Trade Marks Act 1995

In force

Administered by

Department of Industry, Science and Resources

Superseded version

View latest version

C2023C00351 (C42)

18 October 2023 - 17 November 2023

Table of contents

Part 1—Preliminary
- 1 Short title
- 2 Commencement
- 3 Act binds the Crown
- 4 Application of Act
- 4A Application of the Criminal Code
- 5 Repeal of Trade Marks Act 1994
Part 2—Interpretation
- 6 Definitions
- 6A Periods expressed in months
- 7 Use of trade mark
- 8 Definitions of authorised user and authorised use
- 9 Definition of applied to and applied in relation to
- 10 Definition of deceptively similar
- 11 Definition of pending
- 12 Definition of priority date
- 13 Definition of remove from the Register
- 14 Definition of similar goods and similar services
- 15 Definition of originate in relation to wine
- 16 Definition of repealed Act
Part 3—Trade marks and trade mark rights
- 17 What is a trade mark?
- 18 Certain signs not to be used as trade marks etc.
- 19 Certain trade marks may be registered
- 20 Rights given by registration of trade mark
- 21 Nature of registered trade mark as property
- 22 Power of registered owner to deal with trade mark
- 23 Limitation on rights if similar trade marks etc. registered by different persons
- 24 Trade mark consisting of sign that becomes accepted as sign describing article etc.
- 25 Trade mark relating to article etc. formerly manufactured under patent
- 26 Powers of authorised user of registered trade mark
Part 4—Application for registration
- Division 1—General
- Division 2—Grounds for rejecting an application
- 39 Trade mark containing etc. certain signs
- 40 Trade mark that cannot be represented graphically
- 41 Trade mark not distinguishing applicant’s goods or services
- 42 Trade mark scandalous or its use contrary to law
- 43 Trade mark likely to deceive or cause confusion
- 44 Identical etc. trade marks
- Division 3—Divisional applications
- 45 Divisional applications
- 46 Rules relating to divisional applications
- Division 4—Application for registration of series of trade marks
- 51 Application—series of trade marks
- 51A Linking series applications
Part 5—Opposition to registration
- Division 1—General
- Division 2—Grounds for opposing registration
Part 6—Amendment of application for registration of a trade mark and other documents
- 63 Amendment of application for registration of trade mark
- 64 Amendment before particulars of application are published
- 65 Amendment after particulars of application have been published—request for amendment not advertised
- 65A Amendment after particulars of application have been published—request for amendment advertised
- 66 Amendment of other documents
- 66A Registrar may require certain requests to be in writing
- 67 Appeal
Part 7—Registration of trade marks
- Division 1—Initial registration
- Division 2—Renewal of registration (general)
- Division 3—Renewal of registration (registration delayed for 10 or more years after filing date)
Part 8—Amendment, cancellation and revocation of registration
- Division 1—Action by Registrar
- Division 2—Action by court
- 85 Amendment to correct error or omission
- 86 Amendment or cancellation on ground of contravention of condition etc.
- 87 Amendment or cancellation—loss of exclusive rights to use trade mark
- 88 Amendment or cancellation—other specified grounds
- 88A Applications by Registrar
- 89 Rectification may not be granted in certain cases if registered owner not at fault etc.
- 90 Duties and powers of Registrar
- Division 3—Amendment of certificate of registration
- 91 Amendment of certificate of registration
Part 9—Removal of trade mark from Register for non use
- 92 Application for removal of trade mark from Register etc.
- 93 Time for making application
- 94 Referral to court
- 95 Notification of application
- 96 Notice of opposition
- 96A Circumstances in which opposition may proceed in name of a person other than the person who filed the notice
- 97 Removal of trade mark from the Register etc. if application unopposed etc.
- 98 Trade mark restored to Register if notice of opposition filed within extended time
- 99 Proceedings before Registrar
- 99A Dismissal of opposition filed with Registrar
- 100 Burden on opponent to establish use of trade mark etc.
- 101 Determination of opposed application—general
- 102 Determination of opposed application—localised use of trade mark
- 103 Registrar to comply with order of court
- 104 Appeal
- 105 Certificate—use of trade mark
Part 10—Assignment and transmission of trade marks
- 106 Assignment etc. of trade mark
- 107 Applications for record to be made of assignment etc. of trade mark whose registration is sought
- 108 Recording of assignment etc. of trade mark whose registration is sought
- 109 Application for record of assignment etc. of registered trade mark to be entered in Register
- 110 Recording of assignment etc. of registered trade mark
- 111 Notification of application to be given to person recorded as claiming interest in trade mark etc.
Part 11—Voluntary recording of claims to interests in and rights in respect of trade marks
- Division 1—Preliminary
  - 112 Object of Part
- Division 2—Interests in, and rights in respect of, registered trade marks
- Division 3—Interests in, and rights in respect of, unregistered trade marks
Part 12—Infringement of trade marks
- 120 When is a registered trade mark infringed?
- 121 Infringement of trade mark by breach of certain restrictions
- 122 When is a trade mark not infringed?
- 122A Exhaustion of a registered trade mark in relation to goods
