Prepared by the Office of Parliamentary Counsel, Canberra
Trade Marks Act 1995
No. 119, 1995
Compilation No. 39
Compilation date: 27 February 2020
Includes amendments up to: Act No. 9, 2020
Registered: 18 March 2020
Authorised Version C2020C00103 registered 18/03/2020
About this compilation
This compilation
This is a compilation of the Trade Marks Act 1995 that shows the text of the
law as amended and in force on 27 February 2020 (the compilation date).
The notes at the end of this compilation (the endnotes) include information
about amending laws and the amendment history of provisions of the compiled
law.
Uncommenced amendments
The effect of uncommenced amendments is not shown in the text of the
compiled law. Any uncommenced amendments affecting the law are accessible
on the Legislation Register (www.legislation.gov.au). The details of
amendments made up to, but not commenced at, the compilation date are
underlined in the endnotes. For more information on any uncommenced
amendments, see the series page on the Legislation Register for the compiled
law.
Application, saving and transitional provisions for provisions and
amendments
If the operation of a provision or amendment of the compiled law is affected by
an application, saving or transitional provision that is not included in this
compilation, details are included in the endnotes.
Editorial changes
For more information about any editorial changes made in this compilation, see
the endnotes.
Modifications
If the compiled law is modified by another law, the compiled law operates as
modified but the modification does not amend the text of the law. Accordingly,
this compilation does not show the text of the compiled law as modified. For
more information on any modifications, see the series page on the Legislation
Register for the compiled law.
Self-repealing provisions
If a provision of the compiled law has been repealed in accordance with a
provision of the law, details are included in the endnotes.
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Contents
Part 1—Preliminary 9 1 Short title ...........................................................................................9
2 Commencement.................................................................................9
3 Act binds the Crown..........................................................................9
4 Application of Act .............................................................................9
4A Application of the Criminal Code ...................................................10
5 Repeal of Trade Marks Act 1994 .....................................................10
Part 2—Interpretation 11 6 Definitions.......................................................................................11
6A Periods expressed in months............................................................19
7 Use of trade mark ............................................................................19
8 Definitions of authorised user and authorised use ..........................20
9 Definition of applied to and applied in relation to ..........................21
10 Definition of deceptively similar .....................................................22
11 Definition of pending ......................................................................22
12 Definition of priority date ...............................................................23
13 Definition of remove from the Register ...........................................23
14 Definition of similar goods and similar services .............................23
15 Definition of originate in relation to wine.......................................24
16 Definition of repealed Act ...............................................................24
Part 3—Trade marks and trade mark rights 25 17 What is a trade mark? ......................................................................25
18 Certain signs not to be used as trade marks etc................................25
19 Certain trade marks may be registered.............................................25
20 Rights given by registration of trade mark ......................................26
21 Nature of registered trade mark as property ....................................26
22 Power of registered owner to deal with trade mark .........................27
23 Limitation on rights if similar trade marks etc. registered by
different persons ..............................................................................28
24 Trade mark consisting of sign that becomes accepted as sign
describing article etc........................................................................28
25 Trade mark relating to article etc. formerly manufactured
under patent .....................................................................................29
26 Powers of authorised user of registered trade mark .........................30
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Part 4—Application for registration 32
Division 1—General 32
27 Application—how made..................................................................32
28 Application by joint owners ............................................................33
29 Application for registration of trade mark whose registration
has been sought in a Convention country—claim for priority .........33
30 Particulars of application to be published........................................34
31 Registrar to examine, and report on, application .............................34
32 Registrar to decide on disputed classification of goods etc. ............35
33 Application accepted or rejected......................................................35
34 Notification of decision ...................................................................35
35 Appeal .............................................................................................36
36 Deferment of acceptance .................................................................36
37 Lapsing of application if not accepted in time.................................36
38 Revocation of acceptance ................................................................37
Division 2—Grounds for rejecting an application 38
39 Trade mark containing etc. certain signs .........................................38
40 Trade mark that cannot be represented graphically .........................38
41 Trade mark not distinguishing applicant’s goods or services ..........38
42 Trade mark scandalous or its use contrary to law............................40
43 Trade mark likely to deceive or cause confusion.............................40
44 Identical etc. trade marks.................................................................40
Division 3—Divisional applications 43
45 Divisional applications ....................................................................43
46 Rules relating to divisional applications ..........................................43
Division 4—Application for registration of series of trade marks 44
51 Application—series of trade marks .................................................44
51A Linking series applications ..............................................................44
Part 5—Opposition to registration 46
Division 1—General 46
52 Opposition .......................................................................................46
52A Notice of intention to defend opposition to registration ..................47
53 Circumstances in which opposition may proceed in name of
a person other than the person who filed the notice.........................47
54 Opposition proceedings ...................................................................47
54A Lapsing of opposed application if no notice to defend the
application filed...............................................................................48
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55 Decision...........................................................................................48
56 Appeal .............................................................................................49
Division 2—Grounds for opposing registration 50
57 Registration may be opposed on same grounds as for
rejection...........................................................................................50
58 Applicant not owner of trade mark ..................................................50
58A Opponent’s earlier use of similar trade mark ...................................50
59 Applicant not intending to use trade mark .......................................51
60 Trade mark similar to trade mark that has acquired a
reputation in Australia .....................................................................51
61 Trade mark containing or consisting of a false geographical
indication.........................................................................................51
62 Application etc. defective etc. .........................................................53
62A Application made in bad faith..........................................................54
Part 6—Amendment of application for registration of a trade
mark and other documents 55 63 Amendment of application for registration of trade mark................55
64 Amendment before particulars of application are published............55
65 Amendment after particulars of application have been
published—request for amendment not advertised..........................56
65A Amendment after particulars of application have been
published—request for amendment advertised................................57
66 Amendment of other documents......................................................57
66A Registrar may require certain requests to be in writing ...................58
67 Appeal .............................................................................................58
Part 7—Registration of trade marks 59
Division 1—Initial registration 59
68 Obligation to register .......................................................................59
69 Registration—how effected .............................................................59
70 Colours in registered trade marks ....................................................60
71 Notification of registration ..............................................................60
72 Date and term of registration ...........................................................61
73 Ceasing of registration.....................................................................62
74 Disclaimers......................................................................................62
Division 2—Renewal of registration (general) 63
74A Application of this Division ............................................................63
75 Request for renewal .........................................................................63
76 Notice of renewal due......................................................................63
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77 Renewal before registration expires ................................................64
78 Failure to renew...............................................................................64
79 Renewal within 6 months after registration expires.........................64
80 Status of unrenewed trade mark ......................................................64
Division 3—Renewal of registration (registration delayed for 10
or more years after filing date) 66
80A Application of this Division ............................................................66
80B Expiry of registration.......................................................................66
80C Notification about renewal ..............................................................66
80D Request for renewal .........................................................................67
80E Renewal within prescribed period ...................................................67
80F Failure to renew...............................................................................67
80G Renewal within 10 months after end of prescribed period...............68
80H Status of unrenewed trade mark ......................................................69
Part 8—Amendment, cancellation and revocation of
registration 70
Division 1—Action by Registrar 70
Subdivision A—Amending Register 70
81 Correction of Register .....................................................................70
82 Adaptation of classification .............................................................70
82A Linking series registrations..............................................................70
83 Amendment of particulars of trade mark entered in Register ..........71
83A Amendment of registered trade mark—inconsistency with
international agreements..................................................................72
Subdivision B—Cancelling registration 74
84 Cancellation of registration .............................................................74
Subdivision C—Revoking registration 74
84A Registration may be revoked ...........................................................74
84B Registration must be revoked if opposition was ignored in
registration process..........................................................................76
84C Effect of revocation of registration..................................................76
84D Appeal from revocation of registration............................................78
Division 2—Action by court 79
85 Amendment to correct error or omission .........................................79
86 Amendment or cancellation on ground of contravention of
condition etc. ...................................................................................79
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87 Amendment or cancellation—loss of exclusive rights to use
trade mark........................................................................................79
88 Amendment or cancellation—other specified grounds....................80
88A Applications by Registrar ................................................................81
89 Rectification may not be granted in certain cases if registered
owner not at fault etc. ......................................................................81
90 Duties and powers of Registrar........................................................82
Division 3—Amendment of certificate of registration 83
91 Amendment of certificate of registration.........................................83
Part 9—Removal of trade mark from Register for non-use 84 92 Application for removal of trade mark from Register etc. ...............84
93 Time for making application ...........................................................85
94 Referral to court...............................................................................86
95 Notification of application...............................................................86
96 Notice of opposition ........................................................................86
96A Circumstances in which opposition may proceed in name of
a person other than the person who filed the notice.........................87
97 Removal of trade mark from the Register etc. if application
unopposed etc. .................................................................................87
98 Trade mark restored to Register if notice of opposition filed
within extended time .......................................................................88
99 Proceedings before Registrar ...........................................................88
99A Dismissal of opposition filed with Registrar ...................................89
100 Burden on opponent to establish use of trade mark etc. ..................89
101 Determination of opposed application—general .............................91
102 Determination of opposed application—localised use of
trade mark........................................................................................92
103 Registrar to comply with order of court...........................................94
104 Appeal .............................................................................................94
105 Certificate—use of trade mark.........................................................94
Part 10—Assignment and transmission of trade marks 95 106 Assignment etc. of trade mark .........................................................95
107 Applications for record to be made of assignment etc. of
trade mark whose registration is sought...........................................95
108 Recording of assignment etc. of trade mark whose
registration is sought........................................................................96
109 Application for record of assignment etc. of registered trade
mark to be entered in Register .........................................................96
110 Recording of assignment etc. of registered trade mark ....................96
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111 Notification of application to be given to person recorded as
claiming interest in trade mark etc...................................................97
Part 11—Voluntary recording of claims to interests in and
rights in respect of trade marks 98
Division 1—Preliminary 98
112 Object of Part...................................................................................98
Division 2—Interests in, and rights in respect of, registered trade
marks 99
113 Application for registration of interest or right in trade mark..........99
114 Record of claims to interest etc. ......................................................99
115 Amendment and cancellation ........................................................100
116 Record not proof etc. of existence of right etc. ..............................100
Division 3—Interests in, and rights in respect of, unregistered
trade marks 101
117 Application for recording of interest or right in trade mark...........101
118 Record of claims to interest etc. ....................................................101
119 Amendment and cancellation ........................................................101
Part 12—Infringement of trade marks 102 120 When is a registered trade mark infringed? ...................................102
121 Infringement of trade mark by breach of certain restrictions.........103
122 When is a trade mark not infringed?..............................................105
122A Exhaustion of a registered trade mark in relation to goods............106
123 Services to which registered trade mark has been applied by
or with consent of registered owner...............................................108
124 Prior use of identical trade mark etc. .............................................108
125 What courts may hear action for infringement of registered
trade mark......................................................................................109
126 What relief can be obtained from court .........................................109
127 Special case—plaintiff not entitled to damages etc. ......................110
128 Circumstances in which action may not be brought ......................110
129 Application for relief from unjustified threats ...............................111
130 Counterclaim for infringement ......................................................112
130A Mere notification of registered trade mark not a threat..................113
Part 13—Importation of goods infringing Australian trade
marks 114 131 Object of Part.................................................................................114
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132 Notice of objection to importation.................................................114
133 Comptroller-General of Customs may seize goods infringing
trade mark......................................................................................115
133A Determinations about owners of goods .........................................117
134 Notice of seizure............................................................................117
134A Inspection, release etc. of seized goods .........................................119
135 Consent to forfeiture of seized goods ............................................120
136 Claim for release of seized goods ..................................................120
136A Seized goods not claimed are forfeited..........................................121
136B Late claim for release of seized goods...........................................121
136C Objector to be notified of claim.....................................................121
136D Release of seized goods.................................................................122
136E Goods released but not collected are forfeited...............................123
137 Action for infringement of trade mark...........................................123
138 Action for infringement by authorised user ...................................124
139 Disposal of seized goods forfeited to the Commonwealth.............125
140 Power of Comptroller-General of Customs to retain control
of goods .........................................................................................126
141 Insufficient security .......................................................................126
141A Failure to comply with undertaking etc. ........................................126
142 Commonwealth not liable for loss etc. suffered because of
seizure............................................................................................127
143 Power to require information.........................................................127
144 Modification in relation to Norfolk Island etc. ..............................128
Part 14—Offences 129 145 Falsifying or removing a registered trade mark .............................129
146 Falsely applying a registered trade mark .......................................130
147 Making a die etc. for use in trade marks offence ...........................131
147A Drawing etc. trade marks for use in offence ..................................132
147B Possessing or disposing of things for use in trade marks
offence...........................................................................................133
148 Goods with false trade marks ........................................................134
150 Aiding and abetting offences .........................................................136
151 False representations regarding trade marks ..................................136
152 False entries in Register etc. ..........................................................138
153 Disobeying summons etc...............................................................138
154 Refusing to give evidence etc. .......................................................139
156 Acting or holding out without being registered .............................140
157 False representation about Trade Marks Office .............................141
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157A Incorporated trade marks attorney must have a trade marks
attorney director ............................................................................142
159 Forfeiture orders under the proceeds of crime legislation..............144
160 Conduct of employees and agents of natural persons ....................145
Part 15—Collective trade marks 147 161 Object of Part.................................................................................147
162 What is a collective trade mark?....................................................147
163 Application of Act .........................................................................147
164 Application for registration ...........................................................148
165 Limitation on rights given by registered collective trade
mark...............................................................................................148
166 Assignment etc. of collective trade mark.......................................148
167 Infringement of collective trade mark............................................148
Part 16—Certification trade marks 149 168 Object of Part.................................................................................149
169 What is a certification trade mark? ................................................149
170 Application of Act .........................................................................149
171 Rights given by registration of a certification trade mark..............150
172 Rights of persons allowed to use certification trade mark .............150
173 Rules governing the use of certification trade marks .....................150
174 Registrar to send documents to Commission.................................151
175 Certificate by Commission ............................................................151
176 Acceptance or rejection of application ..........................................152
177 Additional ground for rejecting an application or opposing
registration—certification trade mark not distinguishing
certified goods or services .............................................................153
178 Variation of rules...........................................................................154
179 Registrar must publish rules ..........................................................154
180 Assignment of registered certification trade mark .........................154
180A Assignment of unregistered certification trade mark .....................155
181 Rectification of the Register by order of court ..............................155
182 Variation of rules by order of court ...............................................156
183 Delegation of Commission’s powers and functions.......................157
Part 17—Defensive trade marks 158 184 Object of Part.................................................................................158
185 Defensive trade marks ...................................................................158
186 Application of Act .........................................................................159
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187 Additional grounds for rejecting application for registration
or opposing registration .................................................................159
189 Cancellation of registration by Registrar .......................................160
Part 17A—Protected international trade marks under the
Madrid Protocol 161 189A Regulations implementing the Madrid Protocol ............................161
Part 18—Jurisdiction and powers of courts 163 190 Prescribed courts ...........................................................................163
191 Jurisdiction of the Federal Court ...................................................163
191A Jurisdiction of the Federal Circuit Court .......................................163
192 Jurisdiction of other prescribed courts...........................................164
193 Exercise of jurisdiction..................................................................164
194 Transfer of proceedings .................................................................165
195 Appeals..........................................................................................165
196 Registrar may appear in appeals ....................................................166
197 Powers of Federal Court and Federal Circuit Court on
hearing an appeal...........................................................................166
198 Practice and procedure of prescribed courts ..................................166
Part 19—Administration 168 199 Trade Marks Office and sub-offices ..............................................168
200 Seal of Trade Marks Office ...........................................................168
201 Registrar of Trade Marks...............................................................168
202 Registrar’s powers .........................................................................168
203 Exercise of power by Registrar......................................................169
204 Registrar to act as soon as practicable ...........................................169
205 Deputy Registrar of Trade Marks ..................................................169
206 Delegation of Registrar’s powers and functions ............................170
Part 20—The Register and official documents 171 207 The Register ..................................................................................171
208 Register may be kept on computer ................................................171
209 Inspection of Register....................................................................172
210 Evidence—the Register .................................................................172
211 Evidence—certified copies of documents .....................................173
Part 21—Miscellaneous 174
Division 1—Applications and other documents 174
212 Making and signing applications etc. ............................................174
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213 Filing of documents .......................................................................174
213A Approved means of filing documents ............................................174
213B Directions by Registrar for filing of documents ............................175
213C Directions by Registrar for filing of evidence ...............................175
214 Withdrawal of application etc........................................................176
214A Notifications by Registrar under this Act ......................................176
215 Address for service ........................................................................176
216 Change of name.............................................................................179
217 Death of applicant etc. ...................................................................179
217A Prescribed documents relating to trade marks to be made
available for public inspection.......................................................179
Division 2—Proceedings before the Registrar or a court 181
218 Description of registered trade mark .............................................181
219 Evidence of trade usage.................................................................181
220 Death of party to proceeding before Registrar ...............................181
221 Costs awarded by Registrar ...........................................................181
222 Security for costs ...........................................................................182
Division 2A—Computerised decision-making 183
222A Computerised decision-making .....................................................183
Division 3—General 185
223 Fees ...............................................................................................185
223AA Approved means of paying a fee ...................................................186
223A Doing act when Trade Marks Office reopens after end of
period otherwise provided for doing act ........................................186
224 Extension of time...........................................................................187
225 Convention countries.....................................................................189
226 Publication of Official Journal etc.................................................190
226A Requirements for confidential treatment of information held
in the Trade Marks Office .............................................................190
226B Certain proceedings do not lie .......................................................190
227 Notice regarding review of decision by Administrative
Appeals Tribunal ...........................................................................191
228 Use of trade mark for export trade.................................................191
228A Registration of trade marks attorneys ............................................192
228B Deregistration of trade marks attorneys .........................................194
229 Privileges of trade marks attorney and patent attorney ..................194
229AA Designated Manager may disclose information to Board ..............195
229A Designated Manager may disclose information to ASIC...............195
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229B Publishing personal information of registered trade marks
attorneys ........................................................................................195
230 Passing off actions.........................................................................196
231 Regulations....................................................................................196
231A Regulations may make provision in relation to the Tobacco
Plain Packaging Act 2011 .............................................................199
Part 22—Repeal and transitional 201
Division 1—Repeal 201
232 Repeal............................................................................................201
Division 2—Marks registered under the repealed Act 202
233 Automatic registration under this Act............................................202
234 Registration conclusive after 7 years .............................................202
235 Term of registration .......................................................................203
236 Renewal.........................................................................................203
237 Restoration of particulars to Register and renewal of
registration where registration expired within 12 months
before 1 January 1996 ...................................................................204
238 Disclaimers....................................................................................204
239 Rules governing the use of certification trade marks
registered in Part C of the old register ...........................................205
239A Linked trade marks ........................................................................205
Division 3—Matters pending immediately before repeal of
repealed Act 207
240 Applications, notices etc.—general ...............................................207
241 Application for registration of trade mark .....................................207
242 Divisional application in relation to pending application ..............209
243 More than one application lodged on same day for
registration of same trade mark .....................................................210
244 Application for registration of trade mark whose registration
has been sought in Convention country .........................................211
245 Application for registration of a mark in Part C of the old
register ...........................................................................................212
246 Application for registration of a mark in Part D of the old
register ...........................................................................................213
247 Amendment of application—specification of goods or
services ..........................................................................................213
248 Revival of application for registration of trade mark that had
lapsed before 1 January 1996 ........................................................214
249 Application for registration of assignment etc. ..............................215
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250 Rectification of Register ................................................................215
251 Action for removal of trade mark from Register for non-use ........215
252 Action for infringement of trade mark etc. ....................................216
253 Action under this Act for infringement of trade mark under
repealed Act...................................................................................216
254 Acts not constituting infringement of existing registered
mark...............................................................................................216
254A Acts not constituting infringement of trade mark—pending
application under the repealed Act ................................................217
254B Part B defence—infringement of existing registered mark............217
254C Part B defence—infringement of trade mark (pending
application under the repealed Act) ...............................................218
255 Application of this Act—general ...................................................219
256 Fees ...............................................................................................219
Division 4—General 220
257 The Registrar and Deputy Registrar ..............................................220
258 Confidential information received by Registrar under
section 74 of the repealed Act .......................................................220
259 Documents kept under repealed Act ..............................................220
260 Address for service ........................................................................220
Endnotes 222
Endnote 1—About the endnotes 222
Endnote 2—Abbreviation key 224
Endnote 3—Legislation history 225
Endnote 4—Amendment history 230
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READER’S GUIDE
This guide aims to give you a general idea of the purpose of this
Act and some information about its structure. It also explains
briefly how the operation and interpretation of this Act is affected
by other Acts.
Purpose of this Act
This Act provides for the registration of trade marks, collective
trade marks, certification trade marks and defensive trade marks
(for a definition of these terms, see sections 17, 162, 169 and 185
respectively) and sets out and protects the rights deriving from
registration.
It is a rewrite of the legislation relating to trade marks, certification
trade marks and defensive trade marks. The previous Act did not
deal with collective trade marks.
In rewriting the legislation, some changes have been made to
reflect international trends towards greater uniformity in that field
of law. In particular, this Act conforms with the minimum
standards and principles prescribed for trade marks in the
Agreement Establishing the World Trade Organization.
An attempt has also been made to simplify the language as much as
possible to make it easier for readers to understand the law. For
that reason, a number of terms used in the old legislation have been
replaced by simpler ones. For example, the word “owner” has been
used where the previous Act referred to the proprietor of a trade
mark. No difference in meaning is intended when simpler terms
have thus been used.
Summary of this Act
Part 1: Deals with formal matters such as the
commencement of this Act and its general
application.
Part 2: Contains definitions and terms that are used
frequently throughout this Act.
Part 3: Explains what is a trade mark and sets out
the rights given by this Act to the registered
owner and any authorised user of a
registered trade mark.
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Parts 4 and 5: Deal with the steps that you have to take to
have a trade mark registered.
Part 6: Sets out how and why an application for
registration and other documents may be
amended.
Parts 7, 8 and 9: Deal with the registration of trade marks and
how and why particulars of the registration
of a trade mark may be amended, cancelled
or removed from the Register.
Parts 10 and 11: Deal with the assignment of trade marks, the
registration of assignments of registered
trade marks and the recording of the rights
and interests that persons (other than
registered owners) may have in registered
trade marks or trade marks whose
registration is being sought.
Parts 12, 13 and 14: Deal with the protection of trade marks.
Part 12 sets out what constitutes an
infringement of a trade mark and how to
obtain redress and relief in cases of
infringement. Part 13 provides for a special
regime to deal with any importation of
goods that would infringe a registered trade
mark. Part 14 makes certain types of
conduct offences against this Act.
Parts 15, 16 and 17: Explain what are collective trade marks,
certification trade marks and defensive trade
marks and apply to them, with necessary
alterations, the provisions of this Act
relating to trade marks.
Part 17A: Enables the making of regulations to enable
the performance of the obligations of
Australia, or to obtain for Australia any
advantage or benefit, under the Madrid
Protocol. Those regulations prevail over this
Act to the extent of any inconsistency.
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Part 18: Deals with the jurisdiction of the courts to
hear and determine matters arising under
this Act.
Parts 19 and 20: Deal with the Trade Marks Office, the
officials responsible for its administration
and the keeping of the Register of Trade
Marks.
Part 21: Deals with miscellaneous matters such as
the payment of fees, the service of
documents and the making of regulations.
Part 22: Repeals the Trade Marks Act 1955 and explains how
matters that were being dealt with under that
Act at the time of its repeal are to be dealt
with when this Act is in force.
How to use this Act
Definitions: Section 6 contains definitions of terms that have
special meanings and are used frequently in this Act. A list of
terms defined in section 6 appears after the Table of Provisions.
Notes: Notes are to be found throughout the text. They are
designed to help you find your way through the Act. They may tell
you that certain words or terms are defined and where to find the
definition; they may alert you to other provisions in this Act and in
other legislation that are relevant to the text you are reading; or
they may draw your attention to information that may help you to
understand the contents or legal consequences of certain provisions
or how to comply with them.
Chart: The appendix to this Guide contains a chart showing the
main steps involved in obtaining the registration of a trade mark.
The chart is intended to be used only as an illustration and is not
intended to have any other effect. If there is any inconsistency
between any matter contained in the chart and a provision of this
Act or the regulations, the provision prevails.
Related legislation
The following Acts are directly relevant to the operation or
interpretation of this Act.
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Acts Interpretation Act 1901
That Act contains general rules about the meaning or effect of
many terms and provisions that are commonly used in
Commonwealth Acts. Some of the notes used in this Act draw your
attention to some of them, but it is not possible to refer to all of
them.
Crimes Act 1914
In Parts 13 and 14, you will find that a penalty, expressed as
imprisonment for a particular period or a number of penalty units,
is set out at the foot of some sections or subsections. Section 4D of
the Crimes Act 1914 provides that this indicates that any
contravention of the section or subsection is an offence against this
Act punishable upon conviction by a penalty not exceeding the
penalty set out.
If only a term of imprisonment is provided as the penalty for an
offence, subsections 4B(2) and 4B(3) of the Crimes Act 1914 allow
a court to impose an appropriate fine instead of, or in addition to,
the term of imprisonment.
Section 4AA of the Crimes Act 1914 sets out the amount of a
penalty unit. Under subsection 4B(3) of that Act a court may
impose on a body corporate convicted of an offence a fine of up to
5 times the amount of the fine that could be imposed on a natural
person convicted of that offence.
Criminal Code
The Criminal Code is set out in the Schedule to the Criminal Code
Act 1995. It contains many general rules that apply to offences.
Chapter 2 of the Criminal Code sets out the general principles of
criminal responsibility. For example, it has default fault elements
that apply to offences that do not specify a fault element and
provides the consequences of an offence being an offence of strict
liability.
Trade Marks Act 1955
That Act is repealed by this Act. It contained the legislation that
previously applied to trade marks, certification trade marks and
defensive trade marks. Even though it is repealed, this Act provides
that some of the provisions of that Act are to continue to apply to
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certain matters that were being dealt with under that Act
immediately before it was repealed.
The list of Acts cited above is not exhaustive. Other Acts may also
affect the operation or interpretation of this Act.
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Application (see section 27)
Must be in approved form.
Renewal
Required every 10 years.
Registration
The Registrar must give the registered owner a
certificate and advertise the registration in the
Official Journal (see section 71).
Initial registration is for a period of 10 years
from the filing date.
Acceptance
Notice of acceptance is sent to the applicant and
advertised in the Official Journal.
In some cases the Registrar may only accept an
application subject to certain conditions or
limitations.
Examination
The application will be examined to ensure it is in
accordance with the Act and there are no
grounds for rejecting it (see section 31).
Report Issued
A report to the
applicant explains any
deficiencies in the
application.
Hearing by Registrar *
Registrar must provide
the applicant with an
opportunity to be heard
before an application is
rejected.
Rejection
The Registrar will
reject an application
if it fails any of the
criteria in this Act.
Opposition
Another person may
oppose registration of the
trade mark under Part 5.
Hearing by Registrar *
Refusal to Register
After considering
the case presented
at opposition the
Registrar may
decide to refuse to
register the trade
mark.
Applicant
Response
Reconsideration
* An Appeal may be made to the Federal Court aginst the decision of the Registrar.
Unbroken lines signify the most likely course of events.
Note: Fees and time limits may apply at various stages of this process.
Appendix - Obtaining registration of a trade mark
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List of terms defined in section 6
action period
applicant
applied to
applied in relation to
approved form
assignment
Australia
Australian continental shelf
authorised use
authorised user
Board
certification trade mark
claim period
collective trade mark
Commission
company
Comptroller-General of Customs
Convention country
date of registration
deceptively similar
defensive trade mark
Deputy Registrar
Designated Manager
designated owner
divisional application
employee
examine
existing registered mark
Federal Court
file
filing date
geographical indication
goods of a person
incorporated legal practice
incorporated trade marks attorney
intellectual property advice
lawyer
limitations
month
notified trade mark
objector
Official Journal
old register
opponent
originate
patent attorney
pending
person
personal information
predecessor in title
preferred means
prescribed court
priority date
Register
registered owner
registered trade mark
registered trade marks attorney
Registrar
registration number
remove from the Register
repealed Act
seized goods
services of a person
sign
similar goods
similar services
this Act
trade mark
trade marks attorney director
trade marks work
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transmission
use of a trade mark
use of a trade mark in relation to
goods
use of a trade mark in relation to
services
word
working day
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Preliminary Part 1
Section 1
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An Act relating to trade marks
Part 1—Preliminary
1 Short title
This Act may be cited as the Trade Marks Act 1995.
2 Commencement
(1) Part 1 commences on the day on which this Act receives the Royal
Assent.
(2) This Act, other than Part 1, commences on 1 January 1996.
3 Act binds the Crown
(1) This Act binds the Crown in right of the Commonwealth, of each
of the States, of the Australian Capital Territory and of the
Northern Territory.
(2) Nothing in this Act makes the Crown liable to be prosecuted for an
offence.
4 Application of Act
This Act extends to:
(a) Christmas Island; and
(b) Cocos (Keeling) Islands; and
(c) Norfolk Island; and
(d) the Australian continental shelf; and
(e) the waters above the Australian continental shelf; and
(f) the airspace above Australia and the Australian continental
shelf.
Note: For Australia and Australian continental shelf see section 6.
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Section 4A
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4A Application of the Criminal Code
Chapter 2 of the Criminal Code applies to all offences created by
this Act.
Note: Chapter 2 of the Criminal Code sets out the general principles of
criminal responsibility.
5 Repeal of Trade Marks Act 1994
The Trade Marks Act 1994 is repealed.
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Part 2—Interpretation
6 Definitions
(1) In this Act, unless the contrary intention appears:
action period, in relation to particular seized goods, means the
period prescribed by the regulations after notice of a claim for
release of the goods is given to the objector under section 136C.
applicant, in relation to an application, means the person in whose
name the application is for the time being proceeding.
applied to and applied in relation to have the respective meanings
given in section 9.
approved form means a form approved by the Registrar for the
purposes of the provision in which the expression appears.
assignment, in relation to a trade mark, means an assignment by
act of the parties concerned.
Australia includes the following external Territories:
(a) Christmas Island;
(b) Cocos (Keeling) Islands;
(c) Norfolk Island.
Australian continental shelf has the same meaning as in the Seas
and Submerged Lands Act 1973.
authorised use, in relation to a trade mark, has the meaning given
by section 8.
authorised user, in relation to a trade mark, has the meaning given
by section 8.
Board has the same meaning as in the Patents Act 1990.
certification trade mark has the meaning given by section 169.
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claim period, in relation to particular seized goods, means the
period prescribed by the regulations after notice of seizure of the
goods is given to the designated owner under section 134.
collective trade mark has the meaning given by section 162.
Commission means the Australian Competition and Consumer
Commission established under the Competition and Consumer Act
2010.
company means a company registered under the Corporations Act
2001.
Comptroller-General of Customs means the person who is the
Comptroller-General of Customs in accordance with
subsection 11(3) or 14(2) of the Australian Border Force Act 2015.
Convention country means a foreign country or region of a kind
prescribed by the regulations.
date of registration means:
(a) in relation to the registration of a trade mark in respect of
particular goods or services other than a trade mark to which
paragraph (b) applies—the day from which the registration of
the trade mark in respect of those goods or services is taken
to have had effect under subsection 72(1) or (2); or
(b) in relation to a trade mark to which subsection 239A(3)
applies—the day referred to in subsection 239A(4).
deceptively similar has the meaning given by section 10.
defensive trade mark has the meaning given by section 185.
Deputy Registrar means a Deputy Registrar of Trade Marks.
Designated Manager has the same meaning as in the Patents Act
1990.
designated owner, in relation to goods imported into Australia,
means:
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(a) the person identified as the owner of the goods on the entry
made in relation to the goods under section 68 of the
Customs Act 1901; or
(b) if no such entry exists—the person determined to be the
owner of the goods under section 133A of this Act.
divisional application has the meaning given by section 45.
employee means a person, other than the Registrar or a Deputy
Registrar, who:
(a) is a person engaged under the Public Service Act 1999 and is
employed in the Trade Marks Office; or
(b) is not such a person but performs services, in the Trade
Marks Office, for or on behalf of the Commonwealth.
examine, in relation to an application for the registration of a trade
mark, means to carry out an examination under section 31 in
relation to the application.
existing registered mark means a mark that was registered in Part
A, B, C or D of the old register before 1 January 1996 and whose
registration under the repealed Act was due to expire after that day.
Federal Circuit Court means the Federal Circuit Court of
Australia.
Federal Court means the Federal Court of Australia.
file means to file at the Trade Marks Office.
Note: See section 213.
filing date means:
(a) in relation to an application for the registration of a trade
mark other than an application referred to in another
paragraph of this definition—the day on which the
application is filed; or
(b) in relation to a divisional application for the registration of a
trade mark—the filing date of the application that is the
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parent application (within the meaning of section 45) in
relation to the divisional application; or
(c) in relation to an application to which section 241 applies—
the day referred to in subsection 241(5); or
(d) in relation to an application made under section 243—the day
referred to in subsection 243(6); or
(e) in relation to a prescribed application—the day determined in
the prescribed way.
geographical indication, in relation to goods, means a sign that
identifies the goods as originating in a country, or in a region or
locality in that country, where a given quality, reputation or other
characteristic of the goods is essentially attributable to their
geographical origin.
goods of a person means goods dealt with or provided in the
course of trade by the person.
incorporated legal practice means a body corporate recognised
under a law of the Commonwealth, a State or a Territory as an
incorporated legal practice (however described).
incorporated trade marks attorney has the meaning given by
subsection 228A(6B).
intellectual property advice has the meaning given by
subsection 229(3).
lawyer means a barrister or solicitor of the High Court or of the
Supreme Court of a State or Territory.
limitations means limitations of the exclusive right to use a trade
mark given by the registration of the trade mark, including
limitations of that right as to:
(a) mode of use; or
(b) use within a territorial area within Australia; or
(c) use in relation to goods or services to be exported.
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month: the end of a period with a length expressed in months is
worked out under section 6A.
notified trade mark means a trade mark in respect of which a
notice under section 132 is in force.
objector, in relation to seized goods, means any person who has
given under section 132 a notice in respect of those goods that is in
force.
Official Journal means the Official Journal of Trade Marks
mentioned in section 226.
old register means the Register of Trade Marks kept under the
repealed Act.
opponent, in relation to the registration of a trade mark, means:
(a) the person who has filed (under section 52) a notice of
opposition to the registration of the trade mark; or
(b) if section 53 applies—a person in whose name the notice of
opposition is taken to have been filed.
originate, in relation to wine, has the meaning given by section 15.
patent attorney means a person registered as a patent attorney
under the Patents Act 1990.
pending, in relation to an application for the registration of a trade
mark, has the meaning given by section 11.
person includes a body of persons, whether incorporated or not.
personal information has the same meaning as in the Privacy Act
1988.
PPSA security interest (short for Personal Property Securities Act
security interest) means a security interest within the meaning of
the Personal Property Securities Act 2009 and to which that Act
applies, other than a transitional security interest within the
meaning of that Act.
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Note 1: The Personal Property Securities Act 2009 applies to certain security
interests in personal property. See the following provisions of that
Act:
(a) section 8 (interests to which the Act does not apply);
(b) section 12 (meaning of security interest);
(c) Chapter 9 (transitional provisions).
