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- Part 1 Introduction, Quality
- 1. Introduction
- 2. Quality Management at IP Australia
- 3. Monitoring and Measuring Quality at IP Australia
- 4. Examination Quality Standards
- 5. Practice Change Procedure
- Part 2 General Filing Requirements
- Relevant Legislation
- 1. How a document is filed
- 2. Filing of Documents - requirements as to form
- 3. Non-compliance with filing requirements
- 4. Filing Process (excluding filing of applications for registration)
- Part 3 Filing Requirements for a Trade Mark Application
- Relevant Legislation
- 1. Who may apply?
- 2. Form of the application
- 3. Information required in the application
- 4. When is an application taken to have been filed?
- 5. The reason for having minimum filing requirements
- 6. The minimum filing requirements
- 7. Consequences of non compliance with minimum filing requirements
- 8. Other filing requirements
- 9. Fees
- 10. Process procedures for non payment or underpayment of the appropriate fee
- 11. Process procedures for the filing of a trade mark application
- Part 4 Fees
- Relevant Legislation
- 1. Fees - general
- 2. Circumstances in which fees are refunded or waived
- 3. Procedures for dealing with "fee" correspondence
- 4. Underpayments
- 5. Refunds and or waivers
- 6. No fee paid
- 7. Electronic transfers
- 8. Disputed credit card payments/Dishonoured cheques
- Part 5 Data Capture and Indexing
- Part 6 Expedited Examination
- Part 7 Withdrawal of Applications, Notices and Requests
- Relevant Legislation
- 1. Withdrawal of an application, notice or request
- 2. Who can withdraw an application, notice or request?
- 3. Procedure for withdrawal of an application, notice or request
- 4. Procedure for withdrawal of an application to register a trade mark
- Part 8 Amalgamation (Linking) of Trade Marks
- Relevant Legislation
- 1. Amalgamation of applications for Registration (Transitional)
- 2. Amalgamation (Linking) of Trade Marks under the Trade Marks Amendment Act 2006
- Part 9 Amendments and Changes to Name and Address
- Relevant Legislation
- 1. Introduction
- 2. Amendment of an application for a registration of a trade mark - general information
- 3. Amendment before particulars of an application are published (Section 64)
- 4. Amendment after particulars of an application have been published (Sections 63, 65 and 65A)
- 5. Amendments to other documents
- 6. Amendments after registration
- 7. Changes of name, address and address for service
- 8. Process for amendments under subsection 63(1)
- Part 10 Details of Formality Requirements
- Relevant Legislation
- Introduction
- 1. Formality requirements - Name
- 2. Formality requirements - Identity
- 3. Representation of the Trade Mark - General
- 4. Translation/transliteration of Non-English words and non-Roman characters
- 5. Specification of goods and/or services
- 6. Address for service
- 7. Signature
- 8. Complying with formality requirements
- Annex A1 - Abbreviations of types of companies recognised as bodies corporate
- Annex A2 - Identity of the applicant
- Part 11 Convention Applications
- Relevant Legislation
- 1. Applications in Australia (convention applications) where the applicant claims a right of priority
- 2. Making a claim for priority
- 3. Examination of applications claiming convention priority
- 4. Convention documents
- 5. Cases where multiple priority dates apply
- 6. Recording the claim
- 7. Effect on registration of a claim for priority based on an earlier application
- Part 12 Divisional Applications
- Relevant Legislation
- 1. Divisional applications - general
- 2. Why file a divisional application?
- 3. Conditions for a valid divisional application filed on or after 27 March 2007
- 4. In whose name may a divisional application be filed?
- 5. Convention claims and divisional applications
- 6. Can a divisional application be based on a parent application which is itself a divisional application? What is the filing date in this situation?
- 7. Can the divisional details be deleted from a valid divisional application?
