澳大利亚

Trade Marks Act 1995 (consolidated as of March 12, 2014)

 

 

Prepared by the Office of Parliamentary Counsel, Canberra

Trade Marks Act 1995

No. 119, 1995 as amended

Compilation start date: 12 March 2014

Includes amendments up to: Act No. 13, 2013

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About this compilation

This compilation

This is a compilation of the Trade Marks Act 1995 as in force on 12 March

2014. It includes any commenced amendment affecting the legislation to that

date.

This compilation was prepared on 12 March 2014.

The notes at the end of this compilation (the endnotes) include information

about amending laws and the amendment history of each amended provision.

Uncommenced amendments

The effect of uncommenced amendments is not reflected in the text of the

compiled law but the text of the amendments is included in the endnotes.

Application, saving and transitional provisions for provisions and

amendments

If the operation of a provision or amendment is affected by an application,

saving or transitional provision that is not included in this compilation, details

are included in the endnotes.

Modifications

If a provision of the compiled law is affected by a modification that is in force,

details are included in the endnotes.

Provisions ceasing to have effect

If a provision of the compiled law has expired or otherwise ceased to have

effect in accordance with a provision of the law, details are included in the

endnotes.

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Trade Marks Act 1995 1

READER’S GUIDE

This guide aims to give you a general idea of the purpose of this

Act and some information about its structure. It also explains

briefly how the operation and interpretation of this Act is affected

by other Acts.

Purpose of this Act

This Act provides for the registration of trade marks, collective

trade marks, certification trade marks and defensive trade marks

(for a definition of these terms, see sections 17, 162, 169 and 185

respectively) and sets out and protects the rights deriving from

registration.

It is a rewrite of the legislation relating to trade marks, certification

trade marks and defensive trade marks. The previous Act did not

deal with collective trade marks.

In rewriting the legislation, some changes have been made to

reflect international trends towards greater uniformity in that field

of law. In particular, this Act conforms with the minimum

standards and principles prescribed for trade marks in the

Agreement Establishing the World Trade Organization.

An attempt has also been made to simplify the language as much as

possible to make it easier for readers to understand the law. For

that reason, a number of terms used in the old legislation have been

replaced by simpler ones. For example, the word ―owner‖ has been

used where the previous Act referred to the proprietor of a trade

mark. No difference in meaning is intended when simpler terms

have thus been used.

Summary of this Act

Part 1: Deals with formal matters such as the

commencement of this Act and its general

application.

Part 2: Contains definitions and terms that are used

frequently throughout this Act.

Part 3: Explains what is a trade mark and sets out

the rights given by this Act to the registered

owner and any authorised user of a

registered trade mark.

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2 Trade Marks Act 1995

Parts 4 and 5: Deal with the steps that you have to take to

have a trade mark registered.

Part 6: Sets out how and why an application for

registration and other documents may be

amended.

Parts 7, 8 and 9: Deal with the registration of trade marks and

how and why particulars of the registration

of a trade mark may be amended, cancelled

or removed from the Register.

Parts 10 and 11: Deal with the assignment of trade marks, the

registration of assignments of registered

trade marks and the recording of the rights

and interests that persons (other than

registered owners) may have in registered

trade marks or trade marks whose

registration is being sought.

Parts 12, 13 and 14: Deal with the protection of trade marks.

Part 12 sets out what constitutes an

infringement of a trade mark and how to

obtain redress and relief in cases of

infringement. Part 13 provides for a special

regime to deal with any importation of

goods that would infringe a registered trade

mark. Part 14 makes certain types of

conduct offences against this Act.

Parts 15, 16 and 17: Explain what are collective trade marks,

certification trade marks and defensive trade

marks and apply to them, with necessary

alterations, the provisions of this Act

relating to trade marks.

Part 17A: Enables the making of regulations to enable

the performance of the obligations of

Australia, or to obtain for Australia any

advantage or benefit, under the Madrid

Protocol. Those regulations prevail over this

Act to the extent of any inconsistency.

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Part 18: Deals with the jurisdiction of the courts to

hear and determine matters arising under

this Act.

Parts 19 and 20: Deal with the Trade Marks Office, the

officials responsible for its administration

and the keeping of the Register of Trade

Marks.

Part 21: Deals with miscellaneous matters such as

the payment of fees, the service of

documents and the making of regulations.

Part 22: Repeals the Trade Marks Act 1955 and explains how

matters that were being dealt with under that

Act at the time of its repeal are to be dealt

with when this Act is in force.

How to use this Act

Definitions: Section 6 contains definitions of terms that have

special meanings and are used frequently in this Act. A list of

terms defined in section 6 appears after the Table of Provisions.

Notes: Notes are to be found throughout the text. They are

designed to help you find your way through the Act. They may tell

you that certain words or terms are defined and where to find the

definition; they may alert you to other provisions in this Act and in

other legislation that are relevant to the text you are reading; or

they may draw your attention to information that may help you to

understand the contents or legal consequences of certain provisions

or how to comply with them.

Chart: The appendix to this Guide contains a chart showing the

main steps involved in obtaining the registration of a trade mark.

The chart is intended to be used only as an illustration and is not

intended to have any other effect. If there is any inconsistency

between any matter contained in the chart and a provision of this

Act or the regulations, the provision prevails.

Related legislation

The following Acts are directly relevant to the operation or

interpretation of this Act.

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4 Trade Marks Act 1995

Acts Interpretation Act 1901

That Act contains general rules about the meaning or effect of

many terms and provisions that are commonly used in

Commonwealth Acts. Some of the notes used in this Act draw your

attention to some of them, but it is not possible to refer to all of

them.

Crimes Act 1914

In Parts 13 and 14, you will find that a penalty, expressed as

imprisonment for a particular period or a number of penalty units,

is set out at the foot of some sections or subsections. Section 4D of

the Crimes Act 1914 provides that this indicates that any

contravention of the section or subsection is an offence against this

Act punishable upon conviction by a penalty not exceeding the

penalty set out.

If only a term of imprisonment is provided as the penalty for an

offence, subsections 4B(2) and 4B(3) of the Crimes Act 1914 allow

a court to impose an appropriate fine instead of, or in addition to,

the term of imprisonment.

Section 4AA of the Crimes Act 1914 sets out the amount of a

penalty unit. Under subsection 4B(3) of that Act a court may

impose on a body corporate convicted of an offence a fine of up to

5 times the amount of the fine that could be imposed on a natural

person convicted of that offence.

Criminal Code

The Criminal Code is set out in the Schedule to the Criminal Code

Act 1995. It contains many general rules that apply to offences.

Chapter 2 of the Criminal Code sets out the general principles of

criminal responsibility. For example, it has default fault elements

that apply to offences that do not specify a fault element and

provides the consequences of an offence being an offence of strict

liability.

Trade Marks Act 1955

That Act is repealed by this Act. It contained the legislation that

previously applied to trade marks, certification trade marks and

defensive trade marks. Even though it is repealed, this Act provides

that some of the provisions of that Act are to continue to apply to

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Trade Marks Act 1995 5

certain matters that were being dealt with under that Act

immediately before it was repealed.

The list of Acts cited above is not exhaustive. Other Acts may also

affect the operation or interpretation of this Act.

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6 Trade Marks Act 1995

Application (see section 27)

Must be in approved form.

Renewal

Required every 10 years.

Registration

The Registrar must give the registered owner a

certificate and advertise the registration in the

Official Journal (see section 71).

Initial registration is for a period of 10 years

from the filing date.

Acceptance

Notice of acceptance is sent to the applicant and

advertised in the Official Journal.

In some cases the Registrar may only accept an

application subject to certain conditions or

limitations.

Examination

The application will be examined to ensure it is in

accordance with the Act and there are no

grounds for rejecting it (see section 31).

Report Issued

A report to the

applicant explains any

deficiencies in the

application.

Hearing by Registrar *

Registrar must provide

the applicant with an

opportunity to be heard

before an application is

rejected.

Rejection

The Registrar will

reject an application

if it fails any of the

criteria in this Act.

Opposition

Another person may

oppose registration of the

trade mark under Part 5.

Hearing by Registrar *

Refusal to Register

After considering

the case presented

at opposition the

Registrar may

decide to refuse to

register the trade

mark.

Applicant

Response

Reconsideration

* An Appeal may be made to the Federal Court aginst the decision of the Registrar.

Unbroken lines signify the most likely course of events.

Note: Fees and time limits may apply at various stages of this process.

Appendix - Obtaining registration of a trade mark

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Contents

Part 1—Preliminary 1 1 Short title ...........................................................................................1

2 Commencement.................................................................................1

3 Act binds the Crown..........................................................................1

4 Application of Act .............................................................................1

4A Application of the Criminal Code .....................................................2

5 Repeal of Trade Marks Act 1994 .......................................................2

Part 2—Interpretation 3 6 Definitions.........................................................................................3

6A Periods expressed in months............................................................10

7 Use of trade mark ............................................................................10

8 Definitions of authorised user and authorised use ..........................11

9 Definition of applied to and applied in relation to ..........................12

10 Definition of deceptively similar .....................................................13

11 Definition of pending ......................................................................13

12 Definition of priority date ...............................................................14

13 Definition of remove from the Register ...........................................14

14 Definition of similar goods and similar services .............................14

15 Definition of originate in relation to wine.......................................15

16 Definition of repealed Act ...............................................................15

Part 3—Trade marks and trade mark rights 16 17 What is a trade mark? ......................................................................16

18 Certain signs not to be used as trade marks etc................................16

19 Certain trade marks may be registered.............................................16

20 Rights given by registration of trade mark ......................................17

21 Nature of registered trade mark as property ....................................17

22 Power of registered owner to deal with trade mark .........................18

23 Limitation on rights if similar trade marks etc. registered by

different persons ..............................................................................19

24 Trade mark consisting of sign that becomes accepted as sign

describing article etc........................................................................19

25 Trade mark relating to article etc. formerly manufactured

under patent .....................................................................................20

26 Powers of authorised user of registered trade mark .........................21

Part 4—Application for registration 23

Division 1—General 23

27 Application—how made..................................................................23

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28 Application by joint owners ............................................................24

29 Application for registration of trade mark whose registration

has been sought in a Convention country—claim for priority .........24

30 Particulars of application to be published........................................25

31 Registrar to examine, and report on, application .............................25

32 Registrar to decide on disputed classification of goods etc. ............26

33 Application accepted or rejected......................................................26

34 Notice etc. of decision .....................................................................27

35 Appeal .............................................................................................27

36 Deferment of acceptance .................................................................27

37 Lapsing of application if not accepted in time.................................27

38 Revocation of acceptance ................................................................28

Division 2—Grounds for rejecting an application 29

39 Trade mark containing etc. certain signs .........................................29

40 Trade mark that cannot be represented graphically .........................29

41 Trade mark not distinguishing applicant’s goods or services ..........29

42 Trade mark scandalous or its use contrary to law............................31

43 Trade mark likely to deceive or cause confusion.............................31

44 Identical etc. trade marks.................................................................31

Division 3—Divisional applications 34

45 Divisional applications ....................................................................34

46 Rules relating to divisional applications ..........................................34

Division 4—Application for registration of series of trade marks 35

51 Application—series of trade marks .................................................35

51A Linking series applications ..............................................................35

Part 5—Opposition to registration 37

Division 1—General 37

52 Opposition .......................................................................................37

52A Notice of intention to defend opposition to registration ..................38

53 Circumstances in which opposition may proceed in name of

a person other than the person who filed the notice.........................38

54 Opposition proceedings ...................................................................38

54A Lapsing of opposed application if no notice to defend the

application filed ...............................................................................39

55 Decision...........................................................................................39

56 Appeal .............................................................................................40

Division 2—Grounds for opposing registration 41

57 Registration may be opposed on same grounds as for

rejection...........................................................................................41

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58 Applicant not owner of trade mark ..................................................41

58A Opponent’s earlier use of similar trade mark ...................................41

59 Applicant not intending to use trade mark .......................................42

60 Trade mark similar to trade mark that has acquired a

reputation in Australia .....................................................................42

61 Trade mark containing or consisting of a false geographical

indication.........................................................................................42

62 Application etc. defective etc. .........................................................44

62A Application made in bad faith..........................................................44

Part 6—Amendment of application for registration of a trade

mark and other documents 45 63 Amendment of application for registration of trade mark................45

64 Amendment before particulars of application are published............45

65 Amendment after particulars of application have been

published—request for amendment not advertised..........................45

65A Amendment after particulars of application have been

published—request for amendment advertised................................46

66 Amendment of other documents......................................................47

66A Registrar may require certain requests to be in writing ...................48

67 Appeal .............................................................................................48

Part 7—Registration of trade marks 49

Division 1—Initial registration 49

68 Obligation to register .......................................................................49

69 Registration—how effected .............................................................49

70 Colours in registered trade marks ....................................................50

71 Notification of registration ..............................................................50

72 Date and term of registration ...........................................................50

73 Ceasing of registration.....................................................................51

74 Disclaimers......................................................................................52

Division 2—Renewal of registration (general) 53

74A Application of this Division ............................................................53

75 Request for renewal .........................................................................53

76 Notice of renewal due......................................................................53

77 Renewal before registration expires ................................................54

78 Failure to renew...............................................................................54

79 Renewal within 6 months after registration expires.........................54

80 Status of unrenewed trade mark ......................................................54

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Division 3—Renewal of registration (registration delayed for 10

or more years after filing date) 56

80A Application of this Division ............................................................56

80B Expiry of registration.......................................................................56

80C Notice about renewal .......................................................................56

80D Request for renewal .........................................................................57

80E Renewal within prescribed period ...................................................57

80F Failure to renew...............................................................................57

80G Renewal within 10 months after end of prescribed period...............58

80H Status of unrenewed trade mark ......................................................58

Part 8—Amendment, cancellation and revocation of

registration 60

Division 1—Action by Registrar 60

Subdivision A—Amending Register 60

81 Correction of Register .....................................................................60

82 Adaptation of classification .............................................................60

82A Linking series registrations..............................................................60

83 Amendment of particulars of trade mark entered in Register ..........61

83A Amendment of registered trade mark—inconsistency with

international agreements..................................................................62

Subdivision B—Cancelling registration 64

84 Cancellation of registration .............................................................64

Subdivision C—Revoking registration 64

84A Registration may be revoked ...........................................................64

84B Registration must be revoked if opposition was ignored in

registration process..........................................................................66

84C Effect of revocation of registration..................................................66

84D Appeal from revocation of registration............................................68

Division 2—Action by court 69

85 Amendment to correct error or omission .........................................69

86 Amendment or cancellation on ground of contravention of

condition etc. ...................................................................................69

87 Amendment or cancellation—loss of exclusive rights to use

trade mark........................................................................................69

88 Amendment or cancellation—other specified grounds....................70

88A Applications by Registrar ................................................................71

89 Rectification may not be granted in certain cases if registered

owner not at fault etc. ......................................................................71

90 Duties and powers of Registrar........................................................72

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Division 3—Amendment of certificate of registration 73

91 Amendment of certificate of registration.........................................73

Part 9—Removal of trade mark from Register for non-use 74 92 Application for removal of trade mark from Register etc. ...............74

93 Time for making application ...........................................................75

94 Referral to court...............................................................................76

95 Notification of application...............................................................76

96 Notice of opposition ........................................................................76

96A Circumstances in which opposition may proceed in name of

a person other than the person who filed the notice.........................77

97 Removal of trade mark from the Register etc. if application

unopposed etc. .................................................................................77

98 Trade mark restored to Register if notice of opposition filed

within extended time .......................................................................78

99 Proceedings before Registrar ...........................................................78

99A Dismissal of opposition filed with Registrar ...................................78

100 Burden on opponent to establish use of trade mark etc. ..................79

101 Determination of opposed application—general .............................81

102 Determination of opposed application—localised use of

trade mark........................................................................................82

103 Registrar to comply with order of court...........................................83

104 Appeal .............................................................................................83

105 Certificate—use of trade mark.........................................................83

Part 10—Assignment and transmission of trade marks 85 106 Assignment etc. of trade mark .........................................................85

107 Applications for record to be made of assignment etc. of

trade mark whose registration is sought...........................................85

108 Recording of assignment etc. of trade mark whose

registration is sought........................................................................86

109 Application for record of assignment etc. of registered trade

mark to be entered in Register .........................................................86

110 Recording of assignment etc. of registered trade mark ....................86

111 Notice of application to be given to person recorded as

claiming interest in trade mark etc...................................................87

Part 11—Voluntary recording of claims to interests in and

rights in respect of trade marks 88

Division 1—Preliminary 88

112 Object of Part...................................................................................88

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

marks 89

113 Application for registration of interest or right in trade mark ..........89

114 Record of claims to interest etc. ......................................................89

115 Amendment and cancellation ..........................................................90

116 Record not proof etc. of existence of right etc. ................................90

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

trade marks 91

117 Application for recording of interest or right in trade mark.............91

118 Record of claims to interest etc. ......................................................91

119 Amendment and cancellation ..........................................................91

Part 12—Infringement of trade marks 92 120 When is a registered trade mark infringed? .....................................92

121 Infringement of trade mark by breach of certain restrictions...........93

122 When is a trade mark not infringed?................................................95

123 Goods etc. to which registered trade mark has been applied

by or with consent of registered owner............................................96

124 Prior use of identical trade mark etc. ...............................................96

125 What courts may hear action for infringement of registered

trade mark........................................................................................97

126 What relief can be obtained from court ...........................................97

127 Special case—plaintiff not entitled to damages etc. ........................98

128 Circumstances in which action may not be brought ........................99

129 Groundless threats of legal proceedings ..........................................99

130 Counterclaim by defendant in action on groundless threats ..........101

Part 13—Importation of goods infringing Australian trade

marks 102 131 Object of Part.................................................................................102

132 Notice of objection to importation.................................................102

133 Customs CEO may seize goods infringing trade mark ..................103

133A Determinations about owners of goods .........................................105

134 Notice of seizure............................................................................105

134A Inspection, release etc. of seized goods .........................................106

135 Consent to forfeiture of seized goods ............................................107

136 Claim for release of seized goods ..................................................107

136A Seized goods not claimed are forfeited..........................................108

136B Late claim for release of seized goods...........................................108

136C Objector to be notified of claim.....................................................109

136D Release of seized goods.................................................................109

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136E Goods released but not collected are forfeited...............................110

137 Action for infringement of trade mark...........................................110

138 Action for infringement by authorised user ...................................111

139 Disposal of seized goods forfeited to the Commonwealth.............112

140 Power of Customs CEO to retain control of goods........................113

141 Insufficient security .......................................................................113

141A Failure to comply with undertaking etc. ........................................113

142 Commonwealth not liable for loss etc. suffered because of

seizure............................................................................................114

143 Power to require information.........................................................114

144 Modification in relation to Norfolk Island etc. ..............................115

Part 14—Offences 116 145 Falsifying or removing a registered trade mark .............................116

146 Falsely applying a registered trade mark .......................................117

147 Making a die etc. for use in trade marks offence ...........................118

147A Drawing etc. trade marks for use in offence ..................................119

147B Possessing or disposing of things for use in trade marks

offence...........................................................................................120

148 Goods with false trade marks ........................................................121

150 Aiding and abetting offences .........................................................123

151 False representations regarding trade marks ..................................123

152 False entries in Register etc. ..........................................................124

153 Disobeying summons etc...............................................................125

154 Refusing to give evidence etc. .......................................................126

156 Acting or holding out without being registered .............................126

157 False representation about Trade Marks Office .............................128

157A Incorporated trade marks attorney must have a trade marks

attorney director ............................................................................128

159 Forfeiture orders under the proceeds of crime legislation..............130

160 Conduct of employees and agents of natural persons ....................131

Part 15—Collective trade marks 133 161 Object of Part.................................................................................133

162 What is a collective trade mark?....................................................133

163 Application of Act .........................................................................133

164 Application for registration ...........................................................134

165 Limitation on rights given by registered collective trade

mark...............................................................................................134

166 Assignment etc. of collective trade mark.......................................134

167 Infringement of collective trade mark............................................134

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Part 16—Certification trade marks 135 168 Object of Part.................................................................................135

169 What is a certification trade mark? ................................................135

170 Application of Act .........................................................................135

171 Rights given by registration of a certification trade mark..............136

172 Rights of persons allowed to use certification trade mark .............136

173 Rules governing the use of certification trade marks .....................136

174 Registrar to send documents to Commission.................................137

175 Certificate by Commission ............................................................137

176 Acceptance or rejection of application ..........................................138

177 Additional ground for rejecting an application or opposing

registration—certification trade mark not distinguishing

certified goods or services .............................................................139

178 Variation of rules...........................................................................140

179 Registrar must publish rules ..........................................................140

180 Assignment of registered certification trade mark .........................140

180A Assignment of unregistered certification trade mark .....................141

181 Rectification of the Register by order of court ..............................141

182 Variation of rules by order of court ...............................................142

183 Delegation of Commission’s powers and functions.......................143

Part 17—Defensive trade marks 144 184 Object of Part.................................................................................144

185 Defensive trade marks ...................................................................144

186 Application of Act .........................................................................145

187 Additional grounds for rejecting application for registration

or opposing registration.................................................................145

189 Cancellation of registration by Registrar .......................................145

Part 17A—Protected international trade marks under the

Madrid Protocol 146 189A Regulations implementing the Madrid Protocol ............................146

Part 18—Jurisdiction and powers of courts 148 190 Prescribed courts ...........................................................................148

191 Jurisdiction of the Federal Court ...................................................148

191A Jurisdiction of the Federal Circuit Court .......................................148

192 Jurisdiction of other prescribed courts...........................................149

193 Exercise of jurisdiction..................................................................149

194 Transfer of proceedings .................................................................149

195 Appeals..........................................................................................150

196 Registrar may appear in appeals ....................................................151

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197 Powers of Federal Court and Federal Circuit Court on

hearing an appeal...........................................................................151

198 Practice and procedure of prescribed courts ..................................151

Part 19—Administration 152 199 Trade Marks Office and sub-offices ..............................................152

200 Seal of Trade Marks Office ...........................................................152

201 Registrar of Trade Marks...............................................................152

202 Registrar’s powers .........................................................................152

203 Exercise of power by Registrar......................................................153

204 Registrar to act as soon as practicable ...........................................153

205 Deputy Registrar of Trade Marks ..................................................153

206 Delegation of Registrar’s powers and functions ............................154

Part 20—The Register and official documents 155 207 The Register ..................................................................................155

208 Register may be kept on computer ................................................155

209 Inspection of Register....................................................................156

210 Evidence—the Register .................................................................156

211 Evidence—certified copies of documents .....................................156

Part 21—Miscellaneous 158

Division 1—Applications and other documents 158

212 Making and signing applications etc. ............................................158

213 Filing of documents .......................................................................158

214 Withdrawal of application etc........................................................158

215 Address for service ........................................................................159

216 Change of name.............................................................................160

217 Death of applicant etc. ...................................................................161

217A Prescribed documents relating to trade marks to be made

available for public inspection.......................................................161

Division 2—Proceedings before the Registrar or a court 162

218 Description of registered trade mark .............................................162

219 Evidence of trade usage.................................................................162

220 Death of party to proceeding before Registrar ...............................162

221 Costs awarded by Registrar ...........................................................162

222 Security for costs ...........................................................................163

Division 3—General 164

223 Fees ...............................................................................................164

223A Doing act when Trade Marks Office reopens after end of

period otherwise provided for doing act ........................................164

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224 Extension of time...........................................................................165

225 Convention countries.....................................................................167

226 Publication of Official Journal etc.................................................168

226A Requirements for confidential treatment of information held

in the Trade Marks Office .............................................................168

226B Certain proceedings do not lie .......................................................168

227 Notice regarding review of decision by Administrative

Appeals Tribunal ...........................................................................169

228 Use of trade mark for export trade.................................................169

228A Registration of trade marks attorneys ............................................170

228B Deregistration of trade marks attorneys .........................................172

229 Privileges of trade marks attorney and patent attorney ..................172

229A Designated Manager may disclose information to ASIC...............173

230 Passing off actions.........................................................................173

231 Regulations....................................................................................174

231A Regulations may make provision in relation to the Tobacco

Plain Packaging Act 2011 .............................................................176

Part 22—Repeal and transitional 178

Division 1—Repeal 178

232 Repeal............................................................................................178

Division 2—Marks registered under the repealed Act 179

233 Automatic registration under this Act............................................179

234 Registration conclusive after 7 years .............................................179

235 Term of registration .......................................................................180

236 Renewal.........................................................................................180

237 Restoration of particulars to Register and renewal of

registration where registration expired within 12 months

before 1 January 1996 ...................................................................181

238 Disclaimers....................................................................................181

239 Rules governing the use of certification trade marks

registered in Part C of the old register ...........................................182

239A Linked trade marks ........................................................................182

Division 3—Matters pending immediately before repeal of

repealed Act 184

240 Applications, notices etc.—general ...............................................184

241 Application for registration of trade mark .....................................184

242 Divisional application in relation to pending application ..............186

243 More than one application lodged on same day for

registration of same trade mark .....................................................187

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244 Application for registration of trade mark whose registration

has been sought in Convention country .........................................188

245 Application for registration of a mark in Part C of the old

register ...........................................................................................189

246 Application for registration of a mark in Part D of the old

register ...........................................................................................189

247 Amendment of application—specification of goods or

services ..........................................................................................190

248 Revival of application for registration of trade mark that had

lapsed before 1 January 1996 ........................................................190

249 Application for registration of assignment etc. ..............................191

250 Rectification of Register ................................................................192

251 Action for removal of trade mark from Register for non-use ........192

252 Action for infringement of trade mark etc. ....................................192

253 Action under this Act for infringement of trade mark under

repealed Act...................................................................................192

254 Acts not constituting infringement of existing registered

mark...............................................................................................193

254A Acts not constituting infringement of trade mark—pending

application under the repealed Act ................................................193

254B Part B defence—infringement of existing registered mark............194

254C Part B defence—infringement of trade mark (pending

application under the repealed Act) ...............................................195

255 Application of this Act—general ...................................................195

256 Fees ...............................................................................................196

Division 4—General 197

257 The Registrar and Deputy Registrar ..............................................197

258 Confidential information received by Registrar under

section 74 of the repealed Act .......................................................197

259 Documents kept under repealed Act ..............................................197

260 Address for service ........................................................................197

261 Notices to Customs CEO objecting to importation of goods .........199

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xii Trade Marks Act 1995

Endnotes 200

Endnote 1—About the endnotes 200

Endnote 2—Abbreviation key 202

Endnote 3—Legislation history 203

Endnote 4—Amendment history 208

Endnote 5—Uncommenced amendments [none] 218

Endnote 6—Modifications 219

Endnote 7—Misdescribed amendments [none] 220

Endnote 8—Miscellaneous [none] 220

ComLaw Authoritative Act C2014C00110

List of terms defined in section 6

action period

applicant

applied to

applied in relation to

approved form

assignment

Australia

Australian continental shelf

authorised use

authorised user

certification trade mark

claim period

collective trade mark

Commission

company

Convention country

Customs CEO

date of registration

deceptively similar

defensive trade mark

Deputy Registrar

Designated Manager

designated owner

divisional application

employee

examine

existing registered mark

Federal Court

file

filing date

geographical indication

goods of a person

incorporated legal practice

incorporated trade marks attorney

intellectual property advice

lawyer

limitations

month

notified trade mark

objector

Official Journal

old register

opponent

originate

patent attorney

pending

person

personal information

predecessor in title

prescribed court

priority date

Professional Standards Board

Register

registered owner

registered trade mark

registered trade marks attorney

Registrar

registration number

remove from the Register

repealed Act

seized goods

services of a person

sign

similar goods

similar services

this Act

trade mark

trade marks attorney director

trade marks work

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

ComLaw Authoritative Act C2014C00110

ComLaw Authoritative Act C2014C00110

Preliminary Part 1

Section 1

Trade Marks Act 1995 1

An Act relating to trade marks

Part 1—Preliminary

1 Short title

This Act may be cited as the Trade Marks Act 1995.

2 Commencement

(1) Part 1 commences on the day on which this Act receives the Royal

Assent.

(2) This Act, other than Part 1, commences on 1 January 1996.

3 Act binds the Crown

(1) This Act binds the Crown in right of the Commonwealth, of each

of the States, of the Australian Capital Territory, of the Northern

Territory and of Norfolk Island.

(2) Nothing in this Act makes the Crown liable to be prosecuted for an

offence.

4 Application of Act

This Act extends to:

(a) Christmas Island; and

(b) Cocos (Keeling) Islands; and

(c) Norfolk Island; and

(d) the Australian continental shelf; and

(e) the waters above the Australian continental shelf; and

(f) the airspace above Australia and the Australian continental

shelf.

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

ComLaw Authoritative Act C2014C00110

Part 1 Preliminary

Section 4A

2 Trade Marks Act 1995

4A Application of the Criminal Code

Chapter 2 of the Criminal Code applies to all offences created by

this Act.

Note: Chapter 2 of the Criminal Code sets out the general principles of criminal responsibility.

5 Repeal of Trade Marks Act 1994

The Trade Marks Act 1994 is repealed.

ComLaw Authoritative Act C2014C00110

Interpretation Part 2

Section 6

Trade Marks Act 1995 3

Part 2—Interpretation

6 Definitions

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

action period, in relation to particular seized goods, means the

period prescribed by the regulations after notice of a claim for

release of the goods is given to the objector under section 136C.

applicant, in relation to an application, means the person in whose

name the application is for the time being proceeding.

applied to and applied in relation to have the respective meanings

given in section 9.

approved form means a form approved by the Registrar for the

purposes of the provision in which the expression appears.

assignment, in relation to a trade mark, means an assignment by

act of the parties concerned.

Australia includes the following external Territories:

(a) Christmas Island;

(b) Cocos (Keeling) Islands;

(c) Norfolk Island.

Australian continental shelf has the same meaning as in the Seas

and Submerged Lands Act 1973.

authorised use, in relation to a trade mark, has the meaning given

by section 8.

authorised user, in relation to a trade mark, has the meaning given

by section 8.

certification trade mark has the meaning given by section 169.

ComLaw Authoritative Act C2014C00110

Part 2 Interpretation

Section 6

4 Trade Marks Act 1995

claim period, in relation to particular seized goods, means the

period prescribed by the regulations after notice of seizure of the

goods is given to the designated owner under section 134.

collective trade mark has the meaning given by section 162.

Commission means the Australian Competition and Consumer

Commission established under the Competition and Consumer Act

2010.

company means a company registered under the Corporations Act

2001.

Convention country means a foreign country or region of a kind

prescribed by the regulations.

Customs CEO means the Chief Executive Officer of Customs.

date of registration means:

(a) in relation to the registration of a trade mark in respect of

particular goods or services other than a trade mark to which

paragraph (b) applies—the day from which the registration of

the trade mark in respect of those goods or services is taken

to have had effect under subsection 72(1) or (2); or

(b) in relation to a trade mark to which subsection 239A(3)

applies—the day referred to in subsection 239A(4).

deceptively similar has the meaning given by section 10.

defensive trade mark has the meaning given by section 185.

Deputy Registrar means a Deputy Registrar of Trade Marks.

Designated Manager has the same meaning as in the Patents Act

1990.

designated owner, in relation to goods imported into Australia,

means:

(a) the person identified as the owner of the goods on the entry

made in relation to the goods under section 68 of the

Customs Act 1901; or

ComLaw Authoritative Act C2014C00110

Interpretation Part 2

Section 6

Trade Marks Act 1995 5

(b) if no such entry exists—the person determined to be the

owner of the goods under section 133A of this Act.

divisional application has the meaning given by section 45.

employee means a person, other than the Registrar or a Deputy

Registrar, who:

(a) is a person engaged under the Public Service Act 1999 and is

employed in the Trade Marks Office; or

(b) is not such a person but performs services, in the Trade

Marks Office, for or on behalf of the Commonwealth.

examine, in relation to an application for the registration of a trade

mark, means to carry out an examination under section 31 in

relation to the application.

existing registered mark means a mark that was registered in Part

A, B, C or D of the old register before 1 January 1996 and whose

registration under the repealed Act was due to expire after that day.

Federal Circuit Court means the Federal Circuit Court of

Australia.

Federal Court means the Federal Court of Australia.

file means to file at the Trade Marks Office.

Note: See section 213.

filing date means:

(a) in relation to an application for the registration of a trade

mark other than an application referred to in another

paragraph of this definition—the day on which the

application is filed; or

(b) in relation to a divisional application for the registration of a

trade mark—the filing date of the application that is the

parent application (within the meaning of section 45) in

relation to the divisional application; or

(c) in relation to an application to which section 241 applies—

the day referred to in subsection 241(5); or

(d) in relation to an application made under section 243—the day

referred to in subsection 243(6); or

ComLaw Authoritative Act C2014C00110

Part 2 Interpretation

Section 6

6 Trade Marks Act 1995

(e) in relation to a prescribed application—the day determined in

the prescribed way.

geographical indication, in relation to goods, means a sign that

identifies the goods as originating in a country, or in a region or

locality in that country, where a given quality, reputation or other

characteristic of the goods is essentially attributable to their

geographical origin.

goods of a person means goods dealt with or provided in the

course of trade by the person.

incorporated legal practice means a body corporate recognised

under a law of the Commonwealth, a State or a Territory as an

incorporated legal practice (however described).

incorporated trade marks attorney has the meaning given by

subsection 228A(6B).

intellectual property advice has the meaning given by

subsection 229(3).

lawyer means a barrister or solicitor of the High Court or of the

Supreme Court of a State or Territory.

limitations means limitations of the exclusive right to use a trade

mark given by the registration of the trade mark, including

limitations of that right as to:

(a) mode of use; or

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

(c) use in relation to goods or services to be exported.

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.

