Act No. 119 of 1995 as amended
This compilation was prepared on 1 September 2010 taking into account amendments up to Act No. 103 of 2010
The text of any of those amendments not in force on that date is appended in the Notes section
The operation of amendments that have been incorporated may be affected by application provisions that are set out in the Notes section
Prepared by the Office of Legislative Drafting and Publishing, Attorney-General’s Department, Canberra
READER’S GUIDE This guide aims to give you a general idea of the purpose of this Act and some information about its structure. It also explains briefly how the operation and interpretation of this Act is affected by other Acts.
Purpose of this Act
This Act provides for the registration of trade marks, collective trade marks, certification trade marks and defensive trade marks (for a definition of these terms, see sections 17, 162, 169 and 185 respectively) and sets out and protects the rights deriving from registration.
It is a rewrite of the legislation relating to trade marks, certification trade marks and defensive trade marks. The previous Act did not deal with collective trade marks.
In rewriting the legislation, some changes have been made to reflect international trends towards greater uniformity in that field of law. In particular, this Act conforms with the minimum standards and principles prescribed for trade marks in the Agreement Establishing the World Trade Organization.
An attempt has also been made to simplify the language as much as possible to make it easier for readers to understand the law. For that reason, a number of terms used in the old legislation have been replaced by simpler ones. For example, the word “owner” has been used where the previous Act referred to the proprietor of a trade mark. No difference in meaning is intended when simpler terms have thus been used.
Part 1: Deals with formal matters such as the commencement of this Act and its general application.
Part 2: Contains definitions and terms that are used frequently throughout this Act.
Part 3: Explains what is a trade mark and sets out the rights given by this Act to the registered owner and any authorised user of a registered trade mark.
Parts 4 and 5: Deal with the steps that you have to take to have a trade mark registered.
Part 6: Sets out how and why an application for registration and other documents may be amended.
Parts 7, 8 and 9: Deal with the registration of trade marks and how and why particulars of the registration of a trade mark may be amended, cancelled or removed from the Register.
Parts 10 and 11: Deal with the assignment of trade marks, the registration of assignments of registered trade marks and the recording of the rights and interests that persons (other than registered owners) may have in registered trade marks or trade marks whose registration is being sought.
Parts 12, 13 and 14: Deal with the protection of trade marks. Part 12 sets out what constitutes an infringement of a trade mark and how to obtain redress and relief in cases of infringement. Part 13 provides for a special regime to deal with any importation of goods that would infringe a registered trade mark. Part 14 makes certain types of conduct offences against this Act.
Parts 15, 16 and 17: Explain what are collective trade marks, certification trade marks and defensive trade marks and apply to them, with necessary alterations, the provisions of this Act relating to trade marks.
Part 17A: Enables the making of regulations to enable the performance of the obligations of Australia, or to obtain for Australia any advantage or benefit, under the Madrid Protocol. Those regulations prevail over this Act to the extent of any inconsistency.
Part 18: Deals with the jurisdiction of the courts to hear and determine matters arising under this Act.
Parts 19 and 20: Deal with the Trade Marks Office, the officials responsible for its administration and the keeping of the Register of Trade Marks.
Part 21: Deals with miscellaneous matters such as
the payment of fees, the service of
documents and the making of regulations.
Part 22: Repeals the Trade Marks Act 1955 and explains how
matters that were being dealt with under that
Act at the time of its repeal are to be dealt
with when this Act is in force.
Definitions: Section 6 contains definitions of terms that have special meanings and are used frequently in this Act. A list of terms defined in section 6 appears after the Table of Provisions. Notes: Notes are to be found throughout the text. They are designed to help you find your way through the Act. They may tell you that certain words or terms are defined and where to find the definition; they may alert you to other provisions in this Act and in other legislation that are relevant to the text you are reading; or they may draw your attention to information that may help you to understand the contents or legal consequences of certain provisions or how to comply with them.
Chart: The appendix to this Guide contains a chart showing the main steps involved in obtaining the registration of a trade mark. The chart is intended to be used only as an illustration and is not intended to have any other effect. If there is any inconsistency between any matter contained in the chart and a provision of this Act or the regulations, the provision prevails.
Related legislation
The following Acts are directly relevant to the operation or interpretation of this Act.
Acts Interpretation Act 1901
That Act contains general rules about the meaning or effect of many terms and provisions that are commonly used in Commonwealth Acts. Some of the notes used in this Act draw your attention to some of them, but it is not possible to refer to all of them.
Crimes Act 1914
In Parts 13 and 14, you will find that a penalty, expressed as imprisonment for a particular period or a number of penalty units, is set out at the foot of some sections or subsections. Section 4D of the Crimes Act 1914 provides that this indicates that any contravention of the section or subsection is an offence against this Act punishable upon conviction by a penalty not exceeding the penalty set out.
If only a term of imprisonment is provided as the penalty for an offence, subsections 4B(2) and 4B(3) of the Crimes Act 1914 allow a court to impose an appropriate fine instead of, or in addition to, the term of imprisonment.
Section 4AA of the Crimes Act 1914 sets out the amount of a penalty unit. Under subsection 4B(3) of that Act a court may impose on a body corporate convicted of an offence a fine of up to 5 times the amount of the fine that could be imposed on a natural person convicted of that offence.
Criminal Code The Criminal Code is set out in the Schedule to the Criminal Code Act 1995. It contains many general rules that apply to offences. Chapter 2 of the Criminal Code sets out the general principles of criminal responsibility. For example, it has default fault elements that apply to offences that do not specify a fault element and provides the consequences of an offence being an offence of strict liability.
Trade Marks Act 1955
That Act is repealed by this Act. It contained the legislation that previously applied to trade marks, certification trade marks and defensive trade marks. Even though it is repealed, this Act provides that some of the provisions of that Act are to continue to apply to certain matters that were being dealt with under that Act immediately before it was repealed.
The list of Acts cited above is not exhaustive. Other Acts may also affect the operation or interpretation of this Act.
Appendix - Obtaining registration of a trade mark
Trade Marks Act 1995
Part 1—Preliminary 1 1 Short title [see Note 1].......................................................................1 2 Commencement [see Note 1].............................................................1 3 Act binds the Crown..........................................................................1 4 Application of Act.............................................................................1 4A Application of the Criminal Code .....................................................1 Repeal of Trade Marks Act 1994.......................................................2
Part 2—Interpretation 3 6 Definitions.........................................................................................3 6A Periods expressed in months..............................................................8 7 Use of trade mark ..............................................................................9 8 Definitions of authorised user and authorised use ............................9 9 Definition of applied to and applied in relation to ..........................10 Definition of deceptively similar .....................................................11 11 Definition of pending ......................................................................11 12 Definition of priority date ...............................................................12 13 Definition of remove from the Register ...........................................12 14 Definition of similar goods and similar services .............................12 Definition of originate in relation to wine.......................................13 16 Definition of repealed Act ...............................................................13
Part 3—Trade marks and trade mark rights 14 17 What isa trade mark?......................................................................14 18 Certain signs not to be used as trade marks etc................................14 19 Certain trade marks may be registered.............................................14 Rights given by registration of trade mark ......................................15 21 Nature of registered trade mark as property ....................................15 22 Power of registered owner to deal with trade mark .........................16 23 Limitation on rights if similar trade marks etc. registered by different persons..............................................................................16 24 Trade mark consisting of sign that becomes accepted as sign describing article etc........................................................................16 Trade mark relating to article etc. formerly manufactured under patent.....................................................................................17 26 Powers of authorised user of registered trade mark.........................18
Part 4—Application for registration 20
Division 1—General 20 27 Application—how made..................................................................20 28 Application by joint owners ............................................................21
29 Application for registration of trade mark whose registration has been sought in a Convention country—claim for priority.........21 30 Particulars of application to be published........................................22 31 Registrar to examine, and report on, application.............................22 32 Registrar to decide on disputed classification of goods etc. ............22 33 Application accepted or rejected .....................................................23 34 Notice etc. of decision.....................................................................23 35 Appeal.............................................................................................23 36 Deferment ofacceptance.................................................................24 37 Lapsing of application.....................................................................24 38 Revocation ofacceptance................................................................24
Division 2—Grounds for rejecting an application 25 39 Trade mark containing etc. certain signs .........................................25 40 Trade mark that cannot be represented graphically .........................25 41 Trade mark notdistinguishing applicant’s goods or services..........25 42 Trade mark scandalous or its use contrary to law............................27 43 Trade mark likely to deceive or cause confusion.............................27 44 Identical etc. trade marks.................................................................28
Division 3—Divisional applications 30 45 Divisional applications....................................................................30 46 Rules relating to divisional applications..........................................30
Division 4—Application for registration of series of trade marks 31 51 Application—series of trade marks .................................................31 51A Linkingseries applications..............................................................31
Part 5—Opposition to registration 33
Division 1—General 33 52 Opposition.......................................................................................33 53 Circumstances in which opposition may proceed in name of a person other than the person who filed the notice.........................34 54 Opposition proceedings...................................................................34 55 Decision...........................................................................................34 56 Appeal.............................................................................................35
Division 2—Grounds for opposing registration 36 57 Registration may be opposed on same grounds as for rejection...........................................................................................36 58 Applicant not owner of trade mark..................................................36 58A Opponent’s earlier use of similar trade mark...................................36 59 Applicant not intending to use trade mark.......................................37 60 Trade mark similar to trade mark that has acquired a reputation in Australia.....................................................................37 61 Trade mark containing or consisting of a false geographical indication.........................................................................................37
62 Application etc. defective etc. .........................................................39 62A Application made in bad faith..........................................................39
Part 6—Amendment of application for registration of a trade mark and other documents 40 63 Amendment of application for registration of trade mark................40 64 Amendment before particulars of application are published............40 65 Amendment after particulars of application have been published—request for amendment not advertised..........................40 65A Amendment after particulars of application have been published—request for amendment advertised................................41 66 Amendment of other documents......................................................42 66A Registrar may require certain requests to be in writing ...................42 67 Appeal.............................................................................................42
Part 7—Registration of trade marks 43
Division 1—Initial registration 43 68 Obligation to register.......................................................................43 69 Registration—how effected.............................................................43 70 Colours in registered trade marks....................................................44 71 Notification of registration ..............................................................44 72 Date and termof registration...........................................................44 73 Ceasing of registration.....................................................................45 74 Disclaimers......................................................................................45
Division 2—Renewal of registration (generan( �/span> 47 74A Application of this Division ............................................................47 75 Request for renewal.........................................................................47 76 Notice of renewal due......................................................................47 77 Renewal before registration expires ................................................47 78 Failure to renew...............................................................................48 79 Renewal within 6 months after registration expires.........................48 80 Status of unrenewed trade mark ......................................................48
Division 3—Renewal of registration (registration delayed for 10
or more years after filing date) 49 80A Application of this Division ............................................................49 80B Expiry of registration.......................................................................49 80C Notice about renewal.......................................................................49 80D Request for renewal.........................................................................50 80E Renewal within prescribed period ...................................................50 80F Failure to renew...............................................................................50 80G Renewal within 10 months after end of prescribed period...............51 80H Status of unrenewed trade mark ......................................................51
Part 8—Amendment, cancellation and revocation of registration 53
Division 1—Action by Registrar 53
Subdivision A—Amending Register 53 81 Correction of Register .....................................................................53 82 Adaptation of classification.............................................................53 82A Linking series registrations..............................................................53 83 Amendment of particulars of trade mark entered in Register..........54 83A Amendment of registered trade mark—inconsistency with
international agreements..................................................................55
Subdivision B—Cancelling registration 56 84 Cancellation of registration .............................................................56
Subdivision C—Revoking registration 57 84A Registration may be revoked...........................................................57 84B Registration must be revoked if opposition was ignored in
registration process..........................................................................58 84C Effect of revocation of registration..................................................59 84D Appeal from revocation of registration............................................60
Division 2—Action by court 61 85 Amendment to correct error or omission.........................................61 86 Amendment or cancellation on ground of contravention of
condition etc....................................................................................61 87 Amendment or cancellation—loss of exclusive rights to use
trade mark........................................................................................61 88 Amendment or cancellation—other specified grounds....................62 88A Applicationsby Registrar................................................................63 89 Rectification may not be granted in certain cases if registered
owner not atfault etc.......................................................................63 90 Duties and powers of Registrar........................................................64
Division 3—Amendment of certificate of registration 65 91 Amendment of certificate of registration.........................................65
Part 9—Removal of trade mark from Register for non-use 66 92 Application for removal of trade mark from Register etc................66 93 Time for making application ...........................................................67 94 Referral to court...............................................................................68 95 Notification of application...............................................................68 96 Noticeof opposition........................................................................68 96A Circumstances in which opposition may proceed in name of a person other than the person who filed the notice.........................69 97 Removal of trade mark from the Register etc. if application unopposed........................................................................................69
98 Trade mark restored to Register if notice of opposition filed within extended time .......................................................................69 99 Proceedings before Registrar...........................................................70 100 Burden on opponent to establish use of trade mark etc....................70 101 Determination of opposed application—general .............................72 102 Determination of opposed application—localised use of trade mark........................................................................................73 103 Registrar to comply with order of court...........................................74 104 Appeal.............................................................................................74 105 Certificate—use of trade mark.........................................................74
Part 10—Assignment and transmission of trade marks 76 106 Assignment etc. of trade mark.........................................................76 107 Applications for record to be made of assignment etc. of
trade mark whose registration is sought ..........................................76 108 Recording of assignment etc. of trade mark whose registration is sought........................................................................77 109 Application for record of assignment etc. of registered trade
mark to be entered in Register.........................................................77 110 Recording of assignment etc. of registered trade mark....................77 111 Notice of application to be given to person recorded as
claiming interest in trade mark etc...................................................78
Part 11—Voluntary recording of claims to interests in and rights in respect of trade marks 79
Division 1—Preliminary 79 112 Object of Part...................................................................................79
Division 2—Interests in, and rights in respect of, registered trade
marks 80 113 Application to have claimsto interest etc. recorded........................80 114 Record of claims to interest etc. ......................................................80 115 Amendment and cancellation ..........................................................80 116 Record not proof etc. of existence of right etc.................................81
Division 3—Interests in, and rights in respect of, unregistered
trade marks 82 117 Application to have claimsto interest etc. recorded........................82 118 Record of claims to interest etc. ......................................................82 119 Amendment and cancellation ..........................................................82
Part 12—Infringement of trade marks 83 120 When is a registered trade mark infringed?.....................................83 121 Infringement of trade mark by breach of certain restrictions...........84 122 When is a trade mark not infringed?................................................86
123 Goods etc. to which registered trade mark has been applied by or with consent of registered owner............................................87
124 Prior use of identical trade mark etc................................................87
125 What courts may hear action for infringement of registered trade mark........................................................................................88
126 What relief can be obtained from court ...........................................88
127 Special case—plaintiff not entitled to damages etc. ........................88
128 Circumstances in which action may not be brought ........................89
129 Groundless threats of legal proceedings..........................................89
130 Counterclaim by defendant in action on groundless threats ............91
Part 13—Importation of goods infringing Australian trade marks 92 131 Object of Part...................................................................................92 132 Notice of objection to importation...................................................92 133 Customs CEO may seize goods infringing trade mark....................93 133A Determinations about owners of goods............................................94 134 Notice of seizure..............................................................................95 135 Forfeitureof goods..........................................................................95 136 Release of goods to owner—no action for infringement .................96 137 Action for infringement of trade mark.............................................97 138 Action for infringement by authorised user.....................................98 139 Forfeited goods—how to be disposed of.........................................99 140 Power of Customs CEO to retain control of goods..........................99 141 Insufficient security.........................................................................99 141A Failure to comply with undertaking etc.........................................100 142 Commonwealth not liable for loss etc. suffered because of seizure ...........................................................................................100 143 Power to require information.........................................................100 144 Modification in relation to Norfolk Island etc...............................101
Part 14—Offences 102 145 Falsifying etc. a registered trade mark...........................................102 146 Falselyapplying a registered trade mark.......................................103 147 Manufacture and possession of die etc. for use in
commission of offence ..................................................................103 148 Selling etc. goods with false marks ...............................................104 149 Penalty for offence under section 145, 146, 147 or 148 ................105 150 Aiding and abetting offences.........................................................105 151 False representations regarding trade marks..................................105 152 False entries in Register etc...........................................................107 153 Disobeying summons etc...............................................................107 154 Refusing to give evidence etc........................................................108 156 Unregistered persons.....................................................................108
157 False representation about Trade Marks Office.............................110 159 Forfeiture orders under the proceeds of crime legislation..............110 160 Conduct of employees and agents of natural persons....................111
Part 15—Collective trade marks 113 161 Object of Part.................................................................................113 162 What is a collective trade mark?....................................................113 163 Application of Act.........................................................................113 164 Application for registration ...........................................................114 165 Limitation on rights given by registered collective trade
mark...............................................................................................114
166 Assignment etc. of collective trade mark.......................................114