- 8. Divisional applications and late citations - additional fifteen months
- 9. Divisional Applications and the Intellectual Property Laws Amendment (Raising the Bar) Act 2012
- Annex A1 Divisional Checklist
- Part 13 Application to Register a Series of Trade Marks
- Relevant Legislation
- 1. Series of Trade Marks - Act
- 2. Material Particulars
- 3. Provisions of Paragraphs 51(1)(a),(b) and (c)
- 4. Applying Requirements for Material Particulars and Provisions of Paragraphs 51(1)(a), (b) and (c)
- 5. Restrict to Accord
- 6. Examples of Valid Series Trade Marks
- 7. Examples of Invalid Series Trade Marks
- 8. Divisional Applications from Series
- 9. Linking of Series Applications
- 10. Colour Endorsements
- Part 14 Classification of Goods and Services
- Relevant Legislation
- 1. The purpose of classification
- 2. The classification system
- 3. Requirement for a clear specification and for correct classification
- 4. Classification procedures in examination
- 5. Principles of classification and finding the correct class for specific items
- 6. Wording of the specification
- 7. Interpretation of specifications
- 8. International Convention Documents
- Annex A1 - History of the classification system
- Annex A2 - Principles of classification
- Annex A3 - Registered words which are not acceptable in specifications of goods and services
- Annex A4 - Searching the NICE classification
- Annex A5 - Using the Trade Marks Classification Search
- Annex A6 - Cross search classes - pre-June 2000
- Annex A7 - Cross search classes - June 2000 to December 2001
- Annex A8 - Cross search classes from 1 January 2002
- Annex A9 - Cross search classes from November 2005
- Annex A10 - Cross search classes from March 2007
- Annex A11 - Cross search classes from January 2012
- Annex A12 - Cross search classes from January 2015
- Annex A13 - List of terms too broad for classification
- Part 15 General Provision for Extensions of Time
- Relevant Legislation
- 1. When the general provision applies
- 2. When the general provision does not apply
- 3. Circumstances in which the Registrar must extend time
- 4. Grounds on which the Registrar may grant an extension of time
- 5. Form of the application
- 6. Extensions of time of more than three months
- 7. Review of the Registrar's decision
- Part 16 Time Limits for Acceptance of an Application for Registration
- Relevant Legislation
- 1. What are the time limits for acceptance of an application to register a trade mark?
- 2. Response to an examination report received within four (or less) weeks of lapsing date
- Part 17 Deferment of Acceptance
- Relevant Legislation
- 1. Deferment of Acceptance - introduction
- 2. Circumstances under which deferments will be granted
- 3. Period of deferment
- 4. The deferment process where the applicant has requested deferment
- 5. The deferment process where the Registrar may grant deferment on his or her own initiative
- 6. Termination of deferment
- 7. Transitional practice
- Annex A1 - Deferment of acceptance date - Grounds and time limits
- Part 18 Finalisation of Application for Registration
- Relevant Legislation
- 1. Introduction
- 2. Accepting an application for registration
- 3. Rejection of an application for registration
- Part 19A Use of a Trade Mark
- Relevant Legislation
- 1. Use of a trade mark generally
- 2. Use 'as a trade mark'
- 3. Use 'in the course of trade'
- 4. Australian Use
- 5. Use 'in relation to goods or services'
- 6. Use by the trade mark owner, predecessor in title or an authorised user
- 7. Use of a trade mark with additions or alterations
- 8. Use of multiple trade marks
- Part 19B Rights Given by Registration of a Trade Mark
- Relevant Legislation
- 1. The trade mark as property
- 2. What rights are given by trade mark registration?
- 3. Rights of an authorised user of a registered trade mark
- 4. The right to take infringement action
- 5. Loss of exclusive rights
- Part 20 Definition of a Trade Mark and Presumption of Registrability
- Relevant Legislation
- 1. Definition of a trade mark
- 2. Background to definition of a trade mark
- 3. Definition of sign
- 4. Presumption of registrability
- 5. Grounds for rejection and the presumption of registrability
- Part 21 Non-traditional Signs
- Relevant Legislation
- 1. Non-traditional signs
- 2. Representing non-traditional signs
- 3. Shape (three-dimensional) trade marks
- 4. Colour and coloured trade marks
- 5. "Sensory" trade marks - sounds and scents
- 6. Sound (auditory) trade marks
- 7. Scent trade marks
- 8. Composite trade marks - combinations of shapes, colours, words etc
- 9. Moving images, holograms and gestures
- 10. Other kinds of non-traditional signs
- Part 22 Section 41 - Capable of Distinguishing
- Relevant Legislation
- 1. Registrability under section 41 of the Trade Marks Act 1995
- 2. Presumption of registrability
- 3. Inherent adaptation to distinguish
- 4. Trade marks considered sufficiently inherently capable of distinguishing
- 5. Trade marks that have limited inherent capacity to distinguish but are not prima facie capable of distinguishing
- 6. Trade marks having no inherent adaptation to distinguish
- 7. Examination
- Registrability of Various Kinds of Signs
