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INTELLECTUAL PROPERTY LEGISLATION AMENDMENT REGULATION 2012 (NO. 1) (SLI NO 66 OF 2012) - SCHEDULE 2

Amendments of Trade Marks Regulations 1995

(section 4)

 

Part 1           Amendments relating to declarations

[1]           Paragraphs 20.3 (1) (c) and (d)

omit

statutory

[2]           Subregulation 20.3 (2)

omit

statutory

[3]           Paragraph 21.1 (a)

omit

or request

substitute

, request or declaration

[4]           Paragraph 21.1 (b)

omit

application or request

insert

application, request or declaration

[5]           Regulation 21.6

substitute

21.6         Declarations

         (1)   A declaration required or permitted by the Act or these Regulations must be in an approved form.

Note    Declaration forms in the approved form are available on the IP Australia website at www.ipaustralia.gov.au .

         (2)   A declaration in the form of a statutory declaration, required or permitted to be given to a person mentioned in subregulation (3), may be given to the person in an electronic form by a means of electronic communication approved by the Registrar.

Note    A declaration that is not in the form of statutory declaration may also be given in an electronic form by means of an electronic communication: see section 11 of the Electronic Transactions Act 1999 .

         (3)   For subregulation (2), the following persons may be given declarations, including statutory declarations, in electronic form by electronic means:

                (a)    the Registrar of Trade Marks;

               (b)    the Designated Manager;

                (c)    the Disciplinary Tribunal;

               (d)    the Professional Standards Board.

[6]           Paragraphs 22.7 (c) and 22.8 (4) (c)

omit

statutory

Part 2           Amendments relating to registration of interests or rights

[7]           Subregulations 11.1 (2) and (3)

substitute

         (2)   A request by a person to amend particulars of a claim to an interest in, or to a right in respect of, a trade mark must be:

                (a)    in writing, in an approved form; and

               (b)    accompanied by material supporting the person's entitlement to make the request.

         (3)   The Registrar must amend the particulars in accordance with the request if:

                (a)    the request is made in accordance with subregulation (2); and

               (b)    the Registrar is reasonably satisfied that the person making the request is entitled to make the request.

[8]           Subregulation 17A.61 (2)

substitute

         (2)   An application by a person under subregulation (1) must:

                (a)    be made in an approved form; and

               (b)    be accompanied by material supporting the person's interest in, or a right in respect of, the trade mark; and

               (b)    be filed with the Trade Marks Office.

Part 3           Amendments relating to Convention countries

[9]           Schedule 10

omit

Netherlands (including the Netherlands Antilles and Aruba)

insert

Netherlands (including Aruba, Curaçao and Sint Maarten)

[10]         Schedule 10

after

Saint Vincent and the Grenadines

insert

Samoa

Part 4           Amendments relating to fees (commencing on 1 July 2012)

[11]         Regulation 2.1

insert

"approved means" , for doing an action, means the means specified for the action by the Registrar in a notice made under regulation 21.21AA and published by the Registrar.

[12]         After subregulation 21.21 (7)

insert

         (8)   Item 16 of Schedule 9, as in force on 1 July 2012, does not apply to a person in relation to a hearing held after the commencement of this subregulation if the person:

                (a)    requests the hearing, and pays the fee mentioned in item 14 of Schedule 9, before the commencement of this subregulation; or

               (b)    pays the fee mentioned in item 16 of Schedule 9 for the hearing before the commencement of this subregulation.

         (9)   Item 17 of Schedule 9, as in force on 1 July 2012, does not apply to a person in relation to a hearing held after the commencement of this subregulation if the person:

                (a)    pays the fee mentioned in item 15 of Schedule 9 for the hearing before the commencement of this subregulation; or

               (b)    pays the fee mentioned in item 17 of Schedule 9 for the hearing before the commencement of this subregulation.

[13]         After regulation 21.21

insert

21.21AA Approved means

         (1)   The Registrar may, by notice published by the Registrar, specify one or more means for doing an action mentioned in Schedule 9.

Example of action

Filing an application.

