Trade Marks Act 1995

Act No. 119 of 1995 as amended

This compilation was prepared on 27 March 2007
taking into account amendments up to Act No. 114 of 2006

The text of any of those amendments not in force
on that date is appended in the Notes section

The operation of amendments that have been incorporated may be
affected by application provisions that are set out in the Notes section

Prepared by the Office of Legislative Drafting and Publishing,
Attorney-General’s Department, Canberra

  

  

  

READER’S GUIDE

This guide aims to give you a general idea of the purpose of this Act and some information about its structure. It also explains briefly how the operation and interpretation of this Act is affected by other Acts.

Purpose of this Act

This Act provides for the registration of trade marks, collective trade marks, certification trade marks and defensive trade marks (for a definition of these terms, see sections 17, 162, 169 and 185 respectively) and sets out and protects the rights deriving from registration.

It is a rewrite of the legislation relating to trade marks, certification trade marks and defensive trade marks. The previous Act did not deal with collective trade marks.

In rewriting the legislation, some changes have been made to reflect international trends towards greater uniformity in that field of law. In particular, this Act conforms with the minimum standards and principles prescribed for trade marks in the Agreement Establishing the World Trade Organization.

An attempt has also been made to simplify the language as much as possible to make it easier for readers to understand the law. For that reason, a number of terms used in the old legislation have been replaced by simpler ones. For example, the word “owner” has been used where the previous Act referred to the proprietor of a trade mark. No difference in meaning is intended when simpler terms have thus been used.

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.

Parts 4 and 5:             Deal with the steps that you have to take to have a trade mark registered.

Part 6:                       Sets out how and why an application for registration and other documents may be amended.

Parts 7, 8 and 9:         Deal with the registration of trade marks and how and why particulars of the registration of a trade mark may be amended, cancelled or removed from the Register.

Parts 10 and 11:         Deal with the assignment of trade marks, the registration of assignments of registered trade marks and the recording of the rights and interests that persons (other than registered owners) may have in registered trade marks or trade marks whose registration is being sought.

Parts 12, 13 and 14:    Deal with the protection of trade marks. Part 12 sets out what constitutes an infringement of a trade mark and how to obtain redress and relief in cases of infringement. Part 13 provides for a special regime to deal with any importation of goods that would infringe a registered trade mark. Part 14 makes certain types of conduct offences against this Act.

Parts 15, 16 and 17:    Explain what are collective trade marks, certification trade marks and defensive trade marks and apply to them, with necessary alterations, the provisions of this Act relating to trade marks.

Part 17A:                   Enables the making of regulations to enable the performance of the obligations of Australia, or to obtain for Australia any advantage or benefit, under the Madrid Protocol. Those regulations prevail over this Act to the extent of any inconsistency.

Part 18:                      Deals with the jurisdiction of the courts to hear and determine matters arising under this Act.

Parts 19 and 20:         Deal with the Trade Marks Office, the officials responsible for its administration and the keeping of the Register of Trade Marks.

Part 21:                      Deals with miscellaneous matters such as the payment of fees, the service of documents and the making of regulations.

Part 22:                             Repeals the Trade Marks Act 1955 and explains how matters that were being dealt with under that Act at the time of its repeal are to be dealt with when this Act is in force.

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.

Acts Interpretation Act 1901

That Act contains general rules about the meaning or effect of many terms and provisions that are commonly used in Commonwealth Acts. Some of the notes used in this Act draw your attention to some of them, but it is not possible to refer to all of them.

Crimes Act 1914

In Parts 13 and 14, you will find that a penalty, expressed as imprisonment for a particular period or a number of penalty units, is set out at the foot of some sections or subsections. Section 4D of the Crimes Act 1914 provides that this indicates that any contravention of the section or subsection is an offence against this Act punishable upon conviction by a penalty not exceeding the penalty set out.

If only a term of imprisonment is provided as the penalty for an offence, subsections 4B(2) and 4B(3) of the Crimes Act 1914 allow a court to impose an appropriate fine instead of, or in addition to, the term of imprisonment.

Section 4AA of the Crimes Act 1914 sets out the amount of a penalty unit. Under subsection 4B(3) of that Act a court may impose on a body corporate convicted of an offence a fine of up to 5 times the amount of the fine that could be imposed on a natural person convicted of that offence.

Criminal Code

The Criminal Code is set out in the Schedule to the Criminal Code Act 1995. It contains many general rules that apply to offences. Chapter 2 of the Criminal Code sets out the general principles of criminal responsibility. For example, it has default fault elements that apply to offences that do not specify a fault element and provides the consequences of an offence being an offence of strict liability.

Trade Marks Act 1955

That Act is repealed by this Act. It contained the legislation that previously applied to trade marks, certification trade marks and defensive trade marks. Even though it is repealed, this Act provides that some of the provisions of that Act are to continue to apply to certain matters that were being dealt with under that Act immediately before it was repealed.

The list of Acts cited above is not exhaustive. Other Acts may also affect the operation or interpretation of this Act.

