Loi de 1955 sur les marques de commerce (loi n° 20 de 1955, telle que modifiée jusqu'à la loi n° 58 de 1994), Australie, WIPO Lex

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Anglais Trade Marks Act 1955 (Act No. 20 of 1955, as amended up to Act No. 58 of 1994)

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Trade Marks Act 1955 (Act No. 20 of 1955, as amended up to Act No. 58 of 1994)

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93, 1966 29 Oct 1966 1 Dec 1966 -

Statute Law Revision Act 1973

216, 1973 19 Dec 1973 31 Dec 1973 Ss. 9

Administrative Changes (Consequential Provisions) Act 1976

91, 1976 20 Sept 1976 S. 3: (a) S. 4

Trade Marks Amendment Act 1976

163, 1976 9 Dec 1976 Ss. 3, 4, 7 and 10: Ss. 9

1 Feb 1977 (see Gazette 10 (2)

1977, No. S3, p. 3)

Remainder: Royal Assent

Trade Marks Amendment Act 1978

130, 1978 31 Oct 1978 1 Feb 1979 (see Gazette -

1979, No. S14)

Jurisdiction of Courts (Miscellaneous Amendments) Act 1979

19, 1979 28 Mar 1979 Parts II-XVII S. 124

(ss. 3-123): 15 May 1979

(see Gazette 1979,

No. S86)

Remainder: Royal Assent

Trade Marks Amendment Act 1981

43, 1981 13 May 1981 22 June 1981 (see Ss. 5

Gazette 1981, No. G24, and 10

p. 2)

Statute Law Revision Act 1981

61, 1981 12 June 1981 Part XXII (ss. 103, -

104): 1 Feb 1977 (b)

Statute Law (Miscellaneous Amendments) Act (No. 2) 1982

80, 1982 22 Sept 1982 Part LXXVII (s. 280): S. 280

Royal Assent (c) and (3

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Statute Law (Miscellaneous Provisions) Act (No. 1) 1984

72, 1984 25 June 1984 S. 3: 23 July 1984 (d) -

Statute Law (Miscellaneous Provisions) Act (No. 1) 1985

65, 1985 5 June 1985 S. 3: 3 July 1985 (e) -

Statute Law (Miscellaneous Provisions) Act (No. 2) 1985

193, 1985 16 Dec 1985 S. 3: Royal Assent (f) Ss. 14

Jurisdiction of Courts (Miscellaneous Amendments) Act 1987

23, 1987 26 May 1987 S. 3: (g) S. 5

Industry, Technology and Commerce Legislation Amendment Act 1989

91, 1989 27 June 1989 S. 15: 14 Dec 1988 S. 27

Part 4 (ss. 20-25):

30 Nov 1989 (see

Gazette 1989, No. S371)

Part 5 (ss. 26, 27):

1 Aug 1989 (see Gazette

1989, No. S262)

Remainder: Royal Assent

Industry, Technology and Commerce Legislation Amendment Act (No. 2)

10, 1990 17 Jan 1990 Ss. 40 and 43-49: S. 42

14 Feb 1990 (h) S. 2 (

Ss. 41 and 42: 30 Apr (am. b

1991 (h) 1992,

as amended by

Patents Act 1990

83, 1990 30 Oct 1990 30 Apr 1991 -

Patents Act 1990

83, 1990 30 Oct 1990 30 Apr 1991 -

Industry, Technology and Commerce Legislation Amendment Act 1992

168, 1992 11 Dec 1992 Part V (ss. 14, 15): -

30 July 1975

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Remainder: Royal Assent

Industry, Technology and Regional Development Legislation Amendment

1994

58, 1994 9 Apr 1994 29 June 1994 (see S. 4 (

Gazette 1994 No. S211)

(a) The Trade Marks Act 1955 was amended by section 3 only of the

Administrative Changes (Consequential Provisions) Act 1976, subsection

of which provides as follows:

"(7) The amendments of each other Act specified in the Schedule made

Act shall be deemed to have come into operation on 22 December 1975."

(b) The Trade Marks Act 1955 was amended by Part XXII (sections 103 a

only of the Statute Law Revision Act 1981, subsection 2 (9) of which pr

as follows:

"(9) Part XXII shall be deemed to have come into operation on 1 Febru

1977."

of the Statute Law (Miscellaneous Amendments) Act (No. 2) 1982, subsect

(1) of which provides as follows:

"(1) Sections 1, 2, 166 and 195 and Parts III, VI, VII, XVI, XXXVI, X

LI, LIII, LIV, LXI and LXXVII shall come into operation on the day on w

this Act receives the Royal Assent."

(d) The Trade Marks Act 1955 was amended by section 3 only of the Sta

Law (Miscellaneous Provisions) Act (No. 1) 1984, subsection 2 (1) of wh

provides as follows:

"(1) Subject to this section, this Act shall come into operation on t

twenty-eighth day after the day on which it receives the Royal Assent."

(e) The Trade Marks Act 1955 was amended by section 3 only of the Sta

Law (Miscellaneous Provisions) Act (No. 1) 1985, subsection 2 (1) of wh

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provides as follows:

"(1) Subject to this section, this Act shall come into operation on t

twenty-eighth day after the day on which it receives the Royal Assent."

(f) The Trade Marks Act 1955 was amended by section 3 only of the Sta

Law (Miscellaneous Provisions) Act (No. 2) 1985, subsection 2 (1) of wh

provides as follows:

"(1) Subject to this section, this Act shall come into operation on t

on which it receives the Royal Assent."

(g) The Trade Marks Act 1955 was amended by section 3 only of the

Jurisdiction of Courts (Miscellaneous Amendments) Act 1987, subsection

of which provides as follows:

"(2) The amendments made by this Act to an Act specified in the Sched

shall come into operation on such day as is fixed by Proclamation in re

to those amendments."

The date fixed in pursuance of subsection 2 (2) was 1 September 1987

Gazette 1987, No. S217).

(h) The Trade Marks Act 1955 was amended by sections 40-49 only of th

Industry, Technology and Commerce Legislation Amendment Act (No. 2) 198

subsections 2 (3) and (7) of which provide as follows:

"(3) Subsection 15 (1), sections 18, 41 and 42, and Part 6, commence

same day as the Patents Act 1990.

"(7) The remaining provisions of this Act commence 28 days after this

receives the Royal Assent."

Table of Amendments

ad=added or inserted am=amended rep=repealed rs=repealed and substi

Provision affected How affected

S. 3 rep. No. 216, 1973

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Ss. 4, 5 am. No. 163, 1976

S. 6 am. No. 216, 1973; No. 163, 1976; No.

1978; No. 193, 1985; No. 23, 1987; No

and 83, 1990

S. 6A ad. No. 163, 1976

am. No. 43, 1981

S. 8 rs. No. 163, 1976

S. 10 am. No. 42, 1958; Nos. 91 and 163, 19

No. 91, 1989; No. 10, 1990; No. 58, 1

S. 11 rs. No. 91, 1989; No. 58, 1994

S. 14 am. No. 163, 1976

S. 14A ad. No. 10, 1990

Ss. 16, 17 am. No. 10, 1990

S. 18 am. No. 163, 1976; No. 65, 1985

Ss. 19, 20 am. No. 163, 1976; No. 130, 1978; No.

1987

S. 21 am. No. 163, 1976; No. 23, 1987

S. 22 am. No. 163, 1976

S. 23 am. No. 163, 1976; No. 130, 1978; No.

1987

Ss. 24, 25 am. No. 130, 1978

S. 26 am. No. 163, 1976; No. 130, 1978; No.

1987

S. 27 am. No. 163, 1976

S. 29 am. No. 216, 1973

S. 30 am. No. 163, 1976; No. 23, 1987

S. 31 am. No. 130, 1978

S. 32 am. No. 163, 1976

S. 33 am. No. 130, 1978

Ss. 34, 35 am. No. 163, 1976; No. 130, 1978

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S. 36 am. No. 163, 1976; No. 130, 1978; No.

1984; No. 23, 1987

S. 38 am. No. 163, 1976

Ss. 39, 40 am. No. 163, 1976; No. 130, 1978

S. 40A ad. No. 10, 1990

S. 42 am. No. 163, 1976; No. 23, 1987

S. 43 am. No. 163, 1976; No. 130, 1978; No.

1987

S. 45 am. No. 163, 1976; No. 130, 1978

S. 46 am. No. 163, 1976; No. 23, 1987

S. 48 am. No. 163, 1976; No. 19, 1979

S. 49 am. No. 163, 1976

S. 51 am. No. 163, 1976; No. 23, 1987

S. 54 am. No. 163, 1976; No. 19, 1979; No.

1987

S. 55 am. No. 163, 1976

S. 56 am. No. 163, 1976; No. 130, 1978

S. 58 am. No. 163, 1976; No. 130, 1978

S. 59 am. No. 163, 1976

Ss. 60, 61 am. No. 163, 1976; No. 130, 1978

S. 62 am. No. 130, 1978

S. 64 am. No. 163, 1976; No. 130, 1978

S. 67 am. No. 163, 1976

rs. No. 43, 1981

S. 68 am. No. 130, 1978

Ss. 69-72 am. No. 163, 1976

Ss. 74, 75 am. No. 163, 1976; No. 130, 1978

S. 76 am. No. 130, 1978

S. 77 am. No. 163, 1976; No. 130, 1978

S. 78 am. No. 163, 1976

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S. 81 am. No. 163, 1976; No. 23, 1987

S. 82 am. No. 163, 1976; No. 130, 1978

Ss. 83-85 am. No. 130, 1978

S. 86 am. No. 163, 1976; No. 130, 1978; No.

1981; No. 23, 1987

S. 88 am. No. 163, 1976; No. 130, 1978

S. 90 am. No. 163, 1976

S. 92 am. No. 163, 1976

Ss. 93, 94 am. No. 163, 1976; No. 130, 1978

S. 98 am. No. 163, 1976; No. 130, 1978; No.

1985; No. 168, 1992

Ss. 99, 100 am. No. 93, 1966; No. 163, 1976; No.

1985

rs. No. 168, 1992

S. 101 am. No. 163, 1976

rep. No. 168, 1992

TRADE MARKS ACT 1955 - TABLE OF PROVISIONS

TABLE OF PROVISIONS

Section

PART I - PRELIMINARY

1. Short title

2. Commencement

4. Repeal

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5. Application of Act

6. Interpretation

6A. References to prescribed courts

7. Crown to be bound

8. Application of Act to Norfolk Island

9. No new application to be made under State Acts

PART II - ADMINISTRATION

10. Registrar and other officers

11. Delegation by Registrar

12. Trade Marks Office and sub-offices

13. Seal of Trade Marks Office

PART III - THE REGISTER OF TRADE MARKS

14. Register of Trade Marks

14A. Register may be kept wholly or partly by computer

15. Trusts not to be noticed

16. Inspection of Register

17. Register and certified copies to be evidence

18. False entries in Register

19. Correction of Register

20. Registration of assignment

21. Alteration of registered trade mark

22. Rectification of Register

23. Provisions as to non-use of trade mark

PART IV - REGISTRABLE TRADE MARKS

24. Registrable trade marks - Part A

25. Registrable trade marks - Part B

26. Distinctiveness

27. Trade marks in colour

28. Scandalous and improper marks

29. Registration may be refused of certain words etc. in trade ma

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30. Names etc. of living persons

31. Trade marks to be registered for particular goods or services

32. Disclaimers

33. Identical marks

34. Concurrent use

35. Jointly owned trade marks

36. Association of trade marks

37. Assignment of associated trade marks

38. Use of trade marks whether associated or otherwise

39. Series of trade marks

PART V - APPLICATIONS FOR REGISTRATION

40. Application for registration

40A. Withdrawal of application

41. Applications to be examined

42. Action on Examiner's report

43. Division of application

44. Acceptance of application

45. Application may be accepted where trade mark is to be used by

assignee or registered user

46. Appeals

47. Advertisement of acceptance

48. Limit of time for proceeding with application

PART VI - OPPOSITION TO REGISTRATION

49. Notice of opposition

50. Hearing of opposition

51. Appeal to a prescribed court

52. Security for costs

PART VII - REGISTRATION AND EFFECT OF REGISTRATION

53. Registration of trade mark

54. Time for registration

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55. Duration of registration

56. Words used as name or description of an article or substance

57. Powers of registered proprietor

58. Rights given by registration

59. Registration evidence of validity

60. Limitation on removal of trade mark after 3 years

61. Registration conclusive after 7 years

62. Infringement of trade marks

63. Infringement of trade mark by breach of certain restrictions

64. Acts not constituting infringement

65. Relief in infringement actions

66. Evidence of trade usage

67. Action or proceeding may be instituted in prescribed court

68. Passing off actions

PART VIII - RENEWAL OF REGISTRATION

69. Renewal of registration

70. Procedure on expiry of period of registration

71. Restoration of trade mark removed for non-payment of renewal

72. Status of un-renewed trade mark

PART IX - REGISTERED USERS

73. Application of Part

74. Registered users

75. Variation etc. of registration

76. Cancellation of registration

77. Effect of permitted user

78. Infringement proceedings

79. Rights of registered user not assignable

80. Hearing by Registrar

81. Appeals

PART X - ASSIGNMENT OF TRADE MARKS

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82. Assignment and transmission of trade marks

PART XI - CERTIFICATION TRADE MARKS

83. Certification trade marks

84. Rights given by registration

85. Rules governing the use of certification trade marks

86. Matters to be considered before acceptance

87. Alteration of rules

88. Rectification of Register

89. Certification trade marks not assignable

90. Transitional provisions

91. Rules to be open for inspection

92. Application of Act to certification trade mark

PART XII - DEFENSIVE TRADE MARKS

93. Defensive registration of well-known trade marks

94. Rectification of Register

95. Cancellation by Registrar

96. Rights given by registration

97. Application of Act

PART XIII - PROTECTION OF TRADE MARKS

98. Forgery etc. of trade marks

99. Selling etc. goods with false marks

100. Importing goods with false marks

102. Aiding and abetting offences

103. Importation of goods infringing Australian trade marks

104. Power to require information in respect of imported goods

bearing fraudulent marks

105. Modification in relation to Territories

106. What taken to be forgery of trade mark

107. When trade mark deemed applied

107A. Forfeiture orders under the Proceeds of Crime Act 1987

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PART XIV - INTERNATIONAL ARRANGEMENTS

108. Convention countries

109. Applications under International Conventions

110. Manner of application under this Part

PART XV - JURISDICTION AND POWERS OF COURTS

111. Interpretation

112. Jurisdiction of prescribed courts

113. Transfer of proceedings

114. Appeals from prescribed courts

115. Intervention by Registrar

115A. Powers of prescribed courts

PART XVA - APPLICATION FOR REVIEW OF CERTAIN DECISIONS BY

ADMINISTRATIVE APPEALS TRIBUNAL

116. Application for review

PART XVI - MISCELLANEOUS

117. Use of trade mark for export trade

118. Trade mark not to be deemed to be deceptive or confusing in

certain cases

118A. Subsections 99 (1) and 100 (1) may be dealt with summarily

in certain circumstances

119. Powers of Registrar

120. Disobedience to summons an offence

121. Refusal to give evidence an offence

122. Recovery of costs

123. Certificate of validity

124. Groundless threats of legal proceedings

125. Counter-claim by defendant for infringement

126. Description of trade marks in pleadings

127. Power of amendment

128. Exercise of discretionary power by Registrar

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129. Fees

130. Extension of time

131. Power to extend times by reason of errors in Trade Marks

Office etc.

132. Address for service

133. Declaration by disabled person

134. Death of party to a proceeding

135. Unauthorised persons not to act in trade mark matters

136. Privileges of patent attorneys

137. Unregistered persons not to describe themselves as trade mark

agents

139. Adaptation of classification

140. Making and signing of applications

141. Examiners' reports to be communicated

142. Security for costs

143. Costs of attendance of patent attorney

144. Service of orders on appeal

145. Improperly describing an office as the Trade Marks Office

146. Falsely representing a trade mark as registered an offence

147. Regulations

THE SCHEDULE

Repeal of Acts

TRADE MARKS ACT 1955 - LONG TITLE

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An Act relating to Trade Marks

TRADE MARKS ACT 1955 - PART I PART I - PRELIMINARY

TRADE MARKS ACT 1955 - SECT 1 Short title

1. This Act may be cited as the Trade Marks Act 1955.*1*

SEE NOTES TO FIRST ARTICLE OF THIS CHAPTER .

TRADE MARKS ACT 1955 - SECT 2 Commencement

2. This Act shall come into operation on a date to be fixed by

Proclamation.*1*

SEE NOTES TO FIRST ARTICLE OF THIS CHAPTER .

