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2022-2023
THE PARLIAMENT OF THE COMMONWEALTH OF AUSTRALIA
HOUSE OF REPRESENTATIVES
INTELLECTUAL PROPERTY LAWS AMENDMENT (REGULATOR
PERFORMANCE) BILL 2023
EXPLANATORY MEMORANDUM
(Circulated by authority of the
Minister for Industry and Science, the Hon Ed Husic MP)
INTELLECTUAL PROPERTY LAWS AMENDMENT (REGULATOR
PERFORMANCE) BILL
BACKGROUND
The objective of the intellectual property (IP) rights system is to support innovation and help
Australian businesses benefit from good ideas. The Australian Government proposes
improvements to Australia's IP laws to better meet these objectives.
Australia has been selected to host the upcoming 2032 Olympic Games in Brisbane. It is
necessary to remove loopholes in the legislation dealing with use of Olympic insignia. These
amendments will clarify that only the Australian Olympic Committee (AOC) and
International Olympic Committee (IOC) are permitted to register Olympic insignia as trade
marks in Australia.
The Bill also makes some technical improvements to Australia's IP rights system to
streamline use of the system, correct minor inconsistencies and reduce legal uncertainty.
These improvements were identified by IP Australia (which regulates much of Australia's IP
system) as part of a 2021 whole-of-government review of regulator performance.
This Bill gives effect to these technical improvements.
OUTLINE
The purpose of the Intellectual Property Regulator Performance Bill 2023 (the Bill) is to
make improvements to Australia's IP system to ensure existing legislation meets its intended
policy objectives. It will increase certainty, correct minor inconsistencies and enable users to
engage with IP in a modern and flexible way.
The Bill's proposed amendments to the Olympic Insignia Protection Act 1987 (OIP Act), the
Trade Marks Act 1995 (Trade Marks Act) and the Patents Act 1990 (Patents Act) are divided
into the following 6 parts:
• Part 1 - Trade marks that contain, or consist of, olympic motto etc.
• Part 2 - Renewal of registration
• Part 3 - Revocation of registration
• Part 4 - Restoration of trade marks to the Register
• Part 5 - Official Journal etc.
• Part 6 - Spent provisions
Part 1: Trade marks that contain, or consist of, olympic motto etc.
This Part clarifies some legal uncertainties regarding the protection of certain expressions
denoting a connection with the world Olympic movement (Olympic insignia). It amends the
OIP Act to clarify that only the AOC and IOC are permitted to register Olympic insignia as
trade marks in Australia. The amendments will also provide clearer authority for the
government to reject trade mark applications not made by the AOC or IOC.
Olympic insignia may be subject to speculative bad-faith trade mark application filings years
in advance of an Olympic event. Strengthening protection of Olympic insignia now will
support Australia as it prepares to host the 2032 Brisbane Olympic Games.
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Part 2: Renewal of registration
This Part will address inconsistencies in the Trade Marks Act and simplify the administration
of trade mark renewals. The Trade Marks Act and regulations currently provide different
grace period timeframes for renewal of trade mark registrations, with a longer grace period of
10 months provided where registration has been delayed for more than 10 years from the date
of filing of the trade mark.
The amendments will align grace periods for payment of a fee for renewal of a trade mark
registration to a consistent 6-month duration, whether registration of a trade mark application
is delayed or not.
Part 3: Revocation of registration
This Part will simplify and clarify provisions dealing with revocation of the registration of a
trade mark where a component of a notice of opposition to registration of that trade mark has
been overlooked.
The amendments correct an oversight and better align the provisions for revoking registration
in those circumstances with other current oppositions processes. This will meet the intention
of the revocation provisions and ensure revocations are treated consistently.
Part 4: Restoration of trade marks to the Register
This Part will correct a gap in the current legislation to allow for the extensions of time
provisions to operate effectively during non-use removal applications.
This amendment will permit restoration of a trade mark to the Register of Trade Marks if an
extension of time is obtained to file evidence in support of an opposition to trade mark
removal.
Part 5: Official Journal etc.