Contents

Part 1—Preliminary                                                                                                               1

1............ Short title [see Note 1]....................................................................... 1

2............ Commencement [see Note 1].............................................................. 1

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

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

4A......... Application of the Criminal Code...................................................... 1

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

Part 2—Interpretation                                                                                                          3

6............ Definitions.......................................................................................... 3

6A......... Periods expressed in months.............................................................. 8

7............ Use of trade mark............................................................................... 8

8............ Definitions of authorised user and authorised use............................. 9

9............ Definition of applied to and applied in relation to............................ 10

10.......... Definition of deceptively similar....................................................... 11

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

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

13.......... Definition of remove from the Register............................................ 12

14.......... Definition of similar goods and similar services............................. 12

15.......... Definition of originate in relation to wine........................................ 13

16.......... Definition of repealed Act................................................................. 13

Part 3—Trade marks and trade mark rights                                                         14

17.......... What is a trade mark?....................................................................... 14

18.......... Certain signs not to be used as trade marks etc................................ 14

19.......... Certain trade marks may be registered.............................................. 14

20.......... Rights given by registration of trade mark........................................ 15

21.......... Nature of registered trade mark as property.................................... 15

22.......... Power of registered owner to deal with trade mark.......................... 16

23.......... Limitation on rights if similar trade marks etc. registered by different persons      16

24.......... Trade mark consisting of sign that becomes accepted as sign describing article etc.               16

25.......... Trade mark relating to article etc. formerly manufactured under patent  17

26.......... Powers of authorised user of registered trade mark.......................... 18

Part 4—Application for registration                                                                           20

Division 1—General                                                                                                    20

27.......... Application—how made.................................................................. 20

28.......... Application by joint owners............................................................ 21

29.......... Application for registration of trade mark whose registration has been sought in a Convention country—claim for priority............................................................................................. 21

30.......... Particulars of application to be published........................................ 22

31.......... Registrar to examine, and report on, application.............................. 22

32.......... Registrar to decide on disputed classification of goods etc.............. 22

33.......... Application accepted or rejected...................................................... 23

34.......... Notice etc. of decision...................................................................... 23

35.......... Appeal.............................................................................................. 23

36.......... Deferment of acceptance.................................................................. 24

37.......... Lapsing of application...................................................................... 24

38.......... Revocation of acceptance................................................................. 24

Division 2—Grounds for rejecting an application                                        25

39.......... Trade mark containing etc. certain signs........................................... 25

40.......... Trade mark that cannot be represented graphically.......................... 25

41.......... Trade mark not distinguishing applicant’s goods or services........... 25

42.......... Trade mark scandalous or its use contrary to law............................ 27

43.......... Trade mark likely to deceive or cause confusion.............................. 27

44.......... Identical etc. trade marks.................................................................. 28

Division 3—Divisional applications                                                                     30

45.......... Divisional applications..................................................................... 30

46.......... Rules relating to divisional applications........................................... 30

Division 4—Application for registration of series of trade marks      31

51.......... Application—series of trade marks.................................................. 31

51A....... Linking series applications............................................................... 31

Part 5—Opposition to registration                                                                              33

Division 1—General                                                                                                    33

52.......... Opposition....................................................................................... 33

53.......... Circumstances in which opposition may proceed in name of a person other than the person who filed the notice.......................................................................................................... 34

54.......... Opposition proceedings................................................................... 34

55.......... Decision............................................................................................ 34

56.......... Appeal.............................................................................................. 35

Division 2—Grounds for opposing registration                                            36

57.......... Registration may be opposed on same grounds as for rejection....... 36

58.......... Applicant not owner of trade mark.................................................. 36

58A....... Opponent’s earlier use of similar trade mark................................... 36

59.......... Applicant not intending to use trade mark....................................... 37

60.......... Trade mark similar to trade mark that has acquired a reputation in Australia         37

61.......... Trade mark containing or consisting of a false geographical indication 37

62.......... Application etc. defective etc........................................................... 39

62A....... Application made in bad faith.......................................................... 39

Part 6—Amendment of application for registration of a trade mark and other documents              40

63.......... Amendment of application for registration of trade mark................ 40

64.......... Amendment before particulars of application are published............ 40

65.......... Amendment after particulars of application have been published—request for amendment not advertised          40

65A....... Amendment after particulars of application have been published—request for amendment advertised 41

66.......... Amendment of other documents...................................................... 42

66A....... Registrar may require certain requests to be in writing.................... 42

67.......... Appeal.............................................................................................. 42

Part 7—Registration of trade marks                                                                         43

Division 1—Initial registration                                                                              43

68.......... Obligation to register........................................................................ 43

69.......... Registration—how effected.............................................................. 43

70.......... Colours in registered trade marks..................................................... 44

71.......... Notification of registration............................................................... 44

72.......... Date and term of registration............................................................ 44

73.......... Ceasing of registration...................................................................... 45

74.......... Disclaimers....................................................................................... 45

Division 2—Renewal of registration (general)                                              47

74A....... Application of this Division............................................................. 47

75.......... Request for renewal.......................................................................... 47

76.......... Notice of renewal due....................................................................... 47

77.......... Renewal before registration expires.................................................. 47

78.......... Failure to renew................................................................................ 48