167 Infringement of collective trade mark ...........................................114
Part 16—Certification trade marks 115 168 Object of Part.................................................................................115 169 What is a certification trade mark?................................................115 170 Application of Act.........................................................................115 171 Rights given by registration of a certification trade mark..............116 172 Rights of persons allowed touse certification trade mark.............116 173 Rules governing the use of certification trade marks.....................116 174 Registrar to send documents to Commission.................................117 175 Certificate by Commission............................................................117 176 Acceptance or rejection of application ..........................................118 177 Additional ground for rejecting an application or opposing
registration—certification trade mark not distinguishing certified goods or services.............................................................119
178 Variation of rules...........................................................................119
179 Registrarmust publish rules..........................................................120
180 Assignment of registered certification trade mark.........................120
180A Assignment of unregistered certification trade mark.....................120
181 Rectification of the Register by order of court ..............................121
182 Variation of rules by order of court...............................................122
183 Delegation of Commission’s powers and functions.......................122
Part 17—Defensive trade marks 123 184 Object of Part.................................................................................123 185 Defensive trade marks...................................................................123 186 Application of Act.........................................................................124 187 Additional grounds for rejecting application for registration
or opposing registration.................................................................124 189 Cancellation of registration by Registrar.......................................124
Part 17A—Protected international trade marks under the Madrid Protocol 125 189A Regulations implementing the Madrid Protocol............................125
Part 18—Jurisdiction and powers of courts 127 190 Prescribed courts ...........................................................................127 191 Jurisdiction of the Federal Court ...................................................127 192 Jurisdiction of other prescribed courts...........................................127 193 Exercise of jurisdiction..................................................................128 194 Transfer of proceedings.................................................................128 195 Appeals..........................................................................................128 196 Registrar may appear in appeals....................................................129 197 Powers of Federal Court................................................................129 198 Practice and procedure of prescribed courts..................................129
Part 19—Administration 130 199 Trade Marks Officeand sub-offices..............................................130 200 Seal of TradeMarks Office...........................................................130 201 Registrar of Trade Marks...............................................................130 202 Registrar’s powers.........................................................................130 203 Exercise of power by Registrar......................................................130 204 Registrar to act assoon as practicable...........................................131 205 Deputy Registrar of Trade Marks..................................................131 206 Delegation of Registrar’s powers and functions............................132
Part 20—The Register and official documents 133 207 The Register ..................................................................................133 208 Register may be kept on computer ................................................133 209 Inspection of Register....................................................................134 210 Evidence—the Register.................................................................134 211 Evidence—certified copies of documents .....................................134
Part 21—Miscellaneous 136
Division 1—Applications and other documents 136 212 Making and signing applications etc. ............................................136 213 Filing of documents.......................................................................136 214 Withdrawal of application etc........................................................136 215 Address for service........................................................................137 216 Change of name.............................................................................138 217 Death of applicant etc....................................................................139 217A Prescribed documents relating to trade marks to be made available for public inspection.......................................................139
Division 2—Proceedings before the Registrar or a court 140 218 Description of registered trade mark .............................................140
219 Evidence of trade usage.................................................................140 220 Death of party to proceeding before Registrar...............................140 221 Costs awarded by Registrar...........................................................140 222 Security for costs...........................................................................141
Division 3—General 142 223 Fees ...............................................................................................142 223A Doing act when Trade Marks Office reopens after end of
period otherwise provided for doing act........................................142 224 Extension of time...........................................................................143 225 Convention countries.....................................................................145 226 Publication of Official Journal etc.................................................145 226A Requirements for confidential treatment of information held
in the Trade Marks Office .............................................................146
226B Certain proceedings do not lie.......................................................146
227 Notice regarding review of decision by Administrative
Appeals Tribunal...........................................................................146 228 Use of trade mark for export trade.................................................147 228A Registration of trade marks attorneys............................................147 228B Deregistration of trade marks attorneys.........................................149 229 Privileges of trade marks attorney and patent attorney..................149 230 Passing off actions.........................................................................149 231 Regulations....................................................................................150
Part 22—Repeal and transitional 153
Division 1—Repeal 153 232 Repeal............................................................................................153
Division 2—Marks registered under the repealed Act 154 233 Automatic registration under this Act............................................154 234 Registration conclusive after 7 years.............................................154 235 Term of registration.......................................................................155 236 Renewal.........................................................................................155 237 Restoration of particulars to Register and renewal of
registration where registration expired within 12 months before 1 January 1996....................................................................156
238 Disclaimers....................................................................................156
239 Rules governing the use of certification trade marks registered in Part C of the oldregister...........................................156
239A Linked trade marks........................................................................157
Division 3—Matters pending immediately before repeal of
repealed Act 158 240 Applications, notices etc.—general...............................................158 241 Application for registration of trade mark.....................................158 242 Divisional application in relation to pending application ..............160
243 More than one application lodged on same day for
registration of same trade mark .....................................................161
244 Application for registration of trade mark whose registration has been sought in Convention country.........................................162 245 Application for registration of a mark in Part C of the old register...........................................................................................163 246 Application for registration of a mark in Part D of the old register...........................................................................................163 247 Amendment of application—specification of goods or services..........................................................................................163 248 Revival of application for registration of trade mark that had lapsed before 1 January 1996 ........................................................164 249 Application for registration of assignment etc...............................165 250 Rectification of Register................................................................165 251 Action for removal of trade mark from Register for non-use........165 252 Action for infringement of trade mark etc.....................................166 253 Action under this Act for infringement of trade mark under repealed Act...................................................................................166 254 Acts not constituting infringement of existing registered mark...............................................................................................166 254A Acts not constituting infringement of trade mark—pending application under the repealed Act................................................167 254B Part B defence—infringement of existing registered mark............167 254C Part B defence—infringement of trade mark (pending application under the repealed Act)...............................................168 255 Application of this Act—general...................................................169 256 Fees ...............................................................................................169
Division 4—General 170 257 The Registrar and Deputy Registrar ..............................................170 258 Confidential information received by Registrar under
section 74 of the repealed Act .......................................................170 259 Documents kept under repealed Act..............................................170 260 Address for service........................................................................170 261 Notices to Customs CEO objecting to importation of goods.........171
Notes 173
List of terms defined in section 6
applicant applied to applied in relation to approved form assignment Australia Australian continental shelf authorised use authorised user certification trade mark collective trade mark Commission Convention country Customs CEO date of registration deceptively similar defensive trade mark Deputy Registrar designated owner divisional application employee examine existing registered mark Federal Court file filing date geographical indication goods of a person lawyer limitations month notified trade mark objector Official Journal old register opponent originate patent attorney pending person predecessor in title prescribed court priority date Register registered owner registered trade mark registered trade marks attorney Registrar registration number remove from the Register repealed Act seized goods services of a person sign similar goods similar services this Act trade mark transmission use of a trade mark use of a trade mark in relation to goods use of a trade mark in relation to services word working day
1 Short title [see Note 1] This Act may be cited as the Trade Marks Act 1995.
2 Commencement [see Note 1]
3 Act binds the Crown
4 Application of Act
This Act extends to:
shelf. Note: For Australia and Australian continental shelf see section 6.
4A Application of the Criminal Code
Chapter 2 of the Criminal Code applies to all offences created by this Act.
Note: Chapter 2 of the Criminal Code sets out the general principles of criminal responsibility.
The Trade Marks Act 1994 is repealed.
6 Definitions
(1) In this Act, unless the contrary intention appears:
applicant, in relation to an application, means the person in whose name the application is for the time being proceeding. applied to and applied in relation to have the respective meanings
given in section 9.
approved form means a form approved by the Registrar for the purposes of the provision in which the expression appears. assignment, in relation to a trade mark, means an assignment by
act of the parties concerned. Australia includes the following external Territories:
Australian continental shelf has the same meaning as in the Seas and Submerged Lands Act 1973. authorised use, in relation to a trade mark, has the meaning given
by section 8.
authorised user, in relation to a trade mark, has the meaning given by section 8. certification trade mark has the meaning given by section 169. collective trade mark has the meaning given by section 162. Commission means the Australian Competition and Consumer
Commission established under the Trade Practices Act 1974. Convention country means a country declared (by regulations made under section 225) to be a Convention country for the purposes of this Act.
Customs CEO means the Chief Executive Officer of Customs.
deceptively similar has the meaning given by section 10.
defensive trade mark has the meaning given by section 185.
Deputy Registrar means a Deputy Registrar of Trade Marks.
designated owner, in relation to goods imported into Australia, means:
divisional application has the meaning given by section 45.
employee means a person, other than the Registrar or a Deputy Registrar, who:
examine, in relation to an application for the registration of a trade mark, means to carry out an examination under section 31 in relation to the application.
existing registered mark means a mark that was registered in Part A, B, C or D of the old register before 1 January 1996 and whose registration under the repealed Act was due to expire after that day.
Federal Court means the Federal Court of Australia.
file means to file at the Trade Marks Office.
Note: See section 213.
geographical indication, in relation to goods, means a sign that identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin.
goods of a person means goods dealt with or provided in the course of trade by the person.
lawyer means a barrister or solicitor of the High Court or of the Supreme Court of a State or Territory.
limitations means limitations of the exclusive right to use a trade mark given by the registration of the trade mark, including limitations of that right as to:
month: the end of a period with a length expressed in months is worked out under section 6A.
notified trade mark means a trade mark in respect of which a notice under section 132 is in force.
objector, in relation to seized goods, means any person who has given under section 132 a notice in respect of those goods that is in force.
Official Journal means the Official Journal of Trade Marks mentioned in section 226.
old register means the Register of Trade Marks kept under the repealed Act.
opponent, in relation to the registration of a trade mark, means:
originate, in relation to wine, has the meaning given by section 15.
patent attorney means a person registered as a patent attorney under the Patents Act 1990.
pending, in relation to an application for the registration of a trade mark, has the meaning given by section 11.
person includes a body of persons, whether incorporated or not.
predecessor in title, in relation to a person who claims to be the owner of a trade mark, means:
Note: In the case of a trade mark that is neither registered nor the subject of an application for registration, the trade mark may be assigned or transmitted in Australia only in conjunction with the goodwill of a business concerned with the trade mark. If the trade mark is registered or the subject of an application for registration, section 106 provides that the trade mark may be assigned or transmitted with or without the goodwill of the business.
prescribed court means a court that is under section 190 a prescribed court for the purposes of this Act. priority date has the meaning given by section 12. Register means the Register of Trade Marks kept under section
207.
registered owner, in relation to a registered trade mark, means the person in whose name the trade mark is registered. registered trade mark means a trade mark whose particulars are
entered in the Register under this Act.
Note: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.
trade marks attorney under this Act. Registrar means the Registrar of Trade Marks. Note: Sections 201, 202, 203, 204 and 206 deal with the office, powers and
functions of the Registrar of Trade Marks.
registration number, in relation to a registered trade mark, means the number given to it under subsection 68(2). remove from the Register, in relation to a trade mark, has the
meaning given by section 13. repealed Act has the meaning given by section 16. seized goods means goods seized under section 133. services of a person means services dealt with or provided in the
course of trade by the person. sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand,
heading, label, ticket, aspect of packaging, shape, colour, sound or scent. similar goods has the meaning given by subsection 14(1). similar services has the meaning given by subsection 14(2). this Act includes the regulations.
trade mark has the meaning given by section 17.
use of a trade mark has a meaning affected by subsections 7(1),
(2) and (3).
use of a trade mark in relation to goods has the meaning given by subsection 7(4).
use of a trade mark in relation to services has the meaning given by subsection 7(5).
word includes an abbreviation of a word.
working day means a day that is not:
World Trade Organization means the body of that name established by the WTO Agreement, done at Marrakesh on 15 April 1994.
Note: The text of the WTO Agreement is set out in Australian Treaty Series 1995 No. 8 ([1995] ATS 8). In 2009, the text of an Agreement in the Australian Treaty Series was accessible through the Australian Treaties Library on the AustLII website (www.austlii.edu.au).
(2) For the purposes of this Act, a reference to a country includes a reference to a member of the World Trade Organization.
6A Periods expressed in months
For the purposes of this Act, a period expressed in months and dating from an event ends:
Note: This provision displaces section 36 of the Acts Interpretation Act 1901, and is in accordance with the Madrid Protocol. The difference between the two occurs when the initiating event is on the last day of a calendar month, which has fewer days than the month in which the period ends. For example, a period of 3 months from an event on 30 September ends on 30 December under this rule; it would end on 31 December under the Acts Interpretation Act 1901 provision.
7 Use of trade mark
(1) If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note: For prescribed court see section 190.
use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.
(a) dealt with or provided in the course of trade by another person; and
(b) in relation to which the trade mark is used; the other person is taken, for the purposes of subsection (1), to use
the trade mark in relation to the goods or services under the control of the owner.
(4) If:
the other person’s relevant trading activities; the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(5) Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).
9 Definition of applied to and applied in relation to
(1) For the purposes of this Act:
business paper, price list or other commercial document; and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used.
(2) In subparagraph (1)(b)(i):
covering includes packaging, frame, wrapper, container, stopper, lid or cap.
label includes a band or ticket.
10 Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
11 Definition of pending
Application for registration under this Act
(1) An application for the registration of a trade mark under this Act is pending from the time it is filed until:
Note: For file see section 6.
Application for registration under repealed Act
(2) An application for the registration of a trade mark under the repealed Act was pending immediately before 1 January 1996 if before that day:
12 Definition of priority date
The priority date for the registration of a trade mark in respect of particular goods or services is:
13 Definition of remove from the Register
A trade mark is taken to have been removed from the Register if the Registrar makes an entry in the Register to the effect that all entries in the Register relating to the trade mark are taken to have been removed from the Register.
15 Definition of originate in relation to wine
For the purposes of this Act:
16 Definition of repealed Act
(1) The repealed Act means:
Note: For the repeal of the Trade Marks Act 1955 see section 232.
(2) In this Act, unless the contrary intention appears, a reference to a particular section of the repealed Act includes a reference to the regulations made for the purposes of that section and that were in force immediately before that Act was repealed.
Part 3—Trade marks and trade mark rights
17 What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note: For sign see section 6.
18 Certain signs not to be used as trade marks etc.
good faith; immediately before the regulations were registered under the Legislative Instruments Act 1995.
Note: For registered trade mark see section 6.
19 Certain trade marks may be registered
Note: See subsection (3) for division into classes.
(3) The regulations may provide for the classes into which goods and services are to be divided for the purposes of this Act.
20 Rights given by registration of trade mark
(1) If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights:
in relation to the goods and/or services in respect of which the trade mark is registered.
Note 1: For registered owner see section 6.
Note 2: For use see section 7.
Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.
(2) The registered owner of a trade mark has also the right to obtain relief under this Act if the trade mark has been infringed.
Note: For what amounts to an infringement of a trade mark see Part 12.
(3) The rights are taken to have accrued to the registered owner as from the date of registration of the trade mark.
Note: For date of registration see section 6.
(4) If the trade mark is registered subject to conditions or limitations, the rights of the registered owner are restricted by those conditions or limitations.
Note: For limitations see section 6.
(5) If the trade mark is registered in the name of 2 or more persons as joint owners of the trade mark, the rights granted to those persons under this section are to be exercised by them as if they were the rights of a single person.
21 Nature of registered trade mark as property
Note: For registered trade mark see section 6.
22 Power of registered owner to deal with trade mark
Note: For registered owner see section 6.
(3) Equities in relation to a registered trade mark may be enforced against the registered owner, except to the prejudice of a purchaser in good faith for value.
Note: For registered owner and registered trade mark see section 6.
23 Limitation on rights if similar trade marks etc. registered by different persons
If trade marks that are substantially identical or deceptively similar have been registered by more than one person (whether in respect of the same or different goods or services), the registered owner of any one of those trade marks does not have the right to prevent the registered owner of any other of those trade marks from using that trade mark except to the extent that the first-mentioned owner is authorised to do so under the registration of his or her trade mark.
Note: For deceptively similar see section 10.
24 Trade mark consisting of sign that becomes accepted as sign describing article etc.
(1) This section applies if a registered trade mark consists of, or contains, a sign that, after the date of registration of the trade mark, becomes generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service.
Note: For registered trade mark, sign and date of registration see section 6.
(2) If the trade mark consists of the sign, the registered owner:
Note: For registered owner see section 6.
(3) If the trade mark contains the sign, the registered owner:
Note: For registered owner see section 6.
(4) For the purposes of subsections (2) and (3), a prescribed court may determine the day on which a sign first became generally accepted within the relevant trade as the sign that describes or is the name of the article, substance or service.
Note: For prescribed court see section 190.
25 Trade mark relating to article etc. formerly manufactured under patent
(1) This section applies if:
Note: For registered trade mark and sign see section 6.
26 Powers of authorised user of registered trade mark
(1) Subject to any agreement between the registered owner of a registered trade mark and an authorised user of the trade mark, the authorised user may do any of the following:
(iii) to remove, erase or obliterate, wholly or partly; a registered trade mark that is applied to any goods, or in
relation to any goods or services, in respect of which the trade mark is registered;
(f) the authorised user may give permission to any person to apply the trade mark to goods, or in relation to goods or services, in respect of which the trade mark is registered.
| Note 1: | For registered owner and registered trade mark see section 6. |
| Note 2: | For authorised user see section 8. |
| Note 3: | For what amounts to an infringement of a trade mark see Part 12. |
| Note 4: | For apply to and apply in relation to see section 9. |
(2) If the authorised user brings an action for infringement of the trade mark, the authorised user must make the registered owner of the trade mark a defendant in the action. However, the registered owner is not liable for costs if he or she does not take part in the proceedings.
Section 27
Part 4—Application for registration
Division 1—General
27 Application—how made
(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:
(iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.
Note: For use see section 7.
(2) The application must:
Note: For file see section 6.
(2A) Despite paragraph (2)(c), an application for registration of a collective trade mark need not be made by a person or persons having legal personality.
Note: For collective trade mark see section 162.
