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Official notices: Trade marks 2002 notices

OFFICIAL NOTICE
IP Australia Christmas Holiday Close Down

5 December 2002

IP Australia's new Certified Agreement provides for a Christmas close down period between Christmas Day and New Year's Day. This means that the majority of IP Australia's staff will be on leave for the period 25 December 2002 until 1 January 2003 inclusive. However 30 and 31 December are not public holidays for the purposes of the Patents, Trade Marks or Designs Acts. This means that all deadlines that fall due on the 30 and 31 December will still need to be met by customers.

In order to provide essential services to our customers on the days of 30 and 31 December, a skeleton staff will be on duty. State Offices will remain open during this period to receive applications, payments and other documents and to provide searching facilities. Our Customer Service Number
02 6283 2999, will also be available to answer enquiries.

However all processing and examination work will occur outside of this period.

To assist us to deal with urgent matters, customers are requested to send all non-urgent work outside of the Christmas close down period.

• the 21-month finalisation date for patent examination;
• to respond to place a design application in order for registration;
• urgent requirement for a certified copy;
• the end of the 6 month period in which a person may file an application for registration of a trade mark in Australia and claim a right of priority from an application they filed overseas in a convention country for the same trade mark;
• final date for acceptance of a trade mark;
• the end of the 15 month period in which a request for deferment of acceptance of a trade mark application may be made.

If this is not possible and customers need to take action on 30 or 31 December, our Customer Service staff will be available to assist on 02 6283 2999.

If you have any specific enquiries regarding the close down period please contact:

Customers are also reminded of IP Australia's contact details. All business correspondence should be via these means. It is especially important to use these numbers over the Christmas close down period, as other numbers may not be staffed.

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OFFICIAL NOTICE
14 of 2002
Multiple Trade Mark Oppositions Involving the Same Parties

13 November 2002

The Trade Marks Office wishes to remind parties of a potential use of the provisions of regulation 5.16. If directions are given under this provision, related oppositions in terms of sections 52 or 92 may, once filed, have their evidence timetables synchronized and, subsequently, be determined at the same time, according to the same evidence.

It is open to the parties to multiple oppositions to apply jointly for the making of directions:

• bringing timetables into line where there is more than one opposed application with differing due dates for the filing and service of evidence; or,
• suspending the conduct of any cross-opposition until an earlier opposition (or a relevant court proceeding) is determined; or
• 'joining' cross-oppositions so that the evidence is in common and they are administered, heard and determined according to the same evidentiary timetable.

Requests for such directions will need to be made in writing, setting out the reasons for the request. Provided that the matters involve the same parties and legal representatives, and arguably similar trade marks, it is likely that such directions will be given if requested jointly. The grant of such a request will not prejudice arguments as to the deceptive similarity, or otherwise, of trade marks.

For further information contact Trade Marks Hearings.

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OFFICIAL NOTICE
13 of 2002
Update to Part 36 - Examination of and Reporting on Trade Mark Applications
Update to Part 37 - Adverse Report Editor

13 September 2002

Part 36 of the Manual has been withdrawn, as its content concerns internal procedures only, most of which have now been superseded. Part 37 of the Manual has been withdrawn, as its content concerns internal procedures only, all of which have now been superseded.

Please contact the Trade Marks Manual Co-ordinator, on 02 6283 2185, with any questions.

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OFFICIAL NOTICE
11 of 2002
Scheduling of Trade Mark Hearings out of Session

11 September 2002

The following information is intended to assist applicants, opponents and their agents to obtain a hearing at a time and place suitable to all parties, outside the usual published session dates, without the need for travel to Canberra.

Trade Marks Hearing Officers are now available, at reasonable notice, to travel to any State Office at any time of year at the parties' expense.

Parties no longer need to wait for a scheduled session in their area. Parties wishing to take advantage of this policy will need to cover the reasonable travel, accommodation and incidental expenses of a Hearing Officer. This will involve a full economy return airfare, taxi transfers and airport parking fees as necessary and overnight accommodation and incidental expenses in accordance with Public Service rates. Accommodation and incidental expenses vary for each city. You may contact the Trade Marks Hearings Clerk on (02) 6283 2930 to obtain the cost for your hearing.