ComLaw Authoritative Act C2014C00110

Interpretation Part 2

Section 6

Trade Marks Act 1995 7

Official Journal means the Official Journal of Trade Marks

mentioned in section 226.

old register means the Register of Trade Marks kept under the

repealed Act.

opponent, in relation to the registration of a trade mark, means:

(a) the person who has filed (under section 52) a notice of

opposition to the registration of the trade mark; or

(b) if section 53 applies—a person in whose name the notice of

opposition is taken to have been filed.

originate, in relation to wine, has the meaning given by section 15.

patent attorney means a person registered as a patent attorney

under the Patents Act 1990.

pending, in relation to an application for the registration of a trade

mark, has the meaning given by section 11.

person includes a body of persons, whether incorporated or not.

personal information has the same meaning as in the Privacy Act

1988.

PPSA security interest (short for Personal Property Securities Act

security interest) means a security interest within the meaning of

the Personal Property Securities Act 2009 and to which that Act

applies, other than a transitional security interest within the

meaning of that Act.

Note 1: The Personal Property Securities Act 2009 applies to certain security interests in personal property. See the following provisions of that Act:

(a) section 8 (interests to which the Act does not apply);

(b) section 12 (meaning of security interest);

(c) Chapter 9 (transitional provisions).

Note 2: For the meaning of transitional security interest, see section 308 of the Personal Property Securities Act 2009.

predecessor in title, in relation to a person who claims to be the

owner of a trade mark, means:

ComLaw Authoritative Act C2014C00110

Part 2 Interpretation

Section 6

8 Trade Marks Act 1995

(a) if the trade mark was assigned or transmitted to one or more

than one other person before it was assigned or transmitted to

the first-mentioned person—that other person or any one of

those other persons; or

(b) if paragraph (a) does not apply—the person who assigned the

trade mark, or from whom the trade mark was transmitted, to

the first-mentioned person.

Note: In the case of a trade mark that is neither registered nor the subject of an application for registration, the trade mark may be assigned or transmitted in Australia only in conjunction with the goodwill of a business concerned with the trade mark. If the trade mark is registered or the subject of an application for registration, section 106 provides that the trade mark may be assigned or transmitted with or without the goodwill of the business.

prescribed court means a court that is under section 190 a

prescribed court for the purposes of this Act.

priority date has the meaning given by section 12.

Professional Standards Board has the same meaning as in the

Patents Act 1990.

Register means the Register of Trade Marks kept under

section 207.

registered owner, in relation to a registered trade mark, means the

person in whose name the trade mark is registered.

registered trade mark means a trade mark whose particulars are

entered in the Register under this Act.

Note: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

registered trade marks attorney means a person registered as a

trade marks attorney under this Act.

Registrar means the Registrar of Trade Marks.

Note: Sections 201, 202, 203, 204 and 206 deal with the office, powers and functions of the Registrar of Trade Marks.

registration number, in relation to a registered trade mark, means

the number given to it under subsection 68(2).

ComLaw Authoritative Act C2014C00110

Interpretation Part 2

Section 6

Trade Marks Act 1995 9

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.

trade marks attorney director has the meaning given by

subsection 228A(6C).

trade marks work has the meaning given by subsection 157A(8).

transmission means:

(a) transmission by operation of law; or

(b) devolution on the personal representative of a deceased

person; or

(c) any other kind of transfer except assignment.

use of a trade mark has a meaning affected by subsections 7(1),

(2) and (3).

use of a trade mark in relation to goods has the meaning given by

subsection 7(4).

use of a trade mark in relation to services has the meaning given

by subsection 7(5).

ComLaw Authoritative Act C2014C00110

Part 2 Interpretation

Section 6A

10 Trade Marks Act 1995

word includes an abbreviation of a word.

working day means a day that is not:

(a) a Saturday; or

(b) a Sunday; or

(c) a public holiday in the Australian Capital Territory.

World Trade Organization means the body of that name

established by the WTO Agreement, done at Marrakesh on

15 April 1994.

Note: The text of the WTO Agreement is set out in Australian Treaty Series 1995 No. 8 ([1995] ATS 8). In 2009, the text of an Agreement in the Australian Treaty Series was accessible through the Australian Treaties Library on the AustLII website (www.austlii.edu.au).

(2) For the purposes of this Act, a reference to a country includes a

reference to a member of the World Trade Organization.

(3) Despite subsection 14(2) of the Legislative Instruments Act 2003,

regulations made for the purposes of the definition of Convention

country in subsection (1) may make provision in relation to a

matter by applying, adopting or incorporating, with or without

modification, any matter contained in any other instrument or other

writing as in force or existing from time to time.

6A Periods expressed in months

For the purposes of this Act, a period expressed in months and

dating from an event ends:

(a) on the day, in the relevant subsequent month, which has the

same number as the day of the event; or

(b) if the relevant subsequent month has no day with the same

number—on the last day of the month.

Note: For example, a period of 3 months from an event on 30 September ends on 30 December under this rule.

7 Use of trade mark

(1) If the Registrar or a prescribed court, having regard to the

circumstances of a particular case, thinks fit, the Registrar or the

ComLaw Authoritative Act C2014C00110

Interpretation Part 2

Section 8

Trade Marks Act 1995 11

court may decide that a person has used a trade mark if it is

established that the person has used the trade mark with additions

or alterations that do not substantially affect the identity of the

trade mark.

Note: For prescribed court see section 190.

(2) To avoid any doubt, it is stated that, if a trade mark consists of the

following, or any combination of the following, namely, any letter,

word, name or numeral, any aural representation of the trade mark

is, for the purposes of this Act, a use of the trade mark.

(3) An authorised use of a trade mark by a person (see section 8) is

taken, for the purposes of this Act, to be a use of the trade mark by

the owner of the trade mark.

(4) In this Act:

use of a trade mark in relation to goods means use of the trade

mark upon, or in physical or other relation to, the goods (including

second-hand goods).

(5) In this Act:

use of a trade mark in relation to services means use of the trade

mark in physical or other relation to the services.

8 Definitions of authorised user and authorised use

(1) A person is an authorised user of a trade mark if the person uses

the trade mark in relation to goods or services under the control of

the owner of the trade mark.

(2) The use of a trade mark by an authorised user of the trade mark is

an authorised use of the trade mark to the extent only that the user

uses the trade mark under the control of the owner of the trade

mark.

(3) If the owner of a trade mark exercises quality control over goods or

services:

(a) dealt with or provided in the course of trade by another

person; and

ComLaw Authoritative Act C2014C00110

Part 2 Interpretation

Section 9

12 Trade Marks Act 1995

(b) in relation to which the trade mark is used;

the other person is taken, for the purposes of subsection (1), to use

the trade mark in relation to the goods or services under the control

of the owner.

(4) If:

(a) a person deals with or provides, in the course of trade, goods

or services in relation to which a trade mark is used; and

(b) the owner of the trade mark exercises financial control over

the other person’s relevant trading activities;

the other person is taken, for the purposes of subsection (1), to use

the trade mark in relation to the goods or services under the control

of the owner.

(5) Subsections (3) and (4) do not limit the meaning of the expression

under the control of in subsections (1) and (2).

9 Definition of applied to and applied in relation to

(1) For the purposes of this Act:

(a) a trade mark is taken to be applied to any goods, material or

thing if it is woven in, impressed on, worked into, or affixed

or annexed to, the goods, material or thing; and

(b) a trade mark is taken to be applied in relation to goods or

services:

(i) if it is applied to any covering, document, label, reel or

thing in or with which the goods are, or are intended to

be, dealt with or provided in the course of trade; or

(ii) if it is used in a manner likely to lead persons to believe

that it refers to, describes or designates the goods or

services; and

(c) a trade mark is taken also to be applied in relation to goods

or services if it is used:

(i) on a signboard or in an advertisement (including a

televised advertisement); or

ComLaw Authoritative Act C2014C00110

Interpretation Part 2

Section 10

Trade Marks Act 1995 13

(ii) in an invoice, wine list, catalogue, business letter,

business paper, price list or other commercial document;

and goods are delivered, or services provided (as the case

may be) to a person following a request or order made by

referring to the trade mark as so used.

(2) In subparagraph (1)(b)(i):

covering includes packaging, frame, wrapper, container, stopper,

lid or cap.

label includes a band or ticket.

10 Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively

similar to another trade mark if it so nearly resembles that other

trade mark that it is likely to deceive or cause confusion.

11 Definition of pending

Application for registration under this Act

(1) An application for the registration of a trade mark under this Act is

pending from the time it is filed until:

(a) it lapses (see sections 37 and 54A), is withdrawn (see

section 214) or is rejected (see section 33); or

(b) if the Registrar refuses (under section 55) to register the trade

mark and there is no appeal against the decision—the end of

the period allowed for the appeal; or

(c) if the Registrar refuses (under section 55) to register the trade

mark and:

(i) there is an appeal against the decision; and

(ii) the decision is confirmed on appeal;

—the day on which the decision is confirmed on appeal; or

(d) the trade mark is registered under section 68.

Note: For file see section 6.

ComLaw Authoritative Act C2014C00110

Part 2 Interpretation

Section 12

14 Trade Marks Act 1995

Application for registration under repealed Act

(2) An application for the registration of a trade mark under the

repealed Act was pending immediately before 1 January 1996 if

before that day:

(a) the application had not lapsed (see subsection 48(1)), been

withdrawn (see subsection 40A(1)) or refused (see

subsection 44(1)); and

(b) the Registrar had not refused (under section 50) to register

the trade mark or if he or she had refused to register the trade

mark:

(i) the period allowed for appealing against the decision

had not yet ended; or

(ii) an appeal had been made against the decision but had

not yet been decided; and

(c) the trade mark had not been registered under section 53.

12 Definition of priority date

The priority date for the registration of a trade mark in respect of

particular goods or services is:

(a) if the trade mark is registered—the date of registration of the

trade mark in respect of those goods or services; or

(b) if the registration of the trade mark is being sought—the day

that would be the date of registration of the trade mark in

respect of those goods or services if the trade mark were

registered.

13 Definition of remove from the Register

A trade mark is taken to have been removed from the Register if

the Registrar makes an entry in the Register to the effect that all

entries in the Register relating to the trade mark are taken to have

been removed from the Register.

14 Definition of similar goods and similar services

(1) For the purposes of this Act, goods are similar to other goods:

(a) if they are the same as the other goods; or

ComLaw Authoritative Act C2014C00110

Interpretation Part 2

Section 15

Trade Marks Act 1995 15

(b) if they are of the same description as that of the other goods.

(2) For the purposes of this Act, services are similar to other services:

(a) if they are the same as the other services; or

(b) if they are of the same description as that of the other

services.

15 Definition of originate in relation to wine

For the purposes of this Act:

(a) a wine is taken to have originated in a foreign country or

Australia only if the wine is made from grapes grown within

the territory of that country or of Australia, as the case may

be; and

(b) a wine is taken to have originated in a particular region or

locality of a foreign country or of Australia only if the wine

is made from grapes grown in that region or locality.

16 Definition of repealed Act

(1) The repealed Act means:

(a) the Trade Marks Act 1955 as in force immediately before its

repeal; and

(b) the regulations under that Act that were in force immediately

before its repeal.

Note: For the repeal of the Trade Marks Act 1955 see section 232.

(2) In this Act, unless the contrary intention appears, a reference to a

particular section of the repealed Act includes a reference to the

regulations made for the purposes of that section and that were in

force immediately before that Act was repealed.

ComLaw Authoritative Act C2014C00110

Part 3 Trade marks and trade mark rights

Section 17

16 Trade Marks Act 1995

Part 3—Trade marks and trade mark rights

17 What is a trade mark?

A trade mark is a sign used, or intended to be used, to distinguish

goods or services dealt with or provided in the course of trade by a

person from goods or services so dealt with or provided by any

other person.

Note: For sign see section 6.

18 Certain signs not to be used as trade marks etc.

(1) The regulations may provide that a sign specified in the regulations

is not to be used as a trade mark or as part of a trade mark.

(2) Regulations made under subsection (1) do not affect any trade

mark that:

(a) was a registered trade mark; or

(b) in the case of an unregistered trade mark—was being used in

good faith;

immediately before the regulations were registered under the

Legislative Instruments Act 1995.

Note: For registered trade mark see section 6.

19 Certain trade marks may be registered

(1) A trade mark may be registered in accordance with this Act in

respect of:

(a) goods; or

(b) services; or

(c) both goods and services.

(2) The registration of a trade mark may be in respect of goods or

services of more than one class.

Note: See subsection (3) for division into classes.

ComLaw Authoritative Act C2014C00110

Trade marks and trade mark rights Part 3

Section 20

Trade Marks Act 1995 17

(3) The regulations may provide for the classes into which goods and

services are to be divided for the purposes of this Act.

20 Rights given by registration of trade mark

(1) If a trade mark is registered, the registered owner of the trade mark

has, subject to this Part, the exclusive rights:

(a) to use the trade mark; and

(b) to authorise other persons to use the trade mark;

in relation to the goods and/or services in respect of which the

trade mark is registered.

Note 1: For registered owner see section 6.

Note 2: For use see section 7.

Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

(2) The registered owner of a trade mark has also the right to obtain

relief under this Act if the trade mark has been infringed.

Note: For what amounts to an infringement of a trade mark see Part 12.

(3) The rights are taken to have accrued to the registered owner as

from the date of registration of the trade mark.

Note: For date of registration see section 6.

(4) If the trade mark is registered subject to conditions or limitations,

the rights of the registered owner are restricted by those conditions

or limitations.

Note: For limitations see section 6.

(5) If the trade mark is registered in the name of 2 or more persons as

joint owners of the trade mark, the rights granted to those persons

under this section are to be exercised by them as if they were the

rights of a single person.

21 Nature of registered trade mark as property

(1) A registered trade mark is personal property.

ComLaw Authoritative Act C2014C00110

Part 3 Trade marks and trade mark rights

Section 22

18 Trade Marks Act 1995

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

the same way as equities in respect of any other personal property.

Note: For registered trade mark see section 6.

22 Power of registered owner to deal with trade mark

(1) The registered owner of a trade mark may, subject only to any

rights appearing in the Register to be vested in another person, deal

with the trade mark as its absolute owner and give in good faith

discharges for any consideration for that dealing.

(2) This section does not protect a person who deals with the

registered owner otherwise than:

(a) as a purchaser in good faith for value; and

(b) without notice of any fraud on the part of the owner.

Note: For registered owner see section 6.

(2A) Despite subsection (1), the recording in the Register of a right that

is a PPSA security interest does not affect a dealing with a trade

mark.

Note: For PPSA security interest see section 6.

(3) Equities in relation to a registered trade mark may be enforced

against the registered owner, except to the prejudice of a purchaser

in good faith for value.

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

(4) Subsection (3) does not apply in relation to an equity that is a

PPSA security interest.

Note: The Personal Property Securities Act 2009 deals with the rights of purchasers of personal property (including intellectual property such as trade marks) that is subject to PPSA security interests. That Act also provides for the priority and enforcement of PPSA security interests. See the following provisions of that Act:

(a) Part 2.5 (taking personal property free of security interests);

(b) Part 2.6 (priority between security interests);

(c) Chapter 4 (enforcement of security interests).

ComLaw Authoritative Act C2014C00110

Trade marks and trade mark rights Part 3

Section 23

Trade Marks Act 1995 19

23 Limitation on rights if similar trade marks etc. registered by

different persons

If trade marks that are substantially identical or deceptively similar

have been registered by more than one person (whether in respect

of the same or different goods or services), the registered owner of

any one of those trade marks does not have the right to prevent the

registered owner of any other of those trade marks from using that

trade mark except to the extent that the first-mentioned owner is

authorised to do so under the registration of his or her trade mark.

Note: For deceptively similar see section 10.

24 Trade mark consisting of sign that becomes accepted as sign

describing article etc.

(1) This section applies if a registered trade mark consists of, or

contains, a sign that, after the date of registration of the trade mark,

becomes generally accepted within the relevant trade as the sign

that describes or is the name of an article, substance or service.

Note: For registered trade mark, sign and date of registration see section 6.

(2) If the trade mark consists of the sign, the registered owner:

(a) does not have any exclusive rights to use, or authorise other

persons to use, the trade mark in relation to:

(i) the article or substance or other goods of the same

description; or

(ii) the service or other services of the same description;

and

(b) is taken to have ceased to have those exclusive rights from

and including the day determined by the court under

subsection (4).

Note: For registered owner see section 6.

(3) If the trade mark contains the sign, the registered owner:

(a) does not have any exclusive rights to use, or authorise other

persons to use, the sign in relation to:

(i) the article or substance or other goods of the same

description; or

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20 Trade Marks Act 1995

(ii) the service or other services of the same description;

and

(b) is taken to have ceased to have those exclusive rights from

the day determined by the court under subsection (4).

Note: For registered owner see section 6.

(4) For the purposes of subsections (2) and (3), a prescribed court may

determine the day on which a sign first became generally accepted

within the relevant trade as the sign that describes or is the name of

the article, substance or service.

Note: For prescribed court see section 190.

25 Trade mark relating to article etc. formerly manufactured under

patent

(1) This section applies if:

(a) a registered trade mark consists of, or contains, a sign that

describes or is the name of:

(i) an article or substance that was formerly exploited

under a patent; or

(ii) a service that was formerly provided as a patented

process; and

(b) it is at least 2 years since the patent has expired or ceased;

and

(c) the sign is the only commonly known way to describe or

identify the article, substance or service.

Note: For registered trade mark and sign see section 6.

(2) If the trade mark consists of the sign, the registered owner:

(a) does not have any exclusive rights to use, or authorise other

persons to use, the trade mark in relation to:

(i) the article or substance or other goods of the same

description; or

(ii) the service or other services of the same description;

and

(b) is taken to have ceased to have those exclusive rights from

the end of the period of 2 years after the patent expired or

ceased.

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Trade Marks Act 1995 21

(3) If the trade mark contains the sign, the registered owner:

(a) does not have any exclusive rights to use, or authorise other

persons to use, the sign in relation to:

(i) the article or substance or other goods of the same

description; or

(ii) the service or other services of the same description;

and

(b) is taken to have ceased to have those exclusive rights from

the end of the period of 2 years after the patent expired or

ceased.

26 Powers of authorised user of registered trade mark

(1) Subject to any agreement between the registered owner of a

registered trade mark and an authorised user of the trade mark, the

authorised user may do any of the following:

(a) the authorised user may use the trade mark in relation to the

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

registered, subject to any condition or limitation subject to

which the trade mark is registered;

(b) the authorised user may (subject to subsection (2)) bring an

action for infringement of the trade mark:

(i) at any time, with the consent of the registered owner; or

(ii) during the prescribed period, if the registered owner

refuses to bring such an action on a particular occasion

during the prescribed period; or

(iii) after the end of the prescribed period, if the registered

owner has failed to bring such an action during the

prescribed period;

(c) the authorised user may cause to be displayed on goods in

respect of which the trade mark is registered, or on their

package, or on the container in which they are offered to the

public, a notice prohibiting any act that is under

subsection 121(2) a prohibited act in relation to the goods;

(d) the authorised user may:

(i) give to the Customs CEO a notice under section 132

objecting to the importation of goods that infringe the

trade mark; or

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Section 26

22 Trade Marks Act 1995

(ii) revoke such a notice;

(e) an authorised user may give permission to any person:

(i) to alter or deface; or

(ii) to make any addition to; or

(iii) to remove, erase or obliterate, wholly or partly;

a registered trade mark that is applied to any goods, or in

relation to any goods or services, in respect of which the

trade mark is registered;

(f) the authorised user may give permission to any person to

apply the trade mark to goods, or in relation to goods or

services, in respect of which the trade mark is registered.

Note 1: For registered owner and registered trade mark see section 6.

Note 2: For authorised user see section 8.

Note 3: For what amounts to an infringement of a trade mark see Part 12.

Note 4: For apply to and apply in relation to see section 9.

(2) If the authorised user brings an action for infringement of the trade

mark, the authorised user must make the registered owner of the

trade mark a defendant in the action. However, the registered

owner is not liable for costs if he or she does not take part in the

proceedings.

ComLaw Authoritative Act C2014C00110

Application for registration Part 4

General Division 1

Section 27

Trade Marks Act 1995 23

Part 4—Application for registration

Division 1—General

27 Application—how made

(1) A person may apply for the registration of a trade mark in respect

of goods and/or services if:

(a) the person claims to be the owner of the trade mark; and

(b) one of the following applies:

(i) the person is using or intends to use the trade mark in

relation to the goods and/or services;

(ii) the person has authorised or intends to authorise another

person to use the trade mark in relation to the goods

and/or services;

(iii) the person intends to assign the trade mark to a body

corporate that is about to be constituted with a view to

the use by the body corporate of the trade mark in

relation to the goods and/or services.

Note: For use see section 7.

(2) The application must:

(a) be in accordance with the regulations; and

(b) be filed, together with any prescribed document, in

accordance with the regulations; and

(c) be made by a person or persons having legal personality.

Note: For file see section 6.

(2A) Despite paragraph (2)(c), an application for registration of a

collective trade mark need not be made by a person or persons

having legal personality.

Note: For collective trade mark see section 162.

(3) Without limiting the particulars that may be included in an

application, the application must:

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

ComLaw Authoritative Act C2014C00110

Part 4 Application for registration

Division 1 General

Section 28

24 Trade Marks Act 1995

(b) specify, in accordance with the regulations, the goods and/or

services in respect of which it is sought to register the trade

mark.

(4) Regulations made for the purposes of paragraph (3)(b) may apply,

adopt or incorporate any matter contained in any listing of goods

and/or services published by the Registrar from time to time and

made available for inspection by the public at the Trade Marks

Office and its sub-offices (if any).

(5) An application may be made in respect of goods and services of

one or more of the classes provided for in regulations made under

subsection 19(3).

28 Application by joint owners

If the relations between 2 or more persons interested in a trade

mark are such that none of them is entitled to use the trade mark

except:

(a) on behalf of all of them; or

(b) in relation to goods and/or services with which all of them

are connected in the course of trade;

the persons may together apply for its registration under

subsection 27(1).

29 Application for registration of trade mark whose registration has

been sought in a Convention country—claim for priority

(1) If:

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

trade mark in one or more than one Convention country; and

ComLaw Authoritative Act C2014C00110

Application for registration Part 4

General Division 1

Section 30

Trade Marks Act 1995 25

(b) within 6 months after the day on which that application, or

the first of those applications, was made, that person or

another person (successor in title) of whom that person is a

predecessor in title applies to the Registrar for the

registration of the trade mark in respect of some or all of the

goods and/or services in respect of which registration was

sought in that country or those countries;

that person or that person’s successor in title may, when filing the

application, or within the prescribed period after filing the

application but before the application is accepted, claim a right of

priority for the registration of the trade mark in respect of any or all

of those goods and/or services in accordance with the regulations.

Note: For month see section 6.

(2) The priority claimed is for the registration of the trade mark in

respect of the goods or services:

(a) if an application to register the trade mark was made in only

one Convention country—from (and including) the day on

which the application was made in that country; or

(b) if applications to register the trade mark were made in more

than one Convention country—from (and including) the day

on which the earliest of those applications was made.

(3) The regulations may provide for the filing of documents in support

of a notice claiming priority and, in particular, for the filing of

certified copies of any application for the registration of the trade

mark made in a Convention country.

Note: For Convention country see section 225.

30 Particulars of application to be published

The Registrar must publish the particulars of the application in

accordance with the regulations.

31 Registrar to examine, and report on, application

The Registrar must, in accordance with the regulations, examine

and report on:

ComLaw Authoritative Act C2014C00110

Part 4 Application for registration

Division 1 General

Section 32

26 Trade Marks Act 1995

(a) whether the application has been made in accordance with

this Act; and

(b) whether there are grounds under this Act for rejecting it.

Note: For this Act see section 6.

32 Registrar to decide on disputed classification of goods etc.

If a question arises as to the class in which goods or services are

comprised:

(a) that question is to be decided by the Registrar; and

(b) the decision of the Registrar is not subject to appeal and may

not be called into question in an appeal or other proceedings

under this Act.

33 Application accepted or rejected

(1) The Registrar must, after the examination, accept the application

unless he or she is satisfied that:

(a) the application has not been made in accordance with this

Act; or

(b) there are grounds under this Act for rejecting it.

Note: For this Act see section 6.

(2) The Registrar may accept the application subject to conditions or

limitations.

Note: For limitations see section 6.

(3) If the Registrar is satisfied that:

(a) the application has not been made in accordance with this

Act; or

(b) there are grounds under this Act for rejecting it;

the Registrar must reject the application.

Note: For this Act see section 6.

(4) The Registrar may not reject an application without giving the

applicant an opportunity of being heard.

Note: For applicant see section 6.

ComLaw Authoritative Act C2014C00110

Application for registration Part 4

General Division 1

Section 34

Trade Marks Act 1995 27

34 Notice etc. of decision

The Registrar must:

(a) notify the applicant in writing of his or her decision under

section 33; and

(b) advertise the decision in the Official Journal.

Note: For applicant see section 6.

35 Appeal

The applicant may appeal to the Federal Court or the Federal

Circuit Court against a decision of the Registrar:

(a) to accept the application subject to conditions or limitations;

or

(b) to reject the application.

Note: For applicant see section 6.

36 Deferment of acceptance

The Registrar may defer the acceptance of the application in the

circumstances, and for the period, provided for in the regulations.

37 Lapsing of application if not accepted in time

(1) Subject to subsection (2), an application lapses if it is not accepted

within the prescribed period or within that period as extended in

accordance with the regulations.

(2) If, after the prescribed period or the prescribed period as extended

(as the case may be) has expired, the Registrar extends under

section 224 the period within which the application may be

accepted, the application:

(a) is taken not to have lapsed when the prescribed period

expired; and

(b) lapses if it is not accepted within the extended period.

ComLaw Authoritative Act C2014C00110

Part 4 Application for registration

Division 1 General

Section 38

28 Trade Marks Act 1995

38 Revocation of acceptance

(1) Before a trade mark is registered, the Registrar may revoke the

acceptance of the application for registration of the trade mark if he

or she is satisfied that:

(a) the application should not have been accepted, taking account

of all the circumstances that existed when the application was

accepted (whether or not the Registrar knew then of their

existence); and

(b) it is reasonable to revoke the acceptance, taking account of

all the circumstances.

(2) If the Registrar revokes the acceptance:

(a) the application is taken to have never been accepted; and

(b) the Registrar must examine, and report on, the application as

necessary under section 31; and

(c) sections 33 and 34 again apply in relation to the application.

ComLaw Authoritative Act C2014C00110

Application for registration Part 4

Grounds for rejecting an application Division 2

Section 39

Trade Marks Act 1995 29

Division 2—Grounds for rejecting an application

39 Trade mark containing etc. certain signs

(1) An application for the registration of a trade mark must be rejected

if the trade mark contains or consists of a sign that, under

regulations made for the purposes of section 18, is not to be used as

a trade mark.

(2) An application for the registration of a trade mark may be rejected

if the trade mark contains or consists of:

(a) a sign that is prescribed for the purposes of this subsection;

or

(b) a sign so nearly resembling:

(i) a sign referred to in paragraph (a); or

(ii) a sign referred to in subsection (1);

as to be likely to be taken for it.

40 Trade mark that cannot be represented graphically

An application for the registration of a trade mark must be rejected

if the trade mark cannot be represented graphically.

41 Trade mark not distinguishing applicant’s goods or services

(1) An application for the registration of a trade mark must be rejected

if the trade mark is not capable of distinguishing the applicant’s

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

registered (the designated goods or services) from the goods or

services of other persons.

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

(2) A trade mark is taken not to be capable of distinguishing the

designated goods or services from the goods or services of other

persons only if either subsection (3) or (4) applies to the trade

mark.

(3) This subsection applies to a trade mark if:

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Part 4 Application for registration

Division 2 Grounds for rejecting an application

Section 41

30 Trade Marks Act 1995

(a) the trade mark is not to any extent inherently adapted to

distinguish the designated goods or services from the goods

or services of other persons; and

(b) the applicant has not used the trade mark before the filing

date in respect of the application to such an extent that the

trade mark does in fact distinguish the designated goods or

services as being those of the applicant.

(4) This subsection applies to a trade mark if:

(a) the trade mark is, to some extent, but not sufficiently,

inherently adapted to distinguish the designated goods or

services from the goods or services of other persons; and

(b) the trade mark does not and will not distinguish the

designated goods or services as being those of the applicant

having regard to the combined effect of the following:

(i) the extent to which the trade mark is inherently adapted

to distinguish the goods or services from the goods or

services of other persons;

(ii) the use, or intended use, of the trade mark by the

applicant;

(iii) any other circumstances.

Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b) the time of production of goods or of the rendering of services.

Note 2: For goods of a person and services of a person see section 6.

Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

(5) For the purposes of this section, the use of a trade mark by a

predecessor in title of an applicant for the registration of the trade

mark is taken to be a use of the trade mark by the applicant.

Note 1: For applicant and predecessor in title see section 6.

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

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Application for registration Part 4

Grounds for rejecting an application Division 2

Section 42

Trade Marks Act 1995 31

taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

42 Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected

if:

(a) the trade mark contains or consists of scandalous matter; or

(b) its use would be contrary to law.

43 Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of

particular goods or services must be rejected if, because of some

connotation that the trade mark or a sign contained in the trade

mark has, the use of the trade mark in relation to those goods or

services would be likely to deceive or cause confusion.

44 Identical etc. trade marks

(1) Subject to subsections (3) and (4), an application for the

registration of a trade mark (applicant’s trade mark) in respect of

goods (applicant’s goods) must be rejected if:

(a) the applicant’s trade mark is substantially identical with, or

deceptively similar to:

(i) a trade mark registered by another person in respect of

similar goods or closely related services; or

(ii) a trade mark whose registration in respect of similar

goods or closely related services is being sought by

another person; and

(b) the priority date for the registration of the applicant’s trade

mark in respect of the applicant’s goods is not earlier than the

priority date for the registration of the other trade mark in

respect of the similar goods or closely related services.

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

Note 3: For priority date see section 12.

ComLaw Authoritative Act C2014C00110

Part 4 Application for registration

Division 2 Grounds for rejecting an application

Section 44

32 Trade Marks Act 1995

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(2) Subject to subsections (3) and (4), an application for the

registration of a trade mark (applicant’s trade mark) in respect of

services (applicant’s services) must be rejected if:

(a) it is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of

similar services or closely related goods; or

(ii) a trade mark whose registration in respect of similar

services or closely related goods is being sought by

another person; and

(b) the priority date for the registration of the applicant’s trade

mark in respect of the applicant’s services is not earlier than

the priority date for the registration of the other trade mark in

respect of the similar services or closely related goods.

Note 1: For deceptively similar see section 10.

Note 2: For similar services see subsection 14(2).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(3) If the Registrar in either case is satisfied:

(a) that there has been honest concurrent use of the 2 trade

marks; or

(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the

applicant’s trade mark subject to any conditions or limitations that

the Registrar thinks fit to impose. If the applicant’s trade mark has

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.

ComLaw Authoritative Act C2014C00110

Application for registration Part 4

Grounds for rejecting an application Division 2

Section 44

Trade Marks Act 1995 33

(4) If the Registrar in either case is satisfied that the applicant, or the

applicant and the predecessor in title of the applicant, have

continuously used the applicant’s trade mark for a period:

(a) beginning before the priority date for the registration of the

other trade mark in respect of:

(i) the similar goods or closely related services; or

(ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the

applicant’s trade mark;

the Registrar may not reject the application because of the

existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.

Note 3: For priority date see section 12.

ComLaw Authoritative Act C2014C00110

Part 4 Application for registration

Division 3 Divisional applications

Section 45

34 Trade Marks Act 1995

Division 3—Divisional applications

45 Divisional applications

(1) If a single application for the registration of a trade mark in respect

of certain goods and/or services is pending (parent application),

the applicant may make another application (divisional

application) for the registration of the trade mark in respect of

some only of the goods and/or services in respect of which

registration is sought under the parent application.

Note: For applicant and pending see section 6.

(2) To avoid doubt, the parent application may itself be a divisional

application.

Note: A divisional application may be made by a person who has become the applicant in relation to the parent application because of subsection 108(2) (which deals with assignment and transmission).

46 Rules relating to divisional applications

(1) A divisional application must:

(a) be for the registration of the trade mark to which the parent

application relates; and

(b) specify the goods and/or services to which it relates; and

(c) specify the goods and/or services that are to remain in the

parent application.

Note: For divisional application and parent application see section 45.

(2) When a divisional application is made, the Registrar must, unless

the parent application has lapsed, amend the parent application by

excluding the goods and/or services in respect of which the

divisional application is made.

Note: Section 204 requires the Registrar, where no time or period is specified for doing a thing, to do the thing as soon as practicable. However, it is possible that a parent application will lapse before it is practicable for the Registrar to amend it under subsection (2) of this section.

ComLaw Authoritative Act C2014C00110

Application for registration Part 4

Application for registration of series of trade marks Division 4

Section 51

Trade Marks Act 1995 35

Division 4—Application for registration of series of trade

marks

51 Application—series of trade marks

(1) A person may make a single application under subsection 27(1) for

the registration of 2 or more trade marks in respect of goods and/or

services if the trade marks resemble each other in material

particulars and differ only in respect of one or more of the

following matters:

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

relation to which the trade marks are used or are intended to

be used;

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

names of places;

(c) the colour of any part of the trade mark.

(2) If:

(a) the application meets all the requirements of this Act; and

(b) the Registrar is required (under section 68) to register the

trade marks;

he or she must register them as a series in one registration.

51A Linking series applications

(1) Subsection (2) applies if:

(a) before the commencement of this section, 2 or more

applications (series applications) were made each seeking

the registration of the same 2 or more trade marks in respect

of goods or services of different classes; and

(b) the filing date of each of the series applications is the same;

and

(c) each of the trade marks has the same owner.

Note: For filing date see section 6.

