Commonwealth Numbered Regulations - Explanatory Statements

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TRADE MARKS AMENDMENT REGULATIONS 1998 (NO. 4) 1998 NO. 346

STATUTORY RULES 1998 NO. 346

Issued by the Authority of the Minister for Industry, Science and Resources

Trade Marks Act 1995

Trade Marks Amendment Regulations 1998 (No. 4)

The Statutory Rules amend the Trade Marks Regulations (the Regulations) to implement changes to the regulatory regime for professional practice in trade mark matters as a consequence of the changes included in Schedule 2 of the Intellectual Property Laws Amendment Act 1998.

The changes

*       remove restrictions on who can practice before the Trade Marks Office to allow any person the right of professional practice before the office;

*       establish a new registered profession of trade marks attorneys;

*       introduce appropriate qualifications for registration including a regime to accredit courses conducted in the tertiary sector; and

*       introduce appropriate transitional arrangements to ensure that persons who have had a right of practice as a trade marks attorney are able to register as trade marks attorneys under the new regime.

Details of the amendments made by these Statutory Rules are as follows:

Regulations 1 cites the Regulations as the Trade Marks Amendment Regulations 1998.

Regulations 2 provides that the Regulations will commence on 27 January 1998.

Regulation 3 incorporates the provisions in Schedule 1 into the Trade Marks Regulations 1995.

Schedule 1

Item [1] amends the definitions in Regulation 2.1 to include a definition of an accredited course of study as having the same meaning as the definition in the Patents Regulations 1991.

Item [2] inserts a new Part 20 in the Regulations that introduces matters necessary to be prescribed for the purposes of the Act to allow for the introduction of the new regulatory regime for trade marks attorneys.

Regulation 20.1 specifies that the qualifications for registration as a trade marks attorney are topic groups A, B, C, and D, of Schedule 5 of the Patents Regulations 1991 and an award of a degree, diploma or post graduate qualification in any field of study. A person will be required to complete a course in the topic groups accredited by the Board or examinations conducted by the Board in the 4 topic groups relating to a legal process and an overview of the IP system, trade marks and professional conduct. In addition, a person will need to provide certification that they have not been convicted of an offence against the provisions in the patents, trade marks or designs legislation or any other offence of dishonesty with a liability for imprisonment of at least 2 years.

Regulation 20.2 provides that unless the accredited institution has a contrary policy, a person should have five years to satisfy the requirements relating to the necessary topic groups.

Regulation 20.3 provides that when applying for registration a person must provide the Designated Manager with evidence that they have met the education requirements and have not been convicted of relevant offences against the patents, trade marks and designs acts or convicted of an offence of dishonesty carrying a penalty of 2 years imprisonment.

Regulation 20.4 provides that the Designated Manager must give a person a certificate of registration

Regulation 20.5 provides that the provisions of Part 2 of Chapter 20 of the Patents Regulations 1998 apply in respect of the conduct of examinations and exemptions by the Board.

Regulation 20.6 provides that where a person applies to the Board, and has met the education requirements, the Board must issue a written statement verifying that the requirements have been met.

Regulation 20.7 provides that

*       a registration fee is payable each year on 1 July

*       a fees due notice should be sent to attorneys no later that 1 June

*       trade marks attorneys names can be removed from the register where they have not paid fees within 14 days of the due date.

Regulation 20.8 provides that a trade marks attorney's name can be reinstated on the register where the attorney applies and the relevant fees are paid within six weeks or such further period that the Designated Manager allows.

Regulation 20.9 allows for a register Trade Mark Attorney to apply to remove their name from the register for a period of up to 3 years and that the name should be restored on application and the payment of relevant fees for the year of restoration.

Regulation 20. 10 provides that a registered trade marks attorney should have the same rights of lien over documents of a client as are given to a solicitor.

Regulation 20.11 provides that the discipline regime established in the Patent Regulations 1991 should apply to registered trade marks attorneys.

Items [3] and [4] amend existing provisions in Regulations 21.6 and 21.30 to clarify references to "registered" patent attorneys and include where appropriate references to registered trade marks attorneys.

Item [5] inserts a new regulation 21.35 that provides for administrative appeals against decisions of the Board and the Disciplinary Tribunal in respect of discipline matters for trade marks attorneys to mirror the requirements for patent attorneys.

Item [6] provides necessary transitional arrangements to ensure that persons who have previously practiced as trade marks attorneys and agents under the existing provisions are given an option to obtain registration as trade marks attorneys under the new regime.

Regulation 22.7 provides that from the commencement of the regulations until 27 January 2001 the following persons would be entitled to obtain registration as a trade marks attorney

*        a person who was registered as a patent attorney on 28 February 1998,

*        a person who met the requirements for registration on 26 January 1999,

*       a person who was a legal practitioner and had acted for a client in trade mark matters before 27 January 1999, and

*       any person who previously had a right to use the title trade marks agent from the transitional provisions in the superseded Trade Marks Act 1956.

Regulation 22.8 provides that where a person has passed examinations under the old regime, they will receive appropriate credits under the new regime. In certain circumstances a person will be able to apply for registration where they have passed some subjects and can provide certification that they have had relevant experience in trade marks practice for a period of not less than two years, provided they do so before 27 January 2001.

Item [7] amends existing Schedule 8 to included references to registered patent attorneys and registered trade marks attorneys.

Item [8] inserts new fee items into Schedule 9 that will set the level of fees for the conduct of examinations by the Board and the registration of persons as trade marks attorneys.