- 8. Letters
- 9. Words
- 10. Phonetic equivalents, misspellings and combinations of known words
- 11. Words in Languages other than English
- 12. Slogans, phrases and multiple words
- 13. Common formats for trade marks
- 14. New terminology and "fashionable" words
- 15. Geographical names
- 16. Surnames
- 17. Name of a person
- 18. Summary of examination practice in relation to names
- 19. Corporate names
- 20. Titles of well known books, novels, stories, plays, films, stage shows, songs and musical works
- 21. Titles of other books or media
- 22. Numerals
- 23. Combinations of letters and numerals
- 24. Trade marks for pharmaceutical or veterinary substances
- 25. Devices
- 26. Composite trade marks
- 27. Trade marks that include plant varietal name
- Annex A1 Section 41 prior to Raising the Bar
- Annex A2 Flowchart of "Capable of Distinguishing"
- Part 23 Overcoming Grounds for Rejection under Section 41 - including Evidence of Use
- Relevant Legislation
- 1. Introduction
- 2. Submissions in rebuttal, amendments and informal information
- 3. Evidence of use - general requirements
- 4. Examining evidence - general
- 5. Specific evidence requirements for trade marks with no inherent adaptation to distinguish
- 6. Endorsements for applications overcoming section 41 grounds for rejection
- Annex A1 - Information for applicants on the preparation and presentation of a declaration including model layout
- Annex A2 - Model layout for statutory declaration/affidavit
- Annex A3 - Model layout for supporting statutory declaration
- Annex A4 - How to supply evidence of use of a Trade Mark under subsection 41(5) - for trade marks with a filing date prior to 15 April 2013
- Annex A5 - How to supply evidence for use of a Trade Mark under subsection 41(6) - for trade marks with a filing date prior to 15 April 2013
- Annex A6 - How to supply evidence of use of a trade mark under subsection 41(4) - for trade marks with a filing date on or after 15 April 2013
- Annex A7 - How to supply evidence of use of a trade mark under subsection 41(3) - for trade marks with a filing date on or after 15 April 2013
- Part 24 Disclaimers
- Relevant Legislation
- 1. What is a disclaimer?
- 2. Request for a voluntary disclaimer
- 3. Effect of a disclaimer on registration
- 4. Effect of a disclaimer on examination
- 5. Amendment of disclaimers
- 6. Revocation of disclaimers
- Part 26 Section 44 and Regulation 4.15A - Conflict with Other Signs
- Relevant Legislation
- 1. Introduction to section 44 and regulation 4.15A
- 2. Presumption of registrability and the application of section 44
- 3. Cross Class Search List
- 4. Similarity of goods and services
- 5. Similarity of trade marks
- 6. Factors to consider when comparing trade marks
- 7. Trade marks with the same priority/filing date
- 8. Assignment of applications and registrations
- 9. Grounds for rejection when the citation is in its renewal period
- Annex A1 - Citing multiple names
- Part 27 Overcoming Grounds for Rejection under Section 44
- Relevant Legislation
- 1. Introduction
- 3. Amending the goods and/or services of the applicant's specification
- 4. Negotiation with owner/s of conflicting trade mark/s
- 5. Filing evidence of honest concurrent use, prior use or other circumstances
- 6. Removal of the conflicting trade mark
- 7. Dividing the application
- Annex A1 - An example of a letter of consent
- 2. Legal submissions
- Part 28 Honest Concurrent Use, Prior Use or Other Circumstances
- Relevant Legislation
- 1. Introduction
- 2. Honest concurrent use - paragraph 44(3)(a)
- 3. Examining evidence of honest concurrent use - the five criteria
- 4. Other circumstances - paragraph 44(3)(b)
- 5. Conditions and limitations to applications proceeding under subsection 44(3)
- 6. Prior use - subsection 44(4)
- 7. Examining evidence of prior use
- 8. Endorsements where the provisions of subsection 44(3) or 44(4) and/or reg 4.15A are applied
- Annex A1 - Information sheet for trade mark applicants - Evidence of honest and concurrent, prior use or other circumstances
- Part 29 Section 43 - Trade Marks likely to Deceive or Cause Confusion
- Relevant Legislation
- 1. Trade marks likely to deceive or cause confusion
- 2. Connotation
- 3. Deception and confusion as a result of a connotation within a trade mark
- 4. Descriptions of goods/services
- 5. International Non-Proprietary Names and INN Stems
- 6. Names of Persons
- 7. Phonewords and Phone Numbers
- 8. Internet Domain Names
- 9. Geographical References
- 10. Claims to Indigenous Origin
- Annex A1 - Table of INN stems
- Part 30 Signs that are Scandalous and Use Contrary to Law
- Relevant Legislation
- 1. Introduction
- 2. Scandalous signs
- 3. Use contrary to law
- Annex A1 - Examples of Legislation which may trigger the provisions of section 42(b)
- Annex A2 - Official notice re copyright in the Aboriginal Flag
- Annex A3 - Defence force prohibited terms and emblems
- Annex A4 - Major Sporting Events protected words
- Part 31 Prescribed and Prohibited Signs
- Relevant Legislation
- 1. Prohibited signs - subsection 39(1)
- 2. Prescribed signs - subsection 39(2)
- 3. When does a ground for rejection exist under subsection 39(2)?