- 123 Services to which registered trade mark has been applied by or with consent of registered owner
- 124 Prior use of identical trade mark etc.
- 125 What courts may hear action for infringement of registered trade mark
- 126 What relief can be obtained from court
- 127 Special case—plaintiff not entitled to damages etc.
- 128 Circumstances in which action may not be brought
- 129 Application for relief from unjustified threats
- 130 Counterclaim for infringement
- 130A Mere notification of registered trade mark not a threat
Part 13—Importation of goods infringing Australian trade marks
- 131 Object of Part
- 132 Notice of objection to importation
- 133 Comptroller General of Customs may seize goods infringing trade mark
- 133A Determinations about owners of goods
- 134 Notice of seizure
- 134A Inspection, release etc. of seized goods
- 135 Consent to forfeiture of seized goods
- 136 Claim for release of seized goods
- 136A Seized goods not claimed are forfeited
- 136B Late claim for release of seized goods
- 136C Objector to be notified of claim
- 136D Release of seized goods
- 136E Goods released but not collected are forfeited
- 137 Action for infringement of trade mark
- 138 Action for infringement by authorised user
- 139 Disposal of seized goods forfeited to the Commonwealth
- 140 Power of Comptroller General of Customs to retain control of goods
- 141 Insufficient security
- 141A Failure to comply with undertaking etc.
- 142 Commonwealth not liable for loss etc. suffered because of seizure
- 143 Power to require information
- 144 Modification in relation to Norfolk Island etc.
Part 14—Offences
- 145 Falsifying or removing a registered trade mark
- 146 Falsely applying a registered trade mark
- 147 Making a die etc. for use in trade marks offence
- 147A Drawing etc. trade marks for use in offence
- 147B Possessing or disposing of things for use in trade marks offence
- 148 Goods with false trade marks
- 150 Aiding and abetting offences
- 151 False representations regarding trade marks
- 152 False entries in Register etc.
- 153 Disobeying summons etc.
- 154 Refusing to give evidence etc.
- 156 Acting or holding out without being registered
- 157 False representation about Trade Marks Office
- 157A Incorporated trade marks attorney must have a trade marks attorney director
- 159 Forfeiture orders under the proceeds of crime legislation
- 160 Conduct of employees and agents of natural persons
Part 15—Collective trade marks
- 161 Object of Part
- 162 What is a collective trade mark?
- 163 Application of Act
- 164 Application for registration
- 165 Limitation on rights given by registered collective trade mark
- 166 Assignment etc. of collective trade mark
- 167 Infringement of collective trade mark
Part 16—Certification trade marks
- 168 Object of Part
- 169 What is a certification trade mark?
- 170 Application of Act
- 171 Rights given by registration of a certification trade mark
- 172 Rights of persons allowed to use certification trade mark
- 173 Rules governing the use of certification trade marks
- 174 Registrar to send documents to Commission
- 175 Certificate by Commission
- 176 Acceptance or rejection of application
- 177 Additional ground for rejecting an application or opposing registration—certification trade mark not distinguishing certified goods or services
- 178 Variation of rules
- 179 Registrar must publish rules
- 180 Assignment of registered certification trade mark
- 180A Assignment of unregistered certification trade mark
- 181 Rectification of the Register by order of court
- 182 Variation of rules by order of court
- 183 Delegation of Commission’s powers and functions
Part 17—Defensive trade marks
- 184 Object of Part
- 185 Defensive trade marks
- 186 Application of Act
- 187 Additional grounds for rejecting application for registration or opposing registration
- 189 Cancellation of registration by Registrar
Part 17A—Protected international trade marks under the Madrid Protocol
- 189A Regulations implementing the Madrid Protocol
Part 18—Jurisdiction and powers of courts
- 190 Prescribed courts
- 191 Jurisdiction of the Federal Court
- 191A Jurisdiction of the Federal Circuit and Family Court of Australia (Division 2)
- 192 Jurisdiction of other prescribed courts
- 193 Exercise of jurisdiction
- 194 Transfer of proceedings
- 195 Appeals
- 196 Registrar may appear in appeals
- 197 Powers of Federal Court and Federal Circuit and Family Court of Australia (Division 2) on hearing an appeal
- 198 Practice and procedure of prescribed courts
Part 19—Administration
- 199 Trade Marks Office and sub offices
- 200 Seal of Trade Marks Office
- 201 Registrar of Trade Marks
- 202 Registrar’s powers
- 203 Exercise of power by Registrar
- 204 Registrar to act as soon as practicable
- 205 Deputy Registrar of Trade Marks
- 206 Delegation of Registrar’s powers and functions
Part 20—The Register and official documents
- 207 The Register
- 208 Register may be kept on computer
- 209 Inspection of Register
- 210 Evidence—the Register
- 211 Evidence—certified copies of documents
Part 21—Miscellaneous
- Division 1—Applications and other documents
- Division 2—Proceedings before the Registrar or a court
- Division 2A—Computerised decision making
  - 222A Computerised decision making
- Division 3—General
Part 22—Repeal and transitional
- Division 1—Repeal
  - 232 Repeal
- Division 2—Marks registered under the repealed Act
- Division 3—Matters pending immediately before repeal of repealed Act
- Division 4—General
Endnotes
- Endnote 1—About the endnotes
- Endnote 2—Abbreviation key
- Endnote 3—Legislation history
- Endnote 4—Amendment history

Trade Marks Act 1995

Legislation text