection), the period in relation to a request  by an authorised user under subsection 
132 (2) of the Act is 2 months from the day on which the request is made. 
  (2) For the purposes of subsection 132 (3 ) of the Act, the following documents are 
prescribed, namely documents that establish that: 
 
              (a) the authorised user has the power to give a notice of objection under 
subsection 132 (1) of the Act; 
  (b) the registered owner was asked to give the notice;               (c) since the request menti oned in paragraph (b) was made, the period prescribed 
by subregulation (1) in relation to the request has ended. 
 
Note 1     Examples of documents to which paragraph 13.2 (2) (a) refers include an agreement between 
the registered owner of a trade mark and the authorised user of the trade mark and a 
declaration of the registered owner that the authorised user of the trade mark is able to give 
notice of objection. 
 
Note 2     An authorised user must also give th e documents prescribed by  regulation 13.1 to the 
Comptroller. 
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  13.3 Period for compliance with Comptr oller’s request for information etc 
 
  For the purposes of subsection 143 (2) of the Act (which deals with giving 
information to the Comptroller), the period for complying with a request under subsection 143 (1) of the Act is 10 working days from the day on which the request is 
made. 
 
13.4 Modification of the Act in its application to Norfolk Island 
 
  Part 13 of the Act in its application to  Norfolk Island is modified as set out in 
Schedule 3. 
 
13.5 Modification of the Act in it s application to Christmas Island 
  Part 13 of the Act in its application to  Christmas Island is modified as set out in 
Schedule 4. 
 
13.6 Modification of the Act in its a pplication to Cocos (Keeling) Islands 
 
  Part 13 of the Act in its application to the Cocos (Keeling) Islands is modified as set 
out in Schedule 5. 
 Part 16  Certification trade marks  16.1 Copy of rules to be filed 
 
  For the purposes of subsection 173 (1) of the Act, (which deals with rules governing 
use) an applicant for registration of a certif ication trade mark must file a copy of the 
rules governing the use of the certification trade mark at, or as soon as practicable 
after, the time of filing of the application. 
 
16.2 Documents sent to Commission with applications for registration 
  For the purposes of subsection 174 (1) of the Act (which requires the Registrar to 
send documents), the following documents are prescribed: 
               (a) a notification of any amendment made to the application for registration of a 
certification trade mark; 
  (b) a copy of the rules governing th e use of the certification trade mark; 
  (c) any other document that is relevant to the application. 
 
Note     Under subsection 174 (1) of the Act, the Regi strar must also send to the Commission a copy of 
the application for registration. 
 
16.3 Initial assessment of applications by Commission 
  (1) For the purposes of subsection 175 (1) of the Act (which deals with consideration of 
applications), the Commission must make an initial assessment of an application and 
of any documents received under regulation 16.2 in relation to the application as soon 
as practicable after receipt. 
  (2) As soon as practicable after th e initial assessment, the Commission must: 
 
  (a) notify the applicant and the Re gistrar of the initial assessment; and  IP/N/1/AUS/T/4 
 Page 35 
 
 
                (b) state in the notice to the applicant that th e initial assessment will be 
advertised in the Official Journal ; and 
  (c) state in the notice to the applicant th at the applicant, or another person, may: 
    (i) respond in writing to the Commission; and 
   (ii) request the Commission in writing to hold a conference; 
  in relation to the initial assessment not more than 1 month after the 
date of publication of the Official Journal in which the advertisement 
is published. 
 
 (3) After receiving notice from th e Commission, the Registrar must: 
   (a) advertise the initial assessment in the Official Journal ; and 
  (b) include in the advertisement a st atement mentioned in paragraph (2) (c). 
 
 (4) If, in the period that ends 1 month af ter the date of the advertisement in the Official 
Journal of an initial assessment: 
              (a) a person responds in writing to the Commission in relation to a notice under 
subregulation (2) or an advertis ement under subregulation (3); and 
             (b) no person requests the Commission in writing to hold a conference on a 
matter included in the initial assessment; 
  the Commission must, before making a decision on the application:              (c) give to the applicant and each respondent a copy of each response to which 
paragraph (a) refers that is received from another person; and 
             (d) invite the applicant and each respondent to make a written submission on 
each response mentioned in paragraph (c). 
 
16.4 Holding of conferences 
 
 (1) If, in the period that ends 1 month af ter the date of the advertisement in the Official 
Journal of an initial assessment: 
 
              (a) a person requests the Commission in writing to hold a conference on a matter 
included in the initial assessment; and 
              (b) no person otherwise r esponds in writing to the Commission in relation to a 
notice under subregulation 16.3 (2) or an advertisement under subregulation 
16.3 (3); 
  the Commission must hold the conference before it makes a decision on the 
application. 
  (2) As soon as practicable after the Commission receives a request under 
subregulation (1) for a conference, the Commission must: 
 
  (a) invite the applicant and any other person mentioned in subregulation (1): 
    (i) to attend the conference; and                            (ii) to make an oral or written submission at the conference on the views 
expressed by another person that are mentioned in 
subparagraph (b) (ii); and 
   (b) give to the applicant and any othe r person mentioned in subregulation (1): 
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Page 36  
 
                             (i) reasonable notice of the time, date and place of the conference; and 
                           (ii) a r easonable opportunity to express views that are relevant to the 
conference, either orally at, or by written submission before or during, the conference; and 
                           (iii) a copy of each written submission to which subparagraph (ii) refers 
that is made by another person. 
  (3) If, in the period that ends 1 month af ter the date of the advertisement in the Official 
Journal of an initial assessment: 
 
              (a) a person requests the Commission in writing to hold a conference on a matter 
included in the initial assessment; and 
              (b) a person otherwise responds in writing to the Commission in relation to a 
notice under subregulation 16.3 (2) or an advertisement under subregulation 
16.3 (3); 
  the Commission must hold the conference before it makes a decision on the 
application. 
  (4) As soon as practicable after the Commission receives a request under 
subregulation (3) for a conference, the Commission must: 
 
              (a) invite the applicant and any person who has responded in writing to the 
Commission: 
    (i) to attend the conference; and                            (ii) to make an oral or written submission at the conference on the views 
expressed by another person that are mentioned in 
subparagraph (b) (ii); and 
               (b) give to the applican t and any person who has responded in writing to the 
Commission: 
 
                           (i) reasonable notice in writing of the time, date and place of the 
conference; and 
                           (ii) a r easonable opportunity to express views that are relevant to the 
conference, either orally at, or by written submission before or during, the conference; and 
                           (iii) a copy  of each response to which pa ragraph (3) (b) refers, and of 
each written submission to which subp aragraph (ii) refers, that is 
made by another person. 
  (5) If a person who is invited to attend a conference:  
              (a) informs the Commission that the person does not wish to attend the 
conference; or 
  (b) does not attend the conference;   the conference may proceed in the absence of the person.  16.5 Consideration of applications 
 
 (1) In considering an application for regist ration of a certification trade mark for the 
purposes of making a decision under subsection 17 5 (2), (3) or (4) of the Act (which  IP/N/1/AUS/T/4 
 Page 37 
 
 
  deal with consideration of applications),  the Commission must have regard to the 
matters specified in subregulation (2). 
  (2) The Commission must have regard to:  
  (a) the initial assessment; and 
              (b) any response in relation to a notice under subregulation 16.3 (2) or an 
advertisement under subregulation 16.3 (3) that is relevant; and 
              (c) any relevant submission that is made to the Commission in writing about the 
initial assessment, whether or not the s ubmission is made in relation to a 
conference; and 
  (d) any relevant oral submis sion made during a conference; and 
  (e) any other relevant matter.  
16.6 Criteria for Commission consideration of rules 
 
  For the purposes of paragraph 175 (2) (b) of  the Act (which deals with criteria for 
rules governing use), the Commission must have regard to the following criteria: 
               (a) the principles relating to restrictive trade practices set out in Part IV of the 
Trade Practices Act 1974 ; 
              (b) the principles relating to unconscionable conduct set out in Part IVA of that 
Act; 
              (c) the principles relating to unfair practices, product safety and product 
information set out in Part V of that Act. 
 16.7 Matters to be included in advertisement of adverse decision 
 
  For the purposes of paragraph 175 (4) (b) of  the Act (which deals with advertisement 
of a decision of the Commission not to give a certificate), the advertisement in the Official Journal must include a statement to the effect that, subject to the 
Administrative Appeals Tribunal Act 1975 , application may be made to the 
Administrative Appeals Tribunal for the review of the decision to which the 
advertisement relates. 
 
16.8 Applications to vary rules 
  (1) For the purposes of subsection 178 (1) of the Act (which deals with the variation of 
rules), the registered owner of a certification trade mark may apply to the Commission to approve a variation of the rules governing the use of the certification trade mark. 
  (2) An application to approve the variation of the rules governing the use of a registered 
certification trade mark must: 
   (a) be in writing; and               (b) have with it a copy  of the rules governing the use of the registered 
certification trade mark that incorporate the proposed variation. 
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  16.9 Consideration of applications to vary rules 
 
 (1) The Commission must make an initial assess ment of an application for approval of 
the variation of the rules governing the use of a registered certification trade mark as 
soon as practicable after it receives the application. 
 
 (2) Subregulations 16.3 (2), (3) and (4) a nd regulation 16.4 apply to an application to 
approve the variation of the rules governing the use of a registered certification trade mark as if a reference in those provisions to an application for registration of a certification trade mark were a reference to an application to approve the variation of 
the rules governing the use of a registered certification trade mark. 
  (3) Subregulation 16.5 (2) applies to a decision whether to approve an application for 
variation of the rules governing the use of a registered certification trade mark. 
 
Note     Subsection 178 (3) of the Act requires the Commission, in deciding whether to approve a 
variation, to have regard to prescribed criteria, which are the criteria set out in regulation 16.6. 
  
16.10 Matters to be included in notices of variation 
 
  For the purposes of subsection 178 (4) of the Act (which deals with notice of its 
decisions by the Commission), the notice to be advertised in the Official Journal must 
include a statement to the effect that, subject to the Administrative Appeals Tribunal 
Act 1975 , application may be made to the Administrative Appeals Tribunal for review 
of the decision to which the notice relates. 
 
16.11 Assignment of registered certification trade marks 
  (1) An application to the Commission for its  consent to the assignment of a registered 
certification trade mark must: 
   (a) be made by the registered owner of the certification trade mark; and               (b) state the name, address, and address for service of the prospective assignee; 
and 
              (c) state whether the prospective assignee proposes to continue after assignment 
to apply the same rules governing use of the registered certification trade 
mark that the registered owner of the trade mark applies; and 
  (d) if the prospective assignee does not pr opose to continue to apply those rules: 
 
                           (i) state any variation of the rules that the prospective assignee proposes 
to apply after assignment; and 
                           (ii) have with it a copy of the rules incorporating the proposed variation 
that the prospective assignee proposes to apply after assignment. 
 
 (2) In considering an application, the Commission must have regard to the following 
matters: 
               (a) whether the prospective assignee, or any prospective approved certifier 
within the meaning of paragraph 173 (2) (a) of the Act, is competent to certify the goods and/or services in resp ect of which the certification trade 
mark is registered; 
              (b) if the prospective assi gnee does not propose after the assignment to continue 
to apply the same rules governing use of the registered certification trade  IP/N/1/AUS/T/4 
 Page 39 
 
 
  mark as the registered owner of the tr ade mark applies — whether, if the 
application were an applica tion to approve the variation of those rules that the 
prospective assignee proposes to vary af ter the assignment, the application 
would be approved by the Commission. 
 Part 17  Defensive trade marks  17.1 Evidence in support of applications 
 
  An applicant for registration of a defens ive trade mark must file evidence in support 
of the application at, or as soon as practicable after, the time of filing of the 
application. 
 
Part 19  Administration 
 
19.1 Trade Marks Office and sub-offices — business hours  
  The hours of business of the Trade Marks Office and each sub-office of the Trade 
Marks Office are from 10 a.m. to 4 p.m. on each day other than: 
   (a) a Saturday or a Sunday; or 
  (b) a public holiday: 
    (i) where the Office or sub-office is located; or    (ii) for the purposes of the Aust ralian Public Service in that place. 
 19.2 Persons to whom Registrar may delegate (Act, s 206 (1)) 
 
  For subsection 206 (1) of the Act, a person holding, or performing the duties of, an 
office in the Trade Marks Office stated in  Schedule 6 is a person to whom the 
Registrar may delegate all or any of the Registrar’s powers or functions under the 
Act. 
 
Part 21  Miscellaneous 
 Division 1 Applications and other documents 
 
21.1 Compliance with instructions on approved forms 
 
  If:                (a) an application, notice or request under the Act or these regulations is required 
to be in an approved form; and 
              (b) a blank form that may be used in making an application or request or giving 
notice: 
    (i) is supplied by the Registrar; and    (ii) contains directions about completing that form; 
  the person who completes the form must comply with those directions. 
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  21.2 Filing of documents — requirements as to form 
 
 (1) A document to be filed at the Trade Ma rks Office must comply with the requirements 
set out in Schedule 7. 
 (2) If the document does not comply with th e requirements in Schedule 7, the Registrar 
may return the document to the person fro m whom it was received with a statement 
setting out the requirements that have not been complied with. 
  (3) A document may be filed by facsimile transmission:  
  (a) if no fee is payable on filing the document; or 
              (b) if a fee is payable on filing the document — if the document is accompanied 
by: 
    (i) documentary evidence that the fee has been paid; or 
   (ii) written authorisation of the payment. 
  (4) If a document is filed by a person by facsimile transmission, the Registrar may 
require the person to file the original  document from which the facsimile was 
transmitted. 
 21.3 Filing of documents — common requirements 
 
 (1) A person who files an application, notice or request must include in the application, 
notice or request the business or residential address of: 
 
  (a) the person making the application or request or giving the notice; or 
  (b) the person on whose behalf the a pplication, notice or request is made. 
  (2) If an address recorded in the Register or included in an application, notice or request 
that is filed changes, the person whose a ddress changes, or a person acting on behalf 
of that person, must notify the Registrar of the new address. 
 
 (3) If the Registrar is notified of a new address, the Registrar must amend the Register, 
application, notice or request accordingly. 
  (4) An application, notice or request that is to be filed must be signed by, or on behalf of, 
the person making the application or request , or giving the notice, and dated by the 
signatory. 
 
Note     Section 212 of the Act also deals with th e making and signing of applications, notices and 
requests. 
 
21.4 Filing of documents — treatment of non-complying documents 
 
  If a document received for filing at the Trade Marks Office fails to comply with the 
Act or these regulations, the Registrar may: 
   (a) treat the document as not having been filed at the Trade Marks Office; or               (b) treat the document as ha ving been filed, but require  the person who filed the 
document to make, or cause to be made, any alterations to the document that 
are necessary to enable the document to so comply. 
  IP/N/1/AUS/T/4 
 Page 41 
 
 
  Note     Regulation 4.2 sets out re quirements with which applications  for the registration of trade 
marks must comply to be taken as having been filed. 
 
21.5 Filing of documents — date of receipt to be marked 
 
 (1) A document that is received for filing must  be marked by the Registrar with the date 
on which it is received. 
  (2) If the Trade Marks Office or a sub-o ffice provides a facility for the receipt of 
documents (other than documents filed elect ronically or by facsimile transmission), 
when the Trade Marks Office or sub-office is not open to the public for business, a 
document received by means of that facility is taken to have been received on the day 
on which the Trade Marks Office or sub-office was last open to the public for 
business before the document was received. 
  (3) Except as otherwise provided by the Act or these regulations, a document is taken to 
be filed at the Trade Marks Office on the date on which it is received by the Trade 
Marks Office. 
 
21.6 Declarations 
 
 (1) In this regulation: 
 
  diplomatic or consular officer  means a person who holds any of the following offices 
of the Commonwealth in a country other than Australia: 
   (a) ambassador;   (b) high commissioner; 
  (c) minister; 
  (d) chargé d’affaires;               (e) counsellor or second or third secretary at an embassy, high commission or 
other post; 
  (f) consul-general;   (g) consul; 
  (h) vice-consul. 
  (2) A declaration required by the Act or these regulations must:                (a) be headed with the title of the matter in respect of which the declaration is 
made; and 
  (b) be expressed in the first person; and   (c) state:     (i) the name and address of the declarant; and 
                           (ii) if th e declaration is made on behalf  of another person — the name 
and address of the other person; and 
               (d) if the declaration is made for the purposes of a business the details of which 
are set out in the declaration — state: 
 
                            (i) the office or position held by the person by whom the declaration is 
made; and IP/N/1/AUS/T/4 
Page 42  
 
                              (ii) the address of the place where the business is conducted or 
principally conducted; and 
               (e) be divided into para graphs, each of which must be numbered consecutively 
and, as far as practicable, be confined to 1 subject. 
 
 (3) A declaration may be made before:    (a) a magistrate; or   (b) a justice of the peace; or 
  (c) a commissioner for affidavits; or 
  (d) a commissioner for declarations; or   (e) a notary public; or   (f) a patent attorney; or               (g) a person before w hom a statutory declaration may be made under the 
Statutory Declarations Act 1959 or the law of the State, Territory or foreign 
country where the declaration is made; or 
  (h) a diplomatic or consular officer.   (4) The name and title of the person before whom the declaration is made and the date 
when, and the place where, it was made must be stated in the declaration. 
 
21.7 Declarations — additional material 
 
 (1) If:  
              (a) a person is required by th e Act or these regulations to file a declaration or 
serve a copy of the declaration; and 
              (b) it is not practicable to include in, or attach to, the declaration or copy any 
material to which the declaration refers; 
  the person must file or serve the material to which the declaration refers, or a copy of 
the material, at the same time as the declar ation or as soon as practicable after that 
time. 
  (2) A declaration is not taken to have been filed or served until any material to which the 
declaration refers, or any copy of the material, is filed or served. 
 21.8 Notification of service 
 
  A person who is required by the Act or  these regulations to serve a document on 
another person must, as soon as practicable after the document is served, notify the 
Registrar in writing of the date, place and manner of service. 
 21.9 Notice of withdrawal of applications etc 
 
 (1) For the purposes of section 214 of the Act (which deals with withdrawal of 
applications, notices and requests): 
 
  (a) a person who has filed an application, notice or request; or 
              (b) another person in whom  the right or interest in reliance on which the 
application, notice or request was filed has become vested; 
  may withdraw the application, notice or request by giving notice in writing of the 
withdrawal to the Registrar.  IP/N/1/AUS/T/4 
 Page 43 
 
 
   
 (2) If:                (a) the application, notice or  request was filed by, or on behalf of, more than 1 
person; or 
              (b) the right or interest mentioned in paragraph (1) (b) has become vested in 
more than 1 person; 
  the notice of withdrawal must be signed by, or on behalf of, each of those persons.   (3) If a person mentioned in paragraph (1) (b) withdraws an application, notice or 
request, the Registrar may require in writing that person to file documentary evidence 
that is sufficient to establish that the right or interest mentioned in that paragraph is 
vested in the person. 
 
21.10 Withdrawal of application etc — Registrar’s notice to applicants 
 
  If an application, notice or request is withdrawn in accordance with regulation 21.9, 
the Registrar must notify in writing each person by, or on behalf of whom, the 
application, notice or request was filed of the withdrawal. 
 
21.11 Change of address for service — notice to interested persons 
 
   A person:                (a) who has filed an appli cation, notice or request stating an address for service; 
and 
              (b) who notifies the Registrar of another address for service for the purposes of 
paragraph 215 (1) (b) of the Act (which deals with address for service); 
  must give a copy of the notification to:   (c) any party to proceedings relating to  the application, notice or request; and 
  (d) to any other person as directed by the Registrar.  Division 2 Proceedings before the Registrar  21.12 Applications for costs 
 
 (1) For the purposes of section 221 of the Act (which deals with costs), a party to 
proceedings before the Registrar may apply to  the Registrar, in an approved form, for 
an award of costs in relation to the proceedings. 
  (2) An application must be made:    (a) during the proceedings; or 
  (b) within 3 months from: 
                             (i) the day on which the Registrar makes a decision in the proceedings 
that ends those proceedings; or 
                            (ii) the da te of the Registrar’s notice to the party that the proceedings 
have been discontinued or dismissed; 
   as the case requires.  IP/N/1/AUS/T/4 
Page 44  
 
   (3) Before awarding costs in respect of th e proceedings, the Registrar must give each 
party to the proceedings a reasonable opportunity to be heard in relation to the award of costs. 
  (4) If a bill of costs is filed in relation to the proceedings, the bill of costs must be filed 
within 3 months from the day on which the costs are awarded. 
  
21.13 Determination of costs 
 
 (1) In this regulation, costs  does not include the costs referred to in paragraph 105 (2) (b) 
of the Act. 
  (2) For the purposes of section 221 of the Act (w hich deals with costs), costs may only be 
awarded in respect of a matter set out in Schedule 8. 
 
 (3) The amount of costs must be taxed, a llowed and certified by a trade marks officer 
appointed by the Registrar for that purpose, in accordance with: 
               (a) in the case of an item in Part 1 of Schedule 8 — the amount specified in that 
item; or 
  (b) in the case a matter set out in a clau se in Part 2 of Schedule 8 — that clause. 
  (4) The Registrar may review the taxa tion of costs by a trade marks officer. 
 
21.14 Conduct of proceedings generally 
 
 (1) The Registrar may, at the request of a pa rty to proceedings before the Registrar, other 
than opposition proceedings, give directions  in relation to the procedure in the 
proceedings. 
  (2) Directions given under subregulation (1 ) must not be inconsistent with these 
regulations. 
  (3) The Registrar must not give directions  under subregulation (1) unless the Registrar: 
               (a) is reasonably satisfied th at any person affected by the proposed directions has 
been notified of the proposed directions; and 
              (b) has given any pe rson affected a reasonable opportunity to make 
representations concerning th e proposed directions; and 
  (c) is reasonably satisfied that th e proposed directions are appropriate. 
  (4) For the purposes of paragraph (3) (b), re presentations may be made in writing or at a 
hearing or by such other means as the Registrar reasonably allows. 
  (5) Subject to these regulations, the Regi strar may determine the procedure to be 
followed in proceedings before the Registrar. 
 
Note    Regulation 5.16 deals with directions as to procedure in opposition proceedings. 
  IP/N/1/AUS/T/4 
 Page 45 
 
 
  21.15 Hearings by Registrar 
 
 (1) This regulation applies if the Act or the se regulations provide for a person to be heard 
by the Registrar. 
 
 (2) A request for a hearing by the Registrar must be in an approved form. 
  (3) On request, or on his or her own initiative, the Registrar may:    (a) fix a time, date and place for the hearing; and 
              (b) give the parties to the hearing at least 10 days’ notice in writing of the 
hearing and of the time, date and place fixed for the hearing. 
  (4) A party must, as soon as practicable after being notified of a hearing, inform the 
Registrar in writing whether the party wants to be heard. 
 
 (5) A party may attend a hearing in person or by such means as the Registrar reasonably 
allows. 
  (6) A party may make representations in writing before or during a hearing. 
 
 (7) A hearing must be conducted with as little formality and technicality, and with as 
much expedition, as the requirements of the Act and these regulations and a proper 
consideration of the matters before the Registrar, allow. 
  (8) The Registrar is not bound by the rules of evidence but may inform himself or herself 
on any matter that is before  him or her in any way th at the Registrar reasonably 
believes to be appropriate. 
  (9) The Registrar may adjourn a hearing by notifying each party to the hearing 
accordingly. 
 
 (10) Subject to these regulations, the Regist rar may give a direction that is reasonably 
necessary for the conduct of the hearing. 
 
21.16 Registrar not required to hold hearings 
  (1) The Registrar is not required to proceed to hear a matter if: 
               (a) the Registrar reasonabl y believes that no party wishes to be heard in the 
matter; or 
              (b) at least 1 of the fo llowing circumstances applies in relation to each party 
notified of the hearing under subregulation 21.15 (3): 
 
                           (i) the party has not indicated to the Registrar that the party wishes to be 
heard; or 
                           (ii) the part y has informed the Registrar that the party does not wish to be 
heard; or 
   (iii) the party does not attend the hearing. 
  (2) The Registrar may decide a matte r to which subregulation (1) refers: 
   (a) without a hearing; and IP/N/1/AUS/T/4 
Page 46  
 
                (b) by reference to relevant information about the matter that is held in the Trade 
Marks Office. 
 
21.17 Evidence in proceedings 
  (1) Evidence that is given in writing in any proceedings before the Registrar must be in 
the form of a declaration. 
  (2) The Registrar may require a person who h as made a declaration that is filed in the 
proceedings to attend before the Registra r to give evidence orally on oath or 
affirmation instead of, or in addition to, the evidence contained in the declaration. 
  (3) The Registrar may permit a party to  cross-examine a person who attends under 
subregulation (2). 
 