This Part will remove all references to the Official Journal of Trade Marks in the Trade
Marks Act. It will replace terms related to the Official Journal such as 'advertise' and
'advertising' with format-neutral terminology.
This amendment will give the Registrar of Trade Marks discretion to communicate trade
mark decisions in a way that responds to changing technologies and customer behaviour. This
includes being able to publish trade mark decisions through the online search portal, the
Australian Trade Mark Search, which is available to the public through IP Australia's
website.
Part 6: Spent provisions
This Part will repeal the transitional and savings provision in the Patents Act that have had no
effect from February 2022. This proposal is machinery in nature with no impact on
administration of Australia's patent system.
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FINANCIAL IMPACT
The Bill has no financial impact.
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STATEMENT OF COMPATIBILITY WITH HUMAN RIGHTS
Prepared in accordance with Part 3 of the Human Rights (Parliamentary Scrutiny) Act 2011
Intellectual Property Laws Amendment (Regulator Performance) Bill 2023
This Bill is compatible with the human rights and freedoms recognised or declared in the
international instruments listed in section 3 of the Human Rights (Parliamentary Scrutiny)
Act 2011.
Overview of the Bill
The Intellectual Property Laws Amendment (Regulator Performance) Bill 2023 will amend
or repeal several provisions across Commonwealth legislation, being the Olympic Insignia
Protection Act 1987 (OIP), the Trade Marks Act 1995 and the Patents Act 1990.
The Bill contains amendments that will support administration of the IP rights system by
• providing greater legal certainty to users of the IP system, including around the use
and registration of trade mark registrations containing Olympic insignia
• increasing procedural fairness
• enabling the government to engage with users of Australia's IP system in a modern
and flexible way.
The Bill makes the following amendments:
OIP Act
Part 1: Trade marks that contain, or consist of, olympic motto etc.
• This Part clarifies that only the Australian Olympic Committee (AOC) and
International Olympic Committee (IOC) are permitted to register Olympic insignia as
trade marks in Australia. The amendments will also provide clearer authority for the
government to reject trade mark applications not applied for by the AOC or IOC.
TRADE MARKS ACT 1995
Part 2: Renewal of registration
• This Part harmonises minor inconsistencies contained within trade mark renewal
grace period provisions.
Part 3: Revocation of Registration
• This Part makes amendments to require that the registration of a trade mark be
revoked in circumstances where a component of a notice of opposition to registration
of the trade mark by a third party was overlooked by IP Australia during the
registration process.
Part 4: Restoration of trade marks to the Register
• This Part makes amendments to allow, in specific circumstances, for a trade mark
registration to be restored onto the Trade Marks Register when it had been removed as
part of a non-use action.
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Part 5: Official Journal etc.
• This Part removes direct references to the Official Journal of Trade Marks, so that the
format the government uses to communicate trade mark decisions is not prescriptive
and can respond to changing technologies and customer behaviour.
PATENTS ACT 1990
Part 6: Spent provisions
• This Part will repeal the transitional and savings provision in the Patents Act 1990
that have had no effect from February 2022. This proposal is machinery in nature with
no impact on administration of Australia's patent system.
Human rights implications
The amendments in this Bill do not engage any applicable human rights or freedoms.
The objective of the amendments in this Bill is to provide greater legal certainty, improve
procedural fairness and simplify the IP rights system. The amendments make procedural
and/or machinery adjustments to the IP rights system administered by IP Australia.
Conclusion
The Bill is compatible with human rights because it does not engage any applicable human
rights or freedoms.
The Hon Ed Husic MP, Minister for Industry & Science
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NOTES ON CLAUSES
Preliminary
Item 1 - Short title
1. Upon enactment, the Bill will be known as the Intellectual Property Laws
Amendment (Regulator Performance) Act 2023.
Item 2 - Commencement
2. This item provides for the commencement of each provision in the Bill, as set out in
the table.
3. Parts 1, 3 and 6 will commence the day after the Bill receives the Royal Assent. This
allows the beneficial effect of the provisions to come into effect as soon as possible, given
there are no contingencies (such as regulations that are required to be made).