28 Application by joint owners
If the relations between 2 or more persons interested in a trade mark are such that none of them is entitled to use the trade mark except:
are connected in the course of trade; the persons may together apply for its registration under subsection 27(1).
29 Application for registration of trade mark whose registration has been sought in a Convention country—claim for priority
(1) If:
that person or that person’s successor in title may, when filing the application, or within the prescribed period after filing the application but before the application is accepted, claim a right of Section 30
priority for the registration of the trade mark in respect of any or all of those goods and/or services in accordance with the regulations.
Note: For month see section 6.
Note: For Convention country see section 225.
30 Particulars of application to be published
The Registrar must publish the particulars of the application in accordance with the regulations.
31 Registrar to examine, and report on, application
The Registrar must, in accordance with the regulations, examine and report on:
Note: For this Act see section 6.
32 Registrar to decide on disputed classification of goods etc.
If a question arises as to the class in which goods or services are comprised:
Section 33
33 Application accepted or rejected
(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:
Note: For this Act see section 6.
(2) The Registrar may accept the application subject to conditions or limitations.
Note: For limitations see section 6.
(3) If the Registrar is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it; the Registrar must reject the application.
Note: For this Act see section 6.
(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Note: For applicant see section 6.
34 Notice etc. of decision
The Registrar must:
Note: For applicant see section 6.
35 Appeal
The applicant may appeal to the Federal Court against a decision of the Registrar:
Note: For applicant see section 6.
Section 36
36 Deferment of acceptance
The Registrar may defer the acceptance of the application in the circumstances, and for the period, provided for in the regulations.
37 Lapsing of application
38 Revocation of acceptance
Section 39
Division 2—Grounds for rejecting an application
39 Trade mark containing etc. certain signs
(i) a sign referred to in paragraph (a); or
(ii) a sign referred to in subsection (1); as to be likely to be taken for it.
40 Trade mark that cannot be represented graphically
An application for the registration of a trade mark must be rejected if the trade mark cannot be represented graphically.
41 Trade mark not distinguishing applicant’s goods or services
(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
Section 41
(a) the Registrar is to consider whether, because of the combined effect of the following:
(iii) any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
Note 1: For goods of a person and services of a person see section 6.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
Section 42
(6) If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
42 Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
43 Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
Section 44
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Section 44
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so; the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has
been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
applicant’s trade mark; the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.
Section 45
Division 3—Divisional applications
45 Divisional applications
(1) If a single application for the registration of a trade mark in respect of certain goods and/or services is pending (parent application), the applicant may make another application (divisional application) for the registration of the trade mark in respect of some only of the goods and/or services in respect of which registration is sought under the parent application.
Note: For applicant and pending see section 6.
(2) To avoid doubt, the parent application may itself be a divisional application.
Note: A divisional application may be made by a person who has become the applicant in relation to the parent application because of subsection 108(2) (which deals with assignment and transmission).
46 Rules relating to divisional applications
(1) A divisional application must:
Note: For divisional application and parent application see section 45.
(2) When a divisional application is made, the Registrar must, unless the parent application has lapsed, amend the parent application by excluding the goods and/or services in respect of which the divisional application is made.
Note: Section 204 requires the Registrar, where no time or period is specified for doing a thing, to do the thing as soon as practicable. However, it is possible that a parent application will lapse before it is practicable for the Registrar to amend it under subsection (2) of this section.
Section 51
Division 4—Application for registration of series of trade marks
51 Application—series of trade marks
trade marks; he or she must register them as a series in one registration.
51A Linking series applications
(1) Subsection (2) applies if:
Note: For filing date see section 6.
(2) The owner of the trade marks may apply to the Registrar, in writing, to have:
(a) the series applications; or Section 51A
(b) so many of the series applications as are identified in the
application to the Registrar; dealt with under this Act as if they were one application for the registration of the trade marks in respect of all goods and services specified in the series applications or the identified series applications.
Note: For this Act see section 6.
(3) If an application is made under subsection (2), the Registrar must deal with the series applications that are the subject of the application under that subsection as if they were one application.
Section 52
Part 5—Opposition to registration
Division 1—General
52 Opposition
Note: For approved form and file see section 6.
(3) The opponent must serve a copy of the notice on the applicant.
Note: For opponent see section 6.
(4) The registration of a trade mark may be opposed on any of the grounds specified in this Act and on no other grounds.
Note: For this Act see section 6.
(5) If:
or interest is vested in him or her; then:
Section 53
53 Circumstances in which opposition may proceed in name of a person other than the person who filed the notice
If:
the opposition is to proceed as if the notice of opposition had been filed in that other person’s name.
Note: For file see section 6.
54 Opposition proceedings
(1) The Registrar must give to the opponent and to the applicant an opportunity of being heard on the opposition.
Note: For opponent and applicant see section 6.
(2) Subject to subsection (1), the proceedings for dealing with the opposition must be in accordance with the regulations.
55 Decision
(1) Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
Section 56
(2) Without limiting subsection (1), if the application was opposed on the ground specified in paragraph 62(a) (that the application, or a document filed in support of the application, was amended contrary to this Act), the Registrar may revoke the acceptance of the application and examine the application again under section 31.
Note: For examine and this Act see section 6.
56 Appeal
The applicant or the opponent may appeal to the Federal Court from a decision of the Registrar under section 55.
Note: For applicant and opponent see section 6.
Section 57
Division 2—Grounds for opposing registration
57 Registration may be opposed on same grounds as for rejection
The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under this Act, except the ground that the trade mark cannot be represented graphically.
Note: For this Act see section 6.
58 Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note: For applicant see section 6.
58A Opponent’s earlier use of similar trade mark
(1) This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
Note: Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first-mentioned trade mark has been continuously used since before the priority date of the other trade mark.
(2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:
(a) first used the similar trade mark in respect of:
predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and Section 59
(b) has continuously used the similar trade mark in respect of those goods or services since that first use.
Note: For predecessor in title see section 6.
59 Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
body corporate in Australia; in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
Note: For priority date see section 12.
61 Trade mark containing or consisting of a false geographical indication
(1) The registration of a trade mark in respect of particular goods (relevant goods) may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for goods (designated goods) originating in:
Section 61
if the relevant goods are similar to the designated goods or the use of a trade mark in respect of the relevant goods would be likely to deceive or cause confusion.
(2) An opposition on a ground referred to in subsection (1) fails if the applicant establishes that:
(a) the relevant goods originated in the country, region or locality identified by the geographical indication; or
(aa) the sign is not recognised as a geographical indication for the designated goods in the country in which the designated goods originated; or
whichever is the later; or
(d) if the registration of the trade mark is being sought in respect of wine or spirits (relevant wine or spirits)—the sign is identical with the name that, on 1 January 1995, was, in the country in which the relevant wine or spirits originated, the customary name of a variety of grapes used in the production of the relevant wine or spirits.
(3) An opposition on a ground referred to in subsection (1) also fails if the applicant establishes that:
Section 62
(4) An opposition on a ground referred to in subsection (1) also fails if the applicant establishes that:
Note 1: For applicant, predecessor in title and geographical indication see section 6.
Note 2: For originate (in relation to wine only) see section 15.
62 Application etc. defective etc.
The registration of a trade mark may be opposed on any of the following grounds:
Note: For file see section 6.
62A Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
Part 6—Amendment of application for registration of a trade mark and other documents
63 Amendment of application for registration of trade mark
the Registrar may, on his or her own initiative but in accordance with the regulations, amend the application as necessary:
64 Amendment before particulars of application are published
If:
period; an amendment may be made to correct a clerical error or an obvious mistake.
65 Amendment after particulars of application have been published—request for amendment not advertised
65A Amendment after particulars of application have been published—request for amendment advertised
66 Amendment of other documents
The Registrar may, at the request of the person who has filed an application (other than an application for the registration of a trade mark), a notice or other document for the purposes of this Act or at the request of the person’s agent, amend the application, notice or document:
Note: For file see section 6.
66A Registrar may require certain requests to be in writing
The Registrar may require a request under section 63 or 66 to be in writing if the Registrar is of the opinion that the amendment requested is not minor.
67 Appeal
An appeal lies to the Federal Court from a decision of the Registrar under this Part.
Section 68
Part 7—Registration of trade marks
Division 1—Initial registration
68 Obligation to register
(1) The Registrar must, within the period provided under the regulations, register a trade mark that has been accepted for registration:
(iii) if the opposition has been dismissed under section 222.
Otherwise, the application for the registration of the trade mark lapses.
(2) On registering the trade mark, the Registrar must give it a number by which it may be identified.
69 Registration—how effected
(1) The trade mark must be registered:
The Registrar must enter these particulars in the Register.
(2) The Registrar must also enter in the Register:
Section 70
(3) If 2 or more persons applied together for the registration of the trade mark (see section 28), the applicants must be registered as joint owners of the trade mark.
Note: For limitations, Registrar and applicant see section 6.
70 Colours in registered trade marks
Note: For limitations see section 6.
71 Notification of registration
When a trade mark has been registered, the Registrar must:
Note: For registered owner and approved form see section 6.
72 Date and term of registration
(1) Subject to subsection (2), the registration of a trade mark in respect of the goods and/or services in respect of which the trade mark is registered is taken to have had effect from (and including) the filing date in respect of the application for registration.
Note: For filing date see section 6.
(2) If:
the registration of the trade mark in respect of those goods or services is taken to have had effect:
Note: For Convention country see section 225.
(3) Unless it is earlier cancelled, or the trade mark is earlier removed from the Register, the registration of the trade mark expires 10 years after the filing date in respect of the application for its registration.
Note 1: This is so even for a trade mark whose registration in respect of particular goods or services has effect from (and including) the day on which an application was made in a Convention country.
Note 2: For filing date see section 6.
73 Ceasing of registration
The registration of a trade mark ceases if:
Note: Section 84C explains the effect of revocation of the registration of a trade mark, applying some provisions as if the registration had ceased at a particular time (but for most purposes treating the registration as if it had never occurred).
74 Disclaimers
Section 74
Note: For applicant, registered owner, registered trade mark and Register see section 6.
Section 74A
Division 2—Renewal of registration (general)
74A Application of this Division
This Division applies to a registered trade mark if:
69.
Note: For filing date see section 6.
75 Request for renewal
76 Notice of renewal due
If, at the beginning of the prescribed period, the Registrar has not received a request for the renewal of the registration of the trade mark, the Registrar must, in accordance with the regulations, notify the registered owner of the trade mark that the renewal is due.
Note: For registered owner see section 6.
77 Renewal before registration expires
(1) If a request for the renewal of the registration of a trade mark is made in accordance with section 75, the Registrar must renew the Section 78
registration for a period of 10 years from the day on which the registration of the trade mark would expire if it were not renewed.
(2) The Registrar must give notice of the renewal to the registered owner of the trade mark in accordance with the regulations.
Note: For registered owner see section 6.
78 Failure to renew
If the registration of a trade mark is not renewed under section 77, then:
Note: For month and Register see section 6.
79 Renewal within 6 months after registration expires
If, within 6 months after the registration of a trade mark has expired, a person asks the Registrar, in accordance with subsection 75(2), to renew the registration of the trade mark, the Registrar must renew the registration of the trade mark for 10 years from the day on which the registration expired.
Note: For month see section 6.
80 Status of unrenewed trade mark
If:
the unrenewed trade mark is taken to be a registered trade mark for the purposes of the application at any time when the registration of the unrenewed trade mark could have been renewed under section
79.
Registration of trade marks Part 7 Renewal of registration (registration delayed for 10 or more years after filing date)
Division 3
Section 80A
Division 3—Renewal of registration (registration delayed for 10 or more years after filing date)
80A Application of this Division
(1) This Division applies to a registered trade mark if particulars of registration were entered in the Register under section 69 on a day (Register entry day) that occurs after the end of the period of 10 years after the filing date of the application for registration.
Note: For filing date see section 6.
80B Expiry of registration
To avoid doubt, the registration of the trade mark is taken to have expired, in accordance with subsection 72(3), 10 years after the filing date of the application for registration.
Note: For filing date see section 6.
80C Notice about renewal
As soon as practicable after the Register entry day, the Registrar must, in accordance with the regulations, notify the registered owner of the trade mark that a request may be made for renewal of the registration.
Note: For registered owner see section 6.
Part 7 Registration of trade marks Division 3 Renewal of registration (registration delayed for 10 or more years after filing date)
Section 80D
80D Request for renewal
80E Renewal within prescribed period
Note: For registered owner see section 6.
80F Failure to renew
If the registration of the trade mark is not renewed under section 80E, or is not renewed under section 80E for each of the potential renewal periods, then:
(a) subject to sections 80G and 80H, the registration ceases to have effect:
Registration of trade marks Part 7 Renewal of registration (registration delayed for 10 or more years after filing date)
Division 3
Section 80G
(b) unless the registration is renewed under section 80G, the Registrar must remove the trade mark from the Register 10 months after the end of the prescribed period.
Note: For month see section 6.
80G Renewal within 10 months after end of prescribed period
(1) If:
the Registrar must renew, or successively renew, the registration for the potential renewal period or periods to which the request relates.
Note: For month see section 6.
80H Status of unrenewed trade mark
If:
Part 7 Registration of trade marks Division 3 Renewal of registration (registration delayed for 10 or more years after filing date)
Section 80H
the unrenewed trade mark is taken to be a registered trade mark for the purposes of the application at any time when the registration of the unrenewed trade mark could have been renewed under section 80G.
Section 81
Part 8—Amendment, cancellation and revocation of registration
Division 1—Action by Registrar
Subdivision A—Amending Register
81 Correction of Register
The Registrar may, on his or her own initiative, correct any error or omission made in entering in the Register any particular in respect of the registration of a trade mark.
Note: For Register see section 6.
82 Adaptation of classification
The Registrar may, in accordance with the regulations, amend the Register (whether by making, removing or altering entries) for the purpose of adapting the designation of the goods or services in respect of which trade marks are registered to reflect any change that has occurred in the classification of goods or services for the purposes of this Act.
Note 1: For Register see section 6.
Note 2: For the classification of goods and services see subsection 19(3).
82A Linking series registrations
(1) Subsection (2) applies if:
Note: For filing date, registered owner and registered trade mark see section 6.
Section 83
(2) The registered owner may apply to the Registrar, in writing, to have those trade marks, or so many of those trade marks as are identified in the application to the Registrar, dealt with under this Act as if they were registered as a series in one registration in respect of all goods and services in respect of which the trade marks, or the identified trade marks, were registered.
Note: For this Act and registered owner see section 6.
(3) If an application is made under subsection (2), the Registrar must deal with the trade marks, or the identified trade marks, as if they were one registration.
83 Amendment of particulars of trade mark entered in Register
(1) Subject to Part 11, the Registrar may, at the written request of the registered owner of a registered trade mark:
Note: For registered owner, registered trade mark and Register see section
6.
(2) An appeal lies to the Federal Court from a decision of the Registrar under subsection (1).
Note: See sections 215 and 216 for amendments of the Register to record changes in addresses for service and in the names of registered owners etc.
Section 83A
83A Amendment of registered trade mark—inconsistency with international agreements
Note: In certain circumstances the Registrar need not advertise a request under this subsection (see subsection (7)).
(4) A person may, as prescribed, oppose the granting of the request for the amendment on the ground that, if the amendment is made, the trade mark will be substantially identical with, or deceptively similar to:
Note: In certain circumstances a person cannot oppose the granting of a request under this subsection (see subsection (7)).
(5) The Registrar may grant the request for the amendment if he or she is satisfied that the amendment is reasonable, having regard to: Section 84
Subdivision B—Cancelling registration
84 Cancellation of registration
(1) The Registrar must cancel the registration of a trade mark in accordance with the regulations if the registered owner asks in writing that the registration be cancelled.
Note: For registered owner see section 6.
(2) Before cancelling the registration of the trade mark, the Registrar must notify in accordance with the regulations: Section 84A
the person to whom the trade mark has been assigned or transmitted.
Subdivision C—Revoking registration
84A Registration may be revoked
Power to revoke
(a) any use that has been made of the trade mark;
Section 84B
Note: For use of a trade mark see section 6.
Prerequisites to revocation decision
(4) The Registrar may revoke the registration of the trade mark only if the Registrar gives notice of the proposed revocation to each of the following persons in accordance with the regulations within 12 months of registering the trade mark:
Note: For registered owner see section 6.
(5) The Registrar must not revoke the registration of the trade mark without giving each of the following persons the opportunity to be heard:
Note: For registered owner see section 6.
No duty to consider whether to revoke
(6) The Registrar does not have a duty to consider whether to revoke the registration under this section, whether or not the Registrar is requested to do so.
84B Registration must be revoked if opposition was ignored in registration process
The Registrar must revoke the registration of a trade mark if:
(a) either: Section 84C
after the notice was filed or the application was made. The revocation must be done within that month.
Note: If the Registrar becomes aware of the failure later, he or she may be able to revoke the registration under section 84A.
84C Effect of revocation of registration
Section 84D
Note: For registered owner see section 6.
84D Appeal from revocation of registration
An appeal lies to the Federal Court from a decision of the Registrar to revoke the registration of a trade mark under section 84A.
Section 85
Division 2—Action by court
85 Amendment to correct error or omission
A prescribed court may, on the application of an aggrieved person, order that the Register be rectified by:
Note: For prescribed court see section 190.
86 Amendment or cancellation on ground of contravention of condition etc.
A prescribed court may, on the application of an aggrieved person or the Registrar, order that the Register be rectified by:
the trade mark; on the ground that a condition or limitation entered in the Register in relation to the trade mark has been contravened.