Note 2: For the meaning of transitional security interest, see section 308 of
the Personal Property Securities Act 2009.
predecessor in title, in relation to a person who claims to be the
owner of a trade mark, means:
(a) if the trade mark was assigned or transmitted to one or more
than one other person before it was assigned or transmitted to
the first-mentioned person—that other person or any one of
those other persons; or
(b) if paragraph (a) does not apply—the person who assigned the
trade mark, or from whom the trade mark was transmitted, to
the first-mentioned person.
Note: In the case of a trade mark that is neither registered nor the subject of
an application for registration, the trade mark may be assigned or
transmitted in Australia only in conjunction with the goodwill of a
business concerned with the trade mark. If the trade mark is registered
or the subject of an application for registration, section 106 provides
that the trade mark may be assigned or transmitted with or without the
goodwill of the business.
preferred means:
(a) in relation to filing a document with the Trade Marks
Office—means the means specified under
subsection 213A(4); or
(b) in relation to paying a fee—means the means specified under
subsection 223AA(4).
prescribed court means a court that is under section 190 a
prescribed court for the purposes of this Act.
priority date has the meaning given by section 12.
Register means the Register of Trade Marks kept under
section 207.
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registered owner, in relation to a registered trade mark, means the
person in whose name the trade mark is registered.
registered trade mark means a trade mark whose particulars are
entered in the Register under this Act.
Note: In addition, the regulations may provide for the effect of a protected
international trade mark: see Part 17A.
registered trade marks attorney means a person registered as a
trade marks attorney under this Act.
Registrar means the Registrar of Trade Marks.
Note: Sections 201, 202, 203, 204 and 206 deal with the office, powers and
functions of the Registrar of Trade Marks.
registration number, in relation to a registered trade mark, means
the number given to it under subsection 68(2).
remove from the Register, in relation to a trade mark, has the
meaning given by section 13.
repealed Act has the meaning given by section 16.
seized goods means goods seized under section 133.
services of a person means services dealt with or provided in the
course of trade by the person.
sign includes the following or any combination of the following,
namely, any letter, word, name, signature, numeral, device, brand,
heading, label, ticket, aspect of packaging, shape, colour, sound or
scent.
similar goods has the meaning given by subsection 14(1).
similar services has the meaning given by subsection 14(2).
this Act includes the regulations.
trade mark has the meaning given by section 17.
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trade marks attorney director has the meaning given by
subsection 228A(6C).
trade marks work has the meaning given by subsection 157A(8).
transmission means:
(a) transmission by operation of law; or
(b) devolution on the personal representative of a deceased
person; or
(c) any other kind of transfer except assignment.
use of a trade mark has a meaning affected by subsections 7(1),
(2) and (3).
use of a trade mark in relation to goods has the meaning given by
subsection 7(4).
use of a trade mark in relation to services has the meaning given
by subsection 7(5).
word includes an abbreviation of a word.
working day means a day that is not:
(a) a Saturday; or
(b) a Sunday; or
(c) a public holiday in the Australian Capital Territory.
World Trade Organization means the body of that name
established by the WTO Agreement, done at Marrakesh on
15 April 1994.
Note: The text of the WTO Agreement is set out in Australian Treaty Series
1995 No. 8 ([1995] ATS 8). In 2009, the text of an Agreement in the
Australian Treaty Series was accessible through the Australian
Treaties Library on the AustLII website (www.austlii.edu.au).
(2) For the purposes of this Act, a reference to a country includes a
reference to a member of the World Trade Organization.
(3) Despite subsection 14(2) of the Legislation Act 2003, regulations
made for the purposes of the definition of Convention country in
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subsection (1) may make provision in relation to a matter by
applying, adopting or incorporating, with or without modification,
any matter contained in any other instrument or other writing as in
force or existing from time to time.
6A Periods expressed in months
For the purposes of this Act, a period expressed in months and
dating from an event ends:
(a) on the day, in the relevant subsequent month, which has the
same number as the day of the event; or
(b) if the relevant subsequent month has no day with the same
number—on the last day of the month.
Note: For example, a period of 3 months from an event on 30 September
ends on 30 December under this rule.
7 Use of trade mark
(1) If the Registrar or a prescribed court, having regard to the
circumstances of a particular case, thinks fit, the Registrar or the
court may decide that a person has used a trade mark if it is
established that the person has used the trade mark with additions
or alterations that do not substantially affect the identity of the
trade mark.
Note: For prescribed court see section 190.
(2) To avoid any doubt, it is stated that, if a trade mark consists of the
following, or any combination of the following, namely, any letter,
word, name or numeral, any aural representation of the trade mark
is, for the purposes of this Act, a use of the trade mark.
(3) An authorised use of a trade mark by a person (see section 8) is
taken, for the purposes of this Act, to be a use of the trade mark by
the owner of the trade mark.
(4) In this Act:
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use of a trade mark in relation to goods means use of the trade
mark upon, or in physical or other relation to, the goods (including
second-hand goods).
(5) In this Act:
use of a trade mark in relation to services means use of the trade
mark in physical or other relation to the services.
8 Definitions of authorised user and authorised use
(1) A person is an authorised user of a trade mark if the person uses
the trade mark in relation to goods or services under the control of
the owner of the trade mark.
(2) The use of a trade mark by an authorised user of the trade mark is
an authorised use of the trade mark to the extent only that the user
uses the trade mark under the control of the owner of the trade
mark.
(3) If the owner of a trade mark exercises quality control over goods or
services:
(a) dealt with or provided in the course of trade by another
person; and
(b) in relation to which the trade mark is used;
the other person is taken, for the purposes of subsection (1), to use
the trade mark in relation to the goods or services under the control
of the owner.
(4) If:
(a) a person deals with or provides, in the course of trade, goods
or services in relation to which a trade mark is used; and
(b) the owner of the trade mark exercises financial control over
the other person’s relevant trading activities;
the other person is taken, for the purposes of subsection (1), to use
the trade mark in relation to the goods or services under the control
of the owner.
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(5) Subsections (3) and (4) do not limit the meaning of the expression
under the control of in subsections (1) and (2).
9 Definition of applied to and applied in relation to
(1) For the purposes of this Act:
(a) a trade mark is taken to be applied to any goods, material or
thing if it is woven in, impressed on, worked into, or affixed
or annexed to, the goods, material or thing; and
(b) a trade mark is taken to be applied in relation to goods or
services:
(i) if it is applied to any covering, document, label, reel or
thing in or with which the goods are, or are intended to
be, dealt with or provided in the course of trade; or
(ii) if it is used in a manner likely to lead persons to believe
that it refers to, describes or designates the goods or
services; and
(c) a trade mark is taken also to be applied in relation to goods
or services if it is used:
(i) on a signboard or in an advertisement (including a
televised advertisement); or
(ii) in an invoice, wine list, catalogue, business letter,
business paper, price list or other commercial document;
and goods are delivered, or services provided (as the case
may be) to a person following a request or order made by
referring to the trade mark as so used.
(2) In subparagraph (1)(b)(i):
covering includes packaging, frame, wrapper, container, stopper,
lid or cap.
label includes a band or ticket.
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10 Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively
similar to another trade mark if it so nearly resembles that other
trade mark that it is likely to deceive or cause confusion.
11 Definition of pending
Application for registration under this Act
(1) An application for the registration of a trade mark under this Act is
pending from the time it is filed until:
(a) it lapses (see sections 37 and 54A), is withdrawn (see
section 214) or is rejected (see section 33); or
(b) if the Registrar refuses (under section 55) to register the trade
mark and there is no appeal against the decision—the end of
the period allowed for the appeal; or
(c) if the Registrar refuses (under section 55) to register the trade
mark and:
(i) there is an appeal against the decision; and
(ii) the decision is confirmed on appeal;
—the day on which the decision is confirmed on appeal; or
(d) the trade mark is registered under section 68.
Note: For file see section 6.
Application for registration under repealed Act
(2) An application for the registration of a trade mark under the
repealed Act was pending immediately before 1 January 1996 if
before that day:
(a) the application had not lapsed (see subsection 48(1)), been
withdrawn (see subsection 40A(1)) or refused (see
subsection 44(1)); and
(b) the Registrar had not refused (under section 50) to register
the trade mark or if he or she had refused to register the trade
mark:
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(i) the period allowed for appealing against the decision
had not yet ended; or
(ii) an appeal had been made against the decision but had
not yet been decided; and
(c) the trade mark had not been registered under section 53.
12 Definition of priority date
The priority date for the registration of a trade mark in respect of
particular goods or services is:
(a) if the trade mark is registered—the date of registration of the
trade mark in respect of those goods or services; or
(b) if the registration of the trade mark is being sought—the day
that would be the date of registration of the trade mark in
respect of those goods or services if the trade mark were
registered.
13 Definition of remove from the Register
A trade mark is taken to have been removed from the Register if
the Registrar makes an entry in the Register to the effect that all
entries in the Register relating to the trade mark are taken to have
been removed from the Register.
14 Definition of similar goods and similar services
(1) For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.
(2) For the purposes of this Act, services are similar to other services:
(a) if they are the same as the other services; or
(b) if they are of the same description as that of the other
services.
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15 Definition of originate in relation to wine
For the purposes of this Act:
(a) a wine is taken to have originated in a foreign country or
Australia only if the wine is made from grapes grown within
the territory of that country or of Australia, as the case may
be; and
(b) a wine is taken to have originated in a particular region or
locality of a foreign country or of Australia only if the wine
is made from grapes grown in that region or locality.
16 Definition of repealed Act
(1) The repealed Act means:
(a) the Trade Marks Act 1955 as in force immediately before its
repeal; and
(b) the regulations under that Act that were in force immediately
before its repeal.
Note: For the repeal of the Trade Marks Act 1955 see section 232.
(2) In this Act, unless the contrary intention appears, a reference to a
particular section of the repealed Act includes a reference to the
regulations made for the purposes of that section and that were in
force immediately before that Act was repealed.
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Part 3—Trade marks and trade mark rights
17 What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish
goods or services dealt with or provided in the course of trade by a
person from goods or services so dealt with or provided by any
other person.
Note: For sign see section 6.
18 Certain signs not to be used as trade marks etc.
(1) The regulations may provide that a sign specified in the regulations
is not to be used as a trade mark or as part of a trade mark.
(2) Regulations made under subsection (1) do not affect any trade
mark that:
(a) was a registered trade mark; or
(b) in the case of an unregistered trade mark—was being used in
good faith;
immediately before the regulations were registered under the
Legislation Act 2003.
Note: For registered trade mark see section 6.
19 Certain trade marks may be registered
(1) A trade mark may be registered in accordance with this Act in
respect of:
(a) goods; or
(b) services; or
(c) both goods and services.
(2) The registration of a trade mark may be in respect of goods or
services of more than one class.
Note: See subsection (3) for division into classes.
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(3) The regulations may provide for the classes into which goods and
services are to be divided for the purposes of this Act.
20 Rights given by registration of trade mark
(1) If a trade mark is registered, the registered owner of the trade mark
has, subject to this Part, the exclusive rights:
(a) to use the trade mark; and
(b) to authorise other persons to use the trade mark;
in relation to the goods and/or services in respect of which the
trade mark is registered.
Note 1: For registered owner see section 6.
Note 2: For use see section 7.
Note 3: In addition, the regulations may provide for the effect of a protected
international trade mark: see Part 17A.
(2) The registered owner of a trade mark has also the right to obtain
relief under this Act if the trade mark has been infringed.
Note: For what amounts to an infringement of a trade mark see Part 12.
(3) The rights are taken to have accrued to the registered owner as
from the date of registration of the trade mark.
Note: For date of registration see section 6.
(4) If the trade mark is registered subject to conditions or limitations,
the rights of the registered owner are restricted by those conditions
or limitations.
Note: For limitations see section 6.
(5) If the trade mark is registered in the name of 2 or more persons as
joint owners of the trade mark, the rights granted to those persons
under this section are to be exercised by them as if they were the
rights of a single person.
21 Nature of registered trade mark as property
(1) A registered trade mark is personal property.
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(2) Equities in respect of a registered trade mark may be enforced in
the same way as equities in respect of any other personal property.
Note: For registered trade mark see section 6.
22 Power of registered owner to deal with trade mark
(1) The registered owner of a trade mark may, subject only to any
rights appearing in the Register to be vested in another person, deal
with the trade mark as its absolute owner and give in good faith
discharges for any consideration for that dealing.
(2) This section does not protect a person who deals with the
registered owner otherwise than:
(a) as a purchaser in good faith for value; and
(b) without notice of any fraud on the part of the owner.
Note: For registered owner see section 6.
(2A) Despite subsection (1), the recording in the Register of a right that
is a PPSA security interest does not affect a dealing with a trade
mark.
Note: For PPSA security interest see section 6.
(3) Equities in relation to a registered trade mark may be enforced
against the registered owner, except to the prejudice of a purchaser
in good faith for value.
Note: For registered owner and registered trade mark see section 6.
(4) Subsection (3) does not apply in relation to an equity that is a
PPSA security interest.
Note: The Personal Property Securities Act 2009 deals with the rights of
purchasers of personal property (including intellectual property such
as trade marks) that is subject to PPSA security interests. That Act
also provides for the priority and enforcement of PPSA security
interests. See the following provisions of that Act:
(a) Part 2.5 (taking personal property free of security interests);
(b) Part 2.6 (priority between security interests);
(c) Chapter 4 (enforcement of security interests).
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23 Limitation on rights if similar trade marks etc. registered by
different persons
If trade marks that are substantially identical or deceptively similar
have been registered by more than one person (whether in respect
of the same or different goods or services), the registered owner of
any one of those trade marks does not have the right to prevent the
registered owner of any other of those trade marks from using that
trade mark except to the extent that the first-mentioned owner is
authorised to do so under the registration of his or her trade mark.
Note: For deceptively similar see section 10.
24 Trade mark consisting of sign that becomes accepted as sign
describing article etc.
(1) This section applies if a registered trade mark consists of, or
contains, a sign that, after the date of registration of the trade mark,
becomes generally accepted within the relevant trade as the sign
that describes or is the name of an article, substance or service.
Note: For registered trade mark, sign and date of registration see section 6.
(2) If the trade mark consists of the sign, the registered owner:
(a) does not have any exclusive rights to use, or authorise other
persons to use, the trade mark in relation to:
(i) the article or substance or other goods of the same
description; or
(ii) the service or other services of the same description;
and
(b) is taken to have ceased to have those exclusive rights from
and including the day determined by the court under
subsection (4).
Note: For registered owner see section 6.
(3) If the trade mark contains the sign, the registered owner:
(a) does not have any exclusive rights to use, or authorise other
persons to use, the sign in relation to:
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(i) the article or substance or other goods of the same
description; or
(ii) the service or other services of the same description;
and
(b) is taken to have ceased to have those exclusive rights from
the day determined by the court under subsection (4).
Note: For registered owner see section 6.
(4) For the purposes of subsections (2) and (3), a prescribed court may
determine the day on which a sign first became generally accepted
within the relevant trade as the sign that describes or is the name of
the article, substance or service.
Note: For prescribed court see section 190.
25 Trade mark relating to article etc. formerly manufactured under
patent
(1) This section applies if:
(a) a registered trade mark consists of, or contains, a sign that
describes or is the name of:
(i) an article or substance that was formerly exploited
under a patent; or
(ii) a service that was formerly provided as a patented
process; and
(b) it is at least 2 years since the patent has expired or ceased;
and
(c) the sign is the only commonly known way to describe or
identify the article, substance or service.
Note: For registered trade mark and sign see section 6.
(2) If the trade mark consists of the sign, the registered owner:
(a) does not have any exclusive rights to use, or authorise other
persons to use, the trade mark in relation to:
(i) the article or substance or other goods of the same
description; or
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(ii) the service or other services of the same description;
and
(b) is taken to have ceased to have those exclusive rights from
the end of the period of 2 years after the patent expired or
ceased.
(3) If the trade mark contains the sign, the registered owner:
(a) does not have any exclusive rights to use, or authorise other
persons to use, the sign in relation to:
(i) the article or substance or other goods of the same
description; or
(ii) the service or other services of the same description;
and
(b) is taken to have ceased to have those exclusive rights from
the end of the period of 2 years after the patent expired or
ceased.
26 Powers of authorised user of registered trade mark
(1) Subject to any agreement between the registered owner of a
registered trade mark and an authorised user of the trade mark, the
authorised user may do any of the following:
(a) the authorised user may use the trade mark in relation to the
goods and/or services in respect of which the trade mark is
registered, subject to any condition or limitation subject to
which the trade mark is registered;
(b) the authorised user may (subject to subsection (2)) bring an
action for infringement of the trade mark:
(i) at any time, with the consent of the registered owner; or
(ii) during the prescribed period, if the registered owner
refuses to bring such an action on a particular occasion
during the prescribed period; or
(iii) after the end of the prescribed period, if the registered
owner has failed to bring such an action during the
prescribed period;
(c) the authorised user may cause to be displayed on goods in
respect of which the trade mark is registered, or on their
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package, or on the container in which they are offered to the
public, a notice prohibiting any act that is under
subsection 121(2) a prohibited act in relation to the goods;
(d) the authorised user may:
(i) give to the Comptroller-General of Customs a notice
under section 132 objecting to the importation of goods
that infringe the trade mark; or
(ii) revoke such a notice;
(e) an authorised user may give permission to any person:
(i) to alter or deface; or
(ii) to make any addition to; or
(iii) to remove, erase or obliterate, wholly or partly;
a registered trade mark that is applied to any goods, or in
relation to any goods or services, in respect of which the
trade mark is registered;
(f) the authorised user may give permission to any person to
apply the trade mark to goods, or in relation to goods or
services, in respect of which the trade mark is registered.
Note 1: For registered owner and registered trade mark see section 6.
Note 2: For authorised user see section 8.
Note 3: For what amounts to an infringement of a trade mark see Part 12.
Note 4: For apply to and apply in relation to see section 9.
(2) If the authorised user brings an action for infringement of the trade
mark, the authorised user must make the registered owner of the
trade mark a defendant in the action. However, the registered
owner is not liable for costs if he or she does not take part in the
proceedings.
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Division 1—General
27 Application—how made
(1) A person may apply for the registration of a trade mark in respect
of goods and/or services if:
(a) the person claims to be the owner of the trade mark; and
(b) one of the following applies:
(i) the person is using or intends to use the trade mark in
relation to the goods and/or services;
(ii) the person has authorised or intends to authorise another
person to use the trade mark in relation to the goods
and/or services;
(iii) the person intends to assign the trade mark to a body
corporate that is about to be constituted with a view to
the use by the body corporate of the trade mark in
relation to the goods and/or services.
Note: For use see section 7.
(2) The application must:
(a) be in accordance with the regulations; and
(b) be filed, together with any prescribed document, in
accordance with the regulations; and
(c) be made by a person or persons having legal personality.
Note: For file see section 6.
(2A) Despite paragraph (2)(c), an application for registration of a
collective trade mark need not be made by a person or persons
having legal personality.
Note: For collective trade mark see section 162.
(3) Without limiting the particulars that may be included in an
application, the application must:
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(a) include a representation of the trade mark; and
(b) specify, in accordance with the regulations, the goods and/or
services in respect of which it is sought to register the trade
mark.
(4) Regulations made for the purposes of paragraph (3)(b) may apply,
adopt or incorporate any matter contained in any listing of goods
and/or services published by the Registrar from time to time and
made available for inspection by the public at the Trade Marks
Office and its sub-offices (if any).
(5) An application may be made in respect of goods and services of
one or more of the classes provided for in regulations made under
subsection 19(3).
28 Application by joint owners
If the relations between 2 or more persons interested in a trade
mark are such that none of them is entitled to use the trade mark
except:
(a) on behalf of all of them; or
(b) in relation to goods and/or services with which all of them
are connected in the course of trade;
the persons may together apply for its registration under
subsection 27(1).
29 Application for registration of trade mark whose registration has
been sought in a Convention country—claim for priority
(1) If:
(a) a person has made an application for the registration of a
trade mark in one or more than one Convention country; and
(b) within 6 months after the day on which that application, or
the first of those applications, was made, that person or
another person (successor in title) of whom that person is a
predecessor in title applies to the Registrar for the
registration of the trade mark in respect of some or all of the
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goods and/or services in respect of which registration was
sought in that country or those countries;
that person or that person’s successor in title may, when filing the
application, or within the prescribed period after filing the
application but before the application is accepted, claim a right of
priority for the registration of the trade mark in respect of any or all
of those goods and/or services in accordance with the regulations.
Note: For month see section 6.
(2) The priority claimed is for the registration of the trade mark in
respect of the goods or services:
(a) if an application to register the trade mark was made in only
one Convention country—from (and including) the day on
which the application was made in that country; or
(b) if applications to register the trade mark were made in more
than one Convention country—from (and including) the day
on which the earliest of those applications was made.
(3) The regulations may provide for the filing of documents in support
of a notice claiming priority and, in particular, for the filing of
certified copies of any application for the registration of the trade
mark made in a Convention country.
Note: For Convention country see section 225.
30 Particulars of application to be published
The Registrar must publish the particulars of the application in
accordance with the regulations.
31 Registrar to examine, and report on, application
The Registrar must, in accordance with the regulations, examine
and report on:
(a) whether the application has been made in accordance with
this Act; and
(b) whether there are grounds under this Act for rejecting it.
Note: For this Act see section 6.
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32 Registrar to decide on disputed classification of goods etc.
If a question arises as to the class in which goods or services are
comprised:
(a) that question is to be decided by the Registrar; and
(b) the decision of the Registrar is not subject to appeal and may
not be called into question in an appeal or other proceedings
under this Act.
33 Application accepted or rejected
(1) The Registrar must, after the examination, accept the application
unless he or she is satisfied that:
(a) the application has not been made in accordance with this
Act; or
(b) there are grounds under this Act for rejecting it.
Note: For this Act see section 6.
(2) The Registrar may accept the application subject to conditions or
limitations.
Note: For limitations see section 6.
(3) If the Registrar is satisfied that:
(a) the application has not been made in accordance with this
Act; or
(b) there are grounds under this Act for rejecting it;
the Registrar must reject the application.
Note: For this Act see section 6.
(4) The Registrar may not reject an application without giving the
applicant an opportunity of being heard.
Note: For applicant see section 6.
34 Notification of decision
The Registrar must:
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(a) notify the applicant of his or her decision under section 33;
and
(b) advertise the decision in the Official Journal.
Note: For applicant see section 6.
35 Appeal
The applicant may appeal to the Federal Court or the Federal
Circuit Court against a decision of the Registrar:
(a) to accept the application subject to conditions or limitations;
or
(b) to reject the application.
Note: For applicant see section 6.
36 Deferment of acceptance
The Registrar may defer the acceptance of the application in the
circumstances, and for the period, provided for in the regulations.
37 Lapsing of application if not accepted in time
(1) Subject to subsection (2), an application lapses if it is not accepted
within the prescribed period or within that period as extended in
accordance with the regulations.
(2) If, after the prescribed period or the prescribed period as extended
(as the case may be) has expired, the Registrar extends under
section 224 the period within which the application may be
accepted, the application:
(a) is taken not to have lapsed when the prescribed period
expired; and
(b) lapses if it is not accepted within the extended period.
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38 Revocation of acceptance
(1) Before a trade mark is registered, the Registrar may revoke the
acceptance of the application for registration of the trade mark if he
or she is satisfied that:
(a) the application should not have been accepted, taking account
of all the circumstances that existed when the application was
accepted (whether or not the Registrar knew then of their
existence); and
(b) it is reasonable to revoke the acceptance, taking account of
all the circumstances.
(2) If the Registrar revokes the acceptance:
(a) the application is taken to have never been accepted; and
(b) the Registrar must examine, and report on, the application as
necessary under section 31; and
(c) sections 33 and 34 again apply in relation to the application.
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Division 2—Grounds for rejecting an application
39 Trade mark containing etc. certain signs
(1) An application for the registration of a trade mark must be rejected
if the trade mark contains or consists of a sign that, under
regulations made for the purposes of section 18, is not to be used as
a trade mark.
(2) An application for the registration of a trade mark may be rejected
if the trade mark contains or consists of:
(a) a sign that is prescribed for the purposes of this subsection;
or
(b) a sign so nearly resembling:
(i) a sign referred to in paragraph (a); or
(ii) a sign referred to in subsection (1);
as to be likely to be taken for it.
40 Trade mark that cannot be represented graphically
An application for the registration of a trade mark must be rejected
if the trade mark cannot be represented graphically.
41 Trade mark not distinguishing applicant’s goods or services
(1) An application for the registration of a trade mark must be rejected
if the trade mark is not capable of distinguishing the applicant’s
goods or services in respect of which the trade mark is sought to be
registered (the designated goods or services) from the goods or
services of other persons.
Note: For goods of a person and services of a person see section 6.
(2) A trade mark is taken not to be capable of distinguishing the
designated goods or services from the goods or services of other
persons only if either subsection (3) or (4) applies to the trade
mark.
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(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to
distinguish the designated goods or services from the goods
or services of other persons; and
(b) the applicant has not used the trade mark before the filing
date in respect of the application to such an extent that the
trade mark does in fact distinguish the designated goods or
services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently,
inherently adapted to distinguish the designated goods or
services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the
designated goods or services as being those of the applicant
having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted
to distinguish the goods or services from the goods or
services of other persons;
(ii) the use, or intended use, of the trade mark by the
applicant;
(iii) any other circumstances.
Note 1: Trade marks that are not inherently adapted to distinguish goods or
services are mostly trade marks that consist wholly of a sign that is
ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2: For goods of a person and services of a person see section 6.
Note 3: Use of a trade mark by a predecessor in title of an applicant and an
authorised use of a trade mark by another person are each taken to be
use of the trade mark by the applicant (see subsections (5) and 7(3)
and section 8).
(5) For the purposes of this section, the use of a trade mark by a
predecessor in title of an applicant for the registration of the trade
mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
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Note 2: If a predecessor in title had authorised another person to use the trade
mark, any authorised use of the trade mark by the other person is
taken to be a use of the trade mark by the predecessor in title (see
subsection 7(3) and section 8).
42 Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected
if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
43 Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of
particular goods or services must be rejected if, because of some
connotation that the trade mark or a sign contained in the trade
mark has, the use of the trade mark in relation to those goods or
services would be likely to deceive or cause confusion.
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the
registration of a trade mark (applicant’s trade mark) in respect of
goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or
deceptively similar to:
(i) a trade mark registered by another person in respect of
similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar
goods or closely related services is being sought by
another person; and
(b) the priority date for the registration of the applicant’s trade
mark in respect of the applicant’s goods is not earlier than the
priority date for the registration of the other trade mark in
respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10.
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Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected
if the trade mark is substantially identical with, or deceptively similar
to, a protected international trade mark or a trade mark for which there
is a request to extend international registration to Australia: see
Part 17A.
(2) Subject to subsections (3) and (4), an application for the
registration of a trade mark (applicant’s trade mark) in respect of
services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of
similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar
services or closely related goods is being sought by
another person; and
(b) the priority date for the registration of the applicant’s trade
mark in respect of the applicant’s services is not earlier than
the priority date for the registration of the other trade mark in
respect of the similar services or closely related goods.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected
if the trade mark is substantially identical with, or deceptively similar
to, a protected international trade mark or a trade mark for which there
is a request to extend international registration to Australia: see
Part 17A.
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade
marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the
applicant’s trade mark subject to any conditions or limitations that
the Registrar thinks fit to impose. If the applicant’s trade mark has
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been used only in a particular area, the limitations may include that
the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(4) If the Registrar in either case is satisfied that the applicant, or the
applicant and the predecessor in title of the applicant, have
continuously used the applicant’s trade mark for a period:
(a) beginning before the priority date for the registration of the
other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the
applicant’s trade mark;
the Registrar may not reject the application because of the
existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of
the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.
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45 Divisional applications
(1) If a single application for the registration of a trade mark in respect
of certain goods and/or services is pending (parent application),
the applicant may make another application (divisional
application) for the registration of the trade mark in respect of
some only of the goods and/or services in respect of which
registration is sought under the parent application.
Note: For applicant and pending see section 6.
(2) To avoid doubt, the parent application may itself be a divisional
application.
Note: A divisional application may be made by a person who has become
the applicant in relation to the parent application because of
subsection 108(2) (which deals with assignment and transmission).
46 Rules relating to divisional applications
(1) A divisional application must:
(a) be for the registration of the trade mark to which the parent
application relates; and
(b) specify the goods and/or services to which it relates; and
(c) specify the goods and/or services that are to remain in the
parent application.
Note: For divisional application and parent application see section 45.
(2) When a divisional application is made, the Registrar must, unless
the parent application has lapsed, amend the parent application by
excluding the goods and/or services in respect of which the
divisional application is made.
Note: Section 204 requires the Registrar, where no time or period is
specified for doing a thing, to do the thing as soon as practicable.
However, it is possible that a parent application will lapse before it is
practicable for the Registrar to amend it under subsection (2) of this
section.
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Division 4 Application for registration of series of trade marks
Section 51
44 Trade Marks Act 1995
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Division 4—Application for registration of series of trade
marks
51 Application—series of trade marks
(1) A person may make a single application under subsection 27(1) for
the registration of 2 or more trade marks in respect of goods and/or
services if the trade marks resemble each other in material
particulars and differ only in respect of one or more of the
following matters:
(a) statements or representations as to the goods or services in
relation to which the trade marks are used or are intended to
be used;
(b) statements or representations as to number, price, quality or
names of places;
(c) the colour of any part of the trade mark.
(2) If:
(a) the application meets all the requirements of this Act; and
(b) the Registrar is required (under section 68) to register the
trade marks;
he or she must register them as a series in one registration.
51A Linking series applications
(1) Subsection (2) applies if:
(a) before the commencement of this section, 2 or more
applications (series applications) were made each seeking
the registration of the same 2 or more trade marks in respect
of goods or services of different classes; and
(b) the filing date of each of the series applications is the same;
and
(c) each of the trade marks has the same owner.
Note: For filing date see section 6.
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(2) The owner of the trade marks may apply to the Registrar, in
writing, to have:
(a) the series applications; or
(b) so many of the series applications as are identified in the
application to the Registrar;
dealt with under this Act as if they were one application for the
registration of the trade marks in respect of all goods and services
specified in the series applications or the identified series
applications.
Note: For this Act see section 6.
(3) If an application is made under subsection (2), the Registrar must
deal with the series applications that are the subject of the
application under that subsection as if they were one application.
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Part 5 Opposition to registration
Division 1 General
Section 52
46 Trade Marks Act 1995
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Part 5—Opposition to registration
Division 1—General
52 Opposition
(1) If the Registrar has accepted an application for the registration of a
trade mark, a person may oppose the registration by filing a notice
of opposition.
(2) The notice of opposition must be filed:
(a) in the form prescribed by the regulations; and
(b) within the prescribed period, or within that period as
extended in accordance with the regulations or in accordance
with subsection (5).
(3) Regulations made for the purposes of paragraph (2)(a) or (b) may
make different provision with respect to different components (if
any) of the notice of opposition.
(3A) Subsection (3) does not limit subsection 33(3A) of the Acts
Interpretation Act 1901.
(4) The registration of a trade mark may be opposed on any of the
grounds specified in this Act and on no other grounds.
Note: For this Act see section 6.
(5) If:
(a) a person is granted an extension of time in which to file a
notice of opposition; and
(b) before the notice of opposition is filed, the right or interest on
which the person could have relied to file the notice of
opposition becomes vested in another person; and
(c) the other person notifies the Registrar in writing that the right
or interest is vested in him or her;
then:
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(d) the other person is taken to have been granted an extension of
time in which to file the notice of opposition; and
(e) that extension ends when the extension mentioned in
paragraph (a) ends.
52A Notice of intention to defend opposition to registration
(1) If a notice of opposition is filed in accordance with section 52, the
applicant may file a notice of intention to defend the application
for registration of a trade mark.
Note: Failure to file a notice of intention will result in the application
lapsing: see section 54A.
(2) The notice must be filed within the prescribed period, or within
that period as extended by the Registrar in accordance with the
regulations.
53 Circumstances in which opposition may proceed in name of a
person other than the person who filed the notice
If:
(a) after a person has filed a notice of opposition, the right or
interest on which the person relied to file the notice of
opposition becomes vested in another person; and
(b) the other person:
(i) notifies the Registrar in writing that the right or interest
is vested in him or her; and
(ii) does not withdraw the opposition;
the opposition is to proceed as if the notice of opposition had been
filed in that other person’s name.
Note: For file see section 6.
54 Opposition proceedings
(1) The Registrar must give to the opponent and to the applicant an
opportunity of being heard on the opposition.
Note: For opponent and applicant see section 6.
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(2) Subject to subsection (1), the proceedings for dealing with the
opposition must be in accordance with the regulations.
(3) Without limiting subsection (2), the regulations may prescribe the
circumstances in which the Registrar may dismiss the opposition.
54A Lapsing of opposed application if no notice to defend the
application filed
(1) Subject to subsection (2), an application lapses if:
(a) a notice of opposition to the registration of the trade mark is
filed (see subsection 52(1)); and
(b) the applicant does not file an intention to defend the
application for registration of the trade mark within the
prescribed period, or that period as extended (see
section 52A).
(2) If, after the prescribed period has expired, the Registrar extends the
period within which the notice to defend the application may be
filed (see section 52A), the application:
(a) is taken not to have lapsed when the prescribed period
expired; and
(b) lapses if the notice to defend the application is not filed
within the extended period.
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar
must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or
limitations) in respect of the goods and/or services then
specified in the application;
having regard to the extent (if any) to which any ground on which
the application was opposed has been established.
Note: For limitations see section 6.
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(2) Without limiting subsection (1), if the application was opposed on
the ground specified in paragraph 62(a) (that the application, or a
document filed in support of the application, was amended contrary
to this Act), the Registrar may revoke the acceptance of the
application and examine the application again under section 31.
Note: For examine and this Act see section 6.
(3) This subsection applies to the proceedings if:
(a) the proceedings are discontinued; or
(b) the proceedings are dismissed; or
(c) the application lapses because of the operation of
section 54A (about lapsing of applications if a notice to
defend the application is not filed).
56 Appeal
The applicant or the opponent may appeal to the Federal Court or
the Federal Circuit Court from a decision of the Registrar under
section 55.
Note: For applicant and opponent see section 6.
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Division 2 Grounds for opposing registration
Section 57
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Division 2—Grounds for opposing registration
57 Registration may be opposed on same grounds as for rejection
The registration of a trade mark may be opposed on any of the
grounds on which an application for the registration of a trade
mark may be rejected under this Act, except the ground that the
trade mark cannot be represented graphically.
Note: For this Act see section 6.
58 Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that
the applicant is not the owner of the trade mark.
Note: For applicant see section 6.
58A Opponent’s earlier use of similar trade mark
(1) This section applies to a trade mark (section 44 trade mark) the
application for registration of which has been accepted because of:
(a) subsection 44(4); or
(b) a similar provision of the regulations made for the purposes
of Part 17A.