4. Part 2 will commence after the end of a period of 6 months beginning on the day the
Bill receives the Royal Assent. This is to allow time for accompanying regulations to be
made and come into effect.
5. Parts 4 and 5 will commence on a day or days to be fixed by Proclamation. However,
if the provisions do not commence within a period of 6 months beginning on the day the Bill
receives the Royal Assent, they will commence on the day after the end of that period. This is
to allow time for accompanying regulations to be drafted and for IP Australia's internal
systems to be updated to accommodate these changes.
Item 3 - Parts
6. This item provides that an Act that is specified in a Schedule is amended or repealed
as set out in that Schedule and any other Item in a Schedule operates according to its terms.
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Schedule 1
Part 1 - Trade marks that contain, or consist of, olympic motto etc.
7. This Part makes changes to the Olympic Insignia Protection Act 1987 (the OIP Act) to
make clear that the International Olympic Committee (IOC) and the Australian Olympic
Committee (AOC) can register their own insignia as trade marks, and to provide clearer
authority for the rejection of applications to register trade marks not made by these bodies.
8. This will ensure the OIP Act achieves its intended purposes, one of which is to permit
the registration of Olympic insignia trade marks by the AOC and IOC, while preventing
registration and unauthorised use of such trade marks.
9. Currently, Chapter 2 of the OIP Act provides protection for certain Olympic insignia
such as the Olympic motto and the Olympic symbol. Section 19 currently provides that trade
marks containing these Olympic insignia cannot be registered.
10. The existing section 19 has created uncertainty around whether the IOC and AOC can
obtain trade mark registration of Olympic insignia.
11. Further, the existing section 19, which prevents registration of a trade mark, also
creates a conflict with the Trade Marks Act, which requires registration of trade marks unless
a ground for rejection or opposition is established. The Trade Marks Act provides grounds for
rejecting a trade mark only if its use would be contrary to law, but the OIP Act prevents
registration of trade marks containing relevant Olympic insignia, not their use. The intention
of the amendment is to provide a more explicit ground for rejecting a trade mark during
examination or opposition if it contains relevant Olympic insignia where the applicant is not
the AOC or the IOC.
Olympic Insignia Protection Act 1987
Item 4 - Section 1A
12. This item amends the simplified outline of Chapter 2 of the OIP Act to reflect the
changes made by this Part.
Item 5 - Subsection 2(1)
13. This item amends section 2 to provide additional definitions for the purpose of
Chapter 2.
14. The item adds a definition of protected trade mark, which is used in new section 19 to
determine which trade marks' use and therefore registration would be contrary to law (if not
owned by the IOC or AOC). For the purposes of the OIP Act, protected trade marks include
those containing, or consisting of, certain signs: the Olympic motto, the Olympic symbol, the
prescribed artistic work of an Olympic torch and flame (if any), and artistic works in relation
to which designs have been registered under the OIP Act.
15. Protected trade marks also include trade marks containing, or consisting of, signs that
so nearly resemble one of the above signs as to be likely to taken for it.
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16. The definition of protected trade mark covers a very similar range of trade marks to
those whose registration was prohibited by the existing section 19, but with wording adjusted
to align with the Trade Marks Act's concept of "sign" and "trade mark".
17. The item provides a definition for the IOC in Chapter 2 that is the same as that
already in Chapter 3. It also provides definitions for sign and trade mark. These definitions
align the wording of the OIP Act with that of the Trade Marks Act.
Item 6 - Section 19
18. This item repeals and replaces section 19. The new section provides that, for the
purposes of the contrary to law provisions in paragraph 42(b) of the Trade Marks Act, use of
a "protected trade mark" is taken to be contrary to law. The definition of "protected trade
mark" is added to section 2 by the preceding item, and would cover, for example, a trade
mark containing or closely resembling the Olympic motto.
19. However, the new section also provides a clear exception where the owner of the
trade mark is the AOC or the IOC. Use by these persons is not deemed contrary to law.