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

writing, to have:

ComLaw Authoritative Act C2014C00110

Part 4 Application for registration

Division 4 Application for registration of series of trade marks

Section 51A

36 Trade Marks Act 1995

(a) the series applications; or

(b) so many of the series applications as are identified in the

application to the Registrar;

dealt with under this Act as if they were one application for the

registration of the trade marks in respect of all goods and services

specified in the series applications or the identified series

applications.

Note: For this Act see section 6.

(3) If an application is made under subsection (2), the Registrar must

deal with the series applications that are the subject of the

application under that subsection as if they were one application.

ComLaw Authoritative Act C2014C00110

Opposition to registration Part 5

General Division 1

Section 52

Trade Marks Act 1995 37

Part 5—Opposition to registration

Division 1—General

52 Opposition

(1) If the Registrar has accepted an application for the registration of a

trade mark, a person may oppose the registration by filing a notice

of opposition.

(2) The notice of opposition must be filed:

(a) in the manner and form prescribed by the regulations; and

(b) within the prescribed period, or within that period as

extended in accordance with the regulations or in accordance

with subsection (5).

(3) Regulations made for the purposes of paragraph (2)(a) or (b) may

make different provision with respect to different components (if

any) of the notice of opposition.

(3A) Subsection (3) does not limit subsection 33(3A) of the Acts

Interpretation Act 1901.

(4) The registration of a trade mark may be opposed on any of the

grounds specified in this Act and on no other grounds.

Note: For this Act see section 6.

(5) If:

(a) a person is granted an extension of time in which to file a

notice of opposition; and

(b) before the notice of opposition is filed, the right or interest on

which the person could have relied to file the notice of

opposition becomes vested in another person; and

(c) the other person notifies the Registrar in writing that the right

or interest is vested in him or her;

then:

(d) the other person is taken to have been granted an extension of

time in which to file the notice of opposition; and

ComLaw Authoritative Act C2014C00110

Part 5 Opposition to registration

Division 1 General

Section 52A

38 Trade Marks Act 1995

(e) that extension ends when the extension mentioned in

paragraph (a) ends.

52A Notice of intention to defend opposition to registration

(1) If a notice of opposition is filed in accordance with section 52, the

applicant may file a notice of intention to defend the application

for registration of a trade mark.

Note: Failure to file a notice of intention will result in the application lapsing: see section 54A.

(2) The notice must be filed in the prescribed manner and within the

prescribed period, or within that period as extended by the

Registrar in accordance with the regulations.

53 Circumstances in which opposition may proceed in name of a

person other than the person who filed the notice

If:

(a) after a person has filed a notice of opposition, the right or

interest on which the person relied to file the notice of

opposition becomes vested in another person; and

(b) the other person:

(i) notifies the Registrar in writing that the right or interest

is vested in him or her; and

(ii) does not withdraw the opposition;

the opposition is to proceed as if the notice of opposition had been

filed in that other person’s name.

Note: For file see section 6.

54 Opposition proceedings

(1) The Registrar must give to the opponent and to the applicant an

opportunity of being heard on the opposition.

Note: For opponent and applicant see section 6.

(2) Subject to subsection (1), the proceedings for dealing with the

opposition must be in accordance with the regulations.

ComLaw Authoritative Act C2014C00110

Opposition to registration Part 5

General Division 1

Section 54A

Trade Marks Act 1995 39

(3) Without limiting subsection (2), the regulations may prescribe the

circumstances in which the Registrar may dismiss the opposition.

54A Lapsing of opposed application if no notice to defend the

application filed

(1) Subject to subsection (2), an application lapses if:

(a) a notice of opposition to the registration of the trade mark is

filed (see subsection 52(1)); and

(b) the applicant does not file an intention to defend the

application for registration of the trade mark in the prescribed

manner or within the prescribed period, or that period as

extended (see section 52A).

(2) If, after the prescribed period has expired, the Registrar extends the

period within which the notice to defend the application may be

filed (see section 52A), the application:

(a) is taken not to have lapsed when the prescribed period

expired; and

(b) lapses if the notice to defend the application is not filed

within the extended period.

55 Decision

(1) Unless subsection (3) applies to the proceedings, the Registrar

must, at the end, decide:

(a) to refuse to register the trade mark; or

(b) to register the trade mark (with or without conditions or

limitations) in respect of the goods and/or services then

specified in the application;

having regard to the extent (if any) to which any ground on which

the application was opposed has been established.

Note: For limitations see section 6.

ComLaw Authoritative Act C2014C00110

Part 5 Opposition to registration

Division 1 General

Section 56

40 Trade Marks Act 1995

(2) Without limiting subsection (1), if the application was opposed on

the ground specified in paragraph 62(a) (that the application, or a

document filed in support of the application, was amended contrary

to this Act), the Registrar may revoke the acceptance of the

application and examine the application again under section 31.

Note: For examine and this Act see section 6.

(3) This subsection applies to the proceedings if:

(a) the proceedings are discontinued; or

(b) the proceedings are dismissed; or

(c) the application lapses because of the operation of

section 54A (about lapsing of applications if a notice to

defend the application is not filed).

56 Appeal

The applicant or the opponent may appeal to the Federal Court or

the Federal Circuit Court from a decision of the Registrar under

section 55.

Note: For applicant and opponent see section 6.

ComLaw Authoritative Act C2014C00110

Opposition to registration Part 5

Grounds for opposing registration Division 2

Section 57

Trade Marks Act 1995 41

Division 2—Grounds for opposing registration

57 Registration may be opposed on same grounds as for rejection

The registration of a trade mark may be opposed on any of the

grounds on which an application for the registration of a trade

mark may be rejected under this Act, except the ground that the

trade mark cannot be represented graphically.

Note: For this Act see section 6.

58 Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that

the applicant is not the owner of the trade mark.

Note: For applicant see section 6.

58A Opponent’s earlier use of similar trade mark

(1) This section applies to a trade mark (section 44 trade mark) the

application for registration of which has been accepted because of:

(a) subsection 44(4); or

(b) a similar provision of the regulations made for the purposes

of Part 17A.

Note: Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first-mentioned trade mark has been continuously used since before the priority date of the other trade mark.

(2) The registration of the section 44 trade mark may be opposed on

the ground that the owner of the substantially identical or

deceptively similar trade mark (similar trade mark) or the

predecessor in title:

(a) first used the similar trade mark in respect of:

(i) similar goods or closely related services; or

(ii) similar services or closely related goods;

ComLaw Authoritative Act C2014C00110

Part 5 Opposition to registration

Division 2 Grounds for opposing registration

Section 59

42 Trade Marks Act 1995

before the owner of the section 44 trade mark or the

predecessor in title in relation to the section 44 trade mark

first used the section 44 trade mark; and

(b) has continuously used the similar trade mark in respect of

those goods or services since that first use.

Note: For predecessor in title see section 6.

59 Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that

the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or

(b) to assign the trade mark to a body corporate for use by the

body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note: For applicant see section 6.

60 Trade mark similar to trade mark that has acquired a reputation

in Australia

The registration of a trade mark in respect of particular goods or

services may be opposed on the ground that:

(a) another trade mark had, before the priority date for the

registration of the first-mentioned trade mark in respect of

those goods or services, acquired a reputation in Australia;

and

(b) because of the reputation of that other trade mark, the use of

the first-mentioned trade mark would be likely to deceive or

cause confusion.

Note: For priority date see section 12.

61 Trade mark containing or consisting of a false geographical

indication

(1) The registration of a trade mark in respect of particular goods

(relevant goods) may be opposed on the ground that the trade mark

contains or consists of a sign that is a geographical indication for

goods (designated goods) originating in:

ComLaw Authoritative Act C2014C00110

Opposition to registration Part 5

Grounds for opposing registration Division 2

Section 61

Trade Marks Act 1995 43

(a) a country, or in a region or locality in a country, other than

the country in which the relevant goods originated; or

(b) a region or locality in the country in which the relevant goods

originated other than the region or locality in which the

relevant goods originated;

if the relevant goods are similar to the designated goods or the use

of a trade mark in respect of the relevant goods would be likely to

deceive or cause confusion.

(2) An opposition on a ground referred to in subsection (1) fails if the

applicant establishes that:

(a) the relevant goods originated in the country, region or

locality identified by the geographical indication; or

(aa) the sign is not recognised as a geographical indication for the

designated goods in the country in which the designated

goods originated; or

(b) the sign has ceased to be used as a geographical indication

for the designated goods in the country in which the

designated goods originated; or

(c) the applicant, or a predecessor in title of the applicant, used

the sign in good faith in respect of the relevant goods, or

applied in good faith for the registration of the trade mark in

respect of the relevant goods, before:

(i) 1 January 1996; or

(ii) the day on which the sign was recognised as a

geographical indication for the designated goods in their

country of origin;

whichever is the later; or

(d) if the registration of the trade mark is being sought in respect

of wine or spirits (relevant wine or spirits)—the sign is

identical with the name that, on 1 January 1995, was, in the

country in which the relevant wine or spirits originated, the

customary name of a variety of grapes used in the production

of the relevant wine or spirits.

(3) An opposition on a ground referred to in subsection (1) also fails if

the applicant establishes that:

ComLaw Authoritative Act C2014C00110

Part 5 Opposition to registration

Division 2 Grounds for opposing registration

Section 62

44 Trade Marks Act 1995

(a) although the sign is a geographical indication for the

designated goods, it is also a geographical indication for the

relevant goods; and

(b) the applicant has not used, and does not intend to use, the

trade mark in relation to the relevant goods in a way that is

likely to deceive or confuse members of the public as to the

origin of the relevant goods.

(4) An opposition on a ground referred to in subsection (1) also fails if

the applicant establishes that:

(a) the sign consists of a word or term that is a geographical

indication; and

(b) the word or term is a common English word or term; and

(c) the applicant has not used, and does not intend to use, the

trade mark in relation to the relevant goods in a way that is

likely to deceive or confuse members of the public as to the

origin of the relevant goods.

Note 1: For applicant, predecessor in title and geographical indication see section 6.

Note 2: For originate (in relation to wine only) see section 15.

62 Application etc. defective etc.

The registration of a trade mark may be opposed on any of the

following grounds:

(a) that the application, or a document filed in support of the

application, was amended contrary to this Act;

(b) that the Registrar accepted the application for registration on

the basis of evidence or representations that were false in

material particulars.

Note: For file see section 6.

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.

ComLaw Authoritative Act C2014C00110

Amendment of application for registration of a trade mark and other documents Part 6

Section 63

Trade Marks Act 1995 45

Part 6—Amendment of application for registration

of a trade mark and other documents

63 Amendment of application for registration of trade mark

(1) The Registrar may, at the request of the applicant or of his or her

agent, amend an application for the registration of a trade mark in

accordance with section 64, 65 or 65A.

(2) If:

(a) an application for the registration of a trade mark may be

amended under section 65; and

(b) the applicant has not asked that the application be amended;

the Registrar may, on his or her own initiative but in accordance

with the regulations, amend the application as necessary:

(c) to remove any ground on which the application could be

rejected; or

(d) so as to ensure that the application is made in accordance

with this Act.

64 Amendment before particulars of application are published

If:

(a) the particulars of the application have not yet been published

under section 30; and

(b) the request for the amendment is made within the prescribed

period;

an amendment may be made to correct a clerical error or an

obvious mistake.

65 Amendment after particulars of application have been

published—request for amendment not advertised

(1) If the particulars of the application have been published under

section 30, the application may be amended as provided in this

section.

ComLaw Authoritative Act C2014C00110

Part 6 Amendment of application for registration of a trade mark and other documents

Section 65A

46 Trade Marks Act 1995

(2) An amendment may be made to the representation of the trade

mark if the amendment does not substantially affect the identity of

the trade mark as at the time when the particulars of the application

were published.

(3) An amendment may be made to an application to which section 51

applies to remove one or more trade marks from the application.

(4) An amendment may be made to correct an error in the

classification of goods or services specified in the application.

(5) An amendment may be made to add to the class or classes of goods

or services specified in the application one or more other classes of

goods or services if the Registrar is of the opinion that it is fair and

reasonable in all the circumstances to do so.

(6) An amendment may be made to change the type of registration

sought in the application (for example, an application for the

registration of a trade mark as a certification trade mark may be

amended to an application for registration as a collective trade

mark).

(7) An amendment may be made to any other particular specified in

the application unless the amendment would have the effect of

extending the rights that (apart from the amendment) the applicant

would have under the registration if it were granted.

65A Amendment after particulars of application have been

published—request for amendment advertised

(1) This section applies if:

(a) the particulars of the application have been published under

section 30; and

(b) the amendment requested is not an amendment which could

be made under section 65.

(2) The application may be amended to correct a clerical error or an

obvious mistake in the application if the Registrar is of the opinion

that it is fair and reasonable in all the circumstances of the case to

make the amendment under this section.

ComLaw Authoritative Act C2014C00110

Amendment of application for registration of a trade mark and other documents Part 6

Section 66

Trade Marks Act 1995 47

(3) Subject to subsection (5), the Registrar must advertise the request

for the amendment in the Official Journal.

(4) Subject to subsection (5), a person may, as prescribed, oppose the

granting of the request for the amendment.

(5) If the Registrar is satisfied that a request for an amendment would

not be granted even in the absence of opposition under

subsection (4):

(a) the Registrar need not advertise the request in accordance

with subsection (3); and

(b) the request cannot be opposed, despite subsection (4); and

(c) the Registrar must refuse to grant the request.

66 Amendment of other documents

(1) The Registrar may, at the request of the person who has filed an

application (other than an application for the registration of a trade

mark), a notice or other document for the purposes of this Act or at

the request of the person’s agent, amend the application, notice or

document:

(a) to correct a clerical error or an obvious mistake; or

(b) if the Registrar is of the opinion that it is fair and reasonable

in all the circumstances of the case to do so.

Note: For file see section 6.

(2) Subsection (1) does not apply to a notice of opposition filed by an

opponent in relation to:

(a) an opposition to the registration of a trade mark under

section 52; or

(b) an opposition to an application under section 92.

Note: Regulations made for the purposes of subsection 231(3) may make provision in relation to amendment of documents filed in relation to an opposition.

ComLaw Authoritative Act C2014C00110

Part 6 Amendment of application for registration of a trade mark and other documents

Section 66A

48 Trade Marks Act 1995

66A Registrar may require certain requests to be in writing

The Registrar may require a request under section 63 or 66 to be in

writing if the Registrar is of the opinion that the amendment

requested is not minor.

67 Appeal

An appeal lies to the Federal Court or the Federal Circuit Court

from a decision of the Registrar under this Part.

ComLaw Authoritative Act C2014C00110

Registration of trade marks Part 7

Initial registration Division 1

Section 68

Trade Marks Act 1995 49

Part 7—Registration of trade marks

Division 1—Initial registration

68 Obligation to register

(1) The Registrar must, within the period provided under the

regulations, register a trade mark that has been accepted for

registration:

(a) if there has been no opposition to the registration; or

(b) in a case where there has been an opposition:

(i) if the Registrar’s decision, or (in the case of an appeal

against the Registrar’s decision) the decision on appeal,

is that the trade mark should be registered; or

(ii) if the opposition has been withdrawn; or

(iii) if the opposition has been dismissed under section 222

or the regulations (if any) made for the purposes of

subsection 54(2).

Otherwise, the application for the registration of the trade mark

lapses.

Note: Applications may also lapse if an application for registration is opposed and a notice to defend the application is not filed: see section 54A.

(2) On registering the trade mark, the Registrar must give it a number

by which it may be identified.

69 Registration—how effected

(1) The trade mark must be registered:

(a) in the name of the applicant for registration; and

(b) in respect of the goods and/or services specified in the

application at the time of registration; and

(c) subject to the conditions (if any) and the limitations (if any)

imposed by the Registrar in accepting the application for

registration or deciding to register the trade mark.

The Registrar must enter these particulars in the Register.

ComLaw Authoritative Act C2014C00110

Part 7 Registration of trade marks

Division 1 Initial registration

Section 70

50 Trade Marks Act 1995

(2) The Registrar must also enter in the Register:

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

(b) its registration number; and

(c) any other particulars that are required by this Act to be

entered in the Register.

(3) If 2 or more persons applied together for the registration of the

trade mark (see section 28), the applicants must be registered as

joint owners of the trade mark.

Note: For limitations, Registrar and applicant see section 6.

70 Colours in registered trade marks

(1) A trade mark may be registered with limitations as to colour.

(2) The limitations may be in respect of the whole, or a part, of the

trade mark.

(3) To the extent that a trade mark is registered without limitations as

to colour, it is taken to be registered for all colours.

Note: For limitations see section 6.

71 Notification of registration

When a trade mark has been registered, the Registrar must:

(a) advertise the registration in the Official Journal; and

(b) give to the registered owner of the trade mark a certificate of

registration in an approved form.

Note: For registered owner and approved form see section 6.

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:

ComLaw Authoritative Act C2014C00110

Registration of trade marks Part 7

Initial registration Division 1

Section 73

Trade Marks Act 1995 51

(a) the application was in respect of a trade mark whose

registration had also been sought in one or more than one

Convention country; and

(b) the applicant claimed a right of priority under section 29 for

the registration of the trade mark in respect of particular

goods or services; and

(c) the trade mark is registered under this Act;

the registration of the trade mark in respect of those goods or

services is taken to have had effect:

(d) if an application to register the trade mark was made in only

one Convention country—from (and including) the day on

which the application was made in that country; or

(e) if applications to register the trade mark were made in more

than one Convention country—from (and including) the day

on which the earliest of those applications was made.

Note: For Convention country see section 225.

(3) Unless it is earlier cancelled, or the trade mark is earlier removed

from the Register, the registration of the trade mark expires 10

years after the filing date in respect of the application for its

registration.

Note 1: This is so even for a trade mark whose registration in respect of particular goods or services has effect from (and including) the day on which an application was made in a Convention country.

Note 2: For filing date see section 6.

73 Ceasing of registration

The registration of a trade mark ceases if:

(a) the trade mark is removed from the Register under section 78

or 80F or under Part 9; or

(b) the registration of the trade mark is cancelled.

Note: Section 84C explains the effect of revocation of the registration of a trade mark, applying some provisions as if the registration had ceased at a particular time (but for most purposes treating the registration as if it had never occurred).

ComLaw Authoritative Act C2014C00110

Part 7 Registration of trade marks

Division 1 Initial registration

Section 74

52 Trade Marks Act 1995

74 Disclaimers

(1) An applicant for the registration of a trade mark, or the registered

owner of a registered trade mark, may, by notice in writing given

to the Registrar, disclaim any exclusive right to use, or authorise

the use of, a specified part of the trade mark.

(2) The disclaimer affects only the rights given by this Act to the

registered owner of the trade mark on registration of the trade

mark.

(3) The Registrar must, on registering the trade mark or on receiving

notice of the disclaimer (whichever is later), enter the particulars of

the disclaimer in the Register.

(4) A disclaimer properly made may not be revoked.

Note: For applicant, registered owner, registered trade mark and Register see section 6.

ComLaw Authoritative Act C2014C00110

Registration of trade marks Part 7

Renewal of registration (general) Division 2

Section 74A

Trade Marks Act 1995 53

Division 2—Renewal of registration (general)

74A Application of this Division

This Division applies to a registered trade mark if:

(a) particulars of registration were entered in the Register under

section 69 before the end of the period of 10 years after the

filing date of the application for registration; or

(b) both:

(i) paragraph (a) does not apply; and

(ii) registration has already been renewed under Division 3

for a period that includes the day on which particulars of

registration were entered in the Register under

section 69.

Note: For filing date see section 6.

75 Request for renewal

(1) Any person may, within the prescribed period before the

registration of a trade mark expires, ask the Registrar to renew the

registration.

(2) The request must:

(a) be in an approved form; and

(b) be filed in accordance with the regulations.

76 Notice of renewal due

If, at the beginning of the prescribed period, the Registrar has not

received a request for the renewal of the registration of the trade

mark, the Registrar must, in accordance with the regulations, notify

the registered owner of the trade mark that the renewal is due.

Note: For registered owner see section 6.

ComLaw Authoritative Act C2014C00110

Part 7 Registration of trade marks

Division 2 Renewal of registration (general)

Section 77

54 Trade Marks Act 1995

77 Renewal before registration expires

(1) If a request for the renewal of the registration of a trade mark is

made in accordance with section 75, the Registrar must renew the

registration for a period of 10 years from the day on which the

registration of the trade mark would expire if it were not renewed.

(2) The Registrar must give notice of the renewal to the registered

owner of the trade mark in accordance with the regulations.

Note: For registered owner see section 6.

78 Failure to renew

If the registration of a trade mark is not renewed under section 77,

then:

(a) subject to sections 79 and 80, the registration ceases to have

effect when it expires; and

(b) unless the registration is renewed under section 79, the

Registrar must remove the trade mark from the Register 6

months after the day on which the registration expired.

Note: For month and Register see section 6.

79 Renewal within 6 months after registration expires

If, within 6 months after the registration of a trade mark has

expired, a person asks the Registrar, in accordance with

subsection 75(2), to renew the registration of the trade mark, the

Registrar must renew the registration of the trade mark for 10 years

from the day on which the registration expired.

Note: For month see section 6.

80 Status of unrenewed trade mark

If:

(a) the registration of a trade mark (unrenewed trade mark) has

not been renewed under section 77 or 79; and

(b) an application for the registration of a trade mark is made, or

has already been made, by a person other than the person

ComLaw Authoritative Act C2014C00110

Registration of trade marks Part 7

Renewal of registration (general) Division 2

Section 80

Trade Marks Act 1995 55

who was registered as the owner of the unrenewed trade

mark;

the unrenewed trade mark is taken to be a registered trade mark for

the purposes of the application at any time when the registration of

the unrenewed trade mark could have been renewed under

section 79.

ComLaw Authoritative Act C2014C00110

Part 7 Registration of trade marks

Division 3 Renewal of registration (registration delayed for 10 or more years after

filing date)

Section 80A

56 Trade Marks Act 1995

Division 3—Renewal of registration (registration delayed

for 10 or more years after filing date)

80A Application of this Division

(1) This Division applies to a registered trade mark if particulars of

registration were entered in the Register under section 69 on a day

(Register entry day) that occurs after the end of the period of 10

years after the filing date of the application for registration.

Note: For filing date see section 6.

(2) For the purposes of this Division, each of the following is a

potential renewal period in relation to the registered trade mark:

(a) the period (first potential renewal period) of 10 years that

commenced 10 years after the filing date of the application

for registration;

(b) any successive period of 10 years, being a period that

commences before the Register entry day.

(3) For the purposes of this Division, the prescribed period is a period

that:

(a) is specified in the regulations; and

(b) commences on the Register entry day.

80B Expiry of registration

To avoid doubt, the registration of the trade mark is taken to have

expired, in accordance with subsection 72(3), 10 years after the

filing date of the application for registration.

Note: For filing date see section 6.

80C Notice about renewal

As soon as practicable after the Register entry day, the Registrar

must, in accordance with the regulations, notify the registered

owner of the trade mark that a request may be made for renewal of

the registration.

ComLaw Authoritative Act C2014C00110

Registration of trade marks Part 7

Renewal of registration (registration delayed for 10 or more years after filing date)

Division 3

Section 80D

Trade Marks Act 1995 57

Note: For registered owner see section 6.

80D Request for renewal

(1) Any person may, within the prescribed period, ask the Registrar to

renew, or successively renew, the registration of the trade mark for

one or more potential renewal periods nominated in the request.

(2) The nomination must cover at least the first potential renewal

period.

(3) If the nomination relates to more than one potential renewal period,

the nomination must cover continuous periods.

(4) The request must:

(a) be in an approved form; and

(b) be filed in accordance with the regulations.

80E Renewal within prescribed period

(1) If a request for the renewal of the registration of the trade mark is

made in accordance with section 80D, the Registrar must renew, or

successively renew, the registration for the potential renewal

period or periods to which the request relates.

(2) The Registrar must give notice of the renewal or renewals to the

registered owner of the trade mark in accordance with the

regulations.

Note: For registered owner see section 6.

80F Failure to renew

If the registration of the trade mark is not renewed under

section 80E, or is not renewed under section 80E for each of the

potential renewal periods, then:

(a) subject to sections 80G and 80H, the registration ceases to

have effect:

(i) if the registration was not renewed under section 80E—

when it expired in accordance with section 72(3); or

ComLaw Authoritative Act C2014C00110

Part 7 Registration of trade marks

Division 3 Renewal of registration (registration delayed for 10 or more years after

filing date)

Section 80G

58 Trade Marks Act 1995

(ii) if the registration was renewed under section 80E for

one or more potential renewal periods—at the end of the

last of those periods; and

(b) unless the registration is renewed under section 80G, the

Registrar must remove the trade mark from the Register 10

months after the end of the prescribed period.

Note: For month see section 6.

80G Renewal within 10 months after end of prescribed period

(1) If:

(a) the registration of the trade mark is not renewed under

section 80E; and

(b) within 10 months after the end of the prescribed period, a

person asks the Registrar to renew, or successively renew,

the registration of the trade mark for one or more potential

renewal periods nominated in the request;

the Registrar must renew, or successively renew, the registration

for the potential renewal period or periods to which the request

relates.

Note: For month see section 6.

(2) The nomination must cover at least the first potential renewal

period.

(3) If the nomination relates to more than one potential renewal period,

the nomination must cover continuous periods.

(4) The request must:

(a) be in an approved form; and

(b) be filed in accordance with the regulations.

80H Status of unrenewed trade mark

If:

(a) the registration of the trade mark is not renewed under

section 80E; and

ComLaw Authoritative Act C2014C00110

Registration of trade marks Part 7

Renewal of registration (registration delayed for 10 or more years after filing date)

Division 3

Section 80H

Trade Marks Act 1995 59

(b) the registration of the trade mark (unrenewed trade mark)

has not been renewed under section 80G; and

(c) an application for the registration of a trade mark is made, or

has already been made, by a person other than the person

who was registered as the owner of the unrenewed trade

mark;

the unrenewed trade mark is taken to be a registered trade mark for

the purposes of the application at any time when the registration of

the unrenewed trade mark could have been renewed under

section 80G.

ComLaw Authoritative Act C2014C00110

Part 8 Amendment, cancellation and revocation of registration

Division 1 Action by Registrar

Section 81

60 Trade Marks Act 1995

Part 8—Amendment, cancellation and revocation

of registration

Division 1—Action by Registrar

Subdivision A—Amending Register

81 Correction of Register

The Registrar may, on his or her own initiative, correct any error or

omission made in entering in the Register any particular in respect

of the registration of a trade mark.

Note: For Register see section 6.

82 Adaptation of classification

The Registrar may, in accordance with the regulations, amend the

Register (whether by making, removing or altering entries) for the

purpose of adapting the designation of the goods or services in

respect of which trade marks are registered to reflect any change

that has occurred in the classification of goods or services for the

purposes of this Act.

Note 1: For Register see section 6.

Note 2: For the classification of goods and services see subsection 19(3).

82A Linking series registrations

(1) Subsection (2) applies if:

(a) before the commencement of this section, 2 or more

applications were made each seeking the registration of the

same 2 or more trade marks in respect of goods or services of

different classes; and

(b) the filing date of each of those applications is the same; and

(c) the trade marks are registered trade marks for the purposes of

this Act with the same registered owner.

ComLaw Authoritative Act C2014C00110

Amendment, cancellation and revocation of registration Part 8

Action by Registrar Division 1

Section 83

Trade Marks Act 1995 61

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

(2) The registered owner may apply to the Registrar, in writing, to

have those trade marks, or so many of those trade marks as are

identified in the application to the Registrar, dealt with under this

Act as if they were registered as a series in one registration in

respect of all goods and services in respect of which the trade

marks, or the identified trade marks, were registered.

Note: For this Act and registered owner see section 6.

(3) If an application is made under subsection (2), the Registrar must

deal with the trade marks, or the identified trade marks, as if they

were one registration.

83 Amendment of particulars of trade mark entered in Register

(1) Subject to Part 11, the Registrar may, at the written request of the

registered owner of a registered trade mark:

(a) amend the representation of the trade mark as entered in the

Register if the amendment does not substantially affect the

identity of the trade mark as at the time when the particulars

of the application for the registration of the trade mark were

published under section 30; or

(b) amend any particulars entered in the Register relating to any

goods or services in respect of which the trade mark is

registered if the amendment does not have the effect of

extending the rights that (apart from the amendment) the

owner has under the registration; or

(c) amend, or enter in the Register, any other particular in

respect of the trade mark if the amendment or entry does not

have the effect of extending the rights that (apart from the

amendment or entry) the owner has under the registration.

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

(2) An appeal lies to the Federal Court or the Federal Circuit Court

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

ComLaw Authoritative Act C2014C00110

Part 8 Amendment, cancellation and revocation of registration

Division 1 Action by Registrar

Section 83A

62 Trade Marks Act 1995

Note: See sections 215 and 216 for amendments of the Register to record changes in addresses for service and in the names of registered owners etc.

83A Amendment of registered trade mark—inconsistency with

international agreements

(1) This section applies to a registered trade mark if:

(a) using the trade mark in relation to any or all of the goods or

services in respect of which the trade mark is registered

would be inconsistent with any relevant obligation of

Australia under an international agreement; and

(b) at the time when the particulars of registration of the trade

mark were entered in the Register, the obligation did not

exist.

(2) The registered owner of the registered trade mark may, in writing,

request the Registrar to do either or both of the following:

(a) amend the representation of the trade mark as entered in the

Register to remove or substitute part (but not the whole) of

the representation;

(b) amend the particulars entered in the Register in respect of the

trade mark to remove or substitute any or all of the

particulars.

(3) The Registrar must advertise the request for the amendment in the

Official Journal.

Note: In certain circumstances the Registrar need not advertise a request under this subsection (see subsection (7)).

(4) A person may, as prescribed, oppose the granting of the request for

the amendment on the ground that, if the amendment is made, the

trade mark will be substantially identical with, or deceptively

similar to:

(a) a trade mark registered in the name of the person in respect

of similar or closely related goods or similar or closely

related services; or

(b) a trade mark that is being used by the person in respect of

similar or closely related goods or similar or closely related

services.

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Note: In certain circumstances a person cannot oppose the granting of a request under this subsection (see subsection (7)).

(5) The Registrar may grant the request for the amendment if he or she

is satisfied that the amendment is reasonable, having regard to:

(a) the extent to which the amendment relates to the

inconsistency; and

(b) whether the amendment involves replacing a term (the

existing term) with another term that is recognised by the

industry in which the trade mark is used as being a substitute

for the existing term; and

(c) if a person has opposed the request for the amendment under

subsection (4)—the extent (if any) to which the ground on

which the request was opposed has been established; and

(d) in any case—any other relevant circumstance.

(6) The Registrar may grant the request for the amendment even if the

amendment would:

(a) substantially affect the identity of the trade mark; or

(b) extend the rights that the registered owner has under the

registration.

(7) If the Registrar is satisfied that the request for the amendment

would not be granted even in the absence of opposition under

subsection (4):

(a) the Registrar need not advertise the request in accordance

with subsection (3); and

(b) the request cannot be opposed, despite subsection (4); and

(c) the Registrar must refuse to grant the request.

(8) The registered owner who made the request for amendment, or a

person who opposes the request under subsection (4), may appeal

to the Federal Court or the Federal Circuit Court from a decision of

the Registrar under this section.

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Division 1 Action by Registrar

Section 84

64 Trade Marks Act 1995

Subdivision B—Cancelling registration

84 Cancellation of registration

(1) The Registrar must cancel the registration of a trade mark in

accordance with the regulations if the registered owner asks in

writing that the registration be cancelled.

Note: For registered owner see section 6.

(2) Before cancelling the registration of the trade mark, the Registrar

must notify in accordance with the regulations:

(a) any person recorded under Part 11 as claiming a right in

respect of, or an interest in, the trade mark; and

(b) if:

(i) an application has been made to the Registrar for a

record of the assignment or transmission of the trade

mark to a person to be entered in the Register (see

section 109); and

(ii) the assignment has not yet been recorded;

the person to whom the trade mark has been assigned or

transmitted.

Subdivision C—Revoking registration

84A Registration may be revoked

Power to revoke

(1) The Registrar may revoke the registration of a trade mark if he or

she is satisfied that:

(a) the trade mark should not have been registered, taking

account of all the circumstances that existed when the trade

mark became registered (whether or not the Registrar knew

then of their existence); and

(b) it is reasonable to revoke the registration, taking account of

all the circumstances.

(2) The circumstances to be taken into account under paragraph (1)(a)

include the following:

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(a) any errors (including errors of judgment) or omissions that

led directly or indirectly to the registration;

(b) any relevant obligations of Australia under an international

agreement;

(c) any special circumstances making it appropriate:

(i) not to register the trade mark; or

(ii) to register the trade mark only if the registration were

subject to conditions or limitations to which the

registration was not actually subject.

(3) The circumstances to be taken into account under paragraph (1)(b)

include the following:

(a) any use that has been made of the trade mark;

(b) any past, current or proposed legal proceedings relating to the

trade mark as a registered trade mark or to the registration of

the trade mark;

(c) other action taken in relation to the trade mark as a registered

trade mark;

(d) any special circumstances making it appropriate:

(i) to revoke the registration; or

(ii) not to revoke the registration.

Note: For use of a trade mark see section 6.

Prerequisites to revocation decision

(4) The Registrar may revoke the registration of the trade mark only if

the Registrar gives notice of the proposed revocation to each of the

following persons in accordance with the regulations within 12

months of registering the trade mark:

(a) the registered owner of the trade mark;

(b) any person recorded under Part 11 as claiming a right in

respect of, or an interest in, the trade mark.

Note: For registered owner see section 6.

(5) The Registrar must not revoke the registration of the trade mark

without giving each of the following persons the opportunity to be

heard:

(a) the registered owner of the trade mark;

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66 Trade Marks Act 1995

(b) any person recorded under Part 11 as claiming a right in

respect of, or an interest in, the trade mark.

Note: For registered owner see section 6.