Note    Regulations 21.6 and 21.7 deal with making and filing declarations. 
 
21.18 Documents not in English 
   If a document that is filed as evidence in  proceedings before the Registrar is not in 
English, the party who files the document must file with it: 
   (a) a translation of the document into English; and   (b) a certificate of verification in relation to the translation.  21.19 Registrar may use information available 
 
 (1) If:                (a) information that is availa ble to the Registrar is relevant to proceedings before 
the Registrar; and 
              (b) the Registrar has reason to believe that the information is not known to a 
party to the proceedings; and 
              (c) the Registrar propo ses to take the information into account in making a 
decision in the proceedings; 
  before making the decision the Registrar must: 
  (d) provide the information to the party; and               (e) give the party a r easonable opportunity to make representations about the 
information. 
  (2) For the purposes of paragraph (1) (e), th e representations may be made in writing or 
at a hearing or by such other means as the Registrar reasonably allows. 
 
21.20 Statements of reasons for decision 
 
  If: 
 
              (a) the Registrar notifies a pa rty to proceedings before the Registrar of a decision 
of the Registrar in the proceedings; and 
  (b) the party requests the Registrar in  writing for the reasons for the decision; 
  the Registrar must comply with the request.   IP/N/1/AUS/T/4 
 Page 47 
 
 
  Division 3 General 
 
21.21 What fees are payable 
 
 (1) For subsection 223 (1) of the Act (whi ch deals with fees), the fees specified in 
column 3 of an item in Schedule 9 are paya ble in respect of a matter specified in 
column 2 of that item. 
 
 (2) If a person asks the Registrar, under subsection 75 (1) of the Act, to renew the 
registration of a trade mark before it expires, the fee payable for the renewal is the fee 
that would be payable if the person had ask ed for renewal of the registration on the 
day when it would otherwise expire. 
  (3) Subregulation (4) applies if a person as ks the Registrar, under section 79 of the Act, 
to renew the registration of a trade mark after it expires. 
 
 (4) The fees payable for the renewal are:                (a) the fee that would have  been payable if the person had asked for renewal of 
the registration on the day when it expired; and 
  (b ) the additional fee stated in item 9 of Schedule 9 for the period: 
 
                           (i) beginning on the day after the day when the registration expires; and     (ii) ending on the day when the request for renewal is filed.  
21.22 How fees are to be paid 
 
 (1) For the purposes of subsection 223 (2) of th e Act (which deals with payment of fees), 
a fee, other than a fee payable under Part 13 of the Act, must be paid to the Registrar at the Trade Marks Office or at a sub-office of the Trade Marks Office. 
  (2) A fee payable under Part 13 of the Act must be paid to the Comptroller. 
 
 (3) A fee must be paid in accordance with a direction given:    (a) in the case of a fee that is paid to the Registrar — by the Registrar; and   (b) in the case of a fee that is paid to the Comptroller — by the Comptroller; 
  as to the way in which it is to be paid. 
 
21.23 Notice of non-payment of fee 
 
  For the purposes of subsection 223 (5) of the Act (which deals with non-payment of 
fees), the Registrar or the Comptroller must  notify in writing the person concerned, or 
his or her agent, that the fee has not been  paid, within 14 days after the doing of the 
act, or the filing of the document, for which the fee is payable. 
 
21.24 Refunds etc of fees 
  (1) If, because of an error or omission by a trade marks officer, a person becomes liable 
to pay a fee for which the person would not otherwise have been liable, the Registrar 
may: 
   (a) remit the whole or part of the fee; or IP/N/1/AUS/T/4 
Page 48  
 
    (b) if the fee has been paid — refund the whole or part of the fee to that person. 
  (2) If:    (a) the acceptance of an application for registration of a trade mark; or 
              (b) the registration of a trade mark; 
  is delayed because of an error or omission by a trade marks officer, the period that the 
Registrar reasonably believes to be equal to  the period of the delay resulting from the 
error or omission is not to be taken in to account for the purposes of calculating the 
amount of the fee for the matter in relation to which the error or omission was made. 
 
21.25 Extension of time — application 
 
  For the purposes of subsections 224 (2 ) and (3) of the Act (which deal with 
extensions of time), an application for an extension of time for doing a relevant act: 
 
  (a) must be in an approved form; and   (b) must be accompanied by a declaration stating:                             (i) the facts on which the grounds specified in the application are based; 
and 
                           (ii) if the period for doing the relevant act has ended — the reason why 
the application was not made before the period ended. 
 
Note    Regulations 21.6 and 21.7 deal with making and filing declarations. 
 
21.26 Extension of time — notice of opposition 
 
 (1) For the purposes of subsection 224 (6) of the Act (which deals with opposition to an 
extension), a person may oppose an applicati on for an extension of time for more than 
3 months by filing a notice of opposition with the Registrar. 
  (2) A notice of opposition:    (a) must be in an approved form; and 
              (b) must be filed within 1 month after the application for an extension of time is 
advertised in the Official Journal . 
  (3) The opponent must serve a copy  of the notice on the applicant. 
 
21.27 Extension of time — opposition proceedings 
 
  For the purposes of subsection 224 (6) of the Act (which deals with opposition to an 
extension), regulations 5.7 to 5.17 (inclusi ve) apply to an oppositio n to an application 
for an extension of time. 
 21.28 Extension of time — prescribed acts and documents 
 
 (1) For the purposes of paragr aph (a) of the definition of relevant act  in 
subsection 224 (8) of the Act, the following acts are prescribed: 
   (a) complying with the requirements of subregulation 4.2 (1);  IP/N/1/AUS/T/4 
 Page 49 
 
 
                (b) claiming a right of priori ty for an application for the registration of a trade 
mark under subsection 29 (1) of the Act; 
              (c) making a divisional appli cation for the registration of a part of a trade mark 
under subsection 47 (2) of the Act; 
              (d) making a divisional application for the registration of a trade mark under 
subsection 49 (2) of the Act; 
              (e) making a divisional a pplication for the registration of a trade mark under 
subsection 49 (4) of the Act; 
  (f) serving a copy of the evidence under regulation 5.7, 5.9 or 5.12;   (g) serving a copy of a notice under regulation 5.8, 5.11 or 5.13; 
  (h) serving a copy of further evidence under regulation 5.15; 
  (i) responding to a notice to which subregulation 8.1 (2) applies;               (j) requesting that an appli cation for the registration of a trade mark be amended 
under paragraph 64 (b) of the Act; 
              (k) requesting renewal of the registration of a trade mark under section 79 of the 
Act; 
  (l) responding to a notice to which subregulation 10.5 (1) applies;   (m) responding to a notification of the Registrar under subregulation 11.3 (4); 
  (n) complying with the authorised user’s request referred to in regulation 13.2;   (o) complying with a request for info rmation referred to in regulation 13.3; 
  (p) responding to a notice under subregulation 16.3 (2); 
  (q) responding to an advertisem ent under subregulation 16.3 (3); 
              (r) making a claim for priority under section 29 of the Act for an application for 
the registration of a trade mark in th e circumstances mentioned in section 244 
of the Act. 
 
 (2) For the purposes of paragraph (b) of the definition of relevant act  in 
subsection 224 (8) of the Act, th e following documents are prescribed: 
               (a) a notice of opposition to the registration of a trade mark under section 52 of 
the Act; 
  (b) a notice of opposition to which subregulation 21.26 (1) applies. 
 
21.29 Convention countries 
 
 (1) For the purposes of section 225 of the Act (which deals with Convention countries), 
each of the countries specified in Schedule 10 is a Convention country for the 
purposes of the Act. 
  (2) For the purposes of subsection 225 (2) of th e Act, an application for the registration 
of a trade mark, being an application that is made under the treaty done at Bangui in the Central African Republic on 2 March 1977 entitled the Agreement Relating to the 
Creation of an African Intellectual Property Organisation, Constituting a Revision of 
the Agreement Relating to the Creation of an African and Malagasy Office of Industrial Property (a treaty subsisting between 2 or  more Convention countries), is, 
in accordance with the terms of that treaty, d eclared to be equivalent to an application 
made in each of those Convention countries. 
 
 (3) For the purposes of subsection 225 (2) of th e Act, an application for the registration 
of a trade mark, being an application that is made under the Benelux Convention 
Concerning Trademarks done at Brussels on 19 March 1962 (being a treaty 
subsisting between 2 or more Convention c ountries), is, in accordance with the terms IP/N/1/AUS/T/4 
Page 50  
 
  of that treaty, declared to be equivalent to an application made in each Convention 
country that is a High Contracting party within the meaning of that treaty. 
 
21.30 Rights of patent attorneys 
   A patent attorney has, in relation to th e documents and property of a client, the same 
right of lien that a solicitor has in relation to the documents and property of a client. 
 
21.31 Incapacity of certain persons 
  (1) If a person is incapable of doing anythi ng required or permitted by the Act or these 
regulations to be done because of infancy or physical or mental disability, a court 
may, on the application of a person acting on behalf of the incapable person or of 
another person interested in the thing being done: 
 
  (a) do the thing; or 
  (b) appoint a person to do the thing;   in the name, and on behalf, of the incapable person.   (2) A thing done in the name of, and on beha lf of, an incapable person is taken to have 
been done by that person as if the person had not been incapable when the thing was 
done. 
 
21.32 Destruction of documents 
 
 (1) The Registrar may order the destructi on of documents relating to trade marks the 
registration of which ceased not less than 25 years before the date of the order. 
  (2) Subregulation (1) does not authorise the destruction of:    (a) the Register; or               (b) documents that are consid ered by the Registrar or the Director-General of the 
Australian Archives to be of legal or historical interest. 
21.33 Directions not otherwise prescribed 
 
  If the Registrar reasonably believes that it is necessary for the proper conduct of 
proceedings for a person to perform an act, file a document or produce evidence that 
the person is not required by the Act or these regulations to perform, file or produce, 
the Registrar may give notice in writing to the person requiring him or her: 
   (a) to perform the act; or   (b) file the document; or   (c) to produce the evidence; 
  that is specified in the notice. 
 
21.34 Requirements cannot be comp lied with for reasonable cause 
 
  If: 
 
             (a) under these regulations, a pe rson is required to do an act or thing, sign a 
document, make a declaration or file or give to the Registrar a document or evidence; and  IP/N/1/AUS/T/4 
 Page 51 
 
 
                (b) the Registrar is reasona bly satisfied that the person cannot comply with the 
requirement; 
  subject to any condition that the Regist rar may reasonably impose, the Registrar may 
dispense with the requirement. 
 Part 22 Transitional provisions  22.1 Application of the Act 
 
 (1) If: 
 
              (a) an application for th e registration of a trade mark is lodged under the Trade 
Marks Act 1955 ; and 
              (b) the Registrar has issued a report on the application under the Trade Marks 
Act 1955 ; and 
              (c) immediately before the commencement of these regulations, the application 
is pending and has not been accepted; 
  the report is taken to have been issued  by the Registrar under the Act on the date on 
which it was issued under the Trade Marks Act 1955 . 
  (2) If: 
 
              (a) an application under the Trade Marks Act 1955 for the registration of a trade 
mark is amended under the Trade Marks Act 1955 ; and 
              (b) immediately before the commencement of these regulations, the application 
is pending and has not been accepted; 
  the amendment is taken to have been made under the Act on the date on which it was 
made under the Trade Marks Act 1955 . 
  (3) If the particulars of an application for the registration of a trade mark have been 
published before the commencement of these regulations: 
 
  (a) in the Official Journal ; or 
              (b) by listing in a computer  database maintained by the Trade Marks Office; or 
              (c) by making a record of the application available, in electronic or other form, in 
each of the sub-offices of the Trade Marks Office; 
  then, for the purposes of subsection 45 (2 ), paragraph 64 (a), subsection 65 (1) and 
paragraph 83 (1) (a) of the Act, those par ticulars are taken to have been published 
under section 30 of the Act. 
 
22.2 Fees payable in relation to certain matters 
 
 (1) Subject to subregulation (2), a fee payable in relation to proceedings: 
 
              (a) relating to an application for the registration of a trade mark of a kind 
mentioned in subsection 241 (2) of the Act (which deals with pending applications for registration of trade marks); or 
              (b) of a kind mentioned to which section 251 of the Act (which deals with action 
for removal of trade marks from the Register for non-use) applies; 
  is the fee that would have been paya ble if these regulations had applied to the 
proceedings. 
 IP/N/1/AUS/T/4 
Page 52  
 
   (2) The fee payable for the registration of a trade mark of a kind mentioned in 
subsection 241 (2) of the Act is the fee that was payable under regulations made 
under the Trade Marks Act 1955 , being the regulations as in force when the 
application was accepted. 
 
 (5) If: 
   (a) under the repealed Act the registration of a trade mark expires in 1995; and               (b) a request is made to rene w the registration of the trade mark within the period 
of 12 months following the expiry; 
  the fee payable in relation to the request is the fee that would have been payable for 
lodgment of an application for restorati on of the trade mark under subsection 71 (1) 
of the repealed Act. 
 
22.3 Certain delegations continue 
  If, immediately before the commencement of these regulations, a person: 
   (a) was a delegate of the Registrar of Trade Marks under the repealed Act; and               (b) was exercising the powers of the Registrar in relation to a matter to which, 
under Division 3 of Part 22 of the Act, the repealed Act continues to apply; 
  the delegation of that person c ontinues in relation to the matter. 
 
22.4 Certain deferments continue 
 
 (1) If:  
              (a) the Registrar has deferred acceptance of an application for registration of a 
trade mark under subsection 33 (3) of the Trade Marks Act 1955 ; and 
              (b) the deferment was in force immediately before the commencement of these 
regulations; 
  the deferment is in force under subreg ulation 4.13 (1) after the commencement of 
these regulations as if the Registrar had deferred acceptance of the application on the 
day on which it was deferred under the Trade Marks Act 1955 . 
  (2) Subject to paragraph 4.14 (2) (a), the de ferment period for an application referred to 
in subregulation (1) ends: 
 
             (a) when the Registrar is reasonably satisfied that there are no longer grounds for 
rejecting the application under subsecti on 44 (1) or (2) of the Act because of 
another trade mark in respect of which an application for registration has been made by another person; or 
              (b) if the period do es not end in accordance with paragraph (a) — when 
proceedings in respect of the application for registration of the other trade 
mark are finalised. 
  (3) If acceptance of the application is deferred  as a result of the operation of more than 1 
provision of these regulati ons, the deferment period ends in accordance with 
whichever of the provisions of: 
 
  (a) paragraph (2) (b); and   (b) subregulation 4.14 (3), other than paragraph 4.14 (3) (a);   under which the deferment period ends later or last, as the case requires.   IP/N/1/AUS/T/4 
 Page 53 
 
 
  22.5 Certain extensions of time continue 
 
  If:                (a) the Registrar has exte nded a period of time under section 130 or 131 of the 
Trade Marks Act 1955 ; and 
              (b) the extended period of  time had not ended before the commencement of these 
regulations; 
  the period ends when it would have ended if  that section had continued to be in force. 
 22.6 Deferment of acceptance — certain applications 
 
  If:                (a) an applicant requests th e Registrar to defer acceptance of an application for 
registration of a trade mark because of another trade mark that is registered 
by another person; and 
              (b) the applicant has lodged an application under section 23 of the Trade Marks 
Act 1955 in respect of the other trade mark; 
  then:               (c) regulation 4.13 applies in  relation to the first-mentioned application as if the 
reference in subparagraph 4.13 (1) (c) ( iii) to an application under section 92 
were a reference to an application under section 23 of the Trade Marks Act 
1955 ; and 
             (d) regulation 4.14 applies in relation to that application as if the reference in 
paragraph 4.14 (3) (c) to Part 9 of the Trade Marks Act 1995 were a reference 
to section 23 of the Trade Marks Act 1955 . IP/N/1/AUS/T/4 
Page 54  
 
  Schedule 1  Classification of goods and services 
 
(regulation 3.1)   Part 1     Classes of goods  
Column 1 
Item number (Class number) Column 2 
Class of goods (Class heading) 
1 Chemicals used in industry, science and photography, as well as in 
agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical  substances for preserving foodstuffs; 
tanning substances; adhesives used in industry 
2 Paints, varnishes, lacquers; pr eservatives against rust and against 
deterioration of wood; colourants; mordan ts; raw natural resins; metals in foil 
and powder form for painters, d ecorators, printers and artists 
3 Bleaching preparations and other su bstances for laundry use; cleaning, 
polishing, scouring and abrasive prep arations; soaps; perfumery, essential 
oils, cosmetics, hair lotions; dentifrices 
4 Industrial oils and greases; lubrican ts; dust absorbing, wetting and binding 
compositions; fuels (including motor spirit) and illuminants; candles, wicks 
5 Pharmaceutical, veterinary and sanitary  preparations; dietetic substances 
adapted for medical use, food for babies; plasters, materials for dressings; 
material for stopping teeth, dental wa x; disinfectants; preparations for 
destroying vermin; fungicides, herbicides 
6 Common metals and their alloys; metal building materials; transportable 
buildings of metal; materials of metal for railway tracks; non-electric cables 
and wires of common metal; ironmongery , small items of metal hardware; 
pipes and tubes of metal; safes; goods of  common metal not included in other 
classes; ores 
7 Machines and machine tools; motors a nd engines (except for land vehicles); 
machine coupling and transmission components (except for land vehicles); 
agricultural implements, other than ha nd operated; incubators for eggs 
8 Hand tools and implements (hand operated); cutlery; side arms; razors 9 Scientific, nautical, surveying, electric, photographic, cinematographic, 
optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, 
recording discs; automatic vending m achines and mechanisms for coin 
operated apparatus; cash registers, calculating machines, data processing 
equipment and computers; fire-extinguishing apparatus 
10 Surgical, medical, dental and veterinary  apparatus and instruments, artificial 
limbs, eyes and teeth; orthopaedic articles; suture materials  IP/N/1/AUS/T/4 
 Page 55 
 
 
  Column 1 
Item number (Class number) Column 2 
Class of goods (Class heading) 
11 Apparatus for lighting, heating, st eam generating, cooking, refrigerating, 
drying, ventilating, water supply and sanitary purposes 
12 Vehicles; apparatus for locomotion by land, air or water 
13 Firearms, ammunition and projectiles; explosives; fireworks 
14 Precious metals and their alloys and goods in precious metals or coated 
therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments 
15 Musical instruments 16 Paper, cardboard and goods made from th ese materials, not included in other 
classes; printed matter; bookbinding material; photographs; stationery; 
adhesives for stationery or household purposes; artists’ materials; paint 
brushes; typewriters and office requisite s (except furniture); instructional and 
teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks 
17 Rubber, gutta-percha, gum, asbest os, mica and goods made from these 
materials and not included in other classes; plastics in extruded form for use 
in manufacture; packing, stopping and in sulating materials; flexible pipes, 
not of metal 
18 Leather and imitations of leather, and goods made of these materials and not 
included in other classes; animal skin s, hides; trunks and travelling bags; 
umbrellas, parasols and walking sticks; whips, harness and saddlery 
19 Building materials (non-metallic); non-metallic rigid pipes for building; 
asphalt, pitch and bitumen; non-metalli c transportable buildings; monuments, 
not of metal 
20 Furniture, mirrors, picture frames; goods (not included in other classes) of 
wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, 
mother-of-pearl, meerschaum and substitutes for all these materials, or of 
plastics 
21 Household or kitchen utensils and contai ners (not of precious metal or coated 
therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleanin g purposes; steel wool; unworked or 
semi-worked glass (except glass used in building); glassware, porcelain and 
earthenware not included in other classes 
22 Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not 
included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials 
23 Yarns and threads, for textile use 
24 Textiles and textile goods, not included in other classes; bed and table covers 
25 Clothing, footwear, headgear 26 Lace and embroidery, ribbons and brai d; buttons, hooks and eyes, pins and IP/N/1/AUS/T/4 
Page 56  
 
  Column 1 
Item number (Class number) Column 2 
Class of goods (Class heading) 
needles; artificial flowers 
27 Carpets, rugs, mats and matting, li noleum and other materials for covering 
existing floors; wall hangings (non-textile) 
28 Games and playthings; gymnastic and sporting articles not included in other 
classes; decorations for Christmas trees 
29 Meat, fish, poultry and game; meat extracts; preserved, dried and cooked 
fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats 
30 Coffee, tea, cocoa, sugar, rice, tapi oca, sago, artificial coffee; flour and 
preparations made from cereals, bread, pastry and confectionery, ices; honey, 
treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); 
spices; ice 
31 Agricultural, horticultural and forestry  products and grains not included in 
other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt 
32 Beers; mineral and aerated waters a nd other non-alcoholic drinks; fruit drinks 
and fruit juices; syrups and other preparations for making beverages 
33 Alcoholic beverages (except beers) 34 Tobacco; smokers’ articles; matches 
 
Part 2     Classes of services 
 
Column 1 
Item number (Class number) Column 2 
Class of services (Class heading) 
35 Advertising; business management; business administration; office 
functions 
36 Insurance; financial affairs; mone tary affairs; real estate affairs 
37 Building construction; repair; installation services 
38 Telecommunications 
39 Transport; packaging and storage of goods; travel arrangement 40 Treatment of materials 41 Education; providing of training; entertainment, sporting and cultural 
activities 
42 Providing of food and drink; temporary accommodation; medical, 
hygienic and beauty care; veterina ry and agricultural services; legal 
services; scientific and industrial research; computer programming; services that cannot be placed in other classes. 
  IP/N/1/AUS/T/4 
 Page 57 
 
 
  Schedule 2 Signs that may not be registered as trade marks 
 
(paragraph 4.15 (f)) 
 
  Austrade  
  C.E.S.    Olympic Champion  
  Repatriation 
   Returned Airman    Returned Sailor 
 
  Returned Soldier 
 
 Schedule 3 Modifications of Part 13 of the Act — Norfolk Island 
 (regulation 13.4) 
 
Part 1 Classification of goods and services 
 
1 Section 131 (Object of Part)  
 
1.1 Omit “Comptroller”, substitute “Collector”.   1.2 Omit “Australia”, substitute “Norfolk Island”.   
2 New section 131A 
 
2.1 After section 131, insert:  
131A Definitions  
  “In this Part, unless the contrary intention appears:  
 
  Administration  and Administrator have the same meanings as in the Norfolk Island 
Act 1979 ; 
 
  Collector means the Collector of Customs appointed under section 1B of the Customs 
Ordinance 1913; 
 
  designated owner , in relation to goods imported into Norfolk Island, means the 
person identified as the owner of the goods on  the entry made in relation to the goods 
under section 4A of the Customs Ordinance 1913.”. 
 3 Section 133 (Collector may seize goods infringing trade mark)  
 
3.1 Paragraph 133 (1) (a):   Omit “Australia”, substitute “Norfolk Island”.   IP/N/1/AUS/T/4 
Page 58  
 
  3.2 Paragraph 133 (1) (b):  
 Omit “Customs Act 1901”, substitu te “Customs Ordinance 1913”.  
 3.3 Subsection 133 (2):   Omit “Comptroller” (wherever occu rring), substitute “Collector”.  
 
3.4 Subsection 133 (3):   Omit “Comptroller” and “Commonwealth” (whe rever occurring), substitute “Collector” and 
“Administration”.  
 
3.5 Subsection 133 (4):  
 Omit “Comptroller”, substitute “Collector”.   
4 Section 139 (Forfeited goods — how to be disposed  of)  
 4.1 Omit “as the Comptroller directs”, substitu te “by the Collector in accordance with any 
direction of the Minister who administers the Customs Ordinance 1913”. 
 
5 Section 140 (Power of Collector to retain control of  goods)  
 
5.1 Omit “Comptroller” (wherever occurring), substitute “Collector”.  
 
5.2 Omit “law of the Commonwealth”, substitu te “law in force in Norfolk Island”.  
 
6 Section 141 (Insufficient security)  
 6.1 Omit “Commonwealth” (wherever occu rring), substitute “Administration”.  
 6.2 Omit “Comptroller”, substitute “Collector”.   
7 Section 142 (Administration not liable for loss etc  suffered because of seizure)  
 7.1 Omit “Commonwealth”, subs titute “Administration”.  
 7.3 Paragraph 142 (a):   Omit “Comptroller”, substitute “Collector”.   8 Section 143 (Power to require information)  
 
8.1 Omit “Australia” (wherever occurri ng), substitute “Norfolk Island”.  
 8.2 Omit “Comptroller” (wherever occurring), substitute “Collector”.   Part 2    
 
 The following provisions of Part 13 of the Act are modified by omitting “Comptroller” 
(wherever occurring) and substituting “Collector”:  
 
 Subsections 132 (1), (3), (4) and (5), section 134, subsection 135 (1) and sections 136 
and 137.  IP/N/1/AUS/T/4 
 Page 59 
 
 
   
Schedule 4 Modifications of Part 13 of the Act — Christmas Island 
 
(regulation 13.5) 
 
 
1 Section 131 (Object of Part)  
 
1.1 Omit “Australia”, substitute “Christmas Island”.   2 New section 131A  
 
2.1 After section 131, insert:   
131A Definitions  
 
 “In this Part, unless the contrary intention appears: 
 
 Comptroller means the Comptroller of the Indian Ocean Territories Customs Service. 
 
 designated owner , in relation to goods imported into Christmas Island, means the person 
identified as the owner of the goods on the entr y made in relation to the goods under section 
68 of the Customs Act 1901 (C.I.).”. 
 