Note: For prescribed court see section 190.
87 Amendment or cancellation—loss of exclusive rights to use trade mark
(1) If section 24 or 25 applies in relation to a registered trade mark, a prescribed court may, on the application of an aggrieved person or the Registrar, but subject to subsection (2) and section 89, order that the Register be rectified by:
the trade mark; having regard to the effect of section 24 or 25 (as the case may be) on the right of the registered owner of the trade mark to use the trade mark, or any sign that is part of the trade mark, in relation to particular goods or services.
Section 88
(2) If section 24 or 25 applies in relation to the trade mark because the trade mark contains a sign that:
process; the court may decide not to make an order under subsection (1) and allow the trade mark to remain on the Register in respect of:
(c) the article or substance or goods of the same description; or
(d) the service or services of the same description; subject to any condition or limitation that the court may impose.
Note 1: Sections 24 and 25 provide that the registered owner of a trade mark does not have exclusive rights to use, or to authorise the use of, the trade mark if it consists of, or contains, a sign that:
Note 2: For registered trade mark, registered owner and Register see section
6.
Note 3: For prescribed court see section 190.
88 Amendment or cancellation—other specified grounds
Section 88A
Note 1: For prescribed court see section 190.
Note 2: For file, registered owner and this Act see section 6.
88A Applications by Registrar
The Registrar must not make an application under section 86, 87 or 88 unless he or she considers the application desirable in the public interest.
89 Rectification may not be granted in certain cases if registered owner not at fault etc.
(1) The court may decide not to grant an application for rectification made:
(c) on the ground referred to in paragraph 88(2)(c); if the registered owner of the trade mark satisfies the court that the
ground relied on by the applicant has not arisen through any act or fault of the registered owner.
Note: For registered owner see section 6.
(2) In making a decision under subsection (1), the court:
Section 90
90 Duties and powers of Registrar
(1) An aggrieved person applying to a prescribed court under this Division must give notice of the application to the Registrar.
Note: For prescribed court see section 190.
Section 91
Division 3—Amendment of certificate of registration
91 Amendment of certificate of registration
When the Registrar amends any particular entered in the Register in respect of a trade mark, the Registrar may also amend the certificate of registration if he or she thinks it appropriate to do so.
Part 9—Removal of trade mark from Register for non-use
92 Application for removal of trade mark from Register etc.
Note: For prescribed court see section 190.
(4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:
(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(iii) to assign the trade mark to a body corporate for use by
the body corporate in Australia; in relation to the goods and/or services to which the non-use application relates and that the registered owner:
the period of one month ending on the day on which the non-use application is filed;
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:
in relation to the goods and/or services to which the application relates.
Note 1: For file and month see section 6.
Note 2: If non-use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.
(5) If the right or interest on which a person relied to make an application (under subsection (1) or (3)) to obtain the removal of a trade mark from the Register becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the court (as the case requires), be substituted for the first-mentioned person as the applicant.
93 Time for making application
Note: For filing date see section 6.
94 Referral to court
If:
decided by a prescribed court; the Registrar may refer the matter to such a court and the court may hear and determine the matter as if an application had been made to it under subsection 92(3).
95 Notification of application
96 Notice of opposition
Note: For file see section 6.
96A Circumstances in which opposition may proceed in name of a person other than the person who filed the notice
If:
the opposition is to proceed as if the notice of opposition had been filed in that other person’s name.
Note: For file see section 6.
97 Removal of trade mark from the Register etc. if application unopposed
98 Trade mark restored to Register if notice of opposition filed within extended time
If:
the Registrar must restore the trade mark to the Register. Also, the trade mark is taken not to have been removed from the Register.
Note: For file see section 6.
99 Proceedings before Registrar
If an application to the Registrar is opposed, the Registrar must deal with the matter in accordance with the regulations.
100 Burden on opponent to establish use of trade mark etc.
(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:
(a) any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(iii) to assign the trade mark to a body corporate for use by
the body corporate in Australia; in relation to the goods and/or services to which the opposed application relates (relevant goods and/or services); or
Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2: For file, month and registered owner see section 6.
(2) For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:
Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2: For registered owner see section 6.
(3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:
Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2: For registered owner see section 6.
101 Determination of opposed application—general
(1) Subject to subsection (3) and to section 102, if:
application was made have been established; the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
(a) similar goods or closely related services; or
(b) similar services or closely related goods; to those to which the application relates.
Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2: For registered owner see section 6.
102 Determination of opposed application—localised use of trade mark
(1) This section applies if an application for the removal of a trade mark (challenged trade mark) from the Register is made on the ground referred to in paragraph 92(4)(b) and:
Note 1: For registered owner see section 6.
Note 2: For deceptively similar see section 10.
(2) If the Registrar or the court is satisfied:
(i) goods or services dealt with or provided in the specified place; or
(ii) goods or services to be exported to the specified market; the Registrar may decide, or the court may order, that the challenged trade mark should not be removed from the Register but that the registration of the trade mark should be subject to the conditions or limitations that the Registrar or the court considers
necessary to ensure that the registration does not extend to the use of the trade mark in relation to:
Note: For limitations see section 6.
103 Registrar to comply with order of court
A court making an order under section 101 or 102 must cause a copy of the order to be served on the Registrar and the Registrar must comply with the order.
104 Appeal
An appeal lies to the Federal Court from a decision of the Registrar under section 101 or 102.
105 Certificate—use of trade mark
(1) If in any proceedings relating to an opposed application the Registrar or the court has found that:
the Registrar or the court must, if so requested by the registered owner of the trade mark, give to the registered owner a certificate of those findings.
(2) In any subsequent proceedings in which non-use of the trade mark is alleged:
Part 10—Assignment and transmission of trade marks
106 Assignment etc. of trade mark
Note: For assignment and transmission see section 6.
107 Applications for record to be made of assignment etc. of trade mark whose registration is sought
(1) If a trade mark whose registration is being sought is assigned or transmitted:
must apply to the Registrar for the assignment or transmission to be recorded.
(2) The application must:
Note: For approved form and file see section 6.
108 Recording of assignment etc. of trade mark whose registration is sought
109 Application for record of assignment etc. of registered trade mark to be entered in Register
(1) If a registered trade mark is assigned or transmitted:
transmitted; must apply to the Registrar for a record of the assignment or transmission to be entered in the Register.
(2) The application must:
Note: For approved form and file see section 6.
110 Recording of assignment etc. of registered trade mark
(1) If the application complies with this Act, the Registrar must, at, or within, the time provided for in the regulations:
relation to the goods and/or services in respect of which the
assignment or transmission has effect.
111 Notice of application to be given to person recorded as claiming interest in trade mark etc.
If an application made under section 107 or 109 in relation to the assignment or transmission of a trade mark complies with this Act, the Registrar must notify in accordance with the regulations any person recorded under Part 11 as claiming an interest in, or a right in respect of, the trade mark.
Voluntary recording of claims to interests in and rights in respect of trade marks Part Preliminary Division 1 Section 112
Part 11—Voluntary recording of claims to interests in and rights in respect of trade marks
Division 1—Preliminary
112 Object of Part
This Part makes provision:
Note: For registered trade mark see section 6.
Part 11 Voluntary recording of claims to interests in and rights in respect of trade marks Division 2 Interests in, and rights in respect of, registered trade marks
Section 113
Division 2—Interests in, and rights in respect of, registered trade marks
113 Application to have claims to interest etc. recorded
(1) If:
under Part 10; the person and the registered owner of the trade mark may together apply to the Registrar to have particulars of the claim recorded in the Register.
(2) The application must be in an approved form and must be filed in accordance with the regulations.
Note: For registered owner, registered trade mark, approved form and file see section 6.
114 Record of claims to interest etc.
the Registrar must enter those particulars in the Register.
115 Amendment and cancellation
The regulations may provide for the amendment and cancellation of particulars entered in the Register under this Division.
Voluntary recording of claims to interests in and rights in respect of trade marks Part Interests in, and rights in respect of, registered trade marks Division 2 Section 116
116 Record not proof etc. of existence of right etc.
The fact that a record has been made in the Register under this Part that a person claims an interest in, or a right in respect of, a registered trade mark is not proof or evidence that the person has that right or interest.
Part 11 Voluntary recording of claims to interests in and rights in respect of trade marks Division 3 Interests in, and rights in respect of, unregistered trade marks
Section 117
Division 3—Interests in, and rights in respect of, unregistered trade marks
117 Application to have claims to interest etc. recorded
(1) If:
respect of, the trade mark; they may together apply to the Registrar for a record to be kept of the other person’s claim.
(2) The application must be in an approved form and must be filed in accordance with the regulations.
Note: For approved form and file see section 6.
118 Record of claims to interest etc.
If the application has been made in accordance with section 117, the Registrar must record in the manner that the Registrar thinks fit (but not in the Register) the particulars of the claim set out in the application.
119 Amendment and cancellation
The regulations may provide for the amendment and cancellation of particulars recorded under this Division.
Part 12—Infringement of trade marks
120 When is a registered trade mark infringed?
(1) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.
Note 1: For registered trade mark see section 6.
Note 2: For deceptively similar see section 10.
Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.
(2) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
(d) goods that are closely related to registered services. However, the person is not taken to have infringed the trade mark
if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.
Note 1: For registered trade mark see section 6.
Note 2: For deceptively similar see section 10.
Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.
(3) A person infringes a registered trade mark if:
(i) goods (unrelated goods) that are not of the same description as that of the goods in respect of which the trade mark is registered (registered goods) or are not closely related to services in respect of which the trade mark is registered (registered services); or
(ii) services (unrelated services) that are not of the same description as that of the registered services or are not closely related to registered goods; and
Note 1: For registered trade mark see section 6.
Note 2: For deceptively similar see section 10.
Note 3: For well known in Australia see subsection (4).
Note 4: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.
(4) In deciding, for the purposes of paragraph (3)(a), whether a trade mark is well known in Australia, one must take account of the extent to which the trade mark is known within the relevant sector of the public, whether as a result of the promotion of the trade mark or for any other reason.
121 Infringement of trade mark by breach of certain restrictions
(1) This section applies to a registered trade mark if the registered owner, or an authorised user of the trade mark having power to do so, has caused to be displayed on goods (registered goods) in respect of which the trade mark is registered, or on their package, or on the container in which they are offered to the public, a notice (notice of prohibition) prohibiting any act that is under subsection
(2) a prohibited act in relation to the goods.
Note 1: An authorised user of the trade mark may not have power to cause notices of prohibition to be displayed on goods etc. because of the terms of the agreement between the authorised user and the registered owner of the trade mark (see section 26).
Note 2: For registered owner and registered trade mark see section 6.
Note 3: For authorised user see section 8.
Note 4: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.
(2) Each of the following is a prohibited act:
Note 1: For applied to see section 9.
Note 2: For authorised user see section 8.
122 When is a trade mark not infringed?
(1) In spite of section 120, a person does not infringe a registered trade mark when:
(fa) both:
(g) the person, in using a sign referred to in subsection 120(1),
(2) or (3) in a manner referred to in that subsection, does not (because of a condition or limitation subject to which the trade mark is registered) infringe the exclusive right of the registered owner to use the trade mark.
(2) In spite of section 120, if a disclaimer has been registered in respect of a part of a registered trade mark, a person does not infringe the trade mark by using that part of the trade mark.
123 Goods etc. to which registered trade mark has been applied by or with consent of registered owner
(1) In spite of section 120, a person who uses a registered trade mark in relation to goods that are similar to goods in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied to, or in relation to, the goods by, or with the consent of, the registered owner of the trade mark.
Note: For similar goods see subsection 14(1).
(2) In spite of section 120, a person who uses a registered trade mark in relation to services that are similar to services in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied in relation to the services by, or with the consent of, the registered owner of the trade mark.
Note: For similar services see subsection 14(2).
124 Prior use of identical trade mark etc.
(1) A person does not infringe a registered trade mark by using an unregistered trade mark that is substantially identical with, or deceptively similar to, the registered trade mark in relation to:
(d) goods closely related to registered services; if the person, or the person and the person’s predecessor in title,
have continuously used in the course of trade the unregistered trade mark in relation to those goods or services from a time before:
whichever is earlier.
Note 1: For deceptively similar see section 10.
Note 2: For predecessor in title and date of registration see section 6.
(2) If the unregistered trade mark has continuously been used only in a particular area of Australia, subsection (1) applies only to the use of the trade mark by the person in that area.
125 What courts may hear action for infringement of registered trade mark
(1) An action for an infringement of a registered trade mark may be brought in a prescribed court.
Note: For prescribed court see section 190.
(2) Subsection (1) does not prevent an action for infringement of a registered trade mark from being brought in any other court that has jurisdiction to hear the action.
126 What relief can be obtained from court
The relief that a court may grant in an action for an infringement of a registered trade mark includes:
127 Special case—plaintiff not entitled to damages etc.
If:
the matter has been referred to a court under section 94; and
(c) the court finds that, because the trade mark has not during a particular period (critical period) been used in good faith by its registered owner in relation to those goods or services, there are grounds (under subsection 92(4)) for so removing the trade mark from the Register;
the court may not grant relief to the plaintiff by way of damages or an account of profits in respect of any infringement of the trade mark that happened during the critical period.
128 Circumstances in which action may not be brought
prescribed period has the same meaning as in Division 3 of Part 7.
Note: For month see section 6.
129 Groundless threats of legal proceedings
(1) If a person threatens to bring an action against another person (threatened person) on the ground that the threatened person has infringed:
(a) a registered trade mark; or
(b) a trade mark alleged by the person to be registered; any person aggrieved by the threat (plaintiff) may bring an action
(either in a prescribed court or in any other court having jurisdiction) against the person making the threat (defendant).
Note: For prescribed court see section 190.
(2) The purpose of the action is to obtain from the court:
make the threat. The plaintiff may also recover any damages that he or she has sustained because of the defendant’s conduct.
(3) The action may be brought whether or not the defendant is the registered owner, or an authorised user, of the trade mark alleged to have been infringed.
Note: For authorised user see section 8.
Note: An authorised user of the trade mark may not have power to bring an action for infringement of the trade mark because of the terms of the agreement between the authorised user and the registered owner of the trade mark (see section 26).
(6) This section does not make a lawyer, registered trade marks attorney or patent attorney liable to an action for an act done in a professional capacity on behalf of a client.
Note: For lawyer, registered trade marks attorney and patent attorney see section 6.
130 Counterclaim by defendant in action on groundless threats
If the defendant in an action brought under section 129 would be entitled to bring against the plaintiff an action for infringement of the registered trade mark (infringement action):
Part 13—Importation of goods infringing Australian trade marks
131 Object of Part
The object of this Part is to protect registered trade marks by making provision allowing the Customs CEO to seize and deal with goods that are imported into Australia if the importation infringes, or appears to infringe, a registered trade mark.
Note: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.
132 Notice of objection to importation
(a) the registered owner of the registered trade mark has not given a notice under subsection (1); or
(b) any notice given under subsection (1) is no longer in force; an authorised user of the trade mark having power to give a notice
under subsection (1) may ask the registered owner to give such a notice in respect of the trade mark.
Note 1: For authorised user see section 8.
Note 2: An authorised user of the trade mark may not have power to give a notice under subsection (1) because of the terms of the agreement between the authorised user and the registered owner of the trade mark (see section 26).
(3) The authorised user may give the notice to the Customs CEO:
The authorised user must give also to the Customs CEO, together with the notice:
Note 1: For authorised user see section 8.
Note 2: An authorised user of a trade mark may not have power to revoke the notice because of the terms of the agreement between the authorised user and the registered owner of the trade mark (see section 26).
133 Customs CEO may seize goods infringing trade mark
registered; the Customs CEO must seize the goods unless he or she is satisfied that there are no reasonable grounds for believing that the notified trade mark is infringed by the importation of the goods.
Note 1: For applied to or in relation to goods see section 9.
Note 2: For deceptively similar see section 10.
Note 3: For notified trade mark see section 6.
(3) Subject to subsection (3A), the Customs CEO may decide not to seize the goods unless he or she has been given by the objector (or by one or more of the objectors) a written undertaking acceptable to the Customs CEO to repay to the Commonwealth the expenses of seizing the goods.
Note: For objector see section 6.
(3A) The Customs CEO may decide not to seize the goods unless he or she has been given by the objector (or one or more of the objectors), instead of an undertaking, security in an amount that the Customs CEO considers sufficient to repay to the Commonwealth the expenses of seizing the goods if:
(3B) An undertaking may be withdrawn or varied if the Customs CEO consents in writing to a written request from the objector or objectors to do so.
expenses of seizing goods means the expenses that may be
incurred by the Commonwealth if the goods were seized.
133A Determinations about owners of goods
The Customs CEO or an officer of Customs (within the meaning of subsection 4(1) of the Customs Act 1901) may determine that a person is the owner of goods for the purposes of paragraph (b) of the definition of designated owner if the person is an owner (within the meaning of that subsection) of the goods.
Note: For designated owner see section 6.
134 Notice of seizure
The Customs CEO must, as soon as practicable:
(iii) stating that the goods will be released to the designated owner unless the objector or one of the objectors (as the case requires) brings an action for infringement of the notified trade mark in respect of the goods, and gives to the Customs CEO notice in writing of the action, within the period of 10 working days after he or she has been given the notice or, if the Customs CEO extends that period under subsection 137(1), within the extended period.
Note: For designated owner, objector, seized goods and notified trade mark see section 6.
135 Forfeiture of goods
Note: For designated owner, seized goods, objector and notified trade mark see section 6.
