IP Australia : Resources > Official notices > Trade marks pre-2002 notices

The 8th edition of NICE will come into effect on 1 January 2002. As a result of the review of class 42 three new services classes have been created, to which a number of services will be transferred. A number of services will also transfer to existing classes and a number of services will be deleted altogether. Specifications of goods and services for trade mark applications filed before 1 January 2002 must be filed in accordance with the 7th edition of the Nice Classification.

Please note that there are no plans to re-classify registered trade marks or trade mark applications lodged prior to 1 January 2002.

The following items have been deleted from NICE, Guardianship, Bacteriology, Patent exploitation, Editing of written texts, Attic clearance, Loft clearance, Junk clearance, Personal letter writing, Providing facilities for exhibitions, Genealogical research, Engineering drawing, Uniform rental, Fashion information, Child care services [crèches], Leasing access time to a computer data base, Leasing access time to a computer for the manipulation of data and the description in class 42 "services that cannot be classified in other classes.".

The Office will continue to accept specifications which refer to Internet services if applicants wish to retain that term, however, it may not always be in their best interests to use this term. In some countries INTERNET is a registered trade mark so that if a national registration/application is used as a basic application for the purpose of an international registration a specification using the word INTERNET will attract an irregularity letter. The preferred term used in the 8th edition of NICE is "a global computer network". For example it lists the following services in class 38: Providing telecommunications connections to a global computer network Providing user access to a global computer network [service providers]

Please contact Mary Skivington at e-mail mary.skivington@ipaustralia.gov.au or phone (02) 6283 2973 if you have any questions regarding these classification changes.

The Trade Marks and Other Legislation Amendment Act 2001 (TMOLA Act) and Trade Marks Amendment Regulations 2001(No 3) came into force on 19 September 2001. The provisions contained in them are mostly intended to streamline procedures and remove anomalies and ambiguities identified since the Trade Marks Act 1995 came into operation. Therefore, the new legislation is not likely to impact very much on the Office or its customers on a daily basis. An information paper is available on the IP Australia website which provides assistance in negotiating the relationships between the Trade Marks Act 1995 and the new TMOLA provisions. Some highlights are:

There is a very useful paste-up of the Trade Marks Act 1995, incorporating all amendments of the Act up to 19 September 2001, on ComLaw

The TMOLA Act and the supporting regulations are also available individually on ComLaw, at http://www.comlaw.gov.au/.

If you need further information about the new legislation, please contact Claudia Murray at e-mail claudia.murray@ipaustralia.gov.au or phone 02 62832770.

On 1 January 2002 the 8th edition of the International Classification of Goods and Services (Nice Classification) will come into effect. In the new edition class 42 has been divided into four classes, namely a revised class 42 and new classes 43, 44 and 45. These changes were adopted by the WIPO Committee of Experts of the Nice Union at its 18th Session held in October 2000. The Nice Agreement provides for the setting up of a Committee of Experts in which all countries party to the Agreement may be represented. The Committee of Experts decides on all changes in the classification of goods and services.

The revised class headings and explanatory notes from the 8th edition of the Nice Classification are reproduced below.

Specifications of goods and services for trade mark applications filed before 1 January 2002 must be filed in accordance with the 7th edition of the Nice Classification.

Please note that there are no plans to re-classify registered trade marks or trade mark applications lodged prior to Jan 1 2002.

Please contact Mary Skivington at e-mail mary.skivington@ipaustralia.gov.au or phone (02) 62832973, if you have any questions regarding the new classes.

Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.

Class 42 includes mainly services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by members of professions such as chemists, physicists, engineers, computer specialists, lawyers, etc.

The services of engineers who undertake evaluations, estimates, research and reports in the scientific and technological fields; scientific research services for medical purposes.

business research and evaluations (Cl. 35); word processing and computer file management services (Cl. 35); financial and fiscal evaluations (CI. 36); mining and oil extraction (CI. 37); computer (hardware) installation and repair services (CI. 37);-services provided by the members of professions such as medical doctors, veterinary surgeons, psychoanalysts (CI. 44); medical treatment services (CI. 44); garden design (CI. 44).

