Major Differences between the 2nd Draft Trade Marks Bill and the Trade Marks Bill ("The Bill")

2nd DraftThe BillChanges
1. Clause 2
Clause 2
  • Definitions of assignee and association have been removed. No need to define these terms.
  • Definition of WTO member and Paris Convention country altered to allow designation by Regulation.
  • Definition of "official journal" inserted.

2. Clause 9
(Registered trade mark a property right)
Clause 9(3)
  • Clause 9(3) is inserted to clarify that public bodies and individuals are bound by the Bill.

3. Clause 10(1)(c)
(Absolute grounds for refusal of registration)
Clause 10(1)(c)
  • "or business" added after "trade"

4. Clause 18(5)(6) Clause 19
(Exhaustion of Rights)
  • Exhaustion of rights given its own clause in the Bill.

5. Clause 19
(Comparative Advertising)
Clause 17(7)(Infringement of registered trade mark)
  • The clause dealing with comparative advertising has been repositioned.

6. Clause 24
(Proceedings for relief from groundless threats of infringement proceedings)
Clause 24
  • Clause 24(6) has been added to ensure that an action against groundless threats cannot be pursued if the registered owner or licensee of a trade mark brings an action for infringement within the stipulated period.

7. Clause 83(2)
(Appeals from decisions or orders of Registrar)
Clause 83(2)
  • An appeal is now to be heard in public.

8. Clause 86
(Costs of proceedings before Registrar)
Clause 86(3)
  • Power is given for the making of rules to empower Registrar to seek security for costs.

Trade and Industry Bureau
September 1999