Note: Subsection 44(4) prevents rejection of an application for registration
of a trade mark that is substantially identical with, or deceptively
similar to, a registered trade mark or a trade mark whose registration
is being sought where the first-mentioned trade mark has been
continuously used since before the priority date of the other trade
mark.
(2) The registration of the section 44 trade mark may be opposed on
the ground that the owner of the substantially identical or
deceptively similar trade mark (similar trade mark) or the
predecessor in title:
(a) first used the similar trade mark in respect of:
(i) similar goods or closely related services; or
(ii) similar services or closely related goods;
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before the owner of the section 44 trade mark or the
predecessor in title in relation to the section 44 trade mark
first used the section 44 trade mark; and
(b) has continuously used the similar trade mark in respect of
those goods or services since that first use.
Note: For predecessor in title see section 6.
59 Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that
the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the
body corporate in Australia;
in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.
60 Trade mark similar to trade mark that has acquired a reputation
in Australia
The registration of a trade mark in respect of particular goods or
services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the
registration of the first-mentioned trade mark in respect of
those goods or services, acquired a reputation in Australia;
and
(b) because of the reputation of that other trade mark, the use of
the first-mentioned trade mark would be likely to deceive or
cause confusion.
Note: For priority date see section 12.
61 Trade mark containing or consisting of a false geographical
indication
(1) The registration of a trade mark in respect of particular goods
(relevant goods) may be opposed on the ground that the trade mark
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contains or consists of a sign that is a geographical indication for
goods (designated goods) originating in:
(a) a country, or in a region or locality in a country, other than
the country in which the relevant goods originated; or
(b) a region or locality in the country in which the relevant goods
originated other than the region or locality in which the
relevant goods originated;
if the relevant goods are similar to the designated goods or the use
of a trade mark in respect of the relevant goods would be likely to
deceive or cause confusion.
(2) An opposition on a ground referred to in subsection (1) fails if the
applicant establishes that:
(a) the relevant goods originated in the country, region or
locality identified by the geographical indication; or
(aa) the sign is not recognised as a geographical indication for the
designated goods in the country in which the designated
goods originated; or
(b) the sign has ceased to be used as a geographical indication
for the designated goods in the country in which the
designated goods originated; or
(c) the applicant, or a predecessor in title of the applicant, used
the sign in good faith in respect of the relevant goods, or
applied in good faith for the registration of the trade mark in
respect of the relevant goods, before:
(i) 1 January 1996; or
(ii) the day on which the sign was recognised as a
geographical indication for the designated goods in their
country of origin;
whichever is the later; or
(d) if the registration of the trade mark is being sought in respect
of wine or spirits (relevant wine or spirits)—the sign is
identical with the name that, on 1 January 1995, was, in the
country in which the relevant wine or spirits originated, the
customary name of a variety of grapes used in the production
of the relevant wine or spirits.
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(3) An opposition on a ground referred to in subsection (1) also fails if
the applicant establishes that:
(a) although the sign is a geographical indication for the
designated goods, it is also a geographical indication for the
relevant goods; and
(b) the applicant has not used, and does not intend to use, the
trade mark in relation to the relevant goods in a way that is
likely to deceive or confuse members of the public as to the
origin of the relevant goods.
(4) An opposition on a ground referred to in subsection (1) also fails if
the applicant establishes that:
(a) the sign consists of a word or term that is a geographical
indication; and
(b) the word or term is a common English word or term; and
(c) the applicant has not used, and does not intend to use, the
trade mark in relation to the relevant goods in a way that is
likely to deceive or confuse members of the public as to the
origin of the relevant goods.
Note 1: For applicant, predecessor in title and geographical indication see
section 6.
Note 2: For originate (in relation to wine only) see section 15.
62 Application etc. defective etc.
The registration of a trade mark may be opposed on any of the
following grounds:
(a) that the application, or a document filed in support of the
application, was amended contrary to this Act;
(b) that the Registrar accepted the application for registration on
the basis of evidence or representations that were false in
material particulars.
Note: For file see section 6.
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Section 62A
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62A Application made in bad faith
The registration of a trade mark may be opposed on the ground that
the application was made in bad faith.
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Part 6—Amendment of application for registration
of a trade mark and other documents
63 Amendment of application for registration of trade mark
(1) The Registrar may, at the request of the applicant or of his or her
agent, amend an application for the registration of a trade mark in
accordance with section 64, 65 or 65A.
(2) If:
(a) an application for the registration of a trade mark may be
amended under section 65; and
(b) the applicant has not asked that the application be amended;
the Registrar may, on his or her own initiative but in accordance
with the regulations, amend the application as necessary:
(c) to remove any ground on which the application could be
rejected; or
(d) so as to ensure that the application is made in accordance
with this Act.
64 Amendment before particulars of application are published
If:
(a) the particulars of the application have not yet been published
under section 30; and
(b) the request for the amendment is made within the prescribed
period;
an amendment may be made to correct a clerical error or an
obvious mistake.
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65 Amendment after particulars of application have been
published—request for amendment not advertised
(1) If the particulars of the application have been published under
section 30, the application may be amended as provided in this
section.
(2) An amendment may be made to the representation of the trade
mark if the amendment does not substantially affect the identity of
the trade mark as at the time when the particulars of the application
were published.
(3) An amendment may be made to an application to which section 51
applies to remove one or more trade marks from the application.
(4) An amendment may be made to correct an error in the
classification of goods or services specified in the application.
(5) An amendment may be made to add to the class or classes of goods
or services specified in the application one or more other classes of
goods or services if the Registrar is of the opinion that it is fair and
reasonable in all the circumstances to do so.
(6) An amendment may be made to change the type of registration
sought in the application (for example, an application for the
registration of a trade mark as a certification trade mark may be
amended to an application for registration as a collective trade
mark).
(7) An amendment may be made to any other particular specified in
the application unless the amendment would have the effect of
extending the rights that (apart from the amendment) the applicant
would have under the registration if it were granted.
(8) Without limiting subsection (7), if the application specifies an
applicant without legal personality, an amendment may be made
under that subsection to change the reference to the specified
applicant to a reference to a person with legal personality if that
person can be identified as having made the application.
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65A Amendment after particulars of application have been
published—request for amendment advertised
(1) This section applies if:
(a) the particulars of the application have been published under
section 30; and
(b) the amendment requested is not an amendment which could
be made under section 65.
(2) The application may be amended to correct a clerical error or an
obvious mistake in the application if the Registrar is of the opinion
that it is fair and reasonable in all the circumstances of the case to
make the amendment under this section.
(3) Subject to subsection (5), the Registrar must advertise the request
for the amendment in the Official Journal.
(4) Subject to subsection (5), a person may, as prescribed, oppose the
granting of the request for the amendment.
(5) If the Registrar is satisfied that a request for an amendment would
not be granted even in the absence of opposition under
subsection (4):
(a) the Registrar need not advertise the request in accordance
with subsection (3); and
(b) the request cannot be opposed, despite subsection (4); and
(c) the Registrar must refuse to grant the request.
66 Amendment of other documents
(1) The Registrar may, at the request of the person who has filed an
application (other than an application for the registration of a trade
mark), a notice or other document for the purposes of this Act or at
the request of the person’s agent, amend the application, notice or
document:
(a) to correct a clerical error or an obvious mistake; or
(b) if the Registrar is of the opinion that it is fair and reasonable
in all the circumstances of the case to do so.
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Note: For file see section 6.
(2) Subsection (1) does not apply to a notice of opposition filed by an
opponent in relation to:
(a) an opposition to the registration of a trade mark under
section 52; or
(b) an opposition to an application under section 92.
Note: Regulations made for the purposes of subsection 231(3) may make
provision in relation to amendment of documents filed in relation to
an opposition.
66A Registrar may require certain requests to be in writing
The Registrar may require a request under section 63 or 66 to be in
writing if the Registrar is of the opinion that the amendment
requested is not minor.
67 Appeal
An appeal lies to the Federal Court or the Federal Circuit Court
from a decision of the Registrar under this Part.
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Initial registration Division 1
Section 68
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Part 7—Registration of trade marks
Division 1—Initial registration
68 Obligation to register
(1) The Registrar must, within the period provided under the
regulations, register a trade mark that has been accepted for
registration:
(a) if there has been no opposition to the registration; or
(b) in a case where there has been an opposition:
(i) if the Registrar’s decision, or (in the case of an appeal
against the Registrar’s decision) the decision on appeal,
is that the trade mark should be registered; or
(ii) if the opposition has been withdrawn; or
(iii) if the opposition has been dismissed under section 222
or the regulations (if any) made for the purposes of
subsection 54(2).
Otherwise, the application for the registration of the trade mark
lapses.
Note: Applications may also lapse if an application for registration is
opposed and a notice to defend the application is not filed: see
section 54A.
(2) On registering the trade mark, the Registrar must give it a number
by which it may be identified.
69 Registration—how effected
(1) The trade mark must be registered:
(a) in the name of the applicant for registration; and
(b) in respect of the goods and/or services specified in the
application at the time of registration; and
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(c) subject to the conditions (if any) and the limitations (if any)
imposed by the Registrar in accepting the application for
registration or deciding to register the trade mark.
The Registrar must enter these particulars in the Register.
(2) The Registrar must also enter in the Register:
(a) a graphical representation of the trade mark; and
(b) its registration number; and
(c) any other particulars that are required by this Act to be
entered in the Register.
(3) If 2 or more persons applied together for the registration of the
trade mark (see section 28), the applicants must be registered as
joint owners of the trade mark.
Note: For limitations, Registrar and applicant see section 6.
70 Colours in registered trade marks
(1) A trade mark may be registered with limitations as to colour.
(2) The limitations may be in respect of the whole, or a part, of the
trade mark.
(3) To the extent that a trade mark is registered without limitations as
to colour, it is taken to be registered for all colours.
Note: For limitations see section 6.
71 Notification of registration
When a trade mark has been registered, the Registrar must:
(a) advertise the registration in the Official Journal; and
(b) give to the registered owner of the trade mark a certificate of
registration in an approved form.
Note: For registered owner and approved form see section 6.
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72 Date and term of registration
(1) Subject to subsection (2), the registration of a trade mark in respect
of the goods and/or services in respect of which the trade mark is
registered is taken to have had effect from (and including) the
filing date in respect of the application for registration.
Note: For filing date see section 6.
(2) If:
(a) the application was in respect of a trade mark whose
registration had also been sought in one or more than one
Convention country; and
(b) the applicant claimed a right of priority under section 29 for
the registration of the trade mark in respect of particular
goods or services; and
(c) the trade mark is registered under this Act;
the registration of the trade mark in respect of those goods or
services is taken to have had effect:
(d) if an application to register the trade mark was made in only
one Convention country—from (and including) the day on
which the application was made in that country; or
(e) if applications to register the trade mark were made in more
than one Convention country—from (and including) the day
on which the earliest of those applications was made.
Note: For Convention country see section 225.
(3) Unless it is earlier cancelled, or the trade mark is earlier removed
from the Register, the registration of the trade mark expires 10
years after the filing date in respect of the application for its
registration.
Note 1: This is so even for a trade mark whose registration in respect of
particular goods or services has effect from (and including) the day on
which an application was made in a Convention country.
Note 2: For filing date see section 6.
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73 Ceasing of registration
The registration of a trade mark ceases if:
(a) the trade mark is removed from the Register under section 78
or 80F or under Part 9; or
(b) the registration of the trade mark is cancelled.
Note: Section 84C explains the effect of revocation of the registration of a
trade mark, applying some provisions as if the registration had ceased
at a particular time (but for most purposes treating the registration as if
it had never occurred).
74 Disclaimers
(1) An applicant for the registration of a trade mark, or the registered
owner of a registered trade mark, may, by notice in writing given
to the Registrar, disclaim any exclusive right to use, or authorise
the use of, a specified part of the trade mark.
(2) The disclaimer affects only the rights given by this Act to the
registered owner of the trade mark on registration of the trade
mark.
(3) The Registrar must, on registering the trade mark or on receiving
notice of the disclaimer (whichever is later), enter the particulars of
the disclaimer in the Register.
(4) A disclaimer properly made may not be revoked.
Note: For applicant, registered owner, registered trade mark and Register
see section 6.
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Division 2—Renewal of registration (general)
74A Application of this Division
This Division applies to a registered trade mark if:
(a) particulars of registration were entered in the Register under
section 69 before the end of the period of 10 years after the
filing date of the application for registration; or
(b) both:
(i) paragraph (a) does not apply; and
(ii) registration has already been renewed under Division 3
for a period that includes the day on which particulars of
registration were entered in the Register under
section 69.
Note: For filing date see section 6.
75 Request for renewal
(1) Any person may, within the prescribed period before the
registration of a trade mark expires, ask the Registrar to renew the
registration.
(2) The request must:
(a) be in an approved form; and
(b) be filed in accordance with the regulations.
76 Notice of renewal due
If, at the beginning of the prescribed period, the Registrar has not
received a request for the renewal of the registration of the trade
mark, the Registrar must, in accordance with the regulations, notify
the registered owner of the trade mark that the renewal is due.
Note: For registered owner see section 6.
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77 Renewal before registration expires
(1) If a request for the renewal of the registration of a trade mark is
made in accordance with section 75, the Registrar must renew the
registration for a period of 10 years from the day on which the
registration of the trade mark would expire if it were not renewed.
(2) The Registrar must give notification of the renewal to the
registered owner of the trade mark in accordance with the
regulations.
Note: For registered owner see section 6.
78 Failure to renew
If the registration of a trade mark is not renewed under section 77,
then:
(a) subject to sections 79 and 80, the registration ceases to have
effect when it expires; and
(b) unless the registration is renewed under section 79, the
Registrar must remove the trade mark from the Register 6
months after the day on which the registration expired.
Note: For month and Register see section 6.
79 Renewal within 6 months after registration expires
If, within 6 months after the registration of a trade mark has
expired, a person asks the Registrar, in accordance with
subsection 75(2), to renew the registration of the trade mark, the
Registrar must renew the registration of the trade mark for 10 years
from the day on which the registration expired.
Note: For month see section 6.
80 Status of unrenewed trade mark
If:
(a) the registration of a trade mark (unrenewed trade mark) has
not been renewed under section 77 or 79; and
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(b) an application for the registration of a trade mark is made, or
has already been made, by a person other than the person
who was registered as the owner of the unrenewed trade
mark;
the unrenewed trade mark is taken to be a registered trade mark for
the purposes of the application at any time when the registration of
the unrenewed trade mark could have been renewed under
section 79.
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Section 80A
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Division 3—Renewal of registration (registration delayed
for 10 or more years after filing date)
80A Application of this Division
(1) This Division applies to a registered trade mark if particulars of
registration were entered in the Register under section 69 on a day
(Register entry day) that occurs after the end of the period of 10
years after the filing date of the application for registration.
Note: For filing date see section 6.
(2) For the purposes of this Division, each of the following is a
potential renewal period in relation to the registered trade mark:
(a) the period (first potential renewal period) of 10 years that
commenced 10 years after the filing date of the application
for registration;
(b) any successive period of 10 years, being a period that
commences before the Register entry day.
(3) For the purposes of this Division, the prescribed period is a period
that:
(a) is specified in the regulations; and
(b) commences on the Register entry day.
80B Expiry of registration
To avoid doubt, the registration of the trade mark is taken to have
expired, in accordance with subsection 72(3), 10 years after the
filing date of the application for registration.
Note: For filing date see section 6.
80C Notification about renewal
As soon as practicable after the Register entry day, the Registrar
must, in accordance with the regulations, notify the registered
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owner of the trade mark that a request may be made for renewal of
the registration.
Note: For registered owner see section 6.
80D Request for renewal
(1) Any person may, within the prescribed period, ask the Registrar to
renew, or successively renew, the registration of the trade mark for
one or more potential renewal periods nominated in the request.
(2) The nomination must cover at least the first potential renewal
period.
(3) If the nomination relates to more than one potential renewal period,
the nomination must cover continuous periods.
(4) The request must:
(a) be in an approved form; and
(b) be filed in accordance with the regulations.
80E Renewal within prescribed period
(1) If a request for the renewal of the registration of the trade mark is
made in accordance with section 80D, the Registrar must renew, or
successively renew, the registration for the potential renewal
period or periods to which the request relates.
(2) The Registrar must give notification of the renewal or renewals to
the registered owner of the trade mark in accordance with the
regulations.
Note: For registered owner see section 6.
80F Failure to renew
If the registration of the trade mark is not renewed under
section 80E, or is not renewed under section 80E for each of the
potential renewal periods, then:
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(a) subject to sections 80G and 80H, the registration ceases to
have effect:
(i) if the registration was not renewed under section 80E—
when it expired in accordance with section 72(3); or
(ii) if the registration was renewed under section 80E for
one or more potential renewal periods—at the end of the
last of those periods; and
(b) unless the registration is renewed under section 80G, the
Registrar must remove the trade mark from the Register 10
months after the end of the prescribed period.
Note: For month see section 6.
80G Renewal within 10 months after end of prescribed period
(1) If:
(a) the registration of the trade mark is not renewed under
section 80E; and
(b) within 10 months after the end of the prescribed period, a
person asks the Registrar to renew, or successively renew,
the registration of the trade mark for one or more potential
renewal periods nominated in the request;
the Registrar must renew, or successively renew, the registration
for the potential renewal period or periods to which the request
relates.
Note: For month see section 6.
(2) The nomination must cover at least the first potential renewal
period.
(3) If the nomination relates to more than one potential renewal period,
the nomination must cover continuous periods.
(4) The request must:
(a) be in an approved form; and
(b) be filed in accordance with the regulations.
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80H Status of unrenewed trade mark
If:
(a) the registration of the trade mark is not renewed under
section 80E; and
(b) the registration of the trade mark (unrenewed trade mark)
has not been renewed under section 80G; and
(c) an application for the registration of a trade mark is made, or
has already been made, by a person other than the person
who was registered as the owner of the unrenewed trade
mark;
the unrenewed trade mark is taken to be a registered trade mark for
the purposes of the application at any time when the registration of
the unrenewed trade mark could have been renewed under
section 80G.
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Part 8—Amendment, cancellation and revocation
of registration
Division 1—Action by Registrar
Subdivision A—Amending Register
81 Correction of Register
The Registrar may, on his or her own initiative, correct any error or
omission made in entering in the Register any particular in respect
of the registration of a trade mark.
Note: For Register see section 6.
82 Adaptation of classification
The Registrar may, in accordance with the regulations, amend the
Register (whether by making, removing or altering entries) for the
purpose of adapting the designation of the goods or services in
respect of which trade marks are registered to reflect any change
that has occurred in the classification of goods or services for the
purposes of this Act.
Note 1: For Register see section 6.
Note 2: For the classification of goods and services see subsection 19(3).
82A Linking series registrations
(1) Subsection (2) applies if:
(a) before the commencement of this section, 2 or more
applications were made each seeking the registration of the
same 2 or more trade marks in respect of goods or services of
different classes; and
(b) the filing date of each of those applications is the same; and
(c) the trade marks are registered trade marks for the purposes of
this Act with the same registered owner.
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Note: For filing date, registered owner and registered trade mark see
section 6.
(2) The registered owner may apply to the Registrar, in writing, to
have those trade marks, or so many of those trade marks as are
identified in the application to the Registrar, dealt with under this
Act as if they were registered as a series in one registration in
respect of all goods and services in respect of which the trade
marks, or the identified trade marks, were registered.
Note: For this Act and registered owner see section 6.
(3) If an application is made under subsection (2), the Registrar must
deal with the trade marks, or the identified trade marks, as if they
were one registration.
83 Amendment of particulars of trade mark entered in Register
(1) Subject to Part 11, the Registrar may, at the written request of the
registered owner of a registered trade mark:
(a) amend the representation of the trade mark as entered in the
Register if the amendment does not substantially affect the
identity of the trade mark as at the time when the particulars
of the application for the registration of the trade mark were
published under section 30; or
(b) amend any particulars entered in the Register relating to any
goods or services in respect of which the trade mark is
registered if the amendment does not have the effect of
extending the rights that (apart from the amendment) the
owner has under the registration; or
(c) amend, or enter in the Register, any other particular in
respect of the trade mark if the amendment or entry does not
have the effect of extending the rights that (apart from the
amendment or entry) the owner has under the registration.
Note: For registered owner, registered trade mark and Register see
section 6.
(2) An appeal lies to the Federal Court or the Federal Circuit Court
from a decision of the Registrar under subsection (1).
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Note: See sections 215 and 216 for amendments of the Register to record
changes in addresses for service and in the names of registered owners
etc.
83A Amendment of registered trade mark—inconsistency with
international agreements
(1) This section applies to a registered trade mark if:
(a) using the trade mark in relation to any or all of the goods or
services in respect of which the trade mark is registered
would be inconsistent with any relevant obligation of
Australia under an international agreement; and
(b) at the time when the particulars of registration of the trade
mark were entered in the Register, the obligation did not
exist.
(2) The registered owner of the registered trade mark may, in writing,
request the Registrar to do either or both of the following:
(a) amend the representation of the trade mark as entered in the
Register to remove or substitute part (but not the whole) of
the representation;
(b) amend the particulars entered in the Register in respect of the
trade mark to remove or substitute any or all of the
particulars.
(3) The Registrar must advertise the request for the amendment in the
Official Journal.
Note: In certain circumstances the Registrar need not advertise a request
under this subsection (see subsection (7)).
(4) A person may, as prescribed, oppose the granting of the request for
the amendment on the ground that, if the amendment is made, the
trade mark will be substantially identical with, or deceptively
similar to:
(a) a trade mark registered in the name of the person in respect
of similar or closely related goods or similar or closely
related services; or
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(b) a trade mark that is being used by the person in respect of
similar or closely related goods or similar or closely related
services.
Note: In certain circumstances a person cannot oppose the granting of a
request under this subsection (see subsection (7)).
(5) The Registrar may grant the request for the amendment if he or she
is satisfied that the amendment is reasonable, having regard to:
(a) the extent to which the amendment relates to the
inconsistency; and
(b) whether the amendment involves replacing a term (the
existing term) with another term that is recognised by the
industry in which the trade mark is used as being a substitute
for the existing term; and
(c) if a person has opposed the request for the amendment under
subsection (4)—the extent (if any) to which the ground on
which the request was opposed has been established; and
(d) in any case—any other relevant circumstance.
(6) The Registrar may grant the request for the amendment even if the
amendment would:
(a) substantially affect the identity of the trade mark; or
(b) extend the rights that the registered owner has under the
registration.
(7) If the Registrar is satisfied that the request for the amendment
would not be granted even in the absence of opposition under
subsection (4):
(a) the Registrar need not advertise the request in accordance
with subsection (3); and
(b) the request cannot be opposed, despite subsection (4); and
(c) the Registrar must refuse to grant the request.
(8) The registered owner who made the request for amendment, or a
person who opposes the request under subsection (4), may appeal
to the Federal Court or the Federal Circuit Court from a decision of
the Registrar under this section.
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Subdivision B—Cancelling registration
84 Cancellation of registration
(1) The Registrar must cancel the registration of a trade mark in
accordance with the regulations if the registered owner asks in
writing that the registration be cancelled.
Note: For registered owner see section 6.
(2) Before cancelling the registration of the trade mark, the Registrar
must notify in accordance with the regulations:
(a) any person recorded under Part 11 as claiming a right in
respect of, or an interest in, the trade mark; and
(b) if:
(i) an application has been made to the Registrar for a
record of the assignment or transmission of the trade
mark to a person to be entered in the Register (see
section 109); and
(ii) the assignment has not yet been recorded;
the person to whom the trade mark has been assigned or
transmitted.
Subdivision C—Revoking registration
84A Registration may be revoked
Power to revoke
(1) The Registrar may revoke the registration of a trade mark if he or
she is satisfied that:
(a) the trade mark should not have been registered, taking
account of all the circumstances that existed when the trade
mark became registered (whether or not the Registrar knew
then of their existence); and
(b) it is reasonable to revoke the registration, taking account of
all the circumstances.
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(2) The circumstances to be taken into account under paragraph (1)(a)
include the following:
(a) any errors (including errors of judgment) or omissions that
led directly or indirectly to the registration;
(b) any relevant obligations of Australia under an international
agreement;
(c) any special circumstances making it appropriate:
(i) not to register the trade mark; or
(ii) to register the trade mark only if the registration were
subject to conditions or limitations to which the
registration was not actually subject.
(3) The circumstances to be taken into account under paragraph (1)(b)
include the following:
(a) any use that has been made of the trade mark;
(b) any past, current or proposed legal proceedings relating to the
trade mark as a registered trade mark or to the registration of
the trade mark;
(c) other action taken in relation to the trade mark as a registered
trade mark;
(d) any special circumstances making it appropriate:
(i) to revoke the registration; or
(ii) not to revoke the registration.
Note: For use of a trade mark see section 6.
Prerequisites to revocation decision
(4) The Registrar may revoke the registration of the trade mark only if
the Registrar gives notification of the proposed revocation to each
of the following persons within 12 months of registering the trade
mark:
(a) the registered owner of the trade mark;
(b) any person recorded under Part 11 as claiming a right in
respect of, or an interest in, the trade mark.
Note: For registered owner see section 6.
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(5) The Registrar must not revoke the registration of the trade mark
without giving each of the following persons the opportunity to be
heard:
(a) the registered owner of the trade mark;
(b) any person recorded under Part 11 as claiming a right in
respect of, or an interest in, the trade mark.
Note: For registered owner see section 6.
No duty to consider whether to revoke
(6) The Registrar does not have a duty to consider whether to revoke
the registration under this section, whether or not the Registrar is
requested to do so.
84B Registration must be revoked if opposition was ignored in
registration process
The Registrar must revoke the registration of a trade mark if:
(a) either:
(i) a notice of opposition to the registration was filed in
accordance with subsection 52(2); or
(ii) before the registration, a person applied in accordance
with the regulations for an extension of the period for
filing a notice of opposition to the registration; and
(b) the Registrar failed to take account of the opposition or
application in deciding to register the trade mark; and
(c) the Registrar becomes aware of the failure within 1 month
after the notice was filed or the application was made.
The revocation must be done within that month.
Note: If the Registrar becomes aware of the failure later, he or she may be
able to revoke the registration under section 84A.
84C Effect of revocation of registration
(1) This section applies if the Registrar revokes the registration of a
trade mark under section 84A or 84B.
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(2) This Act generally applies as if the registration had never occurred,
but:
(a) subsection 129(4) applies as if the trade mark had ceased to
be registered at the time of the revocation; and
(b) if the Comptroller-General of Customs, purporting to act
under Part 13, seizes goods in respect of which the trade
mark was registered before the revocation, the
Commonwealth is not liable for any loss or damage suffered
because of the seizure, unless:
(i) the Registrar gives the Comptroller-General of Customs
written notice of the revocation; and
(ii) the seizure occurs after the notice is given to the
Comptroller-General of Customs; and
(c) Part 14 applies as if the trade mark had ceased to be
registered at the time of the revocation; and
(d) subsection 230(2) applies in relation to a defendant who was
the registered owner of the trade mark before the revocation
as if the trade mark had ceased to be registered at the time of
the revocation; and
(e) subsection 230(2) applies in relation to a defendant who was
an authorised user of the trade mark before the revocation as
if the trade mark had ceased to be registered at the time the
defendant became aware of the revocation.
Note: For registered owner see section 6.
(3) To avoid doubt, paragraph (2)(b) does not, by itself, make the
Commonwealth liable if the circumstances described in
subparagraphs (2)(b)(i) and (ii) exist.
(4) This Act applies as if, just after the revocation:
(a) the application for registration of the trade mark reflected the
particulars in the Register for the trade mark just before the
revocation; and
(b) the applicant for registration of the trade mark were the
person in whose name the trade mark was registered just
before the revocation.
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(5) This subsection has effect if the Registrar revokes the acceptance
of the application for registration of the trade mark after revoking
the registration. The Registrar may, but need not, examine the
application again under section 31 before rejecting the application.
This has effect despite paragraph 38(2)(b).
84D Appeal from revocation of registration
An appeal lies to the Federal Court or the Federal Circuit Court
from a decision of the Registrar to revoke the registration of a trade
mark under section 84A.
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Division 2—Action by court
85 Amendment to correct error or omission
A prescribed court may, on the application of an aggrieved person,
order that the Register be rectified by:
(a) entering in the Register particulars that were wrongly omitted
from it; or
(b) correcting any error in an entry in the Register.
Note: For prescribed court see section 190.
86 Amendment or cancellation on ground of contravention of
condition etc.
A prescribed court may, on the application of an aggrieved person
or the Registrar, order that the Register be rectified by:
(a) cancelling the registration of a trade mark; or
(b) removing or amending any entry in the Register relating to
the trade mark;
on the ground that a condition or limitation entered in the Register
in relation to the trade mark has been contravened.
Note: For prescribed court see section 190.
87 Amendment or cancellation—loss of exclusive rights to use trade
mark
(1) If section 24 or 25 applies in relation to a registered trade mark, a
prescribed court may, on the application of an aggrieved person or
the Registrar, but subject to subsection (2) and section 89, order
that the Register be rectified by:
(a) cancelling the registration of the trade mark; or
(b) removing or amending any entry in the Register relating to
the trade mark;
having regard to the effect of section 24 or 25 (as the case may be)
on the right of the registered owner of the trade mark to use the
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trade mark, or any sign that is part of the trade mark, in relation to
particular goods or services.
(2) If section 24 or 25 applies in relation to the trade mark because the
trade mark contains a sign that:
(a) has become generally accepted within the relevant trade as
the sign that describes or is the name of an article, substance
or service; or
(b) describes or is the name of:
(i) an article or substance that was formerly exploited
under a patent; or
(ii) a service that was formerly provided as a patented
process;
the court may decide not to make an order under subsection (1) and
allow the trade mark to remain on the Register in respect of:
(c) the article or substance or goods of the same description; or
(d) the service or services of the same description;
subject to any condition or limitation that the court may impose.
Note 1: Sections 24 and 25 provide that the registered owner of a trade mark
does not have exclusive rights to use, or to authorise the use of, the
trade mark if it consists of, or contains, a sign that:
(a) becomes generally accepted within the relevant trade as the sign
that describes or is the name of an article, substance or service; or
(b) is the only commonly known way to describe or identify an article
formerly exploited under a patent, or a service formerly provided
as a patented process, where the patent has expired more than 2
years ago.
Note 2: For registered trade mark, registered owner and Register see
section 6.
Note 3: For prescribed court see section 190.
88 Amendment or cancellation—other specified grounds
(1) Subject to subsection (2) and section 89, a prescribed court may,
on the application of an aggrieved person or the Registrar, order
that the Register be rectified by:
(a) cancelling the registration of a trade mark; or
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(b) removing or amending an entry wrongly made or remaining
on the Register; or
(c) entering any condition or limitation affecting the registration
of a trade mark that ought to be entered.
(2) An application may be made on any of the following grounds, and
on no other grounds:
(a) any of the grounds on which the registration of the trade
mark could have been opposed under this Act;
(b) an amendment of the application for the registration of the
trade mark was obtained as a result of fraud, false suggestion
or misrepresentation;
(c) because of the circumstances applying at the time when the
application for rectification is filed, the use of the trade mark
is likely to deceive or cause confusion;
(e) if the application is in respect of an entry in the Register—the
entry was made, or has been previously amended, as a result
of fraud, false suggestion or misrepresentation.
Note 1: For prescribed court see section 190.
Note 2: For file, registered owner and this Act see section 6.
88A Applications by Registrar
The Registrar must not make an application under section 86, 87 or
88 unless he or she considers the application desirable in the public
interest.
89 Rectification may not be granted in certain cases if registered
owner not at fault etc.
(1) The court may decide not to grant an application for rectification
made:
(a) under section 87; or
(b) on the ground that the trade mark is liable to deceive or
confuse (a ground on which its registration could have been
opposed, see paragraph 88(2)(a)); or
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(c) on the ground referred to in paragraph 88(2)(c);
if the registered owner of the trade mark satisfies the court that the
ground relied on by the applicant has not arisen through any act or
fault of the registered owner.
Note: For registered owner see section 6.
(2) In making a decision under subsection (1), the court:
(a) must also take into account any matter that is prescribed; and
(b) may take into account any other matter that the court
considers relevant.
90 Duties and powers of Registrar
(1) An aggrieved person applying to a prescribed court under this
Division must give notice of the application to the Registrar.
Note: For prescribed court see section 190.
(2) In relation to an application made by an aggrieved person, the
Registrar may appear before the court and be heard at his or her
discretion unless the court directs the Registrar to appear before the
court.
(3) If the application is made by an aggrieved person, the applicant
must give to the Registrar a copy of any order made by the court
under this Division.
(4) The Registrar must comply with any order made by the court under
this Division.
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Division 3—Amendment of certificate of registration
91 Amendment of certificate of registration
When the Registrar amends any particular entered in the Register
in respect of a trade mark, the Registrar may also amend the
certificate of registration if he or she thinks it appropriate to do so.
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Part 9—Removal of trade mark from Register for
non-use
92 Application for removal of trade mark from Register etc.
(1) Subject to subsection (3), a person may apply to the Registrar to
have a trade mark that is or may be registered removed from the
Register.
(2) The application:
(a) must be in accordance with the regulations; and
(b) may be made in respect of any or all of the goods and/or
services in respect of which the trade mark may be, or is,
registered.
(3) An application may not be made to the Registrar under
subsection (1) if an action concerning the trade mark is pending in
a prescribed court, but the person may apply to the court for an
order directing the Registrar to remove the trade mark from the
Register.
Note: For prescribed court see section 190.
(4) An application under subsection (1) or (3) (non-use application)
may be made on either or both of the following grounds, and on no
other grounds:
(a) that, on the day on which the application for the registration
of the trade mark was filed, the applicant for registration had
no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by
the body corporate in Australia;
in relation to the goods and/or services to which the non-use
application relates and that the registered owner:
(iv) has not used the trade mark in Australia; or
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(v) has not used the trade mark in good faith in Australia;
in relation to those goods and/or services at any time before
the period of one month ending on the day on which the
non-use application is filed;
(b) that the trade mark has remained registered for a continuous
period of 3 years ending one month before the day on which
the non-use application is filed, and, at no time during that
period, the person who was then the registered owner:
(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the
application relates.
Note 1: For file and month see section 6.
Note 2: If non-use of a trade mark has been established in a particular place or
export market, then instead of the trade mark being removed from the
Register, conditions or limitations may be imposed under section 102
on the registration of the trade mark so that its registration does not
extend to that place or export market.
Note 3: For when the registration of a trade mark is taken to have effect, see
sections 72 and 239A.
(5) If the right or interest on which a person relied to make a non-use
application becomes vested in another person, the other person
may, on giving notice of the relevant facts to the Registrar or the
court (as the case requires), be substituted for the first-mentioned
person as the applicant.
93 Time for making application
(1) A non-use application on the ground mentioned in
paragraph 92(4)(a) may be made at any time after the filing date in
respect of the application for the registration of the trade mark.
Note: For filing date see section 6.
(2) A non-use application on the ground mentioned in
paragraph 92(4)(b) may only be made after a period of 3 years
beginning from the date the particulars of the trade mark were
entered into the Register under section 69.
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Note: The registration of a trade mark is taken to have effect earlier than the
date the particulars of the trade mark are entered into the Register (see
sections 72 and 239A).