Class 43 includes mainly services provided by persons or establishments whose aim is to prepare food and drink for consumption and services provided to obtain bed and board in hotels, boarding houses or other establishments providing temporary accommodation.

reservation services for travellers' accommodation, particularly through travel agencies or, brokers; boarding for animals.

rental services for real estate such as houses, flats, etc., for permanent use (CI. 36); arranging travel by tourist agencies (CI. 39); preservation services for food and drink (CI. 40); discotheque services (CI. 41); boarding schools (CI. 41); rest and convalescent homes (CI. 44).

Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

Class 44 includes mainly medical care, hygienic and beauty care given by persons or establishments to human beings and animals; it also includes services relating to the fields of agriculture, horticulture and forestry.

medical analysis services relating to the treatment of persons (such as x-ray examinations and taking of blood samples); artificial insemination services; pharmacy advice; animal breeding; services relating to the growing of plants such as gardening; services relating to floral art such as floral compositions as well as garden design.

vermin exterminating (other than for agriculture, horticulture and forestry) (CI. 37); installation and repair services for irrigation systems (CI. 37); ambulance transport (CI. 39); animal slaughtering services and taxidermy (CI. 40); timber felling and processing (CI. 40); animal training services (CI. 41); health clubs for physical exercise (CI. 41); scientific research services for medical purposes (CI. 42);boarding for animals (CI. 43); retirement homes (CI. 43).

Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.

investigation and surveillance services relating to the safety of persons and entities; services provided to individuals in relation with social events, such as social escort services, matrimonial agencies, funeral services.

professional services giving direct aid in the operations or functions of a commercial undertaking (CI. 35); services relating to financial or monetary affairs and services dealing with insurance (CI. 36); escorting of travellers (CI. 39); security transport (CI. 39); services consisting of all forms of education of persons (CI. 41); performances of singers or dancers (CI. 41); -legal services (CI. 42); services provided by others to give medical, hygienic or beauty care for human beings or animals (CI. 44); certain rental services (consult the Alphabetical List of Services and General Remark (b) relating to the classification of services).

The Trade Marks Office is about to update the Search for Australian Surnames database (SFAS) list will be updated, based upon a list of surnames occurring on the electoral rolls of all Australian states.

With the introduction of this change, it has been decided that the threshold level indicating commonness of a surname will also be updated. The new threshold will be raised to 750.

Trade marks consisting wholly of a surname occurring below this threshold will not attract a ground for rejection based upon commonness of surname.

Applications already under examination that have attracted a ground for rejection based on the commonness of a surname with an SFAS of between 500 and 750 will be reassessed, upon request, according to the new guidelines and the process set out in TMO Manual of Practice and Procedure Part 22.16 (updated September 2000).

Extension of time for filing a notice of opposition to registration of a trade mark.

Declarations in support of applications under regulations 5.2 and 5.3 of the Trade Marks Regulations 1995.

There are occasions when a potential opponent to registration of an accepted trade mark application may not be able to file a notice of opposition within the statutory time of three months from the day on which the application is advertised in the Official Journal (reg 5.1). The Trade Marks legislation provides for the filing of an application for an extension of this time. Regulation 5.2 provides the grounds on which such an application may be made and reg 5.3 sets out the requirements as to form.

Regulation 5.3 requires that the application for extension of time must be in an approved form and must be accompanied by a declaration. To meet these requirements:

It is implicit in the wording of reg 5.3(b)(i) that the declaration must provide facts which are more than a simple re-statement of the grounds upon which the application is based. The office practice set out in section 2.2 of Part 47 of the Trade Marks Office Manual of Practice and Procedure (which can be found through the IPAustralia web-site) reflects this interpretation.

In particular, extensions sought because of the conduct of genuine negotiations between the parties (reg 5.2(2)(d)) or because of the undertaking of genuine research (reg 5.2(2)(e)) should be supported by declarations setting out facts sufficient to satisfy the Registrar that such negotiation or research is in progress.

During the past year or more, a less stringent practice has been followed in assessing declarations filed in support of applications under reg 5.2. However, the Registrar has reconsidered this departure from the published practice and decided it is not consistent with the intent of the legislation. Accordingly, the Registrar has decided to enforce the current practice and applicants and their representatives should be aware that from the date of this Notice, the Registrar will object to applications where the supporting declarations do not provide the necessary facts on which the grounds for an extension of time for filing a notice of opposition are based.

