2.2. Filing of Documents - requirements as to form

2.1 Regulation 21.2 Requirements for filing documents

A document, to be filed at the Trade Marks Office, must comply with the requirements set out in Reg 21.2. of the Regulations. Reg 21.2. outline broad specifications for documents. The requirements provide a basis for the return of documents or any necessary alterations to documents that are unable to be process because of their failure to comply with requirements, for example if the writing in a document is too small to read

The requirements for document specified in Reg 21.2. are set out below:

• Documents must be in English, be in the form (if any) specified in a direction under section 213B of the Act except documents mentioned in Regs 4.11, 5.18 and 17A.19
• Documents must be legible

2.2 Approved Form

Applications, notices and some requests filed at the Trade Marks Office are required to be in an approved form.  An approved form is a form approved by the Registrar for a particular purpose.  The purpose of having an approved form rather than a prescribed form is to allow the Registrar flexibility in accepting and processing any application, notice or request.  An approved form also allows the Registrar to more easily change the contents of a form as required.  An application, notice or request is in an approved form if it contains the information, and/or is in the format, that the Registrar considers essential for the document to be processed.

If an application, notice or request is required to be in an approved form and an office form is available, it is not essential that the office form be used - but if the form is used, the directions on it must be complied with (reg 21.1).  Office forms are available via the IP Australia website.

If an application, notice or request is not made on an office form, it should still contain sufficient information to enable the Registrar to easily establish the details of whatever action is requested.

The application, notice or request should generally include the following details, depending upon the nature of the document:

• trade mark number(s) in relation to which certain action is to be taken;

• name and address for service of person(s) making the application, notice or request (if the application, notice or request is made by the owner of the trade mark, the owner's address is also generally required);

• name of the owner of the trade mark if the owner is not the person making the application, notice or request;

• details and grounds (if appropriate) of the action that is to be performed; and

• any other information or documentation that may be relevant to enable action to be taken.

2.3 Requirements for signatures

Following the deletion of sub-regulation 21.3(4) from the Trade Mark Regulations on 22 December 1998, it is no longer necessary for all applications, notices and requests to be signed and dated.  In addition, an amendment to section 212 of the Act, which came into effect on 27 January 1999, allows any person to sign an application on behalf of the applicant.

2.3.1 Documents requiring a signature

• Where an application, notice or request was filed by, or on behalf of, more than one person, a request for withdrawal of that application, notice or request must be signed by, or on behalf of, each of those persons. (reg 21.9).

• A certificate of verification for a translated certified copy is required to be signed and dated (reg 4.11).

• The Registrar can require that documents be in an approved form. An approved form may include a requirement for a signature. The Office has standard forms for certain procedures, however an applicant is not required to use these forms, as long as they provide certain information (see Part 2.2 above).

If any document requiring a signature is not signed, the action cannot be processed until the document has been signed because it is not in an approved form without the signature. Only in some instances of obvious duplication, or other special circumstances, can the requirement for a signature be waived.

If the signatory has not indicated that he or she is the applicant or is acting on behalf of the applicant, the Office will assume that he or she is the applicant or is acting on behalf of the applicant, and will not query the signature.

If any documents other than those specified above are signed, no action will be taken regarding the signature.

• Part 10 Details of Formality Requirements

2.4 Applicants etc. should supply an address for service

Section 215 provides that a person making an application, notice or request or the owner of a trade mark, or a person whose claim to an interest or right in a trade mark is recorded in the Register must supply an address for service in Australia.

2.4.1

An address for service to which documents from the Trade Marks Office (or other parties) are served or given must be an address in Australia.  If an address in Australia has not been provided, the person filing the application, notice or request will be required to provide the Registrar with an address for service in Australia.

2.4.2

Subsection 215(1) states that an address for service of a person who has filed an application, notice or request is the address for service stated in the application, notice or request, unless the person notifies the Registrar of another address. However, this does not necessarily mean that the address for service given on the application, notice or request is also to apply to the trade mark application or registration to which the further application, notice or request relates.

• The address for service for a trade mark application is the address for service provided on the application for registration unless the Registrar has been notified of another address as the address for service.

• The address for service of the owner of a registered trade mark is the last address for service given to the Registrar.  Once a trade mark is registered, the address for service carries over from the trade mark application to the registration, unless the Registrar is notified in writing of another address for service.

If the address for service on an application, notice or request differs from that of the trade mark application or registration, the address for service of the trade mark application or registration will remain unchanged unless it is stated in writing that that address should be altered.

2.4.3

A change to an address for service must be notified in writing to the Registrar, who must amend his/her records accordingly.

• Part 9 Amendments and Changes to Name and Address

2.4.4

Any document that must be served on, or given or sent to a person may be left at or sent to the address for service of the person. If the person has not nominated an address for service, the documents may be served on any agent of the person in Australia or may be sent to any address of the person in Australia that is known to the Registrar.

Where there are multiple applicants, or multiple persons making a single notice or request, and more than one address for service is given, the correspondence should only be sent to one address and the applicants requested to nominate a single address for service.  The address to which correspondence has been sent will continue to be the address for service unless notified otherwise.

• Part 10 Details of Formality Requirements - 6. Address for service

2.5 Fees

All applications, notices and requests should be accompanied by appropriate fees.

If a fee is payable at the time of filing an application, notice or request, the correct fee should be paid.  If the Registrar notifies the person making the application, notice or request of any under payment or non payment of fees within the fourteen days allowed by subsection 223(5) and reg. 21.23, the application, notice or request will be taken as not having been filed until the correct fee has been paid (see 3 Non-compliance with filing requirements).

• Part 4 Fees

2.6 Supporting documentation for an application, notice or request

If a declaration is required to be filed with an application, notice or request, it should conform with the provisions of regs 21.6 and 21.7. Under the provisions of regulation 21.4, any application, notice or request that is required to be accompanied by a supporting declaration under the Act or regulations, and is not so accompanied, may be taken as not having been filed until the declaration is provided (see also 3. Non-compliance with filing requirements).