94 Referral to court
If:
(a) an application has been made to the Registrar under
subsection 92(1); and
(b) the Registrar is of the opinion that the matter should be
decided by a prescribed court;
the Registrar may refer the matter to such a court and the court
may hear and determine the matter as if an application had been
made to it under subsection 92(3).
95 Notification of application
(1) If an application has been made to the Registrar under section 92,
the Registrar must give a copy of the application in accordance
with the regulations.
(2) If the application is in respect of a trade mark already entered on
the Register, the Registrar must advertise the application in the
Official Journal.
(3) If the application is in respect of a trade mark whose registration is
being sought, the Registrar is to advertise the application in the
Official Journal only if the trade mark is registered.
96 Notice of opposition
Applications to Registrar
(1) Any person may oppose an application under subsection 92(1) by
filing a notice of opposition with the Registrar.
(2) The notice of opposition under subsection (1) must be filed:
(a) in the form prescribed by the regulations; and
(b) within the prescribed period.
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(3) Regulations made for the purposes of paragraph (2)(a) or (b) may
make different provision with respect to different components (if
any) of the notice of opposition.
(4) Subsection (3) does not limit subsection 33(3A) of the Acts
Interpretation Act 1901.
Applications to prescribed court
(5) Any person may oppose an application under subsection 92(3) by
filing a notice of opposition with the court.
(6) A notice of opposition under subsection (5):
(a) must be in a form approved by the court; and
(b) must be filed in accordance with the rules of court.
96A Circumstances in which opposition may proceed in name of a
person other than the person who filed the notice
If:
(a) after a person has filed a notice of opposition, the right or
interest on which the person relied to file the notice of
opposition becomes vested in another person; and
(b) the other person:
(i) notifies the Registrar or the court (as the case may be) in
writing that the right or interest is vested in him or her;
and
(ii) does not withdraw the opposition;
the opposition is to proceed as if the notice of opposition had been
filed in that other person’s name.
Note: For file see section 6.
97 Removal of trade mark from the Register etc. if application
unopposed etc.
(1) If:
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(a) there is no opposition to an application to the Registrar under
subsection 92(1); or
(b) an opposition to an application under that subsection has
been dismissed (see section 99A);
the Registrar must remove the trade mark from the Register in
respect of the goods and/or services specified in the application.
(2) If there is no opposition to an application to a court under
subsection 92(3), the court must order the Registrar to remove the
trade mark from the Register in respect of the goods and/or
services specified in the application. The court must cause a copy
of the order to be served on the Registrar and the Registrar must
comply with the order.
98 Trade mark restored to Register if notice of opposition filed
within extended time
If:
(a) the Registrar has removed a trade mark from the Register
under subsection 97(1) because no notice of opposition was
filed within the period provided under the regulations; and
(b) the Registrar subsequently extends the period within which
the notice may be filed; and
(c) a notice of opposition is filed within the extended period;
the Registrar must restore the trade mark to the Register. Also, the
trade mark is taken not to have been removed from the Register.
Note: For file see section 6.
99 Proceedings before Registrar
If an application to the Registrar is opposed, the Registrar must
deal with the matter in accordance with the regulations.
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99A Dismissal of opposition filed with Registrar
(1) The Registrar may, in prescribed circumstances, dismiss an
opposition filed with the Registrar in accordance with
subsection 96(1).
(2) An application may be made to the Administrative Appeals
Tribunal for the review of a decision of the Registrar to dismiss an
opposition under subsection (1).
100 Burden on opponent to establish use of trade mark etc.
(1) In any proceedings relating to an opposed application, it is for the
opponent to rebut:
(a) any allegation made under paragraph 92(4)(a) that, on the
day on which the application for the registration of the trade
mark was filed, the applicant for registration had no intention
in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by
the body corporate in Australia;
in relation to the goods and/or services to which the opposed
application relates (relevant goods and/or services); or
(b) any allegation made under paragraph 92(4)(a) that the trade
mark has not, at any time before the period of one month
ending on the day on which the opposed application was
filed, been used, or been used in good faith, by its registered
owner in relation to the relevant goods and/or services; or
(c) any allegation made under paragraph 92(4)(b) that the trade
mark has not, at any time during the period of 3 years ending
one month before the day on which the opposed application
was filed, been used, or been used in good faith, by its
registered owner in relation to the relevant goods and/or
services.
Note 1: If the registered owner of the trade mark has authorised another
person to use it, any authorised use of the trade mark by that person is
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taken to be a use of the trade mark by the registered owner (see
subsection 7(3)).
Note 2: For file, month and registered owner see section 6.
(2) For the purposes of paragraph 1(b), the opponent is taken to have
rebutted the allegation that the trade mark has not, at any time
before the period referred to in that paragraph, been used, or been
used in good faith, by its registered owner in relation to the
relevant goods and/or services if:
(a) the opponent has established that the trade mark or the trade
mark with additions or alterations not substantially affecting
its identity, was used in good faith by its registered owner in
relation to those goods or services before that period; or
(b) in a case where the trade mark has been assigned but a record
of the assignment has not been entered in the Register:
(i) the opponent has established that the trade mark, or the
trade mark with additions or alterations not substantially
affecting its identity, was used in good faith by the
assignee in relation to those goods or services before
that period and that that use was in accordance with the
terms of the assignment; and
(ii) the Registrar or the court is of the opinion that it is
reasonable, having regard to all the circumstances of the
case, to treat the use of the trade mark by the assignee
before that period as having been a use of the trade
mark in relation to those goods or services by the
registered owner.
Note 1: If the registered owner of the trade mark has authorised another
person to use it, any authorised use of the trade mark by that person is
taken to be a use of the trade mark by the registered owner (see
subsection 7(3)).
Note 2: For registered owner see section 6.
(3) For the purposes of paragraph 1(c), the opponent is taken to have
rebutted the allegation that the trade mark has not, at any time
during the period referred to in that paragraph, been used, or been
used in good faith, by its registered owner in relation to the
relevant goods and/or services if:
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(a) the opponent has established that the trade mark, or the trade
mark with additions or alterations not substantially affecting
its identity, was used in good faith by its registered owner in
relation to those goods or services during that period; or
(b) in a case where the trade mark has been assigned but a record
of the assignment has not been entered in the Register:
(i) the opponent has established that the trade mark, or the
trade mark with additions or alterations not substantially
affecting its identity, was used in good faith by the
assignee of the trade mark in relation to those goods or
services during that period and that that use was in
accordance with the terms of the assignment; and
(ii) the Registrar or the court is of the opinion that it is
reasonable, having regard to all the circumstances of the
case, to treat the use of the trade mark by the assignee
during that period as having been a use of the trade
mark in relation to those goods or services by the
registered owner; or
(c) the opponent has established that the trade mark was not used
by its registered owner in relation to those goods and/or
services during that period because of circumstances
(whether affecting traders generally or only the registered
owner of the trade mark) that were an obstacle to the use of
the trade mark during that period.
Note 1: If the registered owner of the trade mark has authorised another
person to use it, any authorised use of the trade mark by that person is
taken to be a use of the trade mark by the registered owner (see
subsection 7(3)).
Note 2: For registered owner see section 6.
101 Determination of opposed application—general
(1) Subject to subsection (3) and to section 102, if:
(a) the proceedings relating to an opposed application have not
been discontinued or dismissed; and
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(b) the Registrar is satisfied that the grounds on which the
application was made have been established;
the Registrar may decide to remove the trade mark from the
Register in respect of any or all of the goods and/or services to
which the application relates.
(2) Subject to subsection (3) and to section 102, if, at the end of the
proceedings relating to an opposed application, the court is
satisfied that the grounds on which the application was made have
been established, the court may order the Registrar to remove the
trade mark from the Register in respect of any or all of the goods
and/or services to which the application relates.
(3) If satisfied that it is reasonable to do so, the Registrar or the court
may decide that the trade mark should not be removed from the
Register even if the grounds on which the application was made
have been established.
(4) Without limiting the matters the Registrar may take into account in
deciding under subsection (3) not to remove a trade mark from the
Register, the Registrar may take into account whether the trade
mark has been used by its registered owner in respect of:
(a) similar goods or closely related services; or
(b) similar services or closely related goods;
to those to which the application relates.
Note 1: If the registered owner of the trade mark has authorised another
person to use it, any authorised use of the trade mark by that person is
taken to be a use of the trade mark by the registered owner (see
subsection 7(3)).
Note 2: For registered owner see section 6.
102 Determination of opposed application—localised use of trade
mark
(1) This section applies if an application for the removal of a trade
mark (challenged trade mark) from the Register is made on the
ground referred to in paragraph 92(4)(b) and:
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(a) the applicant is the registered owner of a trade mark that is
substantially identical with, or deceptively similar to, the
challenged trade mark and is registered in respect of the
goods and/or services specified in the application subject to
the condition or limitation that the use of the trade mark is to
be restricted to:
(i) goods and/or services to be dealt with or provided in a
particular place (specified place) in Australia (otherwise
than for export from Australia); or
(ii) goods and/or services to be exported to a particular
market (specified market); or
(b) the Registrar or the court is of the opinion that such a trade
mark may properly be registered in the name of the applicant
with that condition or limitation.
Note 1: For registered owner see section 6.
Note 2: For deceptively similar see section 10.
(2) If the Registrar or the court is satisfied:
(a) that the challenged trade mark has remained registered for the
period referred to in paragraph 92(4)(b); and
(b) that during that period there has been no use, or no use in
good faith, of the challenged trade mark in relation to:
(i) goods or services dealt with or provided in the specified
place; or
(ii) goods or services to be exported to the specified market;
the Registrar may decide, or the court may order, that the
challenged trade mark should not be removed from the Register but
that the registration of the trade mark should be subject to the
conditions or limitations that the Registrar or the court considers
necessary to ensure that the registration does not extend to the use
of the trade mark in relation to:
(c) goods or services dealt with or provided in the specified
place; or
(d) goods or services to be exported to the specified market.
Note: For limitations see section 6.
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103 Registrar to comply with order of court
A court making an order under section 101 or 102 must cause a
copy of the order to be served on the Registrar and the Registrar
must comply with the order.
104 Appeal
An appeal lies to the Federal Court or the Federal Circuit Court
from a decision of the Registrar under section 101 or 102.
105 Certificate—use of trade mark
(1) If in any proceedings relating to an opposed application the
Registrar or the court has found that:
(a) a trade mark has been used in good faith during a particular
period; or
(b) a trade mark has not been used during a particular period
solely because of circumstances that were an obstacle to its
use;
the Registrar or the court must, if so requested by the registered
owner of the trade mark, give to the registered owner a certificate
of those findings.
(2) In any subsequent proceedings in which non-use of the trade mark
is alleged:
(a) the certificate is, on being produced, evidence of the facts
stated in it; and
(b) if the proceedings are determined in favour of the opponent
and, on or before filing the notice of opposition, the opponent
notified the applicant of the contents of the certificate—the
opponent is entitled, unless the Registrar or the court
otherwise directs, to have the opponent’s full costs paid by
the applicant.
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106 Assignment etc. of trade mark
(1) A registered trade mark, or a trade mark whose registration is being
sought, may be assigned or transmitted in accordance with this
section.
(2) The assignment or transmission may be partial, that is, it may
apply to some only of the goods and/or services in respect of which
registration is sought or the trade mark is registered, but it may not
be partial in relation to the use of a trade mark in a particular area.
(3) The assignment or transmission may be with or without the
goodwill of the business concerned in the relevant goods and/or
services.
Note: For assignment and transmission see section 6.
107 Applications for record to be made of assignment etc. of trade
mark whose registration is sought
(1) If a trade mark whose registration is being sought is assigned or
transmitted:
(a) the applicant for the registration of the trade mark; or
(b) the person to whom it has been assigned or transmitted;
must apply to the Registrar for the assignment or transmission to
be recorded.
(2) The application must:
(a) be in an approved form; and
(b) be filed, together with any prescribed document, in
accordance with the regulations.
Note: For approved form and file see section 6.
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108 Recording of assignment etc. of trade mark whose registration is
sought
(1) If the application complies with this Act, the Registrar must:
(a) at, or within, the time provided for in the regulations, record
in the manner that the Registrar thinks fit (but not in the
Register) the particulars of the assignment or transmission;
and
(b) publish the particulars of the assignment or transmission in
accordance with the regulations.
(2) On and after the day on which the Registrar records the particulars
of the assignment or transmission, the person to whom the trade
mark has been assigned or transmitted is taken, for the purposes of
this Act, to be the applicant for the registration of the trade mark.
109 Application for record of assignment etc. of registered trade
mark to be entered in Register
(1) If a registered trade mark is assigned or transmitted:
(a) the person registered as the owner of the trade mark; or
(b) the person to whom the trade mark has been assigned or
transmitted;
must apply to the Registrar for a record of the assignment or
transmission to be entered in the Register.
(2) The application must:
(a) be in an approved form; and
(b) be filed, together with any prescribed document, in
accordance with the regulations.
Note: For approved form and file see section 6.
110 Recording of assignment etc. of registered trade mark
(1) If the application complies with this Act, the Registrar must, at, or
within, the time provided for in the regulations:
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(a) enter the particulars of the assignment or transmission in the
Register; and
(b) register the person to whom the trade mark has been assigned
or transmitted (beneficiary) as the owner of the trade mark in
relation to the goods and/or services in respect of which the
assignment or transmission has effect.
(2) The particulars are taken to have been entered in the Register on
the day on which the application was filed, and the registration of
the beneficiary as the owner of the trade mark is taken to have had
effect from and including that day.
(3) The Registrar must advertise in the Official Journal:
(a) the recording of the assignment or transmission; and
(b) the registration of the beneficiary as the owner of the trade
mark.
111 Notification of application to be given to person recorded as
claiming interest in trade mark etc.
If an application made under section 107 or 109 in relation to the
assignment or transmission of a trade mark complies with this Act,
the Registrar must notify in accordance with the regulations any
person recorded under Part 11 as claiming an interest in, or a right
in respect of, the trade mark.
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Part 11—Voluntary recording of claims to interests
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Division 1—Preliminary
112 Object of Part
This Part makes provision:
(a) for recording in the Register claims to interests in, and rights
in respect of, registered trade marks that may not be so
recorded under another Part; and
(b) for the Registrar to keep a record of claims to interests in,
and rights in respect of, trade marks for which registration is
sought.
Note: For registered trade mark see section 6.
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Division 2—Interests in, and rights in respect of, registered
trade marks
113 Application for registration of interest or right in trade mark
Scope
(1) This section applies in relation to an interest in, or right in respect
of, a registered trade mark, if the interest or right may not be
recorded in the Register under Part 10.
Application for registration of interest or right
(2) A person claiming the interest or right may apply to the Registrar
to have particulars of the claim recorded in the Register.
(3) The application must:
(a) be in an approved form; and
(b) be accompanied by proof to the reasonable satisfaction of the
Registrar of the applicant’s entitlement to the claimed interest
or right; and
(c) be filed in accordance with the regulations.
Note: For registered trade mark, approved form and file see section 6.
114 Record of claims to interest etc.
(1) If the application has been made in accordance with section 113,
the Registrar must enter in the Register the particulars of the claim
set out in the application.
(2) If:
(a) a trade mark is registered; and
(b) immediately before the registration, particulars of a claim to
an interest in, or right in respect of, the trade mark were
recorded under Division 3;
the Registrar must enter those particulars in the Register.
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115 Amendment and cancellation
The regulations may provide for the amendment and cancellation
of particulars entered in the Register under this Division.
116 Record not proof etc. of existence of right etc.
The fact that a record has been made in the Register under this Part
that a person claims an interest in, or a right in respect of, a
registered trade mark is not proof or evidence that the person has
that right or interest.
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Division 3—Interests in, and rights in respect of,
unregistered trade marks
117 Application for recording of interest or right in trade mark
Scope
(1) This section applies in relation to an interest in, or right in respect
of, a trade mark, if a person has applied for the registration of the
trade mark.
Application for recording of interest or right
(2) A person claiming the interest or right may apply to the Registrar
for a record to be kept of the claim.
(3) The application must:
(a) be in an approved form; and
(b) be accompanied by proof to the reasonable satisfaction of the
Registrar of the applicant’s entitlement to the claimed interest
or right; and
(c) be filed in accordance with the regulations.
Note: For registered trade mark, approved form and file see section 6.
118 Record of claims to interest etc.
If the application has been made in accordance with section 117,
the Registrar must record in the manner that the Registrar thinks fit
(but not in the Register) the particulars of the claim set out in the
application.
119 Amendment and cancellation
The regulations may provide for the amendment and cancellation
of particulars recorded under this Division.
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Part 12—Infringement of trade marks
120 When is a registered trade mark infringed?
(1) A person infringes a registered trade mark if the person uses as a
trade mark a sign that is substantially identical with, or deceptively
similar to, the trade mark in relation to goods or services in respect
of which the trade mark is registered.
Note 1: For registered trade mark see section 6.
Note 2: For deceptively similar see section 10.
Note 3: In addition, the regulations may provide for the effect of a protected
international trade mark: see Part 17A.
(2) A person infringes a registered trade mark if the person uses as a
trade mark a sign that is substantially identical with, or deceptively
similar to, the trade mark in relation to:
(a) goods of the same description as that of goods (registered
goods) in respect of which the trade mark is registered; or
(b) services that are closely related to registered goods; or
(c) services of the same description as that of services
(registered services) in respect of which the trade mark is
registered; or
(d) goods that are closely related to registered services.
However, the person is not taken to have infringed the trade mark
if the person establishes that using the sign as the person did is not
likely to deceive or cause confusion.
Note 1: For registered trade mark see section 6.
Note 2: For deceptively similar see section 10.
Note 3: In addition, the regulations may provide for the effect of a protected
international trade mark: see Part 17A.
(3) A person infringes a registered trade mark if:
(a) the trade mark is well known in Australia; and
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(b) the person uses as a trade mark a sign that is substantially
identical with, or deceptively similar to, the trade mark in
relation to:
(i) goods (unrelated goods) that are not of the same
description as that of the goods in respect of which the
trade mark is registered (registered goods) or are not
closely related to services in respect of which the trade
mark is registered (registered services); or
(ii) services (unrelated services) that are not of the same
description as that of the registered services or are not
closely related to registered goods; and
(c) because the trade mark is well known, the sign would be
likely to be taken as indicating a connection between the
unrelated goods or services and the registered owner of the
trade mark; and
(d) for that reason, the interests of the registered owner are likely
to be adversely affected.
Note 1: For registered trade mark see section 6.
Note 2: For deceptively similar see section 10.
Note 3: For well known in Australia see subsection (4).
Note 4: In addition, the regulations may provide for the effect of a protected
international trade mark: see Part 17A.
(4) In deciding, for the purposes of paragraph (3)(a), whether a trade
mark is well known in Australia, one must take account of the
extent to which the trade mark is known within the relevant sector
of the public, whether as a result of the promotion of the trade
mark or for any other reason.
121 Infringement of trade mark by breach of certain restrictions
(1) This section applies to a registered trade mark if the registered
owner, or an authorised user of the trade mark having power to do
so, has caused to be displayed on goods (registered goods) in
respect of which the trade mark is registered, or on their package,
or on the container in which they are offered to the public, a notice
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(notice of prohibition) prohibiting any act that is under
subsection (2) a prohibited act in relation to the goods.
Note 1: An authorised user of the trade mark may not have power to cause
notices of prohibition to be displayed on goods etc. because of the
terms of the agreement between the authorised user and the registered
owner of the trade mark (see section 26).
Note 2: For registered owner and registered trade mark see section 6.
Note 3: For authorised user see section 8.
Note 4: In addition, the regulations may provide for the effect of a protected
international trade mark: see Part 17A.
(2) Each of the following is a prohibited act:
(a) applying the trade mark to registered goods, or using the
trade mark in physical relation to them, after the state,
condition, get-up or packaging in which they were originally
offered to the public has been altered;
(b) altering, or partially removing or obliterating, any
representation of the trade mark applied to registered goods
or used in physical relation to them;
(c) if the trade mark has been applied to registered goods, or
used in physical relation to them, together with other matter
indicating that the registered owner or authorised user has
dealt with the goods—removing or obliterating, totally or in
part, any representation of the trade mark without totally
removing or obliterating the other matter;
(d) applying another trade mark to registered goods or using
another trade mark in physical relation to them;
(e) if the trade mark has been applied to registered goods or used
in physical relation to them—using on the goods, or on the
packaging or container of the goods, any matter that is likely
to injure the reputation of the trade mark.
Note 1: For applied to see section 9.
Note 2: For authorised user see section 8.
(3) Subject to subsection (4), a person infringes a trade mark to which
this section applies if the person:
(a) is the owner of registered goods; and
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(b) in the course of trade, or with a view to a dealing with the
goods in the course of trade:
(i) does an act that is prohibited under the notice of
prohibition; or
(ii) authorises that act to be done.
(4) The trade mark is not infringed if the owner of the goods:
(a) acquired them in good faith and without being aware of the
notice of prohibition; or
(b) became the owner of the goods by virtue of a title derived
from a person who had so acquired them.
122 When is a trade mark not infringed?
(1) In spite of section 120, a person does not infringe a registered trade
mark when:
(a) the person uses in good faith:
(i) the person’s name or the name of the person’s place of
business; or
(ii) the name of a predecessor in business of the person or
the name of the predecessor’s place of business; or
(b) the person uses a sign in good faith to indicate:
(i) the kind, quality, quantity, intended purpose, value,
geographical origin, or some other characteristic, of
goods or services; or
(ii) the time of production of goods or of the rendering of
services; or
(c) the person uses the trade mark in good faith to indicate the
intended purpose of goods (in particular as accessories or
spare parts) or services; or
(d) the person uses the trade mark for the purposes of
comparative advertising; or
(e) the person exercises a right to use a trade mark given to the
person under this Act; or
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(f) the court is of the opinion that the person would obtain
registration of the trade mark in his or her name if the person
were to apply for it; or
(fa) both:
(i) the person uses a trade mark that is substantially
identical with, or deceptively similar to, the
first-mentioned trade mark; and
(ii) the court is of the opinion that the person would obtain
registration of the substantially identical or deceptively
similar trade mark in his or her name if the person were
to apply for it; or
(g) the person, in using a sign referred to in subsection 120(1),
(2) or (3) in a manner referred to in that subsection, does not
(because of a condition or limitation subject to which the
trade mark is registered) infringe the exclusive right of the
registered owner to use the trade mark.
(2) In spite of section 120, if a disclaimer has been registered in
respect of a part of a registered trade mark, a person does not
infringe the trade mark by using that part of the trade mark.
122A Exhaustion of a registered trade mark in relation to goods
(1) In spite of section 120, a person who uses a registered trade mark
in relation to goods does not infringe the trade mark if:
(a) the goods are similar to goods in respect of which the trade
mark is registered; and
(b) before the time of use, the person had made reasonable
inquiries in relation to the trade mark; and
(c) at the time of use, a reasonable person, after making those
inquiries, would have concluded that the trade mark had been
applied to, or in relation to, the goods by, or with the consent
of, a person (a relevant person) who was, at the time of the
application or consent (as the case may be):
(i) the registered owner of the trade mark; or
(ii) an authorised user of the trade mark; or
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(iii) a person permitted to use the trade mark by the
registered owner; or
(iv) a person permitted to use the trade mark by an
authorised user who has power to give such permission
under paragraph 26(1)(f); or
(v) a person with significant influence over the use of the
trade mark by the registered owner or an authorised
user; or
(vi) an associated entity (within the meaning of the
Corporations Act 2001) of a relevant person mentioned
in subparagraph (i), (ii), (iii), (iv) or (v).
Note 1: For goods that are similar, see subsection 14(1).
Note 2: For subparagraph (c)(iv), an authorised user may, under
paragraph 26(1)(f), subject to any agreement the authorised user has
with the registered owner, permit another person to apply the trade
mark to, or in relation to, goods in respect of which the trade mark is
registered.
(2) A reference in paragraph (1)(c) to consent to the application of a
trade mark to, or in relation to, goods includes, without limitation,
a reference to:
(a) consent subject to a condition (for example, a condition that
the goods are to be sold only in a foreign country); and
(b) consent that can be reasonably inferred from the conduct of a
relevant person.
(3) In determining whether a relevant person mentioned in
subparagraph (1)(c)(iii) or (iv) was permitted to use the trade mark,
disregard how that permission arose, for example:
(a) whether it arose directly or indirectly; or
(b) whether it arose by way of proprietary interest, contract,
arrangement, understanding, a combination of those things,
or otherwise.
(4) In determining whether a relevant person mentioned in
subparagraph (1)(c)(v) had significant influence over the use of a
trade mark, disregard how that influence arose, for example:
(a) whether it arose directly or indirectly; or
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(b) whether it arose by way of proprietary interest, contract,
arrangement, understanding, a combination of those things,
or otherwise.
123 Services to which registered trade mark has been applied by or
with consent of registered owner
In spite of section 120, a person who uses a registered trade mark
in relation to services that are similar to services in respect of
which the trade mark is registered does not infringe the trade mark
if the trade mark has been applied in relation to the services by, or
with the consent of, the registered owner of the trade mark.
Note: For similar services see subsection 14(2).
124 Prior use of identical trade mark etc.
(1) A person does not infringe a registered trade mark by using an
unregistered trade mark that is substantially identical with, or
deceptively similar to, the registered trade mark in relation to:
(a) goods similar to goods (registered goods) in respect of which
the trade mark is registered; or
(b) services closely related to registered goods; or
(c) services similar to services (registered services) in respect of
which the trade mark is registered; or
(d) goods closely related to registered services;
if the person, or the person and the person’s predecessor in title,
have continuously used in the course of trade the unregistered trade
mark in relation to those goods or services from a time before:
(e) the date of registration of the registered trade mark; or
(f) the registered owner of the registered trade mark, or a
predecessor in title, or a person who was a registered user of
the trade mark under the repealed Act, first used the trade
mark;
whichever is earlier.
Note 1: For deceptively similar see section 10.
Note 2: For predecessor in title and date of registration see section 6.
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(2) If the unregistered trade mark has continuously been used only in a
particular area of Australia, subsection (1) applies only to the use
of the trade mark by the person in that area.
125 What courts may hear action for infringement of registered
trade mark
(1) An action for an infringement of a registered trade mark may be
brought in a prescribed court.
Note: For prescribed court see section 190.
(2) Subsection (1) does not prevent an action for infringement of a
registered trade mark from being brought in any other court that
has jurisdiction to hear the action.
126 What relief can be obtained from court
(1) The relief that a court may grant in an action for an infringement of
a registered trade mark includes:
(a) an injunction, which may be granted subject to any condition
that the court thinks fit; and
(b) at the option of the plaintiff but subject to section 127,
damages or an account of profits.
(2) A court may include an additional amount in an assessment of
damages for an infringement of a registered trade mark, if the court
considers it appropriate to do so having regard to:
(a) the flagrancy of the infringement; and
(b) the need to deter similar infringements of registered trade
marks; and
(c) the conduct of the party that infringed the registered trade
mark that occurred:
(i) after the act constituting the infringement; or
(ii) after that party was informed that it had allegedly
infringed the registered trade mark; and
(d) any benefit shown to have accrued to that party because of
the infringement; and
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(e) all other relevant matters.
127 Special case—plaintiff not entitled to damages etc.
If:
(a) in an action for the infringement of a trade mark registered in
respect of particular goods or services, the court finds that the
defendant has infringed the trade mark; and
(b) either:
(i) the defendant has applied to the court under
subsection 92(3) for an order directing the Registrar to
remove the trade mark from the Register in respect of
those goods or services; or
(ii) the defendant has applied to the Registrar under
subsection 92(1) for the trade mark to be removed from
the Register in respect of those goods or services, and
the matter has been referred to a court under section 94;
and
(c) the court finds that, because the trade mark has not during a
particular period (critical period) been used in good faith by
its registered owner in relation to those goods or services,
there are grounds (under subsection 92(4)) for so removing
the trade mark from the Register;
the court may not grant relief to the plaintiff by way of damages or
an account of profits in respect of any infringement of the trade
mark that happened during the critical period.
128 Circumstances in which action may not be brought
(1) If the registration of a trade mark is renewed under section 79
within 6 months after it has expired, an action may not be brought
in respect of an act that:
(a) infringed the trade mark; and
(b) was done after the registration had expired and before it was
renewed.
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(2) If the registration of a trade mark is renewed under section 80G
within 10 months after the end of the prescribed period, an action
may not be brought in respect of an act that:
(a) infringed the trade mark; and
(b) was done after the end of the prescribed period and before the
registration was renewed.
(3) In subsection (2):
prescribed period has the same meaning as in Division 3 of Part 7.
Note: For month see section 6.
129 Application for relief from unjustified threats
(1) If a person threatens to bring an action against another person
(threatened person) on the ground that the threatened person has
infringed:
(a) a registered trade mark; or
(b) a trade mark alleged by the person to be registered;
any person aggrieved by the threat (plaintiff) may bring an action
(either in a prescribed court or in any other court having
jurisdiction) against the person making the threat (defendant).
Note: For prescribed court see section 190.
(2) The purpose of the action is to obtain from the court:
(a) a declaration that the threat is unjustified; and
(b) an injunction restraining the defendant from continuing to
make the threat.
The plaintiff may also recover any damages that he or she has
sustained because of the defendant’s conduct.
(2A) The court may include an additional amount in an assessment of
damages the plaintiff has sustained because of the defendant’s
conduct, if the court considers it appropriate to do so having regard
to:
(a) the flagrancy of the threat; and
(b) the need to deter similar threats; and
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(c) the conduct of the defendant that occurred after the defendant
made the threat; and
(d) any benefit shown to have accrued to the defendant because
of the threat; and
(e) all other relevant matters.
(3) The action may be brought whether or not the defendant is the
registered owner, or an authorised user, of the trade mark alleged
to have been infringed.
Note: For authorised user see section 8.
(4) The court may not find in favour of the plaintiff if the defendant
satisfies the court that:
(a) the trade mark is registered; and
(b) the acts of the threatened person in respect of which the
defendant threatened to bring an action constitute an
infringement of the trade mark.
(6) This section does not make a lawyer, registered trade marks
attorney or patent attorney liable to an action for an act done in a
professional capacity on behalf of a client.
Note: For lawyer, registered trade marks attorney and patent attorney see
section 6.
130 Counterclaim for infringement
If the defendant in an action brought under section 129 would be
entitled to bring against the plaintiff an action for infringement of
the registered trade mark (infringement action):
(a) the defendant may file in the court a counterclaim against the
plaintiff for any relief to which the defendant would be
entitled in the infringement action; and
(b) the provisions of this Act applicable to infringement actions
apply in relation to the counterclaim as if it were an
infringement action brought by the defendant against the
plaintiff.
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130A Mere notification of registered trade mark not a threat
The mere notification of the existence of a registered trade mark
does not constitute a threat to bring an action for the purposes of
section 129.
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131 Object of Part
The object of this Part is to protect registered trade marks by
making provision allowing the Comptroller-General of Customs to
seize and deal with goods that are imported into Australia if the
importation infringes, or appears to infringe, a registered trade
mark.
Note: In addition, the regulations may provide for the effect of a protected
international trade mark: see Part 17A.
132 Notice of objection to importation
(1) The registered owner of a registered trade mark may give to the
Comptroller-General of Customs a notice in writing objecting to
the importation after the date of the notice of goods that infringe
the trade mark. The notice is to be given together with any
prescribed document.
(2) If:
(a) the registered owner of the registered trade mark has not
given a notice under subsection (1); or
(b) any notice given under subsection (1) is no longer in force;
an authorised user of the trade mark having power to give a notice
under subsection (1) may ask the registered owner to give such a
notice in respect of the trade mark.
Note 1: For authorised user see section 8.
Note 2: An authorised user of the trade mark may not have power to give a
notice under subsection (1) because of the terms of the agreement
between the authorised user and the registered owner of the trade
mark (see section 26).
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(3) The authorised user may give the notice to the
Comptroller-General of Customs:
(a) at any time, with the consent of the registered owner; or
(b) during the prescribed period, if the registered owner refuses
to comply with the request on a particular occasion during
the prescribed period; or
(c) after the end of the prescribed period, if the registered owner
has failed to give such a notice during the prescribed period.
The authorised user must give also to the Comptroller-General of
Customs, together with the notice:
(d) any document prescribed for the purposes of subsection (1);
and
(e) any other prescribed document.
(4) A notice given by the registered owner of a trade mark remains in
force for 4 years from the day on which the notice is given unless it
is revoked, before the end of that period, by notice in writing given
to the Comptroller-General of Customs by the person who is then
the registered owner of the trade mark.
(5) A notice given by an authorised user of the trade mark remains in
force for 4 years unless it is revoked, before the end of that period,
by notice in writing given to the Comptroller-General of Customs:
(a) if the authorised user has power to revoke the notice—by the
authorised user; or
(b) in any other case—by the person who is then the registered
owner of the trade mark.
Note 1: For authorised user see section 8.
Note 2: An authorised user of a trade mark may not have power to revoke the
notice because of the terms of the agreement between the authorised
user and the registered owner of the trade mark (see section 26).
133 Comptroller-General of Customs may seize goods infringing
trade mark
(1) This section applies to goods manufactured outside Australia that:
(a) are imported into Australia; and
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(b) are subject to customs control under the Customs Act 1901.
(2) If goods to which this section applies:
(a) have applied to them or in relation to them a sign that, in the
opinion of the Comptroller-General of Customs, is
substantially identical with, or deceptively similar to, a
notified trade mark; and
(b) are goods in respect of which the notified trade mark is
registered;
the Comptroller-General of Customs must seize the goods unless
he or she is satisfied that there are no reasonable grounds for
believing that the notified trade mark is infringed by the
importation of the goods.
Note 1: For applied to or in relation to goods see section 9.
Note 2: For deceptively similar see section 10.
Note 3: For notified trade mark see section 6.
(3) Subject to subsection (3A), the Comptroller-General of Customs
may decide not to seize the goods unless he or she has been given
by the objector (or by one or more of the objectors) a written
undertaking acceptable to the Comptroller-General of Customs to
repay to the Commonwealth the expenses of seizing the goods.
Note: For objector see section 6.
(3A) The Comptroller-General of Customs may decide not to seize the
goods unless he or she has been given by the objector (or one or
more of the objectors), instead of an undertaking, security in an
amount that the Comptroller-General of Customs considers
sufficient to repay to the Commonwealth the expenses of seizing
the goods if:
(a) an amount payable under an undertaking given by the
objector (or one or more of the objectors) in relation to other
goods has not been paid in accordance with the undertaking;
and
(b) the Comptroller-General of Customs considers it reasonable
in all the circumstances to require the security.
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(3B) An undertaking may be withdrawn or varied if the
Comptroller-General of Customs consents in writing to a written
request from the objector or objectors to do so.
(4) Goods seized under this section must be kept in a secure place as
directed by the Comptroller-General of Customs.
(5) In this section:
expenses of seizing goods means the expenses that may be
incurred by the Commonwealth if the goods were seized.
133A Determinations about owners of goods
An officer of Customs (within the meaning of subsection 4(1) of
the Customs Act 1901) may determine that a person is the owner of
goods for the purposes of paragraph (b) of the definition of
designated owner if the person is an owner (within the meaning of
that subsection) of the goods.