These expenses need to be paid prior to the hearing. It will be up to the parties, if the matter is an opposition, to agree on the share applicable to each. That arrangement will not be part of any award of costs.

An out of session hearing may be requested at any time. However, in the event of conflict, priority will be given to interstate hearings at the published session locations and dates.

As an alternative to a face-to-face hearing, video facilities are available to customers with access to compatible systems. Telephone hearings are also available and are simple and cost-effective, particularly in ex parte matters. Please contact the Trade Marks Hearings Clerk for further information.

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OFFICIAL NOTICE
10 of 2002
Update to Part 14 - Classification of Goods and Services
Update to Part 34 - Defensive Trade Marks

03 September 2002

Part 14: There has been a minor update to Part 14, as follows:

• Para 5.2.1 - topics no longer covered under 5.2 have been deleted from this introductory item. Club services has been reworded to Club and association services.
• Para 5.2.11, third dot point, has been updated in line with the 8th Edition of the Nice Classification.

The printed update will not include the earlier pages of this Part, which will continue to be identified by the footer December 2001, and are unpaginated. For this reason, Part pagination has not been incorporated into this update.

Part 34: Part 34 has been rewritten and Part pagination incorporated. It replaces the version issued September 1999.

The Part now reflects the Registrar's practice as refined in hearings decisions issued since the earlier version.

Please contact Arminel Ryan, Trade Marks Manual Co-ordinator, on 02 6283 2185 with any questions.

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OFFICIAL NOTICE
9 of 2002
Filing fees for Application for Registration of a Trade Mark

29 August 2002

Under the new fee schedule that comes into effect on 1 September 2002, the fee for filing an Application for Registration of a Trade Mark is a reduced fee if it is filed:

"by an electronic means approved by the Registrar for this paragraph"

- see fee items 1(a), 2(a) and 3(a).

This notice is to advise that the electronic means approved by the Registrar for this purpose is:

the on-line form available on the IP Australia web site at http://www.ipaustralia.gov.au.

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OFFICIAL NOTICE
8 of 2002
Review of the Trade Marks Legislation

8 August 2002

IP Australia is undertaking a review of the Trade Marks Act 1995 and the Trade Marks Regulations to identify any provisions which cause difficulty for users of the system or which do not provide for the efficient operation of the trade marks system.

The results of the review will likely lead to recommendations being made to the Minister to amend the trade mark legislation. Therefore, in order to facilitate amendment of the legislation in a timely manner, we would greatly appreciate all comments to be received by the end of October 2002.

As consultation may be necessary on some issues raised during this process, we would prefer submissions to be made as soon as issues are identified, so that arrangements can be made for further discussions. This may mean that some respondents will make a number of submissions.

IP Australia is coordinating closely with ACIP. Where an issue raised is being dealt with by the ACIP Review of Trade Marks Enforcement it will be raised with that Committee for their consideration.

Submissions should be received no later than 31 October 2002

Submissions in electronic format would be preferred.

Please note: unless otherwise indicated, submissions will not be treated as confidential.

Contact details

The Registrar of Trade Marks
IP Australia
PO box 200
WODEN ACT 2602
Attention Ms Joanne Rush
Fax (02) 6283 2978
Email Joanne.Rush@ipaustralia.gov.au
Enquiries: phone Joanne Rush (02) 6283-2972 or Michael Arblaster (02) 6283 2779

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OFFICIAL NOTICE
7 of 2002
Response Times of IP Australia's Systems

8 August 2002

As foreshadowed in earlier Official Notices, IP Australia is in the process of implementing its new patent business model and new supporting systems to move to the electronic filing and processing of patent applications through the New Patent Solution (NPS) project.

Release 2.1 is a crucial stage of the New Patent Solution (NPS) project. One of the features of Release 2.1 involves the migration of data from the Patent Administration system (Patadmin) to the NPS system.