No duty to consider whether to revoke

(6) The Registrar does not have a duty to consider whether to revoke

the registration under this section, whether or not the Registrar is

requested to do so.

84B Registration must be revoked if opposition was ignored in

registration process

The Registrar must revoke the registration of a trade mark if:

(a) either:

(i) a notice of opposition to the registration was filed in

accordance with subsection 52(2); or

(ii) before the registration, a person applied in accordance

with the regulations for an extension of the period for

filing a notice of opposition to the registration; and

(b) the Registrar failed to take account of the opposition or

application in deciding to register the trade mark; and

(c) the Registrar becomes aware of the failure within 1 month

after the notice was filed or the application was made.

The revocation must be done within that month.

Note: If the Registrar becomes aware of the failure later, he or she may be able to revoke the registration under section 84A.

84C Effect of revocation of registration

(1) This section applies if the Registrar revokes the registration of a

trade mark under section 84A or 84B.

(2) This Act generally applies as if the registration had never occurred,

but:

(a) subsection 129(4) applies as if the trade mark had ceased to

be registered at the time of the revocation; and

(b) if the Customs CEO, purporting to act under Part 13, seizes

goods in respect of which the trade mark was registered

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before the revocation, the Commonwealth is not liable for

any loss or damage suffered because of the seizure, unless:

(i) the Registrar gives the Customs CEO written notice of

the revocation; and

(ii) the seizure occurs after the notice is given to the

Customs CEO; and

(c) Part 14 applies as if the trade mark had ceased to be

registered at the time of the revocation; and

(d) subsection 230(2) applies in relation to a defendant who was

the registered owner of the trade mark before the revocation

as if the trade mark had ceased to be registered at the time of

the revocation; and

(e) subsection 230(2) applies in relation to a defendant who was

an authorised user of the trade mark before the revocation as

if the trade mark had ceased to be registered at the time the

defendant became aware of the revocation.

Note: For registered owner see section 6.

(3) To avoid doubt, paragraph (2)(b) does not, by itself, make the

Commonwealth liable if the circumstances described in

subparagraphs (2)(b)(i) and (ii) exist.

(4) This Act applies as if, just after the revocation:

(a) the application for registration of the trade mark reflected the

particulars in the Register for the trade mark just before the

revocation; and

(b) the applicant for registration of the trade mark were the

person in whose name the trade mark was registered just

before the revocation.

(5) This subsection has effect if the Registrar revokes the acceptance

of the application for registration of the trade mark after revoking

the registration. The Registrar may, but need not, examine the

application again under section 31 before rejecting the application.

This has effect despite paragraph 38(2)(b).

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Section 84D

68 Trade Marks Act 1995

84D Appeal from revocation of registration

An appeal lies to the Federal Court or the Federal Circuit Court

from a decision of the Registrar to revoke the registration of a trade

mark under section 84A.

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Section 85

Trade Marks Act 1995 69

Division 2—Action by court

85 Amendment to correct error or omission

A prescribed court may, on the application of an aggrieved person,

order that the Register be rectified by:

(a) entering in the Register particulars that were wrongly omitted

from it; or

(b) correcting any error in an entry in the Register.

Note: For prescribed court see section 190.

86 Amendment or cancellation on ground of contravention of

condition etc.

A prescribed court may, on the application of an aggrieved person

or the Registrar, order that the Register be rectified by:

(a) cancelling the registration of a trade mark; or

(b) removing or amending any entry in the Register relating to

the trade mark;

on the ground that a condition or limitation entered in the Register

in relation to the trade mark has been contravened.

Note: For prescribed court see section 190.

87 Amendment or cancellation—loss of exclusive rights to use trade

mark

(1) If section 24 or 25 applies in relation to a registered trade mark, a

prescribed court may, on the application of an aggrieved person or

the Registrar, but subject to subsection (2) and section 89, order

that the Register be rectified by:

(a) cancelling the registration of the trade mark; or

(b) removing or amending any entry in the Register relating to

the trade mark;

having regard to the effect of section 24 or 25 (as the case may be)

on the right of the registered owner of the trade mark to use the

trade mark, or any sign that is part of the trade mark, in relation to

particular goods or services.

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(2) If section 24 or 25 applies in relation to the trade mark because the

trade mark contains a sign that:

(a) has become generally accepted within the relevant trade as

the sign that describes or is the name of an article, substance

or service; or

(b) describes or is the name of:

(i) an article or substance that was formerly exploited

under a patent; or

(ii) a service that was formerly provided as a patented

process;

the court may decide not to make an order under subsection (1) and

allow the trade mark to remain on the Register in respect of:

(c) the article or substance or goods of the same description; or

(d) the service or services of the same description;

subject to any condition or limitation that the court may impose.

Note 1: Sections 24 and 25 provide that the registered owner of a trade mark does not have exclusive rights to use, or to authorise the use of, the trade mark if it consists of, or contains, a sign that:

(a) becomes generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service; or

(b) is the only commonly known way to describe or identify an article formerly exploited under a patent, or a service formerly provided as a patented process, where the patent has expired more than 2 years ago.

Note 2: For registered trade mark, registered owner and Register see section 6.

Note 3: For prescribed court see section 190.

88 Amendment or cancellation—other specified grounds

(1) Subject to subsection (2) and section 89, a prescribed court may,

on the application of an aggrieved person or the Registrar, order

that the Register be rectified by:

(a) cancelling the registration of a trade mark; or

(b) removing or amending an entry wrongly made or remaining

on the Register; or

(c) entering any condition or limitation affecting the registration

of a trade mark that ought to be entered.

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(2) An application may be made on any of the following grounds, and

on no other grounds:

(a) any of the grounds on which the registration of the trade

mark could have been opposed under this Act;

(b) an amendment of the application for the registration of the

trade mark was obtained as a result of fraud, false suggestion

or misrepresentation;

(c) because of the circumstances applying at the time when the

application for rectification is filed, the use of the trade mark

is likely to deceive or cause confusion;

(e) if the application is in respect of an entry in the Register—the

entry was made, or has been previously amended, as a result

of fraud, false suggestion or misrepresentation.

Note 1: For prescribed court see section 190.

Note 2: For file, registered owner and this Act see section 6.

88A Applications by Registrar

The Registrar must not make an application under section 86, 87 or

88 unless he or she considers the application desirable in the public

interest.

89 Rectification may not be granted in certain cases if registered

owner not at fault etc.

(1) The court may decide not to grant an application for rectification

made:

(a) under section 87; or

(b) on the ground that the trade mark is liable to deceive or

confuse (a ground on which its registration could have been

opposed, see paragraph 88(2)(a)); or

(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:

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72 Trade Marks Act 1995

(a) must also take into account any matter that is prescribed; and

(b) may take into account any other matter that the court

considers relevant.

90 Duties and powers of Registrar

(1) An aggrieved person applying to a prescribed court under this

Division must give notice of the application to the Registrar.

Note: For prescribed court see section 190.

(2) In relation to an application made by an aggrieved person, the

Registrar may appear before the court and be heard at his or her

discretion unless the court directs the Registrar to appear before the

court.

(3) If the application is made by an aggrieved person, the applicant

must give to the Registrar a copy of any order made by the court

under this Division.

(4) The Registrar must comply with any order made by the court under

this Division.

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Section 91

Trade Marks Act 1995 73

Division 3—Amendment of certificate of registration

91 Amendment of certificate of registration

When the Registrar amends any particular entered in the Register

in respect of a trade mark, the Registrar may also amend the

certificate of registration if he or she thinks it appropriate to do so.

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Section 92

74 Trade Marks Act 1995

Part 9—Removal of trade mark from Register for

non-use

92 Application for removal of trade mark from Register etc.

(1) Subject to subsection (3), a person may apply to the Registrar to

have a trade mark that is or may be registered removed from the

Register.

(2) The application:

(a) must be in accordance with the regulations; and

(b) may be made in respect of any or all of the goods and/or

services in respect of which the trade mark may be, or is,

registered.

(3) An application may not be made to the Registrar under

subsection (1) if an action concerning the trade mark is pending in

a prescribed court, but the person may apply to the court for an

order directing the Registrar to remove the trade mark from the

Register.

Note: For prescribed court see section 190.

(4) An application under subsection (1) or (3) (non-use application)

may be made on either or both of the following grounds, and on no

other grounds:

(a) that, on the day on which the application for the registration

of the trade mark was filed, the applicant for registration had

no intention in good faith:

(i) to use the trade mark in Australia; or

(ii) to authorise the use of the trade mark in Australia; or

(iii) to assign the trade mark to a body corporate for use by

the body corporate in Australia;

in relation to the goods and/or services to which the non-use

application relates and that the registered owner:

(iv) has not used the trade mark in Australia; or

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(v) has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before

the period of one month ending on the day on which the

non-use application is filed;

(b) that the trade mark has remained registered for a continuous

period of 3 years ending one month before the day on which

the non-use application is filed, and, at no time during that

period, the person who was then the registered owner:

(i) used the trade mark in Australia; or

(ii) used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the

application relates.

Note 1: For file and month see section 6.

Note 2: If non-use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

(5) If the right or interest on which a person relied to make an

application (under subsection (1) or (3)) to obtain the removal of a

trade mark from the Register becomes vested in another person, the

other person may, on giving notice of the relevant facts to the

Registrar or the court (as the case requires), be substituted for the

first-mentioned person as the applicant.

93 Time for making application

(1) Subject to subsection (2), an application for the removal of a trade

mark from the Register may be made at any time after the filing

date in respect of the application for the registration of the trade

mark.

(2) An application on the ground referred to in paragraph 92(4)(b) may

not be made before a period of 5 years has passed from the filing

date in respect of the application for the registration of the trade

mark.

Note: For filing date see section 6.

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94 Referral to court

If:

(a) an application has been made to the Registrar under

subsection 92(1); and

(b) the Registrar is of the opinion that the matter should be

decided by a prescribed court;

the Registrar may refer the matter to such a court and the court

may hear and determine the matter as if an application had been

made to it under subsection 92(3).

95 Notification of application

(1) If an application has been made to the Registrar under section 92,

the Registrar must give notice of the application in accordance with

the regulations.

(2) If the application is in respect of a trade mark already entered on

the Register, the Registrar must advertise the application in the

Official Journal.

(3) If the application is in respect of a trade mark whose registration is

being sought, the Registrar is to advertise the application in the

Official Journal only if the trade mark is registered.

96 Notice of opposition

Applications to Registrar

(1) Any person may oppose an application under subsection 92(1) by

filing a notice of opposition with the Registrar.

(2) The notice of opposition under subsection (1) must be filed:

(a) in the manner and form prescribed by the regulations; and

(b) within the prescribed period.

(3) Regulations made for the purposes of paragraph (2)(a) or (b) may

make different provision with respect to different components (if

any) of the notice of opposition.

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(4) Subsection (3) does not limit subsection 33(3A) of the Acts

Interpretation Act 1901.

Applications to prescribed court

(5) Any person may oppose an application under subsection 92(3) by

filing a notice of opposition with the court.

(6) A notice of opposition under subsection (5):

(a) must be in a form approved by the court; and

(b) must be filed in accordance with the rules of court.

96A Circumstances in which opposition may proceed in name of a

person other than the person who filed the notice

If:

(a) after a person has filed a notice of opposition, the right or

interest on which the person relied to file the notice of

opposition becomes vested in another person; and

(b) the other person:

(i) notifies the Registrar or the court (as the case may be) in

writing that the right or interest is vested in him or her;

and

(ii) does not withdraw the opposition;

the opposition is to proceed as if the notice of opposition had been

filed in that other person’s name.

Note: For file see section 6.

97 Removal of trade mark from the Register etc. if application

unopposed etc.

(1) If:

(a) there is no opposition to an application to the Registrar under

subsection 92(1); or

(b) an opposition to an application under that subsection has

been dismissed (see section 99A);

the Registrar must remove the trade mark from the Register in

respect of the goods and/or services specified in the application.

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Section 98

78 Trade Marks Act 1995

(2) If there is no opposition to an application to a court under

subsection 92(3), the court must order the Registrar to remove the

trade mark from the Register in respect of the goods and/or

services specified in the application. The court must cause a copy

of the order to be served on the Registrar and the Registrar must

comply with the order.

98 Trade mark restored to Register if notice of opposition filed

within extended time

If:

(a) the Registrar has removed a trade mark from the Register

under subsection 97(1) because no notice of opposition was

filed within the period provided under the regulations; and

(b) the Registrar subsequently extends the period within which

the notice may be filed; and

(c) a notice of opposition is filed within the extended period;

the Registrar must restore the trade mark to the Register. Also, the

trade mark is taken not to have been removed from the Register.

Note: For file see section 6.

99 Proceedings before Registrar

If an application to the Registrar is opposed, the Registrar must

deal with the matter in accordance with the regulations.

99A Dismissal of opposition filed with Registrar

(1) The Registrar may, in prescribed circumstances, dismiss an

opposition filed with the Registrar in accordance with

subsection 96(1).

(2) An application may be made to the Administrative Appeals

Tribunal for the review of a decision of the Registrar to dismiss an

opposition under subsection (1).

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100 Burden on opponent to establish use of trade mark etc.

(1) In any proceedings relating to an opposed application, it is for the

opponent to rebut:

(a) any allegation made under paragraph 92(4)(a) that, on the

day on which the application for the registration of the trade

mark was filed, the applicant for registration had no intention

in good faith:

(i) to use the trade mark in Australia; or

(ii) to authorise the use of the trade mark in Australia; or

(iii) to assign the trade mark to a body corporate for use by

the body corporate in Australia;

in relation to the goods and/or services to which the opposed

application relates (relevant goods and/or services); or

(b) any allegation made under paragraph 92(4)(a) that the trade

mark has not, at any time before the period of one month

ending on the day on which the opposed application was

filed, been used, or been used in good faith, by its registered

owner in relation to the relevant goods and/or services; or

(c) any allegation made under paragraph 92(4)(b) that the trade

mark has not, at any time during the period of 3 years ending

one month before the day on which the opposed application

was filed, been used, or been used in good faith, by its

registered owner in relation to the relevant goods and/or

services.

Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2: For file, month and registered owner see section 6.

(2) For the purposes of paragraph 1(b), the opponent is taken to have

rebutted the allegation that the trade mark has not, at any time

before the period referred to in that paragraph, been used, or been

used in good faith, by its registered owner in relation to the

relevant goods and/or services if:

(a) the opponent has established that the trade mark or the trade

mark with additions or alterations not substantially affecting

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80 Trade Marks Act 1995

its identity, was used in good faith by its registered owner in

relation to those goods or services before that period; or

(b) in a case where the trade mark has been assigned but a record

of the assignment has not been entered in the Register:

(i) the opponent has established that the trade mark, or the

trade mark with additions or alterations not substantially

affecting its identity, was used in good faith by the

assignee in relation to those goods or services before

that period and that that use was in accordance with the

terms of the assignment; and

(ii) the Registrar or the court is of the opinion that it is

reasonable, having regard to all the circumstances of the

case, to treat the use of the trade mark by the assignee

before that period as having been a use of the trade

mark in relation to those goods or services by the

registered owner.

Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2: For registered owner see section 6.

(3) For the purposes of paragraph 1(c), the opponent is taken to have

rebutted the allegation that the trade mark has not, at any time

during the period referred to in that paragraph, been used, or been

used in good faith, by its registered owner in relation to the

relevant goods and/or services if:

(a) the opponent has established that the trade mark, or the trade

mark with additions or alterations not substantially affecting

its identity, was used in good faith by its registered owner in

relation to those goods or services during that period; or

(b) in a case where the trade mark has been assigned but a record

of the assignment has not been entered in the Register:

(i) the opponent has established that the trade mark, or the

trade mark with additions or alterations not substantially

affecting its identity, was used in good faith by the

assignee of the trade mark in relation to those goods or

services during that period and that that use was in

accordance with the terms of the assignment; and

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Trade Marks Act 1995 81

(ii) the Registrar or the court is of the opinion that it is

reasonable, having regard to all the circumstances of the

case, to treat the use of the trade mark by the assignee

during that period as having been a use of the trade

mark in relation to those goods or services by the

registered owner; or

(c) the opponent has established that the trade mark was not used

by its registered owner in relation to those goods and/or

services during that period because of circumstances

(whether affecting traders generally or only the registered

owner of the trade mark) that were an obstacle to the use of

the trade mark during that period.

Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2: For registered owner see section 6.

101 Determination of opposed application—general

(1) Subject to subsection (3) and to section 102, if:

(a) the proceedings relating to an opposed application have not

been discontinued or dismissed; and

(b) the Registrar is satisfied that the grounds on which the

application was made have been established;

the Registrar may decide to remove the trade mark from the

Register in respect of any or all of the goods and/or services to

which the application relates.

(2) Subject to subsection (3) and to section 102, if, at the end of the

proceedings relating to an opposed application, the court is

satisfied that the grounds on which the application was made have

been established, the court may order the Registrar to remove the

trade mark from the Register in respect of any or all of the goods

and/or services to which the application relates.

(3) If satisfied that it is reasonable to do so, the Registrar or the court

may decide that the trade mark should not be removed from the

Register even if the grounds on which the application was made

have been established.

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(4) Without limiting the matters the Registrar may take into account in

deciding under subsection (3) not to remove a trade mark from the

Register, the Registrar may take into account whether the trade

mark has been used by its registered owner in respect of:

(a) similar goods or closely related services; or

(b) similar services or closely related goods;

to those to which the application relates.

Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2: For registered owner see section 6.

102 Determination of opposed application—localised use of trade

mark

(1) This section applies if an application for the removal of a trade

mark (challenged trade mark) from the Register is made on the

ground referred to in paragraph 92(4)(b) and:

(a) the applicant is the registered owner of a trade mark that is

substantially identical with, or deceptively similar to, the

challenged trade mark and is registered in respect of the

goods and/or services specified in the application subject to

the condition or limitation that the use of the trade mark is to

be restricted to:

(i) goods and/or services to be dealt with or provided in a

particular place (specified place) in Australia (otherwise

than for export from Australia); or

(ii) goods and/or services to be exported to a particular

market (specified market); or

(b) the Registrar or the court is of the opinion that such a trade

mark may properly be registered in the name of the applicant

with that condition or limitation.

Note 1: For registered owner see section 6.

Note 2: For deceptively similar see section 10.

(2) If the Registrar or the court is satisfied:

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Trade Marks Act 1995 83

(a) that the challenged trade mark has remained registered for the

period referred to in paragraph 92(4)(b); and

(b) that during that period there has been no use, or no use in

good faith, of the challenged trade mark in relation to:

(i) goods or services dealt with or provided in the specified

place; or

(ii) goods or services to be exported to the specified market;

the Registrar may decide, or the court may order, that the

challenged trade mark should not be removed from the Register but

that the registration of the trade mark should be subject to the

conditions or limitations that the Registrar or the court considers

necessary to ensure that the registration does not extend to the use

of the trade mark in relation to:

(c) goods or services dealt with or provided in the specified

place; or

(d) goods or services to be exported to the specified market.

Note: For limitations see section 6.

103 Registrar to comply with order of court

A court making an order under section 101 or 102 must cause a

copy of the order to be served on the Registrar and the Registrar

must comply with the order.

104 Appeal

An appeal lies to the Federal Court or the Federal Circuit Court

from a decision of the Registrar under section 101 or 102.

105 Certificate—use of trade mark

(1) If in any proceedings relating to an opposed application the

Registrar or the court has found that:

(a) a trade mark has been used in good faith during a particular

period; or

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84 Trade Marks Act 1995

(b) a trade mark has not been used during a particular period

solely because of circumstances that were an obstacle to its

use;

the Registrar or the court must, if so requested by the registered

owner of the trade mark, give to the registered owner a certificate

of those findings.

(2) In any subsequent proceedings in which non-use of the trade mark

is alleged:

(a) the certificate is, on being produced, evidence of the facts

stated in it; and

(b) if the proceedings are determined in favour of the opponent

and, on or before filing the notice of opposition, the opponent

notified the applicant of the contents of the certificate—the

opponent is entitled, unless the Registrar or the court

otherwise directs, to have the opponent’s full costs paid by

the applicant.

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Section 106

Trade Marks Act 1995 85

Part 10—Assignment and transmission of trade

marks

106 Assignment etc. of trade mark

(1) A registered trade mark, or a trade mark whose registration is being

sought, may be assigned or transmitted in accordance with this

section.

(2) The assignment or transmission may be partial, that is, it may

apply to some only of the goods and/or services in respect of which

registration is sought or the trade mark is registered, but it may not

be partial in relation to the use of a trade mark in a particular area.

(3) The assignment or transmission may be with or without the

goodwill of the business concerned in the relevant goods and/or

services.

Note: For assignment and transmission see section 6.

107 Applications for record to be made of assignment etc. of trade

mark whose registration is sought

(1) If a trade mark whose registration is being sought is assigned or

transmitted:

(a) the applicant for the registration of the trade mark; or

(b) the person to whom it has been assigned or transmitted;

must apply to the Registrar for the assignment or transmission to

be recorded.

(2) The application must:

(a) be in an approved form; and

(b) be filed, together with any prescribed document, in

accordance with the regulations.

Note: For approved form and file see section 6.

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Part 10 Assignment and transmission of trade marks

Section 108

86 Trade Marks Act 1995

108 Recording of assignment etc. of trade mark whose registration is

sought

(1) If the application complies with this Act, the Registrar must:

(a) at, or within, the time provided for in the regulations, record

in the manner that the Registrar thinks fit (but not in the

Register) the particulars of the assignment or transmission;

and

(b) publish the particulars of the assignment or transmission in

accordance with the regulations.

(2) On and after the day on which the Registrar records the particulars

of the assignment or transmission, the person to whom the trade

mark has been assigned or transmitted is taken, for the purposes of

this Act, to be the applicant for the registration of the trade mark.

109 Application for record of assignment etc. of registered trade

mark to be entered in Register

(1) If a registered trade mark is assigned or transmitted:

(a) the person registered as the owner of the trade mark; or

(b) the person to whom the trade mark has been assigned or

transmitted;

must apply to the Registrar for a record of the assignment or

transmission to be entered in the Register.

(2) The application must:

(a) be in an approved form; and

(b) be filed, together with any prescribed document, in

accordance with the regulations.

Note: For approved form and file see section 6.

110 Recording of assignment etc. of registered trade mark

(1) If the application complies with this Act, the Registrar must, at, or

within, the time provided for in the regulations:

(a) enter the particulars of the assignment or transmission in the

Register; and

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Section 111

Trade Marks Act 1995 87

(b) register the person to whom the trade mark has been assigned

or transmitted (beneficiary) as the owner of the trade mark in

relation to the goods and/or services in respect of which the

assignment or transmission has effect.

(2) The particulars are taken to have been entered in the Register on

the day on which the application was filed, and the registration of

the beneficiary as the owner of the trade mark is taken to have had

effect from and including that day.

(3) The Registrar must advertise in the Official Journal:

(a) the recording of the assignment or transmission; and

(b) the registration of the beneficiary as the owner of the trade

mark.

111 Notice of application to be given to person recorded as claiming

interest in trade mark etc.

If an application made under section 107 or 109 in relation to the

assignment or transmission of a trade mark complies with this Act,

the Registrar must notify in accordance with the regulations any

person recorded under Part 11 as claiming an interest in, or a right

in respect of, the trade mark.

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

marks

Division 1 Preliminary

Section 112

88 Trade Marks Act 1995

Part 11—Voluntary recording of claims to interests

in and rights in respect of trade marks

Division 1—Preliminary

112 Object of Part

This Part makes provision:

(a) for recording in the Register claims to interests in, and rights

in respect of, registered trade marks that may not be so

recorded under another Part; and

(b) for the Registrar to keep a record of claims to interests in,

and rights in respect of, trade marks for which registration is

sought.

Note: For registered trade mark see section 6.

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

11

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

Section 113

Trade Marks Act 1995 89

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

trade marks

113 Application for registration of interest or right in trade mark

Scope

(1) This section applies in relation to an interest in, or right in respect

of, a registered trade mark, if the interest or right may not be

recorded in the Register under Part 10.

Application for registration of interest or right

(2) A person claiming the interest or right may apply to the Registrar

to have particulars of the claim recorded in the Register.

(3) The application must:

(a) be in an approved form; and

(b) be accompanied by proof to the reasonable satisfaction of the

Registrar of the applicant’s entitlement to the claimed interest

or right; and

(c) be filed in accordance with the regulations.

Note: For registered trade mark, approved form and file see section 6.

114 Record of claims to interest etc.

(1) If the application has been made in accordance with section 113,

the Registrar must enter in the Register the particulars of the claim

set out in the application.

(2) If:

(a) a trade mark is registered; and

(b) immediately before the registration, particulars of a claim to

an interest in, or right in respect of, the trade mark were

recorded under Division 3;

the Registrar must enter those particulars in the Register.

ComLaw Authoritative Act C2014C00110

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 115

90 Trade Marks Act 1995

115 Amendment and cancellation

The regulations may provide for the amendment and cancellation

of particulars entered in the Register under this Division.

116 Record not proof etc. of existence of right etc.

The fact that a record has been made in the Register under this Part

that a person claims an interest in, or a right in respect of, a

registered trade mark is not proof or evidence that the person has

that right or interest.

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

11

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

Section 117

Trade Marks Act 1995 91

Division 3—Interests in, and rights in respect of,

unregistered trade marks

117 Application for recording of interest or right in trade mark

Scope

(1) This section applies in relation to an interest in, or right in respect

of, a trade mark, if a person has applied for the registration of the

trade mark.

Application for recording of interest or right

(2) A person claiming the interest or right may apply to the Registrar

for a record to be kept of the claim.

(3) The application must:

(a) be in an approved form; and

(b) be accompanied by proof to the reasonable satisfaction of the

Registrar of the applicant’s entitlement to the claimed interest

or right; and

(c) be filed in accordance with the regulations.

Note: For registered trade mark, approved form and file see section 6.

118 Record of claims to interest etc.

If the application has been made in accordance with section 117,

the Registrar must record in the manner that the Registrar thinks fit

(but not in the Register) the particulars of the claim set out in the

application.

119 Amendment and cancellation

The regulations may provide for the amendment and cancellation

of particulars recorded under this Division.

ComLaw Authoritative Act C2014C00110

Part 12 Infringement of trade marks

Section 120

92 Trade Marks Act 1995

Part 12—Infringement of trade marks

120 When is a registered trade mark infringed?

(1) A person infringes a registered trade mark if the person uses as a

trade mark a sign that is substantially identical with, or deceptively

similar to, the trade mark in relation to goods or services in respect

of which the trade mark is registered.

Note 1: For registered trade mark see section 6.

Note 2: For deceptively similar see section 10.

Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

(2) A person infringes a registered trade mark if the person uses as a

trade mark a sign that is substantially identical with, or deceptively

similar to, the trade mark in relation to:

(a) goods of the same description as that of goods (registered

goods) in respect of which the trade mark is registered; or

(b) services that are closely related to registered goods; or

(c) services of the same description as that of services

(registered services) in respect of which the trade mark is

registered; or

(d) goods that are closely related to registered services.

However, the person is not taken to have infringed the trade mark

if the person establishes that using the sign as the person did is not

likely to deceive or cause confusion.

Note 1: For registered trade mark see section 6.

Note 2: For deceptively similar see section 10.

Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

(3) A person infringes a registered trade mark if:

(a) the trade mark is well known in Australia; and

(b) the person uses as a trade mark a sign that is substantially

identical with, or deceptively similar to, the trade mark in

relation to:

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Trade Marks Act 1995 93

(i) goods (unrelated goods) that are not of the same

description as that of the goods in respect of which the

trade mark is registered (registered goods) or are not

closely related to services in respect of which the trade

mark is registered (registered services); or

(ii) services (unrelated services) that are not of the same

description as that of the registered services or are not

closely related to registered goods; and

(c) because the trade mark is well known, the sign would be

likely to be taken as indicating a connection between the

unrelated goods or services and the registered owner of the

trade mark; and

(d) for that reason, the interests of the registered owner are likely

to be adversely affected.

Note 1: For registered trade mark see section 6.

Note 2: For deceptively similar see section 10.

Note 3: For well known in Australia see subsection (4).

Note 4: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

(4) In deciding, for the purposes of paragraph (3)(a), whether a trade

mark is well known in Australia, one must take account of the

extent to which the trade mark is known within the relevant sector

of the public, whether as a result of the promotion of the trade

mark or for any other reason.

121 Infringement of trade mark by breach of certain restrictions

(1) This section applies to a registered trade mark if the registered

owner, or an authorised user of the trade mark having power to do

so, has caused to be displayed on goods (registered goods) in

respect of which the trade mark is registered, or on their package,

or on the container in which they are offered to the public, a notice

(notice of prohibition) prohibiting any act that is under

subsection (2) a prohibited act in relation to the goods.

Note 1: An authorised user of the trade mark may not have power to cause notices of prohibition to be displayed on goods etc. because of the terms of the agreement between the authorised user and the registered owner of the trade mark (see section 26).

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94 Trade Marks Act 1995

Note 2: For registered owner and registered trade mark see section 6.

Note 3: For authorised user see section 8.

Note 4: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

(2) Each of the following is a prohibited act:

(a) applying the trade mark to registered goods, or using the

trade mark in physical relation to them, after the state,

condition, get-up or packaging in which they were originally

offered to the public has been altered;

(b) altering, or partially removing or obliterating, any

representation of the trade mark applied to registered goods

or used in physical relation to them;

(c) if the trade mark has been applied to registered goods, or

used in physical relation to them, together with other matter

indicating that the registered owner or authorised user has

dealt with the goods—removing or obliterating, totally or in

part, any representation of the trade mark without totally

removing or obliterating the other matter;

(d) applying another trade mark to registered goods or using

another trade mark in physical relation to them;

(e) if the trade mark has been applied to registered goods or used

in physical relation to them—using on the goods, or on the

packaging or container of the goods, any matter that is likely

to injure the reputation of the trade mark.

Note 1: For applied to see section 9.

Note 2: For authorised user see section 8.

(3) Subject to subsection (4), a person infringes a trade mark to which

this section applies if the person:

(a) is the owner of registered goods; and

(b) in the course of trade, or with a view to a dealing with the

goods in the course of trade:

(i) does an act that is prohibited under the notice of

prohibition; or

(ii) authorises that act to be done.

(4) The trade mark is not infringed if the owner of the goods:

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Trade Marks Act 1995 95

(a) acquired them in good faith and without being aware of the

notice of prohibition; or

(b) became the owner of the goods by virtue of a title derived

from a person who had so acquired them.

122 When is a trade mark not infringed?

(1) In spite of section 120, a person does not infringe a registered trade

mark when:

(a) the person uses in good faith:

(i) the person’s name or the name of the person’s place of

business; or

(ii) the name of a predecessor in business of the person or

the name of the predecessor’s place of business; or

(b) the person uses a sign in good faith to indicate:

(i) the kind, quality, quantity, intended purpose, value,

geographical origin, or some other characteristic, of

goods or services; or

(ii) the time of production of goods or of the rendering of

services; or

(c) the person uses the trade mark in good faith to indicate the

intended purpose of goods (in particular as accessories or

spare parts) or services; or

(d) the person uses the trade mark for the purposes of

comparative advertising; or

(e) the person exercises a right to use a trade mark given to the

person under this Act; or

(f) the court is of the opinion that the person would obtain

registration of the trade mark in his or her name if the person

were to apply for it; or

(fa) both:

(i) the person uses a trade mark that is substantially

identical with, or deceptively similar to, the

first-mentioned trade mark; and

(ii) the court is of the opinion that the person would obtain

registration of the substantially identical or deceptively

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96 Trade Marks Act 1995

similar trade mark in his or her name if the person were

to apply for it; or

(g) the person, in using a sign referred to in subsection 120(1),

(2) or (3) in a manner referred to in that subsection, does not

(because of a condition or limitation subject to which the

trade mark is registered) infringe the exclusive right of the

registered owner to use the trade mark.

(2) In spite of section 120, if a disclaimer has been registered in

respect of a part of a registered trade mark, a person does not

infringe the trade mark by using that part of the trade mark.

123 Goods etc. to which registered trade mark has been applied by

or with consent of registered owner

(1) In spite of section 120, a person who uses a registered trade mark

in relation to goods that are similar to goods in respect of which the

trade mark is registered does not infringe the trade mark if the trade

mark has been applied to, or in relation to, the goods by, or with

the consent of, the registered owner of the trade mark.

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

(2) In spite of section 120, a person who uses a registered trade mark

in relation to services that are similar to services in respect of

which the trade mark is registered does not infringe the trade mark

if the trade mark has been applied in relation to the services by, or

with the consent of, the registered owner of the trade mark.

Note: For similar services see subsection 14(2).

124 Prior use of identical trade mark etc.

(1) A person does not infringe a registered trade mark by using an

unregistered trade mark that is substantially identical with, or

deceptively similar to, the registered trade mark in relation to:

(a) goods similar to goods (registered goods) in respect of which

the trade mark is registered; or

(b) services closely related to registered goods; or

(c) services similar to services (registered services) in respect of

which the trade mark is registered; or

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Trade Marks Act 1995 97

(d) goods closely related to registered services;

if the person, or the person and the person’s predecessor in title,

have continuously used in the course of trade the unregistered trade

mark in relation to those goods or services from a time before:

(e) the date of registration of the registered trade mark; or

(f) the registered owner of the registered trade mark, or a

predecessor in title, or a person who was a registered user of

the trade mark under the repealed Act, first used the trade

mark;

whichever is earlier.

Note 1: For deceptively similar see section 10.

Note 2: For predecessor in title and date of registration see section 6.

(2) If the unregistered trade mark has continuously been used only in a

particular area of Australia, subsection (1) applies only to the use

of the trade mark by the person in that area.

125 What courts may hear action for infringement of registered

trade mark

(1) An action for an infringement of a registered trade mark may be

brought in a prescribed court.

Note: For prescribed court see section 190.