79.......... Renewal within 6 months after registration expires......................... 48

80.......... Status of unrenewed trade mark....................................................... 48

Division 3—Renewal of registration (registration delayed for 10 or more years after filing date)         49

80A....... Application of this Division............................................................. 49

80B....... Expiry of registration........................................................................ 49

80C....... Notice about renewal........................................................................ 49

80D....... Request for renewal.......................................................................... 50

80E........ Renewal within prescribed period.................................................... 50

80F........ Failure to renew................................................................................ 50

80G....... Renewal within 10 months after end of prescribed period............... 51

80H....... Status of unrenewed trade mark....................................................... 51

Part 8—Amendment, cancellation and revocation of registration             53

Division 1—Action by Registrar                                                                           53

Subdivision A—Amending Register                                                                      53

81.......... Correction of Register....................................................................... 53

82.......... Adaptation of classification.............................................................. 53

82A....... Linking series registrations............................................................... 53

83.......... Amendment of particulars of trade mark entered in Register........... 54

Subdivision B—Cancelling registration                                                              55

84.......... Cancellation of registration............................................................... 55

Subdivision C—Revoking registration                                                                 55

84A....... Registration may be revoked............................................................ 55

84B....... Registration must be revoked if opposition was ignored in registration process    57

84C....... Effect of revocation of registration................................................... 57

84D....... Appeal from revocation of registration............................................ 58

Division 2—Action by court                                                                                    59

85.......... Amendment to correct error or omission.......................................... 59

86.......... Amendment or cancellation on ground of contravention of condition etc.              59

87.......... Amendment or cancellation—loss of exclusive rights to use trade mark 59

88.......... Amendment or cancellation—other specified grounds..................... 60

88A....... Applications by Registrar................................................................ 61

89.......... Rectification may not be granted in certain cases if registered owner not at fault etc.            61

90.......... Duties and powers of Registrar........................................................ 62

Division 3—Amendment of certificate of registration                              63

91.......... Amendment of certificate of registration.......................................... 63

Part 9—Removal of trade mark from Register for non‑use                         64

92.......... Application for removal of trade mark from Register etc................. 64

93.......... Time for making application............................................................. 65

94.......... Referral to court................................................................................ 66

95.......... Notification of application............................................................... 66

96.......... Notice of opposition........................................................................ 66

96A....... Circumstances in which opposition may proceed in name of a person other than the person who filed the notice.......................................................................................................... 67

97.......... Removal of trade mark from the Register etc. if application unopposed                67

98.......... Trade mark restored to Register if notice of opposition filed within extended time               67

99.......... Proceedings before Registrar............................................................. 68

100........ Burden on opponent to establish use of trade mark etc................... 68

101........ Determination of opposed application—general.............................. 70

102........ Determination of opposed application—localised use of trade mark 71

103........ Registrar to comply with order of court........................................... 72

104........ Appeal.............................................................................................. 72

105........ Certificate—use of trade mark.......................................................... 72

Part 10—Assignment and transmission of trade marks                                  74

106........ Assignment etc. of trade mark.......................................................... 74

107........ Applications for record to be made of assignment etc. of trade mark whose registration is sought        74

108........ Recording of assignment etc. of trade mark whose registration is sought                75

109........ Application for record of assignment etc. of registered trade mark to be entered in Register 75

110........ Recording of assignment etc. of registered trade mark...................... 75

111........ Notice of application to be given to person recorded as claiming interest in trade mark etc.  76

Part 11—Voluntary recording of claims to interests in and rights in respect of trade marks         77

Division 1—Preliminary                                                                                            77

112........ Object of Part................................................................................... 77

Division 2—Interests in, and rights in respect of, registered trade marks         78

113........ Application to have claims to interest etc. recorded........................ 78

114........ Record of claims to interest etc........................................................ 78

115........ Amendment and cancellation............................................................ 78

116........ Record not proof etc. of existence of right etc.................................. 79

Division 3—Interests in, and rights in respect of, unregistered trade marks   80

117........ Application to have claims to interest etc. recorded........................ 80

118........ Record of claims to interest etc........................................................ 80

119........ Amendment and cancellation............................................................ 80

Part 12—Infringement of trade marks                                                                      81

120........ When is a registered trade mark infringed?....................................... 81

121........ Infringement of trade mark by breach of certain restrictions............ 82

122........ When is a trade mark not infringed?................................................. 84

123........ Goods etc. to which registered trade mark has been applied by or with consent of registered owner    85

124........ Prior use of identical trade mark etc................................................. 85

125........ What courts may hear action for infringement of registered trade mark  86

126........ What relief can be obtained from court............................................. 86

127........ Special case—plaintiff not entitled to damages etc.......................... 86

128........ Circumstances in which action may not be brought......................... 87

129........ Groundless threats of legal proceedings........................................... 87

130........ Counterclaim by defendant in action on groundless threats............. 89

Part 13—Importation of goods infringing Australian trade marks           90

131........ Object of Part................................................................................... 90

132........ Notice of objection to importation................................................... 90

133........ Customs CEO may seize goods infringing trade mark..................... 91