TRADE MARKS ACT 1955 - SECT 4

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Repeal

4. The Acts specified in the first column of the Schedule are repeale

the extent respectively specified in the second column of that Schedule

TRADE MARKS ACT 1955 - SECT 5 Application of Act

5. (1) This Act applies to and in relation to applications for the

registration of trade marks made after the commencement of this Act and

in relation to trade marks registered on those applications.

(2) Subject to section 90, this Act also applies to and in relation t

marks registered under the repealed Acts and those trade marks shall, s

to the next succeeding subsection, be deemed to be registered in Part A

(3) The Registrar may, on the application of the registered proprieto

trade mark referred to in the last preceding subsection, transfer the t

mark from Part A to Part B of the Register.

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(4) Subject to section 90, the repealed Acts apply, notwithstanding t

repeal, to and in relation to applications for the registration of trad

made before the commencement of this Act and to and in relation to the

registration of trade marks on those applications, but this Act applies

in relation to trade marks so registered and those trade marks shall, s

to the next succeeding subsection, be deemed to be registered in Part A

(5) Before the acceptance of an application for the registration of a

mark made before the commencement of this Act, the Registrar may, upon

request of the applicant, treat the application as an application for

registration in Part B of the Register and deal with the application

accordingly.

(6) The repealed Acts apply, notwithstanding their repeal, to and in

relation to applications for the registration of a person as the regist

user of a trade mark made before the commencement of this Act and to an

relation to the registration of persons as registered users on those

applications, but this Act applies to and in relation to persons so

registered.

TRADE MARKS ACT 1955 - SECT 6 Interpretation

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

"assignment" means assignment by act of the parties concerned;

"Australia" includes Norfolk Island;

"Convention country" means a country in respect of which there is in

for the time being a regulation under section 108 declaring that countr

a Convention country for the purposes of this Act;

"Deputy Registrar" means a Deputy Registrar of Trade Marks;

"Federal Court" means the Federal Court of Australia;

"legal practitioner" means a barrister or solicitor of the High Court

the Supreme Court of a State or Territory;

"limitations" means limitations of the right to the exclusive use of

mark given by the registration of the trade mark, including limitations

that right as to:

(a) mode of use;

(b) use within a territorial area within Australia; or

"mark" includes a device, brand, heading, label, ticket, name, signat

word, letter or numeral, or any combination thereof;

"Official Journal" has the same meaning as in the Patents Act 1990;

"permitted use", in relation to a registered trade mark, means the us

the trade mark:

(a) by a registered user of the trade mark in relation to goods or

services:

(i) with which he is connected in the course of trade;

(ii) in respect of which the trade mark remains registered; and

(iii) for which he is registered as a registered user; and

(b) which complies with any conditions or restrictions to which his

registration is subject;

"person" includes a body politic and a body of persons, whether corpo

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unincorporate;

"prescribed court" means the Federal Court, the Supreme Court of a St

the Supreme Court of the Australian Capital Territory, the Supreme Cour

the Northern Territory of Australia or the Supreme Court of Norfolk Isl

"registered proprietor", in relation to a trade mark, means the perso

the time being entered in the Register as proprietor of the trade mark;

"registered trade mark" means a trade mark which is registered under

Act;

"registered user" means a person who is registered as such under sect

74;

"the expiration of the last registration", in relation to a registere

mark, means the date of the expiration of the original registration of

trade mark or of the last renewal of registration, as the case may be;

"the Register" means the Register of Trade Marks under this Act;

"the Registrar" means the Registrar of Trade Marks holding office und

Act;

"the repealed Acts" means the Acts repealed by this Act;

"this Act" includes the regulations;

"trade mark" means:

(a) except in relation to Part XI, a mark used or proposed to be used

relation to goods or services for the purpose of indicating, or so as t

indicate, a connexion in the course of trade between the goods or servi

a person who has the right, either as proprietor or as registered user,

the mark, whether with or without an indication of the identity of that

person; and

(b) in relation to Part XI, a mark registrable, or registered, in Par

the Register;

"transmission" means transmission by operation of law, devolution on

personal representative of a deceased person and any other mode of tran

not being assignment;

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"word" includes an abbreviation of a word.

(2) In this Act:

(a) references to the use of a mark shall be construed as references

use of a printed or other visual representation of the mark; and

(b) references to the use of a mark in relation to goods shall be con

as references to the use of the mark upon, or in physical or other rela

to, goods.

(3) For the purposes of this Act, a trade mark shall be deemed to be

deceptively similar to another trade mark if it so nearly resembles tha

trade mark as to be likely to deceive or cause confusion.

TRADE MARKS ACT 1955 - SECT 6A References to prescribed courts

6A. A reference in this Act to a prescribed court shall be read:

(a) in relation to the institution of an appeal or other proceeding,

reference to a prescribed court having jurisdiction with respect to mat

arising under this Act in respect of which the appeal or other proceedi

instituted; and

(b) in relation to the exercise of jurisdiction, as a reference to a

prescribed court exercising jurisdiction in accordance with section 112

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TRADE MARKS ACT 1955 - SECT 7 Crown to be bound

7. This Act binds the Crown in right of the Commonwealth and of the s

States.

TRADE MARKS ACT 1955 - SECT 8 Application of Act to Norfolk Island

8. (1) This Act extends to Norfolk Island.

(2) An application for registration of a trade mark is not receivable

a law (other than this Act) in force in Norfolk Island.

TRADE MARKS ACT 1955 - SECT 9 No new application to be made under State Acts

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9. An application for the registration of a trade mark under a State

relating to the registration of trade marks is not receivable.

TRADE MARKS ACT 1955 - PART II PART II - ADMINISTRATION

TRADE MARKS ACT 1955 - SECT 10 Registrar and other officers

10. (1) There is to be a Registrar of Trade Marks.

(1A) The Registrar has such powers and functions as are conferred on

her under this Act or any other Act.

(3) There is to be at least one Deputy Registrar of Trade Marks.

(3A) Subject to any direction by the Registrar, a Deputy Registrar ha

the powers and functions of the Registrar under this Act or any other A

except the Registrar's powers of delegation under section 11.

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(3B) A power or function of the Registrar under this Act or any other

when exercised or performed by a Deputy Registrar, shall, for the purpo

this Act or any other Act, be taken to have been exercised or performed

Registrar.

(3C) The exercise of a power, or the performance of a function, of th

Registrar under this Act or any other Act by a Deputy Registrar does no

prevent the exercise of the power, or the performance of the function,

Registrar.

(4) Where, under this Act or any other Act, the exercise of a power o

function by the Registrar, or the operation of a provision of this Act

other Act, depends on the opinion, belief or state of mind of the Regis

relation to a matter:

(a) that power or function may be exercised by a Deputy Registrar on

opinion, belief or state of mind of the Deputy Registrar in relation to

matter; and

(b) that provision may operate on the opinion, belief or state of min

Deputy Registrar in relation to that matter.

(6) There shall be so many Examiners of Trade Marks as are necessary.

(7) Persons holding office as Examiners of Trade Marks at the commenc

of this Act shall continue to hold that office.

TRADE MARKS ACT 1955 - SECT 11 Delegation by Registrar

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11. (1) The Registrar may, by writing, delegate all or any of the

Registrar's powers under this Act or any other Act to:

(a) a prescribed person, or a prescribed class of persons, holding or

performing the duties of an Australian Public Service office in the Tra

Marks Office; or

(b) a prescribed employee, or a prescribed class of employees, employ

the Trade Marks Office.

(2) In this section:

"employee" has the same meaning as in the Public Service Act 1922.

TRADE MARKS ACT 1955 - SECT 12 Trade Marks Office and sub-offices

12. (1) For the purposes of this Act, there shall be an office which

be known as the Trade Marks Office.

(2) There shall be a sub-office of the Trade Marks Office in each Sta

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(3) A document required or permitted by this Act to be lodged at the

Marks Office may be lodged at a sub-office of the Trade Marks Office an

reference in this Act to lodgment at the Trade Marks Office includes a

reference to lodgment at a sub-office of the Trade Marks Office.

TRADE MARKS ACT 1955 - SECT 13 Seal of Trade Marks Office

13. There shall be a seal of the Trade Marks Office and impressions o

seal shall be judicially noticed.

TRADE MARKS ACT 1955 - PART III PART III - THE REGISTER OF TRADE MARKS

TRADE MARKS ACT 1955 - SECT 14 Register of Trade Marks

14. (1) There shall be kept at the Trade Marks Office a Register of T

Marks, in which shall be entered:

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(a) particulars of registered trade marks; and

(b) such other matters as are prescribed.

(2) The Register shall be divided into 4 parts, which shall be known

A, Part B, Part C and Part D, respectively.

(3) Subject to the next succeeding subsection, the Register of Trade

existing at the commencement of this Act shall be incorporated with and

part of Part A of the Register under this Act.

(4) The Registrar shall transfer from Part A of the Register to Part

the Register marks registered as standardization trade marks under the

repealed Acts.

TRADE MARKS ACT 1955 - SECT 14A Register may be kept wholly or partly by computer

14A. (1) The Register may be kept wholly or partly by use of a comput

(2) If the Register is kept wholly or partly by use of a computer:

(a) references in this Act to an entry in the Register include refere

a record of particulars kept by use of the computer and comprising the

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(b) references in this Act to particulars being registered, or entere

the Register, include references to the keeping of a record of those

particulars as part of the Register by use of the computer; and

the Register include references to the amendment, alteration or rectifi

of the record of particulars kept by use of the computer and comprising

TRADE MARKS ACT 1955 - SECT 15 Trusts not to be noticed

15. Notice of a trust, expressed, implied or constructive, shall not

entered in the Register or be received by the Registrar.

TRADE MARKS ACT 1955 - SECT 16 Inspection of Register

16. (1) The Register shall be open to the inspection of the public at

convenient times.

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(2) If a record of particulars is kept by use of a computer, subsecti

is to be taken to be complied with, to the extent that the Register con

of those particulars, by giving members of the public access to a compu

terminal which they can use to inspect the particulars, either on a scr

in the form of a computer printout.

TRADE MARKS ACT 1955 - SECT 17 Register and certified copies to be evidence

17. (1) The Register is evidence of all matters required or authorize

this Act to be entered in the Register.

(1A) If the Register is wholly or partly kept by use of a computer, a

document signed by the Registrar and reproducing in writing all or any

particulars comprising the Register, or that part of it, is admissible

proceedings as prima facie evidence of those particulars so reproduced.

(2) The Registrar may, subject to this Act, supply copies of or extra

from the Register, or of or from a document or publication in the Trade

Office, certified by writing under his hand and the seal of the Trade M

Office and a copy or extract so certified and sealed is admissible in e

in all courts and proceedings without further proof or production of th

original.

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(3) The Registrar may, subject to this Act, certify, by writing under

hand and the seal of the Trade Marks Office:

(a) that an entry, matter or thing required by or under this Act or t

repealed Acts to be made or done, or not to be made or done, has, or ha

as the case may be, been made or done; or

(b) that a book, document or publication in the Trade Marks Office wa

available for public inspection in the Trade Marks Office on the date

specified in the certificate;

and such a certificate is evidence of the statements contained in the

certificate.

TRADE MARKS ACT 1955 - SECT 18 False entries in Register

18. A person shall not wilfully:

(a) make or cause to be made a false entry in the Register; or

(b) produce or tender in evidence a document falsely purporting to be

of or extract from an entry in the Register or of or from a document in

Trade Marks Office.

Penalty:

(a) in the case of a natural person - $5,000 or imprisonment for 2 ye

both; or

(b) in the case of a body corporate - $25,000.

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TRADE MARKS ACT 1955 - SECT 19 Correction of Register

19. (1) The Registrar may, on application by the registered proprieto

trade mark, amend or alter the Register by:

(a) correcting an error in the entry of a trade mark in the Register;

(b) entering a change in the name, address or description of the regi

proprietor;

(d) amending the specification of the goods or services in respect of

the trade mark is registered but so that the amendment does not in any

extend the rights given by the registration of the trade mark; or

(e) entering a disclaimer or memorandum relating to the trade mark wh

does not in any way extend the rights given by the registration of the

mark;

and may make any consequential amendment or alteration in the certifica

registration, and for that purpose may require the certificate of regis

to be produced to him.

(2) The Registrar may, on request made by a registered user of a trad

correct an error, or enter a change, in the name, address or descriptio

the registered user.

(3) An appeal lies to the Federal Court from a decision of the Regist

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under subsection (1) of this section.

TRADE MARKS ACT 1955 - SECT 20 Registration of assignment

20. (1) Where a person becomes entitled by assignment or transmission

registered trade mark, he shall make application to the Registrar to re

his title, and the Registrar shall, on receipt of the application and o

of title to his satisfaction, register that person as the proprietor of

trade mark in respect of the goods or services in respect of which the

assignment or transmission has effect and cause particulars of the assi

or transmission to be entered in the Register.

(2) An appeal lies to the Federal Court from a decision of the Regist

under the last preceding subsection.

(3) Except in the case of an appeal under this section or of an appli

under section 22, a document or instrument in respect of which no entry

been made in the Register in accordance with the provisions of subsecti

is not, unless the court otherwise directs, admissible in evidence in a

in proof of a title to a registered trade mark.

TRADE MARKS ACT 1955 - SECT 21

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Alteration of registered trade mark

21. (1) The registered proprietor of a trade mark may apply to the Re

for leave to alter the trade mark in a manner not substantially affecti

identity and the Registrar may refuse the leave or grant it on such ter

subject to such conditions and limitations as he thinks fit.

(2) The Registrar may cause an application under this section to be

advertised in the Official Journal where it appears to him that it is

desirable to do so.

(3) A person may, within the prescribed time, give notice to the Regi

of opposition to the application and shall serve a copy of the notice o

applicant.

(4) The Registrar shall, after hearing the parties, if desirous of be

heard, decide the matter.

(5) An appeal lies to the Federal Court from a decision of the Regist

under the last preceding subsection.

(6) Where leave is granted, notice of leave having been granted shall

advertised in the Official Journal and the advertisement shall include

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trade mark as altered unless the trade mark has already been advertised

form to which it has been altered in an advertisement under subsection

TRADE MARKS ACT 1955 - SECT 22 Rectification of Register

22. (1) Subject to this Act, a prescribed court may, on the applicati

person aggrieved or of the Registrar, order the rectification of the

(a) by the making of an entry wrongly omitted to be made in the Regis

(b) by the expunging or amendment of an entry wrongly made in or rema

in the Register;

the registration of a trade mark which ought to be inserted; or

(d) by the correction of an error or defect in the Register.

(2) On application to a prescribed court by a person aggrieved or by

Registrar, the prescribed court may make such order as it thinks fit fo

expunging or varying the registration of a trade mark, on the ground of

contravention of, or failure to observe, a condition or limitation ente

the Register in relation to the trade mark.

(3) The power to order the rectification of the Register conferred by

section includes power to order the removal of a registration in Part A

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(4) The Registrar shall not make application to a prescribed court un

this section unless he considers the application desirable in the publi

interest.

(5) Notice of an application to a prescribed court under this section

than an application by the Registrar) shall be given to the Registrar,

appear and be heard and shall appear if so directed by the prescribed c

(6) An office copy of an order under this section shall be served on

Registrar, who shall, upon receipt of the order, take such steps as are

necessary to give effect to the order.

TRADE MARKS ACT 1955 - SECT 23 Provisions as to non-use of trade mark

23. (1) Subject to this section and to section 93, a prescribed court

Registrar may, on application by a person aggrieved, order a trade mark

removed from the Register in respect of any of the goods or services in

respect of which it is registered, on the ground:

(a) that the trade mark was registered without an intention in good f

the part of the applicant for registration that it should be used in re

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to those goods or services by him or, if it was registered under subsec

(1) of section 45, by the body corporate or registered user concerned,

that there has, in fact, been no use in good faith of the trade mark in

relation to those goods or services by the registered proprietor or a

registered user of the trade mark for the time being earlier than 1 mon

before the application; or

(b) that, up to 1 month before the date of the application, a continu

period of not less than 3 years had elapsed during which the trade mark

registered trade mark and during which there was no use in good faith o

trade mark in relation to those goods or services by the registered pro

or a registered user of the trade mark for the time being.

(2) Except where an applicant has been permitted under section 34 to

respect of the goods or services to which the application relates, or t

prescribed court or the Registrar is of opinion that the applicant can

properly be permitted to register such a trade mark, a prescribed court

Registrar may refuse an application made under the last preceding subse

in relation to any goods or services if there has been, before the rele

date or during the relevant period, as the case may be, use in good fai

the trade mark by the registered proprietor or a registered user of the

mark for the time being in relation to goods or services in respect of

the trade mark is registered, being:

(a) where the application relates to goods - goods of the same descri

as those goods or services that are closely related to those goods; or

(b) where the application relates to services - services of the same

description as those services or goods that are closely related to thos

services.

