Trade Marks Act 1995 (consolidated as of January 14, 2011), Australia

Note: For Australia and Australian continental shelf see section 6.

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The Trade Marks Act 1994 is repealed.

Part 2—Interpretation

6 Definitions

(1) In this Act, unless the contrary intention appears:

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. certification trade mark has the meaning given by section 169. 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.

Convention country means a country declared (by regulations made under section 225) to be a Convention country for the purposes of this Act.

Customs CEO means the Chief Executive Officer of Customs.

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 owner, in relation to goods imported into Australia, means:

(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 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 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.

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.

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.

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.

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.

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. 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.

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: This provision displaces section 36 of the Acts Interpretation Act 1901, and is in accordance with the Madrid Protocol. The difference between the two occurs when the initiating event is on the last day of a calendar month, which has fewer days than the month in which the period ends. For example, a period of 3 months from an event on 30 September ends on 30 December under this rule; it would end on 31 December under the Acts Interpretation Act 1901 provision.

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:

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.

(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.

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 section 37), 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:

(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.

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.

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 Legislative Instruments Act 1995.

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.

(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.

(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.

(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.

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:

(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

(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 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 Customs CEO 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.

Section 27

Part 4—Application for registration

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:

(a) include a representation of the trade mark; and

Section 28

(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.

(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 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 Section 30

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.

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.

Section 33

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 Notice etc. of decision

The Registrar must:

(a)

notify the applicant in writing 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 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.

Section 36

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

(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.

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.

Section 39

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) 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.

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).

(2) 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 (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.

Section 41

(3)

In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4)

Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5)

If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a) the Registrar is to consider whether, because of the combined effect of the following:

(i)

the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii)

the use, or intended use, of the trade mark by the applicant;

(iii) any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b)

if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

(c)

if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

Note 1: For goods of a person and services of a person see section 6.

Note 2: 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 (1) and 7(3) and section 8).

Section 42

(6) If the Registrar finds that 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, the following provisions apply:

(a)

if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b)

in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

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: 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 (1) and 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.

Section 44

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.

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).

Section 44

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

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.

Section 45

Division 3—Divisional applications

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.

Section 51

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.

(2) The owner of the trade marks may apply to the Registrar, in writing, to have:

(a)

the series applications; or

Section 51A

(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.

Section 52

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 in an approved form and must be filed within the prescribed period or within that period as extended in accordance with the regulations or in accordance with subsection (5).

Note: For approved form and file see section 6.

(3) The opponent must serve a copy of the notice on the applicant.

Note: For opponent see section 6.

(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:

(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.

Section 53

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.

(2) Subject to subsection (1), the proceedings for dealing with the opposition must be in accordance with the regulations.

55 Decision

(1) Unless the proceedings are discontinued or dismissed, 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.

Section 56

(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.

56 Appeal

The applicant or the opponent may appeal to the Federal Court from a decision of the Registrar under section 55.

Note: For applicant and opponent see section 6.

Section 57

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; 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 Section 59

(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 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;

Section 61

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.

(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.

Section 62

(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.

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.

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.

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.

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

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.

Note: For file see section 6.

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 from a decision of the Registrar under this Part.

Section 68

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.

Otherwise, the application for the registration of the trade mark lapses.

(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

(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.

Section 70

(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.

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

Section 73

(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.

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.

Section 74

(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.

Section 74A

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.

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 Section 78

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 notice 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

(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.

Part 7 Registration of trade marks Division 3 Renewal of registration (registration delayed for 10 or more years after filing date)

Section 80A

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 Notice about renewal

As soon as practicable after the Register entry day, the Registrar must, in accordance with the regulations, notify the registered owner of the trade mark that a request may be made for renewal of the registration.

Note: For registered owner see section 6.

Registration of trade marks Part 7 Renewal of registration (registration delayed for 10 or more years after filing date)

Division 3

Section 80D

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 notice 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:

(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

Part 7 Registration of trade marks Division 3 Renewal of registration (registration delayed for 10 or more years after filing date)

Section 80G

(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.

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;

Registration of trade marks Part 7 Renewal of registration (registration delayed for 10 or more years after filing date)

Division 3

Section 80H

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.

Section 81

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.

Note: For filing date, registered owner and registered trade mark see section 6.

Section 83

(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 from a decision of the Registrar under subsection (1).

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.