136 Release of goods to owner—no action for infringement
(1) The Customs CEO must release the seized goods to their designated owner if, within the action period, the objector has not, or none of the objectors has:
Note 1: For seized goods, designated owner, objector and notified trade mark see section 6.
Note 2: For action period see subsection (4).
(2) The Customs CEO must also release the seized goods to their designated owner if:
Note 1: For seized goods, designated owner, objector and notified trade mark see section 6.
Note 2: For action period see subsection (4).
(3) The Customs CEO may release the seized goods to their designated owner at any time before the end of the action period if:
Note 1: For seized goods, designated owner, objector and notified trade mark see section 6.
Note 2: For action period see subsection (4).
Note 3: In obtaining information for the purposes of this section, the Customs CEO must comply with Principles 1, 2 and 3 in section 14 of the Privacy Act 1988.
(4) In this section:
action period, in relation to seized goods, means:
Note: For objector see section 6.
137 Action for infringement of trade mark
(1) An objector may bring an action for infringement of a notified trade mark in respect of seized goods and give notice of it to the Customs CEO:
within that period as so extended by the Customs CEO.
Note: For objector, notified trade mark and seized goods see section 6.
Note: For seized goods and designated owner see section 6.
(4) If:
the court may order the objector to pay to the designated owner or other defendant compensation, in the amount determined by the court, for any part of that loss or damage that is attributable to any period beginning on or after the day on which the action was brought.
138 Action for infringement by authorised user
If an authorised user of a notified trade mark is an objector in relation to any seized goods, the authorised user may start an action for the infringement of the trade mark in respect of the goods within the required period without first ascertaining whether the registered owner is willing to bring the action.
Note 1: For notified trade mark, objector and seized goods see section 6.
Note 2: For authorised user see section 8.
Note 3: Under paragraph 26(1)(b) an authorised user of a trade mark may bring an action for infringement of the trade mark only if the registered owner of the trade mark gives consent to the bringing of such an action or refuses or fails to bring such an action.
139 Forfeited goods—how to be disposed of
If:
the Commonwealth; the goods are to be disposed of as the Customs CEO directs.
140 Power of Customs CEO to retain control of goods
In spite of this Part, the Customs CEO:
effect to any order of a court under section 137; if the Customs CEO is required or allowed to retain control of the goods under any other law of the Commonwealth.
Note: For seized goods see section 6.
141 Insufficient security
If security given under subsection 133(3A) by the objector or objectors who gave notice under section 132 in respect of a trade mark is not sufficient to meet the expenses incurred by the Commonwealth as a result of the action taken by the Customs CEO under this Part because of the notice, the amount of the difference between those expenses and the amount of security:
Note: For objector see section 6.
141A Failure to comply with undertaking etc.
Note: For objector see section 6.
(3) If the amount paid under an undertaking in relation to goods covered by a notice given under section 132 is in accordance with the undertaking but is not sufficient to meet the expenses incurred by the Commonwealth as a result of the action taken by the Customs CEO under this Part because of the notice, the amount of the difference between those expenses and the amount paid:
142 Commonwealth not liable for loss etc. suffered because of seizure
The Commonwealth is not liable for any loss or damage suffered by a person:
143 Power to require information
(1) If:
the Customs CEO may ask the importer of the goods or an agent of the importer:
Note 1: For applied to in relation to goods see section 9.
Note 2: In obtaining information for the purposes of this subsection, the Customs CEO must comply with Principles 1, 2 and 3 in section 14 of the Privacy Act 1988.
(2) If the importer or his or her agent fails to comply with the request within the prescribed period, the importer or agent is guilty of an offence punishable, on conviction, by imprisonment for a period not exceeding 6 months.
Note 1: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).
Note 2: For month see section 6.
144 Modification in relation to Norfolk Island etc.
The regulations may provide for the modification or adaptation of this Part in its application to:
Part 14—Offences
145 Falsifying etc. a registered trade mark
(1) A person is guilty of an offence if the person falsifies or unlawfully removes a trade mark that:
knowing that the trade mark is registered or reckless of whether or not the trade mark is registered.
Note 1: For applied to goods and applied in relation to goods or services see section 9.
Note 2: For the penalty for this offence see section 149.
Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.
(2) A person falsifies a registered trade mark if the person:
(c) partly removes, erases or obliterates it; without the permission of the registered owner, or an authorised
user, of the trade mark and without being required or authorised to do so by this Act, a direction of the Registrar or an order of a court.
Note 1: For registered trade mark and registered owner see section 6.
Note 2: For authorised user see section 8.
(3) A person unlawfully removes a registered trade mark if the person wholly removes, erases or obliterates it:
Note 1: For registered trade mark and registered owner see section 6.
Note 2: For authorised user see section 8.
146 Falsely applying a registered trade mark
(1) A person is guilty of an offence if the person:
knowing that the trade mark is registered or reckless of whether or not the trade mark is registered.
Note 1: For registered trade mark see section 6.
Note 2: For the penalty for this offence see section 149.
Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.
(2) A person falsely applies a registered trade mark to goods, or in relation to goods or services if the person applies the trade mark or a sign substantially identical with it to the goods or in relation to the goods or services:
Note 1: For registered trade mark and registered owner see section 6.
Note 2: For authorised user see section 8.
147 Manufacture and possession of die etc. for use in commission of offence
registered trade mark; knowing that, or reckless of whether or not, the die, block, machine, instrument, computer, device or representation is likely to be used for, or in the course of, committing an offence against section 145 or 146.
Note 1: For registered trade mark see section 6.
Note 2: For the penalty for an offence under this section see section 149.
(4) For the purposes of an offence against subsection (1), (2) or (3), strict liability applies to the physical element of the offence, that the offence referred to in paragraph (1)(a), (1)(b), (2)(a) or (2)(b) or subsection (3) is an offence against section 145 or 146.
Note: For strict liability, see section 6.1 of the Criminal Code.
148 Selling etc. goods with false marks
A person is guilty of an offence if the person intentionally:
manufacture; knowing that, or reckless of whether or not:
Note 1: For registered trade mark see section 6.
Note 2: For applied to or in relation to goods see section 9.
Note 3: For the penalty for this offence see section 149.
Note 4: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.
149 Penalty for offence under section 145, 146, 147 or 148
A person guilty of an offence under section 145, 146, 147 or 148 is punishable on conviction by:
Note: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914.)
150 Aiding and abetting offences
(1) If a person:
or party to; the doing of an act outside Australia which, if it were done in Australia, would be an offence against this Act, the person is taken to have committed that offence and is punishable accordingly.
(2) Subsection (1) does not affect the operation of section 11.2 or 11.2A of the Criminal Code.
151 False representations regarding trade marks
Penalty: 60 penalty units.
Penalty: 60 penalty units.
Note 1: For registered trade mark and limitations see section 6.
Note 2: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).
Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.
(5) For the purposes of this section, the use in Australia in relation to a trade mark:
or by implication) to registration; is taken to be a representation that the trade mark is registered in Australia in respect of the goods or services in relation to which it is used except if the trade mark is registered in a country other than Australia in respect of those goods or services and:
trade mark is registered in that other country or in a country outside Australia; or
(e) the word or symbol is used in relation to goods that are to be exported to that country.
Note: For use of a trade mark in relation to goods or services see subsections 7(4) and (5).
152 False entries in Register etc.
A person must not intentionally:
Penalty: Imprisonment for 2 years.
Note: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).
153 Disobeying summons etc.
(1) A person:
expenses; must not fail to appear in answer to the summons.
Penalty: 10 penalty units.
(2) A person:
expenses; must not fail to produce the document or thing.
Penalty: 10 penalty units.
(2A) Subsections (1) and (2) do not apply if the person has a reasonable excuse.
Note: A defendant bears an evidential burden in relation to the matter in subsection (2A), see subsection 13.3(3) of the Criminal Code.
(3) An offence under this section is an offence of strict liability.
Note 1: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).
Note 2: For strict liability, see section 6.1 of the Criminal Code.
154 Refusing to give evidence etc.
(1) A person appearing before the Registrar as a witness must not:
Penalty: 10 penalty units.
(1A) Subsection (1) does not apply if the person has a reasonable excuse.
Note: A defendant bears an evidential burden in relation to the matter in subsection (1A), see subsection 13.3(3) of the Criminal Code.
(2) An offence under this section is an offence of strict liability.
Note 1: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).
Note 2: For strict liability, see section 6.1 of the Criminal Code.
156 Unregistered persons
(1) A person must not describe himself or herself, or hold himself or herself out, or permit himself or herself to be described or held out, as a trade marks attorney unless the person is a registered trade marks attorney.
Penalty: 30 penalty units.
Note 1: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).
Note 2: For registered trade marks attorney, see section 6.
(2) A person must not describe himself or herself, or hold himself or herself out, or permit himself or herself to be described or held out, as a trade marks agent unless the person is a registered trade marks attorney or a patent attorney or a lawyer or a person referred to in paragraph 135(1)(h) or (i) of the repealed Act.
Penalty: 30 penalty units.
Note 1: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).
Note 2: For lawyer, registered trade marks attorney and patent attorney see section 6.
Note 4: Paragraphs 135(1)(h) and (i) of the repealed Act provided as follows: “(h) a person who, within 1 year after the commencement of this Act, has satisfied the Registrar that, for a continuous period of 2 years immediately before 1 January 1955, he was practising as a trade marks agent in Australia; or
(i) a person who:
Subsection 135(2) of the repealed Act provided as follows: “(2) For the purposes of paragraph (h) of the last preceding subsection, a person shall not be deemed to have practised as a trade marks agent unless the only or the principal business carried on by him was the business of lodging, prosecuting and opposing, for gain, applications for the registration of trade marks in Australia on behalf of applicants or opponents.”.
(3) If:
corporate has been a party to the offence; the director, manager, secretary or officer is guilty of an offence punishable, on conviction, by a fine not exceeding 30 penalty units.
Note: For strict liability, see section 6.1 of the Criminal Code.
157 False representation about Trade Marks Office
(1) A person:
(a) must not:
(iii) place on a document, as a description of his or her office
or business; the words “Trade Marks Office” or “Office for registering trade marks”, or words of similar import (whether alone or together with other words); or
(b) must not use in any other way, in connection with his or her business, words that would reasonably lead other persons to believe that his or her office is, or is officially connected with, the Trade Marks Office.
Penalty: 30 penalty units.
(2) An offence under this section is an offence of strict liability.
Note 1: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).
Note 2: For strict liability, see section 6.1 of the Criminal Code.
159 Forfeiture orders under the proceeds of crime legislation
160 Conduct of employees and agents of natural persons
(1) This section applies for the purposes of a prosecution for:
Note: For provisions relating to proof of offences by bodies corporate, see Part 2.5 of the Criminal Code.
if subsections (4) and (5) had not been enacted; the individual is not liable to be punished by imprisonment for that offence.
(7) In this section:
engage in conduct includes fail or refuse to engage in conduct.
state of mind, in relation to a person, includes:
Part 15—Collective trade marks
161 Object of Part
This Part:
162 What is a collective trade mark?
A collective trade mark is a sign used, or intended to be used, in relation to goods or services dealt with or provided in the course of trade by members of an association to distinguish those goods or services from goods or services so dealt with or provided by persons who are not members of the association.
163 Application of Act
trade mark is taken to be a use of the collective trade mark by the registered owner.
(3) Section 41 (trade mark not distinguishing applicant’s goods or services) applies in relation to a collective trade mark as if a reference to the applicant were a reference to the members of the association that applied for registration of the collective trade mark.
164 Application for registration
An application for the registration of a collective trade mark must be made by the association to which the mark belongs.
165 Limitation on rights given by registered collective trade mark
A member of an association in whose name a collective trade mark is registered does not have the right to prevent another member of the association from using the collective trade mark in accordance with the rules of the association (if any).
166 Assignment etc. of collective trade mark
A collective trade mark may not be assigned or transmitted.
167 Infringement of collective trade mark
In an action by an association in whose name a collective trade mark is registered seeking relief for infringement of the collective trade mark, the association may take into account, in claiming damages, any damage or loss of profits sustained or incurred by the members of the association as a result of the infringement.
Part 16—Certification trade marks
168 Object of Part
This Part:
169 What is a certification trade mark?
A certification trade mark is a sign used, or intended to be used, to distinguish goods or services:
from other goods or services dealt with or provided in the course of trade but not so certified.
Note: The goods or services certified may be those of any person, including the owner of the certification trade mark or any person approved by the owner for the purpose of certifying goods or services.
170 Application of Act
Subject to this Part, the provisions of this Act relating to trade marks (other than sections 8 and 26, paragraph 27(1)(b), sections 33, 34 and 41, sections 121 and 127, Part 9—Removal of trade mark from Register for non-use and Part 17—Defensive Trade Marks) apply to certification trade marks and so apply as if a reference to a trade mark included a reference to a certification trade mark.
171 Rights given by registration of a certification trade mark
Section 20 applies in relation to a certification trade mark as if subsection (1) were omitted and the following subsection were substituted:
“(1) If a certification trade mark is registered, the registered owner has, subject to this Part, the exclusive rights to use, and to allow other persons to use, the certification trade mark, in relation to the goods and/or services in respect of which the certification trade mark is registered. The registered owner may, however, use the certification trade mark only in accordance with the rules governing the use of the certification trade mark.
Note: For the rules governing the use of the certification trade mark see section 173.”.
172 Rights of persons allowed to use certification trade mark
When the registered owner of a registered certification trade mark allows another person (approved user) to use the certification trade mark in relation to goods or services in respect of which it is registered, the approved user has a right to use the certification trade mark in relation to those goods or services in accordance with the rules governing the use of the certification trade mark.
Note 1: For registered owner see section 6.
Note 2: For the rules governing the use of the certification trade mark see section 173.
173 Rules governing the use of certification trade marks
(1) A person who has filed an application for the registration of a certification trade mark must, in accordance with the regulations, file a copy of the rules governing the use of the certification trade mark. The copy of the rules is to be filed in addition to any document prescribed under subsection 27(2).
Note: For file see section 6.
174 Registrar to send documents to Commission
The Registrar must send the prescribed documents relating to the application to the Commission in accordance with the regulations.
175 Certificate by Commission
for the purposes of this paragraph; the Commission must give a certificate to that effect and send a copy to the Registrar. The Commission must also send a certified copy of the rules to the Registrar.
| Note 1: | For applicant see section 6. |
| Note 2: | For approved certifier see paragraph 173(2)(c). |
| Note 3: | For certification requirements see paragraph 173(2)(a). |
176 Acceptance or rejection of application
(1) The Registrar must accept the application if:
175(2). Otherwise the Registrar must reject the application.
(1A) However, the Registrar must give the applicant an opportunity to be heard before rejecting the application solely because one or both of the conditions in paragraphs (1)(a) and (b) are not met.
Note: For limitations see section 6.
177 Additional ground for rejecting an application or opposing registration—certification trade mark not distinguishing certified goods or services
(1) In addition to any other ground on which:
(a) an application for the registration of a certification trade mark may be rejected; or
(b) the registration of a certification trade mark may be opposed; the application must be rejected or the registration may be opposed if the trade mark is not capable of distinguishing goods or services
certified by the applicant or an approved certifier from goods or services not so certified.
Note 1: For applicant see section 6.
Note 2: For approved certifier see paragraph 173(2)(c).
Note 3: Division 2 of Part 4 sets out the main grounds for rejecting an application, but section 41 does not apply to certification trade marks (see section 170).
(2) In deciding whether or not the certification trade mark is capable of so distinguishing goods or services certified by the applicant or an approved certifier, the Registrar must take into account:
178 Variation of rules
179 Registrar must publish rules
The Registrar must publish, in accordance with the regulations, rules governing the use of a certification trade mark.
180 Assignment of registered certification trade mark
180A Assignment of unregistered certification trade mark
(1) If:
but the certification trade mark has not been registered; the certification trade mark may be assigned only with the consent of the Commission.
181 Rectification of the Register by order of court
| Note 1: | For prescribed court see section 190. |
| Note 2: | For approved certifier see paragraph 173(2)(c). |
| Note 3: | For approved user see section 172. |
182 Variation of rules by order of court
(1) A prescribed court may, on the application of a person aggrieved, make such orders as it thinks fit for varying the rules governing the use of a certification trade mark.
Note: For prescribed court see section 190.
183 Delegation of Commission’s powers and functions
The Commission may, by resolution, delegate all or any of its powers and functions under this Part to a member of the Commission.
Note: See section 34AB of the Acts Interpretation Act 1901 about the effect of this section.
Part 17—Defensive trade marks
184 Object of Part
This Part:
185 Defensive trade marks
(1) If, because of the extent to which a registered trade mark has been used in relation to all or any of the goods or services in respect of which it is registered, it is likely that its use in relation to other goods or services will be taken to indicate that there is a connection between those other goods or services and the registered owner of the trade mark, the trade mark may, on the application of the registered owner, be registered as a defensive trade mark in respect of any or all of those other goods or services.
Note: For registered trade mark and registered owner see section 6.
186 Application of Act
Subject to this Part, the provisions of this Act (other than subsection 20(1), paragraph 27(1)(b), sections 41 and 59, sections 121 and 127, Part 9—Removal of trade mark from Register for non-use and Part 16—Certification Trade Marks) apply to defensive trade marks and so apply as if a reference to a trade mark included a reference to a defensive trade mark.