Note: For designated owner see section 6.
134 Notice of seizure
(1) As soon as is practicable after goods are seized under section 133,
the Comptroller-General of Customs must give to the designated
owner and the objector, by any means of communication
(including by electronic means), a notice (the seizure notice)
identifying the goods and stating that the identified goods have
been seized.
Note: For designated owner and objector see section 6.
(2) The seizure notice must state that the goods will be released to the
designated owner if:
(a) the designated owner makes a claim for the release of the
goods within the claim period; and
(b) the objector has not, by the end of the action period:
(i) instituted an action for infringement of the notified trade
mark in respect of the goods; and
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(ii) given the Comptroller-General of Customs written
notice of that action.
Note: For claim period, action period and notified trade mark see section 6.
(3) The seizure notice must also:
(a) set out the claim period for the goods; and
(b) set out the action period for the goods and state that the
action period will begin only if the designated owner makes a
claim for the release of the goods; and
(c) if the notice is given to the objector—state the name and the
address of the place of business or residence of the
designated owner (if known), unless the Comptroller-General
of Customs is satisfied, for reasons of confidentiality, that it
is not desirable to do so; and
(d) if the notice is given to the designated owner—state the name
and the address of the place of business or residence of:
(i) the objector; or
(ii) if the objector has nominated a person to be the
objector’s agent or representative for the purposes of
this Division—that person;
unless the Comptroller-General of Customs is satisfied, for
reasons of confidentiality, that it is not desirable to do so.
(4) The Comptroller-General of Customs may, at any time after the
goods are seized, give to the objector:
(a) the name and the address of the place of business or
residence of any person or body (whether in or outside
Australia) that made arrangements, on behalf of the
designated owner of the goods, for the goods to be brought to
Australia or any information that the Comptroller-General of
Customs has, and believes on reasonable grounds may help
in identifying and locating such a person or body; and
(b) any information (including personal information) that the
Comptroller-General of Customs has and believes on
reasonable grounds may be relevant for the purpose of
identifying and locating the importer of the goods; and
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(c) any information (including personal information) that the
Comptroller-General of Customs has and believes on
reasonable grounds may be relevant for the purpose of
identifying and locating the designated owner of the goods.
134A Inspection, release etc. of seized goods
(1) The Comptroller-General of Customs may permit the objector or
the designated owner to inspect the seized goods.
Note: For designated owner, objector and seized goods see section 6.
(2) If the objector gives the Comptroller-General of Customs the
requisite undertakings, the Comptroller-General of Customs may
permit the objector to remove one or more samples of the seized
goods from the custody of the Comptroller-General of Customs for
inspection by the objector.
(3) If the designated owner gives the Comptroller-General of Customs
the requisite undertakings, the Comptroller-General of Customs
may permit the designated owner to remove one or more samples
of the seized goods from the custody of the Comptroller-General of
Customs for inspection by the designated owner.
(4) The requisite undertakings are undertakings in writing that the
person giving the undertaking will:
(a) return the sample goods to the Comptroller-General of
Customs at a specified time that is satisfactory to the
Comptroller-General of Customs; and
(b) take reasonable care to prevent damage to the sample goods.
(5) If the Comptroller-General of Customs permits inspection of the
seized goods, or the removal of sample goods, by the objector in
accordance with this section, the Commonwealth is not liable to
the designated owner for any loss or damage suffered by the
designated owner arising out of:
(a) damage to any of the seized goods incurred during that
inspection; or
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(b) anything done by the objector or any other person to, or in
relation to, sample goods removed from the custody of the
Comptroller-General of Customs or any use made by the
objector of such sample goods.
135 Consent to forfeiture of seized goods
(1) The designated owner of any seized goods may, at any time before
an objector starts an action for infringement of a notified trade
mark in respect of the goods, consent to the goods being forfeited
to the Commonwealth by giving notice in writing to that effect to
the Comptroller-General of Customs.
(2) If the designated owner gives such a notice, the goods are forfeited
to the Commonwealth.
Note: For designated owner, seized goods, objector and notified trade mark
see section 6.
136 Claim for release of seized goods
(1) The designated owner may make a claim to the
Comptroller-General of Customs for the release of seized goods.
Note: For designated owner and seized goods see section 6.
(2) The claim must be made before the end of the claim period for the
goods.
Note: For claim period see section 6.
(3) The claim must:
(a) be in the form (if any) prescribed by the regulations; and
(b) include the information prescribed by the regulations.
Note: Sections 137.1 and 137.2 of the Criminal Code create offences for
providing false or misleading information or documents.
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136A Seized goods not claimed are forfeited
(1) Seized goods are forfeited to the Commonwealth if a claim for the
release of the goods is not made within the claim period for the
goods.
Note: For seized goods and claim period see section 6.
(2) However, if the Comptroller-General of Customs allows a late
claim for the goods (see section 136B), the goods are taken not to
have been forfeited.
136B Late claim for release of seized goods
(1) The Comptroller-General of Customs may allow the designated
owner to make a claim (the late claim) to the Comptroller-General
of Customs for the release of seized goods after the end of the
claim period for the goods.
Note: For objector, seized goods and claim period see section 6.
(2) The Comptroller-General of Customs may allow the late claim
only if:
(a) an action for infringement of the notified trade mark in
respect of the goods has not been instituted; and
(b) the Comptroller-General of Customs considers it reasonable
in the circumstances; and
(c) the goods have not been disposed of under section 139.
(3) An application may be made to the Administrative Appeals
Tribunal for the review of a decision of the Comptroller-General of
Customs under subsection (1) refusing to allow a late claim for the
release of seized goods.
136C Objector to be notified of claim
(1) If the designated owner makes a claim for the release of seized
goods, the Comptroller-General of Customs must, as soon as
practicable, give notice of the claim to the objector.
Note: For designated owner, objector and seized goods see section 6.
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(2) The notice:
(a) must be in writing; and
(b) may include any information that the Comptroller-General of
Customs has, and believes on reasonable grounds may be
relevant, for the purpose of identifying and locating either or
both of the following:
(i) the importer of the goods;
(ii) any other person or body (whether in or outside
Australia) that made arrangements for the goods to be
brought to Australia.
136D Release of seized goods
(1) The Comptroller-General of Customs must release seized goods to
the designated owner if:
(a) the objector gives written notice to the Comptroller-General
of Customs stating that the objector consents to the release of
the seized goods; and
(b) the goods have not been disposed of under section 139.
Note: For designated owner, objector and seized goods see section 6.
(2) The Comptroller-General of Customs may release seized goods to
the designated owner at any time if:
(a) the Comptroller-General of Customs, having regard to
information that has come to his or her knowledge after the
goods were seized, is satisfied that there are no reasonable
grounds for believing that the notified trade mark has been
infringed by the importation of the goods; and
(b) the objector has not brought an action for infringement of the
notified trade mark in respect of the goods.
(3) The Comptroller-General of Customs must release seized goods to
the designated owner if:
(a) the designated owner has made a claim for the release of the
goods; and
(b) the objector has not, by the end of the action period:
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(i) instituted an action for infringement of the notified trade
mark in respect of the goods; and
(ii) given the Comptroller-General of Customs written
notice of that action.
Note: For action period see section 6.
(4) The Comptroller-General of Customs must release seized goods to
the designated owner if:
(a) the designated owner has made a claim for the release of the
goods; and
(b) action for infringement of the notified trade mark in respect
of the goods has been instituted; and
(c) at the end of a period of 20 working days commencing on the
day on which the action was instituted, there is not in force
an order of the court in which the action was instituted
preventing the release of the goods.
(5) This section has effect subject to section 140.
136E Goods released but not collected are forfeited
Seized goods are forfeited to the Commonwealth if:
(a) the goods are released by the Comptroller-General of
Customs to the designated owner; and
(b) the designated owner does not take possession of the goods
within 90 days of the release.
Note: For designated owner and seized goods see section 6.
137 Action for infringement of trade mark
(1) An objector may bring an action for infringement of a notified
trade mark in respect of seized goods.
Note: For objector, notified trade mark and seized goods see section 6.
(2) The court hearing the action:
(a) may, on the application of a person, allow the person to be
joined as a defendant to the action; and
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(b) must allow the Comptroller-General of Customs to appear
and be heard.
(3) In addition to any relief that the court may grant apart from this
section, the court may:
(a) at any time, if it thinks it just, order that the seized goods be
released to the designated owner subject to the conditions (if
any) that the court considers fit to impose; or
(b) order that the seized goods be forfeited to the
Commonwealth.
Note: For seized goods and designated owner see section 6.
(4) If:
(a) the court decides that the trade mark was not infringed by the
importation of the goods; and
(b) the designated owner of the goods, or any other defendant,
satisfies the court that he or she has suffered loss or damage
because the goods were seized;
the court may order the objector to pay to the designated owner or
other defendant compensation, in the amount determined by the
court, for any part of that loss or damage that is attributable to any
period beginning on or after the day on which the action was
brought.
(6) If the court orders that the goods be released, the
Comptroller-General of Customs must, subject to section 140,
comply with the order.
138 Action for infringement by authorised user
If an authorised user of a notified trade mark is an objector in
relation to any seized goods, the authorised user may start an action
for the infringement of the trade mark in respect of the goods
within the required period without first ascertaining whether the
registered owner is willing to bring the action.
Note 1: For notified trade mark, objector and seized goods see section 6.
Note 2: For authorised user see section 8.
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Note 3: Under paragraph 26(1)(b) an authorised user of a trade mark may
bring an action for infringement of the trade mark only if the
registered owner of the trade mark gives consent to the bringing of
such an action or refuses or fails to bring such an action.
139 Disposal of seized goods forfeited to the Commonwealth
(1) Seized goods forfeited to the Commonwealth must be disposed of:
(a) in the manner prescribed by the regulations; or
(b) if no manner of disposal is so prescribed—as the
Comptroller-General of Customs directs.
Note: For seized goods see section 6.
(2) However, goods forfeited under section 136A must not be disposed
of until 30 days after their forfeiture.
Note: If the Comptroller-General of Customs allows a late claim under
section 136B for goods that have been forfeited under section 136A,
the goods are taken not to have been forfeited.
(3) Subsection (1) does not require the disposal of goods that are
required in relation to an action for infringement of a trade mark.
Right of compensation in certain circumstances
(4) Despite the forfeiture of seized goods to the Commonwealth, a
person may apply to a court of competent jurisdiction under this
section for compensation for the disposal of the goods.
(5) A right to compensation exists if:
(a) the goods did not infringe the objector’s notified trade mark;
and
(b) the person establishes, to the satisfaction of the court:
(i) that he or she was the owner of the goods immediately
before they were forfeited; and
(ii) that there were circumstances providing a reasonable
excuse for the failure to make a claim for the release of
the goods.
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(6) If a right to compensation exists under subsection (4), the court
must order the payment by the Commonwealth to the person of an
amount equal to the market value of the goods at the time of their
disposal.
140 Power of Comptroller-General of Customs to retain control of
goods
In spite of this Part, the Comptroller-General of Customs:
(a) must not release, or dispose of, any seized goods; or
(b) must not take any action in relation to the goods to give
effect to any order of a court under section 137;
if the Comptroller-General of Customs is required or allowed to
retain control of the goods under any other law of the
Commonwealth.
Note: For seized goods see section 6.
141 Insufficient security
If security given under subsection 133(3A) by the objector or
objectors who gave notice under section 132 in respect of a trade
mark is not sufficient to meet the expenses incurred by the
Commonwealth as a result of the action taken by the
Comptroller-General of Customs under this Part because of the
notice, the amount of the difference between those expenses and
the amount of security:
(a) is a debt due by the objector, or by the objectors jointly or
each of them separately, to the Commonwealth; and
(b) may be recovered by an action taken in a court of competent
jurisdiction.
Note: For objector see section 6.
141A Failure to comply with undertaking etc.
(1) If an amount payable under an undertaking in relation to goods
covered by a notice given under section 132 is not paid in
accordance with the undertaking, the Comptroller-General of
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Customs may decide not to seize goods covered by the notice until
the amount owing is paid.
(2) An amount not paid under an undertaking:
(a) is a debt due by the objector, or by the objectors jointly or
each of them separately, to the Commonwealth; and
(b) may be recovered by an action taken in a court of competent
jurisdiction.
Note: For objector see section 6.
(3) If the amount paid under an undertaking in relation to goods
covered by a notice given under section 132 is in accordance with
the undertaking but is not sufficient to meet the expenses incurred
by the Commonwealth as a result of the action taken by the
Comptroller-General of Customs under this Part because of the
notice, the amount of the difference between those expenses and
the amount paid:
(a) is a debt due by the objector, or by the objectors jointly or
each of them separately, to the Commonwealth; and
(b) may be recovered by an action taken in a court of competent
jurisdiction.
142 Commonwealth not liable for loss etc. suffered because of
seizure
The Commonwealth is not liable for any loss or damage suffered
by a person:
(a) because the Comptroller-General of Customs seized, or failed
to seize, goods under this Part; or
(b) because of the release of any seized goods.
143 Power to require information
(1) If:
(a) goods that may be seized under this Part are imported into
Australia; and
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(b) the Comptroller-General of Customs, relying on information
received, is satisfied on reasonable grounds that the use of a
trade mark applied to or in relation to those goods is
fraudulent;
the Comptroller-General of Customs may ask the importer of the
goods or an agent of the importer:
(c) to produce any document in his or her possession relating to
the goods; and
(d) to give information about:
(i) the name and address of the person by whom the goods
were consigned to Australia; and
(ii) the name and address of the person in Australia to
whom the goods were consigned.
Note 1: For applied to in relation to goods see section 9.
Note 2: In obtaining information for the purposes of this subsection, the
Comptroller-General of Customs must comply with Australian
Privacy Principles 3 and 5.
(2) If the importer or his or her agent fails to comply with the request
within the prescribed period, the importer or agent commits an
offence punishable, on conviction, by imprisonment for a period
not exceeding 6 months.
Note 1: The Reader’s Guide gives information about penalties (see the
paragraphs under the subheading Crimes Act 1914).
Note 2: For month see section 6.
144 Modification in relation to Norfolk Island etc.
The regulations may provide for the modification or adaptation of
this Part in its application to:
(a) Norfolk Island; or
(b) Christmas Island; or
(c) Cocos (Keeling) Islands.
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145 Falsifying or removing a registered trade mark
Indictable offence
(1) A person commits an offence if:
(a) a registered trade mark has been applied to goods, or in
relation to goods or services; and
(b) the goods or services are being, or are to be, dealt with or
provided in the course of trade; and
(c) the person:
(i) alters or defaces the trade mark; or
(ii) makes any addition to the trade mark; or
(iii) wholly or partly removes, erases or obliterates the trade
mark; and
(d) the person does so without:
(i) the permission of the registered owner, or an authorised
user, of the trade mark; or
(ii) being required or authorised to do so by this Act, a
direction of the Registrar or an order of a court.
Penalty: Imprisonment for 5 years or 550 penalty units, or both.
Note 1: For registered trade mark and registered owner see section 6.
Note 2: For authorised user see section 8.
Note 3: For applied to goods and applied in relation to goods or services see
section 9.
Note 4: International trade marks may be protected under the regulations: see
Part 17A.
Summary offence
(2) A person commits an offence if:
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(a) a registered trade mark has been applied to goods, or in
relation to goods or services; and
(b) the goods or services are being, or are to be, dealt with or
provided in the course of trade; and
(c) the person:
(i) alters or defaces the trade mark; or
(ii) makes any addition to the trade mark; or
(iii) wholly or partly removes, erases or obliterates the trade
mark; and
(d) the person does so without:
(i) the permission of the registered owner, or an authorised
user, of the trade mark; or
(ii) being required or authorised to do so by this Act, a
direction of the Registrar or an order of a court.
Penalty: Imprisonment for 12 months or 60 penalty units, or both.
(3) The fault element for paragraphs (2)(a), (b) and (d) is negligence.
146 Falsely applying a registered trade mark
Indictable offence
(1) A person commits an offence if:
(a) the person applies a mark or sign to goods, or in relation to
goods or services; and
(b) the goods or services are being, or are to be, dealt with or
provided in the course of trade; and
(c) the mark or sign is, or is substantially identical to, the
registered trade mark; and
(d) the person applies the mark or sign without:
(i) the permission of the registered owner, or an authorised
user, of the trade mark; or
(ii) being required or authorised to do so by this Act, a
direction of the Registrar or an order of a court.
Penalty: Imprisonment for 5 years or 550 penalty units, or both.
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Note 1: For registered trade mark and registered owner see section 6.
Note 2: For authorised user see section 8.
Note 3: International trade marks may be protected under the regulations: see
Part 17A.
Summary offence
(2) A person commits an offence if:
(a) the person applies a mark or sign to goods, or in relation to
goods or services; and
(b) the goods or services are being, or are to be, dealt with or
provided in the course of trade; and
(c) the mark or sign is, or is substantially identical to, the
registered trade mark; and
(d) the person applies the mark or sign without:
(i) the permission of the registered owner, or an authorised
user, of the trade mark; or
(ii) being required or authorised to do so by this Act, a
direction of the Registrar or an order of a court.
Penalty: Imprisonment for 12 months or 60 penalty units, or both.
(3) The fault element for paragraphs (2)(b), (c) and (d) is negligence.
147 Making a die etc. for use in trade marks offence
Indictable offence
(1) A person commits an offence if:
(a) the person makes a die, block, machine or instrument; and
(b) the die, block, machine or instrument is likely to be used for,
or in the course of, committing an offence; and
(c) the offence is an offence against section 145 or 146.
Penalty: Imprisonment for 5 years or 550 penalty units, or both.
(2) Strict liability applies to paragraph (1)(c).
Note: For strict liability, see section 6.1 of the Criminal Code.
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(3) A person commits an offence if:
(a) the person makes a die, block, machine or instrument; and
(b) the die, block, machine or instrument is likely to be used for,
or in the course of, committing an offence; and
(c) the offence is an offence against section 145 or 146.
Penalty: Imprisonment for 12 months or 60 penalty units, or both.
(4) The fault element for paragraph (3)(b) is negligence.
(5) Strict liability applies to paragraph (3)(c).
Note: For strict liability, see section 6.1 of the Criminal Code.
147A Drawing etc. trade marks for use in offence
Indictable offence
(1) A person commits an offence if:
(a) the person draws, or programs a computer or other device to
draw, a registered trade mark or part of a registered trade
mark; and
(b) the registered trade mark or part of the registered trade mark
is likely to be used for, or in the course of, an offence; and
(c) the offence is an offence against section 145 or 146.
Penalty: Imprisonment for 5 years or 550 penalty units, or both.
Note: For registered trade mark see section 6.
(2) Strict liability applies to paragraph (1)(c).
Note: For strict liability, see section 6.1 of the Criminal Code.
Summary offence
(3) A person commits an offence if:
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(a) the person draws, or programs a computer or other device to
draw, a registered trade mark or part of a registered trade
mark; and
(b) the registered trade mark or part of the registered trade mark
is likely to be used for, or in the course of, an offence; and
(c) the offence is an offence against section 145 or 146.
Penalty: Imprisonment for 12 months or 60 penalty units, or both.
(4) The fault element for paragraph (3)(b) is negligence.
(5) Strict liability applies to paragraph (3)(c).
Note: For strict liability, see section 6.1 of the Criminal Code.
147B Possessing or disposing of things for use in trade marks
offence
Indictable offence
(1) A person commits an offence if:
(a) the person possesses or disposes of:
(i) a die, block, machine or instrument; or
(ii) a computer, or other device, programmed to draw a
registered trade mark or part of a registered trade mark;
or
(iii) a representation of a registered trade mark or of part of a
registered trade mark; and
(b) the die, block, machine, instrument, computer, device or
representation is likely to be used for, or in the course of, an
offence; and
(c) the offence is an offence against section 145 or 146.
Penalty: Imprisonment for 5 years or 550 penalty units, or both.
Note: For registered trade mark see section 6.
(2) Strict liability applies to paragraph (1)(c).
Note: For strict liability, see section 6.1 of the Criminal Code.
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Summary offence
(3) A person commits an offence if:
(a) the person possesses or disposes of:
(i) a die, block, machine or instrument; or
(ii) a computer, or other device, programmed to draw a
registered trade mark or part of a registered trade mark;
or
(iii) a representation of a registered trade mark or of part of a
registered trade mark; and
(b) the die, block, machine, instrument, computer, device or
representation is likely to be used for, or in the course of, an
offence; and
(c) the offence is an offence against section 145 or 146.
Penalty: Imprisonment for 12 months or 60 penalty units, or both.
(4) The fault element for paragraph (3)(b) is negligence.
(5) Strict liability applies to paragraph (3)(c).
Note: For strict liability, see section 6.1 of the Criminal Code.
148 Goods with false trade marks
Indictable offence
(1) A person commits an offence if:
(a) the person:
(i) sells goods; or
(ii) exposes goods for sale; or
(iii) possesses goods for the purpose of trade or
manufacture; or
(iv) imports goods into Australia for the purpose of trade or
manufacture; and
(b) any of the following applies:
(i) there is a registered trade mark on the goods;
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(ii) there is a mark or sign on the goods that is substantially
identical to a registered trade mark;
(iii) a registered trade mark on the goods has been altered,
defaced, added to, wholly or partly removed, erased or
obliterated; and
(c) the registered trade mark, or mark or sign, was applied,
altered, defaced, added to, wholly or partly removed, erased
or obliterated, as the case requires, without:
(i) the permission of the registered owner, or an authorised
user, of the trade mark; or
(ii) the application being required or authorised by this Act,
a direction of the Registrar or an order of a court.
Penalty: Imprisonment for 5 years or 550 penalty units, or both.
Summary offence
(2) A person commits an offence if:
(a) the person:
(i) sells goods; or
(ii) exposes goods for sale; or
(iii) possesses goods for the purpose of trade or
manufacture; or
(iv) imports goods into Australia for the purpose of trade or
manufacture; and
(b) any of the following applies:
(i) there is a registered trade mark applied to the goods;
(ii) there is a mark or sign applied to the goods that is
substantially identical to a registered trade mark;
(iii) a registered trade mark applied to the goods has been
altered, defaced, added to, wholly or partly removed,
erased or obliterated; and
(c) the registered trade mark, or mark or sign, was applied,
altered, defaced, added to, wholly or partly removed, erased
or obliterated, as the case requires, without:
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(i) the permission of the registered owner, or an authorised
user, of the trade mark; or
(ii) the application being required or authorised by this Act,
a direction of the Registrar or an order of a court.
Penalty: Imprisonment for 12 months or 60 penalty units, or both.
(3) The fault element for paragraphs (2)(b) and (c) is negligence.
Note 1: For registered trade mark see section 6.
Note 2: For applied to goods see section 9.
Note 3: International trade marks may be protected under the regulations: see
Part 17A.
150 Aiding and abetting offences
(1) If a person:
(a) aids, abets, counsels or procures; or
(b) is in any way, directly or indirectly, knowingly concerned in,
or party to;
the doing of an act outside Australia which, if it were done in
Australia, would be an offence against this Act, the person is taken
to have committed that offence and is punishable accordingly.
(2) Subsection (1) does not affect the operation of section 11.2 or
11.2A of the Criminal Code.
151 False representations regarding trade marks
(1) A person must not make a representation to the effect that a trade
mark is a registered trade mark unless the person knows, or has
reasonable grounds to believe, that the trade mark is registered in
Australia.
Penalty: 60 penalty units.
(2) A person must not make a representation to the effect that a part of
a registered trade mark is registered as a trade mark unless the
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person knows, or has reasonable grounds to believe, that that part
is registered as a trade mark in Australia.
Penalty: 60 penalty units.
(3) A person must not make a representation to the effect that a trade
mark is registered in respect of goods or services unless the person
knows, or has reasonable grounds to believe, that the trade mark is
registered in Australia in respect of those goods or services.
Penalty: 60 penalty units.
(4) A person must not make a representation to the effect that the
registration of a trade mark gives exclusive rights to use the trade
mark in circumstances in which, having regard to conditions or
limitations entered in the Register, the registration does not give
those rights unless the person has reasonable grounds to believe
that the registration does give those exclusive rights.
Penalty: 60 penalty units.
Note 1: For registered trade mark and limitations see section 6.
Note 2: The Reader’s Guide gives information about penalties (see the
paragraphs under the subheading Crimes Act 1914).
Note 3: In addition, the regulations may provide for the effect of a protected
international trade mark: see Part 17A.
(5) For the purposes of this section, the use in Australia in relation to a
trade mark:
(a) of the word registered; or
(b) of any other word or any symbol referring (either expressly
or by implication) to registration;
is taken to be a representation that the trade mark is registered in
Australia in respect of the goods or services in relation to which it
is used except if the trade mark is registered in a country other than
Australia in respect of those goods or services and:
(c) the word or symbol by itself indicates that the trade mark is
registered in that other country or in a country outside
Australia; or
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(d) the word or symbol is used, together with other words or
symbols of the same or a bigger size, to indicate that the
trade mark is registered in that other country or in a country
outside Australia; or
(e) the word or symbol is used in relation to goods that are to be
exported to that country.
Note: For use of a trade mark in relation to goods or services see
subsections 7(4) and (5).
152 False entries in Register etc.
A person must not intentionally:
(a) make a false entry in the Register; or
(b) cause a false entry to be made in the Register; or
(c) tender in evidence a document that falsely purports to be a
copy of, or an extract from, an entry in the Register or a
document in the Trade Marks Office.
Penalty: Imprisonment for 2 years.
Note: The Reader’s Guide gives information about penalties (see the
paragraphs under the subheading Crimes Act 1914).
153 Disobeying summons etc.
(1) A person:
(a) who has been summonsed to appear as a witness before the
Registrar; and
(b) to whom a reasonable sum has been tendered in payment for
expenses;
must not fail to appear in answer to the summons.
Penalty: 10 penalty units.
(2) A person:
(a) who has been required by the Registrar to produce a
document or any other thing; and
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(b) to whom a reasonable sum has been tendered in payment for
expenses;
must not fail to produce the document or thing.
Penalty: 10 penalty units.
(2A) Subsections (1) and (2) do not apply if the person has a reasonable
excuse.
Note: A defendant bears an evidential burden in relation to the matter in
subsection (2A), see subsection 13.3(3) of the Criminal Code.
(3) An offence under this section is an offence of strict liability.
Note 1: The Reader’s Guide gives information about penalties (see the
paragraphs under the subheading Crimes Act 1914).
Note 2: For strict liability, see section 6.1 of the Criminal Code.
154 Refusing to give evidence etc.
(1) A person appearing before the Registrar as a witness must not:
(a) refuse to be sworn or to make an affirmation; or
(b) refuse to answer questions that he or she is lawfully required
to answer; or
(c) fail to produce any document or thing that he or she is
lawfully required to produce.
Penalty: 10 penalty units.
(1A) Subsection (1) does not apply if the person has a reasonable
excuse.
Note: A defendant bears an evidential burden in relation to the matter in
subsection (1A), see subsection 13.3(3) of the Criminal Code.
(2) An offence under this section is an offence of strict liability.
Note 1: The Reader’s Guide gives information about penalties (see the
paragraphs under the subheading Crimes Act 1914).
Note 2: For strict liability, see section 6.1 of the Criminal Code.
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156 Acting or holding out without being registered
Individuals
(1) An individual commits an offence if:
(a) the individual describes himself or herself, or holds himself
or herself out, or permits himself or herself to be described or
held out, as a trade marks attorney; and
(b) the individual is not a registered trade marks attorney.
Penalty: 30 penalty units.
Note 1: The Reader’s Guide gives information about penalties (see the
paragraphs under the subheading Crimes Act 1914).
Note 2: For registered trade marks attorney see section 6.
(2) An individual commits an offence if:
(a) the individual describes himself or herself, or holds himself
or herself out, or permits himself or herself to be described or
held out, as a trade marks agent; and
(b) the individual is not a registered trade marks attorney, a
patent attorney or a lawyer.
Penalty: 30 penalty units.
Note 1: The Reader’s Guide gives information about penalties (see the
paragraphs under the subheading Crimes Act 1914).
Note 2: For registered trade marks attorney, patent attorney and lawyer see
section 6.
Companies
(3) A company commits an offence if:
(a) the company describes itself, or holds itself out, or permits
itself to be described or held out, as a trade marks attorney;
and
(b) the company is not a registered trade marks attorney.
Penalty: 150 penalty units.
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Note 1: The Reader’s Guide gives information about penalties (see the
paragraphs under the subheading Crimes Act 1914).
Note 2: For company and registered trade marks attorney see section 6.
(3A) A company commits an offence if:
(a) the company describes itself, or holds itself out, or permits
itself to be described or held out, as a trade marks agent; and
(b) the company is not a registered trade marks attorney, a patent
attorney or an incorporated legal practice.
Penalty: 150 penalty units.
Note 1: The Reader’s Guide gives information about penalties (see the
paragraphs under the subheading Crimes Act 1914).
Note 2: For company, registered trade marks attorney, patent attorney and
incorporated legal practice see section 6.
Common rules
(4) In spite of section 15B of the Crimes Act 1914, a prosecution for an
offence against this section may be started at any time within 5
years after the offence was committed.
(6) An offence under this section is an offence of strict liability.
Note: For strict liability, see section 6.1 of the Criminal Code.
157 False representation about Trade Marks Office
(1) A person:
(a) must not:
(i) place, or allow to be placed, on the building in which
his or her office is situated; or
(ii) use when advertising his or her office or business; or
(iii) place on a document, as a description of his or her office
or business;
the words “Trade Marks Office” or “Office for registering
trade marks”, or words of similar import (whether alone or
together with other words); or
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(b) must not use in any other way, in connection with his or her
business, words that would reasonably lead other persons to
believe that his or her office is, or is officially connected
with, the Trade Marks Office.
Penalty: 30 penalty units.
(2) An offence under this section is an offence of strict liability.
Note 1: The Reader’s Guide gives information about penalties (see the
paragraphs under the subheading Crimes Act 1914).
Note 2: For strict liability, see section 6.1 of the Criminal Code.
157A Incorporated trade marks attorney must have a trade marks
attorney director
Offence—failing to notify lack of trade marks attorney director
(1) An incorporated trade marks attorney commits an offence if the
incorporated trade marks attorney:
(a) does not have a trade marks attorney director; and
(b) does not notify the Designated Manager of that within 7
days.
Penalty: 150 penalty units.
Note 1: The Reader’s Guide gives information about penalties (see the
paragraphs under the subheading Crimes Act 1914).
Note 2: For incorporated trade marks attorney, trade marks attorney director
and Designated Manager see section 6.
Offence—acting after 7 days without trade marks attorney director
(2) An incorporated trade marks attorney commits an offence if the
incorporated trade marks attorney:
(a) does not have a trade marks attorney director; and
(b) has not had a trade marks attorney director during the
previous 7 days; and
(c) describes itself, or holds itself out, or permits itself to be
described or held out, as a trade marks attorney.
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Penalty: 150 penalty units.
Note 1: The Reader’s Guide gives information about penalties (see the
paragraphs under the subheading Crimes Act 1914).
Note 2: For incorporated trade marks attorney and trade marks attorney
director see section 6.
Designated Manager may appoint a registered trade marks
attorney
(3) If an incorporated trade marks attorney does not have a trade marks
attorney director, the Designated Manager may, by writing, appoint
another registered trade marks attorney to take charge of the trade
marks work of the incorporated trade marks attorney.
(4) The appointment may be made only with the consent of the other
registered trade marks attorney.
Effect of appointment
(5) A registered trade marks attorney holding an appointment under
subsection (3) (the appointed attorney) is taken, for the purposes
of this Act, to be a trade marks attorney director of the
incorporated trade marks attorney.
(6) For the purposes of the Corporations Act 2001:
(a) the appointed attorney is not a director of the incorporated
trade marks attorney only because:
(i) the appointed attorney takes charge of the trade marks
work of the incorporated trade marks attorney; and
(ii) the appointed attorney is taken, for the purposes of this
Act, to be a trade marks attorney director of the
incorporated trade marks attorney; and
(b) the Designated Manager is not a director of the incorporated
trade marks attorney only because the Designated Manager
appointed the appointed attorney.
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Designated Manager may remove incorporated trade marks
attorney from Register
(7) If an incorporated trade marks attorney does not have a trade marks
attorney director, the Designated Manager may remove the
incorporated trade marks attorney from the Register.
Meaning of trade marks work
(8) Trade marks work means one or more of the following done, on
behalf of someone else, for gain:
(a) applying for or obtaining trade marks in Australia or
anywhere else;
(b) preparing trade marks applications or other documents for the
purposes of this Act or the trade marks law of another
country;
(c) giving advice (other than advice of a scientific or technical
nature) about the validity, or infringement, of trade marks.
Time for starting prosecutions
(9) Despite section 15B of the Crimes Act 1914, a prosecution for an
offence against this section may be started at any time within 5
years after the offence was committed.
159 Forfeiture orders under the proceeds of crime legislation
(1) If a person other than the Director of Public Prosecutions has
instituted proceedings for the prosecution of another person in
respect of an indictable offence against this Part, the forfeiture
order provisions apply as if a reference in those provisions to a
proceeds of crime authority (or a responsible authority) includes a
reference to the person who has instituted the proceedings.
(2) In this section:
forfeiture order provisions means:
(c) Part 2-2 of the Proceeds of Crime Act 2002; and
(d) Part 2-3 of the Proceeds of Crime Act 2002.
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160 Conduct of employees and agents of natural persons
(1) This section applies for the purposes of a prosecution for:
(a) an offence under this Act; or
(b) an offence under section 6 of the Crimes Act 1914 that relates
to this Act; or
(c) an offence against section 11.1, 11.4 or 11.5 of the Criminal
Code that relates to this Act.
Note: For provisions relating to proof of offences by bodies corporate, see
Part 2.5 of the Criminal Code.
(4) If it is necessary to prove the state of mind of an individual in
relation to particular conduct, it is enough to show:
(a) that the conduct was engaged in by a servant or agent of the
individual within the scope of his or her actual or apparent
authority; and
(b) that the servant or agent had the state of mind.
(5) Any conduct engaged in on behalf of an individual by a servant or
agent of the individual within the scope of his or her actual or
apparent authority is taken to have been engaged in also by the
individual, unless the individual establishes that he or she took
reasonable precautions and exercised due diligence to avoid the
conduct.
(6) If:
(a) an individual is convicted of an offence under this Act; and
(b) the individual would not have been convicted of the offence
if subsections (4) and (5) had not been enacted;
the individual is not liable to be punished by imprisonment for that
offence.
(7) In this section:
engage in conduct includes fail or refuse to engage in conduct.
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state of mind, in relation to a person, includes:
(a) the person’s knowledge, intention, opinion, belief or purpose;
and
(b) the person’s reasons for the intention, opinion, belief or
purpose.
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Section 161
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Part 15—Collective trade marks
161 Object of Part
This Part:
(a) defines a collective trade mark; and
(b) provides to what extent, and subject to what modifications or
additions, the provisions of this Act relating to trade marks
apply to collective trade marks.
162 What is a collective trade mark?
A collective trade mark is a sign used, or intended to be used, in
relation to goods or services dealt with or provided in the course of
trade by members of an association to distinguish those goods or
services from goods or services so dealt with or provided by
persons who are not members of the association.