3 Section 133 (Comptroller may seize goods infringing  trade mark)  
 3.1 Paragraph 133 (1) (a):  
 Omit “Australia”, substitute “Christmas Island”.   3.2 Paragraph 133 (1) (b):   Omit “ Customs Act 1901 ”, substitute “ Customs Act 1901  (C.I.)”.  
 
3.3 Subsection 133 (3):  
 Omit “Commonwealth” (wherever occurring), subs titute “Territory of Christmas Island”.  
 
4 Section 140 (Power of Comptroller to retain control of  goods)  
 4.1 Omit “law of the Commonwealth”, substitute  “law in force in Christmas Island”.  
 
5 Section 141 (Insufficient security)  
 
5.1 Omit “Commonwealth” (wherever occurring), s ubstitute “Territory of Christmas Island”.  
 6 Section 142 (Territory of Christmas Island not liable  for loss etc suffered because 
of seizure)  
 
6.1 Omit “Commonwealth”, substitute “Territory of Christmas Island”.  
 7 Section 143 (Power to require information)  
 
7.1 Omit “Australia” (wherever occu rring), substitute “Christmas Island”. IP/N/1/AUS/T/4 
Page 60  
 
  Schedule 5 Modifications of Part 13 of the Act — Cocos (Keeling) Islands 
 
(regulation 13.6) 
 
 
1 Section 131 (Object of Part)   
1.1 Omit “Australia”, substitute “t he Cocos (Keeling) Islands”.  
 
2 New section 131A  
 
2.1 After section 131, insert:   
131A Definitions  
 “In this Part, unless the contrary intention appears: 
 
 Comptroller means the Comptroller of the Indian Ocean Territories Customs Service. 
 
 designated owner , in relation to goods imported into the Cocos (Keeling) Islands, means the 
person identified as the owner of the goods on the entry made in relation to the goods under 
section 68 of the Customs Act 1901 (C.K.I.).”.  
 
3 Section 133 (Comptroller may seize goods infringing  trade mark)  
 
3.1 Paragraph 133 (1) (a):   Omit “Australia”, substitute “the Cocos (Keeling) Islands”.  
 
3.2 Paragraph 133 (1) (b):   Omit “ Customs Act 1901 ”, substitute “ Customs Act 1901  (C.K.I.)”.  
 3.3 Subsection 133 (3):   Omit “Commonwealth” (wherever occurring), s ubstitute “Territory of Cocos (Keeling) 
Islands”.  
 
4 Section 140 (Power of Comptroller to retain control of  goods)  
 
4.1 Omit “law of the Commonwealth”, substitute “law  in force in the Cocos (Keeling) Islands”.  
 
5 Section 141 (Insufficient security)  
 
5.1 Omit “Commonwealth” (wherever occurring), substitute “Territory of Cocos (Keeling) 
Islands”.  
 6 Section 142 (Territory of Cocos (Keeling) Islands not  liable for loss etc suffered 
because of seizure)  
 
6.1 Omit “Commonwealth”, substitute “Terr itory of Cocos (Keeling) Islands”.  
 7 Section 143 (Power to require information)  
 
7.1 Omit “Australia” (wherever occurring), s ubstitute “the Cocos (Keeling) Islands”.  IP/N/1/AUS/T/4 
 Page 61 
 
 
  Schedule 6 Offices of persons to whom registrar may delegate 
 
(regulation 19.2) 
 
 
  Executive level 2 
  Executive level 1 
  Executive level 1 — Examiner of Trade Marks   APS level 6 — Examiner of Trade Marks   APS level 5 — Examiner of Trade Marks   APS level 4 — Examiner of Trade Marks 
  APS level 3 — Examiner of Trade Marks 
  APS level 6   APS level 5   APS level 4 
  APS level 3 
  APS level 2   APS level 1 
 
Schedule 7 Requirements for documents in paper form 
 
(regulation 21.2) 
 
 
1. Documents, except documents mentioned in re gulations 4.11, 5.5 and 22.18, must be written 
in English.  
 2. Documents (excluding documents that are to be filed by facsimile transmission) must be 
written on tough white paper of good quality, preferably international A4 size 
(297 millimetres by 210 millimetres).  
 3. The contents of a document must be written on one side only of the paper in a carbonaceous 
or other permanent ink on which bleachi ng agents do not have any effect.  
 
4. The contents of a document must be legible a nd if the document is printed, the type must not 
be less than pica (12 point).  
 5. The signature of the person signing a document and the date of signature must be placed on 
the last sheet of the document.  
 
6. The name of a person signing a document mu st be legibly written under or beside the 
signature of that person.  
 IP/N/1/AUS/T/4 
Page 62  
 
  7. An alteration made in a document before it is filed at the Trade Marks Office must be 
initialled in the margin of the document opposite to the alteration by the person who signs the 
document.  
 
 
Schedule 8 Costs, expenses and allowances  
(subregulation 21.13 (3))   Part 1 Costs 
 
Column 1 Column 2  Column 3  
Item  Matter  Amount 
1  Notice of opposition  $180  
2  Evidence in support  $480  
3  Receiving and perusing notice of opposition  $90  4  Receiving and perusing evidence in support  $210  
5  Evidence in answer  $480  
6  Receiving and perusing evidence in answer  $145  7  Evidence in reply  $240  8  Receiving and perusing evidence in reply  $90  9  Preparation of cases for hearing  $360  10  Attendance at hearing by patent attorney, trade marks agent or 
solicitor without counsel  $180 an hour or  
$810 a day  
11  Attendance at hearing by patent attorney, trade marks agent or 
solicitor instructing counsel  $145 an hour or  
$650 a day  
12  Counsel fees  $240 an hour or 
$1,080 a day 
 
Part 2 Expenses and allowances 
 
Division 1 Expenses 
 1. A person who has paid a fee prescribed in these regulations in relation to proceedings before 
the Registrar may be paid the amount of the fee.  
 2. A person attending proceedings befo re the Registrar must be paid:  
  (a) a reasonable amount for allowances for transport between the usual place of residence 
of the person and the place that he or  she attends for that purpose; and  
 (b) if the person is required to be absent overnight from his or her usual place of 
residence — a reasonable amount for allowa nces up to a daily maximum of $405 for 
meals and accommodation.  
 Division 2 Allowances  
  IP/N/1/AUS/T/4 
 Page 63 
 
 
  3. A person who, because of his or her professional, scientific or other special skill or 
knowledge, is summoned to appear as a witness before the Registrar must be paid:  
  (a) if the person is remunerated in his or her occupation by wages, salary or fees — an 
amount equal to the amount of wages, salary or fees not paid to the person because of 
his or her attendance for that purpose; and  
 (b) in any other case — an amount of not less than $95, or more than $475, for each day 
on which he or she so attends.  
 4. A person summoned to appear as a witness, othe r than a witness referred to in clause 3, before 
the Registrar must be paid:  
  (a) if the person is remunerated in his or her occupation by wages, salary or fees — an 
amount equal to the amount of wages, salary or fees not paid to the person because of his or her attendance for that purpose; and  
 (b) in any other case — an amount of not less than $54, or more than $89, for each day 
on which he or she so attends.  
  
Schedule 9 Fees 
 (regulation 21.21) 
 
Column 1 
Item Column 2 
Matter Column 3 
Fee 
1 Filing an application to register a trade mark under 
subsection 27 (5) of the Act in respect of goods or services 
in 1 or more of the prescribed classes $150 for each class 
2 Filing a divisional application unde r subsection 45 (1) $150 for each class 
3 Filing an application to register 2 or more trade marks as a 
series under section 51 of the Act $200 
4 Request for amendment under section 64 or 65 of the Act to 
include an additional prescribed class of goods or services in an application $150 for each class 
5 Filing an application for an extension of period or time 
under subregulation 4.12 (3) or regulation 5.2, 5.15 or 21.25: (a) for each month or part of a month for which the 
extension is sought 
(b) additional fee if the application or request is filed 
after the end of the period or time to be extended  
  
$65 
 
$85 
6 Filing a notice of opposition under section 52 or 96 or 
subsection 224 (6) of the Act $250 
7 Filing an application for permission to serve a copy of 
further evidence in opposition proceedings under paragraph 
5.15 (1) (b) $100 IP/N/1/AUS/T/4 
Page 64  
 
  Column 1 
Item Column 2 
Matter Column 3 
Fee 
8 Single registration of a trade mark under section 68 of the 
Act: (a) in respect of goods or services in a single prescribed 
class 
(b) in respect of goods or services in more than 1 
prescribed class  
 
$300 
 
$300 plus $260 for 
each additional class 
9 Renewal of a single registration of a trade mark under 
section 75 of the Act: (a) in respect of goods or services in a single prescribed 
class 
(b) in respect of goods or services in more than 1 
prescribed class 
 
  (c) as a result of a request made within 12 months after 
the expiry date to which section 79 of the Act refers 
  
 
$300 
 
$300 plus $150 for 
each additional class 
  in addition to any fee 
in relation to 
paragraph (a) 
or (b) — $65 for each class and for each month, or part of a month, after the 
expiry date 
10 Filing an application for removal of a trade mark from the 
Register for non-use under section 92 of the Act $150 
11 Request for a hearing: 
(a) under regulation 5.14 or 9.4 to determine an 
opposition 
(b) in relation to any other matter  
$500 
 
$300 
12 Attendance at a hearing  
(a) under regulation 5.14 or 9.4 to determine an 
opposition  
 
 
(b) in relation to any other matter   
$500 less any 
amount paid under item 11 in relation to 
the hearing 
$300 less any 
amount paid under item 11 in relation to the hearing 
13 Request for a decision under subregulation 21.16 (2) $300 
14 Taxation of costs under regulation 21.13 $65 
15 Supply of a certificate signed by the Registrar under section 
211 of the Act $15 for each 
certificate 
16 Supply of a copy of an extract from the Register or another 
document $10  IP/N/1/AUS/T/4 
 Page 65 
 
 
  Column 1 
Item Column 2 
Matter Column 3 
Fee 
17 Supply of a copy of a document for which a search is 
required $65 
18 Filing an application for linked applications to be 
considered as a single application under subsection 243 (3) of the Act $100 
 IP/N/1/AUS/T/4 
Page 66  
 
  Schedule 10  Convention countries 
 
(regulation 21.29)  Albania 
Algeria 
Angola Antigua and Barbuda Argentina Armenia  
Austria 
Azerbaijan Bahamas Bahrain Bangladesh 
Barbados 
Belarus Belgium Belize Benin Bolivia 
Bosnia and Herzogovina 
Botswana Brazil Brunei Darussalam Bulgaria 
Burkina Faso 
Burundi Cameroon Canada Central African Republic 
Chad 
Chile China Colombia Congo 
Costa Rica 
Côte d’Ivoire Croatia Cuba Cyprus Czech Republic 
Democratic Republic of the Congo 
Denmark (including Faroe Islands) Djibouti Dominica Dominican Republic 
Ecuador 
Egypt El Salvador Equatorial Guinea  Estonia 
Fiji 
Finland 
France (including all Overseas Departments and 
Territories) 
Gabon 
Gambia 
Georgia Germany Ghana Greece 
Grenada 
Guatemala Guinea Guinea-Bissau Guyana  
Haiti 
Holy See 
Honduras Hong Kong, China Hungary Iceland 
India 
Indonesia Iran, Islamic Republic of Iraq Ireland 
Israel 
Italy Jamaica Japan Jordan 
Kazakhstan 
Kenya Korea, Democratic People’s Republic of Korea, Republic of Kuwait Kyrgyzstan 
Latvia 
Lebanon Lesotho Liberia  
Libyan Arab Jamahiriya 
Liechtenstein 
Lithuania Luxembourg Macau   IP/N/1/AUS/T/4 
 Page 67 
 
 
  Madagascar 
Malawi Malaysia Maldives Mali 
Malta 
Mauritania Mauritius Mexico Moldova 
Monaco 
Mongolia Morocco Mozambique Myanmar 
Namibia 
Netherlands (including the Netherlands Antilles 
and Aruba) 
New Zealand (excluding the Cook Islands, Niue 
and Tokelau) 
Nicaragua 
Niger Nigeria Norway Pakistan Panama 
Papua New Guinea 
Paraguay Peru Philippines Poland 
Portugal 
Qatar Romania Russian Federation Rwanda 
Saint Kitts and Nevis 
Saint Lucia Saint Vincent and the Grenadines San Marino Sao Tome and Principe, Democratic Republic of  Senegal 
Sierra Leone Singapore  
Slovak Republic Slovenia 
Solomon Islands 
South Africa Spain Sri Lanka Sudan 
Surinam 
Swaziland Sweden Switzerland Syrian Arab Republic 
Taiwan 
Tajikistan Tanzania Thailand The former Yugoslav Republic of Macedonia 
Togo 
Trinidad and Tobago Tunisia Turkey Turkmenistan Uganda 
Ukraine 
United Arab Emirates United Kingdom (including the Isle of Man) United Republic of Tanzania United States of America (including all 
territories and possessions, including the 
Commonwealth of Puerto Rico) 
Uruguay Uzbekistan 
Venezuela 
Viet Nam Yugoslavia Zambia Zimbabwe 
 
     
 IP/N/1/AUS/T/4 
Page 68  
 
  Notes to the Trade Marks Regulations 1995 
 Note 1  
The Trade Marks Regulations 1995 (in force under the Trade Marks Act 1995 ) as shown in this 
reprint comprise Statutory Rules 1995 No. 341 amended as indicated in the Tables below.  
 For application, saving and transitional provisions see Table A. 
 
Table of Statutory Rules 
 
Year and  
number Date of notification  
in Gazette  Date of 
commencement Application, 
saving or transitional provisions 
1995 No. 341 6 Nov 1995 1 Jan 1996  
1996 No. 3 25 Jan 1996 R. 9: 1 Jan 1996 
Remainder: 25 Jan 1996 — 
1996 No. 184 21 Aug 1996 21 Aug 1996 — 
1996 No. 272 11 Dec 1996 R. 3: 1 Jan 1997 
Remainder: 11 Dec 1996 — 
1997 No. 346 9 Dec 1997 Rr. 3 and 4: 1 Feb 1998 
Rr. 5 and 6: 1 Jan 1998 Remainder: 9 Dec 1997 R. 3  
1998 No. 258 12 Aug 1998 12 Aug 1998 — 
1998 No. 265 26 Aug 1998 R. 5: 1 Nov 1998 
Remainder: 26 Aug 1998 — 
 
 
Table of Amendments 
 
ad. = added or inserted      am. = amended      rep. = repealed      rs. = repealed and substituted 
Provision affected How affected 
R. 1.1  rs. 1998 No. 258 
R. 4.5  am. 1997 No. 346 
R. 4.7  am. 1996 No. 184 
R. 9.1  am. 1996 No. 3 R. 19.2  rs. 1998 No. 258 R. 21.21......................... am. 1998 No. 265 R. 22.1  am. 1996 No. 3 
R. 22.2  am. 1997 No. 346 
R. 22.4  am. 1996 No. 3 R. 22.6  ad. 1996 No. 3 Schedule 1..................... am. 1996 No. 272 Schedule 6..................... am. 1996 No. 3  rs. 1998 No. 258 
Schedule 9..................... am. 1996 No. 3 
 rs. 1997 No. 346  am. 1998 No. 265 Schedule 10................... am. 1996 No. 3  rs. 1996 No. 272; 1997 No. 346 
 am. 1998 No. 258  IP/N/1/AUS/T/4 
 Page 69 
 
 
  Table A 
 Application, Saving or Transitional Provisions  Statutory Rules 1997 No. 346 
 
3 Application 
 
 3.1 The amendment of regulation 4.5 of the Trade Marks Regulations by regulation 4 of 
these regulations applies only to an appli cation filed on or after 1 February 1998. IP/N/1/AUS/T/4 
Page 70  
 
  
 
 
Statutory Rules 1997    No. 3461 
__________________ 
Trade Marks Regulations2 (Amendment) 
 
  I, THE GOVERNOR-GENERAL of the Commonwealth of Australia, acting with the advice of the 
Federal Executive Council, make the following Regulations under the Trade Marks Act 1995 . 
 Dated 8 December 1997.   
         W I L L I A M  D E A N E  
          G o v e r n o r - G e n e r a l   By His Excellency’s Command,  
J. MOORE 
Minister for Industry, Science and Tourism 
____________ 
 
1.   Commencement 
 1.1   Regulations 5 and 6 commence on 1 January 1998.  
 1.2   Regulations 3 and 4 commence on 1 February 1998.  [NOTE:  The remainder of these Regulations commence on gazettal: see Acts Interpretation Act 1901 , 
s 48.] 
 
2.   Amendment 
 
2.1   The Trade Marks Regulations are amended as set out in these Regulations.  3.   Application 
 
3.1   The amendment of regulation 4.5 of the Tr ade Marks Regulations by regulation 4 of these 
Regulations applies only to an applicati on filed on or after 1 February 1998. 
 4.   Regulation 4.5 (Period for claiming priority for an application) 
 
4.1   Omit “6 months”, substitute “2 working days”.   IP/N/1/AUS/T/4 
 Page 71 
 
 
  5.   Regulation 22.2 (Fees payable in relation to certain matters) 
 
5.1   Subregulations 22.2 (3) and (4): Omit the subregulations.  6.   Schedule 9 (Fees) 
 
6.1   Omit the Schedule, substitute:       SCHEDULE 9         Regulation 21.21 
 FEES  
Column 1 
Item Column 2 
Matter Column 3 
Fee 
1 Filing an application to register a trade mark under 
subsection 27 (5) of the Act in respect of goods or services in 
1 or more of the prescribed classes $150 for each class 
2 Filing a divisional application unde r subsection 45 (1) $150 for each class 
3 Filing an application to register 2 or more trade marks as a 
series under section 51 of the Act $200 
4 Request for amendment under section 64 or 65 of the Act to 
include an additional prescribed class of goods or services in 
an application $150 for each class 
5 Filing an application for an extension of period or time under 
subregulation 4.12 (3) or regulation 5.2, 5.15 or 21.25: (a) for each month or part of a month for which the 
extension is sought 
(b) additional fee if the applica tion or request is filed after 
the end of the period or time to be extended  
  $65 
$85 
6 Filing a notice of opposition under section 52 or 96 or 
subsection 224 (6) of the Act $250 
7 Filing an application for permission to serve a copy of 
further evidence in opposition proceedings under 
paragraph 5.15 (1) (b) $100 
8 Single registration of a trade mark under section 68 of the 
Act: (a) in respect of goods or services in a single prescribed 
class 
(b) in respect of goods or services in more 
than 1 prescribed class  
$300 
 $300 plus $260 for 
each additional 
class IP/N/1/AUS/T/4 
Page 72  
 
  Column 1 
Item Column 2 
Matter Column 3 
Fee 
9 Renewal of a single registration of a trade mark under 
section 75 of the Act: 
(a) in respect of goods or services in a single prescribed 
class 
(b) in respect of goods or services in more 
than 1 prescribed class 
 
(c) as a result of a request made within 12 months after 
the expiry date to which section 79 of the Act refers 
  
  
$500 
 
$500 plus $150 for 
each additional class 
in addition to any 
fee in relation to 
paragraph (a) or (b)—$65 for each class and for each month, or part 
of a month, after 
the expiry date 
10 Filing an application for removal of a trade mark from the 
Register for non-use under section 92 of the Act $150 
11 Request for a hearing: 
(a) under regulation 5.14 or 9.4 to determine an 
opposition 
(b) in relation to any other matter  
$500  
$300 
12 Attendance at a hearing  
(a) under regulation 5.14 or 9.4 to determine an 
opposition 
 
 
(b) in relation to any other matter 
  
 $500 less any amount paid under 
item 11 in relation 
to the hearing 
$300 less any 
amount paid under item 11 in relation 
to the hearing 
13 Request for a decision under subregulation 21.16 (2) $300 14 Taxation of costs under regulation 21.13 $65 15 Supply of a certificate signed by the Registrar under section 
211 of the Act $15 for each 
certificate 
16 Supply of a copy of an extract from the Register or another 
document $10 
17 Supply of a copy of a document for which a search is 
required $65  IP/N/1/AUS/T/4 
 Page 73 
 
 
  Column 1 
Item Column 2 
Matter Column 3 
Fee 
18 Filing an application for linked applications to be considered 
as a single application under subsection 243 (3) of the Act $100 
 
 
7.   Schedule 10 (Convention Countries) 
 
7.1   Omit the Schedule, substitute:               SCHEDULE 10         Regulation 21.29 
 
CONVENTION COUNTRIES 
Albania 
Algeria Angola Antigua and Barbuda Argentina 
Armenia  
Austria Azerbaijan Bahamas Bahrain 
Bangladesh 
Barbados Belarus Belgium Belize Benin 
Bolivia 
Bosnia and Herzogovina Botswana Brazil Brunei Darussalam 
Bulgaria 
Burkina Faso Burundi Cameroon Canada 
Central African Republic 
Chad Chile China Colombia Congo 
Costa Rica 
Côte d’Ivoire Croatia Cuba Cyprus 
Czech Republic Democratic Republic of the Congo Denmark (including Faroe Islands) Djibouti 
Dominica 
Dominican Republic Ecuador Egypt El Salvador 
Equatorial Guinea 
Estonia Fiji Finland 
France (including all Overseas Departments and 
Territories) 
Gabon 
Gambia Georgia Germany Ghana 
Greece 
Grenada Guatemala Guinea Guinea-Bissau 
Guyana  
Haiti Holy See Honduras Hong Kong, China Hungary 
Iceland 
India Indonesia Iran, Islamic Republic of IP/N/1/AUS/T/4 
Page 74  
 
  Iraq 
Ireland Israel Italy Jamaica 
Japan 
Jordan Kazakhstan Kenya Korea, Democratic People’s Republic of 
Korea, Republic of 
Kuwait Kyrgyzstan Latvia Lebanon 
Lesotho 
Liberia  
Libyan Arab Jamahiriya Liechtenstein Lithuania 
Luxembourg 
Macau Madagascar Malawi Malaysia Maldives 
Mali 
Malta Mauritania Mauritius Mexico 
Moldova 
Monaco Mongolia Morocco Mozambique 
Myanmar 
Namibia Netherlands (including the Netherlands Antilles 
and Aruba) 
New Zealand (excluding the Cook Islands, Niue 
and Tokelau) 
Nicaragua 
Niger Nigeria Norway Pakistan 
Panama 
Papua New Guinea Paraguay Peru Philippines Poland 
Portugal Qatar Romania Russian Federation 
Rwanda 
Saint Kitts and Nevis Saint Lucia Saint Vincent and the Grenadines San Marino 
Senegal 
Sierra Leone Singapore  
Slovak Republic Slovenia 
Solomon Islands 
South Africa Spain Sri Lanka Sudan 
Surinam 
Swaziland Sweden Switzerland Syrian Arab Republic Taiwan 
Tajikistan 
Tanzania Thailand The former Yugoslav Republic of Macedonia Togo 
Trinidad and Tobago 
Tunisia Turkey Turkmenistan Uganda 
Ukraine 
United Arab Emirates United Kingdom (including the Isle of Man) United Republic of Tanzania United States of America (including all territories 
and possessions, including the 
Commonwealth 
of Puerto Rico) 
Uruguay Uzbekistan Venezuela 
Viet Nam 
Yugoslavia Zambia Zimbabwe 
  IP/N/1/AUS/T/4 
 Page 75 
 
 
  NOTES 
 
1. Notified in the Commonwealth of Australia Gazette  on 9 December 1997. 
 2. Statutory Rules 1995 No. 341 as amended by 1996 Nos. 3, 184 and 272. IP/N/1/AUS/T/4 
Page 76  
 
  
 
 
Trade Marks Amendment Regulations 1998 (No. 3) 
 
Statutory Rules 1998    No. 343 
__________________________________________________________________________________ 
  I, WILLIAM PATRICK DEANE, Governor-General of the Commonwealth of Australia, acting with 
the advice of the Federal Executive Council, make the following regulations under the  Trade Marks 
Act 1995.  
 
Dated 17 December 1998.  
 