From Thursday 8 August 2002 and over the weekend, Patadmin access will need to be suspended. During this time, extensive use of the mainframe computer will occur to retrieve data to migrate into the NPS system. Therefore users may experience a noticeable decline in response times of other IP Australia mainframe systems such as TMARK, ATMOSS and DESADMIN.

IP Australia apologises for any inconvenience caused to its customers.

For further information please contact the Customer Support Centre on 02 6283 2999.

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Official Notice
6 of 2002

Fee Regulations Under the Patent, Trade Marks and Designs Acts Made 4 July 2002

26 July 2002

The Intellectual Property Legislation (Fees) Amendment Regulations 2002 were made by the Governor-General on Thursday 4 July 2002.

The Regulations amend the Patents, Trade Marks and Designs Regulations to provide for changes to the amounts and structures of fees for various transactions with the Patent, Trade Marks and Designs Offices.

Preliminary information about these fees was provided to customers in Official Notices during June 2002.

The Fee Amendment Regulations will commence on 1 September 2002, and their final form is attached to this Notice.

Information about transitional arrangements under the Patents Act has been published in a Notice in the Australian Official Journal of Patents. There are no transitional arrangements required in relation to the Trade Mark and Designs fee changes. The fee to be paid will be the fee due on the date of payment.

Please contact assist@ipaustralia.gov.au with any inquiries.

You can download the original document in PDF format below:

Intellectual Property Legislation Amendment Regulations 2002

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OFFICIAL NOTICE
5 of 2002
Trade Mark Applications reaching an impasse at the examination stage

20 June 2002

The Registrar of Trade Marks has reviewed practices seeking ways to increase the efficiency of processes and improve service to customers. This review has shown that, in some cases, examination of applications can become unduly protracted without any real prospect of the grounds for rejection being overcome. These instances involve customers in unnecessary costs and delays and absorb examiner resources. The Registrar considers this issue should be addressed in order to fulfil his obligations under the Act and to improve outcomes for trade mark owners.

As one of the mechanisms for dealing with this issue, the Registrar has delegated his power under subsection 33(3) of the Trade Marks Act 1995 to senior trade mark examiners who will utilise these provisions as part of examination practice. In appropriate circumstances examiners with this delegation will advise the applicant of their intention to reject an application, noting that the provisions of subsection 33(4) require that the applicant be given an opportunity to be heard. The circumstances in which this process will be applied will follow internal guidelines that include wide consultation with other senior staff.

The key features of this rejection process, which will commence on 1 July 2002, are:

• Decisions to reject under subsection 33(3) may be made at the examination stage.
• Decisions to reject will be made:
  - on the basis that correspondence between the applicant and the examiner has reached an impasse which is not likely to be overcome by additional submissions; and
  - only on grounds set out in Part 4, Division 2 of the Act; and
  - after appropriate consultation within TMO.
• An outline of the grounds for rejection, and why submissions have not been sufficient to overcome them, will be provided at the time the intention to reject is notified to the applicant.
• The applicant will be advised of the intention to reject and given an opportunity to be heard (subsection 33(4)).
• A two month period from notification of the intention to reject will be allowed in which applicants may seek a hearing or a decision on the written record or withdraw the application.
• If a hearing is requested, the matter will become the responsibility of the Hearings Section once the hearing fee has been paid. Any hearing will follow established hearings procedures.
• It remains the responsibility of the applicant to ensure the application does not lapse pending a hearing.
• If a hearing is not requested, or if requested and the hearing fee is not paid, the examiner will reject the application. The applicant will be advised of the rejection and of their right to appeal to the Federal Court under section 35.

Details of the process will be incorporated in the Trade Marks Manual of Practice and Procedure. For further information contact Harry Turner on 02 62832915 or by e-mail at: harry.turner@ipaustralia.gov.au

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OFFICIAL NOTICE
4 of 2002
Award of Costs

13 June 2002

As a result of the decision in Aussie Red Equipment Pty Ltd v Antsent Pty Limited [2001] FCA 1641, the Trade Marks Office has decided to review the procedure for dealing with costs where an opposition is resolved prior to the conduct of hearing.