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(3) Where, in relation to goods in respect of which a trade mark is

registered:

(a) the matters referred to in paragraph (b) of subsection (1) are sh

far as regards failure to use the trade mark in relation to goods to be

or otherwise traded in, in a particular place in Australia (otherwise t

export from Australia), or in relation to goods to be exported to a par

market outside Australia; and

(b) a person has been permitted under section 34 to register a substa

identical or deceptively similar trade mark in respect of those goods u

registration extending to use in relation to goods to be sold, or other

traded in, in that place (otherwise than for export from Australia), or

relation to goods to be exported to that market, or the prescribed cour

the Registrar is of opinion that that person might properly be permitte

a prescribed court or the Registrar may, on application by that person,

that the registration of the first-mentioned trade mark shall be subjec

such conditions or limitations as the prescribed court or the Registrar

proper for securing that that registration shall cease to extend to use

trade mark in relation to goods to be sold, or otherwise traded in, in

place (otherwise than for export from Australia), or in relation to goo

be exported to that market.

(3A) Where, in relation to services in respect of which a trade mark

registered:

(a) the matters referred to in paragraph (b) of subsection (1) are sh

far as regards failure to use the trade mark in relation to services pr

in a particular place in Australia; and

(b) a person has been permitted under section 34 to register a substa

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identical or deceptively similar trade mark in respect of those service

a registration extending to use in relation to services provided in tha

place, or the prescribed court or the Registrar is of the opinion that

person may properly be permitted to register such a trade mark;

a prescribed court or the Registrar may, on application by that person,

that the registration of the first-mentioned trade mark shall be subjec

such conditions or limitations as the prescribed court or the Registrar

proper for securing that that registration shall cease to extend to use

trade mark in relation to services provided in that place.

(4) An applicant is not entitled to rely, for the purposes of paragra

of subsection (1), or for the purposes of subsection (3) or (3A), on fa

to use a trade mark if the failure is shown to have been due to special

circumstances in the trade and not to an intention not to use or to aba

the trade mark in relation to the goods or services to which the applic

relates.

(5) Where proceedings concerning a trade mark are pending in a court,

application under this section shall not be made except to the prescrib

court.

(6) If the Registrar considers that an application made to him under

section ought to be decided by a prescribed court, he may refer the

application to a prescribed court and the prescribed court may hear and

determine the application as though it had been made to the prescribed

in the first instance.

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(7) An appeal lies to the Federal Court from an order or direction of

Registrar under this section.

(8) An application to a prescribed court under this section and an

application to the Registrar shall be made as prescribed by the regulat

(9) An office copy of an order of a prescribed court under this secti

shall be served on the Registrar who shall take such steps as are neces

give effect to the order.

TRADE MARKS ACT 1955 - PART IV PART IV - REGISTRABLE TRADE MARKS

TRADE MARKS ACT 1955 - SECT 24 Registrable trade marks - Part A

24. (1) A trade mark is registrable in Part A of the Register if it c

or consists of:

(a) the name of a person represented in a special or particular manne

(b) the signature of the applicant for registration or of some predec

in his business;

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(d) a word not having direct reference to the character or quality of

goods or services in respect of which registration is sought and not be

according to its ordinary meaning, a geographical name or a surname; or

(e) any other distinctive mark.

(2) A name, signature or word (not being a name, signature or word de

in paragraph (a), (b), (c) or (d) of the last preceding subsection) is

registrable in Part A of the Register unless it is, by evidence, shown

distinctive.

(3) A trade mark may be registered in Part A of the Register in respe

any goods or services notwithstanding the registration of the trade mar

a part or parts of the trade mark in Part B of the Register, in the nam

the same person, in respect of the same goods or services or other good

services.

TRADE MARKS ACT 1955 - SECT 25 Registrable trade marks - Part B

25. (1) A trade mark is registrable in Part B of the Register if it i

distinctive, or is not distinctive but is capable of becoming distincti

goods or services in respect of which registration of the trade mark is

and with which the applicant for registration is or may be connected in

course of trade.

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(2) A trade mark may be registered in Part B of the Register in respe

any goods or services notwithstanding the registration of the trade mar

a part or parts of the trade mark in Part A of the Register, in the nam

the same person, in respect of the same goods or services or other good

services.

TRADE MARKS ACT 1955 - SECT 26 Distinctiveness

26. (1) For the purposes of this Act, a trade mark is not distinctive

goods or services of a person unless it is adapted to distinguish goods

services with which that person is or may be connected in the course of

from goods or services in respect of which no such connexion subsists,

generally or, where the trade mark is sought to be registered, or is

registered, subject to conditions or limitations, in relation to use su

to those conditions or limitations.

(2) In determining whether a trade mark is distinctive, regard may be

the extent to which:

(a) the trade mark is inherently adapted so to distinguish; and

(b) by reason of the use of the trade mark or of any other circumstan

the trade mark does so distinguish.

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(3) Where:

(a) an application for registration of a trade mark has been made by

person;

(b) before the date of the application, the trade mark was used by a

other than the applicant under the control of, and with the consent and

authority of, the applicant;

the registration of that other person as a registered user of the trade

and

(d) the Registrar is satisfied that that other person is entitled to

registered as a registered user of the trade mark immediately after the

registration of the trade mark;

the Registrar may, for the purpose of determining whether the trade mar

distinctive of the goods or services of the applicant, treat use of the

mark by that other person as equivalent to use of the trade mark by the

applicant and may make an order that the trade mark is so distinctive.

(4) An appeal lies to the Federal Court from an order of the Registra

the last preceding subsection.

(5) Where an order is made under subsection (3) that the trade mark i

distinctive of the goods or services of the applicant, the registration

trade mark shall cease to have effect if, at the expiration of the pres

period or such further period, not exceeding 6 months, as the Registrar

allows, that other person has not become registered as the registered u

the trade mark.

TRADE MARKS ACT 1955 - SECT 27

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Trade marks in colour

27. (1) A trade mark may be limited in whole or in part to 1 or more

and, in that case, the fact that the trade mark is so limited shall be

into consideration for the purpose of determining whether the trade mar

distinctive.

(2) In so far as a trade mark is registered without limitation as to

it shall be deemed to be registered for all colours.

TRADE MARKS ACT 1955 - SECT 28 Scandalous and improper marks

28. A mark:

(a) the use of which would be likely to deceive or cause confusion;

(b) the use of which would be contrary to law;

(d) which would otherwise be not entitled to protection in a court of

justice;

shall not be registered as a trade mark.

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TRADE MARKS ACT 1955 - SECT 29 Registration may be refused of certain words etc. in trade marks

29. (1) The Registrar may refuse to accept an application for the

registration of a trade mark which contains or consists of any of the

following marks or a mark so nearly resembling any of those marks as to

likely to be taken for that mark:

(a) the word or words "Patent", "Patented", "By Royal Letters Patent"

"Registered", "Registered Design", "Copyright", "To counterfeit this is

forgery", or a word or words to the like effect;

(b) a representation of the Sovereign or of a member of the Royal Fam

(i) the Royal Arms, crests, armorial bearings, insignia or devices;

(ii) any of the Royal crowns; or

(iii) the national flag of a part of the Queen's dominions;

(d) the word "Royal" or any other word, or any letters or device, lik

lead persons to think that the applicant has or has had Royal or Govern

patronage or authority;

(e) a representation of the Arms, or of any flag or seal, of the

Commonwealth or of a State or Territory;

(f) a representation of the Arms or emblem of a city or town in Austr

of a public authority or public institution in Australia;

(g) a representation of a mark notified by the International Union fo

Protection of Industrial Property as not entitled to registration under

international arrangements; or

(h) a mark which is specified in the regulations as being, for the pu

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of this section, a prohibited mark.

(2) The regulations may provide that a mark in relation to which the

preceding subsection applies (not being a registered trade mark or a ma

use in good faith as a trade mark) shall not be used as a trade mark or

part of a trade mark, either at all or after a date specified in the

regulations.

TRADE MARKS ACT 1955 - SECT 30 Names etc. of living persons

30. (1) Where a person makes an application for registration of a tra

which consists of or includes the name or representation of a living pe

of a person believed by the Registrar to be living, the Registrar may r

the applicant to furnish him with the consent of that person to the nam

representation appearing on the trade mark before he proceeds with the

registration of the trade mark.

(2) Where a person makes an application for registration of a trade m

which consists of or includes the name or a representation of a person

recently dead, or of a person believed by the Registrar to be recently

the Registrar may require the applicant to furnish him with the consent

legal representative of the deceased person to the name or representati

appearing on the trade mark before he proceeds with the registration of

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trade mark.

(3) An appeal lies to the Federal Court from a decision of the Regist

under either of the last 2 preceding subsections.

TRADE MARKS ACT 1955 - SECT 31 Trade marks to be registered for particular goods or services

31. (1) A trade mark shall be registered in respect of any or all of

goods or services comprised in a prescribed class of goods or services.

(2) If a question arises as to the class in which goods or services a

comprised, that question shall be decided by the Registrar and the deci

the Registrar is not subject to appeal and shall not be called in quest

an appeal or other proceedings under this Act.

TRADE MARKS ACT 1955 - SECT 32 Disclaimers

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32. (1) If a trade mark:

(a) contains parts:

(i) which are not the subject of separate applications by the

proprietor for registration as trade marks; or

(ii) which are not separately registered by the proprietor as trade

marks; or

(b) contains matter which is common to the trade or is otherwise not

distinctive;

the Registrar or a prescribed court, in deciding whether the trade mark

be registered or shall remain upon the Register, may, in his or its

discretion, require as a condition that the proprietor shall disclaim a

right to the exclusive use of any of those parts, or of that matter, to

exclusive use of which the Registrar or the prescribed court holds the

proprietor not to be entitled or that the proprietor shall make such ot

disclaimer as the Registrar or the prescribed court considers to be pro

the purpose of defining the rights of the proprietor under the registra

(2) No such disclaimer affects the rights of the proprietor of the tr

mark which do not arise out of the registration of the trade mark.

TRADE MARKS ACT 1955 - SECT 33 Identical marks

33. (1) Subject to this Act, a trade mark is not capable of registrat

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a person in respect of goods if it is substantially identical with or

deceptively similar to a trade mark which is registered, or is the subj

an application for registration, by another person in respect of the sa

goods, of goods of the same description as those goods or of services t

closely related to those goods, unless the date of registration of the

first-mentioned trade mark is, or will be, earlier than the date of

registration of the second-mentioned trade mark.

(2) Subject to this Act, a trade mark is not capable of registration

person in respect of services if it is substantially identical with or

deceptively similar to a trade mark which is registered, or is the subj

an application for registration, by another person in respect of the sa

services, of services of the same description as those services, or of

that are closely related to those services, unless the date of registra

the first-mentioned trade mark is, or will be, earlier than the date of

registration of the second-mentioned trade mark.

(3) Where, in accordance with this section, a trade mark is not capab

registration by reason of the existence of another trade mark, the Regi

may defer acceptance of the application for registration of the

first-mentioned trade mark until the second-mentioned trade mark has be

registered.

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TRADE MARKS ACT 1955 - SECT 34 Concurrent use

34. (1) In case of honest concurrent use or of other special circumst

which, in the opinion of the Registrar, make it proper so to do, the Re

may permit the registration of trade marks which are substantially iden

or deceptively similar, or, but for the honest concurrent use or other

circumstances would be deceptively similar, for the same goods or servi

other goods or services, by more than 1 proprietor subject to such cond

and limitations (if any) as the Registrar imposes.

(2) Where a person has, by himself or his predecessors in business,

continuously used a trade mark before the use, or before the date of

registration, whichever is the earlier, of another registered trade mar

the registered proprietor of that other trade mark, by his predecessors

business or by a registered user of that other trade mark, the Registra

not refuse to register the first-mentioned trade mark by reason of the

registration of that other trade mark.

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TRADE MARKS ACT 1955 - SECT 35 Jointly owned trade marks

35. (1) Where the relations between 2 or more persons interested in a

mark are such that no 1 of them is entitled as between himself and the

or others to use the trade mark except:

(a) on behalf of both or all of them; or

(b) in relation to goods or services with which both or all of them a

connected in the course of trade;

those persons may be registered as joint proprietors of the trade mark,

this Act has effect in relation to any rights of those persons to the u

the trade mark as if those rights were rights of a single person.

(2) Subject to the last preceding subsection, nothing in this Act aut

the registration of 2 or more persons who use a trade mark independentl

propose so to use it, as joint proprietors of the trade mark.

TRADE MARKS ACT 1955 - SECT 36 Association of trade marks

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36. (1) Where a trade mark which is registered, or is the subject of

application for registration, in respect of any goods:

(a) is substantially identical with another trade mark which is regis

or is the subject of an application for registration, in the name of th

proprietor in respect of the same goods, of goods of the same descripti

those goods or of services that are closely related to those goods; or

(b) so nearly resembles such a trade mark as to be likely to deceive

cause confusion if used by a person other than the proprietor;

the Registrar may, at any time, require that the trade marks shall be e

in the Register as associated trade marks.

(1A) Where a trade mark which is registered, or is the subject of an

application for registration, in respect of any services:

(a) is substantially identical with another trade mark which is regis

or is the subject of an application for registration, in the name of th

proprietor in respect of the same services, of services of the same

description as those services, or of goods that are closely related to

services; or

(b) so nearly resembles such a trade mark as to be likely to deceive

cause confusion if used by a person other than the proprietor;

the Registrar may, at any time, require that the trade marks shall be e

in the Register as associated trade marks.

(2) On application made by the registered proprietor of 2 or more ass

trade marks, the Registrar may, if he is satisfied that there would be

likelihood of deception or confusion being caused, dissolve the associa

with respect to 1 or more of those trade marks and amend the Register

accordingly.

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(3) An appeal lies to the Federal Court from a decision of the Regist

under this section.

TRADE MARKS ACT 1955 - SECT 37 Assignment of associated trade marks

37. Associated trade marks are assignable or transmissible only as a

and not separately, but, subject to this Act, they shall for all other

purposes be deemed to have been registered as separate trade marks.

TRADE MARKS ACT 1955 - SECT 38 Use of trade marks whether associated or otherwise

38. (1) Where, under this Act, use of a trade mark is required to be

for any purpose, the Registrar or a prescribed court may, if and so far

or it thinks right, accept use of an associated registered trade mark o

the trade mark with additions or alterations not substantially affectin

identity of the trade mark, as an equivalent for the use required to be

proved.

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(2) The use of the whole of a registered trade mark shall, for the pu

of this Act, be deemed to be also a use of any registered trade mark, b

part thereof, registered in the name of the same proprietor.

TRADE MARKS ACT 1955 - SECT 39 Series of trade marks

39. (1) Where a person who claims to be the proprietor of several tra

marks for the same goods, for goods of the same description within a si

class, for the same services or for services of the same description wi

single class seeks to register those trade marks and the trade marks, a

they resemble each other in material particulars, differ in respect of:

(a) statements or representations as to the goods or services in resp

which the trade marks are used or proposed to be used;

(b) statements or representations as to number, price, quality or nam

places;

the identity of the trade marks; or

(d) colour;

or in respect of any 2 or more of those matters, the trade marks may be

registered as a series in 1 registration.

(2) All the trade marks in a series of trade marks so registered shal

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deemed to be, and shall be registered as, associated trade marks.

TRADE MARKS ACT 1955 - PART V PART V - APPLICATIONS FOR REGISTRATION

TRADE MARKS ACT 1955 - SECT 40 Application for registration

40. (1) A person who claims to be the proprietor of a trade mark may

application to the Registrar for the registration of that trade mark in

or Part B of the Register.

(2) The application:

(a) shall specify the goods or services in respect of which registrat

sought; and

(b) shall be lodged by being left at, or delivered by post to, the Tr

Marks Office.

(3) An application shall not be made in respect of goods or services

comprised in more than 1 class.

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TRADE MARKS ACT 1955 - SECT 40A Withdrawal of application

40A. (1) An application is to be treated as having been withdrawn if,

only if, the applicant lodges at the Trade Marks Office a written notic

withdrawal signed by the applicant.

(2) A written notice of withdrawal may be lodged by leaving it at, or

delivering it by post to, the Trade Marks Office.

TRADE MARKS ACT 1955 - SECT 41 Applications to be examined

41. An Examiner shall, in respect of each application, ascertain and

whether:

(a) the application is as prescribed; and

(b) the trade mark is capable of registration under this Act.

TRADE MARKS ACT 1955 - SECT 42 Action on Examiner's report

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42. (1) If the Examiner reports adversely to an application under the

preceding section, the applicant may amend the application so as to rem

grounds of objection and the amended application shall be again reporte

like manner as the original application.

(2) If the applicant does not amend the application to the satisfacti

the Registrar, the Registrar may direct that the application be amended

satisfaction within such time as the Registrar allows.