  
         W I L L I A M  D E A N E             G o v e r n o r - G e n e r a l  
By His Excellency’s Command, 
 
   NICK MINCHIN 
Minister for Industry, Science and Resources 
__________________________________________________________________________________   IP/N/1/AUS/T/4 
 Page 77 
 
 
  
 
Trade Marks Amendment Regulations 1998 (No. 3)1 
 
Statutory Rules 1998    No. 3432 
 
made under the 
 
Trade Marks Act 1995 __________________________________________________________________________________ 
 
Contents 
  
 1 Name of regulations  
 
 2 Commencement  
  3 Amendment of Trade Marks Regulations 1995   
Schedule 1 Amendment of Trade Marks Regulations 1995  
 
 
_______________ 
 
 
 
1 Name of regulations  
  These regulations are the Trade Marks Amendment Regulations 1998 (No. 3) . 
 
2 Commencement 
 
  These regulations commence on gazettal.   
3 Amendment of Trade Marks Regulations 1995 
 
  Schedule 1 amends the Trade Marks Regulations 1995 . 
 IP/N/1/AUS/T/4 
Page 78  
 
  Schedule 1  Amendment of Trade Marks Regulations 1995 
   (regulation 3) 
 [1] Subregulations 21.2 (3) and (4)       substitute 
 
 (3) A document may be filed by electronic means.    (4) If a person files a copy of a document, th e Registrar may require the person to file the 
original document. 
  (5) If a person files a document by electronic means, the Registrar may require the person 
to file a printed version of the document. 
 [2] Subregulation 21.3 (4), except the note 
 
     omit 
 
[3] Subregulation 21.22 (1) 
 
     omit 
 
  at the Trade Marks Office or at a sub-office of the Trade Marks Office 
 
[4] Schedule 7, heading 
 
     substitute 
 
 Schedule 7  Requirements for documents 
    (regulation 21.2) 
 [5] Schedule 7, item 1 
 
     omit 
 
  22.18 
 
     insert 
 
  21.18  
[6] Schedule 7, item 2 
 
     substitute 
 
 2. Documents must be durable.  [7] Schedule 7, item 3 
 
     omit 
  IP/N/1/AUS/T/4 
 Page 79 
 
 
  [8] Schedule 7, item 4 
      substitute 
 
 4. The contents of a document must be legible. 
 
[9] Schedule 7, items 5, 6 and 7 
 
     omit 
 
[10] Schedule 10 
 
     after 
 
  Burundi 
 
     insert 
 
  Cambodia, Kingdom of  
[11] Schedule 10 
 
     after 
 
  Kyrgyzstan       insert 
 
  Lao People’s Democratic Republic __________________________________________________________________________________ 
Notes 
 
1. These regulations amend Statutory Rules 1995 No. 341,  as amended by 1996 Nos. 3, 184 and 272; 1997 No. 346; 
1998 Nos. 258 and 265. 
 
2. Made by the Governor-General on 17 December 1998, and notified in the Commonwealth of Australia Gazette  
on 22 December1998.  Administered by the Mini ster for Industry, Science and Resources. 
 IP/N/1/AUS/T/4 
Page 80  
 
  
 
 
Trade Marks Amendment Regulations 1998(No. 4)  Statutory Rules 1998    No. 346 
__________________________________________________________________________________  
 I, WILLIAM PATRICK DEANE, Governor-General of the Commonwealth of Australia, acting with the advice of the Federal Executive Council, make the following regulations under the  Trade Marks 
Act 1995.  
 
Dated 17 December 1998.    
     
                  WILLIAM DEANE                                          Governor-
General 
By His Excellency’s Command,    
 
NICK MINCHIN Minister for Industry, Science and Resources __________________________________________________________________________________  IP/N/1/AUS/T/4 
 Page 81 
 
 
  
 
 
Trade Marks Amendment Regulations 1998 (No.4)1 
 Statutory Rules 1998    No. 346
2 
 
made under the 
 
Trade Marks Act 1995 __________________________________________________________________________________  
 
 
Contents 
 
 1 Name of regulations  
 
 2 Commencement    3 Amendment of Trade Marks Regulations 1995   
Schedule 1 Amendment of Trade Marks Regulations 1995  
 
  
 _______________ 
  1 Name of regulations 
 
  These regulations are the Trade Marks Amendment Regulations 1998 (No. 4) . 
 
2 Commencement 
   These regulations commence on 27 January 1999.  
 
3 Amendment of Trade Marks Regulations 1995 
 
  Schedule 1 amends the Trade Marks Regulations 1995. IP/N/1/AUS/T/4 
Page 82  
 
  Schedule 1  Amendment of Trade Marks Regulations 1995 
   (regulation 3) 
  
[1] Regulation 2.1 
 
 insert 
 
  accredited course of study  means a course of study that is accredited by the Board 
under regulation 20.2A of the Patents Regulations 1991 . 
 [2] After Part 19 
 
 insert 
 
 Part 20 Registered trade marks attorneys 
 
 20.1 Qualifications 
 
  (1) For paragraph 228A (4) (a) of the Act, the qualifications are:                             (a) for each of topic groups A, B, C and D mentioned in Schedule 5 to 
the Patents Regulations 1991 — a pass in: 
                                                      (i) an accredited course of study that includes the subject matter 
in the topic group; or 
                                        (ii) the examination conducted by the Board under 
regulation 20.6 of the Patents Regulations 1991; and 
                            (b) an award or the entitlement to an award of a degree, diploma or 
postgraduate qualification in any field of study. 
 
              (2) For paragraph (1) (a),  an exemption under regulation 20.13 of the Patents 
Regulations 1990 is taken to be a pass in the topic group for which the exemption was granted. 
               (3) For paragraph 228A (4) (c) of the Act, an offence against the Act, the 
Designs Act 1906 or the Patents Act 1990 is a prescribed offence. 
               (4) For paragraph 228A (4) (d) of the Act, an offence of dishonesty for which the 
maximum penalty is imprisonment for at least 2 years is a prescribed offence. 
 
 20.2 Currency of pass or exemption 
 
  For paragraph 20.1 (1) (a), a pass in a topic group or an exemption under 
regulation 20.13 of the Patents Regul ations 1991 remains current for the 
purpose of completing topic groups A, B, C and D: 
 
                           (a) if the institution has a policy on time periods to complete courses of 
study — for the period that accords with that policy; or 
                           (b) for th e Board, or if the institution has no policy — for 5 years from 
the year of notification that the candidate: 
  IP/N/1/AUS/T/4 
 Page 83 
 
 
                                          (i) has passed the first examinati on in a subject in 1 of the topic 
groups; or 
                                       (ii) has been exempted under regulation 20.13 of the Patents 
Regulations 1991 from having to pass a subject in 1 of the topic groups. 
 
 20.3 Procedure for registration 
 
  A person may apply for registration as a trade marks attorney in the approved 
form together with: 
 
                           (a) a written statement by the Board that the person has met the 
requirements of paragraph 228A (4) (a) of the Act; and  
                           (b) a statutory declaration by the person that the person:  
                                        (i) has not committed an offence prescribed by 
subregulation 20.1 (3); and 
                                        (ii) is not under sentence of imprisonment for an offence 
prescribed by subregul ation 20.1 (4); and 
                            (c) a statut ory declaration, by another pe rson, that the person is of good 
fame, integrity and character; and 
   (d) the fee mentioned in item 22 of Schedule 9.  
 20.4 Certificate of registration 
   When the Designated Manager registers a person as a trade marks attorney, 
the Designated Manager must give to the person a certificate of registration in the approved form. 
 
 20.5 Examinations 
   Division 2 of Part 2 of Chapter 20 of the Patents Regulations 1991  applies to 
an examination mentioned in regulation 20.1. 
 
 20.6 Advice of completion of examinable subjects and of academic qualifications 
   The Board must give to a person a written statement that the person has the 
qualifications mentioned in subregulation 20.1 (1) if: 
    (a) the person applies in the approved form; and                            (b) there are reasonable grounds for believing that the person has the 
qualifications. 
 
 20.7 Annual registration fee 
 
              (1) The annual registrati on fee mentioned in item 23 or 24 of Schedule 9 is 
payable by a registered trade mark s attorney on 1 July in each year. 
 
              (2) The Designated Manager must give to each registered trade marks attorney 
no later than 1 June in each year notice of the fee that is payable. 
 IP/N/1/AUS/T/4 
Page 84  
 
                (3) If a registered trade marks attorney does not pay the fee within 14 days after 
it is payable, the Designated Manager must: 
                            (a) remove  the name of the attorney from the Register of Trade Marks 
Attorneys; and  
                           (b) notify the attorney of that removal. 
 
 20.8 Restoration of name to the Register 
 
  The Designated Manager may restore a person’s name to the Register of 
Trade Marks Attorneys if, within 6 weeks after the end of the period 
mentioned in subregulation 20.7 (3) or a further period reasonably allowed by 
the Designated Manager, the person: 
                            (a) pays th e fees referred to in regulation 20.7 and item 25 of Schedule 9; 
and 
   (b) applies in the approved form.  
 20.9 Voluntary removal of name from register 
 
              (1) On written application by a registered trade mark s attorney, the Designated 
Manager may: 
                            (a) remove the attorney’s name from the Register of Trade Marks 
Attorneys for up to 3 years; or 
                           (b) restore the attorney’s name to the register on payment of: 
 
                                        (i) the annual registration fee payable for the year in which the 
reinstatement is made; and 
                                        (ii) the fee mentioned in item 25 of Schedule 9.                (2) An application for restoration of an attorney’s name to the register under 
paragraph (1) (b) must be made within the period determined by the 
Designated Manager for paragraph (1) (a). 
 
 20.10 Lien 
   A registered trade marks attorney has the same right of lien over documents 
and property of a client as a solicitor. 
 
 20.11 Discipline 
 
  Part 4 of Chapter 20 of the Patents Regulations 1991  applies to a registered 
trade marks attorney as if the references in that Part to a registered patent 
attorney were references to a registered trade marks attorney. 
 
[3] Paragraph 21.6 (3) (f) 
 
 substitute 
 
  (f) a registered patent attorney; or   IP/N/1/AUS/T/4 
 Page 85 
 
 
  [4] Regulation 21.30 
  substitute 
 
 21.30 Rights of registered patent attorneys 
   A registered patent attorney has the same right of lien over documents and 
property of a client as a solicitor. 
 
[5] After regulation 21.34 
 
 insert 
 
 21.35 Review of decisions 
 
(1) In this regulation: 
 
  decision  has the same meaning as in the Administrative Appeals Tribunal 
Act 1975. 
 
  (2) Application may be made to the Tribunal for review of a decision of: 
 
                           (a) the Board under subregulation 20.21 (7) of the Patents 
Regulations 1991 in its application to trade marks attorneys; or 
                           (b) the Disciplinary Tribunal under subregulation 20.23 (2), (4) or (5) of 
the Patents Regulations 1991  in its application to trade marks 
attorneys. 
 
[6] After regulation 22.6 
 
 insert  
22.7 Trade marks attorneys 
 
  For registration as a trade marks attorney, a person is taken to meet the 
requirements of subregulation 20.1 (1 ) until 27 January 2001 if the person: 
 
                          (a) was, on 28 February 1998, registered as a patent attorney under 
section 198 of the Patents Act 1990 ; or 
                          (b) met the requirements of paragraphs 198 (2) (c) and (d) of the Patents 
Act 1990 as in force on 26 January 1999; or 
                          (c) is a legal practitioner who acted for a client in trade mark matters 
before 27 January 1999, and makes a statutory declaration to that 
effect; or 
                          (d) is  a person to whom note 4 to subsection 156 (2) of the Trade Marks 
Act 1995  applies. 
 
22.8 Trade marks attorney examination requirements 
 
              (1) For a person who passed an examination, or was exempted from having to 
pass the examination, for at least 1 subject under Schedule 5 of the Patents 
Regulations 1991  as in force on 26 January 1999, the period of 5 years for IP/N/1/AUS/T/4 
Page 86  
 
  paragraph 20.3A (1) (b) of the Patents Regulations 1991  is taken to 
commence on 27 January 1999. 
               (2) Subregulation (3) appli es to a person who has passed an examination, or been 
exempted from having to pass the exam ination, for at least 1 subject 
mentioned in Schedule 5 as in force on 26 January 1999. 
               (3) A pass in an examination for a subject mentioned in column 1 of the 
following table is taken to be a pass for paragraph 20.1 (1) (a) in a topic group mentioned in column 2 of the table: 
 
Column 1 
Subject Column 2 
Topic group 
Legal Process Group A — Legal process and 
overview of intellectual property 
Patent Attorneys’ Practice, Part 2  Group B — Professional conduct 
Trade Marks law of Australia and the 
Practice of the Trade Marks Office 
 Group C — Trade mark law 
Patent Attorneys’ Practice, Part 1 and 
Patent Attorneys’ Practice, Part 2 Group D — Trade mark practice 
 
              (4) For registration as a trad e marks attorney, a person is taken to have passed an 
examination for Patent Attorney’s Prac tice 1 and Patent Attorney’s Practice 2 
if the person: 
 
                          (a) before 27 January 1999, passed an examination for a subject that the 
Board considers is equivalent to topic groups A and C mentioned in 
Schedule 5 to the Patents Regulations 1991 ; and 
                         (b) applies for registration as a trade marks attorney 
before 27 January 2001; and 
                         (c) provides a statutory declaration by an employer or the employer’s 
representative that the person’s principal field of practice for 2 continuous years has been in trade marks matters. 
 
[7] Schedule 8, items 10 and 11 
 
 omit 
 
  patent attorney, trade marks agent  
 insert 
 
  registered patent attorney, registered trade marks attorney   IP/N/1/AUS/T/4 
 Page 87 
 
 
  [8] Schedule 9, after item 18 
 
 insert 
 
19 Applying for admission to sit for an examination conducted by the Board $40020 Applying for grant of a supplementary examination conducted by the Board $200
21 A report of reasons for failure of an  examination conducted by the Board $200
22 Applying for registration as a trade marks attorney $15023 Annual registration fee payable by a trade marks attorney $15024 Annual registration fee payable for combined registration as a trade marks 
attorney and patent attorney $320
25 Applying under regulation 20.8 or 20.9 $160
 __________________________________________________________________________________  Notes 
 
1. These regulations amend Statutory Rules 1995 No. 341,  as amended by 1996 Nos. 3, 184 and 272; 1997 No. 346: 
1998 Nos. 258, 265 and 343. 
 
2. Made by the Governor-General on 17 December 1998,  and notified in the Commonwealth of Australia Gazette  
on 22 December 1998.  Administered by the Mini ster for Industry, Science and Resources. IP/N/1/AUS/T/4 
Page 88  
 
  
 
 
Trade Marks Amendment Regulations 1999 (No. 1) 
 
Statutory Rules 1999 No. 153 
__________________________________________________________________________________ 
  I, WILLIAM PATRICK DEANE, Governor-General of the Commonwealth of Australia, acting with 
the advice of the Federal Executive Council, make the following regulations under the  Trade Marks 
Act 1995.  
 
Dated 7 July 1999.  
 
  
                                    WILLIAM DEANE 
                                                                                           Governor-General 
By His Excellency’s Command,    
 
WARREN ENTSCH  Parliamentary Secretary to the Minister for Industry, Science and Resources,  for the Minister for Industry, Science and Resources 
__________________________________________________________________________________  IP/N/1/AUS/T/4 
 Page 89 
 
 
  
 
 
Trade Marks Amendment Regulations 1999 (No. 1)1 
 
Statutory Rules 1999 No. 1532 
 
made under the 
 
Trade Marks Act 1995 
__________________________________________________________________________________  
  
Contents 
   1 Name of regulations  
  2 Commencement    3 Amendment of Trade Marks Regulations 1995   
 
Schedule 1 Amendments  
 
_______________ 
  
 
  
1 Name of regulations 
 
  These regulations are the Trade Marks Amendment Regulations 1000 (No.1).  
 
2 Commencement 
 
  These regulations commence on gazettal.  
 
3 Amendment of Trade Marks Regulations 1995  
 
  Schedule 1 amends the Trade Marks Regulations 1995.  IP/N/1/AUS/T/4 
Page 90  
 
  Schedule 1  Amendments 
                          (regulation 3) 
 
[1] Paragraph 20.9 (1) (a) 
  
 omit 
  for up to 3 years 
 
[2] Paragraph 20.9 (1) (b) 
 
 before 
 
  restore   insert 
 
  within a period determined by the Designated Manager,  
[3] Subsection 20.9 (2) 
 
 substitute 
 
  (2) For paragraph (1) (b) the period must not be more than 3 years. __________________________________________________________________________________ 
 
Notes  
1. These regulations amend Statutory Rules 1995 No. 341,  as amended by 1996 Nos. 3, 184 and 272; 1997 No. 346: 
1998 Nos. 258, 265, 343 and 346. 
 
2. Made by the Governor-General on 7 July 1999, and notified in the Commonwealth of Australia Gazette  
on 14 July 1999.  IP/N/1/AUS/T/4 
 Page 91 
 
 
  
 
 
Trade Marks Amendment Regulations 1999 (No. 2) 
 
Statutory Rules 1999 No. 186 
__________________________________________________________________________________ 
  I, WILLIAM PATRICK DEANE, Governor-General of the Commonwealth of Australia, acting with 
the advice of the Federal Executive Council,  make the following Regulations under the  Trade Marks 
Act 1995.  
 
Dated 25 August 1999.  
 
  
  WILLIAM DEANE      Governor-General 
By His Excellency’s Command, 
 
   WARREN ENTSCH 
Parliamentary Secretary to the Minister for Industry, Science 
and Resources on behalf of the Minister for Industry, Science and Resources __________________________________________________________________________________IP/N/1/AUS/T/4 
Page 92  
 
  
 
 
Trade Marks Amendment Regulations  1999 (No. 2)1 
 Statutory Rules 1999 No. 186
2 
 
Made under the 
 
Trade Marks Act 1995 
__________________________________________________________________________________ 
   
Contents 
   1 Name of Regulations  
  2 Commencement    3 Amendment of Trade Marks Regulations 1995   
 
Schedule 1 Amendments commencing on gazettal  
 
Schedule 2 Amendment commencing on 6 September 1999  
 
_______________    
   
 
1 Name of Regulations 
   These Regulations are the Trade Marks Amendment Re gulations 1999 (No. 2) . 
 
2 Commencement 
 
 These Regulations commence as follows:  
 (a) on gazettal — regulations 1 to 3 and Schedule 1; 
 (b) on 6 September 1999 — Schedule 2.  
3 Amendment of Trade Marks Regulations 1995  
  Schedules 1 and 2 amend the Trade Marks Regulations 1995 .  IP/N/1/AUS/T/4 
 Page 93 
 
 
  Schedule 1  Amendments commencing on gazettal 
   (regulation 3) 
 
 [1] Subregulation 4.14 (1) 
 
substitute 
 
              (1) The period for which acceptance of an application is deferred (the deferment 
period ) begins immediately after: 
 
                          (a) for de ferral under subregulation 4.13 (1) — the date the Trade Marks 
Office receives the request; or 
                          (b) for deferral under subregulation 4.13 (2) or (3) — the date of the 
notice of deferment issued under subregulation 4.13 (4). 
 
[2] Paragraph 4.14 (3) (b) 
 
omit 
 
  the notice 
 
insert 
 
  commencement  [3] Subregulation 9.2 (1) 
 
substitute 
 
  (1) This regulation applies to an application under section 92 of the Act. 
 
                                       Note     The application must be in accordance with the Regulations: see Act, para 92 (2) (a) 
and r 9.1. 
 
              (1A) For subsection 95 (1) of the Act (which deals with notification), the Registrar 
must give notice of the application within 1 month after the application is made. 
 
                                               Note     Subsection 95 (1) of the Act applies to an application made to 
the Registrar under s 92 of the Act. 
 
[4] Regulation 13.2, note 2 
 
substitute 
 
               Note 2    An authorised user must also give the documents prescribed by r 13.1 to the Customs 
CEO — see subs 132 (1) of the Act. 
 IP/N/1/AUS/T/4 
Page 94  
 
  [5] Regulation 13.3, heading 
 
substitute 
 
13.3 Period for compliance with Custom s CEO’s request for information etc 
 
[6] Paragraph 21.28 (1) (b) 
 
substitute 
               (aa) filing notice of a claim to a right of priority under subsection 29 (1) of the 
Act; 
              (b) applying for the registratio n of a trade mark in the circumstances described in 
paragraph 29 (1) (b) of the Act; 
 [7] After paragraph 21.28 (1) (e) 
 
insert 
 
  (ea) requesting deferment of ac ceptance under subregulation 4.13 (1); 
 [8] After subregulation 21.29 (3) 
 
insert 
 
              (4) For subsection 225 (2) of  the Act, an application, under the terms of the 
Treaty Establishing the European Community  done at Rome 
on 25 March 1957, for registration of a European Community trade mark is equivalent to an application made in  each Convention country party to the 
treaty. 
 
[9] Schedule 3, item 2.1, definitions of Collector  and designated owner 
 
omit 
 
  Ordinance 1913  
insert 
 
  Act 1913 of Norfolk Island  
[10] Schedule 3, item 3.2  
 
omit 
 
  Ordinance 1913  
insert 
 
  Act 1913 of Norfolk Island   IP/N/1/AUS/T/4 
 Page 95 
 
 
  [11] Schedule 3, item 4.1 
 
omit 
 
  Minister 
 
insert 
 
Executive Member 
 [12] Schedule 3, item 4.1  
 
omit 
 
  Ordinance 1913 
 
insert 
 
  Act 1913 of Norfolk Island  
[13] Schedule 4, after item 3 
 
insert 
 
3A Section 136 (Release of goods to owner — no action for infringement) 
 
3A.1 Subsection 136 (3), note 3: 
 
omit 
 
    Customs CEO  
insert 
 
    Comptroller  
[14] Schedule 4, after item 7.1 
 
insert 
 
7.2 Subsection 143 (1), note 2: 
 
omit 
 
   Customs CEO  
insert 
    Comptroller 
 IP/N/1/AUS/T/4 
Page 96  
 
  [15] Schedule 4, after item 7 
 
insert 
 
 8 Additional amendments 
 
 8.1 The following provisions are amende d by omitting each occurrence of ‘Customs 
CEO’ and inserting ‘Comptroller’: 
 
• section 131 
• section 132 
• section 133, heading 
• section 133 
• section 134 
• section 135 
• section 136 
• section 137 
• section 139 
• section 140, heading 
• section 140 
• section 141 
• section 142 
• section 143. 
 
[16] Schedule 5, after item 3 
 
insert 
 
3A Section 136 (Release of goods to owner — no action for infringement) 
 
3A.1 Subsection 136 (3), note 3: 
 
omit 
 
Customs CEO 
 
insert 
 
   Comptroller  
[17] Schedule 5, after item 7.1 
 
insert 
 
7.2 Subsection 143 (1), note 2:  IP/N/1/AUS/T/4 
 Page 97 
 
 
   
omit 
 
Customs CEO 
 
insert 
 
   Comptroller  
[18] Schedule 5, after item 7 
 
insert 
 
 8 Additional amendments 
  8.1 The following provisions are amende d by omitting each occurrence of ‘Customs 
CEO’ and inserting ‘Comptroller’: 
 
• section 131 
• section 132 
• section 133, heading 
• section 133 
• section 134 
• section 135 
• section 136 
• section 137 
• section 139 
• section 140, heading 
• section 140 
• section 141 
• section 142 
• section 143. 
 
[19] Schedule 8, item 12, column 2 
 
substitute 
   Counsel fees for attendance at a hearing 
 
[20] Additional amendments 
 
 The following provisions are amended by omitting each occurrence of ‘Comptroller’ and 
inserting ‘Customs CEO’: 
 
• regulation 13.3 IP/N/1/AUS/T/4 
Page 98  
 
  • regulation 21.22 
• regulation 21.23 
• Schedule 3, Part 1, items 1.1, 3.3, 3.4, 3.5, 4.1, 5.1, 6.2, 7.3, 8.2 
• Schedule 3, Part 2. 
 
Schedule 2  Amendment commencing on 6 September 1999 
   (regulation 3) 
 
 [1] Regulation 19.1 
 
omit 
 
  10 a.m. to 4 p.m.  
insert 
   9 am to 5 pm 
__________________________________________________________________________________ 
Notes 
 
1. These Regulations amend Statutory Rules 1995 No. 341, as amended by  1996 Nos. 3, 184 and 272; 1997 No. 346; 
1998 Nos. 258, 265, 343 and 346; 1999 No. 153. 
 