187 Additional grounds for rejecting application for registration or opposing registration
In addition to any other ground on which:
may be opposed; the application must be rejected or the registration may be opposed:
Note: Division 2 of Part 4 sets out the main grounds for rejecting an application but section 41 does not apply to defensive trade marks (see section 186). Division 2 of Part 5 sets out the main grounds for opposing registration.
189 Cancellation of registration by Registrar
The Registrar may cancel the registration of a trade mark as a defensive trade mark if the trade mark is not otherwise registered in the name of the registered owner of the defensive trade mark.
Part 17A—Protected international trade marks under the Madrid Protocol
189A Regulations implementing the Madrid Protocol
International Bureau means the International Bureau of the World Intellectual Property Organization.
international registration of a trade mark means registration of the mark in the register of the International Bureau.
Madrid Protocol means the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks, as signed at Madrid on 28 June 1989.
Protected international trade mark means a trade mark to which protection resulting from international registration of the mark is extended in Australia in accordance with the regulations.
Part 18—Jurisdiction and powers of courts
190 Prescribed courts
Each of the following courts is a prescribed court for the purposes of this Act:
191 Jurisdiction of the Federal Court
192 Jurisdiction of other prescribed courts
(1) Each prescribed court (other than the Federal Court) has jurisdiction with respect to matters in respect of which an action or proceeding may, under this Act, be started in a prescribed court.
Note: For prescribed court see section 190.
193 Exercise of jurisdiction
The jurisdiction of a prescribed court under section 191 or 192 is to be exercised by a single judge.
Note: For prescribed court see section 190.
194 Transfer of proceedings
(1) A prescribed court in which an action or proceeding under this Act has been started may, on the application of a party made at any stage, by an order, transfer the action or proceeding to another prescribed court having jurisdiction to hear and determine the action or proceeding.
Note: For prescribed court see section 190.
(2) When a court transfers an action or proceeding to another court:
195 Appeals
(1) An appeal lies to the Federal Court against a judgment or order of:
Note: For prescribed court see section 190.
196 Registrar may appear in appeals
The Registrar may appear and be heard at the hearing of an appeal to the Federal Court against a decision or direction of the Registrar.
197 Powers of Federal Court
On hearing an appeal against a decision or direction of the Registrar, the Federal Court may do any one or more of the following:
198 Practice and procedure of prescribed courts
The regulations may make provision about the practice and procedure of prescribed courts in an action or proceeding under this Act, including provision:
Note: For prescribed court see section 190.
Part 19—Administration
199 Trade Marks Office and sub-offices
200 Seal of Trade Marks Office
There is to be a seal of the Trade Marks Office and impressions of the seal must be judicially noticed.
201 Registrar of Trade Marks
202 Registrar’s powers
The Registrar may, for the purposes of this Act:
Note: For the awarding of costs see section 221.
203 Exercise of power by Registrar
The Registrar may not exercise a power under this Act in any way that adversely affects a person applying for the exercise of that power without first giving that person a reasonable opportunity of being heard.
204 Registrar to act as soon as practicable
If:
to be done; the Registrar is to do the act or thing as soon as practicable.
205 Deputy Registrar of Trade Marks
206 Delegation of Registrar’s powers and functions
(1) The Registrar may by signed instrument delegate all or any of his or her powers or to a prescribed employee, or employees in a prescribed class.
Note 1: For employee see section 6.
Note 2: See section 34AB of the Acts Interpretation Act 1901 about the effect of this subsection.
(2) A delegate must, if so required by the instrument of delegation, exercise or perform a delegated power or function under the direction or supervision of:
Part 20—The Register and official documents
207 The Register
(a) all particulars of registered trade marks, certification trade marks and defensive trade marks, and all other matters, that were on the old register when the repealed Act was repealed, with the exception of particulars and other matters relating to registered users of trade marks; and
Note 1: For old register see section 6.
Note 2: See subsection (3) for entries relating to associated trade marks.
(3) If 2 or more trade marks were entered as associated trade marks in the old register, no equivalent entry designating them as associated trade marks is to be made in the Register.
Note: For old register see section 6.
(4) All particulars entered in the Register under paragraph (2)(a) are taken to have been so entered on 1 January 1996.
208 Register may be kept on computer
209 Inspection of Register
210 Evidence—the Register
(1) The Register is prima facie evidence of any particular or other matter entered in it.
Note: See section 116 about records of claims to interests and rights made under Part 11.
211 Evidence—certified copies of documents
(1) A certificate signed by the Registrar and stating that:
Marks Office on a specified date or during a specified period; is prima facie evidence of the matters so stated.
(2) A copy of, or an extract from, a document held in the Trade Marks Office that is certified by the Registrar to be a true copy or extract is admissible in any proceedings as if it were the original.
Section 212
Part 21—Miscellaneous
Division 1—Applications and other documents
212 Making and signing applications etc.
An application, notice or request required or permitted under this Act to be made or signed by a person may be made or signed, on behalf of that person, by any other person.
213 Filing of documents
214 Withdrawal of application etc.
or interest is vested in him or her; the other person may withdraw the application, notice or request as provided in subsection (1).
Note: For file see section 6.
Section 215
215 Address for service
(1) The address for service of a person who has filed an application, notice or request is:
Note: For file see section 6.
(2) When:
the Registrar must enter in the Register as the address for service of the registered owner or of the person:
Note: For registered trade mark and registered owner see section 6.
of, a trade mark is recorded in the Register; is the address set out from time to time in the Register as being the address for service of the registered owner or of the person.
(5) An address for service must be an address in Australia.
Section 216
Note: Section 28A of the Acts Interpretation Act 1901 provides that a document may be served (this term includes given, or sent, to): “(a) on a natural person:
(b) on a body corporate—by leaving it at, or sending it by pre-paid post to, the head office, a registered office or a principal office of the body corporate.”.
216 Change of name
(1) If there is a change in the name of a person who has filed an application, notice or request, the person must notify the Registrar in writing of the change.
Note: For file see section 6.
(2) If there is a change in the name of:
of, a trade mark is recorded in the Register; the registered owner or the person must notify the Registrar in writing of the change and the Registrar must amend the Register accordingly.
Section 217
217 Death of applicant etc.
(1) If an applicant for the registration of a trade mark dies before registration is granted on the application, his or her legal representative may proceed with the application.
Note: For applicant see section 6.
(2) If, at any time after a trade mark is registered, the Registrar is satisfied that the person in whose name the trade mark is registered had died (or, in the case of a body corporate, had ceased to exist) before registration was granted, the Registrar may amend the Register by substituting for the name entered in the Register the name of the person who should be the registered owner of the trade mark.
217A Prescribed documents relating to trade marks to be made available for public inspection
Section 218
Division 2—Proceedings before the Registrar or a court
218 Description of registered trade mark
In an indictment, information, pleading or proceeding relating to a registered trade mark, the trade mark may be identified by its registration number. It is not necessary to reproduce or describe the trade mark.
219 Evidence of trade usage
In an action or proceeding relating to a trade mark, evidence is admissible of the usage of the trade concerned and of any relevant trade mark, trade name or get-up legitimately used by other persons.
220 Death of party to proceeding before Registrar
If a person who is party to a proceeding pending before the Registrar dies, the Registrar may:
221 Costs awarded by Registrar
Section 222
222 Security for costs
If a person who neither resides nor carries on business in Australia:
removed from the Register; the Registrar may require the person to give security for the costs of the proceeding and may, if security is not given, dismiss the proceeding.
Section 223
Division 3—General
223 Fees
223A Doing act when Trade Marks Office reopens after end of period otherwise provided for doing act
Section 224
Declarations
Relationship with other law
Exception for prescribed act
(7) This section does not apply to a prescribed act.
Note: Subsection 36(2) of the Acts Interpretation Act 1901 is relevant to a prescribed act.
224 Extension of time
(1) The Registrar must extend the time for doing a relevant act that is required by this Act to be done within a certain time if the act is not, or cannot be, done within that time because of an error or omission by:
Section 224
(2) If, because of:
(a) an error or omission by the person concerned or by his or her agent; or
(b) circumstances beyond the control of the person concerned; a relevant act that is required by this Act to be done within a certain time is not, or cannot be, done within that time, the
Registrar may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.
(3) If:
the Registrar may extend the time for doing the act.
(3A) If the Registrar has revoked the registration of a trade mark, he or she may extend the time for doing a relevant act that is required by this Act to be done within a certain time in connection with the application for registration of the trade mark.
Note: For month see section 6.
(a) any act (other than a prescribed act) done in relation to a trade mark; or Section 225
225 Convention countries
one of those Convention countries; then, for the purposes of this Act, an application for the registration of the trade mark is taken to have also been made in the other Convention country or in each of the other Convention countries (as the case may be).
(3) If:
that other country; then, for the purposes of this Act, an application for the registration of the trade mark is taken to have also been made in the Convention country.
226 Publication of Official Journal etc.
(1) The Registrar must issue (electronically or otherwise) at regular intervals, as determined by the Registrar, an Official Journal of Trade Marks containing:
Section 226A
(3) The Registrar may prepare, publish (electronically or otherwise) and sell documents relating to trade marks as the Registrar thinks fit.
226A Requirements for confidential treatment of information held in the Trade Marks Office
226B Certain proceedings do not lie
No criminal or civil action or proceeding lies against the Registrar, a Deputy Registrar or an employee for publishing, or otherwise making available, reasonably and in good faith, information required or permitted by this Act to be published or otherwise made available.
Note: For employee see section 6.
227 Notice regarding review of decision by Administrative Appeals Tribunal
(1) If, under a provision of this Act, an application may be made to the Administrative Appeals Tribunal for the review of a decision of a person:
Section 228
may be made to the Administrative Appeals Tribunal for the review of the decision to which the notice relates by or on behalf of the person or persons whose interests are affected by the decision.
decision has the same meaning as in the Administrative Appeals Tribunal Act 1975.
228 Use of trade mark for export trade
(1) If:
the application of the trade mark or the other act is taken, for the purposes of this Act, to constitute use of the trade mark in relation to the export goods or export services.
Note: For applied to or in relation to goods and applied in relation to services see section 9.
(2) Subsection (1) applies to an act done before 1 January 1996 as it applies to an act done on or after that day, but it does not affect:
228A Registration of trade marks attorneys
(1) A Register of Trade Marks Attorneys is to be kept by the Designated Manager.
Note: Designated Manager is defined by subsection (9).
Section 228A
offence. The registration is to consist of entering the person’s name in the Register of Trade Marks Attorneys.
Designated Manager has the same meaning as in the Patents Act 1990.
Section 228B
Professional Standards Board has the same meaning as in the Patents Act 1990.
228B Deregistration of trade marks attorneys
The name of the person registered as a trade marks attorney may be removed from the Register of Trade Marks Attorneys in the prescribed manner and on the prescribed grounds.
229 Privileges of trade marks attorney and patent attorney
230 Passing off actions
(a) of which he or she is the registered owner or an authorised user; and Section 231
(b) that is substantially identical with, or deceptively similar to,
the trade mark of the plaintiff; damages may not be awarded against the defendant if the defendant satisfies the court:
| Note 1: | For authorised user see section 8. |
| Note 2: | For deceptively similar see section 10. |
| 231 Regulations |
Note: For file see section 6.
(ha) provide for the control of the professional conduct of registered trade marks attorneys and the practice of the profession and, for that purpose, make provision for and in relation to all or any of the following:
(iii) summoning witnesses;
Section 231
(k) provide for regulations made under the repealed Act to continue to have effect (with any prescribed alterations) for specified purposes of this Act.
Section 232
Part 22—Repeal and transitional Division 1—Repeal 232 Repeal
The Trade Marks Act 1955 is repealed.
Section 233
Division 2—Marks registered under the repealed Act
233 Automatic registration under this Act
(1) All trade marks that, immediately before 1 January 1996, were registered in Part A or B, or both Parts A and B, of the old register are registered trade marks for the purposes of this Act.
Note: For old register and registered trade mark see section 6.
234 Registration conclusive after 7 years
(1) This section applies in relation to:
Note 1: For registered trade mark and old register see section 6.
Note 2: For pending see subsection 11(2).
(2) In any legal proceedings:
(a) the original registration under the repealed Act of a trade mark referred to in paragraph (1)(a); or Section 235
(b) the original registration under this Act of a trade mark
referred to in paragraph (1)(b); is taken to be valid in all respects after a period of 7 years from the date of registration of the trade mark unless it is shown that:
Note 1: For date of registration see section 6.
Note 2: Section 28 of the repealed Act provided as follows: “28. A mark:
a court of justice; shall not be registered as a trade mark.”.
235 Term of registration
The registration of an existing registered mark expires on the day on which it would have expired under the repealed Act if that Act had not been repealed.
Note: For existing registered mark see section 6.
236 Renewal
Section 237
237 Restoration of particulars to Register and renewal of registration where registration expired within 12 months before 1 January 1996
Note: For old register see section 6.
238 Disclaimers
If the particulars entered in the Register under paragraph 207(2)(a) in respect of an existing registered mark include particulars of a disclaimer made (under section 32 of the repealed Act) by the registered proprietor of the mark about the exclusive right to use a specified part of the mark, that disclaimer has effect as if it were a disclaimer made under section 74 of this Act.
Note: For existing registered mark see section 6.
239 Rules governing the use of certification trade marks registered in Part C of the old register
Any rules that, immediately before 1 January 1996, were governing the use of a trade mark then registered as a certification trade mark in Part C of the old register: Section 239A
Note: For old register see section 6.
239A Linked trade marks
(1) Subsection (2) applies if:
Note: For registered owner and registered trade mark see section 6.
Section 240
Division 3—Matters pending immediately before repeal of repealed Act
240 Applications, notices etc.—general
(1) Subject to this Division, an application, notice or request that:
(a) was lodged with the Registrar in accordance with the repealed Act; and
(b) was pending immediately before 1 January 1996; is to be dealt with in accordance with this Act.
Note: For pending see subsection 11(2).
(2) The application, notice or request is taken to have been filed in accordance with this Act.
Note: For file see section 6.
241 Application for registration of trade mark
(1) This section applies if an application for the registration of a trade mark in Part A or B of the old register was pending immediately before 1 January 1996.
Note 1: For old register see section 6.
Note 2: For pending see subsection 11(2).
(2) If the application had been accepted under the repealed Act and the acceptance was in force immediately before 1 January 1996, the following provisions apply:
Note: Subsection 45(1) of the repealed Act provided as follows: “45. (1) An application for the registration of a trade mark may be accepted, and the trade mark may be registered,
Section 241
notwithstanding that the applicant does not use or propose to use the trade mark:
(3) If, immediately before 1 January 1996, the application had not been accepted, the following provisions apply:
Part 7 is to apply in relation to the registration of the trade mark.
(4) If, when dealing with the application under the repealed Act as provided by paragraph (2)(a), the Registrar withdraws the acceptance of the application under subsection 44(3) of that Act, the following provisions apply:
Part 7 is to apply in relation to the registration of the trade mark.
Section 242
(5) The filing date in respect of the application is:
242 Divisional application in relation to pending application
(1) This section applies if, immediately before 1 January 1996, an application (initial application) for the registration of a trade mark in the old register was pending and had not been accepted.
| Note 1: | For old register see section 6. |
| Note 2: | For pending see subsection 11(2). |
| (2) If: |
trade mark; the applicant may, subject to subsection (4), make an application (divisional application) for the registration of that part as a trade mark in respect of any or all of the goods or services specified in the initial application.
Note: For pending see subsection 11(1).
(3) If the initial application:
1996; the applicant may, subject to subsection (4), make an application (divisional application) for the registration of the trade mark in respect of any or all of the goods and/or services that were excluded from the initial application.
Note: For pending see subsection 11(1).
Section 243
(4) If the initial application is accepted under Part 4, a divisional application may not be made after the acceptance is advertised in the Official Journal.
243 More than one application lodged on same day for registration of same trade mark
(1) If:
the applications are called linked applications in this section.
(2) This section applies if, immediately before 1 January 1996, a number of linked applications for the registration of a trade mark were pending and had not been accepted.
Note: For pending see subsection 11(2).
(3) If, at any time on or after 1 January 1996, there are linked applications pending, the applicant may, subject to subsection (4), apply to the Registrar to have some or all of those applications dealt with under this Act as if they were one application for the registration of the trade mark in respect of all goods and services specified in those applications.
Note: For pending see subsection 11(1).
(4) If:
that application may not be included in the application made to the Registrar under subsection (3).
(5) If an application is made under subsection (3), the Registrar must deal with the linked applications as if they were a single application for the registration of a trade mark made on 1 January 1996.
Section 244
(6) The filing date for the single application taken to have been made under subsection (5) is the day on which the linked applications were lodged, or were taken to have been lodged (as the case may be), with the Trade Marks Office under the repealed Act.
244 Application for registration of trade mark whose registration has been sought in Convention country
(1) This section applies if:
| Note 1: | For pending see subsection 11(2). |
| Note 2: | For Convention country see section 225. |
| (2) If: |
(b) the trade mark is registered under this Act; subsection 72(2) applies in relation to the registration as if a right
of priority had been claimed under section 29 for the registration of the trade mark.
(a) the applicant claims a right of priority for the registration of the trade mark under subsection (3); and Section 245
(b) the trade mark is registered under this Act; subsection 72(2) applies in relation to the registration.
(5) If the application is accepted under Part 4, the applicant may not claim a right of priority in accordance with section 29 after the acceptance is advertised in the Official Journal.
245 Application for registration of a mark in Part C of the old register
Note: For old register see section 6.