20. This provision provides no exception for a person authorised to use Olympic insignia.
While the AOC or IOC may authorise the use of Olympic insignia, authorised users are not
permitted to register a trade mark containing Olympic insignia.
21. In practice, this means that if a party other than the AOC or IOC applies for a
protected trade mark, the Registrar of Trade Marks (the Registrar) or their delegate will be
required to raise a ground for rejection under paragraph 42(b) of the Trade Marks Act in the
course of examination.
22. On the other hand, if the person is the AOC or the IOC, the ground for rejection will
clearly not apply, and the trade mark can proceed to acceptance and registration (subject to
the other provisions of the Trade Marks Act).
Item 7 - Application provision
23. This item provides for the circumstances in which the amendments in this Part apply.
24. Paragraph (1)(a) provides that the provisions apply to trade mark applications which
have a filing date after the commencement of this item.
25. Paragraph (1)(b) provides for the circumstances in which these provisions apply to
international registrations designating Australia (IRDAs). An IRDA is a "request made under
Article 3ter(1) or (2) of the [Madrid] Protocol for extension to Australia of the protection
resulting from the international registration of a mark".
26. The provisions of this Part will apply to IRDAs as follows:
• For an IRDA that is a request under Article 3ter(1) of the Madrid Protocol, the
provisions of this Part will apply if the IRDA has a date of international registration
after commencement of this item.
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• For an IRDA that is a request under Article 3ter(2) of the Madrid Protocol, the
provisions of this Part will apply if the IRDA has a date of recording after
commencement of this item.
27. Sub-item (2) applies the definitions in Part 17A of the Trade Mark Regulations 1995
("Regulations") for "IRDA", "date of international registration" and "date of recording" to
this item. These definitions are found in regulation 17A.2.
Part 2 --Renewal of registration
28. This Part amends the Trade Marks Act to align grace periods for renewal of a trade
mark registration (involving payment of a fee) to a consistent 6 month duration.
29. Once a trade mark is registered, trade mark rights generally have effect from the filing
or priority date, whichever is earlier. The duration of protection is 10 years from the filing
date, after which renewal is required to maintain the registration.
30. Trade mark registrations can be renewed every 10 years. If a trade mark is not
renewed before the end of its 10 year term, there is a 6 month "grace period" in which the
trade mark can be renewed for an extra fee. These renewals are handled under Division 2 of
Part 7 of the Trade Marks Act.
31. In some cases, registration of a trade mark application can be delayed for more than
10 years from the date of filing of the trade mark. In those cases, the rights of registration
date back to the filing or priority date more than 10 years earlier meaning it is effectively
"overdue" for renewal. For those trade marks, Division 3 of Part 7 of the Trade Marks Act
provides for payment of renewal fees. The grace period for renewal in these cases is currently
10 months.
32. Nearly all trade mark applications are registered well in advance of the 10 year
anniversary of their filing. However, exceptionally, some trade marks are still not yet
registered (or "pending") 10 years after filing. As of May 2023, only 20 of 72,000 total
pending applications were filed more than 10 years ago.
33. The difference in grace periods and the additional 4 months for these few cases is not
necessary. The intention of this amendment is to provide a consistent 6 month grace period
for all trade mark registrations.
Trade Marks Act 1995
Items 8-10 - Paragraph 80F(b), section 80G (heading) and paragraph 80G(1)(b)
34. These items amend the relevant provisions of the Act to provide for a new grace
period of 6 months for the late payment of a renewal fee where a registration has been
delayed for more than 10 years. This replaces the previous 10 month grace period for this
payment.
Item 11 - Subsection 128(2)
35. This item amends subsection 128(2), as a consequence of the change to the length of
the grace period available under section 80G. Currently, subsection 128(2) prevents the
bringing of an action for infringement of a trade mark if the infringement occurred after
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expiry of a trade mark, but before its renewal in the "10 month" period available under
section 80G. As the grace period is now 6 months, this item adjusts the wording of the
subsection.
Item 12 - Application provision
36. This item provides for the circumstances in which the amendments in this Part apply.
37. The provisions apply in respect of trade marks which are entered on the Register
(under section 69 of the Trade Marks Act) after commencement of this Part.