2. Made by the Governor-General on 25 August 1999, and notified in the Commonwealth of Australia Gazette  
on 1 September1999.  IP/N/1/AUS/T/4 
 Page 99 
 
 
  
 
 
Trade Marks Amendment Regulations 1999 (No. 3) 
 
Statutory Rules 1999 No. 196 __________________________________________________________________________________ 
 
 I, WILLIAM PATRICK DEANE, Governor-General of the Commonwealth of Australia, acting with 
the advice of the Federal Executive Council,  make the following Regulations under the  Trade Marks 
Act 1995.  
 
Dated 9 September 1999.  
 
  
WILLIAM DEANE   Governor-General 
By His Excellency’s Command, 
 
   WARREN ENTSCH  
Parliamentary Secretary 
to the Minister for Industry, Science and Resources for the Minister for Industry, Science and Resources __________________________________________________________________________________ IP/N/1/AUS/T/4 
Page 100  
 
  
 
 
Trade Marks Amendment Regulations 1999 (No. 3)1 
 
Statutory Rules 1999 No. 1962 
 
made under the 
 
Trade Marks Act 1995 
__________________________________________________________________________________ 
  
Contents 
  
 1 Name of Regulations  
  2 Commencement    3 Amendment of Trade Marks Regulations 1995   
 Schedule 1 Amendments  
 
_______________ 
 
1 Name of Regulations 
 
 These Regulations are the Trade Marks Amendment Re gulations 1999 (No. 3) . 
 
2 Commencement 
  These Regulations commence on gazettal.  
 
3 Amendment of Trade Marks Regulations 1995  
 
 Schedule 1 amends the Trade Marks Regulations 1995 .  IP/N/1/AUS/T/4 
 Page 101 
 
 
  Schedule 1  Amendments 
               (regulation 3) 
 
 
[1] Paragraph 4.6 (2) (b) 
 
omit 
 
  filed; and  
insert 
 
  filed.  
[2] Paragraph 4.6 (2) (c) 
 
omit 
 
[3] After subregulation 4.6 (3) 
 
insert 
 
(4) The applicant must inform the Registrar of the number allocated to each 
earlier application in the trade marks office, or its equivalent, of the Convention country in which each earlier application was filed. 
__________________________________________________________________________________ Notes 
 
1. These regulations amend Statutory Rules 1995 No. 341,  as amended by 1996 Nos. 3, 184 and 272; 1997 No. 346; 
1998 Nos. 258, 265, 343 and 346; 1999 Nos. 153 and 186. 
 
2. Made by the Governor-General on 9 September 1999, and notified in the Commonwealth of Australia Gazette  
on 10 September 1999. IP/N/1/AUS/T/4 
Page 102  
 
  
 
 
Trade Marks Amendment Regulations 1999 (No. 4) 
 
Statutory Rules 1999 No. 350 
__________________________________________________________________________________ 
  I, WILLIAM PATRICK DEANE, Governor-General of the Commonwealth of Australia, acting with 
the advice of the Federal Executive Council,  make the following Regulations under the  Trade Marks 
Act 1995.  
 
Dated 15 December 1999.  
 
  
WILLIAM DEANE   Governor-General 
By His Excellency’s Command, 
 
   WARREN ENTSCH 
Parliamentary Secretary to the Minister for Industry, 
Science and Resources for the Minister for Industry, Science and Resources __________________________________________________________________________________  IP/N/1/AUS/T/4 
 Page 103 
 
 
  
 
 
Trade Marks Amendment Regulations 1999 (No. 4)1 
 Statutory Rules 1999 No. 350
2 
 
made under the 
 
Trade Marks Act 1995 __________________________________________________________________________________ 
  
 
Contents 
  
 1 Name of Regulations 
 
 2 Commencement    3 Amendment of Trade Marks Regulations 1995   
 
Schedule 1 Amendment  
 
 _______________ 
   
1 Name of Regulations 
 
 These Regulations are the Trade Marks Amendment Regul ations 1999 (No. 4).  
 
2 Commencement 
 
 These Regulations commence on gazettal. 
 
3 Amendment of Trade Marks Regulations 1995  
 
 Schedule 1 amends the Trade Marks Regulations 1995 . IP/N/1/AUS/T/4 
Page 104  
 
  Schedule 1  Amendment 
                           (regulation 3) 
  
[1] Schedule 10 
 
after 
 
  Norway  
insert 
 
  Oman __________________________________________________________________________________ 
Notes 
 
1. These Regulations amend Statutory Rules 1995 No. 341, as amended by  1996 Nos. 3, 184 and 272; 1997 No. 346; 
1998 Nos. 258, 265, 343 and 346; 1999 Nos. 153, 186 and 196. 
 
2. Made by the Governor-General on 15 December 1999, and notified in the Commonwealth of Australia Gazette  
on 22 December 1999.  IP/N/1/AUS/T/4 
 Page 105 
 
 
  
 
 
Trade Marks Amendment Regulations 2001 (No. 1)1 
 Statutory Rules 2001 No. 33
2 
__________________________________________________________________________________   I, WILLIAM PATRICK DEANE, Governor-General of the Commonwealth of Australia, acting with 
the advice of the Federal Executive Council,  make the following Regulations under the  Trade Marks 
Act 1995 . 
 Dated 22 February 2001  
 
  
WILLIAM DEANE   Governor-General 
By His Excellency’s Command 
 
   WARREN ENTSCH 
Parliamentary Secretary to the Minister for Industry, 
Science and Resources __________________________________________________________________________________ IP/N/1/AUS/T/4 
Page 106  
 
  1 Name of Regulations 
 
 These Regulations are the Trade Marks Amendment Re gulations 2001 (No. 1) . 
 
2 Commencement 
 
 These Regulations commence on the commencement of the Trade Marks Amendment 
(Madrid Protocol) Act 2000 . 
 
3 Amendment of Trade Marks Regulations 1995  
 
 Schedule 1 amends the Trade Marks Regulations 1995 . 
 
 Schedule 1  Amendments   
                           (regulation 3) 
  
[1] Regulation 2.1, before definition of accredited course of study 
 
insert 
   ACCC  means the Australian Competition and Consumer Commission established 
under the Trade Practices Act 1974 . 
 
[2] Regulation 2.1, after definition of earlier application 
 
insert 
 
  International Register  has the meaning given by regulation 17A.2. 
 
 
  international registration  has the meaning given by regulation 17A.2. 
 
  IRDA  has the meaning given by regulation 17A.2. 
 
  Madrid Protocol  means the Protocol Relating to the Madrid Agreement concerning 
the International Registration of Marks,  as signed at Madrid on 28 June 1989. 
 
  priority date , for a trade mark that is the subject of an IRDA or a protected 
international trade mark, has the meaning given by regulation 17A.3. 
 
  protected international trade mark  has the meaning given by regulation 17A.2. 
 
  Record of International Registrations  has the meaning given by regulation 17A.2. 
  IP/N/1/AUS/T/4 
 Page 107 
 
 
  [3] Paragraphs 4.13 (1) (b) and (c) 
 
substitute 
 
              (b) the Registrar reasonably believes that there are grounds for rejecting the 
application under subsection 44 (1) or  (2) of the Act, or subregulation 
4.15A (1) or (2), because of another trade mark: 
    (i) that is registered by another person; or    (ii) that is a protected international trade mark; or 
                           (iii) in respect of which an application for registration, or an IRDA, has 
been made by another person; and 
   (c) the applicant:  
                           (i) is awaiting the finalisation of proceedings in respect of the 
application for registration of the other trade mark or the IRDA; or 
   (ii) is seeking to satisfy the Registrar as to:                                         (A) a matter mentioned in para graph 44 (3) (a) or (b) of the Act 
or 4.15A (3) (a) or (b) of these Regulations; or 
                                       (B) the matters mentioned in subsection 44 (4) of the Act or 
subregulation 4.15A (5);  
                           in relation to the applicant’s trade mark and the other trade mark; or                            (iii) has filed an application under secti on 92 of the Act or regulation 
17A.48 in respect of the other trade mark and is awaiting the 
finalisation of proceedings in respect of that application; or 
                          (iv) has begun proceedings to have the Register or the Record of 
International Registrations rectified in respect of the other trade mark and the proceedings have not been determined or otherwise disposed 
of; or 
                          (v) is awaiting renewal of the registration of the other trade mark in the 
period of 12 months after registration of the other trade mark has expired, or removal of the other trade mark from the Register; or 
                         (vi) is awaiti ng renewal of the international registration of the other trade 
mark in the period of 6 months afte r the international registration has 
expired, or removal of the other trade mark from the International 
Register. 
 
[4] Paragraph 4.14 (2) (b) 
 
after 
 
  of the Act  
insert 
   or subregulation 4.15A (1) or (2) 
 IP/N/1/AUS/T/4 
Page 108  
 
  [5] Paragraph 4.14 (3) (a) 
 
after 
 
  registration of 
 
insert 
 
  , or the extension of protection to,  [6] Paragraph 4.14 (3) (c) 
 
after 
 
  of the Act 
 
insert 
 
  or regulation 17A.48  
[7] Paragraph 4.14 (3) (d) 
 
after 
 
  the Register  
insert 
 
or the Record of International Registrations 
 
[8] After paragraph 4.14 (3) (e) 
 
insert 
 
              (ea) if acceptance is defe rred because of subparagraph 4.13 (1) (c) (vi) — when 
the international registration of the othe r trade mark is renewed or the other 
trade mark is removed from the International Register; and 
 
[9] Paragraph 4.15 (a) 
 
after 
 
  “By Royal Letters Patent”, 
 
insert 
 
  ‘Protected International Trade Mark’,    IP/N/1/AUS/T/4 
 Page 109 
 
 
  [10] After regulation 4.15 
 
insert 
 
 4.15A Grounds for rejection — trade mark identical etc to trade mark protected under 
Madrid Protocol 
 
 (1) Subject to subregulations (3) and (5), an application for the registration of a trade 
mark ( applicant’s trade mark ) in respect of goods ( applicant’s goods ) must be 
rejected if: 
 
              (a) the applicant’s trade mark is substantially identical with, or deceptively 
similar to: 
    (i) a protected international trade mark; or 
                           (ii) a trade mark in respect of which the Registrar has received 
notification of an IRDA; 
  held by another person in respect of similar goods or closely related services; 
and 
               (b) the priority date for the registration of the applicant’s trade mark in respect of 
the applicant’s goods is not earlier than the priority date for the other trade 
mark in respect of the similar goods or closely related services. 
  (2) Subject to subregulations (3) and (5), an application for the registration of a trade 
mark ( applicant’s trade mark ) in respect of services ( applicant’s services ) must be 
rejected if: 
               (a) the applicant’s trade mark is substantially identical with, or deceptively 
similar to: 
    (i) a protected international trade mark; or 
                           (ii) a trade mark in respect of which the Registrar has received 
notification of an IRDA; 
  held by another person in respect of  similar services or closely related goods; 
and 
 
              (b) the priority date for the registration of the applicant’s trade mark in respect of 
the applicant’s services is not earlier than  the priority date for the other trade 
mark in respect of the similar services or closely related goods. 
  (3) If the Registrar in either case is satisfied:  
  (a) that there has been honest conc urrent use of the 2 trade marks; or 
              (b) that, because of other circumstances, it is proper to do so;   the Registrar may accept the application fo r the registration of the applicant’s trade 
mark subject to any conditions or limitations that the Registrar thinks fit to impose.  
 
 (4) If the applicant’s trade ma rk has been used only in a particular area, the limitations 
may include that the use of the trade mark is to be restricted to that particular area. 
 IP/N/1/AUS/T/4 
Page 110  
 
   (5) If the Registrar in either case is satisfied that the applicant, or the applicant and the 
predecessor in title of the applicant, have continuously used the applicant’s trade 
mark for a period: 
   (a) beginning before the priority date for the other trade mark in respect of: 
 
   (i) the similar goods or closely related services; or    (ii) the similar services or closely related goods; and    (b) ending on the priority date for the registration of the applicant’s trade mark; 
  the Registrar must not reject the a pplication because of the existence of the 
other trade mark. 
 
Note    Section 44 of the Act provides for rejection of  an application on the grounds that the trade 
mark is substantially identical with, or deceptively  similar to, a registered trade mark or a trade 
mark for which registration is being sought. 
 
[11] After regulation 17.1 
 
insert 
 
17.2 Defensive trade mark based on protected international trade mark 
 
 (1) This regulation applies if, because of th e extent to which a protected international 
trade mark has been used in relation to all or any of the goods or services in respect of 
which it is protected, it is likely that the use of the trade mark in relation to other 
goods or services would be taken to indicate that there is a connection between those 
other goods or services and the holder of the protected international trade mark. 
  (2) The holder of the protected international trade mark may apply for its registration as a 
defensive trade mark in respect of any or all of the other goods or services. 
 
 (3) Part 17 of the Act applies for the purpo ses of an application under subregulation (2) 
as if: 
               (a) a reference in that Part to a registered trade mark were a reference to the 
protected international trade mark; and 
              (b) a reference in that Part  to goods or services in respect of which a trade mark 
is registered were a reference to goods or services protected by the protected 
international trade mark; and 
              (c) a reference in that Pa rt to the registered owner of a trade mark were a 
reference to the holder of the protected international trade mark; and 
              (d) the reference in paragr aph 187 (c) of the Act to a trade mark that is not 
registered as a trade mark in the name of the applicant included a trade mark 
that is not a protected international trade mark held by the applicant; and 
              (e) the reference in section 189 of  the Act to a trade mark that is not registered in 
the name of the registered owner included  a trade mark that is not a protected 
international trade mark held by the registered owner. 
  IP/N/1/AUS/T/4 
 Page 111 
 
 
  [12] After Part 17 
 
insert 
 
  Part 17A Protected international trade marks under the Madrid Protocol   Division 1 General   17A.1 Purpose of Part 
 
  This Part provides for matters that enab le the performance of the obligations of 
Australia, or obtain for Australia an advant age or benefit, under the Madrid Protocol. 
 
 17A.2 Definitions for Part 
   Common Regulations  means the Common Regulations under the Madrid Agreement 
Concerning the International Registration of Marks and the Protocol relating to that 
Agreement, as in force on 1 January 1998. 
 
  date of international registration  means the date recorded in the International 
Register as the international registration date for a trade mark in respect of which a 
request was made under Article 3
ter(1) of the Protocol for extension of protection to 
Australia.  
 
  date of recordal means the date recorded in the Inte rnational Register as the recordal 
date for a request made under Article 3ter(2) of the Protocol for extension of 
protection to Australia.  
 
  holder  means: 
               (a) in relation to an IRDA or a protected international trade mark — the person 
or persons in whose name or names the international registration of the trade 
mark is recorded in the Record of International Registrations; and 
              (b) in relation to another international registration of a trade mark — the person 
or persons in whose name or names the international registration of the trade 
mark is recorded in the International Register. 
 
  International Bureau  means the International Bur eau of the World Intellectual 
Property Organisation. 
 
  International Register  means the register maintained by the International Bureau for 
the purposes of the Protocol. 
 
  international registration  of a trade mark means registration of the mark in the 
International Register. 
 
  international registra tion designating Australia , or IRDA , means a request, made 
under Article 3
ter (1) or (2) of the Protocol, for exte nsion to Australia of the protection 
resulting from the international registration of a trade mark. 
 
  Office of origin  has the meaning given by Article 2 (2) of the Protocol. 
 IP/N/1/AUS/T/4 
Page 112  
 
    priority date , for a trade mark that is the subject of an IRDA or a protected 
international trade mark, has the meaning given by regulation 17A.3. 
 
  protected international trade mark  means a trade mark to which protection resulting 
from international registration of the mark is extended in Australia in accordance with 
these Regulations. 
 
  Protocol  means the Madrid Protocol. 
 
  Record of International Registrations  means the record required to be kept by 
regulation 17A.66. 
 
 17A.3 Meaning of priority date 
 
 (1) The priority date for a trade mark that  is the subject of an IRDA in respect of 
particular goods or services is the date th at would be the date of effect of the 
protection of the trade mark in respect of those goods or services if the trade mark became a protected international trade mark. 
  (2) The priority date for a protected intern ational trade mark in respect of particular 
goods or services is the date of effect of the protection of the trade mark in respect of 
those goods or services. 
 
 17A.4 Meaning of date of effect 
 
 (1) Subject to subregulation (2), the date of effect of the protection of a protected 
international trade mark is: 
               (a) if the request for extension of protection to Australia was made under 
Article 3
ter (1) of the Protocol — the date of international registration of the 
trade mark; or  
             (b) if the request for ex tension of protection to Australia was made under 
Article 3ter (2) of the Protocol — the date of recordal of the request. 
  (2) If:                (a) the request for extension of protection to Australia was in respect of a trade 
mark whose registration had also be en sought in 1 or more Convention 
countries; and 
              (b) the holder claimed a right of priority under regulation 17A.15 for protection 
of the trade mark in respect of particular goods or services; and 
              (c) the trade mark is a protected international trade mark;   the protection of the trade mark is taken to have had effect: 
              (d) if an application to register the trade mark was made in only 1 Convention 
country — from (and including) the day on which the application was made in that country; or 
              (e) if applications to re gister the trade mark were made in more than 1 
Convention country — from (and including) the day on which the earliest of 
those applications was made. 
  IP/N/1/AUS/T/4 
 Page 113 
 
 
  Division 2 Application for internat ional registration of a trade mark 
 17A.5 Purpose of Division 
 
  This Division makes provision for deali ng with applications for international 
registration of trade marks that are to be filed with the International Bureau through 
the intermediary of the Trade Marks Office. 
 
 17A.6 Eligibility to apply for international registration 
  (1) A person who is: 
   (a) the registered owner of a registered trade mark; or   (b) an applicant for registration of a trade mark;   may apply for international registration of the trade mark. 
 
 (2) The person must:    (a) be an Australian citizen; or   (b) be domiciled in Australia; or   (c) have a real and effective industria l or commercial establishment in Australia. 
 
  Note   These requirements are stated in Article 2 (1) (ii) of the Protocol. 
 
 (3) Two or more persons may jointly apply fo r international registration of a trade mark 
as allowed by rule 8 of the Common Regulations. 
 
 17A.7 Application for international registration 
 
 (1) Subject to subregulation (2), the application must: 
 
  (a) comply with the requirements of the Protocol; and               (b) be filed with the Inte rnational Bureau through the intermediary of the Trade 
Marks Office. 
 
 (2) The applicant must use the official form issued by the International Bureau or another 
form that requires the same information and uses the same format as the official form. 
 
 17A.8 Functions of Registrar 
 
 (1) The Registrar must perform the functions, under the Protocol, of the Office of origin 
in relation to: 
   (a) the application; and               (b) if the application results  in an international registration, the international 
registration. 
 
 (2) In particular, the Registrar must:    (a) check the application; and               (b) certify that the information in the application corresponds with the 
information held by the Registrar in respect of the application for registration IP/N/1/AUS/T/4 
Page 114  
 
  of the trade mark (the basic application ) or the registration of the trade mark 
(the basic registration ), as the case requires; and 
              (c) if the application r esults in an international registration — notify the 
International Bureau if the basic app lication or the basic registration is 
withdrawn, restricted or cancelled or lapses, expires or otherwise ceases to 
have effect in respect of some or a ll of the goods or services listed in the 
international registration: 
    (i) within 5 years after the date of the international registration; or                            (ii) after that time, if the action that resulted in the basic application or 
the basic registration being so affect ed began before the end of that 5 
year period. 
 
Note   The detailed functions for the Office of origin are set out in the Protocol and the Common 
Regulations. 
 
 17A.9 Time limit for Registrar to se nd application to International Bureau 
 
  The Registrar must take all reasonable steps to ensure that the application is received 
by the International Bureau within 2 months after the date on which it is filed with the 
Registrar. 
 
17A.10 Subsequent designations 
 
 (1) The holder of an international registra tion for which the Trade Marks Office is the 
Office of origin may make a request for territorial extension in accordance with 
Article 3ter (2) of the Protocol. 
 
 (2) The request may be made to the Interna tional Bureau through the intermediary of the 
Trade Marks Office. 
  (3) If a request is made through the Trade Marks Office, the Registrar must perform the 
functions, under the Protocol, of the Office of origin in relation to the request. 
 
Division 3 International registration designating Australia  Subdivision 1 General  17A.11 Purpose of Division 
 
  This Division makes provision for dealing with a request to extend to Australia the 
protection resulting from international registration of a trade mark. 
 
 17A.12 Registrar to examine, and report on, IRDA 
 
  If the Registrar receives from the International Bureau a notification of an IRDA, the 
Registrar must examine and report on: 
   (a) whether the IRDA is in ac cordance with this Division; and 
  (b) whether there are grounds under Subdivision 2 for rejecting it. 
 
   IP/N/1/AUS/T/4 
 Page 115 
 
 
  17A.13 Use of trade mark 
 
 (1) The holder of an IRDA: 
               (a) must be using, or must intend to use, the trade mark that is the subject of the 
IRDA in relation to the goods, services or goods and services listed in the  
IRDA; or 
              (b) must have authorised, or intend to authorise, another person to use the trade 
mark in relation to those goods, services or goods and services; or 
              (c) must intend to assign the trade mark to a body corporate that is about to be 
constituted with a view to the use by th e body corporate of the trade mark in 
relation to the goods, services or goods and services. 
 (2) If there is reason to suspect that the holder does not meet a requirement of 
subregulation (1) in relation to any of th e goods or services mentioned in the IRDA, 
the Registrar may require the holder to make a declaration to the Registrar that those 
provisions apply to all of those goods and services. 
 
17A.14 Specification of goods and services 
 
  The expression ‘all goods’, ‘all services’, ‘a ll other goods’ or ‘all other services’ must 
not be used in an IRDA to specify th e goods or services in respect of which 
protection is sought. 
 
17A.15 Claim for priority 
 
 (1) If: 
 
              (a) a person has made an app lication for the registration of a trade mark in 1 or 
more Convention countries; and 
              (b) within 6 months after the day on which that application, or the first of those 
applications, was made, that  person or another person ( successor in title ) of 
whom that person is a predecessor in title  makes an IRDA in respect of some 
or all of the goods, services or goods and services in respect of which 
registration was sought in that country or those countries; 
  that person or that person’s successor in title may claim a right of priority for the 
protection of the trade mark in respect of  any or all of those goods, services or goods 
and services. 
 
 (2) The right of priority must be claimed in the IRDA that is notified to the Registrar in 
accordance with this Division. 
 
Note   Rule 9 (4) (iv) of the Common Regulations contai ns requirements relating to claims for priority. 
 
 (3) The priority claimed is for the protecti on of the trade mark in respect of the goods, 
services or goods and services: 
 
              (a) if an application to register the trade mark was made in only 1 Convention 
country — from (and including) the day on which the application was made in that country; or 
              (b) if applications to re gister the trade mark were made in more than 1 
Convention country — from (and including) the day on which the earliest of those applications was made. 
 IP/N/1/AUS/T/4 
Page 116  
 
                             Note   For Convention country  see section 225 of the Act. 
 
17A.16 Examination of IRDA — report to holder 
 
 (1) If, in the course of an examination of an IRDA, the Registrar reasonably believes 
that: 
   (a) the IRDA is not in accordance with this Division; or 
  (b) there are grounds under Subdivision 2 for rejecting it in whole or in part; 
  the Registrar must send a report in accordance with rule 17 of the Common 
Regulations to the holder through the inte rmediary of the International Bureau. 
  (2) Such a report is a provisional refusal for the purposes of the Protocol.  
 (3) The report must include: 
               (a) notice of the date by which the Registrar must notify his or her final decision 
on examination to the International Bureau; and 
              (b) notice that the Registrar is not required to consider any response by the 
holder to the report unless the holder has no tified the Registrar, in writing, of 
the holder’s address for service in Australia. 
 
Note    Under the Protocol, protection must be extended in Australia to a trade mark that is the subject 
of an IRDA at the end of 18 months after the International Bureau notifies the Trade Marks 
Office of the IRDA unless, before then, the International Bureau receives: 
 (a) notification of a provisional or fina l refusal from the Trade Marks Office; or 
                (b) notification of the po ssibility that oppositions may be filed after the 18-month 
period. 
 
17A.17 Examination — holder’s response to report 
 
 (1) The holder of the IRDA may respond in writing to the Registrar’s report under 
regulation 17A.16. 
  (2) The response may do any of the following: 
 
  (a) contest a belief of the Registrar that is expressed in the report;    (b) contest another matter that is mentioned in the report;    (c) provide further documents or evidence in support of the IRDA;   (d) request a hearing from the Registrar.  
 (3) The holder must notify the Registrar, in  writing, of the holder’s address for service in 
Australia. 
 