246 Application for registration of a mark in Part D of the old register
247 Amendment of application—specification of goods or services
(1) This section applies if:
Section 248
(c) the application as amended did not relate to all of the goods or services specified in the application before its amendment.
Note 1: For old register see section 6.
Note 2: For pending see subsection 11(2).
(2) The applicant may, within 6 months after 1 January 1996, apply to the Registrar for the application to be again amended so as to relate to some or all of the goods or services specified in the application before its amendment under the repealed Act, if:
Note: For pending see subsection 11(1).
(3) If an application is amended under subsection (2), it must (if necessary) be also amended so as to be in accordance with Part 4.
248 Revival of application for registration of trade mark that had lapsed before 1 January 1996
(1) If:
under that Act; the applicant may apply in writing to the Registrar for a declaration that the application is revived.
Note: For pending see subsection 11(2).
Section 249
Note 1: For pending see subsection 11(2).
Note 2: Sections 240 to 247 make provision relating to applications for registration of trade marks that were pending immediately before 1 January 1996.
249 Application for registration of assignment etc.
If an application for the registration in the old register of the assignment or transmission of an existing registered mark was pending immediately before 1 January 1996, this Act applies in relation to the application as if:
Note: For old register, existing registered mark and file see section 6.
250 Rectification of Register
If proceedings arising from an application to a court under section 22 (Rectification of Register) of the repealed Act were pending immediately before 1 January 1996, the matter is to be decided under the repealed Act as if the old register were to be rectified, but any order made by the Court may only be in respect of the rectification of the Register.
Note: For old register see section 6.
251 Action for removal of trade mark from Register for non-use
If proceedings arising from an application to the Registrar or a court under section 23 (Provisions as to non-use of trade mark) of the repealed Act were pending immediately before 1 January 1996, the repealed Act continues to apply:
(a) in relation to those proceedings; and Section 252
(b) for the purposes of any appeal from an order or direction of
the Registrar or the court under that section; as if the reference in subsection 23(1) to the Register were a reference to the Register within the meaning of this Act.
Note: For pending see subsection 11(2).
252 Action for infringement of trade mark etc.
Sections 62 to 67 and section 78 of the repealed Act continue to apply in relation to an action for the infringement of a trade mark that was pending immediately before 1 January 1996.
253 Action under this Act for infringement of trade mark under repealed Act
If:
this Act; then, subject to any law limiting the time within which such an action may be started, an action may be brought under this Act for that infringement of the trade mark. A person is not, however, entitled under this Act to any injunction or other relief to which the person would not have been entitled under the repealed Act.
Note: For existing registered mark see section 6.
254 Acts not constituting infringement of existing registered mark
(1) This section applies if:
Section 254A
(d) that conduct is an infringement of the existing registered mark under this Act.
(2) In spite of section 120, the person does not infringe the existing registered mark by engaging in that conduct.
Note: For existing registered mark see section 6.
254A Acts not constituting infringement of trade mark—pending application under the repealed Act
254B Part B defence—infringement of existing registered mark
(1) This section applies if:
Section 254C
(2) In an action for infringement of the existing registered mark (not being an infringement occurring by reason of an act referred to in section 121), an injunction or other relief must not be granted if the person establishes to the satisfaction of the court that the use of the mark is not likely to:
Note: For existing registered mark see section 6.
254C Part B defence—infringement of trade mark (pending application under the repealed Act)
Section 255
Note: For existing registered mark see section 6.
255 Application of this Act—general
(1) If:
then, except as otherwise provided by this Division or the regulations, this Act applies in relation to the action or proceeding as if it were an action or proceeding validly brought on 1 January 1996 under the relevant provision of this Act.
(2) Anything done under the repealed Act for the purposes of the action or proceeding is taken to have been done:
256 Fees
No fee is payable under this Act in relation to an act that was done under the repealed Act and is taken, under this Division, to be an act done under this Act.
Section 257
Division 4—General
257 The Registrar and Deputy Registrar
Persons holding office as Registrar of Trade Marks and Deputy Registrar of Trade Marks immediately before 1 January 1996 continue to hold those respective offices on and after that day.
258 Confidential information received by Registrar under section 74 of the repealed Act
If, immediately before 1 January 1996, the Registrar was required under subsection 74(7) of the repealed Act to ensure that any document, information or evidence given for the purpose of an application for the registration of a person as a registered user of a trade mark was not disclosed to any other person, the Registrar must continue to ensure that the document, information or evidence is not so disclosed except by order of a prescribed court.
Note: For prescribed court see section 190.
259 Documents kept under repealed Act
The Registrar is to continue to keep in accordance with this Act all documents that, immediately before 1 January 1996, were kept by the Registrar under the repealed Act.
260 Address for service
(1) If, immediately before 1 January 1996, the address for service of an applicant for the registration of a trade mark, or of an opponent to the registration, under subsection 132(1) or (2) of the repealed Act (existing address) was an address in Australia, that address remains the address for service of the applicant or opponent for the purposes of this Act until he or she notifies another address to the Registrar under section 215.
Note: For applicant and opponent see section 6.
(2) If the existing address of an applicant for the registration of a trade mark or of an opponent to the registration is not an address in Section 261
Australia, the applicant or opponent must give in writing to the Registrar an address in Australia as his or her address for service.
(3) If, immediately before 1 January 1996, the proprietor of an existing registered mark had an agent in Australia for the purposes of subsection 70(1) of the repealed Act, the address of that agent is the address for service of the registered owner of the mark for the purposes of this Act until the registered owner notifies another address to the Registrar under section 215.
Note: For existing registered mark see section 6.
(4) If:
the proprietor was an address in Australia; that address is the address for service of the registered owner of the mark for the purposes of this Act until the registered owner notifies another address to the Registrar under section 215.
Note: For existing registered mark and old register see section 6.
(5) If:
the proprietor was not an address in Australia; that address is not to be used as the address for service of the registered owner of the mark, and the registered owner must give in writing to the Registrar an address in Australia as his or her address for service.
Note: For existing registered mark and old register see section 6.
261 Notices to Customs CEO objecting to importation of goods
(1) If a notice under paragraph 103(3)(b) of the repealed Act objecting to the importation of goods infringing a registered trade mark had not been revoked before 1 January 1996, then, subject to subsection (2), the notice continues to have effect for the purposes Section 261
of Part 13 of this Act as if it were a notice given under section 132 of this Act.
(2) The notice ceases to have effect:
(a) if the Customs CEO is given a notice under section 132 objecting to any importation of goods infringing the trade mark; or
(b) at the end of 3 months from 1 January 1996; whichever first occurs.
Table of Acts
Notes to the Trade Marks Act 1995 Note 1
The Trade Marks Act 1995 as shown in this compilation comprises Act No. 119, 1995 amended as indicated in the Tables below.
For all relevant information pertaining to application, saving or transitional provisions see Table A.
The Trade Marks Act 1995 was modified by the Trade Marks Regulations 1995 (1995 No. 341 as amended). The modifications are not incorporated in this compilation.
Table of Acts
| Act | Number | Date | Date of | Application, |
| and year | of Assent | commencement | saving or | |
| transitional | ||||
| provisions | ||||
| Trade Marks Act 1995 | 119, 1995 | 17 Oct 1995 | Part 1 (ss. 1–5): | |
| Royal Assent | ||||
| Remainder: 1 Jan | ||||
| 1996 | ||||
| Industry, Science and | 91, 1997 | 30 June 1997 | Schedule 1 | — |
| Tourism Legislation | (items 25–41): 1 | |||
| Amendment Act 1997 | Jan 1996 (a) | |||
| Intellectual Property Laws | 100, 1998 | 27 July 1998 | Schedule 2 (items | — |
| Amendment Act 1998 | 33–46): 27 Jan | |||
| 1999 (b) | ||||
| Intellectual Property Laws | 144, 1999 | 3 Nov 1999 | 3 Nov 1999 | S. 4 |
| Amendment (Border | ||||
| Interception) Act 1999 | ||||
| Public Employment | 146, 1999 | 11 Nov 1999 | Schedule 1 | — |
| (Consequential and | (items 940–943): 5 | |||
| Transitional) Amendment | Dec 1999 (see | |||
| Act 1999 | Gazette 1999, No. | |||
| S584) (c) | ||||
| Trade Marks Amendment | 117, 2000 | 7 Sept 2000 | 11 July 2001 (see | — |
| (Madrid Protocol) Act | Gazette 2001, No. | |||
| 2000 | GN24) | |||
| Trade Marks and Other | 99, 2001 | 22 Aug 2001 | Schedule 1 | Sch. 1 |
| Legislation Amendment | (items 1–46): 19 | (items 4, | ||
| Act 2001 | Sept 2001 (d) | 5, 12, 15, | ||
| Schedule 1 | 23, 32, 33) | |||
| (item 47): (d) |
Table of Acts
| Act | Number | Date | Date of | Application, |
| and year | of Assent | commencement | saving or | |
| transitional | ||||
| provisions | ||||
| Industry, Science and | 140, 2001 | 1 Oct 2001 | 2 Oct 2001 | S. 4 |
| Resources Legislation | ||||
| Amendment (Application | ||||
| of Criminal Code) Act | ||||
| 2001 | ||||
| Proceeds of Crime | 86, 2002 | 11 Oct 2002 | Ss. 1–3: Royal | — |
| (Consequential | Assent | |||
| Amendments and | Remainder: 1 Jan | |||
| Transitional Provisions) | 2003 (see s. 2(1) | |||
| Act 2002 | and Gazette, 2002 | |||
| No. GN44) | ||||
| Intellectual Property Laws | 48, 2003 | 26 June 2003 | Schedule 1 | — |
| Amendment Act 2003 | (items 3–5) and | |||
| Schedule 2 | ||||
| (items 6, 7): | ||||
| 24 July 2003 | ||||
| Intellectual Property Laws | 106, 2006 | 27 Sept 2006 | Schedules 1, 2, 3 | Sch. 1 |
| Amendment Act 2006 | (items 8–16), | (items 2, | ||
| Schedule 4 and | 9), Sch. 2 | |||
| Schedule 12 (item | (item 2), | |||
| 8): 27 Mar 2007 | Sch. 3 | |||
| Schedule 3 (items | (items 2, | |||
| 1–7), Schedule 11 | 5, 9, 11, | |||
| (items 3, 4) and | 14, 16), | |||
| Schedule 13: 28 | Sch. 4 | |||
| Sept 2006 | (items 2, | |||
| Schedule 16 (item | 4), Sch. 11 | |||
| 2): (e) | (item 4) | |||
| Schedule 16 (item | and Sch. | |||
| 3): 5 Dec 1999 | 13 (item 2) | |||
| (see s. 2(1)) | ||||
| Trade Marks Amendment | 114, 2006 | 23 Oct 2006 | Schedule 1 | Sch. 1 |
| Act 2006 | (items 63–92): 27 | (items 5, | ||
| Mar 2007 (see | 8, 11, 13, | |||
| F2007L00392) | 20, 26, 30, | |||
| Remainder: Royal | 34, 36, 51, | |||
| Assent | 62, 69, 72, | |||
| 82, 85, 90) | ||||
| Personal Property | 131, 2009 | 14 Dec 2009 | Schedule 2 | Sch. 2 |
| Securities (Consequential | (items 18–24): | (item 24) | ||
| Amendments) Act 2009 | [see Note 2 and | |||
| Table A] | ||||
| Crimes Legislation | 4, 2010 | 19 Feb 2010 | Schedule 10 | — |
| Amendment (Serious and | (item 30): 20 Feb | |||
| Organised Crime) Act | 2010 | |||
| (No. 2) 2010 | ||||
| Personal Property | 96, 2010 | 6 July 2010 | Schedule 3 (item | — |
| Securities (Corporations | 30): [see (f) and | |||
| and Other Amendments) | Note 3] | |||
| Act 2010 |
Table of Acts
| Act | Number | Date | Date of | Application, |
| and year | of Assent | commencement | saving or transitional | |
| provisions | ||||
| Australian Wine and Brandy Corporation Amendment Act 2010 | 98, 2010 | 6 July 2010 | Schedule 1 (items 70–76, 81, 82): 1 Sept 2010 (see F2010L02117) | Sch. 1 (items 81, 82) |
| Trade Practices Amendment (Australian Consumer Law) Act (No. 2) 2010 | 103, 2010 | 13 July 2010 | Schedule 6 (items 1, 141): [see Note 4] | — |
Act Notes
(a) the time when Parts 4 to 10 of the Administrative Review Tribunal Act 2001 commence; and
The Administrative Review Tribunal Bill has not been enacted. Therefore this amendment does not commence.
(e) Subsection 2(1) (item 15) of the Intellectual Property Laws Amendment Act 2006 provides as follows:
(1) Each provision of this Act specified in column 1 of the table commences, or is taken to have commenced, in accordance with column 2 of the table. Any other statement in column 2 has effect according to its terms.
Commencement information
Column 1 Column 2 Column 3
Provision(s) Commencement Date/Details
15. Schedule 16, Immediately after the commencement of section 1 January 1996 item 2 84 of the Trade Marks Act 1995.
(f) Subsection 2(1) (item 19) of the Personal Property Securities (Corporations and Other Amendments) Act 2010 provides as follows:
(1) Each provision of this Act specified in column 1 of the table commences, or is taken to have commenced, in accordance with column 2 of the table. Any other statement in column 2 has effect according to its terms.
Provision(s) Commencement Date/Details
19. Schedule 3, Immediately after the commencement of item 18 of [see Note 3]
item 30 Schedule 2 to the Personal Property Securities (Consequential Amendments) Act 2009.