(2) Subsection (1) does not prevent an action for infringement of a

registered trade mark from being brought in any other court that

has jurisdiction to hear the action.

126 What relief can be obtained from court

(1) The relief that a court may grant in an action for an infringement of

a registered trade mark includes:

(a) an injunction, which may be granted subject to any condition

that the court thinks fit; and

(b) at the option of the plaintiff but subject to section 127,

damages or an account of profits.

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Part 12 Infringement of trade marks

Section 127

98 Trade Marks Act 1995

(2) A court may include an additional amount in an assessment of

damages for an infringement of a registered trade mark, if the court

considers it appropriate to do so having regard to:

(a) the flagrancy of the infringement; and

(b) the need to deter similar infringements of registered trade

marks; and

(c) the conduct of the party that infringed the registered trade

mark that occurred:

(i) after the act constituting the infringement; or

(ii) after that party was informed that it had allegedly

infringed the registered trade mark; and

(d) any benefit shown to have accrued to that party because of

the infringement; and

(e) all other relevant matters.

127 Special case—plaintiff not entitled to damages etc.

If:

(a) in an action for the infringement of a trade mark registered in

respect of particular goods or services, the court finds that the

defendant has infringed the trade mark; and

(b) either:

(i) the defendant has applied to the court under

subsection 92(3) for an order directing the Registrar to

remove the trade mark from the Register in respect of

those goods or services; or

(ii) the defendant has applied to the Registrar under

subsection 92(1) for the trade mark to be removed from

the Register in respect of those goods or services, and

the matter has been referred to a court under section 94;

and

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Section 128

Trade Marks Act 1995 99

(c) the court finds that, because the trade mark has not during a

particular period (critical period) been used in good faith by

its registered owner in relation to those goods or services,

there are grounds (under subsection 92(4)) for so removing

the trade mark from the Register;

the court may not grant relief to the plaintiff by way of damages or

an account of profits in respect of any infringement of the trade

mark that happened during the critical period.

128 Circumstances in which action may not be brought

(1) If the registration of a trade mark is renewed under section 79

within 6 months after it has expired, an action may not be brought

in respect of an act that:

(a) infringed the trade mark; and

(b) was done after the registration had expired and before it was

renewed.

(2) If the registration of a trade mark is renewed under section 80G

within 10 months after the end of the prescribed period, an action

may not be brought in respect of an act that:

(a) infringed the trade mark; and

(b) was done after the end of the prescribed period and before the

registration was renewed.

(3) In subsection (2):

prescribed period has the same meaning as in Division 3 of Part 7.

Note: For month see section 6.

129 Groundless threats of legal proceedings

(1) If a person threatens to bring an action against another person

(threatened person) on the ground that the threatened person has

infringed:

(a) a registered trade mark; or

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Part 12 Infringement of trade marks

Section 129

100 Trade Marks Act 1995

(b) a trade mark alleged by the person to be registered;

any person aggrieved by the threat (plaintiff) may bring an action

(either in a prescribed court or in any other court having

jurisdiction) against the person making the threat (defendant).

Note: For prescribed court see section 190.

(2) The purpose of the action is to obtain from the court:

(a) a declaration that the defendant has no grounds for making

the threat; and

(b) an injunction restraining the defendant from continuing to

make the threat.

The plaintiff may also recover any damages that he or she has

sustained because of the defendant’s conduct.

(3) The action may be brought whether or not the defendant is the

registered owner, or an authorised user, of the trade mark alleged

to have been infringed.

Note: For authorised user see section 8.

(4) The court may not find in favour of the plaintiff if the defendant

satisfies the court that:

(a) the trade mark is registered; and

(b) the acts of the threatened person in respect of which the

defendant threatened to bring an action constitute an

infringement of the trade mark.

(5) An action may not be brought, or (if brought) may not proceed,

under this section if the registered owner of the trade mark, or an

authorised user of the trade mark having power to bring an action

for infringement of the trade mark, with due diligence, begins and

pursues an action against the threatened person for infringement of

the trade mark.

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

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Section 130

Trade Marks Act 1995 101

(6) This section does not make a lawyer, registered trade marks

attorney or patent attorney liable to an action for an act done in a

professional capacity on behalf of a client.

Note: For lawyer, registered trade marks attorney and patent attorney see section 6.

130 Counterclaim by defendant in action on groundless threats

If the defendant in an action brought under section 129 would be

entitled to bring against the plaintiff an action for infringement of

the registered trade mark (infringement action):

(a) the defendant may file in the court a counterclaim against the

plaintiff for any relief to which the defendant would be

entitled in the infringement action; and

(b) the provisions of this Act applicable to infringement actions

apply in relation to the counterclaim as if it were an

infringement action brought by the defendant against the

plaintiff.

ComLaw Authoritative Act C2014C00110

Part 13 Importation of goods infringing Australian trade marks

Section 131

102 Trade Marks Act 1995

Part 13—Importation of goods infringing

Australian trade marks

131 Object of Part

The object of this Part is to protect registered trade marks by

making provision allowing the Customs CEO to seize and deal

with goods that are imported into Australia if the importation

infringes, or appears to infringe, a registered trade mark.

Note: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

132 Notice of objection to importation

(1) The registered owner of a registered trade mark may give to the

Customs CEO a notice in writing objecting to the importation after

the date of the notice of goods that infringe the trade mark. The

notice is to be given together with any prescribed document.

(2) If:

(a) the registered owner of the registered trade mark has not

given a notice under subsection (1); or

(b) any notice given under subsection (1) is no longer in force;

an authorised user of the trade mark having power to give a notice

under subsection (1) may ask the registered owner to give such a

notice in respect of the trade mark.

Note 1: For authorised user see section 8.

Note 2: An authorised user of the trade mark may not have power to give a notice under subsection (1) because of the terms of the agreement between the authorised user and the registered owner of the trade mark (see section 26).

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

(a) at any time, with the consent of the registered owner; or

(b) during the prescribed period, if the registered owner refuses

to comply with the request on a particular occasion during

the prescribed period; or

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(c) after the end of the prescribed period, if the registered owner

has failed to give such a notice during the prescribed period.

The authorised user must give also to the Customs CEO, together

with the notice:

(d) any document prescribed for the purposes of subsection (1);

and

(e) any other prescribed document.

(4) A notice given by the registered owner of a trade mark remains in

force for 4 years from the day on which the notice is given unless it

is revoked, before the end of that period, by notice in writing given

to the Customs CEO by the person who is then the registered

owner of the trade mark.

(5) A notice given by an authorised user of the trade mark remains in

force for 4 years unless it is revoked, before the end of that period,

by notice in writing given to the Customs CEO:

(a) if the authorised user has power to revoke the notice—by the

authorised user; or

(b) in any other case—by the person who is then the registered

owner of the trade mark.

Note 1: For authorised user see section 8.

Note 2: An authorised user of a trade mark may not have power to revoke the notice because of the terms of the agreement between the authorised user and the registered owner of the trade mark (see section 26).

133 Customs CEO may seize goods infringing trade mark

(1) This section applies to goods manufactured outside Australia that:

(a) are imported into Australia; and

(b) are subject to the control of the Customs within the meaning

of the Customs Act 1901.

(2) If goods to which this section applies:

(a) have applied to them or in relation to them a sign that, in the

opinion of the Customs CEO, is substantially identical with,

or deceptively similar to, a notified trade mark; and

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(b) are goods in respect of which the notified trade mark is

registered;

the Customs CEO must seize the goods unless he or she is satisfied

that there are no reasonable grounds for believing that the notified

trade mark is infringed by the importation of the goods.

Note 1: For applied to or in relation to goods see section 9.

Note 2: For deceptively similar see section 10.

Note 3: For notified trade mark see section 6.

(3) Subject to subsection (3A), the Customs CEO may decide not to

seize the goods unless he or she has been given by the objector (or

by one or more of the objectors) a written undertaking acceptable

to the Customs CEO to repay to the Commonwealth the expenses

of seizing the goods.

Note: For objector see section 6.

(3A) The Customs CEO may decide not to seize the goods unless he or

she has been given by the objector (or one or more of the

objectors), instead of an undertaking, security in an amount that the

Customs CEO considers sufficient to repay to the Commonwealth

the expenses of seizing the goods if:

(a) an amount payable under an undertaking given by the

objector (or one or more of the objectors) in relation to other

goods has not been paid in accordance with the undertaking;

and

(b) the Customs CEO considers it reasonable in all the

circumstances to require the security.

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

consents in writing to a written request from the objector or

objectors to do so.

(4) Goods seized under this section must be kept in a secure place as

directed by the Customs CEO.

(5) In this section:

expenses of seizing goods means the expenses that may be

incurred by the Commonwealth if the goods were seized.

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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

(1) As soon as is practicable after goods are seized under section 133,

the Customs CEO must give to the designated owner and the

objector, either personally or by post, a written notice (the seizure

notice) identifying the goods and stating that the identified goods

have been seized.

Note: For designated owner and objector see section 6.

(2) The seizure notice must state that the goods will be released to the

designated owner if:

(a) the designated owner makes a claim for the release of the

goods within the claim period; and

(b) the objector has not, by the end of the action period:

(i) instituted an action for infringement of the notified trade

mark in respect of the goods; and

(ii) given the Customs CEO written notice of that action.

Note: For claim period, action period and notified trade mark see section 6.

(3) The seizure notice must also:

(a) set out the claim period for the goods; and

(b) set out the action period for the goods and state that the

action period will begin only if the designated owner makes a

claim for the release of the goods; and

(c) if the notice is given to the objector—state the name and the

address of the place of business or residence of the

designated owner (if known); and

(d) if the notice is given to the designated owner—state the name

and the address of the place of business or residence of:

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(i) the objector; or

(ii) if the objector has nominated a person to be the

objector’s agent or representative for the purposes of

this Division—that person.

(4) The Customs CEO may, at any time after the goods are seized,

give to the objector:

(a) the name and the address of the place of business or

residence of any person or body (whether in or outside

Australia) that made arrangements, on behalf of the

designated owner of the goods, for the goods to be brought to

Australia or any information that the Customs CEO has, and

believes on reasonable grounds may help in identifying and

locating such a person or body; and

(b) any information (including personal information) that the

Customs CEO has and believes on reasonable grounds may

be relevant for the purpose of identifying and locating the

importer of the goods; and

(c) any information (including personal information) that the

Customs CEO has and believes on reasonable grounds may

be relevant for the purpose of identifying and locating the

designated owner of the goods.

134A Inspection, release etc. of seized goods

(1) The Customs CEO may permit the objector or the designated

owner to inspect the seized goods.

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

(2) If the objector gives the Customs CEO the requisite undertakings,

the Customs CEO may permit the objector to remove one or more

samples of the seized goods from the custody of the Customs CEO

for inspection by the objector.

(3) If the designated owner gives the Customs CEO the requisite

undertakings, the Customs CEO may permit the designated owner

to remove one or more samples of the seized goods from the

custody of the Customs CEO for inspection by the designated

owner.

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(4) The requisite undertakings are undertakings in writing that the

person giving the undertaking will:

(a) return the sample goods to the Customs CEO at a specified

time that is satisfactory to the Customs CEO; and

(b) take reasonable care to prevent damage to the sample goods.

(5) If the Customs CEO permits inspection of the seized goods, or the

removal of sample goods, by the objector in accordance with this

section, the Commonwealth is not liable to the designated owner

for any loss or damage suffered by the designated owner arising

out of:

(a) damage to any of the seized goods incurred during that

inspection; or

(b) anything done by the objector or any other person to, or in

relation to, sample goods removed from the custody of the

Customs CEO or any use made by the objector of such

sample goods.

135 Consent to forfeiture of seized goods

(1) The designated owner of any seized goods may, at any time before

an objector starts an action for infringement of a notified trade

mark in respect of the goods, consent to the goods being forfeited

to the Commonwealth by giving notice in writing to that effect to

the Customs CEO.

(2) If the designated owner gives such a notice, the goods are forfeited

to the Commonwealth.

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

136 Claim for release of seized goods

(1) The designated owner may make a claim to the Customs CEO for

the release of seized goods.

Note: For designated owner and seized goods see section 6.

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(2) The claim must be made before the end of the claim period for the

goods.

Note: For claim period see section 6.

(3) The claim must:

(a) be in the form (if any) prescribed by the regulations; and

(b) include the information prescribed by the regulations.

Note: Sections 137.1 and 137.2 of the Criminal Code create offences for providing false or misleading information or documents.

136A Seized goods not claimed are forfeited

(1) Seized goods are forfeited to the Commonwealth if a claim for the

release of the goods is not made within the claim period for the

goods.

Note: For seized goods and claim period see section 6.

(2) However, if the Customs CEO allows a late claim for the goods

(see section 136B), the goods are taken not to have been forfeited.

136B Late claim for release of seized goods

(1) The Customs CEO may allow the designated owner to make a

claim (the late claim) to the Customs CEO for the release of seized

goods after the end of the claim period for the goods.

Note: For objector, seized goods and claim period see section 6.

(2) The Customs CEO may allow the late claim only if:

(a) an action for infringement of the notified trade mark in

respect of the goods has not been instituted; and

(b) the Customs CEO considers it reasonable in the

circumstances; and

(c) the goods have not been disposed of under section 139.

(3) An application may be made to the Administrative Appeals

Tribunal for the review of a decision of the Customs CEO under

subsection (1) refusing to allow a late claim for the release of

seized goods.

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136C Objector to be notified of claim

(1) If the designated owner makes a claim for the release of seized

goods, the Customs CEO must, as soon as practicable, give notice

of the claim to the objector.

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

(2) The notice:

(a) must be in writing; and

(b) may include any information that the Customs CEO has, and

believes on reasonable grounds may be relevant, for the

purpose of identifying and locating either or both of the

following:

(i) the importer of the goods;

(ii) any other person or body (whether in or outside

Australia) that made arrangements for the goods to be

brought to Australia.

136D Release of seized goods

(1) The Customs CEO must release seized goods to the designated

owner if:

(a) the objector gives written notice to the Customs CEO stating

that the objector consents to the release of the seized goods;

and

(b) the goods have not been disposed of under section 139.

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

(2) The Customs CEO may release seized goods to the designated

owner at any time if:

(a) the Customs CEO, having regard to information that has

come to his or her knowledge after the goods were seized, is

satisfied that there are no reasonable grounds for believing

that the notified trade mark has been infringed by the

importation of the goods; and

(b) the objector has not brought an action for infringement of the

notified trade mark in respect of the goods.

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(3) The Customs CEO must release seized goods to the designated

owner if:

(a) the designated owner has made a claim for the release of the

goods; and

(b) the objector has not, by the end of the action period:

(i) instituted an action for infringement of the notified trade

mark in respect of the goods; and

(ii) given the Customs CEO written notice of that action.

Note: For action period see section 6.

(4) The CEO must release seized goods to the designated owner if:

(a) the designated owner has made a claim for the release of the

goods; and

(b) action for infringement of the notified trade mark in respect

of the goods has been instituted; and

(c) at the end of a period of 20 working days commencing on the

day on which the action was instituted, there is not in force

an order of the court in which the action was instituted

preventing the release of the goods.

(5) This section has effect subject to section 140.

136E Goods released but not collected are forfeited

Seized goods are forfeited to the Commonwealth if:

(a) the goods are released by the Customs CEO to the designated

owner; and

(b) the designated owner does not take possession of the goods

within 90 days of the release.

Note: For designated owner and seized goods see section 6.

137 Action for infringement of trade mark

(1) An objector may bring an action for infringement of a notified

trade mark in respect of seized goods.

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

(2) The court hearing the action:

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(a) may, on the application of a person, allow the person to be

joined as a defendant to the action; and

(b) must allow the Customs CEO to appear and be heard.

(3) In addition to any relief that the court may grant apart from this

section, the court may:

(a) at any time, if it thinks it just, order that the seized goods be

released to the designated owner subject to the conditions (if

any) that the court considers fit to impose; or

(b) order that the seized goods be forfeited to the

Commonwealth.

Note: For seized goods and designated owner see section 6.

(4) If:

(a) the court decides that the trade mark was not infringed by the

importation of the goods; and

(b) the designated owner of the goods, or any other defendant,

satisfies the court that he or she has suffered loss or damage

because the goods were seized;

the court may order the objector to pay to the designated owner or

other defendant compensation, in the amount determined by the

court, for any part of that loss or damage that is attributable to any

period beginning on or after the day on which the action was

brought.

(6) If the court orders that the goods be released, the Customs CEO

must, subject to section 140, comply with the order.

138 Action for infringement by authorised user

If an authorised user of a notified trade mark is an objector in

relation to any seized goods, the authorised user may start an action

for the infringement of the trade mark in respect of the goods

within the required period without first ascertaining whether the

registered owner is willing to bring the action.

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

Note 2: For authorised user see section 8.

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

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registered owner of the trade mark gives consent to the bringing of such an action or refuses or fails to bring such an action.

139 Disposal of seized goods forfeited to the Commonwealth

(1) Seized goods forfeited to the Commonwealth must be disposed of:

(a) in the manner prescribed by the regulations; or

(b) if no manner of disposal is so prescribed—as the Customs

CEO directs.

Note: For seized goods see section 6.

(2) However, goods forfeited under section 136A must not be disposed

of until 30 days after their forfeiture.

Note: If the Customs CEO allows a late claim under section 136B for goods that have been forfeited under section 136A, the goods are taken not to have been forfeited.

(3) Subsection (1) does not require the disposal of goods that are

required in relation to an action for infringement of a trade mark.

Right of compensation in certain circumstances

(4) Despite the forfeiture of seized goods to the Commonwealth, a

person may apply to a court of competent jurisdiction under this

section for compensation for the disposal of the goods.

(5) A right to compensation exists if:

(a) the goods did not infringe the objector’s notified trade mark;

and

(b) the person establishes, to the satisfaction of the court:

(i) that he or she was the owner of the goods immediately

before they were forfeited; and

(ii) that there were circumstances providing a reasonable

excuse for the failure to make a claim for the release of

the goods.

(6) If a right to compensation exists under subsection (4), the court

must order the payment by the Commonwealth to the person of an

amount equal to the market value of the goods at the time of their

disposal.

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140 Power of Customs CEO to retain control of goods

In spite of this Part, the Customs CEO:

(a) must not release, or dispose of, any seized goods; or

(b) must not take any action in relation to the goods to give

effect to any order of a court under section 137;

if the 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:

(a) is a debt due by the objector, or by the objectors jointly or

each of them separately, to the Commonwealth; and

(b) may be recovered by an action taken in a court of competent

jurisdiction.

Note: For objector see section 6.

141A Failure to comply with undertaking etc.

(1) If an amount payable under an undertaking in relation to goods

covered by a notice given under section 132 is not paid in

accordance with the undertaking, the Customs CEO may decide

not to seize goods covered by the notice until the amount owing is

paid.

(2) An amount not paid under an undertaking:

(a) is a debt due by the objector, or by the objectors jointly or

each of them separately, to the Commonwealth; and

(b) may be recovered by an action taken in a court of competent

jurisdiction.

Note: For objector see section 6.

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(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:

(a) is a debt due by the objector, or by the objectors jointly or

each of them separately, to the Commonwealth; and

(b) may be recovered by an action taken in a court of competent

jurisdiction.

142 Commonwealth not liable for loss etc. suffered because of

seizure

The Commonwealth is not liable for any loss or damage suffered

by a person:

(a) because the Customs CEO seized, or failed to seize, goods

under this Part; or

(b) because of the release of any seized goods.

143 Power to require information

(1) If:

(a) goods that may be seized under this Part are imported into

Australia; and

(b) the Customs CEO, relying on information received, is

satisfied on reasonable grounds that the use of a trade mark

applied to or in relation to those goods is fraudulent;

the Customs CEO may ask the importer of the goods or an agent of

the importer:

(c) to produce any document in his or her possession relating to

the goods; and

(d) to give information about:

(i) the name and address of the person by whom the goods

were consigned to Australia; and

(ii) the name and address of the person in Australia to

whom the goods were consigned.

Note 1: For applied to in relation to goods see section 9.

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Note 2: In obtaining information for the purposes of this subsection, the Customs CEO must comply with Australian Privacy Principles 3 and 5.

(2) If the importer or his or her agent fails to comply with the request

within the prescribed period, the importer or agent 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:

(a) Norfolk Island; or

(b) Christmas Island; or

(c) Cocos (Keeling) Islands.

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145 Falsifying or removing a registered trade mark

Indictable offence

(1) A person commits an offence if:

(a) a registered trade mark has been applied to goods, or in

relation to goods or services; and

(b) the goods or services are being, or are to be, dealt with or

provided in the course of trade; and

(c) the person:

(i) alters or defaces the trade mark; or

(ii) makes any addition to the trade mark; or

(iii) wholly or partly removes, erases or obliterates the trade

mark; and

(d) the person does so without:

(i) the permission of the registered owner, or an authorised

user, of the trade mark; or

(ii) being required or authorised to do so by this Act, a

direction of the Registrar or an order of a court.

Penalty: Imprisonment for 5 years or 550 penalty units, or both.

Note 1: For registered trade mark and registered owner see section 6.

Note 2: For authorised user see section 8.

Note 3: For applied to goods and applied in relation to goods or services see section 9.

Note 4: International trade marks may be protected under the regulations: see Part 17A.

Summary offence

(2) A person commits an offence if:

(a) a registered trade mark has been applied to goods, or in

relation to goods or services; and

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(b) the goods or services are being, or are to be, dealt with or

provided in the course of trade; and

(c) the person:

(i) alters or defaces the trade mark; or

(ii) makes any addition to the trade mark; or

(iii) wholly or partly removes, erases or obliterates the trade

mark; and

(d) the person does so without:

(i) the permission of the registered owner, or an authorised

user, of the trade mark; or

(ii) being required or authorised to do so by this Act, a

direction of the Registrar or an order of a court.

Penalty: Imprisonment for 12 months or 60 penalty units, or both.

(3) The fault element for paragraphs (2)(a), (b) and (d) is negligence.

146 Falsely applying a registered trade mark

Indictable offence

(1) A person commits an offence if:

(a) the person applies a mark or sign to goods, or in relation to

goods or services; and

(b) the goods or services are being, or are to be, dealt with or

provided in the course of trade; and

(c) the mark or sign is, or is substantially identical to, the

registered trade mark; and

(d) the person applies the mark or sign without:

(i) the permission of the registered owner, or an authorised

user, of the trade mark; or

(ii) being required or authorised to do so by this Act, a

direction of the Registrar or an order of a court.

Penalty: Imprisonment for 5 years or 550 penalty units, or both.

Note 1: For registered trade mark and registered owner see section 6.

Note 2: For authorised user see section 8.

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Note 3: International trade marks may be protected under the regulations: see Part 17A.

Summary offence

(2) A person commits an offence if:

(a) the person applies a mark or sign to goods, or in relation to

goods or services; and

(b) the goods or services are being, or are to be, dealt with or

provided in the course of trade; and

(c) the mark or sign is, or is substantially identical to, the

registered trade mark; and

(d) the person applies the mark or sign without:

(i) the permission of the registered owner, or an authorised

user, of the trade mark; or

(ii) being required or authorised to do so by this Act, a

direction of the Registrar or an order of a court.

Penalty: Imprisonment for 12 months or 60 penalty units, or both.

(3) The fault element for paragraphs (2)(b), (c) and (d) is negligence.

147 Making a die etc. for use in trade marks offence

Indictable offence

(1) A person commits an offence if:

(a) the person makes a die, block, machine or instrument; and

(b) the die, block, machine or instrument is likely to be used for,

or in the course of, committing an offence; and

(c) the offence is an offence against section 145 or 146.

Penalty: Imprisonment for 5 years or 550 penalty units, or both.

(2) Strict liability applies to paragraph (1)(c).

Note: For strict liability, see section 6.1 of the Criminal Code.

Summary offence

(3) A person commits an offence if:

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(a) the person makes a die, block, machine or instrument; and

(b) the die, block, machine or instrument is likely to be used for,

or in the course of, committing an offence; and

(c) the offence is an offence against section 145 or 146.

Penalty: Imprisonment for 12 months or 60 penalty units, or both.

(4) The fault element for paragraph (3)(b) is negligence.

(5) Strict liability applies to paragraph (3)(c).

Note: For strict liability, see section 6.1 of the Criminal Code.

147A Drawing etc. trade marks for use in offence

Indictable offence

(1) A person commits an offence if:

(a) the person draws, or programs a computer or other device to

draw, a registered trade mark or part of a registered trade

mark; and

(b) the registered trade mark or part of the registered trade mark

is likely to be used for, or in the course of, an offence; and

(c) the offence is an offence against section 145 or 146.

Penalty: Imprisonment for 5 years or 550 penalty units, or both.

Note: For registered trade mark see section 6.

(2) Strict liability applies to paragraph (1)(c).

Note: For strict liability, see section 6.1 of the Criminal Code.

Summary offence

(3) A person commits an offence if:

(a) the person draws, or programs a computer or other device to

draw, a registered trade mark or part of a registered trade

mark; and

(b) the registered trade mark or part of the registered trade mark

is likely to be used for, or in the course of, an offence; and

(c) the offence is an offence against section 145 or 146.

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Penalty: Imprisonment for 12 months or 60 penalty units, or both.

(4) The fault element for paragraph (3)(b) is negligence.

(5) Strict liability applies to paragraph (3)(c).

Note: For strict liability, see section 6.1 of the Criminal Code.

147B Possessing or disposing of things for use in trade marks

offence

Indictable offence

(1) A person commits an offence if:

(a) the person possesses or disposes of:

(i) a die, block, machine or instrument; or

(ii) a computer, or other device, programmed to draw a

registered trade mark or part of a registered trade mark;

or

(iii) a representation of a registered trade mark or of part of a

registered trade mark; and

(b) the die, block, machine, instrument, computer, device or

representation is likely to be used for, or in the course of, an

offence; and

(c) the offence is an offence against section 145 or 146.

Penalty: Imprisonment for 5 years or 550 penalty units, or both.

Note: For registered trade mark see section 6.

(2) Strict liability applies to paragraph (1)(c).

Note: For strict liability, see section 6.1 of the Criminal Code.

Summary offence

(3) A person commits an offence if:

(a) the possesses or disposes of:

(i) a die, block, machine or instrument; or

(ii) a computer, or other device, programmed to draw a

registered trade mark or part of a registered trade mark;

or

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(iii) a representation of a registered trade mark or of part of a

registered trade mark; and

(b) the die, block, machine, instrument, computer, device or

representation is likely to be used for, or in the course of, an

offence; and

(c) the offence is an offence against section 145 or 146.

Penalty: Imprisonment for 12 months or 60 penalty units, or both.

(4) The fault element for paragraph (3)(b) is negligence.

(5) Strict liability applies to paragraph (3)(c).

Note: For strict liability, see section 6.1 of the Criminal Code.

148 Goods with false trade marks

Indictable offence

(1) A person commits an offence if:

(a) the person:

(i) sells goods; or

(ii) exposes goods for sale; or

(iii) possesses goods for the purpose of trade or

manufacture; or

(iv) imports goods into Australia for the purpose of trade or

manufacture; and

(b) any of the following applies:

(i) there is a registered trade mark on the goods;

(ii) there is a mark or sign on the goods that is substantially

identical to a registered trade mark;

(iii) a registered trade mark on the goods has been altered,

defaced, added to, wholly or partly removed, erased or

obliterated; and

(c) the registered trade mark, or mark or sign, was applied,

altered, defaced, added to, wholly or partly removed, erased

or obliterated, as the case requires, without:

(i) the permission of the registered owner, or an authorised

user, of the trade mark; or

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(ii) the application being required or authorised by this Act,

a direction of the Registrar or an order of a court.

Penalty: Imprisonment for 5 years or 550 penalty units, or both.

Summary offence

(2) A person commits an offence if:

(a) the person:

(i) sells goods; or

(ii) exposes goods for sale; or

(iii) possesses goods for the purpose of trade or

manufacture; or

(iv) imports goods into Australia for the purpose of trade or

manufacture; and

(b) any of the following applies:

(i) there is a registered trade mark applied to the goods;

(ii) there is a mark or sign applied to the goods that is

substantially identical to a registered trade mark;

(iii) a registered trade mark applied to the goods has been

altered, defaced, added to, wholly or partly removed,

erased or obliterated; and

(c) the registered trade mark, or mark or sign, was applied,

altered, defaced, added to, wholly or partly removed, erased

or obliterated, as the case requires, without:

(i) the permission of the registered owner, or an authorised

user, of the trade mark; or

(ii) the application being required or authorised by this Act,

a direction of the Registrar or an order of a court.

Penalty: Imprisonment for 12 months or 60 penalty units, or both.

(3) The fault element for paragraphs (2)(b) and (c) is negligence.

Note 1: For registered trade mark see section 6.

Note 2: For applied to goods see section 9.

Note 3: International trade marks may be protected under the regulations: see Part 17A.

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150 Aiding and abetting offences

(1) If a person:

(a) aids, abets, counsels or procures; or

(b) is in any way, directly or indirectly, knowingly concerned in,

or party to;

the doing of an act outside Australia which, if it were done in

Australia, would be an offence against this Act, the person is taken

to have committed that offence and is punishable accordingly.

(2) Subsection (1) does not affect the operation of section 11.2 or

11.2A of the Criminal Code.

151 False representations regarding trade marks

(1) A person must not make a representation to the effect that a trade

mark is a registered trade mark unless the person knows, or has

reasonable grounds to believe, that the trade mark is registered in

Australia.

Penalty: 60 penalty units.

(2) A person must not make a representation to the effect that a part of

a registered trade mark is registered as a trade mark unless the

person knows, or has reasonable grounds to believe, that that part

is registered as a trade mark in Australia.

Penalty: 60 penalty units.

(3) A person must not make a representation to the effect that a trade

mark is registered in respect of goods or services unless the person

knows, or has reasonable grounds to believe, that the trade mark is

registered in Australia in respect of those goods or services.

Penalty: 60 penalty units.

(4) A person must not make a representation to the effect that the

registration of a trade mark gives exclusive rights to use the trade

mark in circumstances in which, having regard to conditions or

limitations entered in the Register, the registration does not give

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those rights unless the person has reasonable grounds to believe

that the registration does give those exclusive rights.

Penalty: 60 penalty units.

Note 1: For registered trade mark and limitations see section 6.

Note 2: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).

Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

(5) For the purposes of this section, the use in Australia in relation to a

trade mark:

(a) of the word registered; or

(b) of any other word or any symbol referring (either expressly

or by implication) to registration;

is taken to be a representation that the trade mark is registered in

Australia in respect of the goods or services in relation to which it

is used except if the trade mark is registered in a country other than

Australia in respect of those goods or services and:

(c) the word or symbol by itself indicates that the trade mark is

registered in that other country or in a country outside

Australia; or

(d) the word or symbol is used, together with other words or

symbols of the same or a bigger size, to indicate that the

trade mark is registered in that other country or in a country

outside Australia; or

(e) the word or symbol is used in relation to goods that are to be

exported to that country.

Note: For use of a trade mark in relation to goods or services see subsections 7(4) and (5).

152 False entries in Register etc.

A person must not intentionally:

(a) make a false entry in the Register; or

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

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(c) tender in evidence a document that falsely purports to be a

copy of, or an extract from, an entry in the Register or a

document in the Trade Marks Office.

Penalty: Imprisonment for 2 years.

Note: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).

153 Disobeying summons etc.

(1) A person:

(a) who has been summonsed to appear as a witness before the

Registrar; and

(b) to whom a reasonable sum has been tendered in payment for

expenses;

must not fail to appear in answer to the summons.

Penalty: 10 penalty units.

(2) A person:

(a) who has been required by the Registrar to produce a

document or any other thing; and

(b) to whom a reasonable sum has been tendered in payment for

expenses;

must not fail to produce the document or thing.

Penalty: 10 penalty units.

(2A) Subsections (1) and (2) do not apply if the person has a reasonable

excuse.

Note: A defendant bears an evidential burden in relation to the matter in subsection (2A), see subsection 13.3(3) of the Criminal Code.

(3) An offence under this section is an offence of strict liability.

Note 1: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).

Note 2: For strict liability, see section 6.1 of the Criminal Code.

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154 Refusing to give evidence etc.

(1) A person appearing before the Registrar as a witness must not:

(a) refuse to be sworn or to make an affirmation; or

(b) refuse to answer questions that he or she is lawfully required

to answer; or

(c) fail to produce any document or thing that he or she is

lawfully required to produce.

Penalty: 10 penalty units.

(1A) Subsection (1) does not apply if the person has a reasonable

excuse.

Note: A defendant bears an evidential burden in relation to the matter in subsection (1A), see subsection 13.3(3) of the Criminal Code.

(2) An offence under this section is an offence of strict liability.

Note 1: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).

Note 2: For strict liability, see section 6.1 of the Criminal Code.

156 Acting or holding out without being registered

Individuals

(1) An individual commits an offence if:

(a) the individual describes himself or herself, or holds himself

or herself out, or permits himself or herself to be described or

held out, as a trade marks attorney; and

(b) the individual is not a registered trade marks attorney.

Penalty: 30 penalty units.

Note 1: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).

Note 2: For registered trade marks attorney see section 6.

(2) An individual commits an offence if:

(a) the individual describes himself or herself, or holds himself

or herself out, or permits himself or herself to be described or

held out, as a trade marks agent; and

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(b) the individual is not a registered trade marks attorney, a

patent attorney or a lawyer.

Penalty: 30 penalty units.

Note 1: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).

Note 2: For registered trade marks attorney, patent attorney and lawyer see section 6.

Companies

(3) A company commits an offence if:

(a) the company describes itself, or holds itself out, or permits

itself to be described or held out, as a trade marks attorney;

and

(b) the company is not a registered trade marks attorney.

Penalty: 150 penalty units.

Note 1: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).

Note 2: For company and registered trade marks attorney see section 6.