133A..... Determinations about owners of goods............................................ 92

134........ Notice of seizure............................................................................... 93

135........ Forfeiture of goods........................................................................... 93

136........ Release of goods to owner—no action for infringement................... 94

137........ Action for infringement of trade mark.............................................. 95

138........ Action for infringement by authorised user...................................... 96

139........ Forfeited goods—how to be disposed of......................................... 97

140........ Power of Customs CEO to retain control of goods.......................... 97

141........ Insufficient security.......................................................................... 97

141A..... Failure to comply with undertaking etc............................................ 98

142........ Commonwealth not liable for loss etc. suffered because of seizure. 98

143........ Power to require information............................................................ 98

144........ Modification in relation to Norfolk Island etc.................................. 99

Part 14—Offences                                                                                                              100

145........ Falsifying etc. a registered trade mark............................................ 100

146........ Falsely applying a registered trade mark........................................ 101

147........ Manufacture and possession of die etc. for use in commission of offence              101

148........ Selling etc. goods with false marks................................................. 102

149........ Penalty for offence under section 145, 146, 147 or 148................. 103

150........ Aiding and abetting offences........................................................... 103

151........ False representations regarding trade marks................................... 103

152........ False entries in Register etc............................................................ 105

153........ Disobeying summons etc................................................................ 105

154........ Refusing to give evidence etc.......................................................... 106

156........ Unregistered persons...................................................................... 106

157........ False representation about Trade Marks Office............................. 108

159........ Forfeiture orders under the proceeds of crime legislation............... 108

160........ Conduct of employees and agents of natural persons.................... 109

Part 15—Collective trade marks                                                                                111

161........ Object of Part................................................................................. 111

162........ What is a collective trade mark?..................................................... 111

163........ Application of Act......................................................................... 111

164........ Application for registration............................................................ 112

165........ Limitation on rights given by registered collective trade mark....... 112

166........ Assignment etc. of collective trade mark........................................ 112

167........ Infringement of collective trade mark............................................. 112

Part 16—Certification trade marks                                                                          113

168........ Object of Part................................................................................. 113

169........ What is a certification trade mark?................................................. 113

170........ Application of Act......................................................................... 113

171........ Rights given by registration of a certification trade mark............... 114

172........ Rights of persons allowed to use certification trade mark.............. 114

173........ Rules governing the use of certification trade marks...................... 114

174........ Registrar to send documents to Commission................................. 115

175........ Certificate by Commission............................................................. 115

176........ Acceptance or rejection of application........................................... 116

177........ Additional ground for rejecting an application or opposing registration—certification trade mark not distinguishing certified goods or services............................................................... 117

178........ Variation of rules............................................................................ 117

179........ Registrar must publish rules........................................................... 118

180........ Assignment of registered certification trade mark.......................... 118

180A..... Assignment of unregistered certification trade mark...................... 118

181........ Rectification of the Register by order of court............................... 119

182........ Variation of rules by order of court................................................ 120

183........ Delegation of Commission’s powers and functions....................... 120

Part 17—Defensive trade marks                                                                               121

184........ Object of Part................................................................................. 121

185........ Defensive trade marks.................................................................... 121

186........ Application of Act......................................................................... 122

187........ Additional grounds for rejecting application for registration or opposing registration            122

189........ Cancellation of registration by Registrar........................................ 122

Part 17A—Protected international trade marks under the Madrid Protocol            123

189A..... Regulations implementing the Madrid Protocol............................. 123

Part 18—Jurisdiction and powers of courts                                                          125

190........ Prescribed courts............................................................................ 125

191........ Jurisdiction of the Federal Court.................................................... 125

192........ Jurisdiction of other prescribed courts........................................... 125

193........ Exercise of jurisdiction.................................................................... 126

194........ Transfer of proceedings.................................................................. 126

195........ Appeals.......................................................................................... 126

196........ Registrar may appear in appeals.................................................... 127

197........ Powers of Federal Court................................................................. 127

198........ Practice and procedure of prescribed courts................................... 127

Part 19—Administration                                                                                                  128

199........ Trade Marks Office and sub‑offices............................................... 128

200........ Seal of Trade Marks Office............................................................ 128

201........ Registrar of Trade Marks............................................................... 128

202........ Registrar’s powers.......................................................................... 128

203........ Exercise of power by Registrar....................................................... 128

204........ Registrar to act as soon as practicable............................................ 129

205........ Deputy Registrar of Trade Marks.................................................. 129

206........ Delegation of Registrar’s powers and functions............................. 129

Part 20—The Register and official documents                                                  131

207........ The Register.................................................................................... 131

208........ Register may be kept on computer................................................. 131

209........ Inspection of Register..................................................................... 132

210........ Evidence—the Register................................................................... 132

211........ Evidence—certified copies of documents....................................... 132

Part 21—Miscellaneous                                                                                                  134

Division 1—Applications and other documents                                         134

212........ Making and signing applications etc............................................... 134

213........ Filing of documents........................................................................ 134

214........ Withdrawal of application etc........................................................ 134

215........ Address for service......................................................................... 135

216........ Change of name............................................................................... 136