- 4. Practice regarding the signs prescribed under subsection 39(2) appearing in subreg 4.15
- 5. Other information relevant to examining trade marks that contain a prohibited and prescribed sign
- Part 32A Examination of Trade Marks for Plants (in Class 31)
- Relevant Legislation
- 1. Introduction
- 2. Examination of Plant Trade Marks
- 2.1 Section 42: Contrary to Law
- 2.2 Section 39: Prescribed Signs
- 2.3 Section 41: Capacity to Distinguish
- 2.4 Section 43: Deception and Confusion
- 2.5 Section 44: Comparison of Trade Marks
- 2.6 Non-Roman characters (NRC) and transliterations in class 31 plant examination
- Annex 1 - Applicable Section of the PBR Act
- Annex 2 - Applicable Sections of the UPOV Convention
- Annex 3 - Applicable Sections of the ICNCP
- Annex 4 - An Example of a PBR Letter of Consent
- Annex 5 - Case Law Summaries
- Annex 6 - How to Supply Evidence of Use of a Trade Mark for Plants and/or Plant Material
- Part 32B Examination of Trade Marks for Wines (in Class 33)
- Relevant Legislation
- 1. Introduction
- 2. Examination of Wine Trade Marks
- 2.1 Section 42: Contrary to Law
- 2.2 Section 43: Deception and Confusion
- 2.3 Section 41: Capacity to Distinguish
- 2.4 Section 44: Comparison of Trade Marks
- 3. Protected Terms in Specifications of Goods
- Part 33 Collective Trade Marks
- Relevant Legislation
- 1. What is a collective trademark?
- 2. Application of Act
- 3. Application for registration
- 4. Limitation on rights given by registered collective trade marks
- 5. Assignment or transmission of collective trade marks
- 6. Infringement of collective trade marks
- Part 34 Defensive Trade Marks
- Relevant Legislation
- 1. Australian trade marks law and defensive trade marks
- 2. Requirements for the filing of a defensive trade mark
- 3. Section of the Act NOT applying to defensive trade marks
- 4. Registrability of defensive trade marks
- 5. Grounds for rejection under Division 2 of Part 4 of the Act
- 6. Grounds for rejecting a defensive application under section 187
- 7. Evidence required for defensive applications
- 8. Rights given by defensive registration
- 9. Grounds for opposing a defensive registration
- 10. Cancellation of defensive trade marks
- Part 35 Certification Trade Marks
- Relevant Legislation
- 1. What is a certification trade mark?
- 2. Certification trade marks and geographical indications (GIs)
- 3. Sections of the Act NOT applying to certification trade marks
- 4. The registrability of certification trade marks
- 5. Rights given by, and rules governing the use of, certification trade marks
- 6. Assessment by the Australian Competition and Consumer Commission (ACCC)
- 7. Opposition to the registration of a certification trade mark
- 8. Variation of rules
- 9. Assignment of registered certification trade marks
- 10. Assignment of unregistered certification trade marks
- 11. Transmission of certification trade marks
- 12. Rectification of the Register and variation of rules by order of the court
- Annex A1 - Certification Trade Marks flow chart
- Part 38 Revocation of Acceptance
- Relevant Legislation
- 1. What is revocation of acceptance?
- 2. Reasons for revocation
- 3. Revocation process
- Part 39 Registration of a Trade Mark
- Relevant Legislation
- 1. Overview of registration
- 2. Particulars of registration
- 3. Format of Certificate of registration
- 4. Timing
- 5. Date and term of registration
- 6. Registration fees
- 7. Registration process
- 8. Notification of Protection process for International Registrations Designating Australia
- Annex A1 - Certificate of Registration
- Part 40 Renewal of Registration
- Part 41 Cancellation of Registration
- Relevant Legislation
- 1. What is the effect of cancelling a registration?
- 2. Why is a registration cancelled?
- 3. Cancellation process
- Part 42 Rectification of the Register
- Relevant Legislation
- 1. What is rectification?
- 2. What part does the Registrar play in rectification actions brought by a person aggrieved?
- 3. Rectification procedures
- Annex A1 - Flow chart of rectification procedure
- Part 43 Assignment and Transmission
- Relevant Legislation
- 1. What is assignment and transmission?