Section 83A

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

(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: Section 84

(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 from a decision of the Registrar under this section.

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: Section 84A

(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.

(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;

Section 84B

(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 notice of the proposed revocation to each of the following persons in accordance with the regulations 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.

(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: Section 84C

(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.

(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 Customs CEO, 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 Customs CEO written notice of the revocation; and

(ii)

the seizure occurs after the notice is given to the Customs CEO; 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.

Section 84D

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.

(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 from a decision of the Registrar to revoke the registration of a trade mark under section 84A.

Section 85

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 trade mark, or any sign that is part of the trade mark, in relation to particular goods or services.

Section 88

(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

(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:

Section 88A

(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

(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.

Section 90

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.

Section 91

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.

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

(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.

(5) If the right or interest on which a person relied to make an application (under subsection (1) or (3)) to obtain the removal of a trade mark from the Register 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)

Subject to subsection (2), an application for the removal of a trade mark from the Register may be made at any time after the filing date in respect of the application for the registration of the trade mark.

(2)

An application on the ground referred to in paragraph 92(4)(b) may not be made before a period of 5 years has passed from the filing date in respect of the application for the registration of the trade mark.

Note: For filing date see section 6.

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 notice 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

(1)

Any person may oppose an application under section 92 by filing a notice of opposition with the Registrar or the court, as the case requires.

(2)

The notice of opposition:

(a)

must be in a form approved by the Registrar or by the court; and

(b)

must be filed in accordance with the regulations or the rules of court (as the case may be).

Note: For file see section 6.

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

(1)

If there is no opposition to an application to the Registrar under subsection 92(1), 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.

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 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:

(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

(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:

(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.

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 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.

Part 10—Assignment and transmission of trade marks

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.

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:

(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 Notice 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.

Part 11 Voluntary recording of claims to interests in and rights in respect of trade marks Division 1 Preliminary

Section 112

Part 11—Voluntary recording of claims to interests in and rights in respect of trade marks

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.

Voluntary recording of claims to interests in and rights in respect of trade marks Part Interests in, and rights in respect of, registered trade marks Division 2 Section 113

Division 2—Interests in, and rights in respect of, registered trade marks

113 Application to have claims to interest etc. recorded

(1) If:

(a)

a person (other than the registered owner of the trade mark) claims to have an interest in, or a right in respect of, a registered trade mark; and

(b)

this interest or right may not be recorded in the Register

under Part 10; the person and the registered owner of the trade mark may together apply to the Registrar to have particulars of the claim recorded in the Register.

(2) The application must be in an approved form and must be filed in accordance with the regulations.

Note: For registered owner, 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.

115 Amendment and cancellation

The regulations may provide for the amendment and cancellation of particulars entered in the Register under this Division.

Part 11 Voluntary recording of claims to interests in and rights in respect of trade marks Division 2 Interests in, and rights in respect of, registered trade marks

Section 116

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.

Voluntary recording of claims to interests in and rights in respect of trade marks Part Interests in, and rights in respect of, unregistered trade marks Division 3 Section 117

Division 3—Interests in, and rights in respect of, unregistered trade marks

117 Application to have claims to interest etc. recorded

(1) If:

(a)

a person has applied for the registration of a trade mark; and

(b)

another person claims to have an interest in, or a right in

respect of, the trade mark; they may together apply to the Registrar for a record to be kept of the other person’s claim.

(2) The application must be in an approved form and must be filed in accordance with the regulations.

Note: For 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.

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

(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 (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

(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

(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.

123 Goods etc. to which registered trade mark has been applied by or with consent of registered owner

(1) In spite of section 120, a person who uses a registered trade mark in relation to goods that are similar to goods in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied to, or in relation to, the goods by, or with the consent of, the registered owner of the trade mark.

Note: For similar goods see subsection 14(1).

(2) 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.

(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

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.

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.

(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 Groundless threats of legal proceedings

(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 defendant has no grounds for making the threat; 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.

(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.

(5)

An action may not be brought, or (if brought) may not proceed, under this section if the registered owner of the trade mark, or an authorised user of the trade mark having power to bring an action for infringement of the trade mark, with due diligence, begins and pursues an action against the threatened person for infringement of the trade mark.

Note: An authorised user of the trade mark may not have power to bring an action for infringement of the trade mark because of the terms of the agreement between the authorised user and the registered owner of the trade mark (see section 26).