Unless the TMO is provided with:

• a copy of terms of settlement which deal with the question of costs;
• written confirmation by both parties that while they have agreed that an award of costs should be made to one of the parties, they have been unable to agree on the amount to be awarded; or
• written submissions which set out exceptional circumstances which would justify an award of costs, including but not limited to the conduct, non-appearance or disappearance of the opposing party

the TMO may decline to make an award of costs.

Accordingly, parties are encouraged to ensure settlement agreements are confirmed in writing and deal with the question of costs.

If the terms of settlement or other documentation confirm that one party is to pay the other party's costs as agreed or taxed, the taxing in the matter may still be brought before a Trade Marks Office taxing officer in accordance with Regulation 21.13 and subject to regulation 21.12(3).

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OFFICIAL NOTICE
3 of 2002

Review of the Office Determination for the Classification of Goods and Services

07 June 2002

Section 32 of the Act allows the Registrar to decide on the correct classification of goods and services, particularly where the classification is not clearly covered by the Nice Classification. Office Determinations made in this process are available on the Office's mainframe computer database at the Search Classification Data on Goods and Services screen, along with the Nice Classification itself.

A review of these Determinations has been undertaken with the aim of bringing them into line with the 8th edition of the Nice Classification, and at the same time reviewing the accuracy and consistency of the Determinations and removing any unnecessary duplication. This review has now been competed, and it is anticipated the updated Determinations will be made available on the mainframe computer database from Wednesday 3 July 2002.

Users should notice the following changes resulting from the review:

• a reduction in the number of Determinations, most notably because of the deletion of duplications necessary for earlier, less flexible, search systems. (Users should always remember that the X search option gives the most thorough search result.)
• the transfer of Determinations to the new Nice classes 43-45 where necessary, and the addition of some new Determinations in these and other classes.
• the bringing of Determinations in classes 1-42 into line, where necessary, with changes in Nice since the Determinations were made.
• the deletion of terms not acceptable to the Office (for example "internet").
• the use of a limited number of "see" and "see also" references to assist users to locate entries (for example "internet: see the following terms in this and other classes: global computer network, on-line, web, portal").

For technical reasons it has not been possible to limit the introduction of these changes only to the 8th edition option of the Search Classification Data on Goods and Services screen, and the changes will appear under all three options, for Nice editions 6 and 7 as well as 8. As always, Nice entries take precedence over Determinations, and the updated Determinations will not be taken to apply to classification under the earlier editions of Nice where they are in conflict with these earlier editions.

As with the Office's policy on the introduction of the Nice 8th edition, retrospective changes will not be made to existing trade mark registrations, even where revisions to the Determinations have resulted in changes in classes for particular goods or services.

It is anticipated that the updated Office Determinations will also be included at a later date as part of the ATMOSS Classification search facility on the IP Australia website. At present this search facility only includes Nice Classification items.

If you have any questions regarding these changes, please contact Peter Dark on (02)6283 2998.

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OFFICIAL NOTICE
2 of 2002
Requirements for an application for removal for non-use
Trade Marks Act 1995 Section 92 - Regulation 9.1*

16 May 2002

This notice is a revision and update of a notice published on 26 April and 2 May 1996, to emphasise the importance of the standing of a non-use applicant as a person aggrieved and reiterate the minimum requirements for a declaration to support the filing of a non-use application.

Any person who is "aggrieved", that is adversely affected in a legal or business sense by the existence of a trade mark which is registered but not being used, may apply under s 92 of the Act to have the trade mark removed from the Register either completely or for particular goods or services for which it is not being used.

Before filing an application, the prospective applicant for removal should make an inquiry into the use of the trade mark, or have someone make that inquiry on their behalf. If that inquiry confirms that the trade mark is not, and perhaps has never been in use, there may be sufficient grounds for its removal.