         (2)   The means may be an electronic means or any other means.

Note    The means become approved means when they are published.

[14]         Schedule 9

substitute

Schedule 9         Fees

(regulations 21.21 and 21.21AA)

   

Item

Matter

Fee

1

Filing an application to register a trade mark under subsection 27 (5) or 45 (1) of the Act in respect of goods or services in 1 or more of the prescribed classes:

 

 

   (a)  by approved means;

$120 for each class

 

  (b)  by another means

$180 for each class

 

and, in addition, if the goods and services are specified in the application otherwise than by using the official Goods and Services pick list

$40 for each class

 

   (c)  by AFS request mentioned in regulation 4.2A

$90 for each class

3

Filing an application to register 2 or more trade marks as a series under section 51 of the Act:

 

 

   (a)  by approved means;

$270 for each class

 

  (b)  by another means

$330 for each class

 

         and, in addition, if the goods and services are specified in the application otherwise than by using the official Goods and Services pick list

$40 for each class

4

Requesting an amendment under section 64, 65 or 65A of the Act to include an additional prescribed class of goods or services in an application:

 

 

   (a)  application under section 51 for a series of trade marks;

$330 for each class

 

  (b)  any other case

$180 for each class

5

Filing an application for an extension of:

   (a)  a period under subregulation 4.12 (3) or regulation 17A.20; or

  (b)  time under regulation 21.25

$100 for each month or part of a month for which the extension is sought

6

Filing an application for an extension of:

   (a)  a period under regulation 5.15 (including regulation 5.15 as applied by regulation 17A.33); or

  (b)  time under regulation 5.2 or 17A.30

$150 for each month or part of a month for which the extension is sought

7

Filing a notice of opposition under:

 

 

   (a)  section 52 of the Act; or

$250

 

  (b)  section 96 of the Act (including section 96 as applied by regulation 17A.48); or

$150

 

   (c)  subsection 224 (6) of the Act; or

$250

 

  (d)  regulation 17A.29; or

$250

 

   (e)  section 65A of the Act

$250

8

Filing an application for permission to serve a copy of further evidence in opposition proceedings under paragraph 5.15 (1) (b) (including paragraph 5.15 (1) (b) as applied by regulation 17A.33)

$100

9

Single registration of a trade mark under section 68 of the Act in respect of goods or services in 1 or more of the prescribed classes

$300 for each class

10

Renewal of a single registration of a trade mark under section 75 of the Act in respect of goods or services in 1 or more of the prescribed classes

 

 

   (a)  fee paid by approved means;

$300 for each class

 

  (b)  fee paid by another means

$350 for each class

 

and, in addition, if the request for renewal is made within 6 months after the expiry date to which section 79 of the Act refers

$100 for each class for each month, or part of a month, after the expiry date

11

Each potential renewal period requested by a person under section 80D of the Act in respect of goods or services in 1 or more of the prescribed classes

$350 for each class

12

Each potential renewal period requested by a person under paragraph 80G (1) (b) of the Act in respect of goods and services in 1 or more of the prescribed classes

$350 for each class

 

and, in addition, if the request for renewal is made within 10 months after the end of the prescribed period, regardless of the number of potential renewal periods requested

$100 for each class for each month, or part of a month, after the end of the prescribed period

13

Filing an application for removal of a trade mark from the Register:

   (a)  for non-use under section 92 of the Act; or

  (b)  for cessation of protection for non-use under subregulation 17A.48 (1)

$250

14

Request for an oral hearing under:

   (a)  regulation 5.14 (including regulation 5.14 as applied by regulation 17A.33); or

  (b)  regulation 9.4, (including regulation 9.4 as applied by regulation 17A.48)

$600

15

Request for an oral hearing in relation to any other matter

$400

16

Request to attend an oral hearing under:

   (a)  regulation 5.14 (including regulation 5.14 as applied by regulation 17A.33); or

  (b)  regulation 9.4 (including regulation 9.4 as applied by regulation 17A.48)

$600 for each day, or part of a day, less any amount paid under item 14 in relation to the hearing