163 Application of Act
(1) Subject to this Part, the provisions of this Act relating to trade
marks (other than Part 10—Assignment and Transmission of Trade
Marks) apply to collective trade marks and so apply as if:
(a) a reference to a trade mark included a reference to a
collective trade mark; and
(b) a reference to a person doing something for the registration
of a trade mark included a reference to an association doing
that thing for the registration of the collective trade mark; and
(c) a reference to a trade mark registered by a person included a
reference to a collective trade mark registered by an
association.
(2) For the purposes of this Act:
(a) the use of a collective trade mark by a member of the
association that is the applicant for the registration of the
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collective trade mark is taken to be a use of the collective
trade mark by the applicant; and
(b) the use of a registered collective trade mark by a member of
the association that is the registered owner of the collective
trade mark is taken to be a use of the collective trade mark by
the registered owner.
(3) Section 41 (trade mark not distinguishing applicant’s goods or
services) applies in relation to a collective trade mark as if a
reference to the applicant were a reference to the members of the
association that applied for registration of the collective trade
mark.
164 Application for registration
An application for the registration of a collective trade mark must
be made by the association to which the mark belongs.
165 Limitation on rights given by registered collective trade mark
A member of an association in whose name a collective trade mark
is registered does not have the right to prevent another member of
the association from using the collective trade mark in accordance
with the rules of the association (if any).
166 Assignment etc. of collective trade mark
A collective trade mark may not be assigned or transmitted.
167 Infringement of collective trade mark
In an action by an association in whose name a collective trade
mark is registered seeking relief for infringement of the collective
trade mark, the association may take into account, in claiming
damages, any damage or loss of profits sustained or incurred by the
members of the association as a result of the infringement.
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Section 168
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Part 16—Certification trade marks
168 Object of Part
This Part:
(a) defines a certification trade mark; and
(b) provides to what extent, and subject to what modifications or
additions, the provisions of this Act relating to trade marks
apply to certification trade marks; and
(c) outlines the role of the Commission in the regulation of
certification trade marks.
169 What is a certification trade mark?
A certification trade mark is a sign used, or intended to be used, to
distinguish goods or services:
(a) dealt with or provided in the course of trade; and
(b) certified by a person (owner of the certification trade mark),
or by another person approved by that person, in relation to
quality, accuracy or some other characteristic, including (in
the case of goods) origin, material or mode of manufacture;
from other goods or services dealt with or provided in the course of
trade but not so certified.
Note: The goods or services certified may be those of any person, including
the owner of the certification trade mark or any person approved by
the owner for the purpose of certifying goods or services.
170 Application of Act
Subject to this Part, the provisions of this Act relating to trade
marks (other than sections 8 and 26, paragraph 27(1)(b),
sections 33, 34 and 41, sections 121 and 127, Part 9—Removal of
trade mark from Register for non-use and Part 17—Defensive
Trade Marks) apply to certification trade marks and so apply as if a
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reference to a trade mark included a reference to a certification
trade mark.
171 Rights given by registration of a certification trade mark
Section 20 applies in relation to a certification trade mark as if
subsection (1) were omitted and the following subsection were
substituted:
“(1) If a certification trade mark is registered, the registered owner has,
subject to this Part, the exclusive rights to use, and to allow other
persons to use, the certification trade mark, in relation to the goods
and/or services in respect of which the certification trade mark is
registered. The registered owner may, however, use the
certification trade mark only in accordance with the rules
governing the use of the certification trade mark.
Note: For the rules governing the use of the certification trade mark see
section 173.”.
172 Rights of persons allowed to use certification trade mark
When the registered owner of a registered certification trade mark
allows another person (approved user) to use the certification trade
mark in relation to goods or services in respect of which it is
registered, the approved user has a right to use the certification
trade mark in relation to those goods or services in accordance with
the rules governing the use of the certification trade mark.
Note 1: For registered owner see section 6.
Note 2: For the rules governing the use of the certification trade mark see
section 173.
173 Rules governing the use of certification trade marks
(1) A person who has filed an application for the registration of a
certification trade mark must, in accordance with the regulations,
file a copy of the rules governing the use of the certification trade
mark. The copy of the rules is to be filed in addition to any
document prescribed under subsection 27(2).
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Note: For file see section 6.
(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.
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.
175 Certificate by Commission
(1) The Commission must consider the application and any documents
received under section 174 in accordance with the regulations.
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(2) If the Commission is satisfied that:
(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
(b) the rules referred to in section 173:
(i) would not be to the detriment of the public; and
(ii) are satisfactory having regard to the criteria prescribed
for the purposes of this paragraph;
the Commission must give a certificate to that effect and send a
copy to the Registrar. The Commission must also send a certified
copy of the rules to the Registrar.
Note 1: For applicant see section 6.
Note 2: For approved certifier see paragraph 173(2)(c).
Note 3: For certification requirements see paragraph 173(2)(a).
(3) The Commission may require the applicant to make amendments
or modifications to the rules as the Commission considers
necessary.
(4) If the Commission is not satisfied as set out in subsection (2):
(a) the Commission must notify the applicant and the Registrar,
in writing, of its decision not to give a certificate; and
(b) the Registrar must advertise the matter in the Official Journal
in accordance with the regulations.
(5) An application may be made to the Administrative Appeals
Tribunal for the review of a decision of the Commission refusing
to give a certificate.
176 Acceptance or rejection of application
(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).
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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.
(2) The Registrar may accept the application subject to conditions or
limitations.
Note: For limitations see section 6.
(3) The Registrar must:
(a) notify the applicant of the Registrar’s decision under this
section; and
(b) advertise the decision in the Official Journal.
177 Additional ground for rejecting an application or opposing
registration—certification trade mark not distinguishing
certified goods or services
(1) In addition to any other ground on which:
(a) an application for the registration of a certification trade mark
may be rejected; or
(b) the registration of a certification trade mark may be opposed;
the application must be rejected or the registration may be opposed
if the trade mark is not capable of distinguishing goods or services
certified by the applicant or an approved certifier from goods or
services not so certified.
Note 1: For applicant see section 6.
Note 2: For approved certifier see paragraph 173(2)(c).
Note 3: Division 2 of Part 4 sets out the main grounds for rejecting an
application, but section 41 does not apply to certification trade marks
(see section 170).
(2) In deciding whether or not the certification trade mark is capable of
so distinguishing goods or services certified by the applicant or an
approved certifier, the Registrar must take into account:
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(a) the extent to which the certification trade mark is inherently
adapted so to distinguish those goods or services; or
(b) the extent to which, because of its use or of any other
circumstances, the certification trade mark has become
adapted so to distinguish those goods or services.
178 Variation of rules
(1) Subject to subsection (2), the rules governing the use of a
registered certification trade mark may be varied in accordance
with the regulations.
(2) The rules may not be varied without the approval of the
Commission.
(3) Before deciding to approve a variation, the Commission must be
satisfied that the rules as varied:
(a) would not be to the detriment of the public; and
(b) are satisfactory having regard to the criteria prescribed for the
purposes of paragraph 175(2)(b).
(4) The Commission must notify, in accordance with the regulations, a
decision to approve a variation or not to approve a variation.
(5) An application may be made to the Administrative Appeals
Tribunal for the review of a decision of the Commission to approve
or not to approve a variation of the rules.
179 Registrar must publish rules
The Registrar must publish, in accordance with the regulations,
rules governing the use of a certification trade mark.
180 Assignment of registered certification trade mark
(1) A registered certification trade mark may be assigned only with the
consent of the Commission.
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(2) An application to the Commission for its consent to the assignment
of a registered certification trade mark must be in accordance with
the regulations.
(3) In deciding whether or not to give its consent, the Commission
must have regard to the matters provided for under the regulations.
(4) An application may be made to the Administrative Appeals
Tribunal for the review of a decision of the Commission refusing
to give its consent.
180A Assignment of unregistered certification trade mark
(1) If:
(a) an application has been made for the registration of a
certification trade mark; and
(b) a copy of the application has been sent to the Commission,
but the certification trade mark has not been registered;
the certification trade mark may be assigned only with the consent
of the Commission.
(2) An application to the Commission for its consent to the assignment
of a certification trade mark must be in accordance with the
regulations.
(3) In deciding whether or not to give its consent, the Commission
must have regard to the matters provided for under the regulations.
(4) An application may be made to the Administrative Appeals
Tribunal for the review of a decision of the Commission refusing
to give its consent.
181 Rectification of the Register by order of court
(2) In addition to its powers under Division 2 of Part 8 in relation to
certification trade marks, a prescribed court may, on the
application of a person aggrieved, order that the Register be
rectified by cancelling the registration of a certification trade mark,
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or removing or amending an entry in the Register relating to the
certification trade mark, on the ground that:
(a) the registered owner or an approved certifier is no longer
competent to certify any of the goods and/or services in
respect of which the mark is registered; or
(b) the rules governing the use of the certification trade mark are
detrimental to the public; or
(c) the registered owner or an approved user has failed to comply
with a provision of the rules governing the use of the
certification trade mark.
Note 1: For prescribed court see section 190.
Note 2: For approved certifier see paragraph 173(2)(c).
Note 3: For approved user see section 172.
(3) Notice of an application to the prescribed court must be given to
the Registrar and to the Commission.
(4) Except for cases in which the court directs the Registrar to appear,
the Registrar may appear before the court and be heard at his or her
discretion.
(5) Except for cases in which the court directs the Commission to
appear, a delegate of the Commission may appear before the court
and be heard at his or her discretion.
(6) A copy of any order made by the court under this section must be
given to the Registrar and the Registrar must comply with the
order.
182 Variation of rules by order of court
(1) A prescribed court may, on the application of a person aggrieved,
make such orders as it thinks fit for varying the rules governing the
use of a certification trade mark.
Note: For prescribed court see section 190.
(2) Notice of an application to the prescribed court must be given to
the Commission.
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(3) Except for cases in which the court directs the Commission to
appear, a delegate of the Commission may appear before the court
and be heard at his or her discretion.
(4) A copy of any order made by the court under this section must be
given to the Commission.
(5) If the court orders that the rules are to be varied, the registered
owner of the certification trade mark must give to the Registrar a
copy of the rules as varied that is certified by the Commission to be
a true copy.
183 Delegation of Commission’s powers and functions
The Commission may, by resolution, delegate all or any of its
powers and functions under this Part to a member of the
Commission.
Note: See section 34AB of the Acts Interpretation Act 1901 about the effect
of this section.
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Section 184
158 Trade Marks Act 1995
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Part 17—Defensive trade marks
184 Object of Part
This Part:
(a) provides for the registration of certain trade marks as
defensive trade marks; and
(b) provides to what extent, and subject to what modifications or
additions, the provisions of this Act relating to trade marks
apply to defensive trade marks.
185 Defensive trade marks
(1) If, because of the extent to which a registered trade mark has been
used in relation to all or any of the goods or services in respect of
which it is registered, it is likely that its use in relation to other
goods or services will be taken to indicate that there is a connection
between those other goods or services and the registered owner of
the trade mark, the trade mark may, on the application of the
registered owner, be registered as a defensive trade mark in
respect of any or all of those other goods or services.
Note: For registered trade mark and registered owner see section 6.
(2) A trade mark may be registered as a defensive trade mark in
respect of particular goods or services even if the registered owner
does not use or intend to use the trade mark in relation to those
goods or services.
(3) A trade mark may be registered as a defensive trade mark in
respect of particular goods or services even if it is already
registered otherwise than as a defensive trade mark in the name of
the applicant in respect of those goods or services.
(4) A trade mark that is registered as a defensive trade mark in respect
of particular goods or services may be subsequently registered
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otherwise than as a defensive trade mark in the name of the
registered owner in respect of the same goods or services.
186 Application of Act
Subject to this Part, the provisions of this Act (other than
subsection 20(1), paragraph 27(1)(b), sections 41 and 59,
sections 121 and 127, Part 9—Removal of trade mark from
Register for non-use and Part 16—Certification Trade Marks)
apply to defensive trade marks and so apply as if a reference to a
trade mark included a reference to a defensive trade mark.
187 Additional grounds for rejecting application for registration or
opposing registration
In addition to any other ground on which:
(a) an application for the registration of a trade mark as a
defensive trade mark may be rejected; or
(b) the registration of a trade mark as a defensive trade mark may
be opposed;
the application must be rejected or the registration may be
opposed:
(c) if the trade mark is not registered as a trade mark in the name
of the applicant; or
(d) in the case of a registered trade mark—if it is not likely that
the use of the trade mark in relation to the goods or services
in respect of which its registration as a defensive trade mark
is sought will be taken to indicate that there is a connection
between those goods or services and the registered owner.
Note: Division 2 of Part 4 sets out the main grounds for rejecting an
application but section 41 does not apply to defensive trade marks (see
section 186). Division 2 of Part 5 sets out the main grounds for
opposing registration.
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Section 189
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189 Cancellation of registration by Registrar
The Registrar may cancel the registration of a trade mark as a
defensive trade mark if the trade mark is not otherwise registered
in the name of the registered owner of the defensive trade mark.
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Protected international trade marks under the Madrid Protocol Part 17A
Section 189A
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Part 17A—Protected international trade marks
under the Madrid Protocol
189A Regulations implementing the Madrid Protocol
(1) The regulations may provide for such matters as are necessary to
enable the performance of the obligations of Australia, or to obtain
for Australia any advantage or benefit, under the Madrid Protocol.
(2) In particular (but without limiting subsection (1)), the regulations
may deal with the following matters:
(a) the procedure for dealing with applications for international
registration of trade marks that are to be filed with the
International Bureau through the intermediary of the Trade
Marks Office;
(b) the procedure for dealing with requests to extend to Australia
the protection resulting from international registration of
trade marks;
(c) the protection given to protected international trade marks in
Australia;
(d) the circumstances in which such protection ceases and the
procedures to be followed in cases of cessation;
(e) the cancellation of an international registration at Australia’s
request, as contemplated by Article 6 of the Madrid Protocol;
(f) the effect of cancelling an international registration.
(3) Regulations made for the purposes of this section:
(a) may be inconsistent with this Act; and
(b) prevail over this Act (including any other regulations or other
instruments made under this Act), to the extent of any
inconsistency.
(4) In this section:
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Section 189A
162 Trade Marks Act 1995
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International Bureau means the International Bureau of the World
Intellectual Property Organization.
international registration of a trade mark means registration of the
mark in the register of the International Bureau.
Madrid Protocol means the Protocol Relating to the Madrid
Agreement concerning the International Registration of Marks, as
signed at Madrid on 28 June 1989.
Protected international trade mark means a trade mark to which
protection resulting from international registration of the mark is
extended in Australia in accordance with the regulations.
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Jurisdiction and powers of courts Part 18
Section 190
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Part 18—Jurisdiction and powers of courts
190 Prescribed courts
Each of the following courts is a prescribed court for the purposes
of this Act:
(a) the Federal Court;
(aa) the Federal Circuit Court;
(b) the Supreme Court of a State;
(c) the Supreme Court of the Australian Capital Territory;
(d) the Supreme Court of the Northern Territory;
(e) the Supreme Court of Norfolk Island.
191 Jurisdiction of the Federal Court
(1) The Federal Court has jurisdiction with respect to matters arising
under this Act.
(2) The jurisdiction of the Federal Court to hear and determine appeals
against decisions, directions or orders of the Registrar is exclusive
of the jurisdiction of any other court except the jurisdiction of:
(a) the Federal Circuit Court under subsection 191A(2) of this
Act; and
(b) the High Court under section 75 of the Constitution.
(3) A prosecution for an offence against this Act may not be started in
the Federal Court.
191A Jurisdiction of the Federal Circuit Court
(1) The Federal Circuit Court has jurisdiction with respect to matters
arising under this Act.
(2) The jurisdiction of the Federal Circuit Court to hear and determine
appeals against decisions, directions or orders of the Registrar is
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Section 192
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exclusive of the jurisdiction of any other court except the
jurisdiction of:
(a) the Federal Court under subsection 191(2) of this Act; and
(b) the High Court under section 75 of the Constitution.
(3) A prosecution for an offence against this Act may not be started in
the Federal Circuit Court.
192 Jurisdiction of other prescribed courts
(1) Each prescribed court (other than the Federal Court and the Federal
Circuit Court) has jurisdiction with respect to matters in respect of
which an action or proceeding may, under this Act, be started in a
prescribed court.
Note: For prescribed court see section 190.
(2) The jurisdiction conferred by subsection (1) on the Supreme Court
of a Territory is conferred to the extent that the Constitution
permits in the case of:
(a) an action for the infringement of a trade mark; or
(b) an action under section 129; or
(c) a matter arising under this Act that may be heard and
determined in the course of such an action.
(3) In any other case, the jurisdiction is conferred only in relation to an
action or proceeding brought by a natural person who is resident in
the Territory, or a corporation that has its principal place of
business in the Territory, when the action or proceeding is started.
193 Exercise of jurisdiction
The jurisdiction of a prescribed court under section 191, 191A or
192 is to be exercised by a single judge.
Note: For prescribed court see section 190.
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194 Transfer of proceedings
(1) A prescribed court in which an action or proceeding under this Act
has been started may, on the application of a party made at any
stage, by an order, transfer the action or proceeding to another
prescribed court having jurisdiction to hear and determine the
action or proceeding.
Note: For prescribed court see section 190.
(2) When a court transfers an action or proceeding to another court:
(a) all relevant documents of record filed in the transferring court
must be sent to the other court by the Registrar or other
appropriate officer of the transferring court; and
(b) the action or proceeding must continue in the other court as
if:
(i) it had been started there; and
(ii) all steps taken in the transferring court had been taken in
the other court.
(3) This section does not apply in relation to a transfer of proceedings
between the Federal Court and the Federal Circuit Court.
Note: For transfers of proceedings from the Federal Circuit Court to the
Federal Court, see section 39 of the Federal Circuit Court of Australia
Act 1999. For transfers of proceedings from the Federal Court to the
Federal Circuit Court, see section 32AB of the Federal Court of
Australia Act 1976.
195 Appeals
(1) An appeal lies to the Federal Court against a judgment or order of:
(a) another prescribed court exercising jurisdiction under this
Act; or
(b) any other court in an action under Part 12.
Note: For prescribed court see section 190.
(2) Except with the leave of the Federal Court, an appeal does not lie
to the Full Court of the Federal Court against a judgment or order
of a single judge of the Federal Court or the Federal Circuit Court
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Section 196
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in the exercise of its jurisdiction to hear and determine appeals
from decisions or directions of the Registrar.
(3) With the special leave of the High Court, an appeal lies to the High
Court against a judgment or order referred to in subsection (1).
(4) Except as otherwise provided by this section, an appeal does not lie
against a judgment or order referred to in subsection (1).
196 Registrar may appear in appeals
The Registrar may appear and be heard at the hearing of an appeal
to the Federal Court or the Federal Circuit Court against a decision
or direction of the Registrar.
197 Powers of Federal Court and Federal Circuit Court on hearing
an appeal
On hearing an appeal against a decision or direction of the
Registrar, the Federal Court or the Federal Circuit Court may do
any one or more of the following:
(a) admit evidence orally, or on affidavit or otherwise;
(b) permit the examination and cross-examination of witnesses,
including witnesses who gave evidence before the Registrar;
(c) order an issue of fact to be tried as it directs;
(d) affirm, reverse or vary the Registrar’s decision or direction;
(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.
198 Practice and procedure of prescribed courts
The regulations may make provision about the practice and
procedure of prescribed courts in an action or proceeding under
this Act, including provision:
(a) prescribing the time for starting the action or proceeding or
for doing any other act or thing; or
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(b) for an extension of that time.
Note: For prescribed court see section 190.
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Part 19 Administration
Section 199
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Part 19—Administration
199 Trade Marks Office and sub-offices
(1) For the purposes of this Act, there is to be an office called the
Trade Marks Office.
(2) The Registrar may establish one or more sub-offices of the Trade
Marks Office as the Registrar considers appropriate.
(3) The Registrar may abolish any such sub-offices.
200 Seal of Trade Marks Office
(1) There is to be a seal of the Trade Marks Office and impressions of
the seal must be judicially noticed.
(2) The seal of the Trade Marks Office may be kept and used in
electronic form.
201 Registrar of Trade Marks
(1) There is to be a Registrar of Trade Marks.
(2) The Registrar has the powers and functions that are given to him or
her under this Act or any other Act (including regulations under
that Act).
202 Registrar’s powers
The Registrar may, for the purposes of this Act:
(a) summon witnesses; and
(b) receive written or oral evidence on oath or affirmation; and
(c) require the production of documents or articles; and
(d) award costs against a party to proceedings brought before the
Registrar; and
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Section 203
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(e) notify any person of any matter that, in his or her opinion,
should be brought to the person’s notice.
Note: For the awarding of costs see section 221.
203 Exercise of power by Registrar
The Registrar may not exercise a power under this Act in any way
that adversely affects a person applying for the exercise of that
power without first giving that person a reasonable opportunity of
being heard.
204 Registrar to act as soon as practicable
If:
(a) the Registrar is required under this Act to do any act or thing;
and
(b) no time or period is provided within which the act or thing is
to be done;
the Registrar is to do the act or thing as soon as practicable.
205 Deputy Registrar of Trade Marks
(1) There is to be at least one Deputy Registrar of Trade Marks.
(2) Subject to any direction by the Registrar, a Deputy Registrar has all
the powers and functions of the Registrar, except the powers of
delegation under section 206.
(3) A power or function of the Registrar, when exercised by a Deputy
Registrar, is taken to have been exercised by the Registrar.
(4) The exercise of a power or function of the Registrar by a Deputy
Registrar does not prevent the exercise of the power or function by
the Registrar.
(5) If the exercise of a power or function by the Registrar is dependent
on the opinion, belief or state of mind of the Registrar in relation to
a matter, that power or function may be exercised by a Deputy
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Registrar on his or her opinion, belief or state of mind in relation to
that matter.
(6) If the operation of a provision of this Act or another Act is
dependent on the opinion, belief or state of mind of the Registrar in
relation to a matter, that provision may operate on the opinion,
belief or state of mind of a Deputy Registrar in relation to that
matter.
206 Delegation of Registrar’s powers and functions
(1) The Registrar may by signed instrument delegate all or any of his
or her powers or functions to a prescribed employee, or employees
in a prescribed class.
Note 1: For employee see section 6.
Note 2: See section 34AB of the Acts Interpretation Act 1901 about the effect
of this subsection.
(2) A delegate must, if so required by the instrument of delegation,
exercise or perform a delegated power or function under the
direction or supervision of:
(a) the Registrar; or
(b) a person specified in the instrument, being a person referred
to in subsection (1).
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Section 207
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Part 20—The Register and official documents
207 The Register
(1) A Register of Trade Marks is to be kept at the Trade Marks Office.
(2) The Registrar must enter in the Register in accordance with this
Act:
(a) all particulars of registered trade marks, certification trade
marks and defensive trade marks, and all other matters, that
were on the old register when the repealed Act was repealed,
with the exception of particulars and other matters relating to
registered users of trade marks; and
Note 1: For old register see section 6.
Note 2: See subsection (3) for entries relating to associated trade marks.
(b) particulars of trade marks, certification trade marks,
collective trade marks and defensive trade marks, and all
other matters, that are required to be registered under this
Act; and
(c) other prescribed matters.
(3) If 2 or more trade marks were entered as associated trade marks in
the old register, no equivalent entry designating them as associated
trade marks is to be made in the Register.
Note: For old register see section 6.
(4) All particulars entered in the Register under paragraph (2)(a) are
taken to have been so entered on 1 January 1996.
208 Register may be kept on computer
(1) The Register may be kept in whole or in part by using a computer.
(2) Any record of a particular or other matter made by using a
computer for the purpose of keeping the Register is taken to be an
entry in the Register.
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Section 209
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209 Inspection of Register
(1) The Register must be available at the Trade Marks Office for
inspection by any person during the hours when the Office is open
for business.
(2) If the Register, or any part of the Register, is kept by using a
computer, subsection (1) is satisfied if a person who wants to
inspect the Register or that part of the Register is given access to a
computer terminal from which he or she can read on a screen, or
obtain a printed copy of, the particulars or other matters recorded
in the Register or that part of the Register.
210 Evidence—the Register
(1) The Register is prima facie evidence of any particular or other
matter entered in it.
Note: See section 116 about records of claims to interests and rights made
under Part 11.
(2) A copy of, or an extract from, the Register that is certified by the
Registrar to be a true record or extract is admissible in any
proceedings as if it were the original.
(3) If the Register or a part of the Register is kept by using a computer,
a document certified by the Registrar as reproducing in writing a
computer record of all or any of the particulars comprised in the
Register or in that part of the Register is admissible in any
proceedings as prima facie evidence of those particulars.
(4) This section does not apply in relation to any particular or other
matter entered in the Register in relation to a PPSA security
interest.
Note 1: For PPSA security interest see section 6.
Note 2: Certain particulars relating to registrations in respect of PPSA security
interests under the Personal Property Securities Act 2009 are
admissible in evidence: see section 174 of that Act.
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211 Evidence—certified copies of documents
(1) A certificate signed by the Registrar and stating that:
(a) anything required or permitted to be done by the Act or the
repealed Act was done or not done on, or had been done or
not been done by, a specified date; or
(b) anything prohibited by the Act or the repealed Act was done
or not done on, or had been done or not been done by, a
specified date; or
(c) a document was available for public inspection at the Trade
Marks Office on a specified date or during a specified period;
is prima facie evidence of the matters so stated.
(2) A copy of, or an extract from, a document held in the Trade Marks
Office that is certified by the Registrar to be a true copy or extract
is admissible in any proceedings as if it were the original.
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Part 21 Miscellaneous
Division 1 Applications and other documents
Section 212
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Part 21—Miscellaneous
Division 1—Applications and other documents
212 Making and signing applications etc.
An application, notice or request required or permitted under this
Act to be made or signed by a person may be made or signed, on
behalf of that person, by any other person.
213 Filing of documents
For the purposes of this Act, a document may be filed with the
Trade Marks Office by a means determined in an instrument under
subsection 213A(1).
213A Approved means of filing documents
(1) For the purposes of section 213, the Registrar may, by writing,
determine one or more means for filing a document with the Trade
Marks Office.
(2) The means may be an electronic means or any other means.
(3) The Registrar must advertise the determination in the Official
Journal.
(4) The Registrar may, in a determination under subsection (1), specify
that one or more means for filing a document with the Trade Marks
Office are preferred means.
Note: Under the regulations, reduced fees may be payable for filing a
document by preferred means.
(5) A determination under subsection (1) is not a legislative
instrument.
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213B Directions by Registrar for filing of documents
(1) The Registrar may, by writing, give a direction specifying the form
in which a document is to be filed under this Act.
Note 1: A reference to this Act includes the regulations (see section 6).
Note 2: See also paragraph 231(2)(ba) (about regulations).
(2) Subsection (1) does not apply in relation to a document that is
required to be in an approved form.
(3) The Registrar must advertise the direction in the Official Journal.
(4) A direction under subsection (1) is not a legislative instrument.
213C Directions by Registrar for filing of evidence
(1) The Registrar may, by writing, give a direction in relation to the
filing of evidence in connection with a matter arising under this
Act.
Note 1: A reference to this Act includes the regulations (see section 6).
Note 2: See also paragraph 231(2)(bb) (about regulations).
(2) Without limiting subsection (1), a direction under that subsection
may relate to the following:
(a) the number of copies of evidence to be filed;
(b) the form in which evidence is to be filed (including the
circumstances in which physical articles, other than
documents, are or are not permitted to be filed);
(c) the means by which evidence is to be filed.
(3) Without limiting paragraph (2)(b), a direction under subsection (1)
may require that evidence in writing be in the form of a
declaration.
(4) The Registrar must advertise a direction under subsection (1) in the
Official Journal.
(5) A direction under subsection (1) is not a legislative instrument.
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214 Withdrawal of application etc.
(1) A person who has filed an application, notice or request may
withdraw it, in accordance with the regulations, at any time while it
is still being considered by the Registrar.
(2) If:
(a) the right or interest on which the person relied to file the
application, notice or request has become vested in another
person; and
(b) the other person notifies the Registrar in writing that the right
or interest is vested in him or her;
the other person may withdraw the application, notice or request as
provided in subsection (1).
Note: For file see section 6.
214A Notifications by Registrar under this Act
(1) If under this Act the Registrar is required or permitted:
(a) to notify a person of a matter; or
(b) to notify a person that the person is required to do a thing;
the Registrar may so notify the person by any means of
communication (including by electronic means).
Note 1: A reference to this Act includes the regulations (see section 6).
Note 2: Section 215 deals with the service etc. of documents on a person.
(2) However, the notification must be by a means of communication
such that the content of the notification is readily accessible so as
to be usable for subsequent reference.
215 Address for service
(1) The address for service of a person who has filed an application,
notice or request is:
(a) the address for service stated in the application, notice or
request; or
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(b) if the person subsequently notifies in writing another address
to the Registrar—that other address.
Note: For file see section 6.
(2) When:
(a) a trade mark is registered; or
(b) a claim to an interest in, or to a right in respect of, a
registered trade mark that a person has is recorded in the
Register;
the Registrar must enter in the Register as the address for service of
the registered owner or of the person:
(c) if paragraph (d) does not apply—the address given, or last
given, by the registered owner or the person to the Registrar
under subsection (1); or
(d) if, before the Registrar registers the trade mark or records the
claim to the interest or right, the registered owner or person
gives in writing to the Registrar another address as his or her
address for service—that other address.
Note: For registered trade mark and registered owner see section 6.
(3) The registered owner of a registered trade mark, or any person
whose claim to an interest in, or to a right in respect of, a trade
mark is recorded in the Register, must notify the Registrar in
writing of any change in his or her address for service and the
Registrar must amend the Register accordingly.
(4) The address for service of:
(a) the registered owner of a registered trade mark; or
(b) a person whose claim to an interest in, or to a right in respect
of, a trade mark is recorded in the Register;
is the address set out from time to time in the Register as being the
address for service of the registered owner or of the person.
(5) An address for service must be an address in Australia or New
Zealand.
(6) If this Act provides that a document is to be served on, or given or
sent to, a person:
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(a) if the person has an address for service—the document may
be served on, or given or sent to, the person by a prescribed
means to that address; or
(b) if the person does not have an address for service—the
document may be served on an agent of the person in
Australia or New Zealand or may be sent by a prescribed
means to any address of the person in Australia or New
Zealand that is known to the Registrar.
(7) Subsection (6) does not affect the operation of section 28A of the
Acts Interpretation Act 1901.
Note: Subsection 28A(1) of the Acts Interpretation Act 1901 provides that a
document may be served (this term includes given, or sent, to):
“(a) on a natural person:
(i) by delivering it to the person personally; or
(ii) by leaving it at, or by sending it by pre-paid post to, the
address of the place of residence or business of the
person last known to the person serving the document;
or
(b) on a body corporate—by leaving it at, or sending it by pre-paid
post to, the head office, a registered office or a principal office
of the body corporate.”.
(8) After the time specified in the regulations, a reference in this
section to an address includes a reference to an electronic address.
(9) The time specified under subsection (8) must be later than the day
on which the regulations are registered under the Legislation Act
2003.
(10) For the purposes of this section, the question of whether an
electronic address is in Australia is to be determined in accordance
with the regulations.
(11) For the purposes of this section, the question of whether an
electronic address is in New Zealand is to be determined in
accordance with the regulations.
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Section 216
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216 Change of name
(1) If there is a change in the name of a person who has filed an
application, notice or request, the person must notify the Registrar
in writing of the change.
Note: For file see section 6.
(2) If there is a change in the name of:
(a) the registered owner of a registered trade mark; or
(b) a person whose claim to an interest in, or to a right in respect
of, a trade mark is recorded in the Register;
the registered owner or the person must notify the Registrar in
writing of the change and the Registrar must amend the Register
accordingly.
217 Death of applicant etc.
(1) If an applicant for the registration of a trade mark dies before
registration is granted on the application, his or her legal
representative may proceed with the application.
Note: For applicant see section 6.
(2) If, at any time after a trade mark is registered, the Registrar is
satisfied that the person in whose name the trade mark is registered
had died (or, in the case of a body corporate, had ceased to exist)
before registration was granted, the Registrar may amend the
Register by substituting for the name entered in the Register the
name of the person who should be the registered owner of the trade
mark.
217A Prescribed documents relating to trade marks to be made
available for public inspection
(1) The Registrar must make available for public inspection prescribed
documents that relate to a trade mark while they are held in the
Trade Marks Office at or after the time particulars of the
application for registration of the trade mark are published under
section 30.
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(2) A document may be prescribed for the purposes of subsection (1)
wholly or partly by reference to the fact that it does not contain
information covered by a requirement under section 226A. This
does not limit the ways in which documents may be prescribed for
those purposes.
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Section 218
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Division 2—Proceedings before the Registrar or a court
218 Description of registered trade mark
In an indictment, information, pleading or proceeding relating to a
registered trade mark, the trade mark may be identified by its
registration number. It is not necessary to reproduce or describe the
trade mark.
219 Evidence of trade usage
In an action or proceeding relating to a trade mark, evidence is
admissible of the usage of the trade concerned and of any relevant
trade mark, trade name or get-up legitimately used by other
persons.
220 Death of party to proceeding before Registrar
If a person who is party to a proceeding pending before the
Registrar dies, the Registrar may:
(a) on being so asked, substitute in the proceeding another
person in the place of the deceased party if the Registrar is
satisfied that the interest of the deceased party has been
transmitted to that other person; or
(b) allow the proceeding to continue without any substitution if
the Registrar is of the opinion that the interest of the
deceased party is sufficiently represented by the surviving
parties.
221 Costs awarded by Registrar
(1) The Registrar may award costs in respect of the matters, and in the
amounts, provided for in the regulations against any party to
proceedings brought before him or her.
(2) A party desiring to obtain costs must apply to the Registrar in
accordance with the regulations.
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(3) If a party is ordered to pay the costs of another party, the costs may
be recovered in a court of competent jurisdiction as a debt due by
the first party to the other party.
222 Security for costs
If a person who neither resides nor carries on business in Australia:
(a) gives notice of opposition under section 52 or
subsection 65A(4), 83A(4) or 224(6); or
(b) applies to the Registrar under Part 9 for a trade mark to be
removed from the Register;
the Registrar may require the person to give security for the costs
of the proceeding and may, if security is not given, dismiss the
proceeding.
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Division 2A—Computerised decision-making
222A Computerised decision-making
(1) The Registrar may arrange for the use, under the Registrar’s
control, of computer programs for any purposes for which the
Registrar may, or must, under this Act:
(a) make a decision; or
(b) exercise any power or comply with any obligation; or
(c) do anything else related to making a decision to which
paragraph (a) applies or related to exercising a power, or
complying with an obligation, to which paragraph (b)
applies.
Note: A reference to this Act includes the regulations (see section 6).
(2) For the purposes of this Act, the Registrar is taken to have:
(a) made a decision; or
(b) exercised a power or complied with an obligation; or
(c) done something else related to the making of a decision or
the exercise of a power or the compliance with an obligation;
that was made, exercised, complied with or done by the operation
of a computer program under an arrangement made under
subsection (1).