217........ Death of applicant etc.................................................................... 137

217A..... Prescribed documents relating to trade marks to be made available for public inspection      137

Division 2—Proceedings before the Registrar or a court                    138

218........ Description of registered trade mark.............................................. 138

219........ Evidence of trade usage................................................................... 138

220........ Death of party to proceeding before Registrar............................... 138

221........ Costs awarded by Registrar............................................................ 138

222........ Security for costs............................................................................ 139

Division 3—General                                                                                                  140

223........ Fees................................................................................................. 140

223A..... Doing act when Trade Marks Office reopens after end of period otherwise provided for doing act      140

224........ Extension of time............................................................................ 141

225........ Convention countries...................................................................... 143

226........ Publication of Official Journal etc.................................................. 143

226A..... Requirements for confidential treatment of information held in the Trade Marks Office       144

226B..... Certain proceedings do not lie........................................................ 144

227........ Notice regarding review of decision by Administrative Appeals Tribunal              144

228........ Use of trade mark for export trade................................................. 145

228A..... Registration of trade marks attorneys............................................ 145

228B..... Deregistration of trade marks attorneys......................................... 147

229........ Privileges of trade marks attorney and patent attorney................. 147

230........ Passing off actions.......................................................................... 147

231........ Regulations..................................................................................... 148

Part 22—Repeal and transitional                                                                               151

Division 1—Repeal                                                                                                    151

232........ Repeal............................................................................................. 151

Division 2—Marks registered under the repealed Act                         152

233........ Automatic registration under this Act............................................ 152

234........ Registration conclusive after 7 years.............................................. 152

235........ Term of registration........................................................................ 153

236........ Renewal.......................................................................................... 153

237........ Restoration of particulars to Register and renewal of registration where registration expired within 12 months before 1 January 1996............................................................................... 154

238........ Disclaimers..................................................................................... 154

239........ Rules governing the use of certification trade marks registered in Part C of the old register   154

239A..... Linked trade marks......................................................................... 155

Division 3—Matters pending immediately before repeal of repealed Act           156

240........ Applications, notices etc.—general................................................ 156

241........ Application for registration of trade mark...................................... 156

242........ Divisional application in relation to pending application............... 158

243........ More than one application lodged on same day for registration of same trade mark              159

244........ Application for registration of trade mark whose registration has been sought in Convention country 160

245........ Application for registration of a mark in Part C of the old register 161

246........ Application for registration of a mark in Part D of the old register 161

247........ Amendment of application—specification of goods or services.... 161

248........ Revival of application for registration of trade mark that had lapsed before 1 January 1996 162

249........ Application for registration of assignment etc............................... 163

250........ Rectification of Register................................................................. 163

251........ Action for removal of trade mark from Register for non‑use......... 163

252........ Action for infringement of trade mark etc...................................... 164

253........ Action under this Act for infringement of trade mark under repealed Act              164

254........ Acts not constituting infringement of existing registered mark...... 164

254A..... Acts not constituting infringement of trade mark—pending application under the repealed Act           165

254B..... Part B defence—infringement of existing registered mark.............. 165

254C..... Part B defence—infringement of trade mark (pending application under the repealed Act)   166

255........ Application of this Act—general................................................... 167

256........ Fees................................................................................................. 167

Division 4—General                                                                                                  168

257........ The Registrar and Deputy Registrar............................................... 168

258........ Confidential information received by Registrar under section 74 of the repealed Act            168

259........ Documents kept under repealed Act.............................................. 168

260........ Address for service......................................................................... 168

261........ Notices to Customs CEO objecting to importation of goods......... 169

Notes                                                                                                                                          171

List of terms defined in section 6

applicant applied to applied in relation to approved form assignment Australia Australian continental shelf authorised use authorised user certification trade mark collective trade mark Commission Convention country Customs CEO date of registration deceptively similar defensive trade mark Deputy Registrar designated owner divisional application employee examine existing registered mark Federal Court file filing date geographical indication goods of a person lawyer limitations month notified trade mark objector

Official Journal old register opponent originate patent attorney pending person predecessor in title prescribed court priority date Register registered owner registered trade mark registered trade marks attorney Registrar registration number remove from the Register repealed Act seized goods services of a person sign similar goods similar services this Act trade mark transmission use of a trade mark use of a trade mark in relation to goods use of a trade mark in relation to services word working day

 

An Act relating to trade marks

Part 1—Preliminary

  

1  Short title [see Note 1]

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

2  Commencement [see Note 1]

             (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.

4A  Application of the Criminal Code

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

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

5  Repeal of Trade Marks Act 1994

                   The Trade Marks Act 1994 is repealed.

 

Part 2—Interpretation

  

6  Definitions

                   In this Act, unless the contrary intention appears:

applicant, in relation to an application, means the person in whose name the application is for the time being proceeding.

applied to and applied in relation to have the respective meanings given in section 9.

approved form means a form approved by the Registrar for the purposes of the provision in which the expression appears.

assignment, in relation to a trade mark, means an assignment by act of the parties concerned.