The Registrar would also urge applicants seeking additional time to file a notice of opposition to consider the merits of providing more than a necessary minimum of information in the declaration. It is the experience of the Trade Marks Office that trade mark applicants are more likely to file objections to the grant of extensions when the declaration gives only the minimum detail required to support the grounds for seeking additional time. Such objections, even if ultimately unsustainable, add to delay and uncertainty for the parties and incur costs for extension applicants. They can also distract the parties from the prospect of mutually beneficial settlement.

Applications for extension of time under s 224(2) or (3) of the Trade Marks Act 1995 Applications for extensions of time of more than three months

Following on from the Patents' change of practice regarding the handling of applications for extension of time of more than three months, and as a result of enquiries from interest groups, the following changes will be made to the practice re applications for extension of time of more than three months made under s 224 of the Trade Marks Act 1995.

Applications for extension of time made under s 224(2) or (3) for periods of more than three months will be advertised in the Official Journal (s 224(5)) as soon as possible after filing is complete, that is, once the correct fee has been paid and a declaration in terms of reg 21.25 has been filed. The declaration will no longer be considered for possible deficiencies prior to advertisement.

An application once advertised under s 224(5) is open to opposition for a period of one month as prescribed by reg 21.26. This period is not extendible.

If opposition to the application for extension of time is filed, the determination will be made in the course of that opposition. There will not be any preliminary determination as to whether the time sought is appropriate, or is justified by the supporting declaration. If substantive justification for the extension only appears during the proceedings (as per evidence in answer), the award of costs may be varied.

If no opposition to the application for extension of time is filed, the Registrar will consider the application, and

Any pending applications will be advertised forthwith regardless of whether or not the Registrar has put the applicant on notice of any shortfall - the applications will then only be considered at the end of the opposition period as per the above.

Please contact Margaret Fairbrother at margaret.fairbrother@ipaustralia.gov.au or phone (02) 62832941, if you have any questions regarding these practice changes.

IP Australia is currently reviewing its practice under the patents, trade marks and designs legislation (IP legislation) in relation to time periods generally and specifically to time periods that expire on a Saturday, Sunday, public holiday, or bank holiday. As part of this general review of time periods, please note that the Patents Regulations have been recently amended to clarify the way in which periods measured in months are calculated.

The expiration of time periods under the IP legislation is largely governed by s.36(2) of the Acts Interpretation Act 1901 (AI Act). The AI Act generally provides that if a time period expires on a weekend, public holiday or a bank holiday then the period actually expires on the next day that is not such a day. This reflects current IP Australia practice.

The imminent application of the Electronic Transactions Act 1999 (ET Act) for electronic filings (which includes facsimile) to all the IP legislation also needs to be taken into account - the ET Act has applied to the patents legislation from 24 May 2001 and will apply to the remainder from 1 July 2001. Also relevant is Rule 80 of the Patent Cooperation Treaty and Rule 4 of the Madrid Protocol for documents filed under those Treaties.

The review has indicated that there is no issue of uncertainty or inconsistency with current practice in relation to the expiration of time periods that fall on weekends and national public holidays (ie, those holidays falling on the same day throughout Australia).

However, many public holidays apply only in the location of some offices of IP Australia - such that some, but not all, offices are closed - while offices of IP Australia are generally not closed on bank holidays. In these cases of local public holidays (ie those holidays that are not national public holidays) and bank holidays, the situation is not as certain for the expiration of time periods - the operation of the IP legislation, the AI Act, the ET Act and the PCT and Madrid Protocol Rules can lead to inconsistent results.

In the interests of providing certainty and consistency to our customers to safeguard rights, IP Australia is proposing to seek amendments of the IP legislation to set out clearly the approach in relation to time periods. To help achieve a consistent and certain approach and also take into account the operation of the ET Act and the PCT and Madrid Protocol Rules it is necessary to establish the central Canberra Office as the relevant Office for the measurement of time periods.