Substituted decisions
(3) The Registrar may substitute a decision for a decision the Registrar
is taken to have made under paragraph (2)(a) if the Registrar is
satisfied that the decision made by the operation of the computer
program is incorrect.
Review
(4) If:
(a) the Registrar is taken to have made a decision (the initial
decision) under paragraph (2)(a); and
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(b) under another provision of this Act, an application may be
made to the Administrative Appeals Tribunal for review of
the initial decision; and
(c) the Registrar, under subsection (3), substitutes a decision for
the initial decision;
an application may be made to the Administrative Appeals
Tribunal for review of the substituted decision.
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223 Fees
(1) The regulations may prescribe the fees to be paid for the purposes
of this Act and may prescribe different fees in respect of the doing
of an act according to the time when the act is done.
(2) Prescribed fees are payable in accordance with the regulations.
(2A) Without limiting subsection (1), different fees may be prescribed
for filing a document with the Trade Marks Office according to the
means by which the document is filed.
(2B) Without limiting subsection (1), different amounts of a fee may be
prescribed according to the means by which the fee is paid.
Means of paying fee
(2C) A fee that must be paid to the Registrar must be paid by a means
determined in an instrument under subsection 223AA(1).
Consequences of failure to pay fee
(3) The regulations may provide for the consequences (for the
purposes of this Act) of failing to pay a fee in accordance with the
regulations.
(4) In particular, the regulations may provide that, for the purposes of
this Act:
(a) an act is not to be done, or is taken not to have been done, if
the fee for doing the act is not paid in accordance with the
regulations; or
(b) a document is not filed, or is taken not to have been filed, if
the fee for filing the document is not paid in accordance with
the regulations; or
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(c) an application for registration of a trade mark lapses, or is
taken to have lapsed, if the fee for filing the application is not
paid in accordance with the regulations.
(5) Subsection (4) does not limit subsection (3).
223AA Approved means of paying a fee
(1) For the purposes of subsection 223(2C), the Registrar may, by
writing, determine one or more means for paying a fee.
(2) The means may be an electronic means or any other means.
(3) The Registrar must advertise the determination in the Official
Journal.
(4) The Registrar may, in a determination under subsection (1), specify
that one or more means for paying a fee are preferred means.
Note: Under the regulations, the amount of a fee may be reduced for paying
the fee by preferred means.
(5) A determination under subsection (1) is not a legislative
instrument.
223A Doing act when Trade Marks Office reopens after end of
period otherwise provided for doing act
(1) If the last day of a period provided by this Act (except this section)
for doing an act is a day when the Trade Marks Office, or a
sub-office of the Trade Marks Office (if any), is not open for
business, the act may be done in prescribed circumstances on the
next day when the office or sub-office is open for business.
(2) For the purposes of this section, the Trade Marks Office, or a
sub-office of the Trade Marks Office, is taken not to be open for
business on a day:
(a) declared by regulations to be a day on which the office or
sub-office is not open for business; or
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(b) declared, by a prescribed person in writing published in the
prescribed way, to be a day on which the office or sub-office
is not open for business.
Declarations
(3) A declaration mentioned in paragraph (2)(a) or (b) may identify the
day by reference to its being declared a public holiday by or under
a law of a State or Territory. This does not limit the way the
declaration may identify the day.
(4) A declaration mentioned in paragraph (2)(b):
(a) may be made before, on or after the day; and
(b) is not a legislative instrument.
Relationship with other law
(5) This section has effect despite the rest of this Act.
(6) Subsection 36(2) of the Acts Interpretation Act 1901 does not
apply in relation to the act mentioned in subsection (1) of this
section.
Exception for prescribed act
(7) This section does not apply to a prescribed act.
Note: Subsection 36(2) of the Acts Interpretation Act 1901 is relevant to a
prescribed act.
224 Extension of time
(1) The Registrar must extend the time for doing a relevant act that is
required by this Act to be done within a certain time if the act is
not, or cannot be, done within that time because of an error or
omission by:
(a) the Registrar or a Deputy Registrar; or
(b) an employee; or
(c) a person providing, or proposing to provide, services for the
benefit of the Trade Marks Office.
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(2) If, because of:
(a) an error or omission by the person concerned or by his or her
agent; or
(b) circumstances beyond the control of the person concerned;
a relevant act that is required by this Act to be done within a
certain time is not, or cannot be, done within that time, the
Registrar may, on application made by the person concerned in
accordance with the regulations, extend the time for doing the act.
(3) If:
(a) a relevant act that a person is required by this Act to do
within a certain time is not, or cannot be, done within that
time; and
(b) on application made by that person in accordance with the
regulations, the Registrar is of the opinion that special
circumstances exist that justify an extension of that time;
the Registrar may extend the time for doing the act.
(3A) If the Registrar has revoked the registration of a trade mark, he or
she may extend the time for doing a relevant act that is required by
this Act to be done within a certain time in connection with the
application for registration of the trade mark.
(4) The time allowed for doing a relevant act may be extended,
whether before or after that time has expired.
(5) If an application is made under subsection (2) or (3) for an
extension of time for more than 3 months, the Registrar must
advertise the application in the Official Journal.
Note: For month see section 6.
(6) A person may, as prescribed, oppose the granting of the
application.
(7) An application may be made to the Administrative Appeals
Tribunal for the review of a decision of the Registrar not to extend
the time for the doing of a relevant act.
(8) In this section:
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relevant act means:
(a) any act (other than a prescribed act) done in relation to a
trade mark; or
(b) the filing of any document (other than a prescribed
document); or
(c) any proceedings (other than court proceedings).
225 Convention countries
(2) If:
(a) the regulations declare that, under the terms of a treaty
subsisting between 2 or more Convention countries, an
application made for the registration of a trade mark in one of
those countries is equivalent to an application made in
another of those countries; and
(b) an application for the registration of a trade mark is made in
one of those Convention countries;
then, for the purposes of this Act, an application for the registration
of the trade mark is taken to have also been made in the other
Convention country or in each of the other Convention countries
(as the case may be).
(3) If:
(a) the regulations declare that, under the law of a Convention
country, an application for the registration of a trade mark
made in another country is equivalent to an application made
in the Convention country; and
(b) an application for the registration of a trade mark is made in
that other country;
then, for the purposes of this Act, an application for the registration
of the trade mark is taken to have also been made in the
Convention country.
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226 Publication of Official Journal etc.
(1) The Registrar must issue (electronically or otherwise) at regular
intervals, as determined by the Registrar, an Official Journal of
Trade Marks containing:
(a) the matters that are required under this Act to be advertised
in the Official Journal; and
(b) any other matter that the Registrar thinks fit.
(3) The Registrar may prepare, publish (electronically or otherwise)
and sell documents relating to trade marks as the Registrar thinks
fit.
226A Requirements for confidential treatment of information held
in the Trade Marks Office
(1) In accordance with the regulations, the Registrar may:
(a) require that specified information in a document that has
been filed, or is to be filed, in relation to a trade mark be held
in the Trade Marks Office confidentially; and
(b) make such a requirement subject to specified conditions
and/or limitations; and
(c) vary or revoke such a requirement, condition or limitation.
(2) The regulations may provide for procedures to be followed in
connection with the making, variation or revocation of a
requirement under this section or of conditions or limitations on
such a requirement.
(3) If a requirement is made in writing under this section, the
requirement is not a legislative instrument.
226B Certain proceedings do not lie
No criminal or civil action or proceeding lies against the Registrar,
a Deputy Registrar or an employee for publishing, or otherwise
making available, reasonably and in good faith, information
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required or permitted by this Act to be published or otherwise
made available.
Note: For employee see section 6.
227 Notice regarding review of decision by Administrative Appeals
Tribunal
(1) If, under a provision of this Act, an application may be made to the
Administrative Appeals Tribunal for the review of a decision of a
person:
(a) the person must give a written notice of the decision to any
person affected by it; and
(b) the notice must include a statement to the effect that, subject
to the Administrative Appeals Tribunal Act 1975, application
may be made to the Administrative Appeals Tribunal for the
review of the decision to which the notice relates by or on
behalf of the person or persons whose interests are affected
by the decision.
(2) Failure to comply with subsection (1) in relation to a decision does
not affect the validity of the decision.
(3) In this section:
decision has the same meaning as in the Administrative Appeals
Tribunal Act 1975.
228 Use of trade mark for export trade
(1) If:
(a) a trade mark is applied in Australia:
(i) to, or in relation to goods that are to be exported from
Australia (export goods); or
(ii) in relation to services that are to be exported from
Australia (export services); or
(b) any other act is done in Australia to export goods or export
services which, if done in relation to goods or services to be
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dealt with or provided in the course of trade in Australia,
would constitute a use of the trade mark in Australia;
the application of the trade mark or the other act is taken, for the
purposes of this Act, to constitute use of the trade mark in relation
to the export goods or export services.
Note: For applied to or in relation to goods and applied in relation to
services see section 9.
(2) Subsection (1) applies to an act done before 1 January 1996 as it
applies to an act done on or after that day, but it does not affect:
(a) a decision of a court made before that day; or
(b) the determination of an appeal from such a decision.
228A Registration of trade marks attorneys
(1) A Register of Trade Marks Attorneys is to be kept by the
Designated Manager.
Note: For Designated Manager see section 6.
(2) The Register of Trade Marks Attorneys may be kept wholly or
partly by use of a computer.
(3) If the Register of Trade Marks Attorneys is kept wholly or partly
by use of a computer, references in this Act to an entry in the
Register of Trade Marks Attorneys are to be read as including
references to a record of particulars kept by use of the computer
and comprising the Register of Trade Marks Attorneys or part of
the Register of Trade Marks Attorneys.
Registration of individuals
(4) The Designated Manager must register as a trade marks attorney an
individual 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
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(d) is not under sentence of imprisonment for a prescribed
offence; and
(e) meets any other requirements prescribed by the regulations.
The registration is to consist of entering the individual’s name in
the Register of Trade Marks Attorneys.
(5) A qualification specified in, or ascertained in accordance with,
regulations made for the purposes of paragraph (4)(a) may consist
of passing an examination conducted by the Board. This subsection
does not limit paragraph (4)(a).
Note: For Board see section 6.
(6) Paragraphs (4)(c) and (d) do not limit paragraph (4)(b).
Registration of companies
(6A) The Designated Manager must register as a trade marks attorney a
company that:
(a) has at least one trade marks attorney director; and
(b) has given the Designated Manager written notice in the
approved form of its intention to act as a trade marks
attorney; and
(c) meets the requirements (if any) prescribed by the regulations.
The registration is to consist of entering the company’s name in the
Register of Trade Marks Attorneys.
Note: For company and trade marks attorney director see section 6.
(6B) A company registered as a trade marks attorney is an incorporated
trade marks attorney.
(6C) A trade marks attorney director of a company is an individual
who is both:
(a) a registered trade marks attorney; and
(b) a validly appointed director of the company.
(7) A person may apply to the Administrative Appeals Tribunal for
review of a decision of the Designated Manager not to register the
person as a trade marks attorney.
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(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.
228B Deregistration of trade marks attorneys
The name of the person registered as a trade marks attorney may be
removed from the Register of Trade Marks Attorneys in the
prescribed manner and on the prescribed grounds.
229 Privileges of trade marks attorney and patent attorney
(1) A communication made for the dominant purpose of a registered
trade marks attorney providing intellectual property advice to a
client is privileged in the same way, and to the same extent, as a
communication made for the dominant purpose of a lawyer
providing legal advice to a client.
(1A) A record or document made for the dominant purpose of a
registered trade marks attorney providing intellectual property
advice to a client is privileged in the same way, and to the same
extent, as a record or document made for the dominant purpose of
a lawyer providing legal advice to a client.
(1B) A reference in subsection (1) or (1A) to a registered trade marks
attorney includes a reference to an individual authorised to do trade
marks work under a law of another country or region, to the extent
to which the individual is authorised to provide intellectual
property advice of the kind provided.
(2) The regulations may provide that a registered trade marks attorney
or a patent attorney has, in relation to documents and property of a
client in a matter relating to trade marks, the same right of lien that
a solicitor has in relation to the documents and property of a client.
(3) Intellectual property advice means advice in relation to:
(a) patents; or
(b) trade marks; or
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(c) designs; or
(d) plant breeder’s rights; or
(e) any related matters.
(4) Nothing in this section authorises a registered trade marks attorney
to prepare a document to be issued from or filed in a court or to
transact business, or conduct proceedings, in a court.
229AA Designated Manager may disclose information to Board
The Designated Manager may disclose to the Board personal
information:
(a) that is about a registered trade marks attorney; and
(b) that the Designated Manager considers to be relevant to the
Board’s functions.
229A Designated Manager may disclose information to ASIC
The Designated Manager may disclose to the Australian Securities
and Investments Commission, information (including personal
information within the meaning of the Privacy Act 1988) that is:
(a) relevant to the functions of the Commission; and
(b) obtained by the Designated Manager as a result of the
performance of functions and duties, or the exercise of
powers, in relation to incorporated trade marks attorneys.
229B Publishing personal information of registered trade marks
attorneys
(1) The Board may publish on its website any or all of the following
personal information that is about a registered trade marks
attorney:
(a) the name of the attorney;
(b) the country in which the attorney’s work address is located;
(c) if the attorney’s work address is located in Australia—the
State or Territory in which the attorney’s work address is
located;
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(d) if the attorney’s work address is located in a foreign
country—the state, territory, province, region or other
political subdivision (however described) of that country in
which the attorney’s work address is located;
(e) the attorney’s work email address.
(2) Subsection (1) does not prevent the Board from publishing on its
website other personal information that is about a registered trade
marks attorney with the attorney’s written consent.
230 Passing off actions
(1) Except as provided in subsection (2), this Act does not affect the
law relating to passing off.
(2) In an action for passing off arising out of the use by the defendant
of a registered trade mark:
(a) of which he or she is the registered owner or an authorised
user; and
(b) that is substantially identical with, or deceptively similar to,
the trade mark of the plaintiff;
damages may not be awarded against the defendant if the
defendant satisfies the court:
(c) that, at the time when the defendant began to use the trade
mark, he or she was unaware, and had no reasonable means
of finding out, that the trade mark of the plaintiff was in use;
and
(d) that, when the defendant became aware of the existence and
nature of the plaintiff’s trade mark, he or she immediately
ceased to use the trade mark in relation to the goods or
services in relation to which it was used by the plaintiff.
Note 1: For authorised user see section 8.
Note 2: For deceptively similar see section 10.
231 Regulations
(1) The Governor-General may make regulations:
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(a) prescribing matters required or permitted by this Act to be
prescribed; or
(b) prescribing matters necessary or convenient to be prescribed
for carrying out or giving effect to this Act; or
(c) prescribing matters necessary or convenient to be prescribed
for the conduct of any business relating to the Trade Marks
Office or a sub-office of the Trade Marks Office.
(2) Without limiting subsection (1), the regulations may:
(a) provide for appeals against decisions of the Registrar made
under the regulations; and
(b) require persons to make statutory declarations in support of
any application, notice or request filed under this Act; and
Note: For file see section 6.
(ba) provide for and in relation to the following:
(i) the requirements for filing a document under this Act
(including the requirement that the document must be in
the form (if any) specified in a direction under
section 213B);
(ii) the consequences of a document not being in
accordance with an approved form or not complying
with the requirements referred to in subparagraph (i);
and
(bb) provide for and in relation to the consequences of not
complying with a direction under section 213C; and
(c) provide for the making of a declaration, or the doing of an
act, under this Act on behalf of a person who, because of
infancy or physical or mental disability, is unable to make the
declaration or do the act; and
(d) provide for the refund, in specific circumstances, of the
whole or part of a fee paid under this Act; and
(e) provide for the remission of, or the exemption of specified
classes of persons from the payment of, the whole or part of a
fee; and
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(f) provide for the expenses and allowances to be paid to
witnesses or persons attending at proceedings before the
Registrar; and
(g) give power to the Registrar:
(i) to require, in specified circumstances, a person applying
under Part 9 for a trade mark to be removed from the
Register to give security for any costs that may arise
from the proceedings; and
(ii) not to proceed with the application if security is not
given; and
(iii) to refund to the applicant any amount given as security
and not applied in settling costs awarded against the
applicant; and
(ha) provide for the control of the professional conduct of
registered trade marks attorneys and the practice of the
profession and, for that purpose, make provision for and in
relation to all or any of the following:
(i) making complaints, and hearing charges, against
registered trade marks attorneys about their professional
conduct;
(ia) assessing the professional conduct of registered trade
marks attorneys by reference to standards of practice
established by the Board from time to time;
(ii) imposing penalties on registered trade marks attorneys
(including issuing a reprimand and suspending or
cancelling registration);
(iii) summoning witnesses;
(iv) requiring persons to give evidence on oath (whether
orally or otherwise);
(v) administering oaths to persons giving evidence (whether
orally or otherwise);
(vi) requiring persons to produce documents or articles; and
(i) prescribe as penalties for offences against the regulations
fines not exceeding 10 penalty units; and
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(j) make transitional or consequential provision as necessary or
convenient because of the repeal of the repealed Act and the
enactment of this Act; and
(k) provide for regulations made under the repealed Act to
continue to have effect (with any prescribed alterations) for
specified purposes of this Act.
Note: Regulations can also be made in relation to the Tobacco Plain
Packaging Act 2011 under section 231A.
(3) Without limiting subsection (1), the regulations may prescribe
matters relating to oppositions under sections 52, 65A, 83A and 96,
including the following:
(a) rules about filing and serving documents in relation to an
opposition;
(b) rules about the amendment of documents filed in relation to
an opposition;
(c) the circumstances in which the Registrar may dismiss an
opposition;
(d) provision for review by the Administrative Appeals Tribunal
of decisions of the Registrar made under the regulations.
231A Regulations may make provision in relation to the Tobacco
Plain Packaging Act 2011
(1) The regulations may make provision in relation to the effect of the
operation of the Tobacco Plain Packaging Act 2011, and any
regulations made under that Act, on:
(a) a provision of this Act; or
(b) a regulation made under this Act, including:
(i) a regulation that applies a provision of this Act; or
(ii) a regulation that applies a provision of this Act in
modified form.
Note: Section 28 of the Tobacco Plain Packaging Act 2011 also sets out the
effect of the operation of that Act on certain provisions of, and
regulations made under, this Act.
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(2) Without limiting subsection (1), regulations made for the purposes
of that subsection may clarify or state the effect of the operation of
the Tobacco Plain Packaging Act 2011, and any regulations made
under that Act, on a provision of this Act or a regulation made
under this Act, 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.
(3) Regulations made for the purposes of subsection (1):
(a) may be inconsistent with this Act; and
(b) prevail over this Act (including any other regulations or other
instruments made under this Act), to the extent of any
inconsistency.
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232 Repeal
The Trade Marks Act 1955 is repealed.
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233 Automatic registration under this Act
(1) All trade marks that, immediately before 1 January 1996, were
registered in Part A or B, or both Parts A and B, of the old register
are registered trade marks for the purposes of this Act.
Note: For old register and registered trade mark see section 6.
(2) All trade marks that, immediately before 1 January 1996, were
registered as certification trade marks in Part C of the old register
are registered certification trade marks for the purposes of this Act.
(3) All trade marks that, immediately before 1 January 1996, were
registered as defensive trade marks in Part D of the old register are
registered as defensive trade marks for the purposes of this Act.
234 Registration conclusive after 7 years
(1) This section applies in relation to:
(a) a registered trade mark that:
(i) immediately before 1 January 1996, was registered in
Part A of the old register; and
(ii) has not at any time on or after that day ceased to be
registered; and
(b) a registered trade mark:
(i) whose application for registration in Part A of the old
register had been accepted under the repealed Act and
was still pending immediately before 1 January 1996;
and
(ii) that has not at any time on or after that day ceased to be
registered.
Note 1: For registered trade mark and old register see section 6.
Note 2: For pending see subsection 11(2).
(2) In any legal proceedings:
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(a) the original registration under the repealed Act of a trade
mark referred to in paragraph (1)(a); or
(b) the original registration under this Act of a trade mark
referred to in paragraph (1)(b);
is taken to be valid in all respects after a period of 7 years from the
date of registration of the trade mark unless it is shown that:
(c) the original registration was obtained by fraud; or
(d) the registration of the trade mark would be contrary to
section 28 of the repealed Act; or
(e) the trade mark did not, at the commencement of the
proceedings, distinguish the goods or services of the
registered owner in relation to which the trade mark is used
from the goods or services of other persons.
Note 1: For date of registration see section 6.
Note 2: Section 28 of the repealed Act provided as follows:
“28. A mark:
(a) the use of which would be likely to deceive or cause
confusion;
(b) the use of which would be contrary to law;
(c) which comprises or contains scandalous matter; or
(d) which would otherwise be not entitled to protection in
a court of justice;
shall not be registered as a trade mark.”.
235 Term of registration
The registration of an existing registered mark expires on the day
on which it would have expired under the repealed Act if that Act
had not been repealed.
Note: For existing registered mark see section 6.
236 Renewal
(1) Division 2 of Part 7 applies in relation to the renewal of the
registration of an existing registered mark.
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(2) If, before 1 January 1996, the Registrar had (under section 69 of
the repealed Act) renewed for a period of 14 years the registration
of a trade mark that was due to expire on or after that day:
(a) that renewal has no effect for the purposes of this Act; and
(b) the Registrar must renew the registration of the trade mark
for a period of 10 years from the day on which the
registration would expire if it were not renewed.
237 Restoration of particulars to Register and renewal of
registration where registration expired within 12 months
before 1 January 1996
(1) This section applies if the registration of a trade mark under the
repealed Act had expired within 12 months before 1 January 1996.
(2) The Registrar must:
(a) make an entry in the Register to the effect that all particulars
of the trade mark removed from the old register under the
repealed Act (because the trade mark had not been renewed)
are restored to the Register; and
(b) enter those particulars in the Register.
Note: For old register see section 6.
(3) If an application for the renewal of the registration of the trade
mark is made under this Act within 12 months from the day on
which the registration expired, the Registrar must renew the
registration of the trade mark for the period beginning on 1 January
1996 that, together with the period during which the trade mark
remained unregistered under the repealed Act, equals 10 years.
(4) If the registration of the trade mark is not renewed under
subsection (3), the Registrar must remove the trade mark from the
Register 12 months after the day on which the registration expired.
238 Disclaimers
If the particulars entered in the Register under paragraph 207(2)(a)
in respect of an existing registered mark include particulars of a
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disclaimer made (under section 32 of the repealed Act) by the
registered proprietor of the mark about the exclusive right to use a
specified part of the mark, that disclaimer has effect as if it were a
disclaimer made under section 74 of this Act.
Note: For existing registered mark see section 6.
239 Rules governing the use of certification trade marks registered
in Part C of the old register
Any rules that, immediately before 1 January 1996, were
governing the use of a trade mark then registered as a certification
trade mark in Part C of the old register:
(a) apply in relation to the use of the certification trade mark on
or after that day as if they were rules made in accordance
with this Act; and
(b) may be varied under section 178.
Note: For old register see section 6.
239A Linked trade marks
(1) Subsection (2) applies if:
(a) the same trade mark was registered before 1 January 1996 in
respect of goods or services of different classes; and
(b) all the applications for the trade marks were lodged (or were
taken under the repealed Act to have been lodged) on the
same day with the Trade Marks Office; and
(c) the trade marks are registered trade marks for the purposes of
this Act with the same registered owner.
Note: For registered owner and registered trade mark see section 6.
(2) The registered owner may apply to the Registrar, in writing, to
have those trade marks, or so many of those trade marks as are
identified in the application, dealt with under this Act as if they
were one registered trade mark in relation to the goods or services
in respect of which the trade marks, or the identified trade marks,
were registered.
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(3) If an application is made under subsection (2), the Registrar must
deal with the trade marks, or the identified trade marks, as if they
were a single trade mark.
(4) The date of registration of the single trade mark is taken to be the
day on which the applications mentioned in paragraph (1)(b) were
lodged, or were taken to have been lodged (as the case may be),
with the Trade Marks Office under the repealed Act.
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240 Applications, notices etc.—general
(1) Subject to this Division, an application, notice or request that:
(a) was lodged with the Registrar in accordance with the
repealed Act; and
(b) was pending immediately before 1 January 1996;
is to be dealt with in accordance with this Act.
Note: For pending see subsection 11(2).
(2) The application, notice or request is taken to have been filed in
accordance with this Act.
Note: For file see section 6.
241 Application for registration of trade mark
(1) This section applies if an application for the registration of a trade
mark in Part A or B of the old register was pending immediately
before 1 January 1996.
Note 1: For old register see section 6.
Note 2: For pending see subsection 11(2).
(2) If the application had been accepted under the repealed Act and the
acceptance was in force immediately before 1 January 1996, the
following provisions apply:
(a) subject to subsection (4), the repealed Act (other than
paragraph 45(1)(b)) continues to apply in relation to the
application;
(b) if, after dealing with the application in accordance with the
repealed Act, the Registrar is required under section 53 of
that Act to register the trade mark in the old register—the
Registrar is to register the trade mark under Part 7 of this
Act.
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Note: Subsection 45(1) of the repealed Act provided as follows:
“45. (1) An application for the registration of a trade mark may be
accepted, and the trade mark may be registered,
notwithstanding that the applicant does not use or propose
to use the trade mark:
(a) ...
(b) if an application has been made for the registration
of a person as a registered user of the trade mark
and the Registrar is satisfied that the proprietor
intends the trade mark to be used by that person in
relation to those goods or services and is also
satisfied that that person will be registered as a
registered user of the trade mark immediately after
registration of the trade mark.”.
(3) If, immediately before 1 January 1996, the application had not
been accepted, the following provisions apply:
(a) subject to subsection 240(2) and subsection (5) of this
section, the application is to be dealt with in accordance with
this Act;
(b) if:
(i) there is no opposition to the registration; or
(ii) there is an opposition to the registration but the
Registrar’s decision, or (in the case of an appeal against
the Registrar’s decision) the decision on appeal, is that
the trade mark should be registered;
Part 7 is to apply in relation to the registration of the trade
mark.
(4) If, when dealing with the application under the repealed Act as
provided by paragraph (2)(a), the Registrar withdraws the
acceptance of the application under subsection 44(3) of that Act,
the following provisions apply:
(a) subject to subsection 240(2) and subsection (5) of this
section, the application is to be dealt with in accordance with
this Act as if it were an application whose acceptance had
been revoked under subsection 38(1);
(b) if:
(i) there is no opposition to the registration; or
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(ii) there is an opposition to the registration but the
Registrar’s decision, or (in the case of an appeal against
the Registrar’s decision) the decision on appeal, is that
the trade mark should be registered;
Part 7 is to apply in relation to the registration of the trade
mark.
(5) The filing date in respect of the application is:
(a) if paragraph (b) does not apply—the day on which the
application was lodged with the Trade Marks Office under
the repealed Act; or
(b) if section 43 of the repealed Act applied to the application
and the Registrar had made the proper direction—the day on
which the application is to be taken to have been lodged with
the Trade Marks Office under the repealed Act.
242 Divisional application in relation to pending application
(1) This section applies if, immediately before 1 January 1996, an
application (initial application) for the registration of a trade mark
in the old register was pending and had not been accepted.
Note 1: For old register see section 6.
Note 2: For pending see subsection 11(2).
(2) If:
(a) at any time within 6 months after 1 January 1996, the initial
application is still pending; and
(b) a part of the trade mark, by itself, may be registered as a trade
mark;
the applicant may, subject to subsection (4), make an application
(divisional application) for the registration of that part as a trade
mark in respect of any or all of the goods or services specified in
the initial application.
Note: For pending see subsection 11(1).
(3) If the initial application:
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(a) was amended under the repealed Act to exclude some of the
goods and/or services specified in the application before its
amendment; and
(b) is still pending at any time within one month after 1 January
1996;
the applicant may, subject to subsection (4), make an application
(divisional application) for the registration of the trade mark in
respect of any or all of the goods and/or services that were
excluded from the initial application.
Note: For pending see subsection 11(1).
(4) If the initial application is accepted under Part 4, a divisional
application may not be made after the acceptance is advertised in
the Official Journal.
243 More than one application lodged on same day for registration
of same trade mark
(1) If:
(a) before 1 January 1996 a person made a number of
applications each seeking the registration of one and the
same trade mark but in respect of goods or services of
different classes; and
(b) all the applications were lodged, or were taken under the
repealed Act to have been lodged, on the same day with the
Trade Marks Office;
the applications are called linked applications in this section.
(2) This section applies if, immediately before 1 January 1996, a
number of linked applications for the registration of a trade mark
were pending and had not been accepted.
Note: For pending see subsection 11(2).
(3) If, at any time on or after 1 January 1996, there are linked
applications pending, the applicant may, subject to subsection (4),
apply to the Registrar to have some or all of those applications
dealt with under this Act as if they were one application for the
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registration of the trade mark in respect of all goods and services
specified in those applications.
Note: For pending see subsection 11(1).
(4) If:
(a) one of the linked applications has been accepted under Part 4;
and
(b) the acceptance has been advertised in the Official Journal;
that application may not be included in the application made to the
Registrar under subsection (3).
(5) If an application is made under subsection (3), the Registrar must
deal with the linked applications as if they were a single
application for the registration of a trade mark made on 1 January
1996.
(6) The filing date for the single application taken to have been made
under subsection (5) is the day on which the linked applications
were lodged, or were taken to have been lodged (as the case may
be), with the Trade Marks Office under the repealed Act.
244 Application for registration of trade mark whose registration
has been sought in Convention country
(1) This section applies if:
(a) an application for the registration in Australia of a trade mark
whose registration had been sought in one or more than one
Convention country was made under section 109 of the
repealed Act; and
(b) immediately before 1 January 1996, the application was still
pending.
Note 1: For pending see subsection 11(2).
Note 2: For Convention country see section 225.
(2) If:
(a) for the purposes of the repealed Act, the Registrar had been
notified that an application had been made in that Convention
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country or in those Convention countries for the registration
of the trade mark; and
(b) the trade mark is registered under this Act;
subsection 72(2) applies in relation to the registration as if a right
of priority had been claimed under section 29 for the registration of
the trade mark.
(3) If the Registrar had not, for the purposes of the repealed Act, been
notified that an application had been made in that Convention
country or in those Convention countries for the registration of the
trade mark, the applicant must, within 6 months after 1 January
1996 but subject to subsection (5), claim a right of priority for the
registration of the trade mark in accordance with section 29 in
order to obtain registration from the date on which that application
or the earliest of those applications was made in a Convention
country.
(4) If:
(a) the applicant claims a right of priority for the registration of
the trade mark under subsection (3); and
(b) the trade mark is registered under this Act;
subsection 72(2) applies in relation to the registration.
(5) If the application is accepted under Part 4, the applicant may not
claim a right of priority in accordance with section 29 after the
acceptance is advertised in the Official Journal.
245 Application for registration of a mark in Part C of the old
register
(1) Subject to Part 16, section 241 applies to an application for the
registration of a mark as a certification trade mark in Part C of the
old register as if the reference in subsection (1) to Part A or B of
the old register were a reference to Part C of that register.
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(2) Subject to Part 16, sections 242 to 244 apply to an application for
the registration of a mark as a certification trade mark in Part C of
the old register.
Note: For old register see section 6.
246 Application for registration of a mark in Part D of the old
register
(1) Subject to Part 17, section 241 applies to an application for the
registration of a mark as a defensive trade mark in Part D of the old
register as if the reference in subsection (1) to Part A or B of the
old register were a reference to Part D of that register.
(2) Subject to Part 17, sections 242 to 244 apply to an application for
the registration of a mark as a defensive trade mark in Part D of the
old register.
247 Amendment of application—specification of goods or services
(1) This section applies if:
(a) immediately before 1 January 1996 an application for the
registration of a mark in Part A, B, C or D of the old register
(other than an application made under section 39 of the
repealed Act) was pending and had not been accepted; and
(b) the application had previously been amended; and
(c) the application as amended did not relate to all of the goods
or services specified in the application before its amendment.
Note 1: For old register see section 6.
Note 2: For pending see subsection 11(2).
(2) The applicant may, within 6 months after 1 January 1996, apply to
the Registrar for the application to be again amended so as to relate
to some or all of the goods or services specified in the application
before its amendment under the repealed Act, if:
(a) the application is still pending under this Act; and:
(i) it has not been accepted; or
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(ii) if it has been accepted, the acceptance has not been
advertised in the Official Journal; and
(b) subsection 43(3) of the repealed Act would apply in relation
to a further application for the registration of the mark in
respect of the goods or services included from the original
application, if that Act were still in force.
Note: For pending see subsection 11(1).
(3) If an application is amended under subsection (2), it must (if
necessary) be also amended so as to be in accordance with Part 4.
248 Revival of application for registration of trade mark that had
lapsed before 1 January 1996
(1) If:
(a) an application under the repealed Act for the registration of a
trade mark had lapsed (under subsection 48(1) of that Act);
and
(b) the application would have been pending immediately before
1 January 1996 if:
(i) an application had been made to the Registrar under the
repealed Act for an extension of the time within which
the application for registration would be accepted; and
(ii) the Registrar had allowed an extension of that time
under that Act;
the applicant may apply in writing to the Registrar for a declaration
that the application is revived.
Note: For pending see subsection 11(2).
(2) The Registrar must grant the application if he or she considers, in
all the circumstances of the case, that it is fair and reasonable to do
so.
(3) If the Registrar declares that the application is revived, the
application is to be dealt with as if it were an application that was
pending immediately before 1 January 1996.
Note 1: For pending see subsection 11(2).
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Note 2: Sections 240 to 247 make provision relating to applications for
registration of trade marks that were pending immediately before
1 January 1996.
249 Application for registration of assignment etc.
If an application for the registration in the old register of the
assignment or transmission of an existing registered mark was
pending immediately before 1 January 1996, this Act applies in
relation to the application as if:
(a) it were an application under section 109 for a record of the
assignment or transmission to be entered in the Register; and
(b) that application was filed on 1 January 1996.
Note: For old register, existing registered mark and file see section 6.
250 Rectification of Register
If proceedings arising from an application to a court under
section 22 (Rectification of Register) of the repealed Act were
pending immediately before 1 January 1996, the matter is to be
decided under the repealed Act as if the old register were to be
rectified, but any order made by the Court may only be in respect
of the rectification of the Register.
Note: For old register see section 6.
251 Action for removal of trade mark from Register for non-use
If proceedings arising from an application to the Registrar or a
court under section 23 (Provisions as to non-use of trade mark) of
the repealed Act were pending immediately before 1 January 1996,
the repealed Act continues to apply:
(a) in relation to those proceedings; and
(b) for the purposes of any appeal from an order or direction of
the Registrar or the court under that section;
as if the reference in subsection 23(1) to the Register were a
reference to the Register within the meaning of this Act.
Note: For pending see subsection 11(2).
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252 Action for infringement of trade mark etc.
Sections 62 to 67 and section 78 of the repealed Act continue to
apply in relation to an action for the infringement of a trade mark
that was pending immediately before 1 January 1996.