Australia includes the following external Territories:

                     (a)  Christmas Island;

                     (b)  Cocos (Keeling) Islands;

                     (c)  Norfolk Island.

Australian continental shelf has the same meaning as in the Seas and Submerged Lands Act 1973.

authorised use, in relation to a trade mark, has the meaning given by section 8.

authorised user, in relation to a trade mark, has the meaning given by section 8.

certification trade mark has the meaning given by section 169.

collective trade mark has the meaning given by section 162.

Commission means the Australian Competition and Consumer Commission established under the Trade Practices Act 1974.

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

Customs CEO means the Chief Executive Officer of Customs.

date of registration means:

                     (a)  in relation to the registration of a trade mark in respect of particular goods or services other than a trade mark to which paragraph (b) applies—the day from which the registration of the trade mark in respect of those goods or services is taken to have had effect under subsection 72(1) or (2); or

                     (b)  in relation to a trade mark to which subsection 239A(3) applies—the day referred to in subsection 239A(4).

deceptively similar has the meaning given by section 10.

defensive trade mark has the meaning given by section 185.

Deputy Registrar means a Deputy Registrar of Trade Marks.

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

                     (a)  the person identified as the owner of the goods on the entry made in relation to the goods under section 68 of the Customs Act 1901; or

                     (b)  if no such entry exists—the person determined to be the owner of the goods under section 133A of this Act.

divisional application has the meaning given by section 45.

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

                     (a)  is a person engaged under the Public Service Act 1999 and is employed in the Trade Marks Office; or

                     (b)  is not such a person but performs services, in the Trade Marks Office, for or on behalf of the Commonwealth.

examine, in relation to an application for the registration of a trade mark, means to carry out an examination under section 31 in relation to the application.

existing registered mark means a mark that was registered in Part A, B, C or D of the old register before 1 January 1996 and whose registration under the repealed Act was due to expire after that day.

Federal Court means the Federal Court of Australia.

file means to file at the Trade Marks Office.

Note:          See section 213.

filing date means:

                     (a)  in relation to an application for the registration of a trade mark other than an application referred to in another paragraph of this definition—the day on which the application is filed; or

                     (b)  in relation to a divisional application for the registration of a trade mark—the filing date of the application that is the parent application (within the meaning of section 45) in relation to the divisional application; or

                     (c)  in relation to an application to which section 241 applies—the day referred to in subsection 241(5); or

                     (d)  in relation to an application made under section 243—the day referred to in subsection 243(6); or

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

geographical indication, in relation to goods originating in a particular country or in a region or locality of that country, means a sign recognised in that country as a sign indicating that the goods:

                     (a)  originated in that country, region or locality; and

                     (b)  have a quality, reputation or other characteristic attributable to their geographical origin.

goods of a person means goods dealt with or provided in the course of trade by the person.

lawyer means a barrister or solicitor of the High Court or of the Supreme Court of a State or Territory.

limitations means limitations of the exclusive right to use a trade mark given by the registration of the trade mark, including limitations of that right as to:

                     (a)  mode of use; or

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

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

month: the end of a period with a length expressed in months is worked out under section 6A.

notified trade mark means a trade mark in respect of which a notice under section 132 is in force.

objector, in relation to seized goods, means any person who has given under section 132 a notice in respect of those goods that is in force.

Official Journal means the Official Journal of Trade Marks mentioned in section 226.

old register means the Register of Trade Marks kept under the repealed Act.

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

                     (a)  the person who has filed (under section 52) a notice of opposition to the registration of the trade mark; or

                     (b)  if section 53 applies—a person in whose name the notice of opposition is taken to have been filed.

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

patent attorney means a person registered as a patent attorney under the Patents Act 1990.

pending, in relation to an application for the registration of a trade mark, has the meaning given by section 11.

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

predecessor in title, in relation to a person who claims to be the owner of a trade mark, means:

                     (a)  if the trade mark was assigned or transmitted to one or more than one other person before it was assigned or transmitted to the first‑mentioned person—that other person or any one of those other persons; or

                     (b)  if paragraph (a) does not apply—the person who assigned the trade mark, or from whom the trade mark was transmitted, to the first‑mentioned person.

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

prescribed court means a court that is under section 190 a prescribed court for the purposes of this Act.

priority date has the meaning given by section 12.

Register means the Register of Trade Marks kept under section 207.

registered owner, in relation to a registered trade mark, means the person in whose name the trade mark is registered.

registered trade mark means a trade mark whose particulars are entered in the Register under this Act.

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

registered trade marks attorney means a person registered as a trade marks attorney under this Act.

Registrar means the Registrar of Trade Marks.