38. However, the previous provisions will apply to trade marks that were entered on the
Register before the commencement of this item.
Part 3 --Revocation of registration
39. This Part amends the Trade Marks Act to update provisions relating to revoking
registration of a trade mark when a third party has taken steps to start an opposition, but the
steps have been overlooked.
40. If the trade mark is not opposed, or if an opposition is not processed in a timely
fashion, the trade mark application proceeds to registration.
41. Trade mark oppositions start with the filing of a notice of opposition. The Trade
Marks Act allows the Regulations to prescribe that notices of opposition are filed in multiple
components or "steps". The Regulations currently require a two-step process for filing
notices of opposition.
42. On rare occasions, the Registrar may fail to realise a component of a notice of
opposition has been filed, and register the trade mark. Currently, section 84B of the Trade
Marks Act partially addresses this situation, by requiring that a registration of a trade mark
must be revoked if an opposition (or extension of time for opposition) to registration was
filed within the prescribed timeframe, but has not been taken account of, so long as the
Registrar becomes aware of that failure within one month of the date of registration.
43. This section aims to provide procedural fairness to opponents, whose timely filed
documents should prevent registration until the opposition could be properly considered.
44. However, currently section 84B requires all components of the notice of opposition to
be filed before revocation, when if any component of the notice is filed, fairness requires that
registration should not occur. If any component is filed but disregarded, the registration
should be revoked.
45. This Part therefore amends section 84B so that failing to take into account any
component of a notice of opposition (or an application to extend time to file such a
component) will trigger a revocation of registration.
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Trade Marks Act 1995
Item 15 - Subparagraphs 84B(a)(i) and (ii)
46. This item amends subparagraph 84B(a)(i), so that revocation of registration of a trade
mark is triggered by the filing of a component of a notice of opposition, rather than requiring
a notice of opposition in its entirety.
47. This item also amends subparagraph 84B(a)(ii), so that revocation of registration of a
trade mark is triggered by the filing of an application to extend time to file a component of a
notice of opposition, rather than just by an application for extension of time for a notice of
opposition.
Item 16 - Paragraph 84B(b)
48. This item amends paragraph 84B(b), so that revocation is triggered by the Registrar's
failure to take into account a component of a notice of opposition or an application to extend
the time to file any such component, rather than by failing to take into account the opposition
or application to extend the time to file the opposition, in its entirety.
Item 17 - Application provision
49. This item provides for the circumstances in which the amendments in this Part apply.
50. The provisions apply in respect of trade marks which are entered on the Register
(under section 69 of the Trade Marks Act) after commencement of this item.
Part 4 --Restoration of trade mark to Register
51. This Part amends the Trade Marks Act to permit the restoration of a trade mark to
registered status if an extension of time (EOT) is obtained to file evidence (or take other
prescribed steps) in an opposition to removal of the trade mark registration for non-use.
52. Under the Trade Marks Act, trade mark registrations that have not been used for a
certain period (as specified by the Act), or for which there was no intention to use, may be
removed from the Register through the filing of a non-use removal application.
53. A non-use removal application may be opposed - typically by the owner of the trade
mark. After the notice of opposition is filed, the opposition proceedings before the Registrar
are dealt with according to the Regulations.
54. A failure by the opponent to take steps required by the Regulations in the timeframes
allowed can lead to the trade mark being removed from the Register.
55. The opponent can request an EOT to extend the time periods for taking these steps in
appropriate circumstances. However, in some cases the trade mark might have already been
removed, and it cannot be restored to the Register.
56. Existing section 98 of the Trade Marks Act does allow restoration after grant of an
EOT for the filing of a notice of opposition to the removal, but not after an EOT for other
prescribed steps required by the Regulations, including filing evidence or requesting a
hearing.
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57. This could be unfair to the opponent to the non-use removal, particularly where there
are compelling circumstances justifying a grant of the EOT.
58. This amendment will require restoration of a trade mark if an EOT is granted to take a
prescribed step in an opposition to a non-use removal, and the step is taken within the
extended period.