(3) An amendment shall not be made or directed under either of the la

preceding subsections if the amendment would substantially affect the i

of the trade mark before amendment.

(4) An appeal lies to the Federal Court from a direction of the Regis

under subsection (2).

TRADE MARKS ACT 1955 - SECT 43 Division of application

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43. (1) Where a part of a trade mark which is the subject of an appli

for registration is separately registrable as a trade mark, the applica

before the application has been accepted or refused, make a further

application for the registration of that part in respect of goods or se

in relation to which the first-mentioned application was made.

(2) A further application so made shall, if the Registrar so directs,

deemed to have been lodged on the date on which the first-mentioned

application was lodged.

(3) Where an application has been made for registration of a trade ma

respect of certain goods or services and, before the application has be

accepted or refused, the applicant has made a further application for t

registration of that trade mark in respect of goods or services include

the description of goods or services in respect of which the first-ment

application was made, the Registrar may direct that the further applica

shall be deemed to have been lodged on the date on which the first-ment

application was lodged.

(4) An appeal lies to the Federal Court from a direction of the Regis

under either of the last 2 preceding subsections.

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TRADE MARKS ACT 1955 - SECT 44 Acceptance of application

44. (1) If the Registrar is satisfied that there is no lawful ground

objection to an application, or that the grounds of objection to an

application have been removed, the Registrar shall accept the applicati

without conditions or limitations or subject to such conditions or limi

as he thinks fit; if he is not so satisfied, he may refuse to accept th

application.

(2) In the case of an application for registration of a trade mark in

of the Register, the Registrar may, with the consent of the applicant,

of refusing to accept the application, treat the application as an appl

for registration in Part B of the Register and deal with the applicatio

accordingly.

(3) Where, after the acceptance of an application for registration of

trade mark but before the registration of the trade mark, the Registrar

satisfied:

(a) that the application has been accepted in error; or

(b) that, in the special circumstances of the case, the trade mark sh

not be registered, or should be registered subject to conditions or

limitations, or to additional or different conditions or limitations;

the Registrar may withdraw the acceptance and proceed as if the applica

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had not been accepted.

TRADE MARKS ACT 1955 - SECT 45 Application may be accepted where trade mark is to be used by assigne registered user

45. (1) An application for the registration of a trade mark may be ac

and the trade mark may be registered, notwithstanding that the applican

not use or propose to use the trade mark:

(a) if the Registrar is satisfied that a body corporate is about to b

constituted and that the applicant intends to assign the trade mark to

body corporate with a view to the use by the body corporate of the trad

in relation to the goods or services in respect of which registration i

sought; or

(b) if an application has been made for the registration of a person

registered user of the trade mark and the Registrar is satisfied that t

proprietor intends the trade mark to be used by that person in relation

those goods or services and is also satisfied that that person will be

registered as a registered user of the trade mark immediately after

registration of the trade mark.

(2) Where a trade mark is registered under the last preceding subsect

the name of an applicant who relies on an intention to assign to a body

corporate, then, unless within such period as is prescribed or within s

further period, not exceeding 6 months, as the Registrar allows, the bo

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corporate has been registered as the proprietor of the trade mark in re

of the goods or services in respect of which the trade mark is register

registration shall cease to have effect at the expiration of that perio

the Registrar shall amend the Register accordingly.

TRADE MARKS ACT 1955 - SECT 46 Appeals

46. (1) An appeal lies to the Federal Court from a refusal by the Reg

to accept an application or from the acceptance by the Registrar of an

application subject to conditions or limitations.

(2) The Registrar is entitled to appear and be heard upon the hearing

appeal and shall appear if so directed by the Federal Court.

TRADE MARKS ACT 1955 - SECT 47 Advertisement of acceptance

47. Where an application has been accepted, the Registrar shall give

in writing of the acceptance to the applicant and shall advertise the

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acceptance in the Official Journal.

TRADE MARKS ACT 1955 - SECT 48 Limit of time for proceeding with application

48. (1) Subject to this section, where an application has not been ac

within 12 months after the date on which the first report of the Examin

sent to the applicant, the Registrar shall give notice of the non-accep

to the applicant and if, at the expiration of 1 month from the date of

notice or at the expiration of such further time as the Registrar allow

application has not been accepted, the application shall lapse.

(2) Where, in respect of an application, an appeal under any provisio

this Act has been instituted or an application has been made to the

Administrative Appeals Tribunal for a review of a decision, the Registr

shall not give notice of the non-acceptance of the first-mentioned appl

until the expiration of 3 months after the determination or other dispo

the appeal or review or until the expiration of such further time as th

to which the appeal, or any further appeal, is brought, or the Administ

Appeals Tribunal, or the court to which any appeal arising out of the d

of the Administrative Appeals Tribunal, is brought, as the case may be,

allows.

(3) Where:

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(a) the time within which an appeal, or an application to the Adminis

Appeals Tribunal, mentioned in subsection (2) may be instituted or made

not expired; or

(b) the applicant has died;

the Registrar shall not give notice of the non-acceptance of the applic

for the registration of a trade mark until such time as he determines.

(4) Where acceptance of an application has been deferred under subsec

(2) of section 33, the Registrar shall not give notice of the non-accep

of the application until the expiration of 3 months after the registrat

the second-mentioned trade mark referred to in that subsection.

TRADE MARKS ACT 1955 - PART VI PART VI - OPPOSITION TO REGISTRATION

TRADE MARKS ACT 1955 - SECT 49 Notice of opposition

49. (1) A person may, within 3 months after the date of the advertise

the acceptance of an application, or within such further period, not ex

3 months, as the Registrar, on application made to him within the

first-mentioned period, allows, by notice in writing specifying the gro

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opposition and lodged at the Trade Marks Office, oppose the registratio

the trade mark.

(2) The opponent shall serve a copy of the notice on the applicant.

TRADE MARKS ACT 1955 - SECT 50 Hearing of opposition

50. (1) The Registrar shall, after giving to the applicant and the op

an opportunity of being heard, decide:

(a) to refuse to register the trade mark;

(b) to register the trade mark subject to such conditions or limitati

he thinks fit; or

(2) In determining the opposition the Registrar may take into account

ground of objection whether relied upon by the opponent or not.

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TRADE MARKS ACT 1955 - SECT 51 Appeal to a prescribed court

51. The applicant or an opponent may appeal to the Federal Court from

decision of the Registrar under the last preceding section.

TRADE MARKS ACT 1955 - SECT 52 Security for costs

52. If a person giving notice of opposition neither resides nor carri

business in Australia, the Registrar may order him to give security for

within a specified time and, if the order is not complied with, the opp

shall lapse.

TRADE MARKS ACT 1955 - PART VII PART VII - REGISTRATION AND EFFECT OF REGISTRATION

TRADE MARKS ACT 1955 - SECT 53 Registration of trade mark

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53. (1) If there is no opposition to the registration of a trade mark

in the case of opposition, if the Registrar's decision, or the decision

appeal from that decision, is that the trade mark should be registered,

Registrar shall register the trade mark, in the name of the proprietor,

appropriate part of the Register.

(2) Subject to this Act, a trade mark shall be registered as of the d

the lodging of the application for registration and that date shall be

for the purposes of this Act to be the date of registration.

TRADE MARKS ACT 1955 - SECT 54 Time for registration

54. (1) Subject to this section, a trade mark shall not be registered

12 months from the date of the advertisement of the acceptance of the

application.

(2) Where the Registrar has allowed an extension of time within which

of opposition to the registration of a trade mark may be given and noti

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opposition has not been given, an extension of time for the same period

the aggregate of the periods, if more than 1, after the period of 12 mo

referred to in the last preceding subsection shall be allowed for the

registration of the trade mark.

(3) Where the registration of a trade mark is delayed by:

(a) opposition to the registration of the trade mark;

(b) proceedings in a court; or

that trade mark may be registered within such time as:

(d) in a case to which paragraph (a) applies - the Registrar directs;

(e) in a case to which paragraph (b) applies - the court or, if the

proceedings are discontinued, the Registrar directs; or

(f) in a case to which paragraph (c) applies - the Tribunal or a cour

which an appeal arising out of the decision of the Tribunal is brought,

directs, or, if the proceedings before the Tribunal are, or any such ap

is, discontinued, as the Registrar directs.

(4) Where the applicant dies before the expiration of the time which

otherwise be allowed for registering a trade mark, the trade mark may b

registered at any time within 12 months after his death or within such

period as the Registrar directs.

(5) Where a trade mark cannot be registered within the time allowed b

under this section, that time may, on application made to the Registrar

the prescribed time, but subject to the regulations, be extended for su

further time as is prescribed.

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(6) Where a trade mark has not been registered within the time which

applicable to it under this section the application shall lapse.

TRADE MARKS ACT 1955 - SECT 55 Duration of registration

55. (1) Subject to the next succeeding subsection, the registration o

trade mark as of a date after the commencement of this Act shall be for

period of 7 years.

(2) The registration of a trade mark as of a date before the commence

this Act shall be for a period of 14 years.

(3) The registration of a trade mark may be renewed from time to time

accordance with Part VIII.

TRADE MARKS ACT 1955 - SECT 56 Words used as name or description of an article or substance

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56. (1) Subject to this section, the registration of a trade mark doe

become invalid by reason only of the use, after the date of the registr

of a word or words which the trade mark contains, or of which it consis

the name or description of an article, substance or service.

(2) The succeeding subsections have effect where:

(a) there is a well-known and established use of a word as the name o

description of an article, substance or service by a person or persons

carrying on a trade in that article, substance or service, not being us

relation to goods or services connected in the course of trade with the

proprietor or a registered user of the trade mark or, in the case of a

certification trade mark, in relation to goods or services certified by

proprietor; or

(b) the article or substance was formerly manufactured under a patent

service formerly provided was a patented process, as the case requires,

period of 2 years or more after the patent has ceased has elapsed, and

word is the only practicable name or description of the article, substa

service.

(3) If the trade mark consists solely of that word, the registration

trade mark, so far as regards registration in respect of the article or

substance or of any goods of the same description, or of the services o

any services of the same description, as the case requires, shall be de

for the purposes of section 22 to be an entry wrongly remaining in the

(4) If the trade mark contains that word and other matter, a prescrib

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court, in deciding whether the trade mark shall remain in the Register,

as regards registration in respect of the article or substance or of an

of the same description, or of the services or of any services of the s

description, may, in the case of a decision in favour of the trade mark

remaining in the Register, require as a condition that the proprietor s

disclaim any right to the exclusive use of that word in relation to tha

article or substance or to any goods of the same description, or to the

services or to any service of the same description, as the case may be,

such disclaimer affects any rights of the proprietor of the trade mark

such as arise out of the registration of the trade mark in respect of w

the disclaimer is made.

(5) For the purposes of any other legal proceedings relating to the t

mark:

(a) if the trade mark consists solely of that word, all rights of the

registered proprietor to the exclusive use of the trade mark; or

(b) if the trade mark contains that word and other matter, all rights

registered proprietor to the exclusive use of that word;

in relation to the article or substance or to any goods of the same

description, or to the service or to any services of the same descripti

the case requires, shall be deemed to have ceased on the date at which

mentioned in paragraph (a) of subsection (2) first became well-known an

established, or at the expiration of the period of 2 years mentioned in

paragraph (b) of that subsection.

TRADE MARKS ACT 1955 - SECT 57 Powers of registered proprietor

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57. (1) Subject to this Act, the registered proprietor of a trade mar

subject to any rights appearing from the Register to be vested in some

person, power to assign the trade mark and to give good discharges for

consideration for the assignment.

(2) Equities in respect of a trade mark may be enforced in like manne

respect of other personal property.

TRADE MARKS ACT 1955 - SECT 58 Rights given by registration

58. (1) Subject to this Act, the registration of a trade mark in Part

Part B of the Register, if valid, gives to the registered proprietor of

trade mark the right to the exclusive use of the trade mark in relation

goods or services in respect of which the trade mark is registered and

obtain relief in respect of infringement of the trade mark in the manne

provided by this Act.

(2) The rights acquired by the registration of a trade mark are subje

any conditions or limitations to which the registration is subject.

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(3) Where 2 or more persons are proprietors of registered trade marks

are substantially identical or deceptively similar, whether for the sam

or services or other goods or services, rights of exclusive use of eith

those trade marks are not (except so far as their respective rights hav

defined by the Registrar or a prescribed court) acquired by any 1 of th

persons as against any other of those persons by registration of the tr

marks but each of those persons has otherwise the same rights as agains

persons (not being registered users) as he would have if he were the so

registered proprietor.

TRADE MARKS ACT 1955 - SECT 59 Registration evidence of validity

59. In legal proceedings relating to a registered trade mark (includi

applications under section 22), the original registration of the trade

and the registration of any assignment or transmission of the trade mar

be deemed to be valid unless the contrary is shown.

TRADE MARKS ACT 1955 - SECT 60 Limitation on removal of trade mark after 3 years

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60. In legal proceedings relating to a trade mark registered in Part

the Register (including applications under section 22) instituted after

expiration of 3 years from the date of registration, the trade mark sha

be removed from the Register or be held invalid on the ground that it w

a registrable trade mark under section 24, unless it is proved that it

not, at the commencement of the proceedings, distinctive of the goods o

services of the registered proprietor.

TRADE MARKS ACT 1955 - SECT 61 Registration conclusive after 7 years

61. (1) In legal proceedings relating to a trade mark registered in P

of the Register (including applications under section 22), the original

registration of the trade mark under this Act shall, after the expirati

years from the date of the original registration, be taken to be valid

respects, unless it is shown:

(a) that the original registration was obtained by fraud;

(b) that the trade mark offends against the provisions of section 28;

distinctive of the goods or services of the registered proprietor.

(2) Paragraph (c) of the last preceding subsection does not apply to

mark registered before the commencement of this Act until after the exp

of 3 years from the commencement of this Act.

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TRADE MARKS ACT 1955 - SECT 62 Infringement of trade marks

62. (1) A registered trade mark is infringed by a person who, not bei

registered proprietor of the trade mark or a registered user of the tra

using by way of permitted use, uses a mark which is substantially ident

with, or deceptively similar to, the trade mark, in the course of trade

relation to goods or services in respect of which the trade mark is

registered.

(2) In an action for infringement of a trade mark registered in Part

the Register (not being an infringement occurring by reason of an act r

to in the next succeeding section), an injunction or other relief shall

granted to the plaintiff if the defendant establishes to the satisfacti

the court that the use of the mark of which the plaintiff complains is

likely to deceive or cause confusion or to be taken as indicating a con

in the course of trade between the goods or services in respect of whic

trade mark is registered and a person having the right, either as regis

proprietor or as registered user, to use the trade mark.

TRADE MARKS ACT 1955 - SECT 63 Infringement of trade mark by breach of certain restrictions

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63. (1) Where, by notice upon goods or upon the container of goods, t

registered proprietor or a registered user of a trade mark registered i

A or Part B of the Register makes a statement prohibiting the doing of

to which this section applies, a person who, being the owner for the ti

being of the goods, does that act, or authorizes it to be done in relat

the goods in the course of trade or with a view to a dealing with the g

the course of trade, infringes the trade mark unless:

(a) at the time when that person agreed to buy the goods he acted in

faith without notice that the statement appeared on the goods; or

(b) he became the owner of the goods by virtue of a title derived fro

another person who had so agreed to buy the goods.

(2) The acts to which this section applies are:

(a) the application of the trade mark upon goods after they have suff

alteration to their state, condition, get-up or packing;

(b) in a case in which the trade mark is upon the goods, the alterati

partial removal or partial obliteration of the trade mark;

other matter upon the goods, being matter indicating a connexion in the

of trade between the proprietor or registered user and the goods, the r

or obliteration, whether wholly or partially, of the trade mark unless

other matter is wholly removed or obliterated;

(d) in a case in which the trade mark is upon the goods, the applicat

some other trade mark to the goods; and

(e) in a case in which the trade mark is upon the goods, the addition

goods of other matter, in writing or otherwise, that is likely to injur

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reputation of the trade mark.

(3) In this section, references, in relation to goods, to the registe

proprietor, to a registered user and to the registration of a trade mar

be construed, respectively, as references to the registered proprietor

trade mark, to a registered user of the trade mark and to the registrat

the trade mark, in respect of those goods, and the expression "upon" in

in relation to goods, a reference to physical relation to the goods.

