Legislation

The provisions relating to registration of trade marks attorneys are prescribed in s. 228A of the Trade Marks Act 1995.

The relevant sub sections of Section 228A provide -

"(4) The Designated Manager must register as a trade marks attorney a person who:

(a) holds such qualifications as are specified in, or ascertained in accordance with, the regulations; and

(b) is of good fame, integrity and character; and

(c) has not been convicted of a prescribed offence during the previous 5 years; and

(d) is not under sentence of imprisonment for a prescribed offence.

The registration is to consist of entering the person's name in the Register of Trade Marks Attorneys.

(6) Paragraphs (4)(c) and (d) do not limit paragraph (4)(b).

(8) A reference in this section to conviction of an offence includes a reference to the making of an order under section 19B of the Crimes Act 1914, or a corresponding provision of a law of a State or a Territory, in relation to the offence."

Trade Marks Regulations

Matters relating to registered trade marks attorneys are prescribed in Part 20 of the Trade Marks Regulations 1995 including what is required for obtaining registration for the first time. (Please note that examinations are no longer conducted by the Board).

Regulation 20.1 of the Trade Marks Regulations provides -

20.1 (1) For paragraph 228A(4)(a) of the Act, a qualification comprises:
(a)
a pass in:
(i)
an accredited course of study that:
(A)
includes the subject matter in topic group A, B, C or D mentioned in Schedule 5 to the Patents Regulations 1991; and
(B)
is not part of a course of study to which an award mentioned in paragraph (b) relates; or
(ii)
an examination that:
(A)
is conducted by the Board under regulation 20.6 of the Patents Regulations 1991 for topic group A, B, C or D mentioned in Schedule 5 to the Patents Regulations 1991; and
(B)
is not part of a course of study to which an award mentioned in paragraph (b) relates; and
(b)
an award of:
(i)
a degree, diploma, advanced diploma or graduate diploma, under the Australian Qualification Framework, that is:
(A)
in any field of study; and
(B)
awarded by a body, in the Higher Education Sector, that is authorised to award a degree, diploma, advanced diploma or graduate diploma of that kind; or
(ii)
a degree, diploma, advanced diploma or graduate diploma that is:
(A)
awarded by an overseas education institution; and
(B)
equivalent to an award mentioned in subparagraph (i).
Note The Australian Qualification Framework is a nationally recognised reference which categorises qualifications into 12 levels, from institutions categorised into 3 sectors: schools, vocational and higher education.
The AQF website is http://www.aqf.edu.au/
(2)
For paragraph (1) (a), an exemption under regulation 20.13 of the Patents Regulations 1990 is taken to be a pass in the topic group for which the exemption was granted.
(3)
For paragraph 228A (4) (c) of the Act, an offence against the Act, the Designs Act 1906 or the Patents Act 1990 is a prescribed offence.
(4)
For paragraph 228A (4) (d) of the Act, an offence of dishonesty for which the maximum penalty is imprisonment for at least 2 years is a prescribed offence.