17

Request to attend an oral hearing in relation to any other matter

$400 less any amount paid under item 15 in relation to the hearing

17A

Request for hearing on the basis of written submissions only, where the submissions are filed after the notice of hearing or invitation to be heard is issued

$100

18

Handling an application for the international registration of a trade mark under regulation 17A.7

$100

19

Transmitting a renewal fee for the international registration of a trade mark under Article 7 of the Madrid Protocol

$100

20

Requesting a decision under subregulation 21.16 (2)

$300

21

Supply of a certificate signed by the Registrar under section 211 of the Act

$50

21A

Supply of a duplicate of a certificate signed by the Registrar under section 211 of the Act

$250

22

Supply of a copy of an extract from the Register or the Record of International Registrations

$50

23

Supply of a copy of a document for which a search is required

$100

25

Applying for admission to sit for an examination conducted by the Board

$400

26

Applying for a grant of a supplementary examination conducted by the Board

$200

27

A report of reasons for failure of an examination conducted by the Board

$200

28

Applying for registration as a trade marks attorney

$200

29

Annual registration of a trade marks attorney

$350

30

Annual registration fee payable for combined registration as a trade marks attorney and patent attorney

$550

31

Applying to be restored to the Register, as authorised by regulation 20.14

$250

32

AFS request under regulation 3A.3

$90 for each class

33

Inclusion of an additional class of goods or services in an AFS request under paragraph 3A.3 (5) (c) or 3A.5 (2) (f)

$90 for each class

34

Inclusion of an amendment in an AFS request that significantly changes the graphical representation of a trade mark under paragraph 3A.5 (2) (f)

$90 for each class

35

   (a)  request for a copy of a file or part of a file under regulation 21.11A;

$30 for each file that is the subject of a request

 

  (b)  for each request of 20 pages or less;

no additional charge

 

   (c)  for each request involving more than 20 pages from a single file

$1 for each additional page over 20 from the file

Part 5           Amendments relating to fees (commencing on 1 October 2012)

[15]         Schedule 9

substitute

Schedule 9         Fees

(regulations 21.21 and 21.21AA)

   

Item

Matter

Fee

 

1

Filing an application to register a trade mark under subsection 27 (5) or 45 (1) of the Act in respect of goods or services in 1 or more of the prescribed classes:

 

 

 

   (a)  by approved means;

$120 for each class

 

  (b)  by another means

$220 for each class

 

and, in addition, if the goods and services are specified in the application otherwise than by using the official Goods and Services pick list

$80 for each class

 

 

   (c)  by AFS request mentioned in regulation 4.2A

$120 for each class

 

3

Filing an application to register 2 or more trade marks as a series under section 51 of the Act:

 

 

 

   (a)  by approved means;

$270 for each class

 

  (b)  by another means

$370 for each class

 

         and, in addition, if the goods and services are specified in the application otherwise than by using the official Goods and Services pick list

$80 for each class

 

4

Requesting an amendment under section 64, 65 or 65A of the Act to include an additional prescribed class of goods or services in an application:

 

 

 

   (a)  application under section 51 for a series of trade marks;

$370 for each class

 

 

  (b)  any other case

$220 for each class

 

5

Filing an application for an extension of:

   (a)  a period under subregulation 4.12 (3) or regulation 17A.20; or

  (b)  time under regulation 21.25

$100 for each month or part of a month for which the extension is sought

 

6

Filing an application for an extension of:

   (a)  a period under regulation 5.15 (including regulation 5.15 as applied by regulation 17A.33); or

  (b)  time under regulation 5.2 or 17A.30

$150 for each month or part of a month for which the extension is sought

 

7

Filing a notice of opposition under:

 

 

 

   (a)  section 52 of the Act; or

$250

 

 

  (b)  section 96 of the Act (including section 96 as applied by regulation 17A.48); or

$150

 

 

   (c)  subsection 224 (6) of the Act; or

$250

 

 

  (d)  regulation 17A.29; or

   (e)  section 65A of the Act

$250

$250

 