TRADE MARKS ACT 1955 - SECT 64 Acts not constituting infringement

64. (1) Notwithstanding anything contained in this Act, the following

do not constitute an infringement of a trade mark:

(a) the use in good faith by a person of his own name or the name of

place of business or the name, or the name of the place of business, of

his predecessors in business;

(b) the use in good faith by a person of a description of the charact

quality of his goods or services;

relation to which that person has, by himself or his predecessors in bu

continuously used the trade mark from a date before:

(i) the use of the registered trade mark by the registered propriet

by his predecessors in business or by a registered user of the trade ma

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(ii) the registration of the trade mark;

whichever is the earlier;

(d) the use of the trade mark by a person in relation to goods or ser

adapted to form part of, or to be accessory to, other goods or services

relation to which the trade mark has been used without infringement or

for the time being be so used, if the use of the trade mark is reasonab

necessary in order to indicate that the goods or services are so adapte

neither the purpose nor the effect of the use of the trade mark is to

indicate, otherwise than in accordance with the facts, a connexion in t

course of trade between any person and the goods or services; and

(e) the use of a trade mark, being one of 2 or more registered trade

which are substantially identical, in exercise of the right to the use

trade mark given by registration as provided by this Act.

(2) Where a trade mark is registered subject to conditions or limitat

the trade mark is not infringed by the use of the trade mark in any man

relation to goods to be sold or otherwise traded in in a place, in rela

goods to be exported to a market, in relation to services to be provide

place, or in any other circumstances, to which, having regard to those

conditions or limitations, the registration does not extend.

TRADE MARKS ACT 1955 - SECT 65 Relief in infringement actions

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65. The relief which a court may grant in an action or proceeding for

infringement of a registered trade mark includes an injunction (subject

such terms, if any, as the court thinks fit) and, except in the case of

trade mark registered in Part C of the Register, at the option of the

plaintiff, either damages or an account of profits.

TRADE MARKS ACT 1955 - SECT 66 Evidence of trade usage

66. In an action or proceeding relating to a trade mark, evidence is

admissible of the usages of the trade concerned and of any relevant tra

mark, trade name or get-up legitimately used by other persons.

TRADE MARKS ACT 1955 - SECT 67 Action or proceeding may be instituted in prescribed court

67. An action or proceeding for infringement of a trade mark may be

instituted in a prescribed court, but nothing in this section prevents

action or proceeding being instituted in a court that is not a prescrib

court.

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TRADE MARKS ACT 1955 - SECT 68 Passing off actions

68. In an action for passing off arising out of the use by the defend

a registered trade mark of which he is the registered proprietor or a

registered user, being a trade mark substantially identical with, or

deceptively similar to, the trade mark of the plaintiff, damages shall

awarded against the defendant if he satisfies the court:

(a) that at the time he commenced to use the trade mark he was unawar

had no reasonable means of ascertaining that the trade mark of the plai

was in use; and

(b) that when he became aware of the existence and nature of the plai

trade mark he forthwith ceased to use the trade mark in relation to goo

services in relation to which it was used by the plaintiff.

TRADE MARKS ACT 1955 - PART VIII PART VIII - RENEWAL OF REGISTRATION

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TRADE MARKS ACT 1955 - SECT 69 Renewal of registration

69. The Registrar shall, on application made by the registered propri

a trade mark within the prescribed period, renew the registration of th

mark for a period of 14 years from the expiration of the last registrat

the trade mark.

TRADE MARKS ACT 1955 - SECT 70 Procedure on expiry of period of registration

70. (1) At the prescribed time before the expiration of the last

registration of a trade mark, the Registrar shall send notice to the

registered proprietor or his agent in Australia of the date at which th

existing registration will expire and the conditions as to payment of f

otherwise upon which a renewal of the registration may be obtained.

(2) If, at the expiration of the time prescribed in that behalf, thos

conditions have not been complied with, the Registrar may remove the tr

mark from the Register.

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TRADE MARKS ACT 1955 - SECT 71 Restoration of trade mark removed for non-payment of renewal fee

71. (1) Where a trade mark has been removed from the Register for

non-payment of the prescribed fee, the Registrar may, within 12 months

the date of expiration of the registration of the trade mark, if satisf

that it is just so to do, restore the trade mark to the Register, and r

the registration of the trade mark, either generally or subject to such

conditions or limitations as he sees fit to impose, for a period of 14

from the expiration of the last registration.

(3) Section 130 does not apply in relation to subsection (1).

TRADE MARKS ACT 1955 - SECT 72 Status of un-renewed trade mark

72. Where a trade mark has been removed from the Register for non-pay

the fee for renewal, the trade mark shall, for the purpose of an applic

for registration by another person lodged not later than 12 months next

the expiration of the last registration, be deemed to be a trade mark w

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already registered, unless it is shown to the satisfaction of the Regis

that:

(a) there has been no use in good faith of the trade mark during the

immediately preceding the expiration of the last registration; or

(b) no deception or confusion would be likely to arise from the use o

trade mark which is the subject of the application for registration by

of any previous use of the trade mark which has been removed.

TRADE MARKS ACT 1955 - PART IX PART IX - REGISTERED USERS

TRADE MARKS ACT 1955 - SECT 73 Application of Part

73. This Part applies only in relation to trade marks registered in P

or Part B of the Register.

TRADE MARKS ACT 1955 - SECT 74 Registered users

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74. (1) Subject to this section, a person other than the registered

proprietor of a trade mark may be registered as a registered user of th

trade mark for all or any of the goods or services in respect of which

trade mark is registered.

(2) Where it is proposed that a person shall be registered as a regis

user of a trade mark, the registered proprietor and the proposed regist

user shall apply in writing to the Registrar and shall furnish him with

statutory declaration made by the registered proprietor, or by some per

authorized to act on his behalf and approved by the Registrar:

(a) giving particulars of the relationship, existing or proposed, bet

the registered proprietor and the proposed registered user, including

particulars showing the degree of control by the registered proprietor

the permitted use which their relationship will confer and whether it i

term of their relationship that the proposed registered user will be th

registered user or that there will be any other restriction as to perso

whose registration as registered users application may be made;

(b) stating the goods or services for which registration is proposed;

characteristics of the goods or services, to the mode or place of permi

use or to any other matter; and

(d) stating whether the permitted use is to be for a period or withou

of period, and, if for a period, the duration of the period;

and with such further documents, information or evidence as is required

the regulations or by the Registrar.

(3) Where the requirements of the last preceding subsection have been

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complied with and the Registrar, after considering the documents, infor

and evidence furnished to him under that subsection, is satisfied that,

the circumstances, the use of the trade mark in relation to the propose

or services or any of them by the proposed registered user, subject to

conditions or restrictions which the Registrar thinks appropriate, woul

be contrary to the public interest, the Registrar may register the prop

registered user as a registered user for the goods or services as to wh

is so satisfied, subject to those conditions or restrictions.

(4) The Registrar shall not register a person as a registered user of

trade mark if it appears to him that the registration would tend to fac

trafficking in the trade mark.

(5) The Registrar may determine that the registration of a person as

registered user of a trade mark shall be for such period as, having reg

the information referred to in paragraph (d) of subsection (2), the Reg

thinks fit.

(6) The Registrar may determine that the period of the registration o

person as a registered user of a trade mark shall commence on the date

which the application by that person for registration as a registered u

made.

(7) The Registrar shall, if so required by an applicant under subsect

ensure that any document, information or evidence furnished for the pur

that application (other than matter entered in the Register) is not dis

to any other person except by order of a prescribed court.

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TRADE MARKS ACT 1955 - SECT 75 Variation etc. of registration

75. Without affecting the operation of section 22, the registration o

person as a registered user:

(a) may be varied by the Registrar, on the application in writing of

registered proprietor, with respect to the goods or services for which,

with respect to any conditions or restrictions subject to which, the

registration has effect;

(b) may be extended by the Registrar, on the application in writing o

registered proprietor, for such period as the Registrar thinks fit;

proprietor or of the registered user or of any other registered user of

trade mark; or

(d) may be cancelled by the Registrar on the application of a person

ground:

(i) that the registered user has used the trade mark otherwise than

way of the permitted use, or in such a way as to cause, or to be likely

cause, deception or confusion;

(ii) that the registered proprietor or the registered user

misrepresented, or failed to disclose, some fact material to the applic

for the registration or that the circumstances have materially changed

the date of the registration; or

(iii) that the registration ought not to have been effected having

regard to rights vested in the applicant by virtue of a contract in the

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performance of which he is interested.

TRADE MARKS ACT 1955 - SECT 76 Cancellation of registration

76. The Registrar may at any time cancel the registration of a person

registered user of a trade mark for any goods or services in respect of

the trade mark is no longer registered.

TRADE MARKS ACT 1955 - SECT 77 Effect of permitted user

77. (1) The permitted use of a registered trade mark shall be deemed

use by the registered proprietor of the trade mark and shall be deemed

be use by a person other than the registered proprietor, for the purpos

section 23 and for any other purpose for which use by the registered

proprietor of the trade mark is material under this Act.

(2) Where:

(a) a person is registered as a registered user of a trade mark;

(b) there has been previous use (whether before or after the commence

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this Act) of the trade mark by that person; and

person is registered and, where he is registered subject to conditions

restrictions:

(i) that use complied substantially with those conditions or

restrictions; or

(ii) did not so comply but was not such as to be contrary to the

public interest;

the last preceding subsection has effect as if that previous use had be

permitted use.

(3) Neither the registration of a person as a registered user of a tr

mark, nor the use by that person of the trade mark as a registered user

prejudices any of the rights arising at common law of the person who is

registered proprietor of the trade mark.

(4) For the purpose of determining the rights arising at common law o

person who is the registered proprietor of a trade mark, the use of the

mark by a registered user shall be deemed to be use by that person and

be deemed not to be use by a person other than that person.

TRADE MARKS ACT 1955 - SECT 78 Infringement proceedings

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78. (1) Subject to any agreement subsisting between the registered us

trade mark and the registered proprietor of the trade mark, the registe

user is entitled to call upon the registered proprietor to take proceed

for infringement of the trade mark, and, if the registered proprietor r

or neglects to do so within 2 months after being so called upon, the

registered user may institute proceedings for infringement in his own n

if he were the registered proprietor and shall make the registered prop

a defendant.

(2) A registered proprietor so added as a defendant is not liable for

unless he enters an appearance and takes part in the proceedings.

TRADE MARKS ACT 1955 - SECT 79 Rights of registered user not assignable

79. This Part does not confer on the registered user of a trade mark

assignable or transmissible right to the use of that trade mark.

TRADE MARKS ACT 1955 - SECT 80 Hearing by Registrar

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80. The Registrar shall not exercise a discretionary power under this

adversely to a person without, if so required, giving to each person wh

be affected by the exercise of the power an opportunity of being heard.

TRADE MARKS ACT 1955 - SECT 81 Appeals

81. An appeal lies to the Federal Court from a decision of the Regist

under this Part.

TRADE MARKS ACT 1955 - PART X PART X - ASSIGNMENT OF TRADE MARKS

TRADE MARKS ACT 1955 - SECT 82 Assignment and transmission of trade marks

82. (1) Subject to this section, a registered trade mark may be assig

transmitted with or without the goodwill of the business concerned in t

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goods or services in respect of which the trade mark is registered or o

of those goods or services.

(2) Subject to the next 3 succeeding subsections, an assignment of a

registered trade mark without goodwill, whether before or after the

commencement of this Act, is invalid if:

(a) the trade mark was not at any time in use in good faith in Austra

the assignor or his predecessor in title; or

(b) a substantially identical or deceptively similar trade mark conti

be used by the assignor, after the assignment, in relation to other goo

services, where there exists a connexion in the course of trade between

goods or services and the assignor and where those goods or services ar

the same description as those in respect of which the trade mark has be

assigned, or of such a description that the public is likely to be dece

the use of the trade mark by the assignor and assignee upon their respe

goods or services.

(3) Paragraph (a) of the last preceding subsection does not apply whe

(a) the trade mark was registered with the intention that it should b

assigned to a body corporate to be formed and the trade mark has been s

assigned; or

(b) the trade mark was registered with the intention that a person sh

permitted to use it as a registered user and a registered user has been

registered in respect of the trade mark within 6 months after the regis

of the trade mark and has used the trade mark within that period.

(4) An assignment of a trade mark is not invalid if, at the date of t

institution of the proceedings in which the validity of the assignment

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called in question, the trade mark has come to denote to the public a

connexion in the course of trade between the goods or services and the

assignee to the exclusion of all other persons, or, if the registration

limited to a territory, to the exclusion of all other persons within th

territory.

(5) An assignment of a trade mark shall not be held to be invalid exc

proceedings instituted within 3 years after the registration of the

assignment.

(6) If goods bearing a registered trade mark are purchased or acquire

person, the sale of or other dealing in those goods by that person, or

person claiming under or through him, is not an infringement of the tra

by reason only of the trade mark having been assigned by the registered

proprietor to some other person after the purchase or acquisition of th

goods.

(7) All rights subsisting in a trade mark (being a registered trade m

whether under this Act or otherwise, shall be deemed to be assigned upo

registration of the assignment of the trade mark.

TRADE MARKS ACT 1955 - PART XI PART XI - CERTIFICATION TRADE MARKS

TRADE MARKS ACT 1955 - SECT 83

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Certification trade marks

83. (1) Where a mark is adapted in relation to goods or services to

distinguish in the course of trade goods or services, as the case may b

certified by a person, or by another person authorized by the first-men

person, in respect of quality, accuracy, or other characteristic, inclu

the case of goods, origin, material or mode of manufacture, from goods

services, as the case may be, not so certified, the mark may, upon the

application of the first-mentioned person, be registered in Part C of t

mark in respect of those goods or services.

(2) A mark is not so registrable upon the application of a person who

carries on a trade in goods of the kind certified or a trade of the pro

of services of the kind certified.

(3) In determining whether a mark is adapted so to distinguish in rel

to goods or services, regard may be had to the extent to which:

(a) the mark is inherently adapted so to distinguish; and

(b) by reason of the use of the mark or of any other circumstances, t

has become adapted so to distinguish.

TRADE MARKS ACT 1955 - SECT 84 Rights given by registration

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84. (1) Subject to this Act, the registration of a certification trad

in Part C of the Register, if valid, gives to the registered proprietor

right to the exclusive use of the mark in relation to the goods or serv

respect of which the mark is registered and to obtain relief in respect

infringement of the mark in the manner provided by this Act.

(2) The right to the exclusive use of a certification trade mark give

registration is subject to any conditions or limitations entered in the

be sold or otherwise traded in in a place, in relation to goods to be e

to a market, in relation to services to be provided in a place, or in a

other circumstances, to which, having regard to those conditions or

limitations, the registration does not extend.

(3) The right to the exclusive use of a certification trade mark give

registration is not infringed by the use of the mark by a person in rel

to goods or services certified by the registered proprietor of the

certification trade mark if:

(a) in the case of goods, as to those goods or a bulk of which they f

part, the registered proprietor, or another person in accordance with h

authority under the rules governing the use of the mark, has applied th

and has not subsequently removed or obliterated it; or

(b) the registered proprietor has expressly or impliedly consented to

use of the mark.

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(4) The last preceding subsection does not have effect in the case of

consisting of the application of a certification trade mark to goods or

services, notwithstanding that they are such goods or services as are

mentioned in that subsection, if the application of the mark is contrar

the rules governing the use of the mark.

TRADE MARKS ACT 1955 - SECT 85 Rules governing the use of certification trade marks

85. (1) An application for the registration of a mark as a certificat

trade mark under this Part shall be accompanied by draft rules for gove

the use of the mark.

(2) The rules shall include provisions as to the cases in which the g

services are to be certified and use of the certification trade mark

authorized and may contain any other provisions which the Registrar req

or permits to be inserted in the rules (including provisions referring

right of appeal to the Registrar against a refusal to certify goods or

services or to authorize the use of the mark in accordance with the rul

TRADE MARKS ACT 1955 - SECT 86 Matters to be considered before acceptance

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86. (1) Before accepting an application under this Part, the Registra

consider:

(a) whether the applicant or person authorized by him is competent to

certify the goods or services in respect of which the mark is to be

registered;

(b) whether the draft rules are satisfactory; and

(2) Before accepting the application, the Registrar may require the

applicant to make such amendments or modifications of the draft rules a

thinks proper.

(3) An appeal lies to the Federal Court from a decision of the Regist

under the last preceding subsection.

TRADE MARKS ACT 1955 - SECT 87 Alteration of rules

87. (1) The rules governing the use of a certification trade mark may

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the application of the registered proprietor, be altered by the Registr

(2) An application under the last preceding subsection shall be adver

as prescribed and is subject to opposition as prescribed.

TRADE MARKS ACT 1955 - SECT 88 Rectification of Register

88. (1) The power to order the rectification of the Register conferre

section 22 extends, in relation to a certification trade mark, to

rectification on the ground:

(a) that the registered proprietor or person authorized by him is no

competent, in relation to any of the goods or services in respect of wh

mark is registered, to certify those goods or services;

(b) that it is no longer to the public advantage that the mark should

registered as a certification trade mark;

rules governing the use of the mark which he is required to observe; or

(d) that it is necessary, for the public advantage, that if the mark

registered as a certification trade mark, the rules governing the use o

mark should be varied.