17A.18 Examination — further report to holder 
  (1) If the holder has complied with subregulation 17A.17 (3), the Registrar must: 
   (a) consider the holder’s response; and   (b) if the holder requests a hearing, give the holder an opportunity to be heard.   (2) If, after considering the response and (if a hearing is requested) the submissions to the 
hearing, the Registrar continues to believe that: 
  IP/N/1/AUS/T/4 
 Page 117 
 
 
    (a) the IRDA is not in accordance with this Division; or 
  (b) there are grounds under Subdivision 2 for rejecting it in whole or in part;   the Registrar must tell the holder, in writing, of that belief.   (3) Unless the acceptance of  an IRDA is deferred under re gulation 17A.21, a report under 
subregulation (2) about the IRDA must speci fy the date by which the Registrar must 
notify his or her final decision on examination to the International Bureau. 
  (4) Regulation 17A.17 and this regulation appl y to a report under subregulation (2) as if 
it were a report under regulation 17A.16. 
 
17A.19 Examination — additional requirements 
 
 (1) In the course of an examination of an IRDA for which a right of priority is claimed, 
the Registrar may, by writing, require the holder to file: 
 
              (a) a copy of any earlier application certified in the trade marks office (however 
described) of the Convention coun try in which it was filed; and 
  (b) if the earlier application is not in English:     (i) a translation of the earlier application into English; and 
   (ii) a certificate of verification relating to the translation. 
  (2) If the holder is the successor in title to the person who made the earlier application, 
the Registrar may, by writing, require the holder to file documentary evidence that is sufficient to establish the p assing of title to the holder. 
 
17A.20 Period within which final decision on examination must be notified 
 
 (1) For an IRDA in respect of which a report is made under regulation 17A.16, the 
Registrar must notify his or her decision under regulation 17A.24 (the final decision 
on examination ) to the International Bureau: 
 
             (a) if paragraph (b) does not apply — within 15 months from the date of that 
report (whether or not a further repor t is made under regulation 17A.18); or 
             (b) if a further report ra ises grounds under Subdivision 2 for rejecting the IRDA 
that were not raised in the report made under regulation 17A.16 — within 15 
months from the date of the further report. 
  (2) In determining the period of 15 months fo r the purposes of paragra ph (1) (a) or (b) in 
relation to an IRDA, no account is to be  taken of any period during which acceptance 
of the IRDA is deferred under regulation 17A.21. 
 
 (3) The holder of an IRDA may, before the end of a period mentioned in 
subregulation (1), or that period as ex tended under section 224 of the Act or as a 
result of a previous application of subregul ation (4), request the Registrar in writing 
to extend the period. 
 
 (4) The Registrar must, in accordance with a re quest made under subregulation (3), 
extend a period, unless: 
   (a) the period; or IP/N/1/AUS/T/4 
Page 118  
 
                (b) that period as extended under section 224 of the Act or as a result of a 
previous application of this subregulation; 
  would be extended for more than 6 mont hs after the end of the relevant period 
mentioned in subregulation (1). 
 
Note 1     If an extension of the time for acceptance of an IRDA is sought after the end of a period 
mentioned in subregulation (1), or of an ex tended period mentioned in subregulation (3), 
application must be made under section 224 of the Act. 
 
Note 2     If a period mentioned in subregulation (1) ha s been extended by 6 months, any application for 
a further extension of time must be  made under section 224 of the Act. 
 
17A.21 Deferment of acceptance 
 
 (1) The Registrar may, at the written request  of the holder, defer acceptance of an IRDA 
if: 
 
              (a) the request is made within a period mentioned in subregulation 17A.20 (1); 
and 
              (b) the Registrar reasonably believes that there are grounds for rejecting the 
IRDA under subsection 44 (1) or (2) of the Act (as applied by regulation 
17A.28) because of another trade mark: 
    (i) that is registered by another person; or    (ii) that is a protected international trade mark; or                            (iii) in respect of which an application for registration, or an IRDA, has 
been made by another person; and 
   (c) the holder:                             (i) is awaiting the finalisation of proceedings in respect of the 
application for registration of the other trade mark or the IRDA; or 
   (ii) is seeking to satisfy the Registrar as to: 
                                         (A) a matter mentioned in para graph 44 (3) (a) or (b) of the Act 
(as applied by regulation 17A.28); or 
                                        (B) the matters mentioned in subsection 44 (4) of the Act (as 
applied by regulation 17A.28);  
  in relation to the holder’s trade mark and the other trade mark; or                             (iii) has filed an application under section 92 of the Act or 
subregulation 17A.48 (1) in respect of the other trade mark and is awaiting the finalisation of proceedings in respect of that application; 
or 
                          (iv) has begun proceedings to have the Register or the Record of 
International Registrations rectified in respect of the other trade mark and the proceedings have not been determined or otherwise disposed 
of; or 
                          (v) is awaiting renewal of the registration of the other trade mark in the 
period of 12 months after registration of the other trade mark has expired, or removal of the other trade mark from the Register; or 
                          (vi) is awa iting renewal of the international registration of the other trade 
mark in the period of 6 months afte r the international registration has  IP/N/1/AUS/T/4 
 Page 119 
 
 
  expired, or removal of the other trade mark from the International 
Register. 
  (2) The Registrar may, on his or her own in itiative, defer acceptance of the IRDA within 
the period mentioned in subregulation 17A. 20 (1), or (if such a period is extended 
under section 224 of the Act or subregulati on 17A.20 (4)) the extended period, if: 
               (a) the time within which pr oceedings mentioned in para graph (b) may be begun, 
or an application mentioned in paragrap h (c) may be made, has not ended; or 
              (b) appeal proceedings under a provision of the Act have begun in a prescribed 
court in relation to the IRDA; or 
              (c) an application has been made to the Administrative Appeals Tribunal for 
review of a decision of the Registrar in relation to the IRDA; or 
  (d) the Registrar is informed in writing that the holder has died.  
 (3) The Registrar must defer acceptance of an IRDA in respect of a certification trade 
mark when a copy of the rules governing the use of the certification trade mark is sent 
to the ACCC in accordance with regulation 16.2 (as applied by regulation 17A.50). 
  (4) The Registrar must inform the holder in writing:  
              (a) if the holder requests the Registrar to defer acceptance of an IRDA — of the 
Registrar’s decision to defer, or not to defer, acceptance of the IRDA; and 
              (b) if the Registrar otherw ise defers acceptance of an IRDA — of the provision 
under which acceptance of the IRDA is deferred. 
 
17A.22 Period for which acceptance is deferred 
 
 (1) The period for which acceptance of an IRDA is deferred (the deferment period ) 
begins immediately after: 
               (a) for deferral under s ubregulation 17A.21 (1) — the date the Trade Marks 
Office receives the request; or 
              (b) for deferral under subre gulation 17A.21 (2) or (3) — the date of the notice of 
deferment issued under subregulation 17A.21 (4). 
  (2) The deferment period ends: 
 
  (a) when the IRDA is withdrawn; or               (b) if paragraph (a) does not  apply — when the Registrar is reasonably satisfied 
that there are no longer grounds for rejecting the IRDA under subsection 44 (1) or (2) of the Act (as applied by regulation 17A.28); or 
              (c) if paragraphs (a) and (b) do not apply — in accordance with 
subregulation (3). 
  (3) For paragraph (2) (c), the deferment period ends:                (a) if acceptance is defe rred because of subparagraph 17A.21 (1) (c) (i) — when 
proceedings relating to the registration of, or the extension of protection to, 
the other trade mark are finalised; and 
              (b) if acceptance is deferred  because of subparagraph 17A.21 (1) (c) (ii) — at the 
end of 6 months from the date of  commencement of deferment; and IP/N/1/AUS/T/4 
Page 120  
 
                (c) if acceptance is de ferred because of subparagraph 17A.21 (1) (c) (iii) — 
when proceedings under Part 9 of the Act or regulation 17A.48 relating to the 
other trade mark are finalised; and 
             (d) if acceptance is defe rred because of subparagraph 17A.21 (1) (c) (iv) — 
when the proceedings to have the Regi ster or the Record of International 
Registrations rectified in respect of the other trade mark are determined or 
otherwise disposed of; and 
             (e) if acceptance is defe rred because of subparagraph 17A.21 (1) (c) (v) — when 
the registration of the other trade mark is renewed or the other trade mark is removed from the Register; and 
             (f) if acceptance is deferred because of subparagraph 17A.21 (1) (c) (vi) — 
when the international registration of th e other trade mark is renewed or the 
other trade mark is removed from the International Register; and 
             (g) if acceptance is deferred because of paragraph 17A.21 (2) (a) — at the end 
of 2 months after the beginning of the period in which: 
 
   (i) proceedings mentioned in para graph 17A.21 (2) (b) may be begun; or 
                            (ii) an application mentioned in paragr aph 17A.21 (2) (c) may be made; 
and 
              (h) if acceptance is deferred because of paragraph 17A.21 (2) (b) or (c) — at the 
end of: 
                            (i) 3 m onths after the determination,  or other disposal, of the 
proceedings or review; or 
                           (ii) such  time as the court to which any appeal is brought, or the 
Administrative Appeals Tribunal, or a court to which any appeal 
arising from review by the Tr ibunal is brought, allows; and 
               (i) if acceptance is deferre d because of paragraph 17A.21 (2) (d) — at the end of 
a period after the death of the holder that the Registrar reasonably regards as sufficient in the circumstances; and 
  (j) if acceptance is deferred because of subregulation 17A.21 (3): 
                            (i) if the ACCC gives a certificate under subsection 175 (2) of the Act 
(as applied by regulation 17A.50) in respect of the IRDA — when the Registrar accepts the IRDA in respect of the certification trade 
mark; and 
                           (ii) if the ACCC does not give such a certificate — at the end of 2 
months after the date of the notice to the Registrar under subsection 175 (4) of the Act (as applied by regulation 17A.50). 
  (4) If acceptance of an IRDA is deferred as a r esult of the operation of more than 1 of the 
provisions of paragraph 17A. 21 (1) (c) and subregulation 17A.21 (2), the deferment 
period ends in accordance with the rele vant provision of subregulation (3) under 
which the deferment period ends later or last, as the case requires. 
  (5) The Registrar must inform the holder in writing of: 
 
  (a) the end of a period of deferment; and               (b) if acceptance is deferre d under subregulation 17A.21 (1) — the last day of the 
relevant period mentioned in pa ragraph 17A.20 (1) (a) or (b). 
  IP/N/1/AUS/T/4 
 Page 121 
 
 
  17A.23 Expedited examination 
 
  Regulations 4.18 and 4.19 apply in relati on to an IRDA as if a reference in those 
regulations to an application for registrati on of a trade mark were a reference to the 
IRDA. 
 
17A.24 Final decision on examination 
 
 (1) The Registrar must, after the examin ation, accept the IRDA unless he or she is 
satisfied that: 
 
  (a) it is not in accordance with this Division; or   (b) there are grounds for rejecting it.   (2) The Registrar may accept the IRDA subject to conditions or limitations. 
 
 (3) The Registrar must reject an IRDA, in w hole or in part, if the Registrar is satisfied 
that: 
   (a) it is not in accordance with this Division; or   (b) there are grounds for rejecting it, in whole or in part. 
 
17A.25 Notice of final decision on examination 
 
 (1) If the Registrar decides to accept the IRDA as notified, the Registrar: 
 
  (a) must notify the decision in the Official Journal : 
    (i) specifying the particulars of the IRDA; and                            (ii) stating that, unless a notice of opposition is filed within the period 
allowed under paragraph 17A.29 (2) (b), the trade mark that is the subject of the IRDA will be protected in Australia in respect of the 
goods, services or goods and services in respect of which protection 
was sought; and  
   (b) must notify the holder, in writing, of the decision; and   (c) may notify the International Bureau, in writing, of the decision. 
 
 (2) If the Registrar made a report under regulation 17A.16 in respect of the IRDA, the 
Registrar: 
               (a) must notify the Interna tional Bureau of the final decision on examination in 
accordance with rule 17 of the Common Regulations; and 
  (b) must notify the holder, in writing, of the final decision on examination; and 
              (c) if the final decision on examination is to accept the IRDA in whole or in part, 
must notify the decision in the Official Journal : 
    (i) specifying the particulars of the IRDA; and 
                           (ii) stating that, unless a notice of opposition is filed within the period 
allowed under paragraph 17A.29 (2) (b), the trade mark that is the subject of the IRDA will be protected in Australia, to the extent of the final decision, in respect of the goods, services or goods and services in respect of which protection was sought. IP/N/1/AUS/T/4 
Page 122  
 
   
17A.26 Appeal 
 
 (1) Section 35 of the Act applies in relation to the Registrar’s decision under 
regulation 17A.24 as if: 
 
              (a) the reference in that sec tion to an applicant were a reference to the holder of 
an IRDA; and 
              (b) the reference in that section to accepting an application were a reference to 
accepting an IRDA; and 
              (c) the reference in that sec tion to rejecting an application were a reference to 
rejecting an IRDA in whole or in part. 
  (2) The Registrar:  
              (a) may inform the Interna tional Bureau of an appeal against the Registrar’s 
decision; and 
  (b) must inform the International Bureau of the decision on the appeal. 
 
17A.27 Revocation of acceptance 
  (1) If, before the trade mark that is th e subject of the IRDA becomes a protected 
international trade mark, and before the end of 18 months after the International 
Bureau notified the Registrar of the IRDA,  the Registrar becomes satisfied that: 
              (a) the IRDA was accepted b ecause of an error or omission in the course of the 
examination; or 
             (b) in the special circumstanc es of the case, the trade mark that is the subject of 
the IRDA should not be protected in Australia, or should be protected subject to conditions or limitations, or to additional or different conditions or 
limitations; 
  the Registrar may revoke the acceptance of the IRDA. 
 
 (2) If the Registrar revokes the acceptance of the IRDA:    (a) the IRDA is taken never to have been accepted; and   (b) this Subdivision again applies in relation to the IRDA; and 
              (c) the Registrar must no tify the International Bureau that the acceptance has 
been revoked. 
 
Subdivision 2 Grounds for rejecting IRDA 
 17A.28 Grounds for rejecting IRDA  
 
 (1) The grounds for rejecting an IRDA are th e grounds set out in sections 39 to 44 of the 
Act, as affected by subregulation (2). 
  (2) Sections 39 to 44 apply in relation to an IRDA as if: 
 
  (a) a reference in those sections:                             (i) to an a pplication for the registration of a trade mark were a reference 
to the IRDA; and  IP/N/1/AUS/T/4 
 Page 123 
 
 
     (ii) to an applicant were a reference to the holder of the IRDA; and 
               (b) the reference in paragr aph 41 (6) (a) to the filing date in respect of an 
application were a reference to the date  of international registration or the 
date of recordal, as applicable, in respect of the IRDA; and 
              (c) each reference in subparagraphs 44 (1) (a) (i) and (2) (a) (i) to a trade mark 
registered by another person included a protected international trade mark 
held by another person; and 
              (d) each reference in subparagraphs 44 (1) (a) (ii) and (2) (a) (ii) to a trade mark 
whose registration is being sought by an other person included a trade mark in 
respect of which the extension of protection to Australia is being sought by 
another person. 
 
Subdivision 3 Opposition to IRDA 
 
17A.29 Opposition  
 
 (1) If the Registrar has notified in the Official Journal  the acceptance of an IRDA, a 
person may oppose the extension of protection in Australia to the trade mark that is 
the subject of the IRDA by filing a notice of opposition. 
 
 (2) The notice of opposition must: 
   (a) be in an approved form; and    (b) be filed with the Registrar:  
                           (i) within 3 months from the day on which the acceptance of the IRDA 
is notified in the Official Journal ; or 
                           (ii) if an  extension of time is granted unde r regulation 17A.30, within the 
extended time allowed. 
  (3) The Registrar must notify the Internat ional Bureau of the opposition in accordance 
with rule 16 or 17, as applicable, of the Common Regulations. 
 
17A.30 Extension of time for filing 
 
 (1) A person may apply to the Registrar for an  extension of time in which to file a notice 
of opposition. 
  (2) Regulations 5.2, 5.3 and 5.4 (except subr egulations 5.4 (2) and (3)) apply, with the 
necessary modifications, to an app lication for extension of time under 
subregulation (1). 
 
17A.31 Grounds for opposing IRDA 
 
 (1) The extension of protection may be opposed on any of the grounds on which an 
IRDA may be rejected under Subdivision 2, except the ground that the trade mark cannot be represented graphically. 
 
 (2) The extension of protection may also be opposed on any of the grounds set out in 
sections 58 to 61 of the Act, as affected by subregulation (3). 
  (3) Sections 58 to 61 apply in relation to an IRDA as if: IP/N/1/AUS/T/4 
Page 124  
 
   
  (a) a reference in those sections:                             (i) to an a pplication for the registration of a trade mark were a reference 
to the IRDA; and 
   (ii) to an applicant were a reference to the holder of the IRDA; and 
                           (iii) to the re gistration of a trade mark were a reference to the extension of 
protection in Australia to the trade mark that is the subject of the IRDA; and 
 
              (b) the reference in paragraph 60 (a) to the priority date for the registration of the 
trade mark were a reference to the priori ty date for the trade mark that is the 
subject of the IRDA. 
  (4) The extension of protection may also be opposed on the grounds that: 
 
  (a) a document filed in support of the IRDA was amended contrary to the Act; or 
              (b) the Registrar accepte d the IRDA on the basis of evidence provided, or a 
representation made, by the holder that was false in a material particular. 
Note    Section 66 of the Act makes provision in relati on to amendment of documents filed with the 
Registrar. 
 
17A.32 Circumstances in which opposition may proceed in name of a person other than 
the person who filed the notice 
 
  Section 53 of the Act applies in respect of a notice of opposition filed under this 
Subdivision. 
 
17A.33 Opposition proceedings 
 
 (1) The Registrar must give to the opponent and to the holder of the IRDA an opportunity 
of being heard on the opposition. 
  (2) Regulations 5.7 to 5.17 apply, with the necessary modifications, for the purposes of 
the opposition. 
  (3) Despite subregulations (1) and (2), a requirement to serve a document on the holder, 
or to give the holder an opportunity to ma ke written representations or to be heard, 
does not apply unless, within 3 months after the notice of opposition is filed, the 
holder has notified the Registrar, in writi ng, of the holder’s address for service in 
Australia. 
 
17A.34 Decision on opposition 
  (1) Unless the opposition proceedings are disc ontinued or dismissed, the Registrar must 
decide: 
               (a) to refuse protection in respect of all of the goods or services listed in the 
IRDA; or 
              (b) to extend protection in r espect of some or all of the goods or services listed in 
the IRDA (with or without conditions or limitations); 
  having regard to the extent (if any) to which any ground on which the IRDA was 
opposed has been established.  IP/N/1/AUS/T/4 
 Page 125 
 
 
   
 (2) Unless subregulation 17A.35 (2) applies, the Registrar must tell the International 
Bureau of his or her decision as soon as prac ticable after the end of the appeal period 
mentioned in subregulation 17A.36 (1). 
 
17A.35 Appeal 
 
 (1) Section 56 of the Act applies in relati on to the Registrar’s decision on the opposition 
as if a reference in that section: 
 
  (a) to an applicant were a refe rence to the holder of an IRDA; and 
              (b) to a decision under section 55 of the Act were a reference to a decision under 
regulation 17A.34. 
  (2) If an appeal is made, the Registrar must tell the International Bureau of the decision 
on the appeal as soon as practicable after that decision is made. 
 
Subdivision 4 Extension of protection 
 17A.36 When trade mark becomes a protected international trade mark  
  (1) In this regulation: 
 
  appeal period , in relation to an opposition decision, means the period within which an 
appeal from the decision can be made under regulation 17A.35, not including any extension of the period that the court may allow in a particular case. 
 
  opposition period  means the period allowed under paragraph 17A.29 (2) (b). 
  (2) If:    (a) the Registrar accepts an IRDA; and 
              (b) no opposition to the IR DA is filed within the period allowed under paragraph 
17A.29 (2) (b); 
  the trade mark that is the subject of th e IRDA becomes a protected international trade 
mark at the end of that period. 
 
 (3) If: 
   (a) the Registrar accepts an IRDA; and    (b) opposition to the IRDA is file d within the opposition period; and  
              (c) the result of the decision on the opposition is that the trade mark that is the 
subject of the IRDA should be protected in Australia; and 
              (d) no appeal from the decision on the opposition is made within the appeal 
period; 
  then, subject to subregulation (4), the trade mark becomes a protected international 
trade mark, to the extent permitted by the decision on the opposition, at the end of the appeal period. 
 
 (4) If:    (a) the Registrar accepts an IRDA; and    (b) opposition to the IRDA is file d within the opposition period; and  IP/N/1/AUS/T/4 
Page 126  
 
                (c) an appeal is made  from the decision on the opposition within the appeal 
period, or any extension of that period; and 
              (d) the decision on the appeal is that the trade mark that is the subject of the 
IRDA should be protected in Australia; 
  the trade mark becomes a protected intern ational trade mark, to the extent permitted 
by the decision on the appeal, when that decision is made. 
  (5) If, at the end of 18 months after the Registrar was notified of an IRDA, the 
International Bureau has not received: 
 
  (a) a notification under subregulation 17A.16 (1), 17A.25 (2) or 17A.29 (3); or 
              (b) a notification of the possibility that oppositions may be filed after the 18-
month period; 
  in respect of the IRDA, the trade mark that is the subject of the IRDA becomes a 
protected international trade mark at the end of the 18-month period. 
 
 (6) If:               (a) within 18 months af ter the Registrar was notified of an IRDA, the 
International Bureau receives notifica tion of the possibility that oppositions 
may be filed after the 18-month period; and 
  (b) opposition to the IRDA is file d within the opposition period; and 
              (c) the International Bureau does not receive notification under 
subregulation 17A.29 (3) within 7 m onths after the opposition period begins; 
  the trade mark that is the subject of th e IRDA becomes a protected international trade 
mark at the end of the 7-month period. 
 
17A.37 Notice that trade mark is a protected international trade mark 
 
 (1) If a trade mark becomes a protected in ternational trade mark, the Registrar must: 
   (a) notify that fact in the Official Journal ; and 
  (b) record that fact in the R ecord of International Registrations. 
  (2) The notice and record must include par ticulars of the conditions (if any) and the 
limitations (if any) to which the protection is subject. 
 
 (3) As soon as practicable after receiving notice that a trade mark is a protected 
international trade mark, the holder must notify the Registrar, in writing, of the holder’s address for service in Australia. 
 
17A.38 Disclaimer 
  (1) The holder of an IRDA or a protected in ternational trade mark may, by notice in 
writing given to the Registrar, disclaim any exclusive right to use, or authorise the use of, a specified part of the relevant trade mark. 
  (2) The disclaimer affects only the rights given under this Part to the holder when 
protection is extended to the trade mark. 
  (3) The Registrar must, on extending protection to the trade mark or on receiving notice 
of the disclaimer (whichever is later), record in the Record of International 
Registrations the particulars of the disclaimer.  IP/N/1/AUS/T/4 
 Page 127 
 
 
   
 (4) A disclaimer properly made cannot be revoked.  
Division 4 Protected international trade marks — rights and protection 
 
17A.39 Rights given to, and protection of, protected international trade marks  
 
 (1) Subject to this Part, sections 20 to 26, Parts 12, 13 and 14 of the Act (except 
section 128), and regulations 3.2, 13.1, 13.2 a nd 13.3 apply in relation to a protected 
international trade mark. 
 
 (2) For that application, a reference in those sections, Parts or regulations: 
               (a) to a registered trade mark or a trade mark that is registered is taken to be a 
reference to the protected international trade mark or a trade mark that is a 
protected international trade mark; and 
              (b) to a registered owner of a trade mark is taken to be a reference to the holder 
of the protected international trade mark; and 
              (c) to goods or services in resp ect of which a trade mark is registered is taken to 
be a reference to goods or services covered by the protected international trade mark; and 
              (d) to the date of registration of a trade mark is taken to be a reference to the date 
of effect of the protection of the trade mark; and 
              (e) to the Register is taken to be a reference to the Record of International 
Registrations. 
 
Note   See regulation 17A.4 for the meaning of date of effect . 
 
 (3) Also for that application:  
              (a) the reference in paragraph 127 (b) to a defe ndant having applied under 
subsection 92 (3) for an order directing the Registrar to remove a trade mark from the Register is taken to be a refe rence to the defendant having applied 
under subregulation 17A.48 (2) for an or der directing the Registrar to cease 
protection; and 
             (b) the reference in paragraph 129 (1) (b) to a trade mark alleged to be registered 
is taken to be a reference to a trade mark alleged to be a protected international trade mark; and 
             (c) the reference in regula tion 13.1 to the particulars of registration of the 
registered trade mark is taken to be a reference to the particulars of the protected international trade mark reco rded in the Record of International 
Registrations. 
 