8

Filing an application for permission to serve a copy of further evidence in opposition proceedings under paragraph 5.15 (1) (b) (including paragraph 5.15 (1) (b) as applied by regulation 17A.33)

$100

 

9

Single registration of a trade mark under section 68 of the Act in respect of goods or services in 1 or more of the prescribed classes

$300 for each class

 

10

Renewal of a single registration of a trade mark under section 75 of the Act in respect of goods or services in 1 or more of the prescribed classes:

 

 

 

   (a)  fee paid by approved means;

$300 for each class

 

  (b)  fee paid by another means

$350 for each class

 

and, in addition, if the request for renewal is made within 6 months after the expiry date to which section 79 of the Act refers

$100 for each class for each month, or part of a month, after the expiry date

 

11

Each potential renewal period requested by a person under section 80D of the Act in respect of goods or services in 1 or more of the prescribed classes

$350 for each class

 

12

Each potential renewal period requested by a person under paragraph 80G (1) (b) of the Act in respect of goods and services in 1 or more of the prescribed classes

$350 for each class

 

 

and, in addition, if the request for renewal is made within 10 months after the end of the prescribed period, regardless of the number of potential renewal periods requested

$100 for each class for each month, or part of a month, after the end of the prescribed period

 

13

Filing an application for removal of a trade mark from the Register:

   (a)  for non-use under section 92 of the Act; or

  (b)  for cessation of protection for non-use under subregulation 17A.48 (1)

$250

 

14

Request for an oral hearing under:

   (a)  regulation 5.14 (including regulation 5.14 as applied by regulation 17A.33); or

  (b)  regulation 9.4, (including regulation 9.4 as applied by regulation 17A.48)

$600

 

15

Request for an oral hearing in relation to any other matter

$400

 

16

Request to attend an oral hearing under:

   (a)  regulation 5.14 (including regulation 5.14 as applied by regulation 17A.33); or

  (b)  regulation 9.4 (including regulation 9.4 as applied by regulation 17A.48)

$600 for each day, or part of a day, less any amount paid under item 14 in relation to the hearing

 

17

Request to attend an oral hearing in relation to any other matter

$400 less any amount paid under item 15 in relation to the hearing

 

17A

Request for hearing on the basis of written submissions only, where the submissions are filed after the notice of hearing or invitation to be heard is issued

$100

 

18

Handling an application for the international registration of a trade mark under regulation 17A.7

$100

 

19

Transmitting a renewal fee for the international registration of a trade mark under Article 7 of the Madrid Protocol

$100

 

20

Requesting a decision under subregulation 21.16 (2)

$300

 

21

Supply of a certificate signed by the Registrar under section 211 of the Act

$50

 

21A

Supply of a duplicate of a certificate signed by the Registrar under section 211 of the Act

$250

 

22

Supply of a copy of an extract from the Register or the Record of International Registrations

$50

 

23

Supply of a copy of a document for which a search is required

$100

 

25

Applying for admission to sit for an examination conducted by the Board

$400

 

26

Applying for a grant of a supplementary examination conducted by the Board

$200

 

27

A report of reasons for failure of an examination conducted by the Board

$200

 

28

Applying for registration as a trade marks attorney

$200

 

29

Annual registration of a trade marks attorney

$350

 

30

Annual registration fee payable for combined registration as a trade marks attorney and patent attorney

$550

 

31

Applying to be restored to the Register, as authorised by regulation 20.14

$250

 

32

AFS request under regulation 3A.3

$80 for each class

 

33

Inclusion of an additional class of goods or services in an AFS request under paragraph 3A.3 (5) (c) or 3A.5 (2) (f)

$120 for each class

 

34

Inclusion of an amendment in an AFS request that significantly changes the graphical representation of a trade mark under paragraph 3A.5 (2) (f)

$120 for each class

 

35

   (a)  request for a copy of a file or part of a file under regulation 21.11A;

$30 for each file that is the subject of a request

 

 

  (b)  for each request of 20 pages or less;

no additional charge

 

 

   (c)  for each request involving more than 20 pages from a single file

$1 for each additional page over 20 from the file

 


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