(2) A prescribed court may, on the application of a person aggrieved

the Registrar, make such order as it thinks fit for varying the rules

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governing the use of a certification trade mark.

(3) Notice of an application to a prescribed court under this section

than an application by the Registrar) shall be given to the Registrar,

appear and be heard and shall appear if so directed by the prescribed c

(4) An office copy of an order under this section shall be served on

Registrar, who shall, upon receipt of the order, take such steps as are

necessary to give effect to the order.

TRADE MARKS ACT 1955 - SECT 89 Certification trade marks not assignable

89. A certification trade mark may be assigned or transmitted with th

consent of the Registrar.

TRADE MARKS ACT 1955 - SECT 90 Transitional provisions

90. (1) The repealed Acts apply, notwithstanding their repeal, to and

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relation to applications for the registration of standardization trade

made before the commencement of this Act.

(2) A mark registered on such an application shall be registered as a

certification trade mark in Part C of the Register and this Act applies

in relation to a certification trade mark so registered.

(3) The Registrar may require an applicant under an application refer

in subsection (1) to lodge at the Trade Marks Office such rules as the

Registrar permits or requires governing the use of the mark.

(4) Marks which, immediately before the commencement of this Act, wer

registered under the repealed Acts as standardization trade marks shall

deemed to be registered as certification trade marks in Part C of the

(5) The registered proprietor of such a mark may lodge, or may be req

by the Registrar as a condition of the continuance of the registration

lodge, at the Trade Marks Office such rules as the Registrar permits or

requires governing the use of the mark.

(6) Where no rules have been lodged at the Trade Marks Office in resp

a certification trade mark registered under this section, this Part has

in relation to that mark as if references in this Part to rules had bee

omitted.

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TRADE MARKS ACT 1955 - SECT 91 Rules to be open for inspection

91. Rules governing the use of certification trade marks shall be ope

inspection in like manner as the Register.

TRADE MARKS ACT 1955 - SECT 92 Application of Act to certification trade mark

92. The provisions of this Act (other than sections 23, 24, 25, 26, 3

and 38, subsection (1) of section 40, sections 45, 58, 60 and 61, subse

(2) of section 62, section 63 and Parts IX, X and XII) apply in relatio

the registration of a mark as a certification trade mark under this Par

to a mark registered as a certification trade mark.

TRADE MARKS ACT 1955 - PART XII PART XII - DEFENSIVE TRADE MARKS

TRADE MARKS ACT 1955 - SECT 93

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Defensive registration of well-known trade marks

93. (1) Where a trade mark registered in Part A of the Register has b

used to such an extent in relation to all or any of the goods or servic

respect of which it is registered that the use of the trade mark in rel

to other goods or services would be likely to be taken as indicating a

connexion between those other goods or services and the registered prop

the trade mark may, upon the application of the registered proprietor o

trade mark, be registered as a defensive trade mark in Part D of the Re

in the name of the applicant as proprietor, in respect of all or any of

other goods or services notwithstanding that he does not use or propose

the trade mark in relation to those other goods or services and

notwithstanding anything in section 23.

(2) A trade mark registered as a defensive trade mark in respect of g

services is not liable to be removed from the Register under section 23

respect of those goods or services.

(3) A trade mark may be registered as a defensive trade mark in respe

goods or services notwithstanding that the trade mark is already regist

the name of the applicant in respect of those goods or services otherwi

as a defensive trade mark or may be registered in respect of goods or s

otherwise than as a defensive trade mark notwithstanding that the trade

is already registered in the name of the applicant in respect of those

or services as a defensive trade mark.

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(4) A trade mark registered as a defensive trade mark and that trade

otherwise registered in the name of the same person shall, notwithstand

that the respective registrations are not registrations in respect of t

goods or services, be deemed to be, and shall be registered as, associa

trade marks.

TRADE MARKS ACT 1955 - SECT 94 Rectification of Register

94. (1) A prescribed court may, on the application of a person aggrie

of the Registrar, cancel the registration of a defensive trade mark in

of all or any of the goods or services in respect of which it is regist

on the ground that the requirements of subsection (1) of the last prece

section are no longer satisfied.

(2) Notice of an application to a prescribed court under this section

than an application by the Registrar) shall be given to the Registrar,

appear and be heard and shall appear if so directed by the prescribed c

(3) An office copy of an order under this section shall be served on

Registrar, who shall, upon receipt of the order, take such steps as are

necessary to give effect to the order.

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(4) The powers conferred on a prescribed court by this section are in

addition to the powers conferred by section 22.

TRADE MARKS ACT 1955 - SECT 95 Cancellation by Registrar

95. The Registrar may cancel the registration of a defensive trade ma

where there is no longer a registration in the name of the registered

proprietor of the defensive trade mark otherwise than as a defensive tr

mark.

TRADE MARKS ACT 1955 - SECT 96 Rights given by registration

96. Subject to this Act, the registration of a defensive trade mark i

D of the Register, if valid, gives to the registered proprietor of the

the right to obtain relief in respect of infringement of the mark in th

manner provided by this Act.

TRADE MARKS ACT 1955 - SECT 97

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Application of Act

97. Subject to this Part, the provisions of this Act apply in relatio

the registration of a trade mark as a defensive trade mark and to a tra

registered as a defensive trade mark but it is not necessary for the

registered proprietor of a defensive trade mark to prove use of the tra

for the purpose of obtaining renewal of the registration.

TRADE MARKS ACT 1955 - PART XIII PART XIII - PROTECTION OF TRADE MARKS

TRADE MARKS ACT 1955 - SECT 98 Forgery etc. of trade marks

98. (1) A person shall not:

(a) forge a registered trade mark;

(b) falsely apply a registered trade mark to goods or services;

of being used for forging, a registered trade mark; or

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(d) dispose of or have in his possession a die, block, machine or ins

for the purpose of forging, or of being used for forging, a registered

mark.

Penalty: Imprisonment for 2 years.

TRADE MARKS ACT 1955 - SECT 99 Selling etc. goods with false marks

99. (1) A person must not:

(a) sell; or

(b) expose for sale; or

manufacture;

goods, if the person knows that the goods are goods to which a forgery

registered trade mark is applied, or to which a registered trade mark i

falsely applied.

(2) A contravention by a person of subsection (1) is an offence punis

on conviction by a fine not exceeding $500 for each item of goods to wh

offence relates or imprisonment for a period not exceeding 2 years, or

(3) If a fine is imposed on a person because of subsection (2) in rel

to an offence committed by the person and there are 2 or more items of

to which the offence relates, the fine imposed in respect of that offen

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not exceed $50,000.

(4) For the purposes of establishing a contravention of subsection (1

having regard to:

(a) a person's abilities, experience, qualifications and other attrib

and

(b) all the circumstances surrounding the alleged contravention of th

subsection;

the person ought reasonably to have known that the goods are goods of a

referred to in that subsection, the person is taken to have known that

goods are goods of that kind.

TRADE MARKS ACT 1955 - SECT 100 Importing goods with false marks

100. (1) A person must not import into Australia goods for the purpos

trade or manufacture if the person knows that the goods are goods to wh

(a) a forged registered trade mark is applied; or

(b) a registered trade mark is falsely applied.

(2) A contravention by a person of subsection (1) is an offence punis

on conviction by a fine not exceeding $500 for each item of goods to wh

offence relates or imprisonment for a period not exceeding 2 years, or

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(3) If a fine is imposed on a person because of subsection (2) in rel

to an offence committed by the person and there are 2 or more items of

to which the offence relates, the fine imposed in respect of that offen

not exceed $50,000.

(4) For the purposes of establishing a contravention of subsection (1

having regard to:

(a) a person's abilities, experience, qualifications and other attrib

and

(b) all the circumstances surrounding the alleged contravention of th

subsection;

the person ought reasonably to have known that the goods are goods of a

referred to in that subsection, the person is taken to have known that

goods are goods of that kind.

TRADE MARKS ACT 1955 - SECT 102 Aiding and abetting offences

102. (1) A person who aids, abets, counsels or procures, or is in any

directly or indirectly, knowingly concerned in, or party to, the doing

act outside Australia which, if it were done in Australia, would be an

against this Act, shall be deemed to have committed that offence and is

punishable accordingly.

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(2) Subsection (1) does not affect the operation of section 5 of the

Act 1914.

TRADE MARKS ACT 1955 - SECT 103 Importation of goods infringing Australian trade marks

103.*2* (1) In this section:

"objector", in relation to goods imported into Australia, means:

(a) if the registered proprietor of the relevant trade mark had, befo

importation of the goods, given a notice of the kind referred to in par

(3) (b) in relation to that trade mark and had not, before the importat

the goods, given notice in writing to the Comptroller-General of Custom

revoking that notice - the registered proprietor; or

(b) in a case to which paragraph (a) does not apply - a registered us

the relevant trade mark, who had, before the importation of the goods,

notice of the kind referred to in paragraph (3) (b) in relation to that

mark and had not, before the importation of the goods, given notice in

to the Comptroller-General revoking that notice;

"owner", in relation to goods imported into Australia, means the pers

whose name appears on the entry made in relation to the goods under sec

of the Customs Act 1901 as being the owner of the goods.

(2) References in this section to the owner of goods shall, where a n

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under subsection (7) has been given to a person who acted as agent of t

owner in relation to the importation of the goods, be read as including

references to the person to whom that notice was given.

(3) Where:

(a) goods manufactured outside Australia are imported into Australia

are, in accordance with the Customs Act 1901, subject to the control of

Customs;

(b) a notice in writing objecting to the importation of goods infring

trade mark registered in respect of goods (in this section referred to

"relevant trade mark") has been given to the Comptroller-General of Cus

after the commencement of the Trade Marks Amendment Act 1981 and before

importation of the goods referred to in paragraph (a), being a notice t

not been revoked, by:

(i) the registered proprietor of the relevant trade mark; or

(ii) if a registered user of the relevant trade mark satisfies the

Comptroller-General that he is, by virtue of subsection (5), entitled t

such a notice - that registered user;

in the opinion of the Comptroller-General, is substantially identical w

deceptively similar to, the relevant trade mark; and

(d) the goods referred to in paragraph (a) are goods in respect of wh

relevant trade mark is registered;

the Comptroller-General shall, unless he is satisfied that there are no

reasonable grounds for believing that the importation of the goods cons

an infringement of the relevant trade mark, seize the goods.

(4) The Comptroller-General of Customs may refuse to take any action

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subsection (3) in relation to goods unless he has been given by the obj

or by one or more of the objectors, security to the satisfaction of the

Comptroller-General for reimbursing the Commonwealth in respect of expe

that may be incurred by the Commonwealth by virtue of action taken by t

Comptroller-General under this section in relation to the goods.

(5) Subject to any agreement between a registered user of a trade mar

the registered proprietor of that trade mark, that registered user is e

to call upon the registered proprietor to give a notice of the kind ref

to in paragraph (3) (b) in relation to that trade mark and, if the regi

proprietor refuses or neglects to do so within 2 months of being so cal

upon, the registered user is entitled to give such a notice.

(6) Goods seized under subsection (3) shall be taken to such place of

security as the Comptroller-General of Customs directs.

(7) Where goods have been seized under subsection (3), the

Comptroller-General of Customs shall, as soon as practicable after the

were seized:

(a) give to the owner of the goods or a person who acted as agent of

owner in relation to the importation of the goods, either personally or

post, a notice in writing identifying the goods and stating that the go

identified have been seized under subsection (3); and

(b) give to the objector or to each objector, either personally or by

a notice in writing:

(i) identifying the goods and stating that the goods so identified

have been seized under subsection (3); and

(ii) stating that the goods will be released to the owner unless an

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action or proceeding for infringement of the relevant trade mark in res

the goods is instituted by an objector before the expiration of the per

one month after the giving of the notice and the objector gives notice

writing to the Comptroller-General before the expiration of that period

stating that that action or proceeding has been instituted.

(8) Where:

(a) goods have been seized under subsection (3);

(b) the Comptroller-General of Customs is satisfied that, having rega

information that has come to his knowledge after the goods were so seiz

there are no reasonable grounds for believing that the importation of t

goods constituted an infringement of the relevant trade mark; and

been instituted in respect of the goods by an objector;

the Comptroller-General may release the goods to the owner.

(9) The owner of goods seized under subsection (3) may, by notice in

given to the Comptroller-General of Customs at any time before an actio

proceeding for infringement of the relevant trade mark is instituted in

respect of the goods by an objector, consent to the goods being forfeit

the Commonwealth and, where the owner gives such a notice, the goods ar

forfeited to the Commonwealth and may be disposed of in such manner as

prescribed or as the Comptroller-General directs.

(10) Where:

(a) goods have been seized under subsection (3);

(b) the objector or each objector gives notice in writing to the

Comptroller-General of Customs stating that that objector consents to t

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release of the goods; and

been instituted by an objector in respect of the goods;

the Comptroller-General shall release the goods to the owner.

(11) Subject to the regulations, where goods have been seized under

subsection (3), the Comptroller-General of Customs may, at any time bef

action or proceeding for infringement of the relevant trade mark is ins

by an objector in respect of the goods, if in his opinion any possible

infringement of the relevant trade mark did not occur either knowingly

negligently, release the goods to the owner upon security being given t

satisfaction of the Comptroller-General:

(a) that the improper marks will be effectually removed from the good

(b) that such additions will be made as will render unobjectionable a

applied to the goods; or

(12) The Comptroller-General of Customs shall release goods seized un

subsection (3) (not being goods forfeited to the Commonwealth under sub

(9)) to the owner on the expiration of the period of one month after th

giving of a notice under subsection (7) to the objector or the objector

unless an objector has, before the expiration of that period:

(a) instituted an action or proceeding for infringement of the releva

trade mark in respect of the goods; and

(b) given notice in writing to the Comptroller-General stating that t

action or proceeding has been instituted.

(13) Where:

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(a) goods have been seized under subsection (3); and

(b) an objector is a registered user of the relevant trade mark;

nothing in section 78 prevents the institution of an action or proceedi

infringement of the relevant trade mark in respect of the goods by that

registered user, being an action or proceeding instituted before the

expiration of the period referred to in subsection (12).

(14) Where:

(a) an action or proceeding for infringement of a trade mark has been

instituted in respect of goods seized under subsection (3); and

(b) at any time after the expiration of 3 weeks after the date on whi

action or proceeding was instituted there is not in force an order of t

court in which the action or proceeding was instituted restraining the

of the goods;

the Comptroller-General of Customs shall release the goods to the owner

(15) Where:

(a) an action or proceeding for infringement of a trade mark has been

instituted in respect of goods seized under subsection (3); and

(b) a person applies to the court in which the action or proceeding w

instituted to be joined as a defendant to the action or proceeding;

the court may permit that person to be joined as a defendant to the act

proceeding.

(16) Where, in an action or proceeding for infringement of a trade ma

respect of goods seized under subsection (3), a court makes an order in

relation to the release of the goods, the Comptroller-General of Custom

comply with the terms of that order.

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(17) Where:

(a) in an action or proceeding for infringement of a trade mark insti

by an objector in respect of goods seized under subsection (3), a court

determines that the importation of the goods did not constitute an

infringement of the relevant trade mark; and

(b) the defendant satisfies the court that he has suffered loss or da

reason of the goods being detained;

the court may order the objector to pay to the defendant such amount as

court determines as compensation for that loss or damage, other than an

of that loss or damage that is attributable to any period before the da

which that action or proceeding was instituted.

(18) Where the Comptroller-General of Customs has seized goods under

subsection (3), the Comptroller-General shall not release or dispose of

goods under this section, and shall not take any action in relation to

goods in pursuance of an order of a court made in an action or proceedi

infringement of a trade mark instituted in respect of the goods, if the

Comptroller-General is required or permitted, under any other law of th

Commonwealth, to retain control of the goods.

(19) Without limiting the relief that a court may grant apart from th

section, where an objector has instituted an action or proceeding for

infringement of a trade mark in respect of goods seized under subsectio

the court in which the action or proceeding was instituted:

(a) may, at any time, if it thinks just, make an order, subject to su

terms (if any) as the court thinks fit, requiring the goods to be relea

the owner; or

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(b) may order that the goods be forfeited to the Commonwealth.

(20) Where a court orders that goods be forfeited to the Commonwealth

goods shall be disposed of in such manner as is prescribed or as the

Comptroller-General of Customs directs.

(21) A court in which an action or proceeding is instituted in respec

goods seized under subsection (3) shall permit the Comptroller-General

Customs to appear and be heard.

