Early in 2019, IP Australia sought public comment on the exposure draft of regulations to amend the Trade Marks Regulations 1995 to allow division of International Registrations Designating Australia (“division of IRDAs”). That consultation is detailed below.
Noting that there is currently no international requirement to make this change now, IP Australia is not intending to seek the making of the amending regulations in the near future. We consider that it would be better to consider the issue of division of IRDAs as part of a broader holistic consideration of trade mark timeframes which we propose to conduct in the future.
We will continue to keep stakeholders informed on any activities concerning the division of IRDAs.
Consultation on the exposure draft regulations
From 17 January to 1 March 2019, IP Australia sought public comment on the exposure draft of the Trade Marks Amendment (Division of International Registrations and Other Measures) Regulations 2019. These draft regulations were proposed to amend the Trade Marks Regulations 1995 to:
- Provide for the division of IRDAs
- Update or make clearer several references to international arrangements concerning protection of trade marks.
One submission was made to the consultation. The submission from the Law Council of Australia’s Business Law Section expressed support for the exposure draft regulations, in particular those for divisional IRDAs.
What the exposure draft regulations were proposed to do
The draft regulations would allow overseas businesses using the Madrid Protocol system for the international registration of trade marks to divide their IRDAs in a similar way to how those businesses can now file divisional applications for registration of their trade marks.
There would be some differences, owing to how the Madrid Protocol system works.
A holder of any IRDA that is pending (i.e. has not yet become a protected international trade mark, or has not been finally rejected or refused) could file a request to IP Australia to divide that IRDA. The divisional IRDA would have the same priority date and date of effect as its parent IRDA.
The proposed method of creating a divisional IRDA is:
- The holder of a pending IRDA would be able to request division of the IRDA by filing a request for its division at IP Australia, and paying our fee.
- We would check that the request complies with the Australian requirements for divisional applications (e.g. that the goods or services would be split between the parent IRDA and the divisional IRDA).
- If the request does not meet Australian requirements, the holder will be given an opportunity to correct the problems.
- If the request is OK, IP Australia would send the request to the International Bureau of the World Intellectual Property Organisation (“International Bureau”).
- The holder must also pay a recording fee to the International Bureau through the International Bureau’s payment portal.
- The International Bureau would then create the divisional international registration and notify IP Australia of this.
- We would treat the notification of the divisional international registration as notification of a new IRDA.
Once the divisional IRDA is created, we would examine and report to the holder on it. The holder would have 15 months from the date of the examination report on the divisional IRDA for it to be accepted.
The draft regulations would also include minor and technical amendments: to correct an error of reference; to make the provisions of the Trade Marks Regulations clearer and more compliant with modern drafting practice; and, in February 2020, to reflect changes in the name of an international instrument made under the Madrid Protocol.
The draft regulations would not change how Australian or overseas businesses could file direct applications for registration of trade marks, or how IP Australia would handle those applications.
Draft regulations and explanatory statement
IP Australia has previously consulted on reforms to the trade marks divisional system in Australia, as part of a wider package of reforms. Details of the consultation and IP Australia’s response to the submissions received can be found on the webpage Public consultation on several Intellectual Property (IP) matters.
As indicated in that response, the current proposal is to amend the Trade Marks Regulations to implement IRDA divisionals so that they are examined in the same way and timeframe as divisional applications for Australian registration. The amendments will not change how divisional applications for Australian registration are treated.
Ph: (02) 6283 2145