Trade Marks Manual of Practice and Procedure - 30/9/2015

To be published in the Australian Official Journal of Trade Marks on 02/10/2015.

Reviewed without change to Part 21, 33 and 61

Updates of Part 1, 8, 9, 22, 24, 26, 29, 30, 31, 32A, 32B, 34, 39, 42, 43, 44 and 47

Update of Part 1: Introduction, Examination Quality Standards

Part 1 has been updated with changes to 2. Examination Quality Standards - PQS Review:

  • Amendment to: PQS 2.1, 2.2, 3.1, 4.1 to cover discontinued TMH requests. 
  • 6.1.2 and 6.2.6- cover further exam requirements. 
  • 6.2.3 is separated into two new attributes- 6.2.3.1, 6.2.3.2 
  • Deletion of 6.2.4.3. 
  • Printable version updated.

Review and update of Part 8: Amalgamation (Linking) of Trade Marks

Part 8 has been reviewed with changes made to clarify the addition of endorsements for single classes on Parent applications and removal of requirements to return old registration certificates to IP Australia following the introduction of eServices.

Review and update of Part 9:

Amendments and Changes to Name and Address Part 9 has been reviewed with minor changes and clarifications surrounding requests for amendments.

Review of Part 21: Non-Traditional Signs

Part 21 has been reviewed with no changes made; effective date updated.

Update of Part 22: Section 41 - Capable of Distinguishing

Part 22 has been updated to include clarification regarding Inherent Adaptation to Distinguish, words in languages other than English, My trade marks and images of persons; Section 8. Letters - updated unclear references to 'composite' marks.

Review and update of Part 24: Disclaimers

Part 24 has been reviewed with changes made to clarify the effect of disclaimers on amendments to the representation of a trade mark.

Review and update of Part 26: Section 44 and Regulation 4.15A - Conflict with other Signs

Part 26 has been reviewed with minor changes to correct references to case law, correct typographical and grammatical errors, add an example of retailing services in the 10th edition of the Nice Classification and to provide additional examples of factors to consider when comparing trade marks; Changes to Table Classes 32 and 33.

Update of Part 29: Trade Marks Likely to Deceive or Cause Confusion

Part 29 has been updated to include information on generic top level domain names, clarify potential claims which may give rise to a s43 involving INNs and to clarify the requirements for demonstrating ownership or authorised use of a domain name.

Update of Part 30: Signs that are Scandalous and Contrary to Law

Part 30 has been updated to include reference to the Torres Strait Islander flag and information regarding specific consents and exemptions applicable to ADIs. Update of Part 31: Prescribed and Prohibited Signs Part 31 has been updated to clarify examination practice in relation to the Australian flag and to provide examples for guidance.

Review and update of Part 32A: Examination of Trade Marks for Plants (in Class 31)

Part 32A has been reviewed with significant updates made including examples of how s41 and s43 apply to plant examination and guidance on how to overcome grounds for rejection.

Update of Part 32B: Examination of Trade Marks for Wine (in Class 33)

Part 32B has been updated to delete the table - Reference Part 26.

Review of Part 33: Collective Trade Marks

Part 33 has been reviewed with no changes made; effective date updated

Review and update of Part 34: Defensive Trade Marks

Part 34 has been reviewed and updates made regarding information on evidence.

Review and update of Part 39: Registration of a Trade Mark

Part 39 has been reviewed and changes made to format of certificate of registration; registration process clarified.

Review and update of Part 42: Rectification of the Register

Part 42 has been reviewed with minor changes clarifying administration of rectification actions and advertisement and cancellation processes.

Update of Part 43: Assignment and Transmission

Part 43 has been reviewed with changes clarifying form requirements and prescribed documents as well as processes for full and partial assignments.

Review and update of Part 44: Claim of Interest or Rights in a Trade Mark

Part 44 has been reviewed with minor changes made to cancellation processes and clarification of timing for recording interest.

Update of Part 47: Procedures for Opposing an Application for Registration

Part 9 has been updated with minor change to paragraph on S58A to clarify when this ground is available

Review of Part 61: Availability of Documents

 Part 61 has been reviewed with no changes made; effective date updated

Queries:

For more information contact us to speak to Chrissie Norman in our Trade Marks and Designs Section.

To be published in the Australian Official Journal of Trade Marks on 02/10/2015.

Publish online date: 
Wednesday, September 30, 2015