(22) Where security given under subsection (4) for reimbursing the

Commonwealth in respect of expenses that may be incurred by the Commonw

by virtue of action taken by the Comptroller-General of Customs under t

section in relation to goods seized under subsection (3) is insufficien

meet those expenses, the amount of the excess is a debt due by the obje

or, if there is more than one objector, jointly and severally by the

objectors, to the Commonwealth and may be recovered by action taken in

of competent jurisdiction.

(23) Sections 130 and 131 do not apply in relation to this section.

(24) An action or proceeding does not lie against the Commonwealth in

respect of any loss or damage suffered by a person by reason of:

(a) goods being seized or not being seized under this section; or

(b) the release of goods seized under this section.

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(25) The Comptroller-General of Customs may, either generally or as

otherwise provided by the instrument of delegation, by writing signed b

delegate to a person who is an officer for the purposes of the Customs

1901 any of his powers under this section, other than this power of

delegation.

(26) A power so delegated, when exercised by the delegate, shall, for

purposes of this section, be deemed to have been exercised by the

Comptroller-General of Customs.

(27) A delegation under subsection (25) does not prevent the exercise

power by the Comptroller-General of Customs.

*2* S. 103 - Section 103 of the Trade Marks Act 1955 was repealed and

substituted by the Trade Marks Amendment Act 1981, subsection 5 (6) of

provides as follows:

"(6) Section 103 of the Principal Act continues to apply in relation

goods imported into Australia before the commencement of this Act, not

goods in relation to which section 103 of the Principal Act as amended

Act applies by virtue of subsection (2)."

Section 103 of the Principal Act, which was continued in force by sub

5 (6) of the Trade Marks Amendment Act 1981 provided as follows:

"103. (1) Goods manufactured outside Australia and having applied to

trade mark, being, or being substantially identical with, a registered

mark the registered proprietor or a registered user of which is a

manufacturer, dealer, trader or person providing a service in Australia

if the registered proprietor or registered user notifies the

Comptroller-General of Customs in writing that he objects to the import

of the goods, prohibited to be imported and, if imported, may be seized

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forfeited to the Commonwealth.

"(2)(a) Subject to the regulations, the Comptroller-General of Custom

on appeal from him the Minister of State for Business and Consumer Affa

may, if in his opinion the contravention has not occurred either knowin

negligently, permit goods which are liable to be or have been seized as

forfeited under this section to be delivered to the owner or

importer upon security being given to the satisfaction of the

Comptroller-General:

(a) that the improper marks will be effectually removed from the good

(b) that such additions will be made as will render unobjectionable a

applied to the goods; or

"(3) The provisions of the Customs Act 1901-1954 apply to the seizure

forfeiture of goods under this section as if the goods were prohibited

under that Act.

"(4) Before taking action under this section or permitting an officer

take action under this section, the Comptroller-General of Customs may

the person requesting the action to give security in accordance with th

regulations.

"(5)(a) Where an application has been made to the Administrative Appe

Tribunal, whether before or after the commencement of this subsection,

review of a decision of the Comptroller-General of Customs made under

subsection (2), a person is not entitled to appeal to the Minister for

Business and Consumer Affairs against that decision."

(a) Section 103, as continued in force, was amended by section 280 an

Schedule 12 of the Statute Law (Miscellaneous Amendments) Act (No. 2) 1

The provisions of Schedule 12 applicable to section 103 provide as foll

"Subsection 103 (2) as continued in force by subsection 5 (6) of the

Marks Amendment Act 1981

Omit 'of State for Business and Consumer Affairs', substitute 'for In

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and Commerce'.

Subsection 103 (5) as continued in force by subsection 5 (6) of the T

Marks Amendment Act 1981

Omit 'Business and Consumer Affairs' substitute 'Industry and Commerc

TRADE MARKS ACT 1955 - SECT 104 Power to require information in respect of imported goods bearing fraudulent marks

104. (1) Where goods which are liable to be seized under section 103

imported into Australia and the Comptroller-General of Customs is, upon

representations made to him, satisfied that the use of the trade mark i

fraudulent, an officer of Customs may require the importer of the goods

his agent, to produce any documents in his possession relating to the g

and to furnish information as to the name and address of the person by

the goods were consigned to Australia and the name and address of the p

to whom the goods were sent in Australia.

(2) The importer or his agent shall, within 14 days, comply with the

requirement.

Penalty:

(a) in the case of a natural person - $1,000 or imprisonment for 6 mo

or both; or

(b) in the case of a body corporate - $5,000.

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(3) Information obtained from the importer of the goods or his agent

this section, or from any other source, may be communicated by the

Comptroller-General to the registered proprietor or registered user of

trade mark which is alleged to have been used or infringed.

TRADE MARKS ACT 1955 - SECT 105 Modification in relation to Territories

105. The regulations may provide for the modification or adaptation o

provisions of the last 2 preceding sections in relation to Norfolk Isla

TRADE MARKS ACT 1955 - SECT 106 What taken to be forgery of trade mark

106. (1) A person is taken to forge a registered trade mark:

(a) if the person knows that the trade mark is a registered trade mar

(b) the person:

(i) without the agreement of the registered proprietor of the trade

mark or of a registered user of the trade mark, or the authority of thi

makes the trade mark, the trade mark with additions or alterations not

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substantially affecting its identity or a mark substantially identical

it; or

(ii) falsifies the registered trade mark, whether by alteration,

addition, effacement or otherwise.

(2) In a prosecution for forging a trade mark, the burden of proving

assent of the registered proprietor or registered user lies on the defe

(3) For the purposes of establishing a contravention of subsection (1

having regard to:

(a) a person's abilities, experience, qualifications and other attrib

and

(b) all of the circumstances surrounding the alleged contravention of

subsection;

the person ought reasonably to have known that the trade mark is a regi

trade mark, the person is taken to have known that the trade mark is a

registered trade mark.

TRADE MARKS ACT 1955 - SECT 107 When trade mark deemed applied

107. (1) A trade mark shall be deemed to be applied to goods if it is

in, impressed on, worked into, or annexed or affixed to, the goods.

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(2) A trade mark shall be deemed to be applied to goods if:

(a) it is applied to the goods themselves; or

(b) it is applied to a covering, label, reel or thing in or with whic

goods are sold or exposed or had in possession for a purpose of trade o

manufacture.

(2A) A trade mark shall be deemed to be applied to goods or services

(a) it is used in a manner likely to lead to the belief that it refer

describes or designates the goods or services; or

(b) it is used in:

(i) a sign or advertisement, including a televised advertisement; o

(ii) 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

in pursuance of a request or order made by reference to the trade mark

used.

(3) For the purposes of this section, "covering" includes a stopper,

bottle, vessel, box, capsule, case, frame or wrapper, and "label" inclu

band or ticket.

(4) A registered trade mark shall be deemed to be falsely applied to

or services if, without the assent of the registered proprietor of the

mark or of a registered user of the trade mark, or the authority of thi

the trade mark or a mark substantially identical with it is applied to

goods or services.

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(5) In a prosecution for falsely applying a registered trade mark to

or services, the burden of proving the assent of the registered proprie

a registered user lies on the defendant.

TRADE MARKS ACT 1955 - SECT 107A Forfeiture orders under the Proceeds of Crime Act 1987

107A. If a person other than the Director of Public Prosecutions has

instituted proceedings for trial of another person in respect of an ind

offence against this Part, Division 2 of Part 2 of the Proceeds of Crim

1987 applies as if a reference in that Division to the Director of Publ

Prosecutions includes a reference to the first-mentioned person.

TRADE MARKS ACT 1955 - PART XIV PART XIV - INTERNATIONAL ARRANGEMENTS

TRADE MARKS ACT 1955 - SECT 108 Convention countries

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108. (1) The Governor-General may make regulations declaring that a c

specified in the regulations is a Convention country for the purposes o

Act.

(2) The Governor-General may make regulations declaring a part of the

Queen's dominions which has made satisfactory provision for the protect

that part, of trade marks to be a Convention country for the purposes o

Act.

(3) Where the Governor-General makes regulations declaring that an

application made in a foreign country for the registration of a trade m

(a) is, in accordance with the terms of a treaty subsisting between 2

more Convention countries, equivalent to an application made in 1 of th

Convention countries, the first-mentioned application shall, for the pu

of this Act, be deemed to have been made in that Convention country; or

(b) is, in accordance with the law of a Convention country, equivalen

application made in that Convention country, the first-mentioned applic

shall, for the purposes of this Act, be deemed to have been made in tha

Convention country.

TRADE MARKS ACT 1955 - SECT 109 Applications under International Conventions

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109. (1) Where a person has made an application for the registration

trade mark in a Convention country and that person, or his legal

representative or assignee, makes an application for the registration o

trade mark within 6 months after the date on which the application was

the Convention country, the trade mark shall, if registered, be registe

of the date on which the application was made in the Convention country

that date shall, subject to subsection (3), be deemed for the purposes

Act to be the date of registration.

(2) Where applications have been made for the registration of a trade

in 2 or more Convention countries, the period of 6 months referred to i

last preceding subsection shall be reckoned from the date on which the

or earliest of those applications was made.

(3) For the purposes of determining the period of registration of the

mark, the date of registration of the trade mark shall be deemed to be

date on which the application for registration under this Act was made.

TRADE MARKS ACT 1955 - SECT 110 Manner of application under this Part

110. An application for the registration of a trade mark under this P

shall be made and dealt with in the same manner as an application other

than under this Part.

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TRADE MARKS ACT 1955 - PART XV PART XV - JURISDICTION AND POWERS OF COURTS

TRADE MARKS ACT 1955 - SECT 111 Interpretation

111. In this Part, "decision", in relation to the Registrar, includes

(a) an order of the Registrar;

(b) a refusal by the Registrar, under section 44, to accept an applic

and

under section 44, of an application.

TRADE MARKS ACT 1955 - SECT 112 Jurisdiction of prescribed courts

112. (1) The Federal Court has jurisdiction with respect to matters a

under this Act.

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(1A) The jurisdiction of the Federal Court to hear and determine appe

from decisions, directions or orders of the Registrar is exclusive of t

jurisdiction of any other court, other than the jurisdiction of the Hig

under section 75 of the Constitution.

(1B) Subject to subsection (2), each prescribed court (other than the

Federal Court) has jurisdiction with respect to matters arising under t

in respect of which actions or proceedings may, under a provision of th

be instituted in a prescribed court.

(1C) A prosecution for an offence against this Act shall not be insti

in the Federal Court.

(2) The jurisdiction conferred by subsection (1B) on the Supreme Cour

Territory:

(a) to the extent that it relates to an action or proceeding for the

infringement of a trade mark, an action under section 124 or a matter a

under this Act that may be heard and determined together with such an a

or proceeding - is conferred to the extent that the Constitution permit

(b) in any other case - is conferred only in relation to an action or

proceeding instituted by a natural person who is resident in the Territ

a corporation that has its principal place of business in the Territory

the time of the institution of the action or proceeding.

(3) The jurisdiction of a prescribed court under this section shall b

exercised by a single Judge.

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(4) The regulations may make provision for and in relation to the pra

and procedure of prescribed courts in an action or proceeding under thi

including provision prescribing the time within which any action or pro

may be instituted or any other act or thing may be done, and providing

extension of any such time.

TRADE MARKS ACT 1955 - SECT 113 Transfer of proceedings

113. (1) A prescribed court in which an action or proceeding has been

instituted under this Act may, if the court thinks fit, upon applicatio

party made at any stage in the action or proceeding, by order, transfer

action or proceeding to another prescribed court having jurisdiction to

and determine the action or proceeding.

(2) Where an action or proceeding is transferred from a court in purs

of this section:

(a) all documents filed of record in that court shall be transmitted

Registrar or other proper officer of that court to the Registrar or oth

proper officer of the court to which the action or proceeding is transf

and

(b) the court to which the action or proceeding is transferred shall

as if the action or proceeding had been originally instituted in that c

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and as if the same proceedings had been taken in that court as had been

in the court from which the action or proceeding was transferred.

TRADE MARKS ACT 1955 - SECT 114 Appeals from prescribed courts

114. (1) An appeal lies to the Federal Court from a judgment or order

(a) another prescribed court exercising jurisdiction under this Act;

(b) any other court in an action or proceeding referred to in section

124.

(2) Except with the leave of the Federal Court, an appeal does not li

the Full Court of the Federal Court from a judgment or order of a singl

of the Federal Court in the exercise of its jurisdiction to hear and de

appeals from decisions, directions or orders of the Registrar.

(3) An appeal lies to the High Court, with special leave of the High

from a judgment or order referred to in subsection (1).

(4) Except as provided in the foregoing provisions of this section, n

appeal lies from a judgment or order referred to in subsection (1).

TRADE MARKS ACT 1955 - SECT 115

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Intervention by Registrar

115. The Federal Court may grant to the Registrar leave to intervene

appeal to the court from a decision, direction or order of the Registra

TRADE MARKS ACT 1955 - SECT 115A Powers of prescribed courts

115A. Upon the hearing of an appeal from a decision or direction of t

Registrar, the Federal Court may:

(a) admit further evidence, either orally or upon affidavit or otherw

(b) permit the examination and cross-examination of witnesses, includ

witnesses who gave evidence orally or upon affidavit or otherwise at th

hearing before the Registrar;

(d) affirm, reverse or modify the decision or direction appealed from

(e) give such judgment, or make such order, as in all circumstances i

thinks fit, or refuse to make an order; and

(f) order a party to pay costs to another party.

TRADE MARKS ACT 1955 - PART XVA PART XVA - APPLICATION FOR REVIEW OF CERTAIN DECISIONS BY

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ADMINISTRATIVE APPEALS TRIBUNAL

TRADE MARKS ACT 1955 - SECT 116 Application for review

116. An application may be made to the Administrative Appeals Tribuna

review of any of the following decisions made on or after the commencem

this Part:

(a) a decision of the Registrar under subsection (2) of section 70,

subsection (1) of section 71 or subsection (1) of section 127; or

(b) a decision of the Registrar under subsection (1) of section 131 n

extend the time for doing an act or taking a step.

TRADE MARKS ACT 1955 - PART XVI PART XVI - MISCELLANEOUS

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TRADE MARKS ACT 1955 - SECT 117 Use of trade mark for export trade

117. (1) The application in Australia of a trade mark to goods to be

exported from Australia and any other act done in Australia in relation

goods to be so exported which, if done in relation to goods to be sold

otherwise traded in within Australia, would constitute use of a trade m

Australia, shall, for the purposes of this Act, be deemed to constitute

the trade mark in relation to those goods.

(2) The last preceding subsection shall be deemed to have had effect

relation to an act done before the date of the commencement of this Act

has effect in relation to an act done after that date, but does not aff

determination of a court which has been made before that date or the

determination of an appeal from a determination so made.

TRADE MARKS ACT 1955 - SECT 118 Trade mark not to be deemed to be deceptive or confusing in certain cas

118. The use of a registered trade mark in relation to goods or servi

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between which and the person using the trade mark a form of connexion i

course of trade subsists shall not be deemed to be likely to cause dece

or confusion on the ground only that the trade mark has been, or is, us

relation to goods or services between which and that person or a predec

in title of that person a different form of connexion in the course of

subsisted or subsists.

TRADE MARKS ACT 1955 - SECT 118A Subsections 99 (1) and 100 (1) may be dealt with summarily in certain circumstances

118A. (1) Despite an offence against subsection 99 (1) or 100 (1) bei

idictable offence, a court of summary jurisdiction may hear and determi

proceedings in respect of such an offence if the court is satisfied tha

proper to do so and the defendant and the prosecutor consent.

(2) If, in accordance with subsection (1), a court of summary jursidi

convicts a person of an offence against subsection 99 (1) or 100 (1), t

penalty that the court may impose is a fine not exceeding $500 for each

of goods to which the offence relates or imprisonment for a period not

exceeding 12 months, or both.

(3) If a fine is imposed on a person because of subsection (2) in rel

to an offence committed by the person and there are 2 or more items of

to which the offence relates, the fine imposed in respect of that offen

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not exceed $10,000.

TRADE MARKS ACT 1955 - SECT 119 Powers of Registrar

119. The Registrar may, for the purposes of this Act:

(a) summon witnesses;

(b) receive evidence on oath, whether orally or otherwise;

(d) award costs against a party to proceedings before him.

TRADE MARKS ACT 1955 - SECT 120 Disobedience to summons an offence

120. (1) A person who has been summoned to appear as a witness before

Registrar shall not, without lawful excuse, and after tender of reasona

expenses, fail to appear in obedience to the summons.

Penalty: $1,000 or imprisonment for 6 months, or both.

(2) A person who has been required by the Registrar to produce a docu

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article shall not, without lawful excuse, and after tender of reasonabl

expenses, fail to produce the document or article.

Penalty for contravention of this subsection:

(a) in the case of a natural person - $1,000 or imprisonment for 6 mo

or both; or

(b) in the case of a body corporate - $5,000.