- 2. Timing for assignment
- 3. Application to record assignment etc
- 4. Process for assigning all goods and/or services (full assignment)
- 5. Process for assigning only some goods and/or services (partial assignment)
- 6. Process for assignment of certification trade marks
- 7. Transmission of certification trade marks
- Part 44 Claim of Interest or Rights in a Trade Mark
- Relevant Legislation
- 1. Background
- 2. Effect of recording the claim
- 3. When can the interest be recorded?
- 4. Recording the claim
- 5. Amending the record of a claim
- 6. Cancelling the record of a claim
- Part 45 Copies of Documents
- Relevant Legislation
- 1. Documents copied by the Office
- 2. Types of copies requested
- Annex A1 - Flow chart of production of copies/certified copies
- Part 46 Grounds for Opposition to Registration or Protection
- Relevant Legislation
- References used in this part
- 1. What is opposition to registration or protection?
- 2. The Registrar’s role in an opposition
- 3. When registration or protection can be opposed
- 4. Grounds for opposition to registration of national trade marks
- 5. Grounds for opposition to protection of international trade marks
- Part 47 Procedures for Opposing Registration or Protection
- Relevant Legislation
- 1. Filing a notice of opposition
- 2. Request to amend a notice of intention to oppose or a statement of grounds and particulars
- 3. Filing a notice of intention to defend
- 4. Opposition may proceed in the name of another person
- 5. Making Convention documents available to opponent
- Part 48 Removal of a Trade Mark from the Register for Non-use
- Relevant legislation
- References used in this part
- 1. What if a trade mark is not used?
- 2. Application for removal/cessation of protection for non-use
- 3. Opposition to a non-use application
- 4. Application for extension of time to oppose the non-use application where the trade mark is already removed
- 5. Grounds on which a non-use application may be made
- 6. Burden on opponent to establish use of a trade mark
- 7. Authorised use by another person
- 8. Use by an assignee
- 9. Localised use of trade mark
- 10. Circumstances that were an obstacle to the use of a trade mark
- 11. Where there is no evidence in support of the opposition
- 12. Registrar's discretion in deciding an opposed non-use application
- 13. Registrar to comply with order of court
- 14. Right of appeal
- 15. Certificate - Use of a trade mark
- Part 49 Non-use Procedures
- Relevant legislation
- 1. Application for removal or cessation of protection of a trade mark for non-use
- 2. Opposition to non-use application
- 3. Amendment to notice of intention to oppose or statement of grounds and particulars
- 4. Notice of intention to defend
- 5. Opposition may proceed in the name of another person
- 6. Opposition proceedings
- Part 51 General Opposition Proceedings
- Relevant Legislation
- 1. Evidence
- 2. Extension of the period for filing evidence
- 3. Cooling-Off Period
- 4. Suspensions
- 5. Hearing of the opposition
- 6. Dismissal or discontinuance of proceedings
- 7. Award of costs
- 8. Rights of appeal
- 9. Period in which a trade mark can be registered/protected
- 10. Guidelines for Revocation of Acceptance of Opposed trade marks
- 11. Unilateral Communications with Hearing Officers
- Part 52 Hearings, Decisions, Reasons and Appeals
- Relevant Legislation
- References used in this Part
- 1. What is a decision?
- 2. What is a hearing?
- 3. Is a hearing always necessary?
- 4. Role and powers of the Registrar in hearings
- 5. Rights of appeal from decisions of the Registrar
- 6. Appeals from decisions of the Federal Court etc.
