The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (IP Amendment Act) amends the Trade Marks Act to allow the Registrar, by way of non-legislative instruments, to:
- determine the means for filing a document with the Trade Marks Office,
- give a direction specifying the form in which a document is to be filed,
- give a direction in relation to the filing of evidence in connection with a matter arising under the Trade Marks Act, and
- determine the means for paying a fee.
Moving the requirements to non-legislative instruments provides flexibility to adopt more efficient processes as they become available.
IP Australia has published three instruments in the Official Journal of Trade Marks in preparation for their commencement. They set out the requirements in relation to:
- the approved and preferred means of paying fees:
- the means and form of filing documents:
- the means and form of filing evidence and opposition documents:
The instruments do not substantially change the requirements that presently apply in relation to these matters.
These instruments will commence at the same time as the corresponding parts in the IP Amendment Act, which will be on 24 February 2019, unless proclaimed to commence earlier.
The Manual of Practice and Procedure and the Objective Connect User Guide are being updated to reflect these changes. Users are encouraged to consult the Manual and the Guide if they are uncertain what requirements apply to their situation.
Direction on the way evidence is submitted to IP Australia in trade mark opposition matters
Please note that with regard to the ‘direction on the way evidence is submitted to IP Australia in trade mark opposition matters’, which was published in the Trade Marks Journal on 13 July 2017, parties in opposition matters will no longer be notified of this direction after the commencement of the Trade Marks (Means and Form of Filing Documents and Evidence) (Opposition and Other Proceedings) Instrument 2019.