This means for documents filed electronically (including by facsimile), the day on which the document is considered to be filed would be determined by the date in Canberra and not the date in the location where the person sending the electronic communication is located - if a document is filed electronically it would therefore need to be filed before 12.00 midnight Canberra time zone to be accorded a filing with that date.

For time periods that expire on a weekend, public holiday or bank holiday, IP Australia's proposed approach would only recognise weekends, national public holidays and Canberra public holidays as the relevant days for which a period would expire on the next day that is not such a day.

As a result of the proposed approach, local public holidays (other than in Canberra) and bank holidays would no longer be recognised. Therefore if a time period ends on such a day, the period would not be extended as a result of that holiday.

IP Australia will consult more fully with customers and practitioners before implementing this proposed approach to time periods. However, we are of the view that the proposed approach would best provide the necessary certainty for customers, particularly in relation to filings under the PCT and Madrid Protocol. Please note that as this proposed approach to handling the expiration of time periods would require amendments to the primary IP legislation, it would not come into effect until 2002 at the earliest.

In the interim, customers and practitioners are therefore advised to note the uncertainty surrounding the effect of local time zones and local public holidays and bank holidays on time periods, and to avoid reliance on such time zones and holidays when filing documents at the end of a period.

In this regard, customers and practitioners should note that while the Patents and Trade Marks Acts provide a general extension of time mechanism to cover certain situations where an act has not been done within a time period, there are no such corresponding extension of time provisions under the PCT and the Madrid Protocol to cover analogous situations.

If in the interim customers and practitioners wish to rely on local time zones and local public holidays, they should not assume that the expiration of time periods is determined by s.36(2) of the AI Act in isolation. The following examples serve as a guide to illustrate the interaction between the IP legislation, the AI Act, the ET Act and the PCT and Madrid Protocol. Customers and practitioners should carefully assess this interaction if relying on local time zones and local public holidays and recognise that different outcomes can result. We can only again emphasise that customers and practitioners should avoid placing reliance on local time zones and local public holidays when filing documents at the end of a period.

Illustrative examples of the current effect of local time zones and local holidays on time periods

1. For paper documents filed under the Patents, Trade Marks and Designs Acts:

However the period is NOT so extended if it is filed in an Office where the public holiday or bank holiday did not occur.

2. For documents filed electronically (NOT including facsimile) under the Patents, Trade Marks and Designs Acts:

3. For documents filed electronically by facsimile under the Patents, Trade Marks and Designs Acts:

OFFICIAL NOTICE

Changes in Procedures-Filing Notice

In mid-March, the Trade Marks Office introduced a system for the electronic scanning of documents called TRACS (Trade Mark Records, Application and Correspondence System). TRACS will be used for all new filings and for any correspondence relating to those filings.

Historically, with new filings, the application form has been sent to the applicant/attorney along with the notice of filing. This has enabled identification of the trade mark to which the notice relates. Soon after the implementation of TRACS, we will be introducing a new filing notice, that will have attached to it a "status report" produced from ATMOSS (the on-line searching system available on the Internet). This report will contain all the data captured on the mainframe and, in the case of trade marks comprising a device or fancy script, a thumbnail representation of the trade mark.

The issuing of the ATMOSS status report along with the filing notice will mean that we will no longer photocopy and forward the application form with the filing notice. In the event of concern about a particular filing date, a copy of the application form captured on TRACS can be obtained and printed.

It is anticipated that the new notice will be introduced in early April 2001.

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OFFICIAL NOTICE

CLASSIFICATION MATTERS

The following information is intended to assist applicants and their agents to avoid delays in acceptance of applications caused by unsuitably worded services claims.

1. BROAD CLAIMS FOR INFORMATION SERVICES:

The Trade Marks Office regularly receives applications in which claims along the lines of the supply of information on a wide range of topics have been made. Such claims are typically made by search engine providers, internet access providers, and those hosting internet sites.

It is the Office's policy to treat such applications the same as any other applications for the supply of information. A request is made for the subject matter of the information to be specified so that the claim can be classified, information services being seen as falling in the same class as the subject matter of the information being supplied. This will continue to be Office policy.