- 7. Implementation of decisions
- 8. Service of documents on the Registrar
- Part 54 Subpoenas, Summonses and Production of Documents
- Relevant Legislation
- 1. Subpoenas
- 2. Summonsing a witness
- 3. Production of documents
- Annex A1 - Consequences of mishandling a subpoena
- Annex A2 - Format of a summons to witness
- Annex A3 - Format of notice requiring production
- Part 55 Costs
- Relevant Legislation
- 1. Legislative Basis
- 2. Award of costs
- 3. Applications for an award of costs
- 4. Determination of the amount of costs
- 5. Full costs where certificate of use of a trade mark provided to removal applicant
- 6. Costs recovery
- 7. Security for costs
- Annex A1 - Taxing of costs in "multiple" oppositions relying on same evidence
- Part 60 The Madrid Protocol
- Relevant Legislation
- Glossary
- 1. Introduction
- 2. International Applications
- 2.1 General Description
- 2.2 International Application Form
- 2.3 Data Entry
- 2.4 Certifying Process
- 2.5 Fees for International Applications
- 2.6 Renewal
- 3. The Basic Application or Basic Registration (Basic Trade Mark)
- 4. International Registrations that have Designated Australia
- 4.1 General Description
- 4.2 Record of International Registrations
- 4.3 Filing/Data Capture/Allocation of Australian Trade Mark Number
- 4.4 Indexing
- 4.5 Expedite
- 4.6 Classification of Goods and Services
- 4.7 Examination of an IRDA
- 4.8 Reporting on an IRDA
- 4.9 Provisional Refusal
- 4.10 Amendments
- 4.11 Deferment of Acceptance
- 4.12 Extension of Time
- 4.13 Final Decision on Provisional Refusal Based on Examination
- 4.14 Acceptance
- 4.15 Revocation of Acceptance
- 4.16 Extension of Time to File Notice of Opposition to Protection
- 4.17 Opposition to Protection
- 4.18 Protection
- 4.19 Cessation or Limitation of Protection
- 4.20 Cessation of Protection because of Non-Use
- 4.21 Opposition to Cessation of Protection because of Non-Use
- 4.22 Renewal
- 4.23 Claim to Interest in, or Right in Respect of a Trade Mark
- 4.24 Change in Ownership of an International Registration
- 4.25 Transformation
- 4.26 Replacement
- 4.27 Customs
- Part 61 Availability of Documents
- Relevant Legislation
- 1. Availability of Documents
- 2. Accessing Documents
- 3. Documents to be made Available for Public Inspection (API)
- 4. Information that the Registrar of Trade Marks will Not Accept in Confidence
- 5. Confidential Information in Correspondence
- 6. Policy in relation to TM Headstart
- Part 62 Revocation of Registration
- Relevant Legislation
- 1. What is revocation of registration?
- 2. Prerequisites to revocation of registration
- 3. Factors to be taken into account before deciding whether revocation of registration is reasonable
- 4. Circumstances under which registration may be revoked
- 5. Mandatory revocation
- 6. Right of appeal: revocation of registration
- 7. Extension of time
- 8. Amendment or cessation of protection by Registrar of Protected International Trade Marks (PITMs)
- 9. Registrar must notify Customs if protection of a PITM is revoked
- 10. Right of appeal: cessation of protection
52.5. Rights of appeal from decisions of the Registrar
5.1 Appeal to the Federal Court or the Federal Circuit and Family Court of Australia (Division 2)
The Federal Court and the Federal Circuit and Family Court of Australia (Division 2) have jurisdiction to hear and determine appeals against decisions, directions or orders of the Registrar (sections 191 and 191A). The statutory rights of appeal to the courts are specifically set out in the relevant sections of the Trade Marks Act 1995 viz. sections 35, 56, 67, 83(2), 83A(8), 84D and 104 and the Trade Mark Regulations viz. reg 17A.26, 17A.34P, 17A.42F. If the Act does not specify a right of appeal to the Federal Court, the Federal Circuit and Family Court of Australia (Division 2), or the Administrative Appeals Tribunal (see manual section 5.2) the only alternative avenue is under the Administrative Decisions (Judicial Review) Act (see Manual Section 5.3).
Appeals from Registrar’s decisions may be made to the Federal Court or the Federal Circuit and Family Court of Australia (Division 2) in respect of:
- the rejection of an application, or the decision to accept it subject to conditions or limitations (section 35),
- a decision in an opposition matter to register a trade mark, with or without conditions or limitations, or to refuse it (section 56),
- a decision on a request for amendment of the application to register a trade mark or of another document (section 67),
- a decision on a request to amend the particulars of a trade mark entered in the Register (secton 83),
- a decision on a request to amend the particulars of a trade mark entered in the Register to achieve consistency with international agreements (section 83A),
- a decision to revoke registration under section 84A (section 84D),
- a decision in an opposed removal application (section 104),
- the rejection of an IRDA, or the decision to accept it subject to conditions or limitations (reg 17A.26),
- a decision in an opposition matter to refuse or extend protection to an International Registration Designating Australia (reg 17A.34P)
- a decision to exercise or not exercise a power to amend or cease protection of a protected international trade mark (reg 17A.42A)
- a decision to exercise or not exercise a power to amend or cease protection of a protected international trade mark for non-use (reg 17A.48D and 17A.48X)
Such an appeal is not an appeal merely to decide whether the decision of the Registrar can be supported but a complete re-decision, on the material before the court, of the entire question. The appeal is in the nature of a de novo hearing.
The Metro case (Registrar of Trade Marks v Woolworths (1999) 45 IPR 411) confirmed that this established practice under the 1955 Act is maintained under the 1995 Act.
