EXPLANATORY STATEMENT

Select Legislative Instrument 2010 No. 248

Issued by the Authority of the Minister for Innovation, Industry, Science and Research

Trade Marks Act 1995

Trade Marks Amendment Regulations 2010 (No. 1)

Subsection 231(1) of the Trade Marks Act 1995 (the Act) provides, in part, that the

Governor-General may make regulations prescribing matters required or permitted by the Act to be prescribed.

The Regulations enable members of the public to oppose certain amendments to a registered trade mark that have been proposed by the trade mark owner.

The revised Australia – European Community Agreement on Trade in Wine (the Agreement) stipulates a number of European geographical indications and traditional expressions that are no longer available for use by Australian wine makers. The Australian Wine and Brandy Corporation Amendment Act 2010 (AWBC Amendment Act) introduced a new provision to the Act. The new provision enables trade mark owners to amend their registered trade marks in order to comply with any relevant obligation of Australia under an international agreement.

The Regulations allow members of the public to oppose such amendments, where the proposed amendments would result in the amended trade mark being substantially identical with, or deceptively similar to, another registered trade mark or another trade mark in use.

For example, the owner of a trade mark ‘Tejo Festival’ used for wine products could request that the term ‘Tejo’ be removed from the trade mark because it is a European geographical indication that is no longer available for use by Australian wine makers. However, under the Regulations the owner of a trade mark ‘Festival’ for beer products could oppose this amendment on the grounds that the resulting trade mark would be substantially identical to its own.

The objectives of the Regulations are further discussed in Attachment A.

The details of the Regulations are set out in Attachment B.

The Act specifies no conditions that need to be met before the power to make the Regulations may be exercised.

Prior to making these Regulations, key stakeholders were consulted on the process for opposing amendments to a registered trade mark.

The Regulations commence on the day after they are registered on the Federal Register of Legislative Instruments.

Attachment A

Objectives of the Trade Marks Amendment Regulations 2010 (No. 1)

The purpose of the Regulations is to make amendments to the Trade Marks

Regulations 1995 (the Principal Regulations) to enable members of the public to oppose certain amendments to a registered trade mark that have been proposed by the trade mark owner.

The Australia – European Community Agreement on Trade in Wine (the Agreement) was signed by the Australian Government and the European Community on

1 December 2008 and entered into force on 1 September 2010. It is a significant revision of the 1994 Australia – European Community Agreement on Trade in Wine. The revised Agreement provides benefits to both parties and is strongly supported by the Australian wine industry.

The Agreement obliges Australia to protect prescribed European geographical indications and traditional expressions. Schedule 1 to the Australia Wine and Brandy Corporation Regulations 1981 lists a number of European geographical indications that have previously been used to describe Australian wines. From 1 September 2011 these terms will no longer be available for use by Australian wine makers. Approximately 500 trade marks currently registered in Australia contain these terms in either the mark itself or in the particulars, such as in the specification of goods, endorsements and conditions of registration.

To ensure that the owners of existing trade marks are not disadvantaged by the Agreement, the AWBC Amendment Act amended the Trade Marks Act 1995 to introduce a new provision. This provision enables trade mark owners to amend their registered trade marks in order to comply with any relevant obligation of Australia under an international agreement. The trade mark owner is able to request an amendment to the representation of the trade mark to remove or substitute part of the representation, and/or to amend the particulars in respect of the trade mark to remove or substitute any or all of the particulars.

For example, ‘Tejo’ is a European geographical indication that is no longer available for use by Australian wine makers. The owner of a trade mark ‘Tejo Festival’ for wine products could request that the term ‘Tejo’ be removed from the trade mark, leaving the trade mark as merely ‘Festival’.

The discretion to amend a registered trade mark because the trade mark would be inconsistent with an international agreement extends the scope of amendments ordinarily allowed in the Act. There is also a small chance that it may also give rise to circumstances where, if the proposed amendments were allowed, they would result in the amended trade mark becoming substantially identical with, or deceptively similar to, another registered trade mark or another trade mark in use. In the above example, the amended trade mark ‘Festival’ would be substantially identical to an existing trade mark ‘Festival’ owned by another party for beer products.

In order to address this, the Regulations amend the Principal Regulations to enable members of the public to oppose such amendments. Such an opposition may be based on the ground that the amended trade mark would be substantially identical with, or deceptively similar to:

(a) a trade mark registered in the name of the opponent in respect of similar or closely related goods or services; or

(b) a trade mark that is being used by the opponent in respect of similar or closely related goods or services.

Attachment B

Details of the Trade Marks Amendment Regulations 2010 (No. 1)

Name of Regulations

Regulation 1 provides that the Regulations are the Trade Marks Amendment Regulations 2010 (No. 1).

Commencement

Regulation 2 specifies that the Regulations commence on the day after they are registered.

Amendment of Trade Marks Regulations 1995

Regulation 3 specifies that Schedule 1 amends the Trade Marks Regulations 1995 (the Principal Regulations).

Schedule 1 - Amendments

Item 1 inserts new regulations 8.4 and 8.5 into the Principal Regulations that enable the filing of a notice of opposition to a request for amendment of a registered trade mark. The filing of the notice of opposition is made in accordance with subsection 83A(4) of the Trade Marks Act 1995 (the Act).

Section 83A of the Act provides that, where use of a pre-existing registered trade mark would be inconsistent with any relevant obligation of Australia under an international agreement, the owner of the registered trade mark may request the Registrar to amend the representation of the trade mark to remove or substitute part of the representation, and/or amend the particulars entered in the Register to remove or substitute any or all of the particulars.

Subsection 83A(4) of the Act provides that a person may oppose the granting of the request for the amendment on the ground that the amended trade mark would be substantially identical with, or deceptively similar to:

(a) a trade mark registered in the name of the opponent in respect of similar or closely related goods or services; or

(b) a trade mark that is being used by the opponent in respect of similar or closely related goods or services.

Regulation 8.4 provides that a person may oppose such a request for amendment by filing a notice of opposition with the Registrar in an approved form and within one month after the request for amendment is advertised in the Australian Official Journal of Trade Marks. Regulation 8.4 also provides that the opponent must serve a copy of the notice on the owner of the registered trade mark.

Regulation 8.5 provides that the relevant opposition proceedings are those stipulated in current regulations 5.7 to 5.17 in relation to existing opposition proceedings. However, references to the applicant will be considered to be references to the owner of the registered trade mark who has requested the amendment. The exception to this interpretation is located in regulation 5.15. Regulation 5.15 deals with an application for extension of time, which may be made by any party to the opposition proceedings.