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

registration number, in relation to a registered trade mark, means the number given to it under subsection 68(2).

remove from the Register, in relation to a trade mark, has the meaning given by section 13.

repealed Act has the meaning given by section 16.

seized goods means goods seized under section 133.

services of a person means services dealt with or provided in the course of trade by the person.

sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

similar goods has the meaning given by subsection 14(1).

similar services has the meaning given by subsection 14(2).

this Act includes the regulations.

trade mark has the meaning given by section 17.

transmission means:

                     (a)  transmission by operation of law; or

                     (b)  devolution on the personal representative of a deceased person; or

                     (c)  any other kind of transfer except assignment.

use of a trade mark has a meaning affected by subsections 7(1), (2) and (3).

use of a trade mark in relation to goods has the meaning given by subsection 7(4).

use of a trade mark in relation to services has the meaning given by subsection 7(5).

word includes an abbreviation of a word.

working day means a day that is not:

                     (a)  a Saturday; or

                     (b)  a Sunday; or

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

6A  Periods expressed in months

                   For the purposes of this Act, a period expressed in months and dating from an event ends:

                     (a)  on the day, in the relevant subsequent month, which has the same number as the day of the event; or

                     (b)  if the relevant subsequent month has no day with the same number—on the last day of the month.

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

7  Use of trade mark

             (1)  If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

Note:          For prescribed court see section 190.

             (2)  To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.

             (3)  An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

             (4)  In this Act:

use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods).

             (5)  In this Act:

use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.

8  Definitions of authorised user and authorised use

             (1)  A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

             (2)  The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

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

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

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

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

             (4)  If:

                     (a)  a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

                     (b)  the owner of the trade mark exercises financial control over the other person’s relevant trading activities;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

             (5)  Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).

9  Definition of applied to and applied in relation to

             (1)  For the purposes of this Act:

                     (a)  a trade mark is taken to be applied to any goods, material or thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing; and

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

                              (i)  if it is applied to any covering, document, label, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade; or

                             (ii)  if it is used in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services; and

                     (c)  a trade mark is taken also to be applied in relation to goods or services if it is used:

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

                             (ii)  in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;

                            and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used.

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

covering includes packaging, frame, wrapper, container, stopper, lid or cap.

label includes a band or ticket.

10  Definition of deceptively similar

                   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

11  Definition of pending

Application for registration under this Act

             (1)  An application for the registration of a trade mark under this Act is pending from the time it is filed until:

                     (a)  it lapses (see section 37), is withdrawn (see section 214) or is rejected (see section 33); or

                     (b)  if the Registrar refuses (under section 55) to register the trade mark and there is no appeal against the decision—the end of the period allowed for the appeal; or

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

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

                             (ii)  the decision is confirmed on appeal;

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

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

Note:          For file see section 6.

Application for registration under repealed Act

             (2)  An application for the registration of a trade mark under the repealed Act was pending immediately before 1 January 1996 if before that day:

                     (a)  the application had not lapsed (see subsection 48(1)), been withdrawn (see subsection 40A(1)) or refused (see subsection 44(1)); and

                     (b)  the Registrar had not refused (under section 50) to register the trade mark or if he or she had refused to register the trade mark:

                              (i)  the period allowed for appealing against the decision had not yet ended; or

                             (ii)  an appeal had been made against the decision but had not yet been decided; and

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

12  Definition of priority date

                   The priority date for the registration of a trade mark in respect of particular goods or services is:

                     (a)  if the trade mark is registered—the date of registration of the trade mark in respect of those goods or services; or

                     (b)  if the registration of the trade mark is being sought—the day that would be the date of registration of the trade mark in respect of those goods or services if the trade mark were registered.

13  Definition of remove from the Register

                   A trade mark is taken to have been removed from the Register if the Registrar makes an entry in the Register to the effect that all entries in the Register relating to the trade mark are taken to have been removed from the Register.

14  Definition of similar goods and similar services

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

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

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

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

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

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

15  Definition of originate in relation to wine

                   For the purposes of this Act:

                     (a)  a wine is taken to have originated in a foreign country or Australia only if the wine is made from grapes grown within the territory of that country or of Australia, as the case may be; and

                     (b)  a wine is taken to have originated in a particular region or locality of a foreign country or of Australia only if the wine is made from grapes grown in that region or locality.

16  Definition of repealed Act

             (1)  The repealed Act means:

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

                     (b)  the regulations under that Act that were in force immediately before its repeal.

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

             (2)  In this Act, unless the contrary intention appears, a reference to a particular section of the repealed Act includes a reference to the regulations made for the purposes of that section and that were in force immediately before that Act was repealed.

 

Part 3—Trade marks and trade mark rights

  

17  What is a trade mark?

                   A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

Note:          For sign see section 6.

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

             (1)  The regulations may provide that a sign specified in the regulations is not to be used as a trade mark or as part of a trade mark.

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

                     (a)  was a registered trade mark; or

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

immediately before the regulations were registered under the Legislative Instruments Act 1995.

Note:          For registered trade mark see section 6.

19  Certain trade marks may be registered

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

                     (a)  goods; or

                     (b)  services; or

                     (c)  both goods and services.

             (2)  The registration of a trade mark may be in respect of goods or services of more than one class.

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

             (3)  The regulations may provide for the classes into which goods and services are to be divided for the purposes of this Act.

20  Rights given by registration of trade mark

             (1)  If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights:

                     (a)  to use the trade mark; and

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

in relation to the goods and/or services in respect of which the trade mark is registered.

Note 1:       For registered owner see section 6.

Note 2:       For use see section 7.