(3A) A company commits an offence if the company:

(a) the company describes itself, or holds itself out, or permits

itself to be described or held out, as a trade marks agent; and

(b) the company is not a registered trade marks attorney, a patent

attorney or an incorporated legal practice.

Penalty: 150 penalty units.

Note 1: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).

Note 2: For company, registered trade marks attorney, patent attorney and incorporated legal practice see section 6.

(4) In spite of section 15B of the Crimes Act 1914, a prosecution for an

offence against this section may be started at any time within 5

years after the offence was committed.

(6) An offence under this section is an offence of strict liability.

Note: For strict liability, see section 6.1 of the Criminal Code.

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157 False representation about Trade Marks Office

(1) A person:

(a) must not:

(i) place, or allow to be placed, on the building in which

his or her office is situated; or

(ii) use when advertising his or her office or business; or

(iii) place on a document, as a description of his or her office

or business;

the words ―Trade Marks Office‖ or ―Office for registering

trade marks‖, or words of similar import (whether alone or

together with other words); or

(b) must not use in any other way, in connection with his or her

business, words that would reasonably lead other persons to

believe that his or her office is, or is officially connected

with, the Trade Marks Office.

Penalty: 30 penalty units.

(2) An offence under this section is an offence of strict liability.

Note 1: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).

Note 2: For strict liability, see section 6.1 of the Criminal Code.

157A Incorporated trade marks attorney must have a trade marks

attorney director

Offence—failing to notify lack of trade marks attorney director

(1) An incorporated trade marks attorney commits an offence if the

incorporated trade marks attorney:

(a) does not have a trade marks attorney director; and

(b) does not notify the Designated Manager of that within 7

days.

Penalty: 150 penalty units.

Note 1: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).

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Note 2: For incorporated trade marks attorney, trade marks attorney director and Designated Manager see section 6.

Offence—acting after 7 days without trade marks attorney director

(2) An incorporated trade marks attorney commits an offence if the

incorporated trade marks attorney:

(a) does not have a trade marks attorney director; and

(b) has not had a trade marks attorney director during the

previous 7 days; and

(c) describes itself, or holds itself out, or permits itself to be

described or held out, as a trade marks attorney.

Penalty: 150 penalty units.

Note 1: The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).

Note 2: For incorporated trade marks attorney and trade marks attorney director see section 6.

Designated Manager may appoint a registered trade marks

attorney

(3) If an incorporated trade marks attorney does not have a trade marks

attorney director, the Designated Manager may, by writing, appoint

another registered trade marks attorney to take charge of the trade

marks work of the incorporated trade marks attorney.

(4) The appointment may be made only with the consent of the other

registered trade marks attorney.

Effect of appointment

(5) A registered trade marks attorney holding an appointment under

subsection (3) (the appointed attorney) is taken, for the purposes

of this Act, to be a trade marks attorney director of the

incorporated trade marks attorney.

(6) For the purposes of the Corporations Act 2001:

(a) the appointed attorney is not a director of the incorporated

trade marks attorney only because:

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(i) the appointed attorney takes charge of the trade marks

work of the incorporated trade marks attorney; and

(ii) the appointed attorney is taken, for the purposes of this

Act, to be a trade marks attorney director of the

incorporated trade marks attorney; and

(b) the Designated Manager is not a director of the incorporated

trade marks attorney only because the Designated Manager

appointed the appointed attorney.

Designated Manager may remove incorporated trade marks

attorney from Register

(7) If an incorporated trade marks attorney does not have a trade marks

attorney director, the Designated Manager may remove the

incorporated trade marks attorney from the Register.

Meaning of trade marks work

(8) Trade marks work means one or more of the following done, on

behalf of someone else, for gain:

(a) applying for or obtaining trade marks in Australia or

anywhere else;

(b) preparing trade marks applications or other documents for the

purposes of this Act or the trade marks law of another

country;

(c) giving advice (other than advice of a scientific or technical

nature) about the validity, or infringement, of trade marks.

159 Forfeiture orders under the proceeds of crime legislation

(1) If a person other than the Director of Public Prosecutions has

instituted proceedings for the prosecution of another person in

respect of an indictable offence against this Part, the forfeiture

order provisions apply as if a reference in those provisions to a

proceeds of crime authority (or a responsible authority) includes a

reference to the person who has instituted the proceedings.

(2) In this section:

forfeiture order provisions means:

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(c) Part 2-2 of the Proceeds of Crime Act 2002; and

(d) Part 2-3 of the Proceeds of Crime Act 2002.

160 Conduct of employees and agents of natural persons

(1) This section applies for the purposes of a prosecution for:

(a) an offence under this Act; or

(b) an offence under section 6 of the Crimes Act 1914 that relates

to this Act; or

(c) an offence against section 11.1, 11.4 or 11.5 of the Criminal

Code that relates to this Act.

Note: For provisions relating to proof of offences by bodies corporate, see Part 2.5 of the Criminal Code.

(4) If it is necessary to prove the state of mind of an individual in

relation to particular conduct, it is enough to show:

(a) that the conduct was engaged in by a servant or agent of the

individual within the scope of his or her actual or apparent

authority; and

(b) that the servant or agent had the state of mind.

(5) Any conduct engaged in on behalf of an individual by a servant or

agent of the individual within the scope of his or her actual or

apparent authority is taken to have been engaged in also by the

individual, unless the individual establishes that he or she took

reasonable precautions and exercised due diligence to avoid the

conduct.

(6) If:

(a) an individual is convicted of an offence under this Act; and

(b) the individual would not have been convicted of the offence

if subsections (4) and (5) had not been enacted;

the individual is not liable to be punished by imprisonment for that

offence.

(7) In this section:

engage in conduct includes fail or refuse to engage in conduct.

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state of mind, in relation to a person, includes:

(a) the person’s knowledge, intention, opinion, belief or purpose;

and

(b) the person’s reasons for the intention, opinion, belief or

purpose.

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Collective trade marks Part 15

Section 161

Trade Marks Act 1995 133

Part 15—Collective trade marks

161 Object of Part

This Part:

(a) defines a collective trade mark; and

(b) provides to what extent, and subject to what modifications or

additions, the provisions of this Act relating to trade marks

apply to collective trade marks.

162 What is a collective trade mark?

A collective trade mark is a sign used, or intended to be used, in

relation to goods or services dealt with or provided in the course of

trade by members of an association to distinguish those goods or

services from goods or services so dealt with or provided by

persons who are not members of the association.

163 Application of Act

(1) Subject to this Part, the provisions of this Act relating to trade

marks (other than Part 10—Assignment and Transmission of Trade

Marks) apply to collective trade marks and so apply as if:

(a) a reference to a trade mark included a reference to a

collective trade mark; and

(b) a reference to a person doing something for the registration

of a trade mark included a reference to an association doing

that thing for the registration of the collective trade mark; and

(c) a reference to a trade mark registered by a person included a

reference to a collective trade mark registered by an

association.

(2) For the purposes of this Act:

(a) the use of a collective trade mark by a member of the

association that is the applicant for the registration of the

collective trade mark is taken to be a use of the collective

trade mark by the applicant; and

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134 Trade Marks Act 1995

(b) the use of a registered collective trade mark by a member of

the association that is the registered owner of the collective

trade mark is taken to be a use of the collective trade mark by

the registered owner.

(3) Section 41 (trade mark not distinguishing applicant’s goods or

services) applies in relation to a collective trade mark as if a

reference to the applicant were a reference to the members of the

association that applied for registration of the collective trade

mark.

164 Application for registration

An application for the registration of a collective trade mark must

be made by the association to which the mark belongs.

165 Limitation on rights given by registered collective trade mark

A member of an association in whose name a collective trade mark

is registered does not have the right to prevent another member of

the association from using the collective trade mark in accordance

with the rules of the association (if any).

166 Assignment etc. of collective trade mark

A collective trade mark may not be assigned or transmitted.

167 Infringement of collective trade mark

In an action by an association in whose name a collective trade

mark is registered seeking relief for infringement of the collective

trade mark, the association may take into account, in claiming

damages, any damage or loss of profits sustained or incurred by the

members of the association as a result of the infringement.

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Certification trade marks Part 16

Section 168

Trade Marks Act 1995 135

Part 16—Certification trade marks

168 Object of Part

This Part:

(a) defines a certification trade mark; and

(b) provides to what extent, and subject to what modifications or

additions, the provisions of this Act relating to trade marks

apply to certification trade marks; and

(c) outlines the role of the Commission in the regulation of

certification trade marks.

169 What is a certification trade mark?

A certification trade mark is a sign used, or intended to be used, to

distinguish goods or services:

(a) dealt with or provided in the course of trade; and

(b) certified by a person (owner of the certification trade mark),

or by another person approved by that person, in relation to

quality, accuracy or some other characteristic, including (in

the case of goods) origin, material or mode of manufacture;

from other goods or services dealt with or provided in the course of

trade but not so certified.

Note: The goods or services certified may be those of any person, including the owner of the certification trade mark or any person approved by the owner for the purpose of certifying goods or services.

170 Application of Act

Subject to this Part, the provisions of this Act relating to trade

marks (other than sections 8 and 26, paragraph 27(1)(b),

sections 33, 34 and 41, sections 121 and 127, Part 9—Removal of

trade mark from Register for non-use and Part 17—Defensive

Trade Marks) apply to certification trade marks and so apply as if a

reference to a trade mark included a reference to a certification

trade mark.

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Section 171

136 Trade Marks Act 1995

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.

(2) The rules must specify:

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(a) the requirements (the certification requirements) that goods

and/or services must meet for the certification trade mark to

be applied to them; and

(b) the process for determining whether goods and/or services

meet the certification requirements; and

(c) the attributes that a person must have to become a person (an

approved certifier) approved to assess whether goods and/or

services meet the certification requirements; and

(d) the requirements that a person, who is the owner of the

certification trade mark or an approved user, must meet to

use the certification trade mark in relation to goods and/or

services; and

(e) the other requirements about the use of the certification trade

mark by a person who is the owner of the certification trade

mark or an approved user; and

(f) the procedure for resolving a dispute about whether goods

and/or services meet the certification requirements; and

(g) the procedure for resolving a dispute about any other issue

relating to the certification trade mark.

(3) The rules must also include any other matter the Commission

requires to be included.

(4) The rules may also include any other matter the Commission

permits to be included.

174 Registrar to send documents to Commission

The Registrar must send the prescribed documents relating to the

application to the Commission in accordance with the regulations.

175 Certificate by Commission

(1) The Commission must consider the application and any documents

received under section 174 in accordance with the regulations.

(2) If the Commission is satisfied that:

(a) the attributes a person must have to become an approved

certifier are sufficient to enable the person to assess

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Section 176

138 Trade Marks Act 1995

competently whether goods and/or services meet the

certification requirements; and

(b) the rules referred to in section 173:

(i) would not be to the detriment of the public; and

(ii) are satisfactory having regard to the criteria prescribed

for the purposes of this paragraph;

the Commission must give a certificate to that effect and send a

copy to the Registrar. The Commission must also send a certified

copy of the rules to the Registrar.

Note 1: For applicant see section 6.

Note 2: For approved certifier see paragraph 173(2)(c).

Note 3: For certification requirements see paragraph 173(2)(a).

(3) The Commission may require the applicant to make amendments

or modifications to the rules as the Commission considers

necessary.

(4) If the Commission is not satisfied as set out in subsection (2):

(a) the Commission must notify the applicant and the Registrar,

in writing, of its decision not to give a certificate; and

(b) the Registrar must advertise the matter in the Official Journal

in accordance with the regulations.

(5) An application may be made to the Administrative Appeals

Tribunal for the review of a decision of the Commission refusing

to give a certificate.

176 Acceptance or rejection of application

(1) The Registrar must accept the application if:

(a) the application is made in accordance with this Act; and

(b) there are no grounds for rejecting the application; and

(c) the Commission has given a certificate under

subsection 175(2).

Otherwise the Registrar must reject the application.

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(1A) However, the Registrar must give the applicant an opportunity to

be heard before rejecting the application solely because one or both

of the conditions in paragraphs (1)(a) and (b) are not met.

(2) The Registrar may accept the application subject to conditions or

limitations.

Note: For limitations see section 6.

(3) The Registrar must:

(a) give to the applicant notice in writing of his or her decision;

and

(b) advertise the decision in the Official Journal.

177 Additional ground for rejecting an application or opposing

registration—certification trade mark not distinguishing

certified goods or services

(1) In addition to any other ground on which:

(a) an application for the registration of a certification trade mark

may be rejected; or

(b) the registration of a certification trade mark may be opposed;

the application must be rejected or the registration may be opposed

if the trade mark is not capable of distinguishing goods or services

certified by the applicant or an approved certifier from goods or

services not so certified.

Note 1: For applicant see section 6.

Note 2: For approved certifier see paragraph 173(2)(c).

Note 3: Division 2 of Part 4 sets out the main grounds for rejecting an application, but section 41 does not apply to certification trade marks (see section 170).

(2) In deciding whether or not the certification trade mark is capable of

so distinguishing goods or services certified by the applicant or an

approved certifier, the Registrar must take into account:

(a) the extent to which the certification trade mark is inherently

adapted so to distinguish those goods or services; or

(b) the extent to which, because of its use or of any other

circumstances, the certification trade mark has become

adapted so to distinguish those goods or services.

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Section 178

140 Trade Marks Act 1995

178 Variation of rules

(1) Subject to subsection (2), the rules governing the use of a

registered certification trade mark may be varied in accordance

with the regulations.

(2) The rules may not be varied without the approval of the

Commission.

(3) Before deciding to approve a variation, the Commission must be

satisfied that the rules as varied:

(a) would not be to the detriment of the public; and

(b) are satisfactory having regard to the criteria prescribed for the

purposes of paragraph 175(2)(b).

(4) The Commission must notify, in accordance with the regulations, a

decision to approve a variation or not to approve a variation.

(5) An application may be made to the Administrative Appeals

Tribunal for the review of a decision of the Commission to approve

or not to approve a variation of the rules.

179 Registrar must publish rules

The Registrar must publish, in accordance with the regulations,

rules governing the use of a certification trade mark.

180 Assignment of registered certification trade mark

(1) A registered certification trade mark may be assigned only with the

consent of the Commission.

(2) An application to the Commission for its consent to the assignment

of a registered certification trade mark must be in accordance with

the regulations.

(3) In deciding whether or not to give its consent, the Commission

must have regard to the matters provided for under the regulations.

(4) An application may be made to the Administrative Appeals

Tribunal for the review of a decision of the Commission refusing

to give its consent.

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Section 180A

Trade Marks Act 1995 141

180A Assignment of unregistered certification trade mark

(1) If:

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

certification trade mark; and

(b) a copy of the application has been sent to the Commission,

but the certification trade mark has not been registered;

the certification trade mark may be assigned only with the consent

of the Commission.

(2) An application to the Commission for its consent to the assignment

of a certification trade mark must be in accordance with the

regulations.

(3) In deciding whether or not to give its consent, the Commission

must have regard to the matters provided for under the regulations.

(4) An application may be made to the Administrative Appeals

Tribunal for the review of a decision of the Commission refusing

to give its consent.

181 Rectification of the Register by order of court

(2) In addition to its powers under Division 2 of Part 8 in relation to

certification trade marks, a prescribed court may, on the

application of a person aggrieved, order that the Register be

rectified by cancelling the registration of a certification trade mark,

or removing or amending an entry in the Register relating to the

certification trade mark, on the ground that:

(a) the registered owner or an approved certifier is no longer

competent to certify any of the goods and/or services in

respect of which the mark is registered; or

(b) the rules governing the use of the certification trade mark are

detrimental to the public; or

(c) the registered owner or an approved user has failed to comply

with a provision of the rules governing the use of the

certification trade mark.

Note 1: For prescribed court see section 190.

Note 2: For approved certifier see paragraph 173(2)(c).

ComLaw Authoritative Act C2014C00110

Part 16 Certification trade marks

Section 182

142 Trade Marks Act 1995

Note 3: For approved user see section 172.

(3) Notice of an application to the prescribed court must be given to

the Registrar and to the Commission.

(4) Except for cases in which the court directs the Registrar to appear,

the Registrar may appear before the court and be heard at his or her

discretion.

(5) Except for cases in which the court directs the Commission to

appear, a delegate of the Commission may appear before the court

and be heard at his or her discretion.

(6) A copy of any order made by the court under this section must be

given to the Registrar and the Registrar must comply with the

order.

182 Variation of rules by order of court

(1) A prescribed court may, on the application of a person aggrieved,

make such orders as it thinks fit for varying the rules governing the

use of a certification trade mark.

Note: For prescribed court see section 190.

(2) Notice of an application to the prescribed court must be given to

the Commission.

(3) Except for cases in which the court directs the Commission to

appear, a delegate of the Commission may appear before the court

and be heard at his or her discretion.

(4) A copy of any order made by the court under this section must be

given to the Commission.

(5) If the court orders that the rules are to be varied, the registered

owner of the certification trade mark must give to the Registrar a

copy of the rules as varied that is certified by the Commission to be

a true copy.

ComLaw Authoritative Act C2014C00110

Certification trade marks Part 16

Section 183

Trade Marks Act 1995 143

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.

ComLaw Authoritative Act C2014C00110

Part 17 Defensive trade marks

Section 184

144 Trade Marks Act 1995

Part 17—Defensive trade marks

184 Object of Part

This Part:

(a) provides for the registration of certain trade marks as

defensive trade marks; and

(b) provides to what extent, and subject to what modifications or

additions, the provisions of this Act relating to trade marks

apply to defensive trade marks.

185 Defensive trade marks

(1) If, because of the extent to which a registered trade mark has been

used in relation to all or any of the goods or services in respect of

which it is registered, it is likely that its use in relation to other

goods or services will be taken to indicate that there is a connection

between those other goods or services and the registered owner of

the trade mark, the trade mark may, on the application of the

registered owner, be registered as a defensive trade mark in

respect of any or all of those other goods or services.

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

(2) A trade mark may be registered as a defensive trade mark in

respect of particular goods or services even if the registered owner

does not use or intend to use the trade mark in relation to those

goods or services.

(3) A trade mark may be registered as a defensive trade mark in

respect of particular goods or services even if it is already

registered otherwise than as a defensive trade mark in the name of

the applicant in respect of those goods or services.

(4) A trade mark that is registered as a defensive trade mark in respect

of particular goods or services may be subsequently registered

otherwise than as a defensive trade mark in the name of the

registered owner in respect of the same goods or services.

ComLaw Authoritative Act C2014C00110

Defensive trade marks Part 17

Section 186

Trade Marks Act 1995 145

186 Application of Act

Subject to this Part, the provisions of this Act (other than

subsection 20(1), paragraph 27(1)(b), sections 41 and 59,

sections 121 and 127, Part 9—Removal of trade mark from

Register for non-use and Part 16—Certification Trade Marks)

apply to defensive trade marks and so apply as if a reference to a

trade mark included a reference to a defensive trade mark.

187 Additional grounds for rejecting application for registration or

opposing registration

In addition to any other ground on which:

(a) an application for the registration of a trade mark as a

defensive trade mark may be rejected; or

(b) the registration of a trade mark as a defensive trade mark may

be opposed;

the application must be rejected or the registration may be

opposed:

(c) if the trade mark is not registered as a trade mark in the name

of the applicant; or

(d) in the case of a registered trade mark—if it is not likely that

the use of the trade mark in relation to the goods or services

in respect of which its registration as a defensive trade mark

is sought will be taken to indicate that there is a connection

between those goods or services and the registered owner.

Note: Division 2 of Part 4 sets out the main grounds for rejecting an application but section 41 does not apply to defensive trade marks (see section 186). Division 2 of Part 5 sets out the main grounds for opposing registration.

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.

ComLaw Authoritative Act C2014C00110

Part 17A Protected international trade marks under the Madrid Protocol

Section 189A

146 Trade Marks Act 1995

Part 17A—Protected international trade marks

under the Madrid Protocol

189A Regulations implementing the Madrid Protocol

(1) The regulations may provide for such matters as are necessary to

enable the performance of the obligations of Australia, or to obtain

for Australia any advantage or benefit, under the Madrid Protocol.

(2) In particular (but without limiting subsection (1)), the regulations

may deal with the following matters:

(a) the procedure for dealing with applications for international

registration of trade marks that are to be filed with the

International Bureau through the intermediary of the Trade

Marks Office;

(b) the procedure for dealing with requests to extend to Australia

the protection resulting from international registration of

trade marks;

(c) the protection given to protected international trade marks in

Australia;

(d) the circumstances in which such protection ceases and the

procedures to be followed in cases of cessation;

(e) the cancellation of an international registration at Australia’s

request, as contemplated by Article 6 of the Madrid Protocol;

(f) the effect of cancelling an international registration.

(3) Regulations made for the purposes of this section:

(a) may be inconsistent with this Act; and

(b) prevail over this Act (including any other regulations or other

instruments made under this Act), to the extent of any

inconsistency.

(4) In this section:

International Bureau means the International Bureau of the World

Intellectual Property Organization.

ComLaw Authoritative Act C2014C00110

Protected international trade marks under the Madrid Protocol Part 17A

Section 189A

Trade Marks Act 1995 147

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.

ComLaw Authoritative Act C2014C00110

Part 18 Jurisdiction and powers of courts

Section 190

148 Trade Marks Act 1995

Part 18—Jurisdiction and powers of courts

190 Prescribed courts

Each of the following courts is a prescribed court for the purposes

of this Act:

(a) the Federal Court;

(aa) the Federal Circuit Court;

(b) the Supreme Court of a State;

(c) the Supreme Court of the Australian Capital Territory;

(d) the Supreme Court of the Northern Territory;

(e) the Supreme Court of Norfolk Island.

191 Jurisdiction of the Federal Court

(1) The Federal Court has jurisdiction with respect to matters arising

under this Act.

(2) The jurisdiction of the Federal Court to hear and determine appeals

against decisions, directions or orders of the Registrar is exclusive

of the jurisdiction of any other court except the jurisdiction of:

(a) the Federal Circuit Court under subsection 191A(2) of this

Act; and

(b) the High Court under section 75 of the Constitution.

(3) A prosecution for an offence against this Act may not be started in

the Federal Court.

191A Jurisdiction of the Federal Circuit Court

(1) The Federal Circuit Court has jurisdiction with respect to matters

arising under this Act.

(2) The jurisdiction of the Federal Circuit Court to hear and determine

appeals against decisions, directions or orders of the Registrar is

exclusive of the jurisdiction of any other court except the

jurisdiction of:

ComLaw Authoritative Act C2014C00110

Jurisdiction and powers of courts Part 18

Section 192

Trade Marks Act 1995 149

(a) the Federal Court under subsection 191(2) of this Act; and

(b) the High Court under section 75 of the Constitution.

(3) A prosecution for an offence against this Act may not be started in

the Federal Circuit Court.

192 Jurisdiction of other prescribed courts

(1) Each prescribed court (other than the Federal Court and the Federal

Circuit Court) has jurisdiction with respect to matters in respect of

which an action or proceeding may, under this Act, be started in a

prescribed court.

Note: For prescribed court see section 190.

(2) The jurisdiction conferred by subsection (1) on the Supreme Court

of a Territory is conferred to the extent that the Constitution

permits in the case of:

(a) an action for the infringement of a trade mark; or

(b) an action under section 129; or

(c) a matter arising under this Act that may be heard and

determined in the course of such an action.

(3) In any other case, the jurisdiction is conferred only in relation to an

action or proceeding brought by a natural person who is resident in

the Territory, or a corporation that has its principal place of

business in the Territory, when the action or proceeding is started.

193 Exercise of jurisdiction

The jurisdiction of a prescribed court under section 191, 191A or

192 is to be exercised by a single judge.

Note: For prescribed court see section 190.

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.

ComLaw Authoritative Act C2014C00110

Part 18 Jurisdiction and powers of courts

Section 195

150 Trade Marks Act 1995

Note: For prescribed court see section 190.

(2) When a court transfers an action or proceeding to another court:

(a) all relevant documents of record filed in the transferring court

must be sent to the other court by the Registrar or other

appropriate officer of the transferring court; and

(b) the action or proceeding must continue in the other court as

if:

(i) it had been started there; and

(ii) all steps taken in the transferring court had been taken in

the other court.

(3) This section does not apply in relation to a transfer of proceedings

between the Federal Court and the Federal Circuit Court.

Note: For transfers of proceedings from the Federal Circuit Court to the Federal Court, see section 39 of the Federal Circuit Court of Australia Act 1999. For transfers of proceedings from the Federal Court to the Federal Circuit Court, see section 32AB of the Federal Court of Australia Act 1976.

195 Appeals

(1) An appeal lies to the Federal Court against a judgment or order of:

(a) another prescribed court exercising jurisdiction under this

Act; or

(b) any other court in an action under Part 12.

Note: For prescribed court see section 190.

(2) Except with the leave of the Federal Court, an appeal does not lie

to the Full Court of the Federal Court against a judgment or order

of a single judge of the Federal Court or the Federal Circuit Court

in the exercise of its jurisdiction to hear and determine appeals

from decisions or directions of the Registrar.

(3) With the special leave of the High Court, an appeal lies to the High

Court against a judgment or order referred to in subsection (1).

(4) Except as otherwise provided by this section, an appeal does not lie

against a judgment or order referred to in subsection (1).

ComLaw Authoritative Act C2014C00110

Jurisdiction and powers of courts Part 18

Section 196

Trade Marks Act 1995 151

196 Registrar may appear in appeals

The Registrar may appear and be heard at the hearing of an appeal

to the Federal Court or the Federal Circuit Court against a decision

or direction of the Registrar.

197 Powers of Federal Court and Federal Circuit Court on hearing

an appeal

On hearing an appeal against a decision or direction of the

Registrar, the Federal Court or the Federal Circuit Court may do

any one or more of the following:

(a) admit evidence orally, or on affidavit or otherwise;

(b) permit the examination and cross-examination of witnesses,

including witnesses who gave evidence before the Registrar;

(c) order an issue of fact to be tried as it directs;

(d) affirm, reverse or vary the Registrar’s decision or direction;

(e) give any judgment, or make any order, that, in all the

circumstances, it thinks fit;

(f) order a party to pay costs to another party.

198 Practice and procedure of prescribed courts

The regulations may make provision about the practice and

procedure of prescribed courts in an action or proceeding under

this Act, including provision:

(a) prescribing the time for starting the action or proceeding or

for doing any other act or thing; or

(b) for an extension of that time.

Note: For prescribed court see section 190.

ComLaw Authoritative Act C2014C00110

Part 19 Administration

Section 199

152 Trade Marks Act 1995

Part 19—Administration

199 Trade Marks Office and sub-offices

(1) For the purposes of this Act, there is to be an office called the

Trade Marks Office.

(2) The Registrar may establish one or more sub-offices of the Trade

Marks Office as the Registrar considers appropriate.

(3) The Registrar may abolish any such sub-offices.

200 Seal of Trade Marks Office

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

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

(2) The Registrar has the powers and functions that are given to him or

her under this Act or any other Act (including regulations under

that Act).

202 Registrar’s powers

The Registrar may, for the purposes of this Act:

(a) summon witnesses; and

(b) receive written or oral evidence on oath or affirmation; and

(c) require the production of documents or articles; and

(d) award costs against a party to proceedings brought before the

Registrar; and

(e) notify, as he or she considers fit, any person of any matter

that, in his or her opinion, should be brought to the person’s

notice.

Note: For the awarding of costs see section 221.

ComLaw Authoritative Act C2014C00110

Administration Part 19

Section 203

Trade Marks Act 1995 153

203 Exercise of power by Registrar

The Registrar may not exercise a power under this Act in any way

that adversely affects a person applying for the exercise of that

power without first giving that person a reasonable opportunity of

being heard.

204 Registrar to act as soon as practicable

If:

(a) the Registrar is required under this Act to do any act or thing;

and

(b) no time or period is provided within which the act or thing is

to be done;

the Registrar is to do the act or thing as soon as practicable.

205 Deputy Registrar of Trade Marks

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

(2) Subject to any direction by the Registrar, a Deputy Registrar has all

the powers and functions of the Registrar, except the powers of

delegation under section 206.

(3) A power or function of the Registrar, when exercised by a Deputy

Registrar, is taken to have been exercised by the Registrar.

(4) The exercise of a power or function of the Registrar by a Deputy

Registrar does not prevent the exercise of the power or function by

the Registrar.

(5) If the exercise of a power or function by the Registrar is dependent

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

a matter, that power or function may be exercised by a Deputy

Registrar on his or her opinion, belief or state of mind in relation to

that matter.

(6) If the operation of a provision of this Act or another Act is

dependent on the opinion, belief or state of mind of the Registrar in

relation to a matter, that provision may operate on the opinion,

ComLaw Authoritative Act C2014C00110

Part 19 Administration

Section 206

154 Trade Marks Act 1995

belief or state of mind of a Deputy Registrar in relation to that

matter.

206 Delegation of Registrar’s powers and functions

(1) The Registrar may by signed instrument delegate all or any of his

or her powers or functions to a prescribed employee, or employees

in a prescribed class.

Note 1: For employee see section 6.

Note 2: See section 34AB of the Acts Interpretation Act 1901 about the effect of this subsection.

(2) A delegate must, if so required by the instrument of delegation,

exercise or perform a delegated power or function under the

direction or supervision of:

(a) the Registrar; or

(b) a person specified in the instrument, being a person referred

to in subsection (1).

ComLaw Authoritative Act C2014C00110

The Register and official documents Part 20

Section 207

Trade Marks Act 1995 155

Part 20—The Register and official documents

207 The Register

(1) A Register of Trade Marks is to be kept at the Trade Marks Office.

(2) The Registrar must enter in the Register in accordance with this

Act:

(a) all particulars of registered trade marks, certification trade

marks and defensive trade marks, and all other matters, that

were on the old register when the repealed Act was repealed,

with the exception of particulars and other matters relating to

registered users of trade marks; and

Note 1: For old register see section 6.

Note 2: See subsection (3) for entries relating to associated trade marks.

(b) particulars of trade marks, certification trade marks,

collective trade marks and defensive trade marks, and all

other matters, that are required to be registered under this

Act; and

(c) other prescribed matters.

(3) If 2 or more trade marks were entered as associated trade marks in

the old register, no equivalent entry designating them as associated

trade marks is to be made in the Register.

Note: For old register see section 6.

(4) All particulars entered in the Register under paragraph (2)(a) are

taken to have been so entered on 1 January 1996.

208 Register may be kept on computer

(1) The Register may be kept in whole or in part by using a computer.

(2) Any record of a particular or other matter made by using a

computer for the purpose of keeping the Register is taken to be an

entry in the Register.

ComLaw Authoritative Act C2014C00110

Part 20 The Register and official documents

Section 209

156 Trade Marks Act 1995

209 Inspection of Register

(1) The Register must be available at the Trade Marks Office for

inspection by any person during the hours when the Office is open

for business.

(2) If the Register, or any part of the Register, is kept by using a

computer, subsection (1) is satisfied if a person who wants to

inspect the Register or that part of the Register is given access to a

computer terminal from which he or she can read on a screen, or

obtain a printed copy of, the particulars or other matters recorded

in the Register or that part of the Register.

210 Evidence—the Register

(1) The Register is prima facie evidence of any particular or other

matter entered in it.

Note: See section 116 about records of claims to interests and rights made under Part 11.

(2) A copy of, or an extract from, the Register that is certified by the

Registrar to be a true record or extract is admissible in any

proceedings as if it were the original.

(3) If the Register or a part of the Register is kept by using a computer,

a document certified by the Registrar as reproducing in writing a

computer record of all or any of the particulars comprised in the

Register or in that part of the Register is admissible in any

proceedings as evidence of those particulars.

(4) This section does not apply in relation to any particular or other

matter entered in the Register in relation to a PPSA security

interest.

Note 1: For PPSA security interest see section 6.

Note 2: Certain particulars relating to registrations in respect of PPSA security interests under the Personal Property Securities Act 2009 are admissible in evidence: see section 174 of that Act.

211 Evidence—certified copies of documents

(1) A certificate signed by the Registrar and stating that:

ComLaw Authoritative Act C2014C00110

The Register and official documents Part 20

Section 211

Trade Marks Act 1995 157

(a) anything required or permitted to be done by the Act or the

repealed Act was done or not done on, or had been done or

not been done by, a specified date; or

(b) anything prohibited by the Act or the repealed Act was done

or not done on, or had been done or not been done by, a

specified date; or

(c) a document was available for public inspection at the Trade

Marks Office on a specified date or during a specified period;

is prima facie evidence of the matters so stated.

(2) A copy of, or an extract from, a document held in the Trade Marks

Office that is certified by the Registrar to be a true copy or extract

is admissible in any proceedings as if it were the original.

ComLaw Authoritative Act C2014C00110

Part 21 Miscellaneous

Division 1 Applications and other documents

Section 212

158 Trade Marks Act 1995

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

A document may be filed with the Trade Marks Office by:

(a) delivering the document to the Trade Marks Office or any

sub-office of the Trade Marks Office (if any) either

personally or by post; or

(b) any other prescribed means.

214 Withdrawal of application etc.

(1) A person who has filed an application, notice or request may

withdraw it, in accordance with the regulations, at any time while it

is still being considered by the Registrar.

(2) If:

(a) the right or interest on which the person relied to file the

application, notice or request has become vested in another

person; and

(b) the other person notifies the Registrar in writing that the right

or interest is vested in him or her;

the other person may withdraw the application, notice or request as

provided in subsection (1).

Note: For file see section 6.

ComLaw Authoritative Act C2014C00110

Miscellaneous Part 21

Applications and other documents Division 1

Section 215

Trade Marks Act 1995 159

215 Address for service

(1) The address for service of a person who has filed an application,

notice or request is:

(a) the address for service stated in the application, notice or

request; or

(b) if the person subsequently notifies in writing another address

to the Registrar—that other address.

Note: For file see section 6.