Trade Marks Act 1995
Item 18 - Section 98 (heading)
59. This item amends the heading of section 98, to reflect the greater range of
circumstances in which restoration of a trade mark may occur.
Item 19 - Section 98
60. This item inserts the number (1) in front of the existing provision providing for
restoration, due to the addition of subsection (2) by the following item.
Item 20 - At the end of section 98 (before the note)
61. This item adds subsection (2) to section 98, requiring the restoration of a trade mark
in particular prescribed circumstances.
62. It is anticipated that prescribed circumstances will include the filing of evidence in
support of an opposition, or requesting a hearing, under regulations 9.16 and 9.17 of the
Regulations.
63. The subsection can only apply if a trade mark has been removed, after:
• an opposition to a non-use removal application was filed;
• the opponent failed to do a "relevant thing" (as prescribed in regulations) in relation to
the opposition; and
• the application for non-use removal was taken to be unopposed.
64. If these circumstances are established, the trade mark must be restored if:
• the Registrar extends the time to do the "relevant thing" under the regulations; and
• the "relevant thing" is in fact done within the extended time period.
65. If a trade mark is restored, it is taken to have never been removed.
66. The Regulations currently provide strict criteria for the EOT for taking steps in
oppositions to non-use removals. This will ensure that restorations only occur in appropriate
circumstances.
Item 21 - Application provision
67. This item provides for the circumstances in which the amendments in this Part apply.
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68. The provisions apply in respect of trade marks which are removed from the Register
for non-use after commencement of this item.
Part 5 --Official Journal etc.
69. This Part amends the Trade Marks Act to clarify that the Registrar of Trade Marks
(the Registrar) may make information relating to trade marks available to the public in a
flexible way, including through an online search portal as a replacement for the Official
Journal of Trade Marks (the Official Journal).
70. The Trade Marks Act requires the publication of a variety of information in the
Official Journal. Under current section 226 of the Trade Marks Act, the Registrar must issue
the Official Journal at regular intervals.
71. Historically, the Official Journal was made available in paper form and then
electronically in PDF.
72. To improve public access to information on IP rights, trade mark matters required to
be issued, published or advertised in the Official Journal are now available to the public on IP
Australia's website and via an online search portal, currently known as the Australian Trade
Mark Search. The Official Journal is therefore no longer required.
73. To ensure there is no confusion caused by potentially inconsistent information being
published (and readily available) on Australian Trade Mark Search and in the Official
Journal, publication of the Official Journal is to cease.
74. This Part amends the Trade Marks Act to remove references to the Official Journal.
Information that was formerly required to be issued, published or advertised in the Official
Journal will instead be required to be published in accordance with the the Regulations.
Trade Marks Act 1995
Item 22 - Section 6
75. This item omits "Official Journal" from the list of terms defined in section 6, as the
term is no longer used following the amendments in this Part.
Item 23 - Subsection 6(1)
76. This item repeals the definition of "Official Journal", as the term is no longer used
following the amendments in this Part.
Items 24, 26, 28-29 and 31-39 - Paragraph 34(b), subsection 65A(3), paragraph 71(a),
subsection 83A(3), subsection 95(2) and (3), subsection 110(3), paragraph 175(4)(b),
paragraph 176(3)(b), subsection 213A(3), subsection 213B(3), subsection 213C(4),
subsection 223AA(3), subsection 224(5)
77. These items repeal the requirements to advertise particular matters in the Official
Journal and replace them with the requirement to publish in accordance with the Regulations.
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78. The Registrar will still be required to make these matters public through some means,
but not necessarily through a periodic journal. The Regulations will set out the relevant ways
in which the information must be made public.
Item 25 - Section 65, 65A (heading)
79. These items omit the term "advertised" from the headings of these sections, and
replace it with "published", consistent with the changes to the text made by item 54.
Items 27 and 30 - Paragraphs 65A(5)(a) and 83A(7)(a)
80. These items omit the term "advertise" and replace it by "publish", as a consequence
of the changes to subsections 65A(3) and 83A(3) by items 52 and 57.