If the trade mark has never been used by the applicant for registration there may be a ground for removal under s 92(4) (a) of the Act. If the registered owner has not used the trade mark for a period of three years ending one month before the day on which the removal application is filed there will be a ground under s 92(4) (b) (this is the ground most commonly relied on). In some cases both grounds may apply.

An application for removal must be filed together with a declaration which meets the requirements of reg. 9.1 of the Trade Marks Regulations 1995 by:

• stating that an inquiry into the use of the trade marks in respect of the goods/services specified in the removal application has been made by or on behalf of the applicant, and
• setting out the findings of the enquiry that support the ground or grounds relied on in the application. This may be a simple statement to the effect that the inquiry has revealed no use of the trade mark or no use during the relevant period.

For example, if both the grounds in subsection 92(4) are relied on, a declaration along the following lines will satisfy the requirements of reg 9.1.

I have conducted an investigation (on behalf of the applicant - if this is appropriate) into the use of the trade mark in respect of the goods/services specified in the application and the investigation has revealed that:

(a) on the day the application for registration was filed, the applicant for registration had no intention in good faith to use the trade mark in Australia or to authorise the use of the trade mark in Australia; and the applicant for registration has not used the trade mark in good faith in Australia; and

(b) during the 3 years ending one month before the day this removal application was filed, the registered owner did not use the trade mark in Australia, or did not use the trade mark in good faith in Australia.

Note, however, that the removal application may be opposed. In that case the applicant for removal may be required to demonstrate their status as an "aggrieved" person, and may deal with this issue in the evidence in answer to the opposition. This option is open if there is evidence in support, but not otherwise.

Please see Part 49 of the Trade Marks Office Manual of Practice and Procedure for more information on the formality and processing requirements of a non use removal application.

* This notice also applies to applications for cessation of protection for non-use of protected international trade marks. Such applications are made under subregulation 17A48(1) or (2), not under s 92. Once made, the provisions of Part 9 of the Act (including the grounds for removal set out in s 92) and Part 9 of the regulations apply. See also subregulations 17A48(3) - (6).

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OFFICIAL NOTICE
1 of 2002
Opposition to International Registrations Designating Australia

3 April 2002

The purpose of this notice is to draw some important points to the attention of potential opponents to International Registrations Designating Australia (IRDAs), under the Madrid Protocol.

1. Opponents are not required to serve some documents on owners of IRDAs

• The Trade Marks Regulations DO NOT require an opponent to serve either a notice of opposition, or an extension of time for filing notice of opposition, on the owner of an IRDA (see regulations 17A.29 and 17A.30).
  
  
• Instead, the documents will be forwarded to the owner by the Trade Marks Office, directly in the case of an application for extension of time to file notice of opposition, and through the International Bureau in the case of a notice of opposition.
  
  
• Service of documents upon the applicant by the opponent will only become necessary after the notice of opposition has been filed, and once the owner provides the Office with an address for service in Australia (see below).

2. When an IRDA is opposed, its owner must provide an address for service in Australia. An opponent is not required to serve evidence in support unless this is provided

• The owner of an IRDA, who has not been required to provide an address for service in Australia during examination, and who wishes to contest an opposition against the IRDA MUST, within 3 months of the notice of opposition being filed, give the Registrar written notice of an address for service in Australia (see subregulation 17A.33(3)). The Trade Marks Office, through the International Bureau, will notify the owner of this requirement.
  
  
• If the owner has not given notice of an address for service in Australia, the notice acknowledging receipt of the notice of opposition issued by the Trade Marks Office to the opponent will show the International Bureau in Geneva Switzerland as the owner's address for service. The Trade Marks Office is working on a system change to delete the International Bureau's address from the relevant standard notices.
  
  
• The address of the International Bureau is NOT the owner's address for service for the purposes of subregulation 17A.33(3). An opponent is not required to serve documents on the owner unless and until the requirements of the regulations have been met, that is, until an address for service in Australia has been nominated.
  

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