In the Metro case Justice French noted that "(t)he Court is entitled, on hearing an appeal against a decision or direction of the Registrar, to admit further evidence, to permit examination and cross-examination of witnesses, to order issues of fact to be tried as it directs, to affirm, reverse or vary the Registrar’s decision or direction and to give any judgment or make any order that in all the circumstances it thinks fit." He noted further that because the appeal is in the nature of a re-hearing, "(t)here is therefore no presumption in favour of the correctness of the Registrar's decision save that weight will be given to the Registrar's opinion as that of a skilled and experienced person."
An appeal to the Federal Court or Federal Circuit and Family Court of Australia (Division 2) must be instituted within 21 days after the date of the decision appealed from (or within such further time as the Court allows on application - see Manual Section 5.5).
5.2 Review by the Administrative Appeals Tribunal
The Trade Marks Act 1995 specifically provides for application for review by the Administrative Appeals Tribunal (the AAT) in the following trade mark matters:
- Refusal by the Registrar to grant an extension of time under the terms of section 224. An unsuccessful applicant for an extension can seek a review of the refusal (section 224(7)). (See for example Gracey v Registrar of Trade (2000) AIPC 91-565)
- A decision by the Australian Competition and Consumer Commission in relation to a certification trade mark:
- not to give a certificate as to the competence of the certifying body, or the appropriateness of the rules (section 175(5)), or
- to approve, or not to approve, a subsequent variation of the rules governing the use of a registered certification trade mark (section 178(5)), or
- to refuse consent to the assignment of a registered certification trade mark (section 180(4)).
- A decision by the Registrar to dismiss an opposition because a statement of grounds and particulars is inadequate, or to delete material from a statement of grounds and particulars (section 99A, subregs 5.8(6), 17A.34B(6)).
A review by the AAT leads to a full re-decision of the matter on its merits. The tribunal stands in the shoes of the original decision maker and can exercise all of the powers open to that person. Additional evidence can be admitted. Where a right to review by the AAT exists, it is not confined to the parties who were involved in the matter leading to the decision concerned any person whose interests are affected by the decision can request to be made a party.
The time limits for requesting a review by the AAT are set out in section 29 of the AAT Act. In general, the request must be filed at the AAT within 28 days commencing on the date of receipt of the document setting out the decision, but the time may be extended.
A delegate who, after complying with section 203, refuses an extension of time under section 224 must also comply with section 227. Section 227 requires that notice of a decision that is reviewable by the AAT be given to any person affected by it and that the notice must include a statement that application may be made to the AAT for review.
5.3 Review under the Administrative Decisions (Judicial Review) Act 1977
Review of any decision of an administrative nature is available under the Administrative Decisions (Judicial Review) Act 1977, (the AD(JR) Act). Therefore, in addition to any specific rights of appeal under the Trade Marks Act to the Federal Court and the Federal Circuit and Family Court of Australia (Division 2) or to a review of the decision in the AAT, a “person aggrieved” by a decision of the Registrar may seek a review of that decision in the Federal Court or the Federal Circuit and Family Court of Australia (Division 2) under the AD(JR) Act.
For example, review of a decision of the Registrar to allow an extension of time for filing notice of opposition to registration of a trade mark might be sought by the applicant for registration (see Lyons (trading as Mitty’s Authorized Newsagency) v Registrar of Trade Marks (1983) 1 IPR 416). Review of a decision to refuse such an extension might be sought by a prospective opponent (see Atomic Skifabrik Alois Rohrmoser v Registrar of Trade Marks (1987) 7 IPR 551 and Chiron Corporation v Registrar of Trade Marks (1998) 42 IPR 75).
A review under the AD(JR) Act, though conducted in the Federal Court or the Federal Circuit and Family Court of Australia (Division 2), is not a re-examination of the matter. It is not a review of the merits of the decision but goes, briefly and in general terms, to the compliance with procedures under the legislation, provision of procedural fairness and to the availability of evidence on which to base the decision. If the court finds a decision of the Registrar is contrary to law it will not substitute its own decision but may set aside the Registrar’s decision and refer it back to the person who made the decision for reconsideration in accordance with the law (see for example, GS Technology Pty Ltd v Commissioner of Patents (1997) 39 IPR 583). The court has powers to make orders remedying consequences flowing from an unlawful administrative decision that it proposes to set aside, see British Sky Broadcasting Limited v Registrar of Trade Marks [2002] FCA 1556 at 47.
The normal time for applying for review to the Federal Court under the AD(JR) Act is 28 days after receipt of the decision.
5.4 Role of the Registrar in an appeal
According to Rule 34.23 of the Federal Court Rules, the Registrar may appear and be heard in any proceedings, but is not a party to proceedings other than an appeal which is (a) from a decision of the Registrar and (b) in which there is no party in opposition to the party bringing the appeal.