Where however the applicant's primary service is the transmission of information or the publication of information or the hosting of a website on which information is available, an acceptable claim can be made in a single class in relation to wide ranging information services, if appropriate wording is used. The Office would accept the following claims for instance, without querying their scope:

* · CLASS 38: Transmission of information on a wide range of topics, including online transmission
* · CLASS 41: Electronic publication of information on a wide range of topics, including online publication
* · CLASS 42: Provision of access to databases containing information on a wide range of topics, including provision of online access

Statements of services along these lines will allow applicants to make broad claims in relation to information, without having these claims queried. Where there are no other matters to be dealt with, the use of such claims will lead to prompt acceptance of these applications.

2. CLAIMS FOR "RETAILING OF GOODS AND SERVICES":

It is now the Office's policy to allow unqualified claims for retailing and/or wholesaling in class 35. This policy however only relates to claims made in relation to goods, the terms "retailing" and "wholesaling" being universally recognised trade terms in that context.

"Retailing" is not a broadly recognised term when used in relation to services. The Office will query claims for "retailing of services", asking for the services themselves to be specified, for the reference to retailing to be deleted, and for the application to be transferred to the class/es appropriate to the specific services being claimed. A claim for "retailing of services" will therefore prevent the prompt acceptance of an application, even if there are no other matters preventing its acceptance.

3. CLAIMS FOR "SERVICES RELATING TO …":

Paragraph 27(3)(b) of the Act states that an application must specify the goods and/or services being claimed. Applications claiming "services relating to [other services which are then specified]" do not meet this requirement, as the services themselves which are being claimed have not been stated, only the services to which these unspecified services relate.

For this reason the phrase "services relating to" will always be queried, and its use will prevent the prompt acceptance of an application, even if there are no other matters preventing its acceptance.

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OFFICIAL NOTICE

TRADE MARKS OFFICE
Practice Note Divisional Application and Convention Claims

In view of a decision of a delegate of the Registrar of Trade Marks Re: Arista Enterprises Inc. [2000] ATMO 25 (29 March 2000) the Trade Marks Office has adopted the following practices.

Divisional Applications
The priority date of a divisional application will be the date on which its parent application was received by the Trade Marks Office.

Convention Claims and Divisional Applications
Section 29 requires filing of an Australian application within 6 months from the day on which the application was filed in the convention country. A divisional application will not be accorded the convention priority claim of its parent application unless the convention priority claim is also made when filing the divisional application or within the period provided for in regulation 4.5, that is, within 2 working days after filing the application.

Change in Trade Marks Office Practice regarding Broad Claims and Claims for Class Headings

When filing an application for a trade mark the onus is on the applicant to appropriately specify the goods or services in relation to which the trade mark is or will be used.

Since the introduction of the Trade Marks Act 1995, the Registrar of Trade Marks has taken the view that trade mark applicants were unlikely to be using or intending to use their trade marks on the full range of services covered by the descriptions "Education", "Entertainment", "Providing of Training" and "Retailing" or on the full range of services covered by the NICE Classification class headings for classes 37, 40, 41 and 42.

In the course of examination, these items were therefore routinely queried and applicants were asked to (1) specify their particular area of interest, (2) justify the wide claim by through examples use OR (3) provide a statutory declaration confirming their intention to use the trade mark on the full description.

The Registrar has recently reviewed his practice in relation to these sorts of claims and has decided to streamline the examination process by:

* accepting the class headings for classes 37, 40 and 41 (it has been the practice not to query the class headings for classes 1-36, 38 and 39 for some time now).

* accepting the class heading for class 42 EXCEPT for the words "services that cannot be placed in other classes".

* accepting the terms "Education", "Entertainment", "Providing of Training" and "Retailing" without qualification.

Part 14 of the Manual of Practice and Procedure is currently being updated to reflect these changes.

Please contact Karen Loughhead on 02 62832854 if you would like to discuss this matter

In the Official Journal of 8 May 1997, the Registrar advertised requirements for declaratory support for applications made under regulation 5.15 for extensions of time to serve evidence. These requirements have been reviewed and, where they relate to applications sought when the parties are involved in negotiations, have been modified. The revised practice is set out below and shown schematically in the diagrams below.

Official notices: Trade marks pre-2002 notices