US Free Trade Agreement Implementation Act 2004 (120 of 2004)
Schedule 3 Australian geographical indications for wine amendments
11 After section 40R
Insert:
Subdivision D - Objections to determination of geographical indications based on pre-existing trade mark rights
40RA Notice to be given of proposed geographical indication
(1) The Presiding Member of the Committee must cause a notice under subsection (2) to be published if:
(a) an application under section 40R has been made for the determination of a geographical indication (the proposed GI ); or
(b) the Committee is considering determining a geographical indication (the proposed GI ) on its own initiative under section 40Q; or
(c) after an application under section 40R has been made, the Committee is considering, under paragraph 40T(3)(b), determining a geographical indication (the proposed GI) that is different from the GI proposed in the application.
(2) The notice must:
(a) set out the proposed GI; and
(b) invite persons to make written objections to the Registrar of Trade Marks in relation to the proposed GI on a ground set out in section 40RB; and
(c) invite those objections to be made within the period of not less than one month stated in the notice.
40RB Grounds of objection to the determination of a geographical indication
Registered owner of a registered trade mark
(1) The registered owner of a registered trade mark may object to the determination of a proposed GI on one of the following grounds:
(a) that the trade mark consists of a word or expression that is identical to the proposed GI;
(b) that:
(i) the trade mark consists of a word or expression; and
(ii) the proposed GI is likely to cause confusion with that word or expression;
(c) that:
(i) the trade mark contains a word or expression; and
(ii) the proposed GI is likely to cause confusion with that word or expression; and
(iii) the owner has trade mark rights in that word or expression.
(2) The owner may object on the ground specified in paragraph (1)(c) even if there are conditions or limitations entered on the Register of Trade Marks suggesting that the owner does not have trade mark rights to that word or expression.
Trade mark pending
(3) If a person has an application pending for the registration of a trade mark under the Trade Marks Act 1995, the person may object to the determination of a proposed GI on one of the following grounds:
(a) that:
(i) the application was made in good faith; and
(ii) the trade mark consists of a word or expression that is identical to the proposed GI; and
(iii) prima facie, the requirements under the Trade Marks Act 1995 for accepting an application for registration of a trade mark would be satisfied in respect of the trade mark applied for;
(b) that:
(i) the application was made in good faith; and
(ii) the trade mark consists of a word or expression; and
(iii) the proposed GI is likely to cause confusion with that word or expression; and
(iv) prima facie, the requirements under the Trade Marks Act 1995 for accepting an application for registration of a trade mark would be satisfied in respect of the trade mark applied for;
(c) that:
(i) the application was made in good faith; and
(ii) the trade mark contains a word or expression; and
(iii) the proposed GI is likely to cause confusion with that word or expression; and
(iv) prima facie, the requirements under the Trade Marks Act 1995 for accepting an application for registration of a trade mark would be satisfied in respect of the trade mark applied for; and
(v) after registration, the applicant would have trade mark rights in the word or expression.
Trade mark not registered
(4) If a person claims to have trade mark rights in a trade mark that is not registered, the person may object to the determination of a proposed GI on one of the following grounds:
(a) that:
(i) the trade mark consists of a word or expression that is identical to the proposed GI; and
(ii) the person has trade mark rights in that word or expression; and
(iii) the rights were acquired through use in good faith;
(b) that:
(i) the trade mark consists of or contains a word or expression; and
(ii) the proposed GI is likely to cause confusion with that word or expression; and
(iii) the person has trade mark rights in that word or expression; and
(iv) the rights were acquired through use in good faith.
40RC Consideration of objections
Notice of objection to be given to Committee
(1) If:
(a) the Registrar of Trade Marks receives an objection in relation to the proposed GI on a ground set out in section 40RB; and
(b) the objection is received within the period stated in the notice under section 40RA;
the Registrar of Trade Marks must in writing notify the Committee of the receipt and terms of the objection.
Registrar of Trade Marks to make decision on whether ground made out or not
(2) If an objection is notified to the Committee under subsection (1), the Registrar of Trade Marks must decide in writing whether the ground of objection is or is not made out.
Registrar may make recommendation to Committee to determine a GI
(3) If:
(a) the Registrar of Trade Marks decides that the ground of objection is made out; and
(b) the Registrar of Trade Marks is satisfied that it is reasonable in the circumstances to recommend to the Committee that the proposed GI be determined despite the objection having been made out;
the Registrar of Trade Marks may make the recommendation. The recommendation must be in writing.