17A.40 Circumstances in which action may not be brought 
 
  If the international registration of a trade ma rk is renewed within 6 months after it has 
expired, an action may not be brought in respect of an act that: 
   (a) infringed the trade mark; and               (b) was done after the inte rnational registration had expired and before it was 
renewed. 
 IP/N/1/AUS/T/4 
Page 128  
 
  Note   Article 7 (4) of the Protocol provides for a 6-m onth period of grace for renewal of international 
registration. 
 
Division 5 Protected international trade marks — amendment or cessation of 
protection 
 
17A.41 Cancellation of international registration  
 
  If the International Bureau cancels, in whol e or in part, the international registration 
of a trade mark that is a protected intern ational trade mark, the trade mark ceases to 
be a protected international trade mark, to  the extent of the cancellation, when the 
international registration is cancelled. 
 
17A.42 Failure to renew international registration 
 
 (1) If the international registration of a trade mark that is a protected international trade 
mark is not renewed, the trade mark ceases to  be a protected international trade mark 
when the international registration expires. 
  (2) However, if:                (a) the international registra tion of a trade mark that is a protected international 
trade mark ( unrenewed protected in ternational trade mark ) is not renewed; 
and 
              (b) within 6 months after th e international registration e xpired, an application for 
the registration of a trade mark, or an IRDA, is made by a person other than the holder of the unrenewed protected international trade mark; 
  the unrenewed protected international trade mark is taken to be a protected 
international trade mark for the purpo ses of the application or the IRDA. 
 
17A.43 Amendment or cessation of protection — contravention of condition 
 
  A prescribed court may, on the applica tion of an aggrieved person, order that: 
 
  (a) the protection extended to a protect ed international trade mark cease; or 
              (b) an entry in the Record of International Registrations relating to the protected 
international trade mark be removed or amended; 
  on the ground that a condition or limitati on entered in the Record of International 
Registrations in relation to the protected international trade mark has been 
contravened. 
 
17A.44 Amendment or cessation of protection — loss of exclusive rights to use trade 
mark 
  (1) This regulation applies if secti on 24 or 25 of the Act, as applied by 
regulation 17A.39, ( applied section 24 or 25 ) applies in relation to a particular 
protected international trade mark. 
  (2) A prescribed court may, on the applicati on of an aggrieved person, but subject to 
subregulation (3) and regul ation 17A.46, order that: 
 
 (a) the protection extended to the protect ed international trade mark cease; or  IP/N/1/AUS/T/4 
 Page 129 
 
 
                (b) an entry in the Record of International Registrations relating to the protected 
international trade mark be removed or amended; 
  having regard to the effect of applie d section 24 or 25 (as the case requires) on the 
right of the holder of the protected interna tional trade mark to use the trade mark, or 
any sign that is part of the trade mark, in relation to particular goods or services. 
 
 (3) If applied section 24 or 25 applies in rela tion to the trade mark because the trade mark 
contains a sign that: 
               (a) has become generally  accepted within the relevant trade as the sign that 
describes or is the name of an article, substance or service; or 
  (b) describes or is the name of:     (i) an article or substance that w as formerly exploited under a patent; or 
   (ii) a service that was formerly provided as a patented process; 
  the court may decide not to make  an order under subregulation (2). 
  (4) Instead, the court may allow the trade mark to continue to be protected in respect of: 
   (a) the article or substance or other goods of the same description; or   (b) the service or other services of the same description; 
  subject to any condition or limitation that the court imposes. 
 
17A.45 Amendment or cessation of protection — other specified grounds 
 
 (1) Subject to subregulation (2) and regula tion 17A.46, a prescribed court may, on the 
application of an aggrie ved person, order that: 
   (a) the protection extended to a protect ed international trade mark cease; or 
              (b) an entry wrongly made or remaining in the Record of International 
Registrations be rem oved or amended; or 
              (c) a condition or limitation affecting the protection of a protected international 
trade mark be entered in the Reco rd of International Registrations. 
  (2) An application under this regulation ma y be made on any of the following grounds: 
               (a) any of the grounds on which the extension of pr otection could have been 
opposed under regulation 17A.31; 
              (b) because of circumstances applying when the applica tion under this regulation 
is filed, the use of the trade mark is likely to deceive or cause confusion for a 
reason other than one for which: 
                            (i) the IRDA could have been rejected under section 43 or 44 of the Act 
(as applied by regulation 17A.28); or 
                          (ii) the extension of protection could ha ve been opposed under section 60 
of the Act (as applied by regulation 17A.31); 
   (c) the following circumstances apply: 
 
                           (i) the Registrar accepted the IRDA because he or she was satisfied, 
having regard to: 
 IP/N/1/AUS/T/4 
Page 130  
 
                                         (A) the extent to which the trade mark was inherently adapted to 
distinguish the goods or services of the holder of the IRDA from the goods or services of any other person; and 
                                       (B) the intended use of the trade mark;   that the trade mark would distinguish those goods or services as 
being those of the holder; 
                             (ii) the a pplication under this regulation is  made at least 10 years after 
the IRDA was notified to the Registrar; 
                            (iii) in th e intervening period, the trade ma rk has not been used to an 
extent sufficient for it to distinguish the goods or services of the 
holder of the protected international trade mark from the goods or services of any other person; 
               (d) if the application is in  respect of an entry in th e Record of International 
Registrations, the entry was made, or has been amended, as a result of fraud, 
false suggestion or misrepresentation. 
 
17A.46 Amendment or cessation may not be granted if holder not at fault etc 
 
 (1) The court may decide not to grant an application made: 
  
  (a) under regulation 17A.44; or               (b) on the ground that the tr ade mark is liable to deceive or confuse (a ground 
referred to in paragra ph 17A.45 (2) (a)); or 
  (c) on the ground referred to in paragraph 17A.45 (2) (c); 
  if the holder of the protected interna tional trade mark satisfies the court that the 
ground relied on by the applicant has not arisen through an act or fault of the holder. 
  (2) In making a decision under subregulation (1), the court:    (a) must take into account the followi ng matters, so far as they are relevant: 
 
                           (i) the extent  to which the public interest will be affected if protection of 
the protected international trade mark is not ceased; 
                           (ii) whether any circumstances that gave rise to the application have 
ceased to exist; 
                           (iii) the ex tent to which the trade mark distinguished the relevant goods 
and services before the circumstances giving rise to the application arose; 
                           (iv) whether there is any order or other reme dy, other than an order under 
regulation 17A.44 or 17A.45, that would be adequate in the circumstances; and 
 
              (b) may take into account any other matter that the court considers relevant. 
 
17A.47 Duties and powers of Registrar 
   Section 90 of the Act applies, with the necessary modifications, for the purposes of an 
application under regulation 17A.43, 17A.44 or 17A.45. 
 
Note   Article 5 (6) of the Protocol requires the Registrar to notify the International Bureau of an 
invalidation of the effect of an international registration.  IP/N/1/AUS/T/4 
 Page 131 
 
 
   
17A.48 Cessation of protection for non-use 
 
 (1) A person aggrieved by the fact that a trade mark is, or may become, a protected 
international trade mark may, subject to s ubregulation (2), apply to the Registrar for 
the protection to cease. 
  (2) An application may not be made under s ubregulation (1) if an action concerning the 
trade mark is pending in a prescribed court, but the person aggrieved may apply to the court for an order directing the Registrar to cease the protection. 
 
 (3) Part 9 of the Act and Part 9 of these Re gulations apply in relation to an application 
mentioned in subregulation (1) or (2). 
  (4) For that application, a reference in those Parts: 
 
              (a) to a registered trade mark  or a trade mark that is registered, or entered on the 
Register, is taken to be a reference to a protected international trade mark or a trade mark that is a protected international trade mark; and 
              (b) to removing a trade mark from the Register is taken to be a reference to 
ceasing protection of a trade mark as a protected international trade mark; and 
              (c) to an application for regi stration of a trade mark is taken to be a reference to 
an international registration designating Australia; and 
              (d) to an applicant for registra tion of a trade mark is taken to be a reference to the 
holder of an international regi stration designating Australia; and 
              (e) to a registered owner of a trade mark is taken to be a reference to the holder 
of a protected international trade mark; and 
              (f) to an application under section 92 is taken to be a reference to an application 
under subregulation (1). 
  (5) Also for that application, the referenc e in subregulation 9.4 (1) to regulations 5.7 
to 5.17 is taken to be a reference to t hose regulations modified as necessary for the 
purposes of an opposition to an app lication under subr egulation (1). 
  (6) Despite subregulation (3), the Registrar is  not required to take any action in response 
to a notice of opposition to an application under subregulation (1) unless the opponent has notified the Registrar, in writing, of the opponent’s address for service in 
Australia. 
  (7) If the result of an action mentioned in s ubregulation (1) or (2) is that the Registrar 
decides, or is directed by a court: 
                (a) to cease protection of a protected international trade mark in respect of some 
or all of the goods or services covered by the protection; or 
               (b) that the trade mark should be protected subject to conditions or limitations;   the Registrar must notify the Internatio nal Bureau of that decision or order. 
 IP/N/1/AUS/T/4 
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  Division 6 Collective and certification trade marks 
 17A.49 Collective trade marks  
 
 (1) The provisions of this Part, of the Act as applied by this Part, and sections 164 to 167 
of the Act, apply in relation to a collective trade mark that is the subject of an IRDA 
or that is a protected international trade mark. 
 
Note   See section 162 of the Act for the meaning of collective trade mark . 
 
 (2) For that application:  
  (a) a reference to a trade mark is taken to include a collective trade mark; and 
              (b) a reference to an appli cation for the registration of a collective trade mark is 
taken to be a reference to an IRDA in  respect of the collective trade mark; 
and 
              (c) a reference to an association in whose name a collective trade mark is 
registered is taken to be a reference to the association that is the holder of the 
relevant protected international collective trade mark; and 
              (d) despite subparagraph 17A. 28 (2) (a) (ii), a reference in section 41 of the Act 
to the applicant is taken to be a refe rence to the members of the association 
that is the holder of the relevant IRDA; and 
              (e) the use of a collective tr ade mark by a member of the association that is the 
holder of the relevant IRDA or protecte d international collective trade mark 
is taken to be a use of the collective trade mark by the holder. 
  (3) In this regulation: 
 
  protected international collective trade mark  means a collective trade mark that is a 
protected international trade mark. 
 
17A.50 Certification trade marks 
 
 (1) Part 16 of the Act and Part 16 of these Regulations (except regul ation 16.1) apply in 
relation to a certification trade mark that is  the subject of an IRDA or that is a 
protected international trade mark. 
 
Note   See section 169 of the Act for the meaning of certification trade mark . 
 
 (2) For that application, a reference in those Parts:                (a) to an application for regi stration of a certification trade mark is taken to be a 
reference to an IRDA in respect of a certification trade mark; and 
              (b) to an applicant for registration of a certification trade mark is taken to be a 
reference to the holder of an IRDA in respect of a certification trade mark; and 
              (c) to a registered certification trade mark, or a certification trade mark that is 
registered, is taken to be a reference to a certification trade mark that is a 
protected international trade mark; and 
              (d) to the registered owner of a registered trade mark is taken to be a reference to 
the holder of a protected international trade mark that is a certification trade mark; and  IP/N/1/AUS/T/4 
 Page 133 
 
 
                (e) to goods or services in respect of which a certification trade mark is 
registered is taken to be a reference to goods or services in respect of which a certification trade mark is protected. 
  (3) Also for that application: 
 
              (a) a reference in section 170 of the Act to another provision of the Act is taken 
to be a reference to that other provision as it is applied by this Part to a trade 
mark that is the subject of an IRDA or that is a protected international trade mark; and 
              (b) each reference in section 170 and 171 of the Act to a certification trade mark 
is taken to be a reference to a certification trade mark that is the subject of an IRDA or that is a protected international trade mark. 
  (4) For subsection 173 (1) of the Act, the hol der of an IRDA in respect of a certification 
trade mark must file a copy of the rules governing the use of the certification trade 
mark with the Registrar as soon as practicab le after the Registrar is notified of the 
IRDA. 
  (5) When the holder files a copy of the ru les in accordance with s ubregulation (4), the 
holder must notify the Registrar, in writi ng, of the holder’s address for service in 
Australia. 
 
Division 7 Transformation of cancelled international registrations 
 17A.51 Application of Division  
 
  This Division applies if:                (a) the international registrati on of a trade mark is cancelled, in whole or in part, 
by the International Bureau at the request of the Office of origin, in 
accordance with Article 6 (4) of the Protocol; and 
              (b) the trade mark is the subj ect of an IRDA or is a protected international trade 
mark; and 
              (c) within 3 months afte r the date on which the inte rnational registration was 
cancelled, the person who held the inte rnational registration files with the 
Trade Marks Office an application for registration of the trade mark (a 
transformation application ); and 
              (d) the transformation application is in relation to any of the goods and services 
to which the cancellation applies that we re listed in the IRDA, or covered by 
the protected international trade mark , immediately before the cancellation. 
 
17A.52 Transformation of IRDA 
 
 (1) If the trade mark is the subject of an  IRDA, the Act and these Regulations apply for 
the purposes of the transformation application as if it were an application for registration. 
 
 (2) However: 
               (a) the filing date for the tr ansformation application is taken to be the date of 
international registration or the date of recordal, as applicable; and IP/N/1/AUS/T/4 
Page 134  
 
                (b) anything already done under this Part for the purposes of the IRDA is to be 
treated as having been done for the purposes of the transformation application. 
 
17A.53 Transformation of protected international trade mark 
 
 (1) If the trade mark is a protected interna tional trade mark, the Registrar must register 
the trade mark. 
  (2) The date of registration of the trade mark is taken to be: 
 
  (a) the date of international registration or the date of recordal, as applicable; or 
              (b) if the IRDA in respect of the trade mark included a prio rity claim, the priority 
date allowed under that claim. 
  Division 8 Concurrence between regist ration and international registration 
 
Note     The Protocol makes provision for this as ‘R eplacement of a National or Regional Registration 
by an International Registration’: see Article 4bis. 
 
17A.54 Effect of registration and protection of the same trade mark 
 
 (1) This regulation applies if: 
 
              (a) a trade mark that is a registered trade mark becomes a protected international 
trade mark; and 
               (b) the registered owner of the trade mark is the holder of the protected 
international trade mark; and 
               (c) all the goods and services covered by the registered trade mark are covered 
by the protected international trade mark. 
  (2) The date of effect of protection of the pr otected international trade mark in respect of 
all the goods and services covered by the regist ered trade mark is ta ken to be the date 
of registration of the registered trade mark. 
  (3) The protected international trade mark h as the priority date of the registered trade 
mark in respect of all the goods and services covered by the registered trade mark. 
 
 (4) The holder of the protected international trade mark may file an application in the 
approved form for particulars of the interna tional registration of the trade mark to be 
entered in the Register. 
 
 (5) If the Registrar receives an application under subregulation (4), the Registrar must: 
   (a) enter the particulars in the Register; and               (b) notify the Internationa l Bureau in accordance with rule 21 of the Common 
Regulations. 
 
 (6) This regulation does not affect the right s and protections conferred under the Act in 
respect of the registered trade mark. 
  IP/N/1/AUS/T/4 
 Page 135 
 
 
  17A.55 Effect of cancellation, removal or expiry of registered trade mark 
 
 (1) Subregulations 17A.54 (2) and (3) cease to apply if:                (a) the registration of the trad e mark is cancelled (otherwise than at the request of 
the registered owner); or 
  (b) the trade mark is removed from the Register.   (2) However, if the registration of the trade mark expires or is cancelled at the request of 
the registered owner, those subr egulations continue to apply. 
 
 Division 9 Change in ownership of international registration 
 
17A.56 Application of Division 
   This Division applies if the Registra r receives notification from the International 
Bureau of an assignment or transmission of the international registration of a trade mark that is the subject of an IRDA or is a protected international trade mark. 
 
Note   Assignment  and transmission  are defined in section 6 of the Act. 
 
17A.57 Collective trade marks 
 
  If the trade mark is a collective trade mark , the Registrar must make a declaration in 
accordance with rule 27 (4) of the Co mmon Regulations that the assignment or 
transmission has no effect in Australia. 
 
17A.58 Certification trade marks 
 
 (1) If the trade mark is a certification trade mark that is a protected international trade 
mark, the Registrar must make a declaration to the International Bureau in accordance 
with rule 27 (4) of the Common Regulations that, subject to subregulation (2), the 
assignment or transmission has no effect in Australia. 
  (2) If the Registrar receives evidence in writing of the consent of the ACCC to the 
assignment or transmission, the Registrar mu st notify the International Bureau that 
the assignment or transmission may be given effect in Australia. 
 
17A.59 Trade marks affected by claimed interests and rights 
 
 (1) If a person is recorded under regulation 17A. 62 as claiming an interest in, or a right in 
respect of, the trade mark, the Registrar must: 
               (a) make a declaration to th e International Bureau in accordance with rule 27 (4) 
of the Common Regulations that, subject to subregulation (2), the assignment 
or transmission has no effect in Australia; and 
              (b) give notice in writing to the person stating that the assignment or 
transmission will have effect at the end of 2 months from the date of the notice unless the person serves on the Registrar an order of a prescribed court directing the Registrar not to withdraw the declaration. 
 IP/N/1/AUS/T/4 
Page 136  
 
   (2) At the end of the 2-month period, if a court order has not been served on the Registrar 
as mentioned in paragraph (1) (b), the Regi strar must notify the International Bureau 
that the assignment or transmission may be given effect in Australia. 
 
17A.60 Recording assignment or transmission 
 
  If the assignment or transmission has effect in Australia, the Registrar must record it 
in the Record of International Registrations. 
 
Note    If regulation 17A.57, 17A.58 or 17A.59 does not apply to the trade mark, the assignment or 
transmission of the international registration has effect in Australia in accordance with the 
Protocol. 
 
 Division 10 Recording of claimed interests and rights 
  17A.61 Application to have claims recorded 
 
 (1) A person who claims an interest in, or a right in respect of, a trade mark that is the 
subject of an IRDA or is a protected in ternational trade mark may apply to the 
Registrar to have particulars of th e claim recorded by the Registrar. 
 
 (2) The application must: 
               (a) be made jointly with the holder of the IRDA or protected international trade 
mark; and 
  (b) be made in an approved form; and 
  (c) be filed with the Trade Marks Office. 
 
17A.62 Recording of claims 
 
  If the application is made in accordance with regulation 17A.61, the Registrar must 
record in the Record of International Registrations particulars of the claim. 
 
 17A.63 Notification of matters affecting trade mark 
 
  The Registrar must notify each person who h as a claim recorded in respect of a trade 
mark of any matter affecting the trade mark  that is notified to the Registrar by the 
International Bureau. 
 
 17A.64 Record not proof etc of existence of right etc 
 
  The fact that a record has been made by the Registrar under this Division that a 
person claims an interest in, or a right in respect of, a trade mark is not proof or 
evidence that the person has the right or interest claimed. 
 
 17A.65 Amendment or cancellation of record 
 
 (1) Particulars recorded under this Division may be: 
 
  (a) amended in accordance with s ubregulations 11.1 (2) and (3); or 
  (b) cancelled in accordance with subre gulations 11.3 (2), (3), (4) and (5). 
  IP/N/1/AUS/T/4 
 Page 137 
 
 
   (2) Those subregulations appl y for the purposes of this regulation as if a reference to the 
owner of the trade mark were a referen ce to the holder of the relevant IRDA or 
protected international trade mark. 
 
Division 11 Miscellaneous 
 
17A.66 Record of International Registrations  
 
 (1) The Registrar must maintain a Record of  International Registrations for the purposes 
of this Part. 
 
 (2) The Record of International Registrati ons must include the following particulars in 
respect of each IRDA notified to the Re gistrar by the International Bureau: 
   (a) the name of the holder; 
  (b) the address of the holder;  
              (c) the goods, services or goods and services in respect of which protection is 
sought; 
             (d) the claims of interest (if a ny) affecting the trade mark that is the subject of the 
IRDA; 
             (e) any other particulars that are required by the Act, these Regulations, the 
Protocol or the Common Regulations to be recorded in respect of the IRDA; 
             (f) any other particulars relating to the IRDA that the Registrar reasonably 
believes to be appropriate. 
  (3) The Record of International Registrati ons must include the following particulars in 
respect of each protected international trade mark: 
   (a) the name of the holder;   (b) the address of the holder;                (c) the goods, services or goods and services in respect of which the trade mark 
is protected; 
              (d) the conditions (if any) and limitations (if any) subject to which the trade mark 
is protected; 
              (e) the claims of interest (if any) and disclaimers (if any) affecting the protected 
international trade mark; 
              (f) any other particulars that are required by the Act, these Regulations, the 
Protocol or the Common Regulations to be recorded in respect of the 
protected international trade mark; 
             (g) any other particulars relating to the protected international trade mark that the 
Registrar reasonably believes to be appropriate. 
17A.67 Inspection 
  (1) The Record of International Registrati ons must be available at the Trade Marks 
Office for inspection by any person during the hours when the Office is open for business. 
  (2) Subregulation (1) is satisfied if a person who wants to inspect the Record of 
International Registrations is given access to  a computer terminal from which he or 
she can read on a screen, or obtain a printed copy of, the particulars or other matters 
recorded in it. IP/N/1/AUS/T/4 
Page 138  
 
  17A.68 Evidence — the Record of  International Registrations 
 
 (1) The Record of International Registrations is evidence of any particular or other matter 
entered in it. 
 
 (2) A copy of, or extract from,  the Record of International Registrations that is certified 
by the Registrar to be a true record or extr act is admissible in any proceedings as if it 
were the original. 
 
Note    Section 211 of the Act makes provision in relati on to certificates given by the Registrar and 
certified copies of documents held in the Trade Marks Office. 
 
17A.69 Evidence — international instruments 
 
 (1) In any proceedings relating to a trade ma rk that is the subject of an IRDA or is a 
protected international trade mark, a copy of any of the following documents is admissible in evidence: 
 
              (a) the WIPO Gazette of  International Marks published by the International 
Bureau; 
              (b) an entry in or extr act from the International Register, issued by the 
International Bureau; 
              (c) any other instrument, or an entry in or extract from any other instrument, 
issued by the International Bureau. 
  (2) In any such proceedings:                (a) an instrument that purports  to have been issued by the International Bureau is 
taken to have been issued by the Inte rnational Bureau unless the contrary is 
proved; and 
              (b) an instrument that pur ports to be the WIPO Gazette of International Marks 
published by the International Bureau is taken to be that Gazette unless the contrary is proved. 
 
 (3) Also in any such proceedings, evidence of the Protocol or the Common Regulations 
may be adduced by producing a book or pa mphlet containing the Protocol or the 
Common Regulations that purports to have been printed by authority of: 
   (a) the World Intellectual Property Organization; or  
              (b) another person or body th at the court considers to be a reliable source of 
information. 
 
17A.70 Correction of errors or omissions in Record of International Registrations 
  (1) The Registrar may, on his or her own initiative, correct any error or omission in the 
Record of International Registrations. 
  (2) A prescribed court may, on the applicati on of an aggrieved person, order that the 
Registrar rectify the Record of International Registrations by: 
 
 (a) entering anything wrongly omitted from it; or 
 (b) correcting any error in it. 
  IP/N/1/AUS/T/4 
 Page 139 
 
 
   (3) Section 90 of the Act applies, with the necessary modifications, for the purposes of an 
application under subregulation (2). 
 
 17A.71 Passing off actions 
    Subsection 230 (2) of the Act applies for the purposes of an action for passing off 
arising out of the use of a protected intern ational trade mark in the same way as it 
applies for the purposes of an action for passing off arising out of the use of a 
registered trade mark. 
 [13] Schedule 9, item 5 
 
 omit 
 
  5.15 or 21.25:  insert 
 
  5.15, 17A.20, 17A.30 or 21.25 or regula tion 5.15 as applied by regulation 17A.33: 
 
[14] Schedule 9, item 6 
 
 after 
 
  of the Act  
 insert 
 
  or regulation 17A.29, or section 96 of  the Act as applied by regulation 17A.48 
 
[15] Schedule 9, item 7 
 
 after 
 
  paragraph 5.15 (1) (b)  
 insert 
   , or under that paragraph as applied by regulation 17A.33 
 
[16] Schedule 9, item 10 
 
 after 
   of the Act 
 
 insert 
 
  , or for cessation of protection for non-use under subregulation 17A.48 (1) 
 IP/N/1/AUS/T/4 
Page 140  
 
  [17] Schedule 9, items 11 and 12 
 
 after 
 
  or 9.4 
 
insert 
 
  , or regulation 5.14 as applied by regul ation 17A.33 or regulation 9.4 as applied by 
regulation 17A.48, 
 
[18] Schedule 9, after item 12 
 
 insert 
 
12A Handling an application for the international registration of a 
trade mark under regulation 17A.7 $100 
12B Transmitting renewal fee for the international registration of a 
trade mark under Article 7 of the Madrid Protocol $65 
 
[19] Schedule 9, item 16 
 
 after 
 
  the Register   insert 
 
  or the Record of International Registrations __________________________________________________________________________________ 
Notes 
 
1. These Regulations amend Statutory Rules 1995 No. 341, as amended by  1996 Nos. 3, 184 and 272; 1997 No. 346; 
1998 Nos. 258, 265, 343 and 346; 1999 Nos. 153, 186, 196 and 350. 
 
