Trade Marks Manual of Practice and Procedure - 14/12/2015

To be published in the Australian Official Journal of Trade Marks on 17/12/2015

Reviewed without change to Part 20

Review/updates to Part 11, 13, 15, 16, 18, 32b, 34, 38, 39, 46, 47, 49, 51, 52, 55 and 60

Update of Part 11: Convention Applications

Part 11 has been updated with changes made to the reference at 11.4.2 to reflect the new heading of Part 47.

Review of Part 13: Application to Register a Series of Trade Marks

Part 13 has been reviewed with changes made to add 10. Colour Endorsements.

Review of Part 15: General Provision for Extensions of Time

Part 15 has been reviewed and renamed to General Provision for Extensions of Time. Minor reformatting of content was also undertaken. Content regarding response to exam report within 4 weeks of lapsing has been moved to Part 16; the references at 15.1 and 15.2.1.2 have been updated to reflect the new heading of Part 47.

Review of Part 16: Time Limits for Acceptance of an Application for Registration

Part 16 has been reviewed and minor changes made; content regarding response to exam report within 4 weeks of lapsing has been moved from Part 15; the reference at 16.1.5 have been updated to reflect the new heading of Part 15

Update of Part 18: Finalisation of Application for Registration

Part 18 has been updated with 18.3 Guidelines for Early Finalisation removed as no longer relevant; the reference at 18.1.1 have been updated to reflect new heading of Part 47.

Review of Part 20: Definition of a Trade Mark and Presumption of Registrability

Part 20 has been reviewed with no changes made.

Update of Part 32b: Examination of Trade Marks for Wines (in Class 33)

Part 32b has been updated to include clarification on similarity between ciders, beers and wines.

Update of Part 34: Defensive Trade Marks

Part 34 has been updated with changes made to the reference at 34.9 to reflect the new heading of Part 46.

Review of Part 38: Revocation of Acceptance

Part 38 has been reviewed with a minor change to correct IRDA terminology.

Update of Part 39: Registration of a Trade Mark

Part 39 has been updated with changes made to the reference at 39.4.1 to reflect the new heading of Part 15.

Review and update of Part 46: Grounds for Opposition to Registration or Protection

Part 46 has been reviewed and renamed to Grounds for Opposition to Registration and Protection; minor changes have been made to the formatting with the inclusion of the term protection and the references at 46.1 and 46.3 have been updated to reflect the new heading of Part 47.

Review and update of Part 47: Procedures for Opposing Registration or Protection

Part 47 has been reviewed and renamed to Procedures for Opposing Registration or Protection and changes made to the reference at 47.3.3 to reflect the new heading of Part 15.

Review and update of Part 49: Non-use Procedures

Part 49 has been reviewed and general reformatting of wording undertaken with changes made to the references at 49.2.3.1 and 49.2.3.6 to reflect the new heading of Part 47.

Review and update of Part 51: General Opposition Proceedings

Part 51 has been reviewed and minor changes made; manual part was amended to part for consistency, and changes made to the reference at 51.6.3 to reflect the new heading of Part 47; with the following new sections added:

  • 2.2.5 clarifies what happens if an extension of time to file evidence is refused
  • 2.2.6 states the Registrar's practice with respect to evidence filed out of time

Update of Part 52: Hearings, Decisions, Reasons and Appeals

Part 52 has been updated with changes made to the reference at 52.2.3 to reflect the new heading of Part 15.

Update of Part 55: Costs

Part 52 has been updated with changes made to the reference at 55.3.4 to reflect the new heading of Part 15.

Update of Part 60: The Madrid Protocol

Part 52 has been updated with changes made to the reference at 60.4.12.1 to reflect the new heading of Part 15, and references at 60.4.16.1 and 60.4.17.2 to reflect the new heading of Part 47.

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

Publish online date: 
Monday, December 14, 2015