(2) When:

(a) a trade mark is registered; or

(b) a claim to an interest in, or to a right in respect of, a

registered trade mark that a person has is recorded in the

Register;

the Registrar must enter in the Register as the address for service of

the registered owner or of the person:

(c) if paragraph (d) does not apply—the address given, or last

given, by the registered owner or the person to the Registrar

under subsection (1); or

(d) if, before the Registrar registers the trade mark or records the

claim to the interest or right, the registered owner or person

gives in writing to the Registrar another address as his or her

address for service—that other address.

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

(3) The registered owner of a registered trade mark, or any person

whose claim to an interest in, or to a right in respect of, a trade

mark is recorded in the Register, must notify the Registrar in

writing of any change in his or her address for service and the

Registrar must amend the Register accordingly.

(4) The address for service of:

(a) the registered owner of a registered trade mark; or

(b) a person whose claim to an interest in, or to a right in respect

of, a trade mark is recorded in the Register;

is the address set out from time to time in the Register as being the

address for service of the registered owner or of the person.

ComLaw Authoritative Act C2014C00110

Part 21 Miscellaneous

Division 1 Applications and other documents

Section 216

160 Trade Marks Act 1995

(5) An address for service must be an address in Australia.

(6) If this Act provides that a document is to be served on, or given or

sent to, a person:

(a) the document may be left at, or sent by post to, the address

for service of the person; or

(b) if the person does not have an address for service—the

document may be served on an agent of the person in

Australia or may be sent by post to any address of the person

in Australia that is known to the Registrar.

(7) Subsection (6) does not affect the operation of section 28A of the

Acts Interpretation Act 1901.

Note: Subsection 28A(1) of the Acts Interpretation Act 1901 provides that a document may be served (this term includes given, or sent, to):

―(a) on a natural person:

(i) by delivering it to the person personally; or

(ii) by leaving it at, or by sending it by pre-paid post to, the address of the place of residence or business of the person last known to the person serving the document; or

(b) on a body corporate—by leaving it at, or sending it by pre-paid post to, the head office, a registered office or a principal office of the body corporate.‖.

216 Change of name

(1) If there is a change in the name of a person who has filed an

application, notice or request, the person must notify the Registrar

in writing of the change.

Note: For file see section 6.

(2) If there is a change in the name of:

(a) the registered owner of a registered trade mark; or

(b) a person whose claim to an interest in, or to a right in respect

of, a trade mark is recorded in the Register;

the registered owner or the person must notify the Registrar in

writing of the change and the Registrar must amend the Register

accordingly.

ComLaw Authoritative Act C2014C00110

Miscellaneous Part 21

Applications and other documents Division 1

Section 217

Trade Marks Act 1995 161

217 Death of applicant etc.

(1) If an applicant for the registration of a trade mark dies before

registration is granted on the application, his or her legal

representative may proceed with the application.

Note: For applicant see section 6.

(2) If, at any time after a trade mark is registered, the Registrar is

satisfied that the person in whose name the trade mark is registered

had died (or, in the case of a body corporate, had ceased to exist)

before registration was granted, the Registrar may amend the

Register by substituting for the name entered in the Register the

name of the person who should be the registered owner of the trade

mark.

217A Prescribed documents relating to trade marks to be made

available for public inspection

(1) The Registrar must make available for public inspection prescribed

documents that relate to a trade mark while they are held in the

Trade Marks Office at or after the time particulars of the

application for registration of the trade mark are published under

section 30.

(2) A document may be prescribed for the purposes of subsection (1)

wholly or partly by reference to the fact that it does not contain

information covered by a requirement under section 226A. This

does not limit the ways in which documents may be prescribed for

those purposes.

ComLaw Authoritative Act C2014C00110

Part 21 Miscellaneous

Division 2 Proceedings before the Registrar or a court

Section 218

162 Trade Marks Act 1995

Division 2—Proceedings before the Registrar or a court

218 Description of registered trade mark

In an indictment, information, pleading or proceeding relating to a

registered trade mark, the trade mark may be identified by its

registration number. It is not necessary to reproduce or describe the

trade mark.

219 Evidence of trade usage

In an action or proceeding relating to a trade mark, evidence is

admissible of the usage of the trade concerned and of any relevant

trade mark, trade name or get-up legitimately used by other

persons.

220 Death of party to proceeding before Registrar

If a person who is party to a proceeding pending before the

Registrar dies, the Registrar may:

(a) on being so asked, substitute in the proceeding another

person in the place of the deceased party if the Registrar is

satisfied that the interest of the deceased party has been

transmitted to that other person; or

(b) allow the proceeding to continue without any substitution if

the Registrar is of the opinion that the interest of the

deceased party is sufficiently represented by the surviving

parties.

221 Costs awarded by Registrar

(1) The Registrar may award costs in respect of the matters, and in the

amounts, provided for in the regulations against any party to

proceedings brought before him or her.

(2) A party desiring to obtain costs must apply to the Registrar in

accordance with the regulations.

ComLaw Authoritative Act C2014C00110

Miscellaneous Part 21

Proceedings before the Registrar or a court Division 2

Section 222

Trade Marks Act 1995 163

(3) If a party is ordered to pay the costs of another party, the costs may

be recovered in a court of competent jurisdiction as a debt due by

the first party to the other party.

222 Security for costs

If a person who neither resides nor carries on business in Australia:

(a) gives notice of opposition under section 52 or

subsection 224(6); or

(b) applies to the Registrar under Part 9 for a trade mark to be

removed from the Register;

the Registrar may require the person to give security for the costs

of the proceeding and may, if security is not given, dismiss the

proceeding.

ComLaw Authoritative Act C2014C00110

Part 21 Miscellaneous

Division 3 General

Section 223

164 Trade Marks Act 1995

Division 3—General

223 Fees

(1) The regulations may prescribe the fees to be paid for the purposes

of this Act and may prescribe different fees in respect of the doing

of an act according to the time when the act is done.

(2) Prescribed fees are payable in accordance with the regulations.

(3) The regulations may provide for the consequences (for the

purposes of this Act) of failing to pay a fee in accordance with the

regulations.

(4) In particular, the regulations may provide that, for the purposes of

this Act:

(a) an act is not to be done, or is taken not to have been done, if

the fee for doing the act is not paid in accordance with the

regulations; or

(b) a document is not filed, or is taken not to have been filed, if

the fee for filing the document is not paid in accordance with

the regulations; or

(c) an application for registration of a trade mark lapses, or is

taken to have lapsed, if the fee for filing the application is not

paid in accordance with the regulations.

(5) Subsection (4) does not limit subsection (3).

223A Doing act when Trade Marks Office reopens after end of

period otherwise provided for doing act

(1) If the last day of a period provided by this Act (except this section)

for doing an act is a day when the Trade Marks Office, or a

sub-office of the Trade Marks Office (if any), is not open for

business, the act may be done in prescribed circumstances on the

next day when the office or sub-office is open for business.

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General Division 3

Section 224

Trade Marks Act 1995 165

(2) For the purposes of this section, the Trade Marks Office, or a

sub-office of the Trade Marks Office, is taken not to be open for

business on a day:

(a) declared by regulations to be a day on which the office or

sub-office is not open for business; or

(b) declared, by a prescribed person in writing published in the

prescribed way, to be a day on which the office or sub-office

is not open for business.

Declarations

(3) A declaration mentioned in paragraph (2)(a) or (b) may identify the

day by reference to its being declared a public holiday by or under

a law of a State or Territory. This does not limit the way the

declaration may identify the day.

(4) A declaration mentioned in paragraph (2)(b):

(a) may be made before, on or after the day; and

(b) is not a legislative instrument.

Relationship with other law

(5) This section has effect despite the rest of this Act.

(6) Subsection 36(2) of the Acts Interpretation Act 1901 does not

apply in relation to the act mentioned in subsection (1) of this

section.

Exception for prescribed act

(7) This section does not apply to a prescribed act.

Note: Subsection 36(2) of the Acts Interpretation Act 1901 is relevant to a prescribed act.

224 Extension of time

(1) The Registrar must extend the time for doing a relevant act that is

required by this Act to be done within a certain time if the act is

not, or cannot be, done within that time because of an error or

omission by:

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Section 224

166 Trade Marks Act 1995

(a) the Registrar or a Deputy Registrar; or

(b) an employee; or

(c) a person providing, or proposing to provide, services for the

benefit of the Trade Marks Office.

(2) If, because of:

(a) an error or omission by the person concerned or by his or her

agent; or

(b) circumstances beyond the control of the person concerned;

a relevant act that is required by this Act to be done within a

certain time is not, or cannot be, done within that time, the

Registrar may, on application made by the person concerned in

accordance with the regulations, extend the time for doing the act.

(3) If:

(a) a relevant act that a person is required by this Act to do

within a certain time is not, or cannot be, done within that

time; and

(b) on application made by that person in accordance with the

regulations, the Registrar is of the opinion that special

circumstances exist that justify an extension of that time;

the Registrar may extend the time for doing the act.

(3A) If the Registrar has revoked the registration of a trade mark, he or

she may extend the time for doing a relevant act that is required by

this Act to be done within a certain time in connection with the

application for registration of the trade mark.

(4) The time allowed for doing a relevant act may be extended,

whether before or after that time has expired.

(5) If an application is made under subsection (2) or (3) for an

extension of time for more than 3 months, the Registrar must

advertise the application in the Official Journal.

Note: For month see section 6.

(6) A person may, as prescribed, oppose the granting of the

application.

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General Division 3

Section 225

Trade Marks Act 1995 167

(7) An application may be made to the Administrative Appeals

Tribunal for the review of a decision of the Registrar not to extend

the time for the doing of a relevant act.

(8) In this section:

relevant act means:

(a) any act (other than a prescribed act) done in relation to a

trade mark; or

(b) the filing of any document (other than a prescribed

document); or

(c) any proceedings (other than court proceedings).

225 Convention countries

(2) If:

(a) the regulations declare that, under the terms of a treaty

subsisting between 2 or more Convention countries, an

application made for the registration of a trade mark in one of

those countries is equivalent to an application made in

another of those countries; and

(b) an application for the registration of a trade mark is made in

one of those Convention countries;

then, for the purposes of this Act, an application for the registration

of the trade mark is taken to have also been made in the other

Convention country or in each of the other Convention countries

(as the case may be).

(3) If:

(a) the regulations declare that, under the law of a Convention

country, an application for the registration of a trade mark

made in another country is equivalent to an application made

in the Convention country; and

(b) an application for the registration of a trade mark is made in

that other country;

then, for the purposes of this Act, an application for the registration

of the trade mark is taken to have also been made in the

Convention country.

ComLaw Authoritative Act C2014C00110

Part 21 Miscellaneous

Division 3 General

Section 226

168 Trade Marks Act 1995

226 Publication of Official Journal etc.

(1) The Registrar must issue (electronically or otherwise) at regular

intervals, as determined by the Registrar, an Official Journal of

Trade Marks containing:

(a) the matters that are required under this Act to be advertised

in the Official Journal; and

(b) any other matter that the Registrar thinks fit.

(3) The Registrar may prepare, publish (electronically or otherwise)

and sell documents relating to trade marks as the Registrar thinks

fit.

226A Requirements for confidential treatment of information held

in the Trade Marks Office

(1) In accordance with the regulations, the Registrar may:

(a) require that specified information in a document that has

been filed, or is to be filed, in relation to a trade mark be held

in the Trade Marks Office confidentially; and

(b) make such a requirement subject to specified conditions

and/or limitations; and

(c) vary or revoke such a requirement, condition or limitation.

(2) The regulations may provide for procedures to be followed in

connection with the making, variation or revocation of a

requirement under this section or of conditions or limitations on

such a requirement.

(3) If a requirement is made in writing under this section, the

requirement is not a legislative instrument.

226B Certain proceedings do not lie

No criminal or civil action or proceeding lies against the Registrar,

a Deputy Registrar or an employee for publishing, or otherwise

making available, reasonably and in good faith, information

required or permitted by this Act to be published or otherwise

made available.

Note: For employee see section 6.

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Miscellaneous Part 21

General Division 3

Section 227

Trade Marks Act 1995 169

227 Notice regarding review of decision by Administrative Appeals

Tribunal

(1) If, under a provision of this Act, an application may be made to the

Administrative Appeals Tribunal for the review of a decision of a

person:

(a) the person must give a written notice of the decision to any

person affected by it; and

(b) the notice must include a statement to the effect that, subject

to the Administrative Appeals Tribunal Act 1975, application

may be made to the Administrative Appeals Tribunal for the

review of the decision to which the notice relates by or on

behalf of the person or persons whose interests are affected

by the decision.

(2) Failure to comply with subsection (1) in relation to a decision does

not affect the validity of the decision.

(3) In this section:

decision has the same meaning as in the Administrative Appeals

Tribunal Act 1975.

228 Use of trade mark for export trade

(1) If:

(a) a trade mark is applied in Australia:

(i) to, or in relation to goods that are to be exported from

Australia (export goods); or

(ii) in relation to services that are to be exported from

Australia (export services); or

(b) any other act is done in Australia to export goods or export

services which, if done in relation to goods or services to be

dealt with or provided in the course of trade in Australia,

would constitute a use of the trade mark in Australia;

the application of the trade mark or the other act is taken, for the

purposes of this Act, to constitute use of the trade mark in relation

to the export goods or export services.

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Part 21 Miscellaneous

Division 3 General

Section 228A

170 Trade Marks Act 1995

Note: For applied to or in relation to goods and applied in relation to services see section 9.

(2) Subsection (1) applies to an act done before 1 January 1996 as it

applies to an act done on or after that day, but it does not affect:

(a) a decision of a court made before that day; or

(b) the determination of an appeal from such a decision.

228A Registration of trade marks attorneys

(1) A Register of Trade Marks Attorneys is to be kept by the

Designated Manager.

Note: For Designated Manager see section 6.

(2) The Register of Trade Marks Attorneys may be kept wholly or

partly by use of a computer.

(3) If the Register of Trade Marks Attorneys is kept wholly or partly

by use of a computer, references in this Act to an entry in the

Register of Trade Marks Attorneys are to be read as including

references to a record of particulars kept by use of the computer

and comprising the Register of Trade Marks Attorneys or part of

the Register of Trade Marks Attorneys.

Registration of individuals

(4) The Designated Manager must register as a trade marks attorney an

individual who:

(a) holds such qualifications as are specified in, or ascertained in

accordance with, the regulations; and

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

(c) has not been convicted of a prescribed offence during the

previous 5 years; and

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

offence; and

(e) meets any other requirements prescribed by the regulations.

The registration is to consist of entering the individual’s name in

the Register of Trade Marks Attorneys.

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General Division 3

Section 228A

Trade Marks Act 1995 171

(5) A qualification specified in, or ascertained in accordance with,

regulations made for the purposes of paragraph (4)(a) may consist

of passing an examination conducted by the Professional Standards

Board. This subsection does not limit paragraph (4)(a).

Note: For Professional Standards Board see section 6.

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

Registration of companies

(6A) The Designated Manager must register as a trade marks attorney a

company that:

(a) has at least one trade marks attorney director; and

(b) has given the Designated Manager written notice in the

approved form of its intention to act as a trade marks

attorney; and

(c) meets the requirements (if any) prescribed by the regulations.

The registration is to consist of entering the company’s name in the

Register of Trade Marks Attorneys.

Note: For company and trade marks attorney director see section 6.

(6B) A company registered as a trade marks attorney is an incorporated

trade marks attorney.

(6C) A trade marks attorney director of a company is an individual

who is both:

(a) a registered trade marks attorney; and

(b) a validly appointed director of the company.

(7) A person may apply to the Administrative Appeals Tribunal for

review of a decision of the Designated Manager not to register the

person as a trade marks attorney.

(8) A reference in this section to conviction of an offence includes a

reference to the making of an order under section 19B of the

Crimes Act 1914, or a corresponding provision of a law of a State

or a Territory, in relation to the offence.

ComLaw Authoritative Act C2014C00110

Part 21 Miscellaneous

Division 3 General

Section 228B

172 Trade Marks Act 1995

228B Deregistration of trade marks attorneys

The name of the person registered as a trade marks attorney may be

removed from the Register of Trade Marks Attorneys in the

prescribed manner and on the prescribed grounds.

229 Privileges of trade marks attorney and patent attorney

(1) A communication made for the dominant purpose of a registered

trade marks attorney providing intellectual property advice to a

client is privileged in the same way, and to the same extent, as a

communication made for the dominant purpose of a lawyer

providing legal advice to a client.

(1A) A record or document made for the dominant purpose of a

registered trade marks attorney providing intellectual property

advice to a client is privileged in the same way, and to the same

extent, as a record or document made for the dominant purpose of

a lawyer providing legal advice to a client.

(1B) A reference in subsection (1) or (1A) to a registered trade marks

attorney includes a reference to an individual authorised to do trade

marks work under a law of another country or region, to the extent

to which the individual is authorised to provide intellectual

property advice of the kind provided.

(2) The regulations may provide that a registered trade marks attorney

or a patent attorney has, in relation to documents and property of a

client in a matter relating to trade marks, the same right of lien that

a solicitor has in relation to the documents and property of a client.

(3) Intellectual property advice means advice in relation to:

(a) patents; or

(b) trade marks; or

(c) designs; or

(d) plant breeder’s rights; or

(e) any related matters.

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General Division 3

Section 229A

Trade Marks Act 1995 173

(4) Nothing in this section authorises a registered trade marks attorney

to prepare a document to be issued from or filed in a court or to

transact business, or conduct proceedings, in a court.

229A Designated Manager may disclose information to ASIC

The Designated Manager may disclose to the Australian Securities

and Investments Commission, information (including personal

information within the meaning of the Privacy Act 1988) that is:

(a) relevant to the functions of the Commission; and

(b) obtained by the Designated Manager as a result of the

performance of functions and duties, or the exercise of

powers, in relation to incorporated trade marks attorneys.

230 Passing off actions

(1) Except as provided in subsection (2), this Act does not affect the

law relating to passing off.

(2) In an action for passing off arising out of the use by the defendant

of a registered trade mark:

(a) of which he or she is the registered owner or an authorised

user; and

(b) that is substantially identical with, or deceptively similar to,

the trade mark of the plaintiff;

damages may not be awarded against the defendant if the

defendant satisfies the court:

(c) that, at the time when the defendant began to use the trade

mark, he or she was unaware, and had no reasonable means

of finding out, that the trade mark of the plaintiff was in use;

and

(d) that, when the defendant became aware of the existence and

nature of the plaintiff’s trade mark, he or she immediately

ceased to use the trade mark in relation to the goods or

services in relation to which it was used by the plaintiff.

Note 1: For authorised user see section 8.

Note 2: For deceptively similar see section 10.

ComLaw Authoritative Act C2014C00110

Part 21 Miscellaneous

Division 3 General

Section 231

174 Trade Marks Act 1995

231 Regulations

(1) The Governor-General may make regulations:

(a) prescribing matters required or permitted by this Act to be

prescribed; or

(b) prescribing matters necessary or convenient to be prescribed

for carrying out or giving effect to this Act; or

(c) prescribing matters necessary or convenient to be prescribed

for the conduct of any business relating to the Trade Marks

Office or a sub-office of the Trade Marks Office.

(2) Without limiting subsection (1), the regulations may:

(a) provide for appeals against decisions of the Registrar made

under the regulations; and

(b) require persons to make statutory declarations in support of

any application, notice or request filed under this Act; and

Note: For file see section 6.

(c) provide for the making of a declaration, or the doing of an

act, under this Act on behalf of a person who, because of

infancy or physical or mental disability, is unable to make the

declaration or do the act; and

(d) provide for the refund, in specific circumstances, of the

whole or part of a fee paid under this Act; and

(e) provide for the remission of, or the exemption of specified

classes of persons from the payment of, the whole or part of a

fee; and

(f) provide for the expenses and allowances to be paid to

witnesses or persons attending at proceedings before the

Registrar; and

(g) give power to the Registrar:

(i) to require, in specified circumstances, a person applying

under Part 9 for a trade mark to be removed from the

Register to give security for any costs that may arise

from the proceedings; and

(ii) not to proceed with the application if security is not

given; and

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Miscellaneous Part 21

General Division 3

Section 231

Trade Marks Act 1995 175

(iii) to refund to the applicant any amount given as security

and not applied in settling costs awarded against the

applicant; and

(h) provide for the destruction of documents relating to a trade

mark at least 25 years after the registration of the trade mark

has ceased; and

(ha) provide for the control of the professional conduct of

registered trade marks attorneys and the practice of the

profession and, for that purpose, make provision for and in

relation to all or any of the following:

(i) making complaints, and hearing charges, against

registered trade marks attorneys about their professional

conduct;

(ia) assessing the professional conduct of registered trade

marks attorneys by reference to standards of practice

established by the Professional Standards Board from

time to time;

(ii) imposing penalties on registered trade marks attorneys

(including issuing a reprimand and suspending or

cancelling registration);

(iii) summoning witnesses;

(iv) requiring persons to give evidence on oath (whether

orally or otherwise);

(v) administering oaths to persons giving evidence (whether

orally or otherwise);

(vi) requiring persons to produce documents or articles; and

(i) prescribe as penalties for offences against the regulations

fines not exceeding 10 penalty units; and

(j) make transitional or consequential provision as necessary or

convenient because of the repeal of the repealed Act and the

enactment of this Act; and

(k) provide for regulations made under the repealed Act to

continue to have effect (with any prescribed alterations) for

specified purposes of this Act.

Note: Regulations can also be made in relation to the Tobacco Plain Packaging Act 2011 under section 231A.

ComLaw Authoritative Act C2014C00110

Part 21 Miscellaneous

Division 3 General

Section 231A

176 Trade Marks Act 1995

(3) Without limiting subsection (1), the regulations may prescribe

matters relating to oppositions under sections 52 and 92, including

the following:

(a) rules about filing and serving documents in relation to an

opposition;

(b) rules about the amendment of documents filed in relation to

an opposition;

(c) the circumstances in which the Registrar may dismiss an

opposition;

(d) provision for review by the Administrative Appeals Tribunal

of decisions of the Registrar made under the regulations.

231A Regulations may make provision in relation to the Tobacco

Plain Packaging Act 2011

(1) The regulations may make provision in relation to the effect of the

operation of the Tobacco Plain Packaging Act 2011, and any

regulations made under that Act, on:

(a) a provision of this Act; or

(b) a regulation made under this Act, including:

(i) a regulation that applies a provision of this Act; or

(ii) a regulation that applies a provision of this Act in

modified form.

Note: Section 28 of the Tobacco Plain Packaging Act 2011 also sets out the effect of the operation of that Act on certain provisions of, and regulations made under, this Act.

(2) Without limiting subsection (1), regulations made for the purposes

of that subsection may clarify or state the effect of the operation of

the Tobacco Plain Packaging Act 2011, and any regulations made

under that Act, on a provision of this Act or a regulation made

under this Act, including by taking or deeming:

(a) something to have (or not to have) happened; or

(b) something to be (or not to be) the case; or

(c) something to have (or not to have) a particular effect.

(3) Regulations made for the purposes of subsection (1):

(a) may be inconsistent with this Act; and

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General Division 3

Section 231A

Trade Marks Act 1995 177

(b) prevail over this Act (including any other regulations or other

instruments made under this Act), to the extent of any

inconsistency.

ComLaw Authoritative Act C2014C00110

Part 22 Repeal and transitional

Division 1 Repeal

Section 232

178 Trade Marks Act 1995

Part 22—Repeal and transitional

Division 1—Repeal

232 Repeal

The Trade Marks Act 1955 is repealed.

ComLaw Authoritative Act C2014C00110

Repeal and transitional Part 22

Marks registered under the repealed Act Division 2

Section 233

Trade Marks Act 1995 179

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.

(2) All trade marks that, immediately before 1 January 1996, were

registered as certification trade marks in Part C of the old register

are registered certification trade marks for the purposes of this Act.

(3) All trade marks that, immediately before 1 January 1996, were

registered as defensive trade marks in Part D of the old register are

registered as defensive trade marks for the purposes of this Act.

234 Registration conclusive after 7 years

(1) This section applies in relation to:

(a) a registered trade mark that:

(i) immediately before 1 January 1996, was registered in

Part A of the old register; and

(ii) has not at any time on or after that day ceased to be

registered; and

(b) a registered trade mark:

(i) whose application for registration in Part A of the old

register had been accepted under the repealed Act and

was still pending immediately before 1 January 1996;

and

(ii) that has not at any time on or after that day ceased to be

registered.

Note 1: For registered trade mark and old register see section 6.

Note 2: For pending see subsection 11(2).

(2) In any legal proceedings:

ComLaw Authoritative Act C2014C00110

Part 22 Repeal and transitional

Division 2 Marks registered under the repealed Act

Section 235

180 Trade Marks Act 1995

(a) the original registration under the repealed Act of a trade

mark referred to in paragraph (1)(a); or

(b) the original registration under this Act of a trade mark

referred to in paragraph (1)(b);

is taken to be valid in all respects after a period of 7 years from the

date of registration of the trade mark unless it is shown that:

(c) the original registration was obtained by fraud; or

(d) the registration of the trade mark would be contrary to

section 28 of the repealed Act; or

(e) the trade mark did not, at the commencement of the

proceedings, distinguish the goods or services of the

registered owner in relation to which the trade mark is used

from the goods or services of other persons.

Note 1: For date of registration see section 6.

Note 2: Section 28 of the repealed Act provided as follows:

―28. A mark:

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

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

(c) which comprises or contains scandalous matter; or

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

shall not be registered as a trade mark.‖.

235 Term of registration

The registration of an existing registered mark expires on the day

on which it would have expired under the repealed Act if that Act

had not been repealed.

Note: For existing registered mark see section 6.

236 Renewal

(1) Division 2 of Part 7 applies in relation to the renewal of the

registration of an existing registered mark.

(2) If, before 1 January 1996, the Registrar had (under section 69 of

the repealed Act) renewed for a period of 14 years the registration

of a trade mark that was due to expire on or after that day:

ComLaw Authoritative Act C2014C00110

Repeal and transitional Part 22

Marks registered under the repealed Act Division 2

Section 237

Trade Marks Act 1995 181

(a) that renewal has no effect for the purposes of this Act; and

(b) the Registrar must renew the registration of the trade mark

for a period of 10 years from the day on which the

registration would expire if it were not renewed.

237 Restoration of particulars to Register and renewal of

registration where registration expired within 12 months

before 1 January 1996

(1) This section applies if the registration of a trade mark under the

repealed Act had expired within 12 months before 1 January 1996.

(2) The Registrar must:

(a) make an entry in the Register to the effect that all particulars

of the trade mark removed from the old register under the

repealed Act (because the trade mark had not been renewed)

are restored to the Register; and

(b) enter those particulars in the Register.

Note: For old register see section 6.

(3) If an application for the renewal of the registration of the trade

mark is made under this Act within 12 months from the day on

which the registration expired, the Registrar must renew the

registration of the trade mark for the period beginning on 1 January

1996 that, together with the period during which the trade mark

remained unregistered under the repealed Act, equals 10 years.

(4) If the registration of the trade mark is not renewed under

subsection (3), the Registrar must remove the trade mark from the

Register 12 months after the day on which the registration expired.

238 Disclaimers

If the particulars entered in the Register under paragraph 207(2)(a)

in respect of an existing registered mark include particulars of a

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.

ComLaw Authoritative Act C2014C00110

Part 22 Repeal and transitional

Division 2 Marks registered under the repealed Act

Section 239

182 Trade Marks Act 1995

Note: For existing registered mark see section 6.

239 Rules governing the use of certification trade marks registered

in Part C of the old register

Any rules that, immediately before 1 January 1996, were

governing the use of a trade mark then registered as a certification

trade mark in Part C of the old register:

(a) apply in relation to the use of the certification trade mark on

or after that day as if they were rules made in accordance

with this Act; and

(b) may be varied under section 178.

Note: For old register see section 6.

239A Linked trade marks

(1) Subsection (2) applies if:

(a) the same trade mark was registered before 1 January 1996 in

respect of goods or services of different classes; and

(b) all the applications for the trade marks were lodged (or were

taken under the repealed Act to have been lodged) on the

same day with the Trade Marks Office; and

(c) the trade marks are registered trade marks for the purposes of

this Act with the same registered owner.

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

(2) The registered owner may apply to the Registrar, in writing, to

have those trade marks, or so many of those trade marks as are

identified in the application, dealt with under this Act as if they

were one registered trade mark in relation to the goods or services

in respect of which the trade marks, or the identified trade marks,

were registered.

(3) If an application is made under subsection (2), the Registrar must

deal with the trade marks, or the identified trade marks, as if they

were a single trade mark.

(4) The date of registration of the single trade mark is taken to be the

day on which the applications mentioned in paragraph (1)(b) were

ComLaw Authoritative Act C2014C00110

Repeal and transitional Part 22

Marks registered under the repealed Act Division 2

Section 239A

Trade Marks Act 1995 183

lodged, or were taken to have been lodged (as the case may be),

with the Trade Marks Office under the repealed Act.

ComLaw Authoritative Act C2014C00110

Part 22 Repeal and transitional

Division 3 Matters pending immediately before repeal of repealed Act

Section 240

184 Trade Marks Act 1995

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:

(a) subject to subsection (4), the repealed Act (other than

paragraph 45(1)(b)) continues to apply in relation to the

application;

(b) if, after dealing with the application in accordance with the

repealed Act, the Registrar is required under section 53 of

that Act to register the trade mark in the old register—the

Registrar is to register the trade mark under Part 7 of this

Act.

Note: Subsection 45(1) of the repealed Act provided as follows:

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Repeal and transitional Part 22

Matters pending immediately before repeal of repealed Act Division 3

Section 241

Trade Marks Act 1995 185

―45. (1) An application for the registration of a trade mark may be accepted, and the trade mark may be registered, notwithstanding that the applicant does not use or propose to use the trade mark:

(a) ...

(b) if an application has been made for the registration of a person as a registered user of the trade mark and the Registrar is satisfied that the proprietor intends the trade mark to be used by that person in relation to those goods or services and is also satisfied that that person will be registered as a registered user of the trade mark immediately after registration of the trade mark.‖.

(3) If, immediately before 1 January 1996, the application had not

been accepted, the following provisions apply:

(a) subject to subsection 240(2) and subsection (5) of this

section, the application is to be dealt with in accordance with

this Act;

(b) if:

(i) there is no opposition to the registration; or

(ii) there is an opposition to the registration but the

Registrar’s decision, or (in the case of an appeal against

the Registrar’s decision) the decision on appeal, is that

the trade mark should be registered;

Part 7 is to apply in relation to the registration of the trade

mark.

(4) If, when dealing with the application under the repealed Act as

provided by paragraph (2)(a), the Registrar withdraws the

acceptance of the application under subsection 44(3) of that Act,

the following provisions apply:

(a) subject to subsection 240(2) and subsection (5) of this

section, the application is to be dealt with in accordance with

this Act as if it were an application whose acceptance had

been revoked under subsection 38(1);

(b) if:

(i) there is no opposition to the registration; or

(ii) there is an opposition to the registration but the

Registrar’s decision, or (in the case of an appeal against

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Section 242

186 Trade Marks Act 1995

the Registrar’s decision) the decision on appeal, is that

the trade mark should be registered;

Part 7 is to apply in relation to the registration of the trade

mark.

(5) The filing date in respect of the application is:

(a) if paragraph (b) does not apply—the day on which the

application was lodged with the Trade Marks Office under

the repealed Act; or

(b) if section 43 of the repealed Act applied to the application

and the Registrar had made the proper direction—the day on

which the application is to be taken to have been lodged with

the Trade Marks Office under the repealed Act.

242 Divisional application in relation to pending application

(1) This section applies if, immediately before 1 January 1996, an

application (initial application) for the registration of a trade mark

in the old register was pending and had not been accepted.

Note 1: For old register see section 6.

Note 2: For pending see subsection 11(2).

(2) If:

(a) at any time within 6 months after 1 January 1996, the initial

application is still pending; and

(b) a part of the trade mark, by itself, may be registered as a trade

mark;

the applicant may, subject to subsection (4), make an application

(divisional application) for the registration of that part as a trade

mark in respect of any or all of the goods or services specified in

the initial application.

Note: For pending see subsection 11(1).

(3) If the initial application:

(a) was amended under the repealed Act to exclude some of the

goods and/or services specified in the application before its

amendment; and

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Repeal and transitional Part 22

Matters pending immediately before repeal of repealed Act Division 3

Section 243

Trade Marks Act 1995 187

(b) is still pending at any time within one month after 1 January

1996;

the applicant may, subject to subsection (4), make an application

(divisional application) for the registration of the trade mark in

respect of any or all of the goods and/or services that were

excluded from the initial application.

Note: For pending see subsection 11(1).

(4) If the initial application is accepted under Part 4, a divisional

application may not be made after the acceptance is advertised in

the Official Journal.

243 More than one application lodged on same day for registration

of same trade mark

(1) If:

(a) before 1 January 1996 a person made a number of

applications each seeking the registration of one and the

same trade mark but in respect of goods or services of

different classes; and

(b) all the applications were lodged, or were taken under the

repealed Act to have been lodged, on the same day with the

Trade Marks Office;

the applications are called linked applications in this section.

(2) This section applies if, immediately before 1 January 1996, a

number of linked applications for the registration of a trade mark

were pending and had not been accepted.

Note: For pending see subsection 11(2).

(3) If, at any time on or after 1 January 1996, there are linked

applications pending, the applicant may, subject to subsection (4),

apply to the Registrar to have some or all of those applications

dealt with under this Act as if they were one application for the

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:

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188 Trade Marks Act 1995

(a) one of the linked applications has been accepted under Part 4;

and

(b) the acceptance has been advertised in the Official Journal;

that application may not be included in the application made to the

Registrar under subsection (3).

(5) If an application is made under subsection (3), the Registrar must

deal with the linked applications as if they were a single

application for the registration of a trade mark made on 1 January

1996.