2. Notified in the Commonwealth of Australia Gazette  on 1 March 2001. 
  IP/N/1/AUS/T/4 
 Page 141 
 
 
   
 
 
Trade Marks Amendment Regulations 2001 (No. 2)1 
 Statutory Rules 2001 No. 185
2 
__________________________________________________________________________________ 
  I, WILLIAM PATRICK DEANE, Governor-General of the Commonwealth of Australia, acting with the advice of the Federal Executive Council,  make the following Regulations under the Trade Marks 
Act 1995. 
 
Dated 28 June 2001   
 
 
WILLIAM DEANE Governor-General 
By His Excellency’s Command  
 
  WARREN ENTSCH Parliamentary Secretary to the Minister for Industry,  
Science and Resources 
__________________________________________________________________________________  IP/N/1/AUS/T/4 
Page 142  
 
  1 Name of Regulations 
 
 These Regulations are the Trade Marks Amendment Re gulations 2001 (No. 2) . 
 
2 Commencement 
 
 These Regulations commence on gazettal.  
3 Amendment of Trade Marks Regulations 1995  
 
 Schedule 1 amends the Trade Marks Regulations 1995 . 
   
Schedule 1  Amendment 
   (regulation 3) 
 
 [1] Subregulation 20.1 (1) 
 
     substitute 
 
  (1) For paragraph 228A (4) (a) of the Act, a qualification comprises:     (a) a pass in: 
 
   (i) an accredited course of study that:                                          (A) includes the subject matter in topic group A, B, C or D 
mentioned in Schedule 5 to the Patents Regulations 1991 ; 
and 
                                        (B) is not part of a course of study to which an award mentioned 
in paragraph (b) relates; or 
    (ii) an examination that:  
                                        (A) is conducted by the Board under regulation 20.6 of the 
Patents Regulations 1991  for topic group A, B, C or D 
mentioned in Schedule 5 to the Patents Regulations 1991 ; 
and 
                                        (B) is not part of a course of study to which an award mentioned 
in paragraph (b) relates; and 
 
  (b) an award of:                             (i) a degr ee, diploma, advanced diploma or graduate diploma, under the 
Australian Qualification Framework, that is: 
 
    (A) in any field of study; and  IP/N/1/AUS/T/4 
 Page 143 
 
 
                                          (B) awarded by a body, in the Higher Education Sector, that is 
authorised to award a degree, diploma, advanced diploma or graduate diploma of that kind; or 
                   (ii) a degree, dipl oma, advanced diploma or graduate diploma that is: 
 
    (A) awarded by an overseas education institution; and     (B) equivalent to an awar d mentioned in subparagraph (i). 
 
Note     The Australian Qualification Framewor k is a nationally recognised reference which 
categorises qualifications into 12  levels, from institutions categor ised into 3 sectors: schools, 
vocational and higher education.  
 
 The AQF website is http://www.aqf.edu.au/ 
__________________________________________________________________________________ 
Notes 
 
1. These Regulations amend Statutory Rules 1995 No. 341, as amended by  1996 Nos. 3, 184 and 272; 1997 No. 346; 
1998 Nos. 258, 265, 343 and 346; 1999 Nos. 153, 186, 196 and 350; 2001 No. 33. 
 
2. Notified in the Commonwealth of Australia Gazette  on 5 July 2001. IP/N/1/AUS/T/4 
Page 144  
 
  
 
 
Trade Marks Amendment Regulations 2001 (No. 3)1 
 Statutory Rules 2001 No. 247
2 
__________________________________________________________________________________  
 I, PETER JOHN HOLLINGWORTH, Governor-General of the Commonwealth of Australia, acting 
with the advice of the Federal Executive Counc il, make the following Regulations under the Trade 
Marks Act 1995. 
 
Dated 13 September 2001    
 
PETER HOLLINGWORTH                 Governor-General 
By His Excellency’s Command   
 
 WARREN ENTSCH Parliamentary Secretary to the Minister for Industry, Science and Resources 
__________________________________________________________________________________ IP/N/1/AUS/T/4 
 Page 145 
 
 
  Contents 
 
 1 Name of Regulations   2 Commencement 
 
 3 Amendment of Trade Marks Regulations 1995  
 
Schedule 1 Amendments commencing on commencement of the Trade Marks and Other 
Legislation Act 2001  
 
Schedule 2 Amendment commencing on 1 January 2002 
 
_______________ 
 1 Name of Regulations 
 
  These Regulations are the Trade Marks Amendment Re gulations 2001 (No. 3) . 
 
2 Commencement 
  These Regulations commence as follows: 
  (a) on the commencement of the Trade Marks and Other Legislation Act 2001 — 
regulations 1 to 3 and Schedule 1; 
 
 (b) on 1 January 2002 — Schedule 2. 
 
                 Note     The Trade Marks and Other Legislation Act 2001  is to commence on 19 September 2001:   see 
subsection 2 (1). 
 
3 Amendment of Trade Marks Regulations 1995  
 
 Schedules 1 and 2 amend the Trade Marks Regulations 1995 . IP/N/1/AUS/T/4 
Page 146  
 
  Schedule 1 Amendments commencing on commencement of the Trade Marks and 
Other Legislation Act 2001 
(regulation 3) 
 
[1] Regulation 2.1, after definition of Madrid Protocol  
 
 insert  
  m o n t h , for a period with a length expressed in  months, has the meaning given by 
regulation 2.2. 
 
[2] Regulation 2.1, definition of working day 
 
 omit 
 
[3] After regulation 2.1  
 
 insert 
 
 2.2 Period expressed in months 
   In these Regulations, a period expressed in months and dating from an event, ends: 
               (a) on the day, in the rele vant 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 betwee n 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 m onths 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. 
 
[4] Paragraph 5.10 (2) (a) 
 
 omit 
 
  beginning on  
 insert 
   from 
 
[5] Part 7, after the Part heading 
 
 insert 
 
 Division 1 Initial registration 
  IP/N/1/AUS/T/4 
 Page 147 
 
 
  [6] After regulation 7.2 
 
 insert 
 
 Division 2 Renewal of registration (general) 
 
[7] After regulation 7.5 
 
 insert 
 
 Division 3 Renewal of registration (regis tration delayed for 10 or more years after 
filing date) 
 
 7.6 Prescribed period (Act s 80A (3)) 
   For subsection 80A (3) of the Act, the prescribed period is 2 months. 
 
Note     Paragraph 80A (3) (b) of the Act provides that the prescribed period commences on the 
Register entry day. 
 
7.7 Notice about renewal (Act s 80C) 
 
 For section 80C of the Act (which deals with renewal of registration, where registration has 
been delayed for 10 or more years after the filin g date of the application for registration) the 
Registrar’s notice to the registered ow ner of the trade mark must state: 
  (a) the date on which the prescribed period expires; and  (b) the fee payable by the registered owner. 
 
7.8 Notice of renewal (Act s 80E) 
 
 For section 80E of the Act (which deals with renewal within the prescribed period), a notice 
of the renewal of the registration of a trade mark must: 
 
 (a) state that the registration is renewed; and 
 (b) state the period or periods for which it is renewed.  
[8] Paragraph 10.1 (b) 
 
 omit 
 
  or transmission of a registered 
insert 
   of a  
 IP/N/1/AUS/T/4 
Page 148  
 
  [9] Regulation 13.1 
 
 substitute 
 
 13.1 Notice of objection to importation ( accompanying documents 
 
  For the purposes of subsection 132 (2) of the Act (which deals with notices of 
objection), the following documents are prescr ibed in relation to a notice given under 
that subsection, namely a document setting out  the particulars of registration of the 
registered trade mark. 
 
[10] After regulation 16.10 
 
 insert 
 
 16.10A Assignment of unregistered certification trade marks 
 
 (1) An application to the Commission for its consent to the assignment of an unregistered 
certification trade mark must:    (a) be made by the applicant for regi stration of the certification trade mark; and 
                (b) state the name, address, and address for service of the prospective assignee; 
and 
              (c) state whether the prospective assignee proposes, after assignment, to apply 
the same rules governing use of the certif ication trade mark that the applicant 
for registration applies, or proposes to apply; and 
  (d) if the prospective assignee does not propose to apply those rules: 
                            (i) state any variation of the rules that the prospective assignee proposes 
to apply after assignment; and 
                           (ii) have with it a copy of the rules incorporating the proposed variation 
that the prospective assignee proposes to apply after assignment. 
 
 (2) In considering an application, the Commission must have regard to the following 
matters: 
               (a) whether the prospective assignee, or any prospective approved certifier 
within the meaning of paragraph 173 (2) (a) of the Act, is competent to 
certify the goods or services specified in the application for registration of the 
certification trade mark; 
              (b) if the prospective assignee does not propose, after the assignment, to apply 
the same rules governing use of the cer tification trade mark as the applicant 
for registration of the trade mark appli es, or proposes to apply — whether, if 
the application were an application to a pprove the variation of those rules that 
the prospective assignee proposes to  vary after the assignment, the 
application would be approved by the Commission. 
 
[11] Regulation 17A.2, before definition of Common Regulations 
 
 insert 
 
  change of ownership  includes assignment or transmission. 
  IP/N/1/AUS/T/4 
 Page 149 
 
 
  [12] After subregulation 17A.30 (2) 
 
 insert   (3) Subsection 52 (5) of the Act applies to an application for extension of time under 
subregulation (1). 
 
[13] Subregulation 17A.42 (2) 
 
 substitute 
 
 (2) However, if:                (a) the international registra tion of a trade mark that is a protected international 
trade mark ( unrenewed protected in ternational trade mark ) is not renewed; 
and 
              (b) an application for the re gistration of the trade mark, or an IRDA, is made, or 
has already been made, by a person othe r than the holder of the unrenewed 
protected international trade mark; 
  the unrenewed protected international trade mark is taken to be a protected 
international trade mark for the purposes of the application or the IRDA, at any time 
when the registration of the unrenewed protected international trade mark could have 
been renewed under Article 7 of the Protocol. 
 
[14] Paragraph 17A.45 (2) (c) 
 
 omit 
 
[15] Paragraph 17A.48 (4) (f) 
 
 omit 
   subregulation (1). 
 
 insert 
 
  subregulation (1); and 
 
[16] After paragraph 17A.48 (4) (f) 
 
 insert                (g) to the day on which th e application for registration of the trade mark was 
filed, or the filing date in respect of the application for registration of the 
trade mark, is taken to be a reference to: 
                            (A) if the request for extension of protec tion to Australia was made under 
Article 3
ter (1) of the Protocol — the date of international registration 
of the trade mark; or 
                           (B) if the request for extension of protec tion to Australia was made under 
Article 3ter (2) of the Protocol — the date of recordal of the request. 
 IP/N/1/AUS/T/4 
Page 150  
 
                Note     The expressions date of international registration  and date of recordal  are defined in 
regulation 17A.2. 
 
[17] Paragraph 17A.50 (2) (e) 
 
 omit 
 
  protected.  
 insert 
 
  protected; and 
 
[18] After paragraph 17A.50 (2) (e) 
 
 insert  
              (f) to assignment of a certif ication trade mark is taken to be a reference to 
change of ownership of a certification trade mark. 
 
[19] Paragraph 17A.50 (3) (b) 
 
 omit 
 
  mark.  
 insert 
   mark; and 
 
[20] After paragraph 17A.50 (3) (b) 
 
 insert 
               (c) each reference in Part 16 of these Regulations to the prospective assignee is 
taken to be a reference to the new holde r of the international registration in 
respect of Australia who is identified in the notification to the Registrar under Rule 27 (1) of the Common Regulations. 
 [21] Regulation 17A.56 
 
 omit 
 
  an assignment or transmission 
 
 insert 
 
  a change of ownership   IP/N/1/AUS/T/4 
 Page 151 
 
 
  [22] Regulation 17A.56, note 
 
 substitute 
 
              Note    Change of ownership  is defined in regulation 17A.2 to include assignment or transmission. 
 
[23] Regulation 17A.58, heading 
 
 substitute 
 
 17A.58 Protected certification trade marks 
 
[24] After regulation 17A.58  
  insert 
 
 17A.58A   Unprotected certification trade marks 
 
 (1) If the trade mark is a certification trade mark that is the subject of an IRDA, and: 
 
              (a) a copy of the IRDA and the rules governing the use of the certification trade 
mark has been received by the ACCC; and 
        (b) the trade mark has not b ecome a protected international trade mark; 
  the Registrar must make a declaration to the International Bureau in accordance with 
Rule 27 (4) of the Common Regulations that, subject to subregulation (2), the change 
of ownership has no effect in Australia. 
  (2) If the Registrar receives evidence in writing of the consent of the ACCC to the 
change of ownership, the Registrar must notify the International Bureau that the 
change of ownership may be given effect in Australia. 
 
[25] Paragraph 21.13 (3) (b) 
 
 after 
   case 
 
 insert 
 
  of  [26] After subregulation 21.21 (4) 
 
 insert   (5) If a person asks the Registrar, under section 80D of the Act, to renew the registration 
of a trade mark for one or more potential renewal periods, the fee payable is the sum 
of the fees payable for the potential rene wal period or periods requested by the 
person, as those fees were at the Register entry day. 
  (6) Subregulation (7) applies if a person ask s the Registrar, under paragraph 80G (1) (b) 
of the Act (which deals with renewal within  10 months after the end of the prescribed IP/N/1/AUS/T/4 
Page 152  
 
  period) to renew the registration of a trad e mark for one or more potential renewal 
periods. 
  (7) The fee payable for the renewal is:  
              (a) the sum of the fees payable for the potential renewal period or periods 
requested by the person, as those fees were at the Register entry day; and 
         (b) the additional fee stated in item 9A of Schedule 9 for the period:                             (i) begi nning on the day after the day when the prescribed period 
expires; and 
   (ii) ending on the day when the request for renewal is filed.  
[27] Paragraph 21.28 (1) (k) 
 
 omit  
 
  section 79  
 insert 
   sections 79, 80D or 80G 
 
[28] Schedule 9, after item 9 
 
 insert 
 
9A Each potential renewal period 
requested by a person under section 80D of the Act:  (a) in respect of goods or services in a single prescribed class  
  
$300 
  (b) in respect of goods or 
services in more than 1 prescribed class $300 plus $150 for each additional class 
  (c) where the request for 
renewal is made within 10 months 
after the end of the prescribed period, 
under paragraph 80G (1) (b) of the Act in addition to any fee in relation to 
paragraph (a) or (b), but regardless of 
the number of potential renewal periods 
requested — $65 for each class and for each month, or part of a month, after the end of the prescribed period 
 
[29] Further amendments — change of ownership 
  The following provisions are amended by omitting each mention of ‘assignment or 
transmission’ and inserting ‘change of ownership’: 
• regulation 17A.57 
• subregulations 17A.58 (1) and (2) 
• paragraphs 17A.59 (1) (a) and (b) 
• subregulation 17A.59 (2)  IP/N/1/AUS/T/4 
 Page 153 
 
 
  • regulation 17A.60, heading and note. 
 
Schedule 2  Amendment commencing on 1 January 2002    (regulation 3) 
 
  [1] Schedule 1, Part 2, item 42 
 
 substitute  
42 Scientific and technological services a nd research and design relating thereto; 
industrial analysis and research services; design and development of computer 
hardware and software; legal services 
43 Services for providing food a nd drink; temporary accommodation 
44 Medical services; veterinary services; hygienic and beauty care for human 
beings or animals; agriculture, horticulture and forestry services 
45 Personal and social services  rendered by others to meet the needs of individuals; 
security services for the protecti on of property a nd individuals 
 
__________________________________________________________________________________ 
Notes 
 
1. These Regulations amend Statutory Rules 1995 No. 341, as amended by  1996 Nos. 3, 184 and 272; 1997 No. 346; 
1998 Nos. 258, 265, 343 and 346; 1999 Nos. 153, 186, 196 and 350; 2001 Nos. 33 and 185. 
 
2. Notified in the Commonwealth of Australia Gazette  on 14 September 2001. IP/N/1/AUS/T/4 
Page 154  
 
  
 
 
Trade Marks Amendment Regulations 2002 (No. 1)1 
 Statutory Rules 2002 No. 318
2 
  
 I, PETER JOHN HOLLINGWORTH, Governor-General of the Commonwealth of Australia, acting 
with the advice of the Federal Executive Counc il, make the following Regulations under the Trade 
Marks Act 1995 . 
 
Dated 12 December 2002    
 
PETER HOLLINGWORTH     Governor-General 
By His Excellency’s Command   
 
 IAN MACFARLANE Minister for Industry, Tourism and Resources __________________________________________________________________________________ IP/N/1/AUS/T/4 
 Page 155 
 
 
  1 Name of Regulations 
 
 These Regulations are the Trade Marks Amendment Re gulations 2002 (No. 1) . 
 
2 Commencement 
 
 These Regulations commence on gazettal.  
3 Amendment of Trade Marks Regulations 1995  
  Schedule 1 amends the Trade Marks Regulations 1995.  
   
Schedule 1  Amendments  
   (regulation 3) 
    
[1] Regulation 4.17 
 
 omit everything after 
 
  from the initial  
 insert 
   application: 
              (a) begins on the day on which a person requests an amendment of the initial 
application; and 
             (b) ends on the day 1 month after the day on which notice of the amendment of 
the initial application is given under regulation 6.4. 
 
[2] Regulation 20.8 
 
 omit 
   may 
 
 insert 
 
  must  [3] Subregulation 20.9 (1) 
 
 omit 
 
  may: 
 
 insert 
 
  must:  IP/N/1/AUS/T/4 
Page 156  
 
  [4] Schedule 10 
 
 after 
 
  Senegal 
 
 insert 
 
  Seychelles __________________________________________________________________________________ Notes 
 
1. These Regulations amend Statutory Rules 1995 No. 341, as amended by  1996 Nos. 3, 184 and 272; 1997 No. 346; 
1998 Nos. 258, 265, 343 and 346; 1999 Nos. 153, 186, 196 and 350; 2001 Nos. 33, 185 and 247; 2002 No. 173. 
 
2. Notified in the Commonwealth of Australia Gazette  on 19 December 2002.  IP/N/1/AUS/T/4 
 Page 157 
 
 
  
 
 
Trade Marks Amendment Regulations 2003 (No. 1)1 
 Statutory Rules 2003 No. 214
2 
__________________________________________________________________________________  
 I, PHILIP MICHAEL JEFFERY, Governor-General of the Commonwealth of Australia, acting with 
the advice of the Federal Executive Council,  make the following Regulations under the Trade Marks 
Act 1995 . 
 
Dated 14 August 2003    
 
  P. M. JEFFERY Governor-General 
By His Excellency’s Command   
 
 JOE HOCKEY Minister for Small Business and Tourism __________________________________________________________________________________ IP/N/1/AUS/T/4 
Page 158  
 
  1 Name of Regulations 
 
 These Regulations are the Trade Marks Amendment Regul ations 2003 (No. 1).  
 
2 Commencement 
 
 These Regulations commence on the co mmencement of Schedule 1 to the Intellectual 
Property Laws Amendment Act 2003.  
 
3 Amendment of Trade Marks Regulations 1995  
 
 Schedule 1 amends the Trade Marks Regulations 1995 . 
   Schedule 1  Amendments 
   (regulation 3) 
    
[1] Paragraph 5.2 (2) (a) 
 
 omit 
 
  a trade marks officer;  
 insert 
 
  an employee;  
[2] Subregulation 21.13 (3) 
 
 omit 
 
  a trade marks officer  
 insert 
   an employee 
 
[3] Subregulation 21.13 (4) 
 
 omit 
   a trade marks officer. 
 
 insert 
 
  an employee. 
  IP/N/1/AUS/T/4 
 Page 159 
 
 
  [4] Regulation 21.24 
 
 omit each mention of 
 
  a trade marks officer, 
 
 insert 
 
  an employee, __________________________________________________________________________________ Notes 
 
1. These Regulations amend Statutory Rules 1995 No. 341, as amended by  1996 Nos. 3, 184 and 272; 1997 No. 346; 
1998 Nos. 258, 265, 343 and 346; 1999 No s. 153, 186, 196 and 350; 2001 No s. 33, 185 and 247; 2002 Nos. 173 
and 318. 
 
2. Notified in the Commonwealth of Australia Gazette  on 21 August 2003. IP/N/1/AUS/T/4 
Page 160  
 
  
 
 
Trade Marks Amendment Regulations 2004 (No. 1)1 
 Statutory Rules 2004 No. 24
2 
__________________________________________________________________________________  
 I, PHILIP MICHAEL JEFFERY, Governor-General of the Commonwealth of Australia, acting with 
the advice of the Federal Executive Council,  make the following Regulations under the Trade Marks 
Act 1995 . 
 
Dated 19 February 2004    
 
   P. M. JEFFERY Governor-General 
By His Excellency’s Command   
 
 IAN MACFARLANE Minister for Industry, Tourism and Resources __________________________________________________________________________________ IP/N/1/AUS/T/4 
 Page 161 
 
 
  1 Name of Regulations 
 
 These Regulations are the Trade Marks Amendment Regul ations 2004 (No. 1). 
 
2 Commencement 
 
 These Regulations commence on 11 March 2004.  
3 Amendment of Trade Marks Regulations 1995  
  Schedule 1 amends the Trade Marks Regulations 1995 . 
   Schedule 1  Amendment 
   (regulation 3) 
    
[2] Schedule 10 
 
 after 
 
  Sao Tome and Principe, Democratic Republic of  
 insert 
   Saudi Arabia 
__________________________________________________________________________________ 
Notes 
 
1. These Regulations amend Statutory Rules 1995 No. 341, as amended by  1996 Nos. 3, 184 and 272; 1997 No. 346; 
1998 Nos. 258, 265, 343 and 346; 1999 No s. 153, 186, 196 and 350; 2001 No s. 33, 185 and 247; 2002 Nos. 173 
and 318; 2003 No. 214. 
 
2. Notified in the Commonwealth of Australia Gazette  on 26 February 2004. IP/N/1/AUS/T/4 
Page 162  
 
  
 
 
Trade Marks Amendment Regulations 2004 (No. 2)1 
 Statutory Rules 2004 No. 194
2 
__________________________________________________________________________________  
  I, PHILIP MICHAEL JEFFERY, Governor-General of the Commonwealth of Australia, acting with 
the advice of the Federal Executive Council,  make the following Regulations under the Trade Marks 
Act 1995 . 
 Dated 24 June 2004   
 
 
  P. M. JEFFERY Governor-General 
By His Excellency’s Command  
 
  IAN MACFARLANE  
Minister for Industry, Tourism and Resources 
__________________________________________________________________________________ IP/N/1/AUS/T/4 
 Page 163 
 
 
  1 Name of Regulations 
 
 These Regulations are the  Trade Marks Amendment Re gulations 2004 (No. 2) . 
 
2 Commencement 
 
 These Regulations commence on the date of their notification in the Gazette . 
 
3 Amendment of Trade Marks Regulations 1995  
  Schedule 1 amends the Trade Marks Regulations 1995 . 
   
Schedule 1  Amendments 
   (regulation 3) 
    
[1] Schedule 10 
 
 after 
 
  Algeria  
 insert 
   Andorra 
 
[2] Schedule 10 
 
 after 
   Benin 
 
 insert 
 
  Bhutan 
 
[3] Schedule 10 
 
 after 
 
  Senegal 
 
 insert 
 
  Serbia and Montenegro  IP/N/1/AUS/T/4 
Page 164  
 
  [4] Schedule 10 
 
 omit 
 
  United Republic of Tanzania 
 
[5] Schedule 10 
 
 omit 
   Yugoslavia 
 
[6] Further amendments 
 
Provision omit insert 
Schedule 10 Cambodia, Kingdom of Cambodia 
Schedule 10 Macau Macau, China 
Schedule 10 Sao Tome and Principe, Democrat ic Republic of Sao Tome and Principe 
Schedule 10 Surinam Suriname __________________________________________________________________________________ 
Notes 
 
1. These Regulations amend Statutory Rules 1995 No. 341, as amended by  1996 Nos. 3, 184 and 272; 1997 No. 346; 
1998 Nos. 258, 265, 343 and 346; 1999 No s. 153, 186, 196 and 350; 2001 No s. 33, 185 and 247; 2002 Nos. 173 
and 318; 2003 No. 214; 2004 No. 24. 
 2. Notified in the Commonwealth of Australia Gazette  on 1 July 2004. 
 
__________