In an appeal to the Federal Court from a decision of the Registrar in an ex parte matter, the Registrar is clearly a party to the appeal. Similarly, if an application is made to the AAT or to the Federal Court or Federal Circuit and Family Court of Australia (Division 2) under the AD(JR) Act for review of a decision of the Registrar or a delegate in an ex parte matter, the Registrar or the delegate is a party to proceedings before the Tribunal or the Court and will appear or be represented. In either forum the Registrar will articulate the merits of the matter and the law applicable but will avoid defending the decision in a partisan manner. See Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551 at 5, and Philmac Pty Ltd v Registrar of Trade Marks (No 2) [2003] FCA 207 at 12.
Opposition matters, by definition, involve two parties and thus the Registrar is not required to be joined as a party to an appeal from such a decision. However, section 196 of the Act provides that the Registrar may appear and be heard at the hearing of an appeal to the Federal Court or the Federal Circuit Court against a decision or direction of the Registrar and this applies even when there is a party in opposition. (See comments of Finkelstein J in Malibu Boats West, Inc v Catanese (2000) AIPC ¶ 91-605).
Normally the Registrar would not participate in inter partes proceedings. See for example The Queen v. Australian Broadcasting Tribunal; ex parte Hardiman [1980] HCA 13; (1980) 144 CLR 13, the source of the Hardiman principle.
There may be instances where it is appropriate for the Registrar to attend in the capacity of a Friend of the Court (Amicus Curiae). While this would rarely be the case, it may be appropriate where, as in the Malibu case (supra), the party in opposition did not appear. Justice Finkelstein approved the Registrar's appearance noting that:
"(t)his was a proper course for the Registrar to take. Often the Court is greatly assisted by the appearance of the Registrar in such circumstances. It is to be expected, as has occurred in this case, that the Registrar will make submissions in a non-partisan fashion."
See also Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 at 23 – 32.
5.5 Notice of Federal Court Appeals
Rules 34.24 and 34.25 of the Federal Court Rules provide that a decision of the Registrar may be appealed within 21 days - extendible under the Court Rules. Notice of appeal must be served on the Registrar within 5 days of the day on which the notice of appeal is filed (Rule 34.24(3)). The appellant, not the Registrar, will bear the responsibility for any consequences of the delay in serving the notice on the Registrar.
The Federal Court Rules require the Registrar to file at the appropriate court registry, "the documents necessary for the hearing that are in [the Registrar's] possession, and a list of the documents” (Rule 34.30). These will generally be the materials relied upon in the making of the decision. The Registrar must also give each party to the appeal written notice that the documents have been filed.
A period of 14 days is allowed for this, starting from the date on which the notice of appeal is served on either the Registrar or the Deputy Registrar, Oppositions and Hearings Section.
In practice though the general approach is to advise the appropriate court registry of the evidentiary material that was before the Hearing Officer and that it is available to the court on request. This reduces the handling of often times voluminous amounts of evidentiary material filed and served during the course of the opposition proceeding. However, a certified copy of the decision, certified copy of the trade mark application or registration and certified copy of the original notice of opposition document is filed at the appropriate court registry.
No other members of staff are authorised to accept service of the notice of appeal, and service will not have been effected until the copy reaches either the Registrar or the Deputy Registrar of Trade Marks & Designs, Hearings and Opposition Section.
While the Trade Marks Office will endeavour to act on copies of the notice of appeal provided by electronic means, the original should be filed as soon as possible. If the notice is to be served by post (which may take longer), the appropriate address is: PO Box 200, Woden, ACT 2606.
5.6 Filing a Notice of Appeal at the Federal Court
Rule 1.61(5) of the Federal Court Rules makes provision for the exclusion of a period of time in any given year from 24 December to 14 January of the following year in respect to the calculation of time.
Unless otherwise varied by way of an order from the Federal Court, a delegate of the Registrar (who issues a decision) and officers in the Hearings Support Team, (who give effect to that decision) are to have regard to the provisions of Rule 1.61(5) of the Federal Court Rules to avoid the premature finalisation of a decision that:
- has an appeal period which falls in part or completely within the time specified in Rule 1.61(5) of the Federal Court Rules and
- is appellable to the Federal Court under Parts 33 or 34 of the Federal Court Rules.
Similarly the timeframe for compliance by:
- the appellant under Rule 34.24 of the Federal Court Rules concerning service of the Notice of Appeal on the Registrar (and respondent(s) to the appeal) and
- the Registrar of Trade Marks under Rule 34.31 of the Federal Court Rules concerning the filing of documents (or certified copies of documents) in the appropriate Court Registry and written advice to the parties to the appeal
should also been taken into account by the Deputy Registrar in Oppositions and Hearings during this period of time.
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