Table of Amendments
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
Reader’s Guide ......................... am. No. 140, 2001; No. 114, 2006 List of terms............................... am. No. 91, 1997; No. 48, 2003; No. 114, 2006
Part 1
S. 4A ......................................... ad. No. 140, 2001
Part 2
S. 6............................................ am. No. 91, 1997; No. 100, 1998; Nos. 144 and 146, 1999; No. 117, 2000; No. 99, 2001; No. 48, 2003; Nos. 106 and 114, 2006; No. 98, 2010
S. 6A ......................................... ad. No. 114, 2006
S. 15.......................................... am. No. 114, 2006
Part 3
Note 3 to s. 20(1) ...................... ad. No. 117, 2000
S. 22.......................................... am. No. 114, 2006
S. 26.......................................... am. No. 91, 1997; No. 99, 2001
Part 4 Division 1
S. 27.......................................... am. No. 114, 2006 Note to s. 29(1) ......................... ad. No. 114, 2006
S. 31.......................................... am. No. 114, 2006 Note to s. 31.............................. ad. No. 114, 2006
S. 33.......................................... am. No. 114, 2006 Note to s. 33(1) ......................... rs. No. 114, 2006 Note to s. 33(3) ......................... ad. No. 114, 2006
S. 38.......................................... am. No. 106, 2006
Division 2
S. 41.......................................... am. No. 114, 2006 Note 4 to s. 44(1) ...................... ad. No. 117, 2000 Note 4 to s. 44(2) ...................... ad. No. 117, 2000
Division 3
Div. 3 of Part 4 .......................... rs. No. 114, 2006
S. 45.......................................... am. No. 99, 2001 rs. No. 114, 2006
Notes 1, 2 to s. 45(1)................. ad. No. 99, 2001 rep. No. 114, 2006
S. 46.......................................... rep. No. 99, 2001 ad. No. 114, 2006
Ss. 47–50 .................................. rep. No. 114, 2006
Division 4
S. 51.......................................... am. No. 114, 2006
S. 51A ....................................... ad. No. 114, 2006
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
Part 5 Division 1
S. 52.......................................... am. No. 99, 2001; No. 114, 2006 Note to s. 52(4) ......................... ad. No. 114, 2006
S. 55.......................................... am. No. 114, 2006
Division 2
S. 57.......................................... am. No. 114, 2006 Note to s. 57.............................. ad. No. 114, 2006
S. 58A ....................................... ad. No. 114, 2006
S. 60.......................................... am. No. 114, 2006 Notes 1, 2 to s. 60 ..................... rep. No. 114, 2006 Note to s. 60.............................. ad. No. 114, 2006
S. 61.......................................... am. No. 114, 2006; No. 98, 2010
S. 62A ....................................... ad. No. 114, 2006
Part 6
S. 63.......................................... am. No. 99, 2001; No. 114, 2006
S. 65.......................................... rs. No. 114, 2006
S. 65A ....................................... ad. No. 114, 2006
S. 66.......................................... am. No. 114, 2006
S. 66A ....................................... ad. No. 114, 2006
Part 7 Division 1
S. 68.......................................... am. No. 99, 2001
S. 73.......................................... am. No. 99, 2001 Note to s. 73.............................. ad. No. 106, 2006
Division 2
Heading to Div. 2 of Part 7 ........ rs. No. 99, 2001
S. 74A ....................................... ad. No. 99, 2001
S. 78.......................................... am. No. 99, 2001; No. 114, 2006 Note to s. 78.............................. am. No. 114, 2006 Heading to s. 79 ........................ am. No. 114, 2006
S. 79.......................................... am. No. 114, 2006 Note to s. 79.............................. ad. No. 114, 2006
S. 80.......................................... am. No. 99, 2001
Division 3
Div. 3 of Part 7 .......................... ad. No. 99, 2001 Ss. 80A–80F ............................. ad. No. 99, 2001 Note to s. 80F............................ ad. No. 114, 2006
S. 80G ....................................... ad. No. 99, 2001 Note to s. 80G(1)....................... ad. No. 114, 2006
S. 80H ....................................... ad. No. 99, 2001
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
Part 8
Heading to Part 8 ...................... rs. No. 106, 2006
Division 1 Subdivision A
Heading to Subdiv. A of ............ ad. No. 106, 2006 Div. 1 of Part 8
S. 82A ....................................... ad. No. 114, 2006
S. 83A ....................................... ad. No. 98, 2010
Subdivision B
Heading to Subdiv. B of ............ ad. No. 106, 2006 Div. 1 of Part 8
S. 84.......................................... am. No. 106, 2006
Subdivision C
Subdiv. C of Div. 1 of ................ ad. No. 106, 2006 Part 8
Ss. 84A–84D ............................. ad. No. 106, 2006
Division 2
Ss. 86, 87 .................................. am. No. 114, 2006
S. 88.......................................... am. No. 99, 2001; No. 114, 2006 Note 2 to s. 88(2) ...................... rs. No. 114, 2006
S. 88A ....................................... ad. No. 114, 2006
S. 90.......................................... am. No. 114, 2006
Part 9
S. 92.......................................... am. No. 114, 2006 Note to s. 92(4) ......................... rep. No. 114, 2006 Notes 1, 2 to s. 92(4)................. ad. No. 114, 2006
S. 96A ....................................... ad. No. 99, 2001 Note 2 to s. 100(1) .................... am. No. 114, 2006
S. 101........................................ am. No. 114, 2006
Part 12
Note 3 to s. 120(1) .................... ad. No. 117, 2000 Note 3 to s. 120(2) .................... ad. No. 117, 2000 Note 4 to s. 120(3) .................... ad. No. 117, 2000 Note 4 to s. 121(1) .................... ad. No. 117, 2000
S. 122........................................ am. No. 99, 2001
S. 127........................................ am. No. 99, 2001
S. 128........................................ am. No. 99, 2001; No. 114, 2006 Note to s. 128............................ ad. No. 114, 2006
S. 129........................................ am. No. 100, 1998 Note to s. 129(6) ....................... am. No. 100, 1998
Part 13
S. 131........................................ am. No. 91, 1997 Note to s. 131............................ ad. No. 117, 2000
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
S. 132........................................ am. No. 91, 1997; No. 99, 2001; No. 114, 2006 Heading s. 133 .......................... am. No. 91, 1997
S. 133........................................ am. No. 91, 1997; No. 114, 2006
S. 133A ..................................... ad. No. 144, 1997 Ss. 134–136 .............................. am. No. 91, 1997
S. 137........................................ am. No. 91, 1997; No. 99, 2001 Note 3 to s. 138......................... am. No. 99, 2001 S.139......................................... am. No. 91, 1997 Heading to s. 140 ...................... am. No. 91, 1997
S. 140........................................ am. No. 91, 1997
S. 141........................................ am. No. 91, 1997; No. 114, 2006
S. 141A ..................................... ad. No. 114, 2006
S. 142........................................ am. No. 91, 1997
S. 143........................................ am. No. 91, 1997; No. 140, 2001 Note to s. 143(2) Renumbered Note 1 .............. No. 114, 2006 Note 2 to s. 143(2) .................... ad. No. 114, 2006
Part 14
S. 145........................................ am. No. 140, 2001 Note 3 to s. 145(1) .................... ad. No. 117, 2000
S. 146........................................ am. No. 140, 2001 Note 3 to s. 146(1) .................... ad. No. 117, 2000
S. 147........................................ am. No. 140, 2001 Note 4 to s. 148......................... ad. No. 117, 2000
S. 150........................................ am. No. 140, 2001; No. 4, 2010
S. 151........................................ am. No. 140, 2001 Note 3 to s. 151(4) .................... ad. No. 117, 2000
S. 153........................................ am. No. 140, 2001 Note 2 to s. 153(3) .................... rs. No. 140, 2001
S. 154........................................ am. No. 140, 2001 Note 2 to s. 154(2) .................... rs. No. 140, 2001
S. 155........................................ rep. No. 100, 1998
S. 156........................................ am. No. 100, 1998; No. 140, 2001 Note 2 to s. 156(2) .................... am. No. 100, 1998 Note 3 to s. 156(2) .................... rep. No. 100, 1998 Note 4 to s. 156(2) .................... No. 100, 1998 Relocated from s. 155(2) Note to s. 156(6) ....................... rs. No. 140, 2001 Note 2 to s. 157(2) .................... rs. No. 140, 2001
S. 158........................................ rep. No. 99, 2001 Heading to s.. 159 ..................... am. No. 86, 2002
S. 159........................................ am. No. 99, 2001; No. 86, 2002
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
Heading to s. 160 ...................... rs. No. 140, 2001
S. 160........................................ am. No. 140, 2001 Note to s. 160(1) ....................... ad. No. 140, 2001
Part 15
Note to s. 162............................ rep. No. 114, 2006
Part 16
S. 170........................................ am. No. 99, 2001
S. 173........................................ am. No. 106, 2006
S. 174........................................ rs. No. 106, 2006
S. 175........................................ am. No. 106, 2006 Note 2 to s. 175(2) .................... rs. No. 106, 2006 Note 3 to s. 175(2) .................... ad. No. 106, 2006 Heading to s. 176 ...................... rs. No. 106, 2006
S. 176........................................ am. No. 106, 2006 Note 2 to s. 177(1) .................... am. No. 106, 2006 Note 3 to s. 177(1) .................... am. No. 114, 2006
S. 178........................................ am. No. 106, 2006
S. 179........................................ rs. No. 106, 2006
S. 180A ..................................... ad. No. 99, 2001 Note 2 to s. 181(2) .................... am. No. 106, 2006
S. 181........................................ am. No. 114, 2006
Part 17
S. 186........................................ am. No. 99, 2001 Note to s. 187............................ rs. No. 114, 2006
S. 188........................................ rep. No. 114, 2006
Part 17A
Part 17A .................................... ad. No. 117, 2000
S. 189A ..................................... ad. No. 117, 2000
Part 18
S. 197........................................ am. No. 114, 2006
Part 19
S. 206........................................ am. No. 146, 1999; No. 48, 2003; No. 106, 2006
Part 21 Division 1
S. 212........................................ rs. No. 100, 1998
S. 217A ..................................... ad. No. 106, 2006
Division 2
S. 222........................................ am. No. 99, 2001
Division 3
S. 223........................................ am. No. 91, 1997; No. 106, 2006
S. 223A ..................................... ad. No. 106, 2006
S. 224........................................ am. No. 48, 2003; No. 106, 2006
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
Note to s. 224(5) ....................... ad. No. 114, 2006 S. 226........................................ am. No. 114, 2006 S. 226A ..................................... ad. No. 106, 2006 S. 226B ..................................... ad. No. 114, 2006 Ss. 228A, 228B ......................... ad. No. 100, 1998
S. 229........................................ rs. No. 100, 1998
S. 231........................................ am. No. 100, 1998
Part 22 Division 2
S. 239A ..................................... ad. No. 114, 2006
Division 3
Heading to s. 254 ...................... am. No. 99, 2001 Ss. 254A–254C ......................... ad. No. 99, 2001
Division 4
Heading to s. 261 ...................... am. No. 91, 1997
S. 261........................................ am. No. 91, 1997
Note 2
Note 2
Personal Property Securities (Consequential Amendments) Act 2009
(No. 131, 2009)
The following amendments commence on 1 February 2012 or an earlier time determined by the Minister (see section 306 of the Personal Property Securities Act 2009):
Schedule 2
18 Section 6
Insert:
PPSA security interest (short for Personal Property Securities Act security interest) means:
Note 1: The Personal Property Securities Act 2009 applies to certain security interests in personal property. See the following provisions of that Act:
Note 2: For the meaning of transitional security interest, see section 308 of the Personal Property Securities Act 2009. Division 4 of Part 9.4 of that Act applies to transitional security interests in situations including the bankruptcy or insolvency of a secured party, grantor or debtor.
19 After subsection 22(2)
Insert:
(2A) Despite subsection (1), the recording in the Register of a right that is a PPSA security interest does not affect a dealing with a trade mark.
Note: For PPSA security interest see section 6.
Note 2
20 At the end of section 22
Add:
(4) Subsection (3) does not apply in relation to an equity that is a PPSA security interest.
Note: The Personal Property Securities Act 2009 deals with the rights of purchasers of personal property (including intellectual property such as trade marks) that is subject to PPSA security interests. That Act also provides for the priority and enforcement of PPSA security interests. See the following provisions of that Act:
21 Section 113
Repeal the section, substitute:
113 Application for registration of interest or right in trade mark
Scope
(1) This section applies in relation to an interest in, or right in respect of, a registered trade mark, if the interest or right may not be recorded in the Register under Part 10.
Application for registration of interest or right
Note: For registered trade mark, approved form and file see section 6.
22 Section 117
Repeal the section, substitute:
Note 2
117 Application for recording of interest or right in trade mark
Scope
(1) This section applies in relation to an interest in, or right in respect of, a trade mark, if a person has applied for the registration of the trade mark.
Application for recording of interest or right
Note: For registered trade mark, approved form and file see section 6.
23 At the end of section 210
Add:
(4) This section does not apply in relation to any particular or other matter entered in the Register in relation to a PPSA security interest.
Note 1: For PPSA security interest see section 6.
Note 2: Certain particulars relating to registrations in respect of PPSA security interests under the Personal Property Securities Act 2009 are admissible in evidence: see section 174 of that Act.
As at 1 September 2010 the amendments are not incorporated in this compilation.
Note 3
Note 3
Personal Property Securities (Corporations and Other Amendments) Act 2010
(No. 96, 2010)
The following amendment commences immediately after the commencement of item 18 of Schedule 2 to the Personal Property Securities (Consequential Amendments) Act 2009:
Schedule 3
30 Section 6 (definition of PPSA security interest)
Repeal the definition, substitute:
PPSA security interest (short for Personal Property Securities Act security interest) means a security interest within the meaning of the Personal Property Securities Act 2009 and to which that Act applies, other than a transitional security interest within the meaning of that Act.
Note 1: The Personal Property Securities Act 2009 applies to certain security interests in personal property. See the following provisions of that Act:
Note 2: For the meaning of transitional security interest, see section 308 of the Personal Property Securities Act 2009.
Note: This amendment replaces the definition inserted by item 18 of Schedule 2 to the Personal Property Securities (Consequential Amendments) Act 2009.
As at 1 September 2010 the amendment is not incorporated in this compilation.
Note 4
Note 4
Trade Practices Amendment (Australian Consumer Law) Act (No. 2) 2010
(No. 103, 2010)
The following amendment commences on the start of 1 January 2011:
Schedule 6 1 Amendment of Acts
The specified provisions of the Acts listed in this Part are amended by omitting “Trade Practices Act 1974” and substituting “Competition and Consumer Act 2010”.
Trade Marks Act 1995
141 Section 6 (definition of Commission)
As at 1 September 2010 the amendment is not incorporated in this compilation.
Table A
Table A
Application, saving or transitional provisions
Intellectual Property Laws Amendment (Border Interception) Act 1999
(No. 144, 1999)
4 Application and saving
after the commencement of this Act, as if those amendments had not been made.
Trade Marks and Other Legislation Amendment Act 2001 (No. 99, 2001)
Schedule 1
4 Application of amendment—section 26 of the Trade Marks Act 1995
The amendment of section 26 of the Trade Marks Act 1995 made by this Schedule applies in relation to a prescribed period that begins at or after the commencement of this item.
Table A
5 Transitional—paragraph 26(1)(b) of the Trade Marks Act 1995
12 Application of amendments—section 52 of the Trade Marks Act 1995
The amendments of section 52 of the Trade Marks Act 1995 made by this Schedule apply in relation to a right or interest that becomes vested in another person at or after the commencement of this item.
15 Transitional—subsection 68(1) of the Trade Marks Act 1995
23 Transitional—Division 2 of Part 7 of the Trade Marks Act 1995
(1) This item applies if, before the commencement of this item:
(a) the Registrar purported to renew registration of a trade mark under section 77 or 79 of the Trade Marks Act 1995; and
Table A
(b) particulars of registration were entered in the Register under section 69 of that Act after the end of the period of 10 years after the filing date of the application for registration.
32 Application of amendment—section 132 of the Trade Marks Act 1995
The amendment of section 132 of the Trade Marks Act 1995 made by this Schedule applies in relation to a prescribed period that begins at or after the commencement of this item.
33 Transitional—subsection 132(3) of the Trade Marks Act 1995
Table A
Industry, Science and Resources Legislation Amendment (Application of Criminal Code) Act 2001 (No. 140, 2001)
4 Application of amendments
Intellectual Property Laws Amendment Act 2006 (No. 106, 2006)
Schedule 1
2 Application of amendment of section 38
The amendment of section 38 of the Trade Marks Act 1995 made by this Schedule applies in relation to the acceptance of an application for registration of the trade mark whether the acceptance occurred before, on or after the commencement of the amendment.
9 Application of amendments of Part 8 and section 224
The amendments of Part 8 and section 224 of the Trade Marks Act 1995 made by this Schedule apply in relation to trade marks that became registered on or after the commencement of this Schedule.
Schedule 2
2 Application
The amendment made by this Schedule applies in relation to fees that become payable after the commencement of this Schedule.
Table A
Schedule 3
2 Application of amendment of section 173
The amendment of section 173 of the Trade Marks Act 1995 made by this Part applies in relation to rules filed on or after the commencement of the amendment.
5 Application of amendments of section 175
The amendments of section 175 of the Trade Marks Act 1995 made by this Part apply in relation to decisions to give, or refuse to give, a certificate relating to rules filed on or after the commencement of this Part.
9 Application of new section 174
11 Application of new subsection 176(1)
Table A
14 Application of amendments of section 178
The amendments of section 178 of the Trade Marks Act 1995 made by this Part apply in relation to decisions made on or after the commencement of this Part to approve or not to approve variations of rules governing the use of certification trade marks.
16 Saving of rules made available under old section 179
The Registrar is not required by section 179 of the Trade Marks Act 1995 as amended by this Part to publish rules that have before the commencement of this Part been, and continue to be, made available as required by section 179 of that Act as in force before the commencement of this Part, unless the rules are varied.
Schedule 4
2 Application of section 217A
Section 217A of the Trade Marks Act 1995 applies in relation to applications, made on or after the commencement of that section, for registration of trade marks.
4 Application of section 226A
Section 226A of the Trade Marks Act 1995 applies in relation to information in documents filed on or after the commencement of that section in relation to trade marks. It does not matter whether registration of the trade marks was applied for before, on or after that commencement.
Schedule 11
4 Application
The amendment of the Trade Marks Act 1995 made by this Schedule applies in relation to applications filed after the commencement of the amendment.
Table A
Schedule 13
2 Application
The amendment of subsection 224(7) of the Trade Marks Act 1995 made by this Schedule applies in relation to decisions made by the Registrar after the commencement of this Schedule.
Trade Marks Amendment Act 2006 (No. 114, 2006)
Schedule 1
5 Application
The amendments made by items 3 and 4 apply to:
8 Transitional
The amendment made by item 7 does not apply to rights vested in another person but not appearing in the Register until the end of 6 months after the day on which this Act receives the Royal Assent.
11 Application and saving
Table A
13 Application
The amendment made by item 12 applies to applications for registration of collective trade marks made after the day on which this Act receives the Royal Assent.
20 Application
The amendments made by items 16 to 19 apply to:
26 Application
The amendment made by item 25 applies to:
30 Application
The amendment made by item 29 applies to:
34 Application
The amendment made by item 33 applies to:
36 Application
The amendment made by item 35 applies to:
Table A
51 Application
The amendments made by item 50 apply to notices given under section 132 of the Trade Marks Act 1995 after the commencement of this item.
62 Application
The amendment made by item 61 applies to information published or otherwise made available after the commencement of this item.
69 Application
The amendments made by items 66 and 68 apply to applications made after the commencement of this item.
72 Application
The amendments made by items 70 and 71 apply to applications for registration made after the commencement of this item.
82 Application
The amendments made by items 80 and 81 apply to trade marks whose registration expires at least 12 months after the commencement of this item.
85 Application
The amendment made by item 84 applies to trade marks whose registration expires at least 12 months after the commencement of this item.
90 Transitional provision
(1) This item applies if:
Table A
the amended Trade Marks Act to repay those expenses to the Commonwealth; and
(d) the undertaking is in force.
amended Trade Marks Act means the Trade Marks Act 1995 as in force immediately after the commencement of this item.
unamended Trade Marks Act means the Trade Marks Act 1995 as in force immediately before the commencement of this item.
Personal Property Securities (Consequential Amendments) Act 2009
(No. 131, 2009)
The following provision commences on 1 February 2012 or an earlier time determined by the Minister (see section 306 of the Personal Property Securities Act 2009):
Schedule 2
24 Application of amendments of the Trade Marks Act 1995
Table A
(4) The amendment of the Trade Marks Act 1995 made by item 23 of this Schedule does not apply in relation to any proceedings in a court or tribunal in relation to trade marks (or interests in trade marks) that are commenced before the time the item commences.
Note: Items 19 to 23 commence at the registration commencement time within the meaning of section 306 of the Personal Property Securities Act 2009.
Australian Wine and Brandy Corporation Amendment Act 2010
(No. 98, 2010)
Schedule 1
81 Application of items 71, 74 and 75
The amendments made by items 71, 74 and 75 of this Schedule apply in relation to:
82 Application of item 76
The amendment made by item 76 of this Schedule applies in relation to trade marks registered before, on or after the commencement of this Schedule.