Item 40 - Section 226
81. This item repeals and replaces the existing section 226.
82. Existing subsection 226(1) requires the Registrar to issue an Official Journal of Trade
Marks, and this provision is repealed. Although the Registrar will no longer be required to
issue an Official Journal, they will still be required to make certain information available to
the public in accordance with the Regulations.
83. New section 226 re-enacts the substance of existing subsection 226(3), which allows
the Registrar to prepare, publish and sell documents relating to trade marks, as the Registrar
thinks fit.
Items 41-44 - Subsection 242(4), paragraph 243(4)(b), subsection 244(5), subparagraph
247(2)(a)(ii)
84. These items omit references to "in the Official Journal" from provisions in Part 22,
Division 3.
85. Part 22, Part 3 relates to matters pending immediately before repeal of the Trade
Marks Act 1955. There are no such matters remaining. The references to the Official Journal
are being omitted to prevent any confusion, given all other references to the Official Journal
will also be repealed.
Item 45 - Application provisions
86. This item provides for the circumstances in which the amendments in this Part apply.
87. For decisions to be published under sections 34, 175 and 176, subitem (1) provides
that this Part applies if the relevant decision is made after the commencement of this item, or
if the decision has been made before the commencement, but has not been advertised as at
commencement. For example, if a decision to reject a trade mark is made shortly before
commencement, but has not yet been advertised at commencement, this Part applies to the
publication of the rejection under section 34.
88. For amendments to be published under sections 65A or 83A, subitem (2) provides this
Part applies if the amendment is requested after commencement of this item.
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89. For registrations to be published under section 71, subitem (3) provides this Part
applies if the trade mark is registered after commencement of this item.
90. For non-use applications to be published under section 95, and applications for
extension of time to be published under section 224, subitem (4) provides this Part applies if
the application is made after the commencement of this item.
91. For an assignment or transmission of a trade mark registration recorded under Section
110, subitem (5) provides this Part applies if the recording occurs after commencement,
whether the application was made before, on, or after the commencement of this item.
92. For determinations made under sections 213A or 223AA, subitem (6) provides this
Part applies if the determination is made after commencement of this item.
93. For directions made under sections 213B or 213C, subitem (7) provides that this Part
applies if the direction is made after commencement of this item.
Part 6 --Spent provisions
Patents Act 1990
94. This Part repeals a number of the transitional and savings provisions in the Patents
Act 1990.
95. Currently the Patents Act 1990 (the 1990 Act) contains several transitional and saving
provisions to ensure that patents granted under the Patents Act 1952 (the 1952 Act) would
continue to be treated in the same way after the 1952 Act was repealed. These provisions are
in sections 231-236 of Chapter 23. Moreover, section 238 provides that the Commissioner
and Deputy Commissioner that were in office before the commencement of the 1990 Act can
continue to be in office.
96. The last patent protected under the 1952 Act expired in February 2016, and the 6 year
statutory limitations period on actions for infringement expired in February 2022. This has
rendered sections 231-236 redundant, as there are no longer any patent rights for which these
provisions apply. Section 238 is also now redundant, as the current Commissioner and
Deputy Commissioner have been appointed under sections 207 and 208 of the 1990 Act.
97. Removing redundant transitional and savings provisions is in line with good
regulatory practice and ensures that the statute remains up to date and only contains relevant
provisions.
Item 46 - Section 3 (list of definitions)
98. This item omits the term "1989 Amending Act" from the list of terms defined in the
dictionary in Schedule 1 to the 1990 Act. This amendment is a consequence of item 43 below
that removes "1989 Amending Act" from the dictionary.
Item 47 - Sections 231 to 236 and 238
99. This item repeals sections 231 to 236 and 238 of the 1990 Act as they are redundant
and no longer required, for the reasons discussed in the introduction above.
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Item 48 - Schedule 1 (definition of 1989 Amending Act)
100. This item repeals the definition of "1989 Amending Act" from the dictionary. The
definition is no longer used in the 1990 Act as a consequence of the amendments made by the
preceding item.
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