253 Action under this Act for infringement of trade mark under
repealed Act
If:
(a) before 1 January 1996 a person engaged in conduct that
infringed a mark registered under the repealed Act; and
(b) an action relating to that infringement was not pending
immediately before 1 January 1996; and
(c) the mark is an existing registered mark for the purposes of
this Act;
then, subject to any law limiting the time within which such an
action may be started, an action may be brought under this Act for
that infringement of the trade mark. A person is not, however,
entitled under this Act to any injunction or other relief to which the
person would not have been entitled under the repealed Act.
Note: For existing registered mark see section 6.
254 Acts not constituting infringement of existing registered mark
(1) This section applies if:
(a) immediately before 1 January 1996, a person was engaging
in conduct that did not constitute an infringement of a mark
registered under the repealed Act; and
(b) the mark is an existing registered mark for the purposes of
this Act; and
(c) the person has, on or after that day, continuously engaged in,
and is engaging in, that conduct; and
(d) that conduct is an infringement of the existing registered
mark under this Act.
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(2) In spite of section 120, the person does not infringe the existing
registered mark by engaging in that conduct.
Note: For existing registered mark see section 6.
254A Acts not constituting infringement of trade mark—pending
application under the repealed Act
(1) This section applies if:
(a) an application for the registration of a trade mark under the
repealed Act was pending immediately before 1 January
1996; and
(b) immediately before 1 January 1996, a person was engaging
in conduct that would not have constituted an infringement of
the mark if the mark had been registered under the repealed
Act before 1 January 1996; and
(c) the person has, on or after that day, continuously engaged in,
and is engaging in, that conduct; and
(d) the mark becomes a registered trade mark under this Act; and
(e) that conduct is an infringement of the registered trade mark
under this Act.
(2) Despite section 120, the person does not infringe the registered
trade mark by engaging in that conduct.
254B Part B defence—infringement of existing registered mark
(1) This section applies if:
(a) immediately before 1 January 1996, a person was engaging
in conduct that constituted an infringement of a mark
registered under the repealed Act; and
(b) the mark is an existing registered mark for the purposes of
this Act; and
(c) the mark was registered in Part B of the old register before
1 January 1996; and
(d) the person has, on or after that day, continuously engaged in,
and is engaging in, that conduct; and
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(e) that conduct is an infringement of the existing registered
mark under this Act.
(2) In an action for infringement of the existing registered mark (not
being an infringement occurring by reason of an act referred to in
section 121), an injunction or other relief must not be granted if the
person establishes to the satisfaction of the court that the use of the
mark is not likely to:
(a) deceive or cause confusion; or
(b) be taken as indicating a connection in the course of trade
between the goods and/or services in respect of which the
trade mark is registered and a person having the right, either
as registered owner or as authorised user, to use the trade
mark.
Note: For existing registered mark see section 6.
254C Part B defence—infringement of trade mark (pending
application under the repealed Act)
(1) This section applies if:
(a) an application for the registration of a trade mark in Part B of
the old register was pending immediately before 1 January
1996; and
(b) immediately before 1 January 1996, a person was engaging
in conduct that would have constituted an infringement of the
mark if the mark had been registered in Part B of the old
register before 1 January 1996; and
(c) the person has, on or after that day, continuously engaged in,
and is engaging in, that conduct; and
(d) the mark becomes a registered trade mark under this Act; and
(e) that conduct is an infringement of the registered trade mark
under this Act.
(2) In an action for infringement of the registered trade mark (not
being an infringement occurring by reason of an act referred to in
section 121), an injunction or other relief must not be granted if the
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person establishes to the satisfaction of the court that the use of the
mark is not likely to:
(a) deceive or cause confusion; or
(b) be taken as indicating a connection in the course of trade
between the goods and/or services in respect of which the
trade mark is registered and a person having the right, either
as registered owner or as authorised user, to use the trade
mark.
Note: For existing registered mark see section 6.
255 Application of this Act—general
(1) If:
(a) an action or proceeding validly brought for the purposes of
the repealed Act was still pending immediately before
1 January 1996; and
(b) that action or proceeding could have been brought under this
Act if this Act had been in force when the action or
proceeding was started;
then, except as otherwise provided by this Division or the
regulations, this Act applies in relation to the action or proceeding
as if it were an action or proceeding validly brought on 1 January
1996 under the relevant provision of this Act.
(2) Anything done under the repealed Act for the purposes of the
action or proceeding is taken to have been done:
(a) on 1 January 1996; and
(b) in accordance with this Act.
256 Fees
No fee is payable under this Act in relation to an act that was done
under the repealed Act and is taken, under this Division, to be an
act done under this Act.
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Part 22 Repeal and transitional
Division 4 General
Section 257
220 Trade Marks Act 1995
Compilation No. 39 Compilation date: 27/02/2020 Registered: 18/03/2020
Division 4—General
257 The Registrar and Deputy Registrar
Persons holding office as Registrar of Trade Marks and Deputy
Registrar of Trade Marks immediately before 1 January 1996
continue to hold those respective offices on and after that day.
258 Confidential information received by Registrar under section 74
of the repealed Act
If, immediately before 1 January 1996, the Registrar was required
under subsection 74(7) of the repealed Act to ensure that any
document, information or evidence given for the purpose of an
application for the registration of a person as a registered user of a
trade mark was not disclosed to any other person, the Registrar
must continue to ensure that the document, information or evidence
is not so disclosed except by order of a prescribed court.
Note: For prescribed court see section 190.
259 Documents kept under repealed Act
The Registrar is to continue to keep in accordance with this Act all
documents that, immediately before 1 January 1996, were kept by
the Registrar under the repealed Act.
260 Address for service
(1) If, immediately before 1 January 1996, the address for service of
an applicant for the registration of a trade mark, or of an opponent
to the registration, under subsection 132(1) or (2) of the repealed
Act (existing address) was an address in Australia, that address
remains the address for service of the applicant or opponent for the
purposes of this Act until he or she notifies another address to the
Registrar under section 215.
Note: For applicant and opponent see section 6.
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Repeal and transitional Part 22
General Division 4
Section 260
Trade Marks Act 1995 221
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(2) If the existing address of an applicant for the registration of a trade
mark or of an opponent to the registration is not an address in
Australia, the applicant or opponent must give in writing to the
Registrar an address in Australia as his or her address for service.
(3) If, immediately before 1 January 1996, the proprietor of an existing
registered mark had an agent in Australia for the purposes of
subsection 70(1) of the repealed Act, the address of that agent is
the address for service of the registered owner of the mark for the
purposes of this Act until the registered owner notifies another
address to the Registrar under section 215.
Note: For existing registered mark see section 6.
(4) If:
(a) immediately before 1 January 1996, the proprietor of an
existing registered mark did not have an agent in Australia
for the purposes of subsection 70(1) of the repealed Act; and
(b) the address then entered in the old register as the address of
the proprietor was an address in Australia;
that address is the address for service of the registered owner of the
mark for the purposes of this Act until the registered owner notifies
another address to the Registrar under section 215.
Note: For existing registered mark and old register see section 6.
(5) If:
(a) immediately before 1 January 1996, the proprietor of an
existing registered mark did not have an agent in Australia
for the purposes of subsection 70(1) of the repealed Act; and
(b) the address then entered in the old register as the address of
the proprietor was not an address in Australia;
that address is not to be used as the address for service of the
registered owner of the mark, and the registered owner must give
in writing to the Registrar an address in Australia as his or her
address for service.
Note: For existing registered mark and old register see section 6.
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Endnotes
Endnote 1—About the endnotes
222 Trade Marks Act 1995
Compilation No. 39 Compilation date: 27/02/2020 Registered: 18/03/2020
Endnotes
Endnote 1—About the endnotes
The endnotes provide information about this compilation and the compiled law.
The following endnotes are included in every compilation:
Endnote 1—About the endnotes
Endnote 2—Abbreviation key
Endnote 3—Legislation history
Endnote 4—Amendment history
Abbreviation key—Endnote 2
The abbreviation key sets out abbreviations that may be used in the endnotes.
Legislation history and amendment history—Endnotes 3 and 4
Amending laws are annotated in the legislation history and amendment history.
The legislation history in endnote 3 provides information about each law that
has amended (or will amend) the compiled law. The information includes
commencement details for amending laws and details of any application, saving
or transitional provisions that are not included in this compilation.
The amendment history in endnote 4 provides information about amendments at
the provision (generally section or equivalent) level. It also includes information
about any provision of the compiled law that has been repealed in accordance
with a provision of the law.
Editorial changes
The Legislation Act 2003 authorises First Parliamentary Counsel to make
editorial and presentational changes to a compiled law in preparing a
compilation of the law for registration. The changes must not change the effect
of the law. Editorial changes take effect from the compilation registration date.
If the compilation includes editorial changes, the endnotes include a brief
outline of the changes in general terms. Full details of any changes can be
obtained from the Office of Parliamentary Counsel.
Misdescribed amendments
A misdescribed amendment is an amendment that does not accurately describe
the amendment to be made. If, despite the misdescription, the amendment can
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Endnotes
Endnote 1—About the endnotes
Trade Marks Act 1995 223
Compilation No. 39 Compilation date: 27/02/2020 Registered: 18/03/2020
be given effect as intended, the amendment is incorporated into the compiled
law and the abbreviation “(md)” added to the details of the amendment included
in the amendment history.
If a misdescribed amendment cannot be given effect as intended, the
abbreviation “(md not incorp)” is added to the details of the amendment
included in the amendment history.
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Endnotes
Endnote 2—Abbreviation key
224 Trade Marks Act 1995
Compilation No. 39 Compilation date: 27/02/2020 Registered: 18/03/2020
Endnote 2—Abbreviation key
ad = added or inserted o = order(s)
am = amended Ord = Ordinance
amdt = amendment orig = original
c = clause(s) par = paragraph(s)/subparagraph(s)
C[x] = Compilation No. x /sub-subparagraph(s)
Ch = Chapter(s) pres = present
def = definition(s) prev = previous
Dict = Dictionary (prev…) = previously
disallowed = disallowed by Parliament Pt = Part(s)
Div = Division(s) r = regulation(s)/rule(s)
ed = editorial change reloc = relocated
exp = expires/expired or ceases/ceased to have renum = renumbered
effect rep = repealed
F = Federal Register of Legislation rs = repealed and substituted
gaz = gazette s = section(s)/subsection(s)
LA = Legislation Act 2003 Sch = Schedule(s)
LIA = Legislative Instruments Act 2003 Sdiv = Subdivision(s)
(md) = misdescribed amendment can be given SLI = Select Legislative Instrument
effect SR = Statutory Rules
(md not incorp) = misdescribed amendment Sub-Ch = Sub-Chapter(s)
cannot be given effect SubPt = Subpart(s)
mod = modified/modification underlining = whole or part not
No. = Number(s) commenced or to be commenced
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Endnotes
Endnote 3—Legislation history
Trade Marks Act 1995 225
Compilation No. 39 Compilation date: 27/02/2020 Registered: 18/03/2020
Endnote 3—Legislation history
Act Number
and year
Assent Commencement Application,
saving and
transitional
provisions
Trade Marks Act 1995 119, 1995 17 Oct
1995
s 1–5): 17 Oct 1995
(s 2(1))
Remainder: 1 Jan 1996
(s 2(2))
Industry, Science and
Tourism Legislation
Amendment Act 1997
91, 1997 30 June
1997
Sch 1 (items 25–41):
1 Jan 1996 (s 2(4))
—
Intellectual Property
Laws Amendment Act
1998
100, 1998 27 July
1998
Sch 2 (items 33–46): 27
Jan 1999 (s 2(5))
—
Intellectual Property
Laws Amendment
(Border Interception)
Act 1999
144, 1999 3 Nov 1999 s 4 and Sch 2: 3 Nov
1999 (s 2)
s 4
Public Employment
(Consequential and
Transitional)
Amendment Act 1999
146, 1999 11 Nov
1999
Sch 1 (items 940–943):
5 Dec 1999 (s 2(1), (2))
—
Trade Marks
Amendment (Madrid
Protocol) Act 2000
117, 2000 7 Sept 2000 11 July 2001 (s 2(1) and
gaz 2001, No. GN24)
—
Trade Marks and Other
Legislation Amendment
Act 2001
99, 2001 22 Aug
2001
Sch 1 (items 1–46): 19
Sept 2001 (s 2(1))
Sch 1 (item 47): never
commenced (s 2(2))
Sch 1 (items 4, 5,
12, 15, 23, 32, 33)
Industry, Science and
Resources Legislation
Amendment
(Application of Criminal
Code) Act 2001
140, 2001 1 Oct 2001 s 4 and Sch 1(items 147–
168): 2 Oct 2001 (s 2)
s 4
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Endnotes
Endnote 3—Legislation history
226 Trade Marks Act 1995
Compilation No. 39 Compilation date: 27/02/2020 Registered: 18/03/2020
Act Number
and year
Assent Commencement Application,
saving and
transitional
provisions
Proceeds of Crime
(Consequential
Amendments and
Transitional Provisions)
Act 2002
86, 2002 11 Oct
2002
Sch 6 (item 48): 1
Jan2003 (s 2(1) item 5)
—
Intellectual Property
Laws Amendment Act
2003
48, 2003 26 June
2003
Sch 1 (items 3–5) and
Sch 2 (items 6, 7):
24 July 2003 (s 2(1)
items 2, 4)
—
Intellectual Property
Laws Amendment Act
2006
106, 2006 27 Sept
2006
Sch 1, 2, Sch 3 (items 8–
16), Sch 4 and Sch 12
(item 8): 27 Mar 2007
(s 2(1) items 2, 3, 5, 6,
12)
Sch 3 (items 1–7),
Sch 11 (items 3, 4) and
Sch 13: 28 Sept 2006
(s 2(1) items 4, 11, 13)
Sch 16 (item 2): 1 Jan
1996 (s 2(1) item 15)
Sch 16 (item 3): 5 Dec
1999 (s 2(1) item 16)
Sch 1 (items 2, 9),
Sch 2 (item 2),
Sch 3 (items 2, 5,
9, 11, 14, 16), Sch
4 (items 2, 4), Sch
11 (item 4) and
Sch 13 (item 2)
Trade Marks
Amendment Act 2006
114, 2006 23 Oct
2006
Sch 1 (items 63–92): 27
Mar 2007 (s 2(1) item 3)
Remainder: 23 Oct 2006
(s 2(1) items 1, 2, 4)
Sch 1 (items 5, 8,
11, 13, 20, 26, 30,
34, 36, 51, 62, 69,
72, 82, 85, 90)
Personal Property
Securities
(Consequential
Amendments) Act 2009
131, 2009 14 Dec
2009
Sch 2 (items 18–24): 30
Jan 2012 (s 2(1) item 1)
Sch 2 (item 24)
Crimes Legislation
Amendment (Serious
and Organised Crime)
Act (No. 2) 2010
4, 2010 19 Feb
2010
Sch 10 (item 30): 20 Feb
2010 (s 2(1) item 13)
—
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Endnotes
Endnote 3—Legislation history
Trade Marks Act 1995 227
Compilation No. 39 Compilation date: 27/02/2020 Registered: 18/03/2020
Act Number
and year
Assent Commencement Application,
saving and
transitional
provisions
Personal Property
Securities (Corporations
and Other Amendments)
Act 2010
96, 2010 6 July 2010 Sch 3 (item 30): 30 Jan
2012 (s 2(1) item 19)
—
Australian Wine and
Brandy Corporation
Amendment Act 2010
98, 2010 6 July 2010 Sch 1 (items 70–76, 81,
82): 1 Sept 2010 (s 2(1)
item 2)
Sch 1 (items 81,
82)
Trade Practices
Amendment (Australian
Consumer Law) Act
(No. 2) 2010
103, 2010 13 July
2010
Sch 6 (items 1, 141): 1
Jan 2011 (s 2(1) items 3,
5)
—
Acts Interpretation
Amendment Act 2011
46, 2011 27 June
2011
Sch 2 (items 1163, 1164)
and Sch 3 (items 10, 11):
27 Dec 2011 (s 2(1)
items 11, 12)
Sch 3 (items 10,
11)
Trade Marks
Amendment (Tobacco
Plain Packaging) Act
2011
149, 2011 1 Dec 2011 Sch 1: 1 Dec 2011
(s 2(2))
—
Crimes Legislation
Amendment Act (No. 2)
2011
174, 2011 5 Dec 2011 Sch 2 (items 240–242):
1 Jan 2012 (s 2(1)
item 5)
Sch 2 (item 242)
Intellectual Property
Laws Amendment
(Raising the Bar) Act
2012
35, 2012 15 Apr
2012
Sch 3 (items 17–31,
32(7)), Sch 4 (items 37–
58), Sch 5 (items 17–29)
and Sch 6 (items 109–
132): 15 Apr 2013
(s 2(1) items 4, 7)
Sch 3 (item 32(7))
Privacy Amendment
(Enhancing Privacy
Protection) Act 2012
197, 2012 12 Dec
2012
Sch 5 (item 99) and Sch
6 (items 15–19): 12 Mar
2014 (s 2(1) items 3, 19)
Sch 6 (item 1): 12 Dec
2012 (s 2(1) item 16)
Sch 6 (items 1,
15–19)
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Endnote 3—Legislation history
228 Trade Marks Act 1995
Compilation No. 39 Compilation date: 27/02/2020 Registered: 18/03/2020
Act Number
and year
Assent Commencement Application,
saving and
transitional
provisions
Federal Circuit Court of
Australia (Consequential
Amendments) Act 2013
13, 2013 14 Mar
2013
Sch 3 (items 22–42):
(s 2(1) item 4)
—
Intellectual Property
Laws Amendment Act
2015
8, 2015 25 Feb
2015
Sch 4 (items 68–84): 24
Feb 2017 (s 2(1) item 5)
Sch 5 (items 6, 7): 26
Feb 2015 (s 2(1) item 6)
Sch 4 (items 81–
84) and Sch 5
(item 7)
Acts and Instruments
(Framework Reform)
Act 2015
10, 2015 5 Mar 2015 Sch 1 (items 164–179): 5
Mar 2016 (s 2(1) item 2)
Sch 1 (items 166–
179)
as amended by
Acts and Instruments
(Framework Reform)
(Consequential
Provisions) Act 2015
126, 2015 10 Sept
2015
Sch 3 (item 1): 5 Mar
2016 (s 2(1) item 8)
—
Customs and Other
Legislation Amendment
(Australian Border
Force) Act 2015
41, 2015 20 May
2015
Sch 5 (item 172), Sch 6
(items 198–232) and Sch
9: 1 July 2015 (s 2(1)
items 2, 7)
Sch 6 (item 232)
and Sch 9
as amended by
Australian Border
Force Amendment
(Protected
Information) Act 2017
115, 2017 30 Oct
2017
Sch 1 (item 26): 1 July
2015 (s 2(1) item 2)
—
Norfolk Island
Legislation Amendment
Act 2015
59, 2015 26 May
2015
Sch 2 (item 349): 1 July
2016 (s 2(1) item 5)
Sch 2 (items 356–396):
18 June 2015 (s 2(1)
item 6)
Sch 2 (items 356–
396)
as amended by
Territories Legislation
Amendment Act 2016
33, 2016 23 Mar
2016
Sch 2: 24 Mar 2016 (s
2(1) item 2)
—
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Endnotes
Endnote 3—Legislation history
Trade Marks Act 1995 229
Compilation No. 39 Compilation date: 27/02/2020 Registered: 18/03/2020
Act Number
and year
Assent Commencement Application,
saving and
transitional
provisions
Acts and Instruments
(Framework Reform)
(Consequential
Provisions) Act 2015
126, 2015 10 Sept
2015
Sch 1 (item 675): 24 Feb
2017 (s 2(1) item 3)
—
Statute Law Revision
Act (No. 1) 2016
4, 2016 11 Feb
2016
Sch 4 (items 1, 322):
10 Mar 2016 (s 2(1)
item 6)
—
Statute Update Act 2016 61, 2016 23 Sept
2016
Sch 3 (item 40): 21 Oct
2016 (s 2(1) item 1)
—
Intellectual Property
Laws Amendment
(Productivity
Commission Response
Part 1 and Other
Measures) Act 2018
77, 2018 24 Aug
2018
Sch 1 (items 2–6) and
Sch 2 (items 1, 168,
240–242, 304–306, 309–
312): 25 Aug 2018 (s
2(1) items 2, 5, 7, 9, 11)
Sch 1 (items 43–46) and
Sch 2 (items 98–109,
113, 139–149, 153, 203–
209, 218–220): 24 Feb
2019 (s 2(1) items 3, 6,
8)
Sch 1 (items 6,
46) and Sch 2
(items 113, 153,
209, 220, 242,
306, 312)
Intellectual Property
Laws Amendment
(Productivity
Commission Response
Part 2 and Other
Measures) Act 2020
9, 2020 26 Feb
2020
Sch 5 (items 3, 4): 27
Feb 2020 (s 2(1) item 4)
—
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Endnotes
Endnote 4—Amendment history
230 Trade Marks Act 1995
Compilation No. 39 Compilation date: 27/02/2020 Registered: 18/03/2020
Endnote 4—Amendment history
Provision affected How affected
Reader’s Guide ..............................am No 140, 2001; No 114, 2006; No 8, 2015
List of terms...................................am No 91, 1997; No 48, 2003; No 114, 2006; No 35, 2012; No 41, 2015;
No 77, 2018
Part 1
s 3 ..................................................am No 59, 2015
s 4A................................................ad No 140, 2001
Part 2
s 6 ..................................................am No 91, 1997; No 100, 1998; No 144, 1999; No 146, 1999; No 117,
2000; No 99, 2001; No 48, 2003; No 106, 2006; No 114, 2006; No 131,
2009; No 96, 2010; No 98, 2010; No 103, 2010; No 35, 2012; No 13,
2013; No 8, 2015; No 10, 2015; No 41, 2015; No 77, 2018
s 6A................................................ad No 114, 2006
am No 46, 2011
s 11 ................................................am No 35, 2012
s 15 ................................................am No 114, 2006
Part 3
s 18 ................................................am No 10, 2015
s 20 ................................................am No 117, 2000
s 22 ................................................am No 114, 2006; No 131, 2009
s 26 ................................................am No 91, 1997; No 99, 2001; No 41, 2015
Part 4
Division 1
s 27 ................................................am No 114, 2006; No 35, 2012
s 29 ................................................am No 114, 2006
s 31 ................................................am No 114, 2006
s 33 ................................................am No 114, 2006
s 34 ................................................am No 77, 2018
s 35 ................................................am No 35, 2012; No 13, 2013
s 37 ................................................am No 35, 2012
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Endnote 4—Amendment history
Trade Marks Act 1995 231
Compilation No. 39 Compilation date: 27/02/2020 Registered: 18/03/2020
Provision affected How affected
s 38 ................................................am No 106, 2006
Division 2
s 41 ................................................am No 114, 2006
rs No 35, 2012
s 44 ................................................am No 117, 2000
Division 3
Division 3 ......................................rs No 114, 2006
s 45 ................................................am No 99, 2001
rs No 114, 2006
s 46 ................................................rep No 99, 2001
ad No 114, 2006
s 47–50...........................................rep No 114, 2006
Division 4
s 51 ................................................am No 114, 2006
s 51A..............................................ad No 114, 2006
Part 5
Division 1
s 52 ................................................am No 99, 2001; No 114, 2006; No 35, 2012; No 77, 2018
s 52A..............................................ad No 35, 2012
am No 77, 2018
s 54 ................................................am No 35, 2012
s 54A..............................................ad No 35, 2012
am No 77, 2018
s 55 ................................................am No 114, 2006; No 35, 2012
s 56 ................................................am No 35, 2012; No 13, 2013
Division 2
s 57 ................................................am No 114, 2006
s 58A..............................................ad No 114, 2006
s 60 ................................................am No 114, 2006
s 61 ................................................am No 114, 2006; No 98, 2010
s 62A..............................................ad No 114, 2006
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Endnotes
Endnote 4—Amendment history
232 Trade Marks Act 1995
Compilation No. 39 Compilation date: 27/02/2020 Registered: 18/03/2020
Provision affected How affected
Part 6
s 63 ................................................am No 99, 2001; No 114, 2006
s 65 ................................................rs No 114, 2006
am No 77, 2018
s 65A..............................................ad No 114, 2006
s 66 ................................................am No 114, 2006; No 35, 2012
s 66A..............................................ad No 114, 2006
s 67 ................................................am No 35, 2012; No 13, 2013
Part 7
Division 1
s 68 ................................................am No 99, 2001; No 35, 2012
s 73 ................................................am No 99, 2001; No 106, 2006
Division 2
Division 2 heading.........................rs No 99, 2001
s 74A..............................................ad No 99, 2001
s 77 ................................................am No 77, 2018
s 78 ................................................am No 99, 2001; No 114, 2006
s 79 ................................................am No 114, 2006
s 80 ................................................am No 99, 2001
Division 3
Division 3 ......................................ad No 99, 2001
s 80A..............................................ad No 99, 2001
s 80B..............................................ad No 99, 2001
s 80C..............................................ad No 99, 2001
am No 77, 2018
s 80D..............................................ad No 99, 2001
s 80E..............................................ad No 99, 2001
am No 77, 2018
s 80F ..............................................ad No 99, 2001
am No 114, 2006
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Endnote 4—Amendment history
Trade Marks Act 1995 233
Compilation No. 39 Compilation date: 27/02/2020 Registered: 18/03/2020
Provision affected How affected
s 80G..............................................ad No 99, 2001
am No 114, 2006
s 80H..............................................ad No 99, 2001
Part 8
Part 8 heading ................................rs No 106, 2006
Division 1
Subdivision A
Subdivision A heading...................ad No 106, 2006
s 82A..............................................ad No 114, 2006
s 83 ................................................am No 35, 2012; No 13, 2013
s 83A..............................................ad No 98, 2010
am No 35, 2012; No 13, 2013
Subdivision B
Subdivision B heading ...................ad No 106, 2006
s 84 ................................................am No 106, 2006
Subdivision C
Subdivision C ................................ad No 106, 2006
s 84A..............................................ad No 106, 2006
am No 77, 2018
s 84B..............................................ad No 106, 2006
s 84C..............................................ad No 106, 2006
am No 41, 2015
s 84D..............................................ad No 106, 2006
am No 35, 2012; No 13, 2013
Division 2
s 86 ................................................am No 114, 2006
s 87 ................................................am No 114, 2006
s 88 ................................................am No 99, 2001; No 114, 2006
s 88A..............................................ad No 114, 2006
s 90 ................................................am No 114, 2006
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Endnote 4—Amendment history
234 Trade Marks Act 1995
Compilation No. 39 Compilation date: 27/02/2020 Registered: 18/03/2020
Provision affected How affected
Part 9
s 92 ................................................am No 114, 2006; No 77, 2018
s 93 ................................................rs No 77, 2018
s 95 ................................................am No 77, 2018
s 96 ................................................rs No 35, 2012
am No 77, 2018
s 96A..............................................ad No 99, 2001
s 97 ................................................am No 35, 2012
s 99A..............................................ad No 35, 2012
s 100 ..............................................am No 114, 2006
s 101 ..............................................am No 114, 2006
s 104 ..............................................am No 35, 2012; No 13, 2013
Part 10
s 111 ..............................................am No 77, 2018
Part 11
Division 2
s 113 ..............................................rs No 131, 2009
Division 3
s 117 ..............................................rs No 131, 2009
Part 12
s 120 ..............................................am No 117, 2000
s 121 ..............................................am No 117, 2000
s 122 ..............................................am No 99, 2001
s 122A............................................ad No 77, 2018
ed C37
s 123 ..............................................am No 77, 2018
s 126 ..............................................am No 35, 2012
s 127 ..............................................am No 99, 2001
s 128 ..............................................am No 99, 2001; No 114, 2006
s 129 ..............................................am No 100, 1998; No 77, 2018
s 130 ..............................................am No 77, 2018
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Endnote 4—Amendment history
Trade Marks Act 1995 235
Compilation No. 39 Compilation date: 27/02/2020 Registered: 18/03/2020
Provision affected How affected
s 130A............................................ad No 77, 2018
Part 13
s 131 ..............................................am No 91, 1997; No 117, 2000; No 41, 2015
s 132 ..............................................am No 91, 1997; No 99, 2001; No 114, 2006; No 41, 2015
s 133 ..............................................am No 91, 1997; No 114, 2006; No 41, 2015
s 133A............................................ad No 144, 1997
am No 41, 2015
s 134 ..............................................am No 91, 1997
rs No 35, 2012
am No 41, 2015; No 77, 2018
s 134A............................................ad No 35, 2012
am No 41, 2015
s 135 ..............................................am No 91, 1997; No 35, 2012; No 41, 2015
s 136 ..............................................am No 91, 1997
rs No 35, 2012
am No 41, 2015
s 136A............................................ad No 35, 2012
am No 41, 2015
s 136B............................................ad No 35, 2012
am No 41, 2015
s 136C............................................ad No 35, 2012
am No 41, 2015
s 136D............................................ad No 35, 2012
am No 41, 2015
s 136E ............................................ad No 35, 2012
am No 41, 2015
s 137 ..............................................am No 91, 1997; No 99, 2001; No 35, 2012; No 41, 2015
s 138 ..............................................am No 99, 2001
s 139 ..............................................am No 91, 1997
rs No 35, 2012
am No 41, 2015
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Endnote 4—Amendment history
236 Trade Marks Act 1995
Compilation No. 39 Compilation date: 27/02/2020 Registered: 18/03/2020
Provision affected How affected
s 140 ..............................................am No 91, 1997; No 41, 2015
s 141 ..............................................am No 91, 1997; No 114, 2006; No 41, 2015
s 141A............................................ad No 114, 2006
am No 41, 2015
s 142 ..............................................am No 91, 1997; No 41, 2015
s 143 ..............................................am No 91, 1997; No 140, 2001; No 114, 2006; No 41, 2015; No 4, 2016
Part 14
s 145 ..............................................am No 117, 2000; No 140, 2001
rs No 35, 2012
s 146 ..............................................am No 117, 2000; No 140, 2001
rs No 35, 2012
s 147 ..............................................am No 140, 2001
rs No 35, 2012
s 147A............................................ad No 35, 2012
s 147B............................................ad No 35, 2012
ed C36
s 148 ..............................................am No 117, 2000
rs No 35, 2012
rep No 35, 2012
s 149 ..............................................rep No 35, 2012
s 150 ..............................................am No 140, 2001; No 4, 2010
s 151 ..............................................am No 117, 2000; No 140, 2001
s 153 ..............................................am No 140, 2001
s 154 ..............................................am No 140, 2001
s 155 ..............................................rep No 100, 1998
s 156 ..............................................am No 100, 1998; No 140, 2001; No 35, 2012; No 77, 2018
s 157 ..............................................am No 140, 2001
s 157A............................................ad No 35, 2012
am No 77, 2018
s 158 ..............................................rep No 99, 2001
s 159 ..............................................am No 99, 2001; No 86, 2002; No 174, 2011
Authorised Version C2020C00103 registered 18/03/2020
Endnotes
Endnote 4—Amendment history
Trade Marks Act 1995 237
Compilation No. 39 Compilation date: 27/02/2020 Registered: 18/03/2020
Provision affected How affected
s 160 ..............................................am No 140, 2001
Part 15
s 162 ..............................................am No 114, 2006
Part 16
s 170 ..............................................am No 99, 2001
s 173 ..............................................am No 106, 2006
s 174 ..............................................rs No 106, 2006
s 175 ..............................................am No 106, 2006
s 176 ..............................................am No 106, 2006; No 77, 2018
s 177 ..............................................am No 106, 2006; No 114, 2006
s 178 ..............................................am No 106, 2006
s 179 ..............................................rs No 106, 2006
s 180A............................................ad No 99, 2001
s 181 ..............................................am No 106, 2006; No 114, 2006
Part 17
s 186 ..............................................am No 99, 2001
s 187 ..............................................am No 114, 2006
s 188 ..............................................rep No 114, 2006
Part 17A
Part 17A.........................................ad No 117, 2000
s 189A............................................ad No 117, 2000
Part 18
s 190 ..............................................am No 35, 2012; No 13, 2013
s 191 ..............................................am No 35, 2012; No 13, 2013
s 191A............................................ad No 35, 2012
am No 13, 2013
s 192 ..............................................am No 35, 2012; No 13, 2013
s 193 ..............................................am No 35, 2012
s 194 ..............................................am No 35, 2012; No 13, 2013
s 195 ..............................................am No 35, 2012; No 13, 2013
s 196 ..............................................am No 35, 2012; No 13, 2013
Authorised Version C2020C00103 registered 18/03/2020
Endnotes
Endnote 4—Amendment history
238 Trade Marks Act 1995
Compilation No. 39 Compilation date: 27/02/2020 Registered: 18/03/2020
Provision affected How affected
s 197 ..............................................am No 114, 2006; No 35, 2012; No 13, 2013
Part 19
s 199 ..............................................am No 35, 2012
s 200 ..............................................am No 9, 2020
s 202 ..............................................am No 77, 2018
s 206 ..............................................am No 146, 1999; No 48, 2003; No 106, 2006
Part 20
s 210 ..............................................am No 131, 2009; No 61, 2016
ed C35
s 211 ..............................................ed C35
Part 21
Division 1
s 212 ..............................................rs No 100, 1998
s 213 ..............................................am No 35, 2012
rs No 77, 2018
s 213A............................................ad No 77, 2018
s 213B............................................ad No 77, 2018
s 213C............................................ad No 77, 2018
s 214A............................................ad No 77, 2018
s 215 ..............................................am No 46, 2011; No 8, 2015; No 126, 2015
s 217A............................................ad No 106, 2006
Division 2
s 222 ..............................................am No 99, 2001; No 77, 2018
Division 2A
Division 2A....................................ad No 77, 2018
s 222A............................................ad No 77, 2018
Division 3
s 223 ..............................................am No 91, 1997; No 106, 2006; No 77, 2018
s 223AA.........................................ad No 77, 2018
s 223A............................................ad No 106, 2006
am No 35, 2012
Authorised Version C2020C00103 registered 18/03/2020
Endnotes
Endnote 4—Amendment history
Trade Marks Act 1995 239
Compilation No. 39 Compilation date: 27/02/2020 Registered: 18/03/2020
Provision affected How affected
s 224 ..............................................am No 48, 2003; No 106, 2006; No 114, 2006
s 225 ..............................................am No 35, 2012
s 226 ..............................................am No 114, 2006
s 226A............................................ad No 106, 2006
s 226B............................................ad No 114, 2006
s 228A............................................ad No 100, 1998
am No 35, 2012; No 8, 2015
s 228B............................................ad No 100, 1998
s 229 ..............................................rs No 100, 1998
am No 35, 2012
s 229AA.........................................ad No 77, 2018
s 229A............................................ad No 35, 2012
s 229B............................................ad No 77, 2018
s 231 ..............................................am No 100, 1998; No 149, 2011; No 35, 2012; No 8, 2015; No 77, 2018
s 231A............................................ad No 149, 2011
Part 22
Division 2
s 239A............................................ad No 114, 2006
Division 3
s 254A............................................ad No 99, 2001
s 254B............................................ad No 99, 2001
s 254C............................................ad No 99, 2001
Division 4
s 261 ..............................................am No 91, 1997
rep No 41, 2015
Authorised Version C2020C00103 registered 18/03/2020