CHAPTER 2

OVERVIEW OF THE BILL

Key provisions of the Bill

2.1        The key provisions of the TM Bill, contained in Schedule 1, reflect its purpose in implementing legislative changes consequential to the TPP Bill. The TM Bill amends the Trade Marks Act to enable regulations to be made in relation to the use of trade marks, should the TPP Bill be enacted.[1]

Commencement

2.2        Clause 2 of the TM Bill outlines that commencement of Schedule 1 of the TM Bill will occur at the same time as 'section 28 of the Tobacco Plain Packaging Act 2011'. Clause 28 of the TPP Bill (to become section 28 on enactment) addresses the effect on the Trade Marks Act of non-use of trade marks as a result of the legislative changes.[2] Further, clause 2 of the TM Bill provides that if section 28 does not commence, the provisions in Schedule 1 of the TM Bill 'do not commence at all'. Clause 2 of TPP Bill provides that a range of sections, including section 28, will commence on 1 January 2012.

Schedule 1

2.3        Schedule 1 of the TM Bill contains the proposed amendments to the Trade Marks Act.

2.4        Item 1 of Schedule 1 inserts a note at the end of existing subsection 231(2) of the Trade Marks Act. Currently, subsection 231(2) non-exhaustively lists matters to which regulations under the Trade Marks Act can be directed. The inserted note would state 'Regulations can also be made in relation to the Tobacco Plain Packaging Act 2011 under section 231A'.

2.5        Item 2 of Schedule 1 would insert new section 231A, containing three subsections, into the Trade Marks Act. This new section would be titled 'Regulations may make provision in relation to the Tobacco Plain Packaging Act 2011'. The Explanatory Memorandum (EM) to the TM Bill notes that the regulations made under the new section are not intended to have any effect on the Trade Marks Act and Trade Marks Regulations in relation to goods and services not governed by the TPP Bill, if it is enacted, or regulations made under it.[3]

2.6        Proposed new subsection 231A(1) provides that new regulations may be made in relation to the effect of the operation of the TPP Bill, if it is enacted, and regulations made under the TPP Bill on: (a) a provision of the Trade Marks Act; or (b)(i) a regulation that applies a provision of the Trade Marks Act; or (ii) a regulation that applies a provision on the Trade Marks Act in modified form.

2.7        A note to be inserted following proposed new subsection 231A(1) states that section 28 of the TPP Bill (when enacted) also sets out the effect of the operation of the enacted TPP Bill on certain provisions of, and regulations made under, the Trade Marks Act.

2.8        Proposed new subsection 231A(2) provides that, without limiting subsection 231A(1), regulations made for the purposes of that subsection may clarify or state the effect of the enacted TPP Bill, and regulations made under it, on a provision of the Trade Marks Act, or a regulation made under it, 'including by taking or deeming':

(a) something to have (or not to have) happened; or

(b) something to be (or not to be) the case; or

(c) something to have (or not to have) a particular effect.

2.9        The EM notes that subsection 231A(2) 'illustrates, but does not limit, the scope of the regulations that may be made under new subsection 231A(1)'.[4]

2.10      Proposed new subsection 231A(3) provides that regulations made for the purposes of proposed new subsection 231A(1): (a) may be inconsistent with the Trade Marks Act; and (b) prevail over the Trade Marks Act (including any regulation or other instrument made under the Trade Marks Act) to the extent of any inconsistency. The EM to the TM Bill notes that '[a]llowing such regulations to be inconsistent with, and prevail over, the Trade Marks Act ensures that Australia can comply with its obligations under the Madrid Protocol [Madrid Protocol Relating to the Madrid Agreement concerning the International Registration of Marks]'.[5] The Madrid Protocol is an international agreement which facilitates a system of international registration of marks administered by the World Intellectual Property Organisation (WIPO).[6]

2.11      The Senate Standing Committee for the Scrutiny of Bills (Scrutiny of Bills Committee) drew attention to this aspect of the TM Bill as a so-called 'Henry VIII' clause. A Henry VIII clause is an express provision which authorises the amendment of either the empowering legislation, or any other primary legislation, by means of delegated legislation. The Scrutiny of Bills Committee noted that, while section 231A enables regulations to be made which are inconsistent with the Trade Marks Act, the EM to the TM Bill 'contains a detailed explanation for the possible need for this clause...including the need  [for the Australian Government] to comply with its obligations under the Madrid Protocol'. In the circumstances, the Scrutiny of Bills Committee, concluded that it would make 'no further comment'.[7]

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