Note 1: For example, it may be reasonable for the Registrar of Trade Marks to make such a recommendation if the Registrar of Trade Marks is satisfied that the proposed GI was in use before the trade mark rights arose.
Note 2: If a recommendation is made under subsection (3), the Committee may determine the GI (see subsection 40SA(4)).
(4) In determining under paragraph (3)(b) whether it is reasonable in the circumstances to make the recommendation to the Committee, the Registrar of Trade Marks must have regard to Australia's international obligations.
Regulations
(5) Regulations may set out the procedure to be followed in making a decision under subsection (2) or (3). The procedures may include the charging of fees, the holding of hearings and the taking of evidence.
40RD Notice to be given of decision
Notice to be given by Registrar of Trade Marks
(1) After the Registrar of Trade Marks has made a decision under section 40RC in relation to the proposed GI, the Registrar of Trade Marks must, in writing, inform the following of the outcome of the decision and of any recommendation that has been made under subsection 40RC(3):
(a) the person who proposed the GI, if there was an application under section 40R for the GI;
(b) the person who objected to the determination of the proposed GI;
(c) the Committee.
Notice to be given by Committee
(2) After receiving notice of a decision under subsection (1), the Presiding Member must cause a notice to be published:
(a) setting out the proposed GI; and
(b) stating that a decision of the Registrar of Trade Marks has been made in relation to the proposed GI; and
(c) setting out the terms of the decision and any recommendation made under subsection 40RC(3) in relation to the proposed GI.
(3) The notice under subsection (2) is to be published in the manner that the Committee thinks appropriate.
40RE Decision that ground of objection no longer exists
(1) If:
(a) a decision has been made that a ground of objection to a proposed GI has been made out; and
(b) a person applies in writing to the Registrar of Trade Marks for a decision that circumstances have changed since that decision was made such that the ground of objection no longer exists;
the Registrar of Trade Marks may, in writing, make a decision that the ground of objection no longer exists.
Note: If the Registrar of Trade Marks makes a decision under this section, the Committee may determine the GI (see subsection 40SA(5)).
(2) Regulations may set out the procedure to be followed in making a decision under subsection (1). The procedures may include the charging of fees, the holding of hearings and the taking of evidence.
40RF Appeals
(1) An appeal lies to the Federal Court against a decision of the Registrar of Trade Marks, made under:
(a) subsection 40RC(2) (a decision that a ground of objection is or is not made out); and
(b) subsection 40RC(3) (a recommendation that a proposed GI be determined or a refusal to make such a recommendation); and
(c) section 40RE (a decision that a ground of objection no longer exists or a refusal to make such a decision).
(2) The jurisdiction of the Federal Court to hear and determine appeals against decisions of the Registrar of Trade Marks under this Act is exclusive of the jurisdiction of any other court except the jurisdiction of the High Court under section 75 of the Constitution.
(3) On hearing an appeal against a decision of the Registrar of Trade Marks under this Act, the Federal Court may do any one or more of the following:
(a) admit further evidence orally, or on affidavit or otherwise;
(b) permit the examination and cross-examination of witnesses, including witnesses who gave evidence before the Registrar of Trade Marks;
(c) order an issue of fact to be tried as it directs;
(d) affirm, reverse or vary the Registrar of Trade Marks's decision;
(e) give any judgment, or make any order, that, in all the circumstances, it thinks fit;
(f) order a party to pay costs to another party.
(4) The Registrar of Trade Marks may appear and be heard at the hearing of an appeal to the Federal Court against a decision of the Registrar of Trade Marks.
(5) Except with the leave of the Federal Court, an appeal does not lie to the Full Court of the Federal Court against a decision of a single judge of the Federal Court in the exercise of its jurisdiction to hear and determine appeals from decisions of the Registrar of Trade Marks.
(6) The regulations may make provision about the practice and procedure of the Federal Court in a proceeding under this section, including provision:
(a) prescribing the time for starting the action or proceeding or for doing any other act or thing; or
(b) for an extension of that time.
40RG Decisions made under this Division not to affect rights under Trade Marks Act
A decision made under this Division does not:
(a) create or affect a right under the Trade Marks Act 1995 or at common law in respect of a trade mark; or
(b) in any way pre-empt or affect a decision of the Registrar of Trade Marks under the Trade Marks Act 1995 in respect of a pending application for the registration of a trade mark.