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Intellectual Property Laws Amendment Bill 2006

Schedule 3 Registration process for certification trade marks

Part 1 Amendments commencing on day after Royal Assent

Trade Marks Act 1995

1  Subsection 173(2)

Repeal the subsection, substitute:

             (2)  The rules must specify:

                     (a)  the requirements (the certification requirements ) that goods and/or services must meet for the certification trade mark to be applied to them; and

                     (b)  the process for determining whether goods and/or services meet the certification requirements; and

                     (c)  the attributes that a person must have to become a person (an approved certifier ) approved to assess whether goods and/or services meet the certification requirements; and

                     (d)  the requirements that a person, who is the owner of the certification trade mark or an approved user, must meet to use the certification trade mark in relation to goods and/or services; and

                     (e)  the other requirements about the use of the certification trade mark by a person who is the owner of the certification trade mark or an approved user; and

                      (f)  the procedure for resolving a dispute about whether goods and/or services meet the certification requirements; and

                     (g)  the procedure for resolving a dispute about any other issue relating to the certification trade mark.

             (3)  The rules must also include any other matter the Commission requires to be included.

             (4)  The rules may also include any other matter the Commission permits to be included.

2  Application of amendment of section 173

The amendment of section 173 of the Trade Marks Act 1995 made by this Part applies in relation to rules filed on or after the commencement of the amendment.

3  Paragraph 175(2)(a)

Repeal the paragraph, substitute:

                     (a)  the attributes a person must have to become an approved certifier are sufficient to enable the person to assess competently whether goods and/or services meet the certification requirements; and

4  Subsection 175(2) (note 2)

Repeal the note, substitute:

Note 2:       For approved certifier see paragraph 173(2)(c).

Note 3:       For certification requirements see paragraph 173(2)(a).

5  Application of amendments of section 175

The amendments of section 175 of the Trade Marks Act 1995 made by this Part apply in relation to decisions to give, or refuse to give, a certificate relating to rules filed on or after the commencement of this Part.

6  Subsection 177(1) (note 2)

Omit “173(2)(a)”, substitute “173(2)(c)”.

7  Subsection 181(2) (note 2)

Omit “173(2)(a)”, substitute “173(2)(c)”.



 

Part 2 Amendments commencing on proclaimed day or after 6 months

Trade Marks Act 1995

8  Section 174

Repeal the section, substitute:

174   Registrar to send documents to Commission

                   The Registrar must send the prescribed documents relating to the application to the Commission in accordance with the regulations.

9  Application of new section 174

(1)       Section 174 (the new section 174 ) of the Trade Marks Act 1995 as amended by this Part applies to applications filed before, on or after the commencement of this Part.

(2)       However, the new section 174 does not require the Registrar to send to the Commission documents relating to an application if:

                     (a)  the Registrar sent documents relating to the application to the Commission before the commencement of this Part under section 174 (the old section 174 ) of the Trade Marks Act 1995 as in force before that commencement; or

                     (b)  the old section 174 did not require the Registrar to send a copy of the application to the Commission.

10  Subsection 176(1)

Repeal the subsection, substitute:

             (1)  The Registrar must accept the application if:

                     (a)  the application is made in accordance with this Act; and

                     (b)  there are no grounds for rejecting the application; and

                     (c)  the Commission has given a certificate under subsection 175(2).

Otherwise the Registrar must reject the application.

          (1A)  However, the Registrar must give the applicant an opportunity to be heard before rejecting the application solely because one or both of the conditions in paragraphs (1)(a) and (b) are not met.

Note:       The heading to section 176 is replaced by the heading “ Acceptance or rejection of application ”.

11  Application of new subsection 176(1)

(1)       Subsection 176(1) (the new subsection 176(1) ) of the Trade Marks Act 1995 as amended by this Part applies to applications filed before, on or after the commencement of this Part.

(2)       However, the new subsection 176(1) does not apply to applications accepted or rejected under Part 16 of the Trade Marks Act 1995 before the commencement of this Part.

12  Subsection 178(4)

Repeal the subsection, substitute:

             (4)  The Commission must notify, in accordance with the regulations, a decision to approve a variation or not to approve a variation.

13  Subsection 178(6)

Repeal the subsection.

14  Application of amendments of section 178

The amendments of section 178 of the Trade Marks Act 1995 made by this Part apply in relation to decisions made on or after the commencement of this Part to approve or not to approve variations of rules governing the use of certification trade marks.

15  Section 179

Repeal the section, substitute:

179   Registrar must publish rules

                   The Registrar must publish, in accordance with the regulations, rules governing the use of a certification trade mark.

16  Saving of rules made available under old section 179

The Registrar is not required by section 179 of the Trade Marks Act 1995 as amended by this Part to publish rules that have before the commencement of this Part been, and continue to be, made available as required by section 179 of that Act as in force before the commencement of this Part, unless the rules are varied.