TRADE MARKS ACT 1955 - SECT 121 Refusal to give evidence an offence

121. A person who appears before the Registrar as a witness shall not

without lawful excuse, refuse to be sworn or to make an affirmation, or

produce documents or articles, or to answer questions, which he is lawf

required to produce or answer.

Penalty: $1,000 or imprisonment for 6 months, or both.

TRADE MARKS ACT 1955 - SECT 122 Recovery of costs

122. Costs awarded by the Registrar may, in default of payment, be re

in a court of competent jurisdiction as a debt due by the person agains

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the costs were awarded to the person in whose favour they were awarded.

TRADE MARKS ACT 1955 - SECT 123 Certificate of validity

123. In an action or proceeding in which the validity of the registra

a trade mark is unsuccessfully disputed, the court may certify that the

validity of the registration of the trade mark came in question and, if

court so certifies, then, in a subsequent action or proceeding in which

validity of the registration of the trade mark is disputed, the registe

proprietor of the trade mark, on obtaining a final order or judgment in

favour, is entitled, unless the court trying the action or proceeding

otherwise directs, to have his full costs, charges and expenses as betw

solicitor and client.

TRADE MARKS ACT 1955 - SECT 124 Groundless threats of legal proceedings

124. (1) Where a person, by means of circulars, advertisements or oth

threatens a person with an action or proceeding for infringement of a t

mark which is registered, or alleged by the first-mentioned person to b

registered, or some other like proceeding, a person aggrieved may, whet

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person making the threats is or is not the registered proprietor or the

registered user of the trade mark, bring an action against the first-me

person and may obtain a declaration to the effect that the threats are

unjustifiable, and an injunction against the continuance of the threats

may recover such damages (if any) as he has sustained, unless the

first-mentioned person satisfies the court that the trade mark is regis

and that the acts in respect of which the proceedings were threatened

constitute, or, if done, would constitute, an infringement of the trade

(2) The last preceding subsection does not apply if the registered

proprietor of the trade mark, or a registered user acting in pursuance

subsection (1) of section 78, with due diligence commences and prosecut

action against the person threatened for infringement of the trade mark

(3) Nothing in this section renders a legal practitioner or a patent

attorney liable to an action under this section in respect of an act do

him in his professional capacity on behalf of a client.

(4) An action under this section may be instituted in a prescribed co

but nothing in this section prevents such an action being instituted in

court that is not a prescribed court.

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TRADE MARKS ACT 1955 - SECT 125 Counter-claim by defendant for infringement

125. The defendant in an action or proceeding under the last precedin

section may apply, by way of counter-claim, for relief to which he woul

entitled in a separate action in respect of an infringement by the plai

of the trade mark to which the threats relate and in that case the prov

of this Act with respect to an action for infringement of a trade mark

mutatis mutandis, applicable in relation to that action.

TRADE MARKS ACT 1955 - SECT 126 Description of trade marks in pleadings

126. In an indictment, information, pleading or proceeding in relatio

registered trade mark, it is not necessary to set out a copy or facsimi

the trade mark or a description of it, but the trade mark may be referr

as a registered trade mark and identified by its registered number.

TRADE MARKS ACT 1955 - SECT 127 Power of amendment

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127. (1) The Registrar may, on such terms as to costs or otherwise as

thinks just:

(a) whether for the purpose of correcting a clerical error or an obvi

mistake or otherwise, permit the amendment of an application for the

registration of a trade mark, a notice of opposition or other document

at the Trade Marks Office; or

(b) for the purpose of correcting a clerical error or an obvious mist

amend the Register or a certificate of registration of a trade mark.

(3) An amendment of an application shall not be permitted under this

if the amendment would substantially affect the identity of the trade m

specified in the application before amendment.

TRADE MARKS ACT 1955 - SECT 128 Exercise of discretionary power by Registrar

128. Where a discretionary power is, by this Act, given to the Regist

shall not exercise that power adversely to a person applying for the ex

of that power without (if so required by that person within such time a

specified by the Registrar) giving to that person an opportunity of bei

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heard.

TRADE MARKS ACT 1955 - SECT 129 Fees

129. (1) There shall be paid to the Registrar such fees as are prescr

(2) Where a fee is payable in respect of the doing of an act by the

Registrar, the Registrar must not do the act until the fee has been pai

(3) Subject to subsection (4), where a fee is payable in respect of t

doing of an act by a person other than the Registrar, or a fee is payab

respect of the lodging of a document, the act is to be regarded as done

the document is to be regarded as lodged, even if the fee is not paid.

(4) Where the Registrar notifies the person concerned, or his or her

in accordance with the regulations, of failure to pay the fee, the act

to be regarded as done, or the document is not to be regarded as lodged

before the day on which the fee is paid.

TRADE MARKS ACT 1955 - SECT 130 Extension of time

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130. Where, by this Act, a time is specified within which an act or t

to be done, the Registrar may, unless otherwise expressly provided, ext

time either before or after its expiration.

TRADE MARKS ACT 1955 - SECT 131 Power to extend times by reason of errors in Trade Marks Office etc.

131. (1) Where, by reason of:

(a) circumstances beyond the control of the person concerned; or

(b) an error or action on the part of an officer or person employed i

Trade Marks Office;

an act or step in relation to an application for the registration of a

mark or in proceedings under this Act (not being proceedings in a court

required to be done or taken within a certain time has not been so done

taken, the Registrar may extend the time for doing the act or taking th

and permit the act to be done or the step to be taken.

(2) The time required for doing an act or taking a step may be extend

under this section although that time has expired.

TRADE MARKS ACT 1955 - SECT 132 Address for service

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132. (1) An address for service stated in an application or notice of

opposition shall, for the purposes of the application or notice of oppo

be deemed to be the address of the applicant or opponent, as the case m

and all documents in relation to the application or notice of oppositio

be served by leaving them at or sending them by post to the address for

service of the applicant or opponent, as the case may be.

(2) An address for service may be changed by notice in writing to the

Registrar.

(3) The registered proprietor of a trade mark shall from time to time

the Registrar in writing of any change in his address, and request him

enter the change in the Register, and the Registrar shall alter the Reg

accordingly.

(4) The address of the registered proprietor of a trade mark, as appe

for the time being in the Register, shall for all purposes under this A

deemed to be the address of the registered proprietor.

TRADE MARKS ACT 1955 - SECT 133 Declaration by disabled person

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133. If a person is, by reason of infancy or physical or mental disab

incapable of making a declaration or doing anything required or permitt

this Act, the guardian or committee of the incapable person, or if ther

such guardian or committee, a person appointed by a court, or a Justice

Judge of a court, of the Commonwealth or of a State or Territory posses

jurisdiction in respect of the property of incapable persons, upon the

petition of a person on behalf of the incapable person, or of some othe

person interested in the making of the declaration or the doing of the

may make the declaration (or a declaration as nearly corresponding to t

declaration as the circumstances permit) and may do that thing, in the

and on behalf of the incapable person and all acts so done are, for the

purposes of this Act, as effectually done as if they had been done by t

incapable person and that person had not been incapable at the time of

making of the declaration or the doing of the thing.

TRADE MARKS ACT 1955 - SECT 134 Death of party to a proceeding

134. If a person who is party to a proceeding under this Act (not bei

proceeding in a court) dies pending the proceeding, the Registrar may,

request, and on proof to his satisfaction of the transmission of the in

of the deceased person, substitute in the proceeding his successor in i

in his place, or, if the Registrar is of opinion that the interest of t

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deceased person is sufficiently represented by the surviving parties, p

the proceeding to continue without the substitution of his successor in

interest.

TRADE MARKS ACT 1955 - SECT 135 Unauthorised persons not to act in trade mark matters

135. (1) Subject to section 138, a person shall not, for gain:

(a) apply for or obtain the registration of a trade mark;

(b) prepare, or cause to be lodged at the Trade Marks Office, or at a

sub-office of the Trade Marks Office, a document necessary for obtainin

opposing the registration of a trade mark; or

to the infringement of a trade mark;

unless he is:

(d) a legal practitioner;

(e) a registered patent attorney;

(f) the applicant or the opponent concerned;

(g) a person in the sole and permanent employment of the applicant or

opponent concerned;

(h) a person who, within 1 year after the commencement of this Act, h

satisfied the Registrar that, for a continuous period of 2 years immedi

before 1 January 1955, he was practising as a trade marks agent in Aust

(i) a person who:

(i) within 1 year after the commencement of this Act, has satisfied

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the Registrar that, for a continuous period of 2 years immediately befo

January 1955, he was employed by a registered patent attorney in Austra

his duties related solely or principally to the lodging, prosecuting an

opposing of applications for the registration of trade marks; and

(ii) unless the Registrar otherwise directs, has, within 1 year aft

the commencement of this Act or within such further time as the Registr

allows, passed the prescribed examination.

Penalty: $1,000.

(2) For the purpose of paragraph (h) of the last preceding subsection

person shall not be deemed to have practised as a trade marks agent unl

only or the principal business carried on by him was the business of lo

prosecuting and opposing, for gain, applications for the registration o

marks in Australia on behalf of applicants or opponents.

TRADE MARKS ACT 1955 - SECT 136 Privileges of patent attorneys

136. (1) A patent attorney:

(a) is entitled to prepare documents, transact business and conduct

proceedings for the purposes of this Act; and

(b) has such other rights and privileges as are prescribed.

(2) Nothing in this section authorizes a patent attorney to prepare a

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document which is to be issued from or filed in a court or to transact

business or to conduct proceedings in a court.

TRADE MARKS ACT 1955 - SECT 137 Unregistered persons not to describe themselves as trade marks agents

137. (1) Subject to the next succeeding section:

(a) a person shall not describe himself or hold himself out, or permi

himself to be described or held out, as a trade marks attorney, trade m

agent or agent for obtaining the registration of trade marks, unless he

legal practitioner, registered as a patent attorney or a person referre

paragraph (h) or (i) of subsection (1) of section 135; or

(b) the members of a partnership shall not describe themselves or hol

themselves out, or permit themselves to be described or held out, as tr

marks attorneys, trade marks agents or agents for obtaining the registr

of trade marks, unless each member of the partnership is so registered,

legal practitioner or is a person referred to in paragraph (h) or (i) o

subsection (1) of section 135.

Penalty: $1,000.

(2) A company shall not describe itself or hold itself out, or permit

to be described or held out, as a trade marks attorney, trade marks age

agent for obtaining the registration of trade marks.

Penalty: $5,000.

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(3) A director, manager, secretary or other officer of a company whic

guilty of an offence against the last preceding subsection who is knowi

party to the offence is guilty of an offence punishable, upon convictio

fine not exceeding $1,000.

TRADE MARKS ACT 1955 - SECT 139 Adaptation of classification

139. (1) The regulations may make provision for the amendment of the

the purpose of adapting the designation in the Register of the goods, c

of goods, services or classes of services in respect of which trade mar

registered to any amended or substituted classification of goods or ser

which is prescribed.

(2) An amendment for the purpose referred to in the last preceding

subsection shall not be made if it would have the effect of adding good

classes of goods, services or classes of services to those in respect o

a trade mark is registered (whether in 1 or more classes) immediately b

the amendment is to be made, or of antedating the registration of a tra

in respect of goods or services.

(3) The last preceding subsection does not have effect in relation to

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as to which the Registrar is satisfied:

(a) that compliance with that subsection in relation to those goods w

involve undue complexity; and

(b) that the addition or antedating, as the case may be, would not af

substantial quantity of goods and would not substantially prejudice the

of any person.

(4) A proposal for the amendment of the Register for the purpose refe

in subsection (1):

(a) shall be notified to the registered proprietor of the trade mark

affected;

(b) shall be advertised in the Official Journal; and

that the proposed amendment contravenes the provisions of subsection (1

(5) An appeal lies to the Federal Court from a decision of the Regist

under this section.

TRADE MARKS ACT 1955 - SECT 140 Making and signing of applications

140. Where, by this Act, an application or notice is required or perm

to be made or signed by a person, that application or notice may be mad

signed, on behalf of that person, by a patent attorney, legal practitio

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person entitled to practise as a trade marks agent.

TRADE MARKS ACT 1955 - SECT 141 Examiners' reports to be communicated

141. A copy of each report of an Examiner under this Act shall be sen

the applicant or registered proprietor of the trade mark concerned, as

case requires.

TRADE MARKS ACT 1955 - SECT 142 Security for costs

142. If a person who appeals to the Federal Court neither resides nor

carries on business in Australia, the Federal Court may require that pe

give security for the costs of the appeal, and in default of security b

given to the satisfaction of the Federal Court, the appeal may be dismi

TRADE MARKS ACT 1955 - SECT 143 Costs of attendance of patent attorney

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143. Where, at the hearing of an action or proceeding under this Act,

patent attorney attends in court for the purpose of assisting a party i

conduct of the hearing and an order is made for payment of the costs of

party, those costs may include an allowance in respect of that attendan

TRADE MARKS ACT 1955 - SECT 144 Service of orders on appeal

144. (1) Where by this Act provision is made for the service on the

Registrar of a judgment or order of a court, and an order is made by th

in Council, or by a court, on appeal from such a judgment or order, a p

in whose favour the order on appeal is made is not entitled to enforce

order until he has served on the Registrar an office copy of the order.

(2) Upon the service on him of such an order, the Registrar shall mak

entries (if any) in the Register, or take such other action (if any), a

case requires.

TRADE MARKS ACT 1955 - SECT 145 Improperly describing an office as the Trade Marks Office

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145. (1) A person shall not use, in connexion with his business, word

would reasonably lead to the belief that his office is, or is officiall

connected with, the Trade Marks Office.

Penalty:

(a) in the case of a natural person - $500; or

(b) in the case of a body corporate - $2,500.

(2) Without limiting the effect or application of the last preceding

subsection, a person who:

(a) places, or suffers or permits to be placed, on the building in wh

office is situated;

(b) uses in advertising his office or business; or

the words "Trade Marks Office", the words "Office for registering trade

marks", or words of similar import, whether alone or in conjunction wit

words, shall be deemed to use, in connexion with his business, words wh

would reasonably lead to the belief that his office is the Trade Marks

TRADE MARKS ACT 1955 - SECT 146 Falsely representing a trade mark as registered an offence

146. (1) A person shall not make a representation:

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(a) with respect to a mark, not being a registered trade mark, to the

that it is a registered trade mark;

(b) with respect to a part of a registered trade mark, not being a pa

separately registered as a trade mark, to the effect that it is so

registered;

goods or services in respect of which it is not registered; or

(d) to the effect that the registration of a trade mark gives a right

exclusive use of the trade mark in circumstances in which, having regar

conditions or limitations entered on the Register, the registration doe

give that right.

Penalty:

(a) in the case of a natural person - $1,000; or

(b) in the case of a body corporate - $5,000.

(2) For the purposes of this section, the use in Australia, in relati

trade mark, of the word "registered, or of some other word referring wh

expressly or impliedly to registration, shall be deemed to import a ref

to registration under this Act, except:

(a) where that word is used in physical association with other words

delineated in characters at least as large as those in which that word

delineated, and indicating that the reference is to registration as a t

mark under the law of a country outside Australia, being a country unde

law of which the registration referred to is in force;

(b) where that word (being a word other than the word "registered") i

itself such as to indicate that the reference is to such registration a

referred to in the last preceding paragraph; or

under the law of a country outside Australia and in relation to goods t

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exported to that country.

TRADE MARKS ACT 1955 - SECT 147 Regulations

147. The Governor-General may make regulations, not inconsistent with

Act, prescribing all matters which by this Act are required or permitte

prescribed, or which are necessary or convenient to be prescribed for c

out or giving effect to this Act, or for the conduct of any business re

to the Trade Marks Office, and in particular:

(a) for providing for the destruction of documents relating to trade

the registration of which has ceased not less than 25 years before the

destruction; and

(b) for prescribing penalties not exceeding a fine of $500 for offenc

against the regulations; and

circumstances, of the whole or part of a fee paid in respect of the lod

a document; and

(d) making provision for and in relation to the remission of, or the

exemption of specified classes of persons from the payment of, the whol

part of a fee.

TRADE MARKS ACT 1955 - SCHEDULE 1

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THE SCHEDULE Sectio

First Column Second Column

Acts Repealed Extent of Repeal

Trade Marks Act 1905 The whole

Patents Trade Marks and Designs Act 1910 Section 4

Trade Marks Act 1912 The whole

Trade Marks Act 1919 The whole

Trade Marks Act 1922 The whole

Trade Marks Act 1936 The whole

Trade Marks Act 1948 The whole

Loi de 1955 sur les marques de commerce (loi n° 20 de 1955, telle que modifiée jusqu'à la loi n° 58 de 1994), Australie

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