(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 by defendant in action on groundless threats

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.

Part 13—Importation of goods infringing Australian trade marks

131 Object of Part

The object of this Part is to protect registered trade marks by making provision allowing the Customs CEO 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 Customs CEO 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).

(3) The authorised user may give the notice to the Customs CEO:

(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 Customs CEO, 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 Customs CEO 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 Customs CEO:

(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 Customs CEO may seize goods infringing trade mark

(1)

This section applies to goods manufactured outside Australia that:

(a)

are imported into Australia; and

(b)

are subject to the control of the Customs within the meaning of 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 Customs CEO, 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 Customs CEO 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 Customs CEO 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 Customs CEO to repay to the Commonwealth the expenses of seizing the goods.

Note: For objector see section 6.

(3A) The Customs CEO 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 Customs CEO 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 Customs CEO considers it reasonable in all the circumstances to require the security.

(3B) An undertaking may be withdrawn or varied if the Customs CEO 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 Customs CEO.

(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

The Customs CEO or 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

The Customs CEO must, as soon as practicable:

(a)

give (either personally or by post) to the designated owner of any seized goods a notice in writing identifying the goods and stating that they have been seized under section 133; and

(b)

give (either personally or by post) to the objector, or to each objector, a notice in writing:

(i)

identifying the goods and stating that they have been seized under section 133; and

(ii)

giving the full name and address of the designated owner of the goods and any information that the Customs CEO has and that he or she believes, on reasonable grounds, to be likely to help the objector to identify the importer of the goods; and

(iii) stating that the goods will be released to the designated owner unless the objector or one of the objectors (as the case requires) brings an action for infringement of the notified trade mark in respect of the goods, and gives to the Customs CEO notice in writing of the action, within the period of 10 working days after he or she has been given the notice or, if the Customs CEO extends that period under subsection 137(1), within the extended period.

Note: For designated owner, objector, seized goods and notified trade mark see section 6.

135 Forfeiture of 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 Customs CEO.

(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 Release of goods to owner—no action for infringement

(1) The Customs CEO must release the seized goods to their designated owner if, within the action period, the objector has not, or none of the objectors has:

(a)

brought an action for infringement of the notified trade mark in respect of the goods; and

(b)

given to the Customs CEO notice in writing of the action.

Note 1: For seized goods, designated owner, objector and notified trade mark see section 6.

Note 2: For action period see subsection (4).

(2) The Customs CEO must also release the seized goods to their designated owner if:

(a)

before the end of the action period, the objector or each of the objectors has, by notice in writing to the Customs CEO, consented to the release of the goods; and

(b)

at that time:

(i)

the objector has not, or none of the objectors has, brought an action for infringement of the notified trade mark in respect of the goods; or

(ii)

any action brought by an objector has been withdrawn.

Note 1: For seized goods, designated owner, objector and notified trade mark see section 6.

Note 2: For action period see subsection (4).

(3) The Customs CEO may release the seized goods to their designated owner at any time before the end of the action period if:

(a)

the Customs CEO, 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, or none of the objectors has, brought an action for infringement of the notified trade mark in respect of the goods.

Note 1: For seized goods, designated owner, objector and notified trade mark see section 6.

Note 2: For action period see subsection (4).

Note 3: In obtaining information for the purposes of this section, the Customs CEO must comply with Principles 1, 2 and 3 in section 14 of the Privacy Act 1988.

(4) In this section:

action period, in relation to seized goods, means:

(a)

if there is only one objector to the importation of the goods— the period within which the objector may bring an action for infringement of the registered trade mark in respect of goods under subsection 137(1); or

(b)

if there is more than one objector to the importation of the goods—the period beginning on the earliest day on which an objector may bring an action for infringement of the registered trade mark in respect of the goods under subsection 137(1) and ending at the end of the last day on which an objector may bring such an action under subsection 137(1).

Note: For objector 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 and give notice of it to the Customs CEO:

(a)

if paragraph (b) does not apply—within the period (notified period) of 10 working days specified in the notice given to the objector in respect of the goods under section 134; or

(b)

if:

(i)

the objector has, before the end of the notified period, applied in writing to the Customs CEO for an extension of the notified period; and

(ii)

the Customs CEO, being satisfied that in the circumstances of the case it is fair and reasonable to do so, has extended the notified period for a number of working days not exceeding 10;

within that period as so extended by the Customs CEO.