(6) The filing date for the single application taken to have been made

under subsection (5) is the day on which the linked applications

were lodged, or were taken to have been lodged (as the case may

be), with the Trade Marks Office under the repealed Act.

244 Application for registration of trade mark whose registration

has been sought in Convention country

(1) This section applies if:

(a) an application for the registration in Australia of a trade mark

whose registration had been sought in one or more than one

Convention country was made under section 109 of the

repealed Act; and

(b) immediately before 1 January 1996, the application was still

pending.

Note 1: For pending see subsection 11(2).

Note 2: For Convention country see section 225.

(2) If:

(a) for the purposes of the repealed Act, the Registrar had been

notified that an application had been made in that Convention

country or in those Convention countries for the registration

of the trade mark; and

(b) the trade mark is registered under this Act;

subsection 72(2) applies in relation to the registration as if a right

of priority had been claimed under section 29 for the registration of

the trade mark.

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Repeal and transitional Part 22

Matters pending immediately before repeal of repealed Act Division 3

Section 245

Trade Marks Act 1995 189

(3) If the Registrar had not, for the purposes of the repealed Act, been

notified that an application had been made in that Convention

country or in those Convention countries for the registration of the

trade mark, the applicant must, within 6 months after 1 January

1996 but subject to subsection (5), claim a right of priority for the

registration of the trade mark in accordance with section 29 in

order to obtain registration from the date on which that application

or the earliest of those applications was made in a Convention

country.

(4) If:

(a) the applicant claims a right of priority for the registration of

the trade mark under subsection (3); and

(b) the trade mark is registered under this Act;

subsection 72(2) applies in relation to the registration.

(5) If the application is accepted under Part 4, the applicant may not

claim a right of priority in accordance with section 29 after the

acceptance is advertised in the Official Journal.

245 Application for registration of a mark in Part C of the old

register

(1) Subject to Part 16, section 241 applies to an application for the

registration of a mark as a certification trade mark in Part C of the

old register as if the reference in subsection (1) to Part A or B of

the old register were a reference to Part C of that register.

(2) Subject to Part 16, sections 242 to 244 apply to an application for

the registration of a mark as a certification trade mark in Part C of

the old register.

Note: For old register see section 6.

246 Application for registration of a mark in Part D of the old

register

(1) Subject to Part 17, section 241 applies to an application for the

registration of a mark as a defensive trade mark in Part D of the old

register as if the reference in subsection (1) to Part A or B of the

old register were a reference to Part D of that register.

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Part 22 Repeal and transitional

Division 3 Matters pending immediately before repeal of repealed Act

Section 247

190 Trade Marks Act 1995

(2) Subject to Part 17, sections 242 to 244 apply to an application for

the registration of a mark as a defensive trade mark in Part D of the

old register.

247 Amendment of application—specification of goods or services

(1) This section applies if:

(a) immediately before 1 January 1996 an application for the

registration of a mark in Part A, B, C or D of the old register

(other than an application made under section 39 of the

repealed Act) was pending and had not been accepted; and

(b) the application had previously been amended; and

(c) the application as amended did not relate to all of the goods

or services specified in the application before its amendment.

Note 1: For old register see section 6.

Note 2: For pending see subsection 11(2).

(2) The applicant may, within 6 months after 1 January 1996, apply to

the Registrar for the application to be again amended so as to relate

to some or all of the goods or services specified in the application

before its amendment under the repealed Act, if:

(a) the application is still pending under this Act; and:

(i) it has not been accepted; or

(ii) if it has been accepted, the acceptance has not been

advertised in the Official Journal; and

(b) subsection 43(3) of the repealed Act would apply in relation

to a further application for the registration of the mark in

respect of the goods or services included from the original

application, if that Act were still in force.

Note: For pending see subsection 11(1).

(3) If an application is amended under subsection (2), it must (if

necessary) be also amended so as to be in accordance with Part 4.

248 Revival of application for registration of trade mark that had

lapsed before 1 January 1996

(1) If:

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Repeal and transitional Part 22

Matters pending immediately before repeal of repealed Act Division 3

Section 249

Trade Marks Act 1995 191

(a) an application under the repealed Act for the registration of a

trade mark had lapsed (under subsection 48(1) of that Act);

and

(b) the application would have been pending immediately before

1 January 1996 if:

(i) an application had been made to the Registrar under the

repealed Act for an extension of the time within which

the application for registration would be accepted; and

(ii) the Registrar had allowed an extension of that time

under that Act;

the applicant may apply in writing to the Registrar for a declaration

that the application is revived.

Note: For pending see subsection 11(2).

(2) The Registrar must grant the application if he or she considers, in

all the circumstances of the case, that it is fair and reasonable to do

so.

(3) If the Registrar declares that the application is revived, the

application is to be dealt with as if it were an application that was

pending immediately before 1 January 1996.

Note 1: For pending see subsection 11(2).

Note 2: Sections 240 to 247 make provision relating to applications for registration of trade marks that were pending immediately before 1 January 1996.

249 Application for registration of assignment etc.

If an application for the registration in the old register of the

assignment or transmission of an existing registered mark was

pending immediately before 1 January 1996, this Act applies in

relation to the application as if:

(a) it were an application under section 109 for a record of the

assignment or transmission to be entered in the Register; and

(b) that application was filed on 1 January 1996.

Note: For old register, existing registered mark and file see section 6.

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Part 22 Repeal and transitional

Division 3 Matters pending immediately before repeal of repealed Act

Section 250

192 Trade Marks Act 1995

250 Rectification of Register

If proceedings arising from an application to a court under

section 22 (Rectification of Register) of the repealed Act were

pending immediately before 1 January 1996, the matter is to be

decided under the repealed Act as if the old register were to be

rectified, but any order made by the Court may only be in respect

of the rectification of the Register.

Note: For old register see section 6.

251 Action for removal of trade mark from Register for non-use

If proceedings arising from an application to the Registrar or a

court under section 23 (Provisions as to non-use of trade mark) of

the repealed Act were pending immediately before 1 January 1996,

the repealed Act continues to apply:

(a) in relation to those proceedings; and

(b) for the purposes of any appeal from an order or direction of

the Registrar or the court under that section;

as if the reference in subsection 23(1) to the Register were a

reference to the Register within the meaning of this Act.

Note: For pending see subsection 11(2).

252 Action for infringement of trade mark etc.

Sections 62 to 67 and section 78 of the repealed Act continue to

apply in relation to an action for the infringement of a trade mark

that was pending immediately before 1 January 1996.

253 Action under this Act for infringement of trade mark under

repealed Act

If:

(a) before 1 January 1996 a person engaged in conduct that

infringed a mark registered under the repealed Act; and

(b) an action relating to that infringement was not pending

immediately before 1 January 1996; and

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Repeal and transitional Part 22

Matters pending immediately before repeal of repealed Act Division 3

Section 254

Trade Marks Act 1995 193

(c) the mark is an existing registered mark for the purposes of

this Act;

then, subject to any law limiting the time within which such an

action may be started, an action may be brought under this Act for

that infringement of the trade mark. A person is not, however,

entitled under this Act to any injunction or other relief to which the

person would not have been entitled under the repealed Act.

Note: For existing registered mark see section 6.

254 Acts not constituting infringement of existing registered mark

(1) This section applies if:

(a) immediately before 1 January 1996, a person was engaging

in conduct that did not constitute an infringement of a mark

registered under the repealed Act; and

(b) the mark is an existing registered mark for the purposes of

this Act; and

(c) the person has, on or after that day, continuously engaged in,

and is engaging in, that conduct; and

(d) that conduct is an infringement of the existing registered

mark under this Act.

(2) In spite of section 120, the person does not infringe the existing

registered mark by engaging in that conduct.

Note: For existing registered mark see section 6.

254A Acts not constituting infringement of trade mark—pending

application under the repealed Act

(1) This section applies if:

(a) an application for the registration of a trade mark under the

repealed Act was pending immediately before 1 January

1996; and

(b) immediately before 1 January 1996, a person was engaging

in conduct that would not have constituted an infringement of

the mark if the mark had been registered under the repealed

Act before 1 January 1996; and

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Part 22 Repeal and transitional

Division 3 Matters pending immediately before repeal of repealed Act

Section 254B

194 Trade Marks Act 1995

(c) the person has, on or after that day, continuously engaged in,

and is engaging in, that conduct; and

(d) the mark becomes a registered trade mark under this Act; and

(e) that conduct is an infringement of the registered trade mark

under this Act.

(2) Despite section 120, the person does not infringe the registered

trade mark by engaging in that conduct.

254B Part B defence—infringement of existing registered mark

(1) This section applies if:

(a) immediately before 1 January 1996, a person was engaging

in conduct that constituted an infringement of a mark

registered under the repealed Act; and

(b) the mark is an existing registered mark for the purposes of

this Act; and

(c) the mark was registered in Part B of the old register before

1 January 1996; and

(d) the person has, on or after that day, continuously engaged in,

and is engaging in, that conduct; and

(e) that conduct is an infringement of the existing registered

mark under this Act.

(2) In an action for infringement of the existing registered mark (not

being an infringement occurring by reason of an act referred to in

section 121), an injunction or other relief must not be granted if the

person establishes to the satisfaction of the court that the use of the

mark is not likely to:

(a) deceive or cause confusion; or

(b) be taken as indicating a connection in the course of trade

between the goods and/or services in respect of which the

trade mark is registered and a person having the right, either

as registered owner or as authorised user, to use the trade

mark.

Note: For existing registered mark see section 6.

ComLaw Authoritative Act C2014C00110

Repeal and transitional Part 22

Matters pending immediately before repeal of repealed Act Division 3

Section 254C

Trade Marks Act 1995 195

254C Part B defence—infringement of trade mark (pending

application under the repealed Act)

(1) This section applies if:

(a) an application for the registration of a trade mark in Part B of

the old register was pending immediately before 1 January

1996; and

(b) immediately before 1 January 1996, a person was engaging

in conduct that would have constituted an infringement of the

mark if the mark had been registered in Part B of the old

register before 1 January 1996; and

(c) the person has, on or after that day, continuously engaged in,

and is engaging in, that conduct; and

(d) the mark becomes a registered trade mark under this Act; and

(e) that conduct is an infringement of the registered trade mark

under this Act.

(2) In an action for infringement of the registered trade mark (not

being an infringement occurring by reason of an act referred to in

section 121), an injunction or other relief must not be granted if the

person establishes to the satisfaction of the court that the use of the

mark is not likely to:

(a) deceive or cause confusion; or

(b) be taken as indicating a connection in the course of trade

between the goods and/or services in respect of which the

trade mark is registered and a person having the right, either

as registered owner or as authorised user, to use the trade

mark.

Note: For existing registered mark see section 6.

255 Application of this Act—general

(1) If:

(a) an action or proceeding validly brought for the purposes of

the repealed Act was still pending immediately before

1 January 1996; and

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Division 3 Matters pending immediately before repeal of repealed Act

Section 256

196 Trade Marks Act 1995

(b) that action or proceeding could have been brought under this

Act if this Act had been in force when the action or

proceeding was started;

then, except as otherwise provided by this Division or the

regulations, this Act applies in relation to the action or proceeding

as if it were an action or proceeding validly brought on 1 January

1996 under the relevant provision of this Act.

(2) Anything done under the repealed Act for the purposes of the

action or proceeding is taken to have been done:

(a) on 1 January 1996; and

(b) in accordance with this Act.

256 Fees

No fee is payable under this Act in relation to an act that was done

under the repealed Act and is taken, under this Division, to be an

act done under this Act.

ComLaw Authoritative Act C2014C00110

Repeal and transitional Part 22

General Division 4

Section 257

Trade Marks Act 1995 197

Division 4—General

257 The Registrar and Deputy Registrar

Persons holding office as Registrar of Trade Marks and Deputy

Registrar of Trade Marks immediately before 1 January 1996

continue to hold those respective offices on and after that day.

258 Confidential information received by Registrar under section 74

of the repealed Act

If, immediately before 1 January 1996, the Registrar was required

under subsection 74(7) of the repealed Act to ensure that any

document, information or evidence given for the purpose of an

application for the registration of a person as a registered user of a

trade mark was not disclosed to any other person, the Registrar

must continue to ensure that the document, information or evidence

is not so disclosed except by order of a prescribed court.

Note: For prescribed court see section 190.

259 Documents kept under repealed Act

The Registrar is to continue to keep in accordance with this Act all

documents that, immediately before 1 January 1996, were kept by

the Registrar under the repealed Act.

260 Address for service

(1) If, immediately before 1 January 1996, the address for service of

an applicant for the registration of a trade mark, or of an opponent

to the registration, under subsection 132(1) or (2) of the repealed

Act (existing address) was an address in Australia, that address

remains the address for service of the applicant or opponent for the

purposes of this Act until he or she notifies another address to the

Registrar under section 215.

Note: For applicant and opponent see section 6.

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Part 22 Repeal and transitional

Division 4 General

Section 260

198 Trade Marks Act 1995

(2) If the existing address of an applicant for the registration of a trade

mark or of an opponent to the registration is not an address in

Australia, the applicant or opponent must give in writing to the

Registrar an address in Australia as his or her address for service.

(3) If, immediately before 1 January 1996, the proprietor of an existing

registered mark had an agent in Australia for the purposes of

subsection 70(1) of the repealed Act, the address of that agent is

the address for service of the registered owner of the mark for the

purposes of this Act until the registered owner notifies another

address to the Registrar under section 215.

Note: For existing registered mark see section 6.

(4) If:

(a) immediately before 1 January 1996, the proprietor of an

existing registered mark did not have an agent in Australia

for the purposes of subsection 70(1) of the repealed Act; and

(b) the address then entered in the old register as the address of

the proprietor was an address in Australia;

that address is the address for service of the registered owner of the

mark for the purposes of this Act until the registered owner notifies

another address to the Registrar under section 215.

Note: For existing registered mark and old register see section 6.

(5) If:

(a) immediately before 1 January 1996, the proprietor of an

existing registered mark did not have an agent in Australia

for the purposes of subsection 70(1) of the repealed Act; and

(b) the address then entered in the old register as the address of

the proprietor was not an address in Australia;

that address is not to be used as the address for service of the

registered owner of the mark, and the registered owner must give

in writing to the Registrar an address in Australia as his or her

address for service.

Note: For existing registered mark and old register see section 6.

ComLaw Authoritative Act C2014C00110

Repeal and transitional Part 22

General Division 4

Section 261

Trade Marks Act 1995 199

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

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.

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 1—About the endnotes

200 Trade Marks Act 1995

Endnotes

Endnote 1—About the endnotes The endnotes provide details of the history of this legislation and its provisions.

The following endnotes are included in each compilation:

Endnote 1—About the endnotes

Endnote 2—Abbreviation key

Endnote 3—Legislation history

Endnote 4—Amendment history

Endnote 5—Uncommenced amendments

Endnote 6—Modifications

Endnote 7—Misdescribed amendments

Endnote 8—Miscellaneous

If there is no information under a particular endnote, the word ―none‖ will

appear in square brackets after the endnote heading.

Abbreviation key—Endnote 2

The abbreviation key in this endnote sets out abbreviations that may be used in

the endnotes.

Legislation history and amendment history—Endnotes 3 and 4

Amending laws are annotated in the legislation history and amendment history.

The legislation history in endnote 3 provides information about each law that

has amended the compiled law. The information includes commencement

information for amending laws and details of application, saving or transitional

provisions that are not included in this compilation.

The amendment history in endnote 4 provides information about amendments at

the provision level. It also includes information about any provisions that have

expired or otherwise ceased to have effect in accordance with a provision of the

compiled law.

Uncommenced amendments—Endnote 5

The effect of uncommenced amendments is not reflected in the text of the

compiled law but the text of the amendments is included in endnote 5.

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 1—About the endnotes

Trade Marks Act 1995 201

Modifications—Endnote 6

If the compiled law is affected by a modification that is in force, details of the

modification are included in endnote 6.

Misdescribed amendments—Endnote 7

An amendment is a misdescribed amendment if the effect of the amendment

cannot be incorporated into the text of the compilation. Any misdescribed

amendment is included in endnote 7.

Miscellaneous—Endnote 8

Endnote 8 includes any additional information that may be helpful for a reader

of the compilation.

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 2—Abbreviation key

202 Trade Marks Act 1995

Endnote 2—Abbreviation key

ad = added or inserted pres = present

am = amended prev = previous

c = clause(s) (prev) = previously

Ch = Chapter(s) Pt = Part(s)

def = definition(s) r = regulation(s)/rule(s)

Dict = Dictionary Reg = Regulation/Regulations

disallowed = disallowed by Parliament reloc = relocated

Div = Division(s) renum = renumbered

exp = expired or ceased to have effect rep = repealed

hdg = heading(s) rs = repealed and substituted

LI = Legislative Instrument s = section(s)

LIA = Legislative Instruments Act 2003 Sch = Schedule(s)

mod = modified/modification Sdiv = Subdivision(s)

No = Number(s) SLI = Select Legislative Instrument

o = order(s) SR = Statutory Rules

Ord = Ordinance Sub-Ch = Sub-Chapter(s)

orig = original SubPt = Subpart(s)

par = paragraph(s)/subparagraph(s)

/sub-subparagraph(s)

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 3—Legislation history

Trade Marks Act 1995 203

Endnote 3—Legislation history

Act Number

and year

Assent Commencement Application,

saving and

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

Tourism Legislation

Amendment Act 1997

91, 1997 30 June

1997

Schedule 1 (items 25–

41): 1 Jan 1996 (a)

Intellectual Property Laws

Amendment Act 1998

100, 1998 July 1998 Schedule 2 (items 33–

46): 27 Jan 1999 (b)

Intellectual Property Laws

Amendment (Border

Interception) Act 1999

144, 1999 3 Nov 1999 3 Nov 1999 s. 4

Public Employment

(Consequential and

Transitional) Amendment

Act 1999

146, 1999 11 Nov

1999

Schedule 1 (items 940–

943): 5 Dec 1999 (see

Gazette 1999, No. S584)

(c)

Trade Marks Amendment

(Madrid Protocol) Act

2000

117, 2000 7 Sept 2000 11 July 2001 (see

Gazette 2001, No.

GN24)

Trade Marks and Other

Legislation Amendment

Act 2001

99, 2001 22 Aug

2001

Schedule 1 (items 1–46):

19 Sept 2001 (d)

Schedule 1 (item 47): (d)

Sch. 1 (items 4, 5,

12, 15, 23, 32, 33)

Industry, Science and

Resources Legislation

Amendment (Application

of Criminal Code) Act

2001

140, 2001 1 Oct 2001 2 Oct 2001 s. 4

Proceeds of Crime

(Consequential

Amendments and

Transitional Provisions)

Act 2002

86, 2002 11 Oct

2002

ss. 1–3: Royal Assent

Remainder: 1 Jan 2003

(see s. 2(1) and Gazette,

2002 No. GN44)

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 3—Legislation history

204 Trade Marks Act 1995

Act Number

and year

Assent Commencement Application,

saving and

transitional

provisions

Intellectual Property Laws

Amendment Act 2003

48, 2003 26 June

2003

Schedule 1 (items 3–5)

and Schedule 2 (items 6,

7): 24 July 2003

Intellectual Property Laws

Amendment Act 2006

106, 2006 27 Sept

2006

Schedules 1, 2, 3

(items 8–16), Schedule 4

and Schedule 12

(item 8): 27 Mar 2007

Schedule 3 (items 1–7),

Schedule 11 (items 3, 4)

and Schedule 13: 28 Sept

2006

Schedule 16 (item 2): (e)

Schedule 16 (item 3): 5

Dec 1999 (see s. 2(1))

Sch. 1 (items 2, 9),

Sch. 2 (item 2),

Sch. 3 (items 2, 5,

9, 11, 14, 16), Sch.

4 (items 2, 4), Sch.

11 (item 4) and Sch.

13 (item 2)

Trade Marks Amendment

Act 2006

114, 2006 23 Oct

2006

Schedule 1 (items 63–

92): 27 Mar 2007 (see

F2007L00392)

Remainder: Royal

Assent

Sch. 1 (items 5, 8,

11, 13, 20, 26, 30,

34, 36, 51, 62, 69,

72, 82, 85, 90)

Personal Property

Securities (Consequential

Amendments) Act 2009

131, 2009 14 Dec

2009

Schedule 2 (items 18–

24): 30 Jan 2012 (see

F2011L02397)

Sch. 2 (item 24)

Crimes Legislation

Amendment (Serious and

Organised Crime) Act

(No. 2) 2010

4, 2010 19 Feb

2010

Schedule 10 (item 30):

20 Feb 2010

Personal Property

Securities (Corporations

and Other Amendments)

Act 2010

96, 2010 6 July 2010 Schedule 3 (item 30): (f)

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)

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 3—Legislation history

Trade Marks Act 1995 205

Act Number

and year

Assent Commencement Application,

saving and

transitional

provisions

Trade Practices

Amendment (Australian

Consumer Law) Act

(No. 2) 2010

103, 2010 13 July

2010

Schedule 6 (items 1,

141): 1 Jan 2011

Acts Interpretation

Amendment Act 2011

46, 2011 27 June

2011

Schedule 2 (items 1163,

1164) and Schedule 3

(items 10, 11): 27 Dec

2011

Sch. 3 (items 10,

11)

Trade Marks Amendment

(Tobacco Plain

Packaging) Act 2011

149, 2011 1 Dec 2011 Schedule 1: 1 Dec 2011

(see s. 2(1))

Remainder: Royal

Assent

Crimes Legislation

Amendment Act (No. 2)

2011

174, 2011 5 Dec 2011 Schedule 2 (items 240–

242): 1 Jan 2012

Sch. 2 (item 242)

Intellectual Property Laws

Amendment (Raising the

Bar) Act 2012

35, 2012 15 Apr

2012

Schedule 3 (items 17–31,

32(7)), Schedule 4

(items 37–58),

Schedule 5 (items 17–

29) and Schedule 6

(items 109–132): 15 Apr

2013

Sch. 3 (item 32(7))

Privacy Amendment

(Enhancing Privacy

Protection) Act 2012

197, 2012 12 Dec

2012

Schedule 5 (item 99):

[see Endnote 4]

Federal Circuit Court of

Australia (Consequential

Amendments) Act 2013

13, 2013 14 Mar

2013

Schedule 3 (items 22–

42): (g)

Privacy Amendment

(Enhancing Privacy

Protection) Act 2012

197, 2012 12 Dec

2012

Sch 5 (item 99): 12 Mar

2014

(a) The Trade Marks Act 1995 was amended by Schedule 1 (items 25–41) only

of the Industry, Science and Tourism Legislation Amendment Act 1997,

subsection 2(4) of which provides as follows:

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 3—Legislation history

206 Trade Marks Act 1995

(4) The amendments of the Trade Marks Act 1995 made by Schedule 1 are

taken to have commenced on 1 January 1996.

(b) The Trade Marks Act 1995 was amended by Schedule 2 (items 33–46) only

of the Intellectual Property Laws Amendment Act 1998, subsection 2(5) of

which provides as follows:

(5) If Schedule 2 does not commence under subsection (4) within the period

of 6 months beginning on the day on which this Act receives the Royal

Assent, Schedule 2 commences on the first day after the end of that

period.

(c) The Trade Marks Act 1995 was amended by Schedule 1 (items 940–943) only

of the Public Employment (Consequential and Transitional) Amendment Act

1999, subsections 2(1) and (2) of which provide as follows:

(1) In this Act, commencing time means the time when the Public Service

Act 1999 commences.

(2) Subject to this section, this Act commences at the commencing time.

(d) The Trade Marks Act 1995 was amended by Schedule 1 only of the Trade

Marks and Other Legislation Amendment Act 2001, subsections 2(1) and

(2)(a) of which provide as follows:

(1) Subject to this section, this Act commences on the 28th day after the day

on which it receives the Royal Assent.

(2) Part 2 of Schedule 1 commences at the later of:

(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,

item 2

Immediately after the commencement of

section 84 of the Trade Marks Act 1995.

1 January 1996

(f) Subsection 2(1) (item 19) of the Personal Property Securities (Corporations

and Other Amendments) Act 2010 provides as follows:

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 3—Legislation history

Trade Marks Act 1995 207

(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,

item 30

Immediately after the commencement of item 18 of

Schedule 2 to the Personal Property Securities

(Consequential Amendments) Act 2009.

30 January 2012

(g) Subsection 2(1) (item 4) of the Federal Circuit Court of Australia

(Consequential Amendments) Act 2013 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

4. Schedule 3,

Part 1

The later of:

(a) immediately after the commencement of the provision(s) covered by table item 2; and

(b) immediately after the commencement of item 1 of Schedule 6 to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.

15 April 2013

(paragraph (b)

applies)

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 4—Amendment history

208 Trade Marks Act 1995

Endnote 4—Amendment history

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; No. 35, 2012

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. 131, 2009; Nos.

96, 98 and 103, 2010; No. 35, 2012; No. 13, 2013

s. 6A ..............................................ad. No. 114, 2006

Note to s. 6A..................................rs. No. 46, 2011

s. 11 ...............................................am. No. 35, 2012

s. 15 ...............................................am. No. 114, 2006

Part 3

Note 3 to s. 20(1) ...........................ad. No. 117, 2000

s. 22 ...............................................am. No. 114, 2006; No. 131, 2009

s. 26 ...............................................am. No. 91, 1997; No. 99, 2001

Part 4

Division 1

s. 27 ...............................................am. No. 114, 2006; No. 35, 2012

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. 35 ...............................................am. No. 35, 2012; No. 13, 2013

Heading to s. 37.............................am. No. 35, 2012

s. 38 ...............................................am. No. 106, 2006

Division 2

s. 41 ...............................................am. No. 114, 2006

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 4—Amendment history

Trade Marks Act 1995 209

Provision affected How affected

rs. No. 35, 2012

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

Part 5

Division 1

s. 52 ...............................................am. No. 99, 2001; No. 114, 2006; No. 35, 2012

Note to s. 52(4)..............................ad. No. 114, 2006

s. 52A ............................................ad. No. 35, 2012

s. 54 ...............................................am. No. 35, 2012

s. 54A ............................................ad. No. 35, 2012

s. 55 ...............................................am. No. 114, 2006; No. 35, 2012

s. 56 ...............................................am. No. 35, 2012; No. 13, 2013

Division 2

s. 57 ...............................................am. No. 114, 2006

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

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 4—Amendment history

210 Trade Marks Act 1995

Provision affected How affected

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; No. 35, 2012

s. 66A ............................................ad. No. 114, 2006

s. 67 ...............................................am. No. 35, 2012; No. 13, 2013

Part 7

Division 1

s. 68 ...............................................am. No. 99, 2001; No. 35, 2012

Note to s. 68(1)..............................ad. No. 35, 2012

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

Part 8

Heading to Part 8 ...........................rs. No. 106, 2006

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 4—Amendment history

Trade Marks Act 1995 211

Provision affected How affected

Division 1

Subdivision A

Heading to Subdiv. A of ................

Div. 1 of Part 8

ad. No. 106, 2006

s. 82A ............................................ad. No. 114, 2006

s. 83 ...............................................am. No. 35, 2012; No. 13, 2013

s. 83A ............................................ad. No. 98, 2010

am. No. 35, 2012; No. 13, 2013

Subdivision B

Heading to Subdiv. B of ................

Div. 1 of Part 8

ad. No. 106, 2006

s. 84 ...............................................am. No. 106, 2006

Subdivision C

Subdiv. C of Div. 1 of ...................

Part 8

ad. No. 106, 2006

s. 84A ............................................ad. No. 106, 2006

s. 84B ............................................ad. No. 106, 2006

s. 84C ............................................ad. No. 106, 2006

s. 84D ............................................ad. No. 106, 2006

am. No. 35, 2012; No. 13, 2013

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. 96 ...............................................rs. No. 35, 2012

s. 96A ............................................ad. No. 99, 2001

Heading to s. 97.............................am. No. 35, 2012

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 4—Amendment history

212 Trade Marks Act 1995

Provision affected How affected

s. 97 ...............................................am. No. 35, 2012

s. 99A ............................................ad. No. 35, 2012

Note 2 to s. 100(1) .........................am. No. 114, 2006

s. 101 .............................................am. No. 114, 2006

s. 104 .............................................am. No. 35, 2012; No. 13, 2013

Part 11

Division 2

s. 113 .............................................rs. No. 131, 2009

Division 3

s. 117 .............................................rs. No. 131, 2009

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. 126 .............................................am. No. 35, 2012

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

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

s. 134 .............................................am. No. 91, 1997

rs. No. 35, 2012

s. 134A ..........................................ad. No. 35, 2012

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 4—Amendment history

Trade Marks Act 1995 213

Provision affected How affected

Heading to s. 135...........................rs. No. 35, 2012

s. 135 .............................................am. No. 91, 1997

s. 136 .............................................am. No. 91, 1997

rs. No. 35, 2012

s. 136A ..........................................ad. No. 35, 2012

s. 136B ..........................................ad. No. 35, 2012

s. 136C ..........................................ad. No. 35, 2012

s. 136D ..........................................ad. No. 35, 2012

s. 136E...........................................ad. No. 35, 2012

s. 137 .............................................am. No. 91, 1997; No. 99, 2001; No. 35, 2012

Note 3 to s. 138..............................am. No. 99, 2001

s. 139 .............................................am. No. 91, 1997

rs. No. 35, 2012

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 2 to s 143(1)..........................am No 197, 2012

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

rs. No. 35, 2012

Note 3 to s. 145(1) .........................ad. No. 117, 2000

rs. No. 35, 2012

s. 146 .............................................am. No. 140, 2001

rs. No. 35, 2012

Note 3 to s. 146(1) .........................ad. No. 117, 2000

rs. No. 35, 2012

s. 147 .............................................am. No. 140, 2001

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 4—Amendment history

214 Trade Marks Act 1995

Provision affected How affected

rs. No. 35, 2012

s. 147A ..........................................ad. No. 35, 2012

s. 147B ..........................................ad. No. 35, 2012

s. 148 .............................................rs. No. 35, 2012

Note 4 to s. 148..............................ad. No. 117, 2000

rep. No. 35, 2012

s. 149 .............................................rep. No. 35, 2012

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

Heading to s. 156...........................rs. No. 35, 2012

s. 156 .............................................am. No. 100, 1998; No. 140, 2001; No. 35, 2012

Note 2 to s. 156(2) .........................am. No. 100, 1998

rs. No. 35, 2012

Note 3 to s. 156(2) .........................rep. No. 100, 1998

Note 4 to s. 156(2) .........................

Relocated from s. 155(2)

No. 100, 1998

rep. No. 35, 2012

Note to s. 156(6)............................rs. No. 140, 2001

Note 2 to s. 157(2) .........................rs. No. 140, 2001

s. 157A ..........................................ad. No. 35, 2012

s. 158 .............................................rep. No. 99, 2001

Heading to s. 159...........................am. No. 86, 2002

s. 159 .............................................am. No. 99, 2001; No. 86, 2002; No. 174, 2011

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

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 4—Amendment history

Trade Marks Act 1995 215

Provision affected How affected

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. 190 .............................................am. No. 35, 2012; No. 13, 2013

s. 191 .............................................am. No. 35, 2012; No. 13, 2013

Heading to s. 191A........................rs. No. 13, 2013

s. 191A ..........................................ad. No. 35, 2012

am. No. 13, 2013

s. 192 .............................................am. No. 35, 2012; No. 13, 2013

s. 193 .............................................am. No. 35, 2012

s. 194 .............................................am. No. 35, 2012; No. 13, 2013

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 4—Amendment history

216 Trade Marks Act 1995

Provision affected How affected

Note to s. 194(3)............................am. No. 13, 2013

s. 195 .............................................am. No. 35, 2012; No. 13, 2013

s. 196 .............................................am. No. 35, 2012; No. 13, 2013

Heading to s. 197...........................am. No. 35, 2012

rs. No. 13, 2013

s. 197 .............................................am. No. 114, 2006; No. 35, 2012; No. 13, 2013

Part 19

s. 199 .............................................am. No. 35, 2012

s. 206 .............................................am. No. 146, 1999; No. 48, 2003; No. 106, 2006

Part 20

s. 210 .............................................am. No. 131, 2009

Part 21

Division 1

s. 212 .............................................rs. No. 100, 1998

s. 213 .............................................am. No. 35, 2012

Note to s. 215(7)............................am. No. 46, 2011

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

am. No. 35, 2012

s. 224 .............................................am. No. 48, 2003; No. 106, 2006

Note to s. 224(5)............................ad. No. 114, 2006

s. 225 .............................................am. No. 35, 2012

s. 226 .............................................am. No. 114, 2006

s. 226A ..........................................ad. No. 106, 2006

s. 226B ..........................................ad. No. 114, 2006

Subhead. to s. 228A(4) ..................ad. No. 35, 2012

s. 228A ..........................................ad. No. 100, 1998

am. No. 35, 2012

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 4—Amendment history

Trade Marks Act 1995 217

Provision affected How affected

Note to s. 228A(1) .........................rs. No. 35, 2012

Note to s. 228A(5) .........................ad. No. 35, 2012

s. 228B ..........................................ad. No. 100, 1998

s. 229 .............................................rs. No. 100, 1998

am. No. 35, 2012

s. 229A ..........................................ad. No. 35, 2012

s. 231 .............................................am. No. 100, 1998; No. 35, 2012

Note to s. 231(2)............................ad. No. 149, 2011

s. 231A ..........................................ad. No. 149, 2011

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

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 5—Uncommenced amendments [none]

218 Trade Marks Act 1995

Endnote 5—Uncommenced amendments [none]

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 6—Modifications

Trade Marks Act 1995 219

Endnote 6—Modifications

Trade Marks Regulations 1995

ComLaw Authoritative Act C2014C00110

Endnotes

Endnote 7—Misdescribed amendments [none]

220 Trade Marks Act 1995

Endnote 7—Misdescribed amendments [none]

Endnote 8—Miscellaneous [none]

ComLaw Authoritative Act C2014C00110