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

             (2)  The registered owner of a trade mark has also the right to obtain relief under this Act if the trade mark has been infringed.

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

             (3)  The rights are taken to have accrued to the registered owner as from the date of registration of the trade mark.

Note:          For date of registration see section 6.

             (4)  If the trade mark is registered subject to conditions or limitations, the rights of the registered owner are restricted by those conditions or limitations.

Note:          For limitations see section 6.

             (5)  If the trade mark is registered in the name of 2 or more persons as joint owners of the trade mark, the rights granted to those persons under this section are to be exercised by them as if they were the rights of a single person.

21  Nature of registered trade mark as property

             (1)  A registered trade mark is personal property.

             (2)  Equities in respect of a registered trade mark may be enforced in the same way as equities in respect of any other personal property.

Note:          For registered trade mark see section 6.

22  Power of registered owner to deal with trade mark

             (1)  The registered owner of a trade mark may, subject only to any rights appearing in the Register to be vested in another person, deal with the trade mark as its absolute owner and give in good faith discharges for any consideration for that dealing.

             (2)  This section does not protect a person who deals with the registered owner otherwise than:

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

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

Note:          For registered owner see section 6.

             (3)  Equities in relation to a registered trade mark may be enforced against the registered owner, except to the prejudice of a purchaser in good faith for value.

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

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

                   If trade marks that are substantially identical or deceptively similar have been registered by more than one person (whether in respect of the same or different goods or services), the registered owner of any one of those trade marks does not have the right to prevent the registered owner of any other of those trade marks from using that trade mark except to the extent that the first‑mentioned owner is authorised to do so under the registration of his or her trade mark.

Note:          For deceptively similar see section 10.

24  Trade mark consisting of sign that becomes accepted as sign describing article etc.

             (1)  This section applies if a registered trade mark consists of, or contains, a sign that, after the date of registration of the trade mark, becomes generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service.

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

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

                     (a)  does not have any exclusive rights to use, or authorise other persons to use, the trade mark in relation to:

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

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

                     (b)  is taken to have ceased to have those exclusive rights from and including the day determined by the court under subsection (4).

Note:          For registered owner see section 6.

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

                     (a)  does not have any exclusive rights to use, or authorise other persons to use, the sign in relation to:

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

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

                     (b)  is taken to have ceased to have those exclusive rights from the day determined by the court under subsection (4).

Note:          For registered owner see section 6.

             (4)  For the purposes of subsections (2) and (3), a prescribed court may determine the day on which a sign first became generally accepted within the relevant trade as the sign that describes or is the name of the article, substance or service.

Note:          For prescribed court see section 190.

25  Trade mark relating to article etc. formerly manufactured under patent

             (1)  This section applies if:

                     (a)  a registered trade mark consists of, or contains, a sign that describes or is the name of:

                              (i)  an article or substance that was formerly exploited under a patent; or

                             (ii)  a service that was formerly provided as a patented process; and

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

                     (c)  the sign is the only commonly known way to describe or identify the article, substance or service.

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

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

                     (a)  does not have any exclusive rights to use, or authorise other persons to use, the trade mark in relation to:

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

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

                     (b)  is taken to have ceased to have those exclusive rights from the end of the period of 2 years after the patent expired or ceased.

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

                     (a)  does not have any exclusive rights to use, or authorise other persons to use, the sign in relation to:

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

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

                     (b)  is taken to have ceased to have those exclusive rights from the end of the period of 2 years after the patent expired or ceased.

26  Powers of authorised user of registered trade mark

             (1)  Subject to any agreement between the registered owner of a registered trade mark and an authorised user of the trade mark, the authorised user may do any of the following:

                     (a)  the authorised user may use the trade mark in relation to the goods and/or services in respect of which the trade mark is registered, subject to any condition or limitation subject to which the trade mark is registered;

                     (b)  the authorised user may (subject to subsection (2)) bring an action for infringement of the trade mark:

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

                             (ii)  during the prescribed period, if the registered owner refuses to bring such an action on a particular occasion during the prescribed period; or

                            (iii)  after the end of the prescribed period, if the registered owner has failed to bring such an action during the prescribed period;

                     (c)  the authorised user may cause to be displayed on goods in respect of which the trade mark is registered, or on their package, or on the container in which they are offered to the public, a notice prohibiting any act that is under subsection 121(2) a prohibited act in relation to the goods;

                     (d)  the authorised user may:

                              (i)  give to the Customs CEO a notice under section 132 objecting to the importation of goods that infringe the trade mark; or

                             (ii)  revoke such a notice;

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

                              (i)  to alter or deface; or

                             (ii)  to make any addition to; or

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

                            a registered trade mark that is applied to any goods, or in relation to any goods or services, in respect of which the trade mark is registered;

                      (f)  the authorised user may give permission to any person to apply the trade mark to goods, or in relation to goods or services, in respect of which the trade mark is registered.

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

Note 2:       For authorised user see section 8.

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

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

             (2)  If the authorised user brings an action for infringement of the trade mark, the authorised user must make the registered owner of the trade mark a defendant in the action. However, the registered owner is not liable for costs if he or she does not take part in the proceedings.

 

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

                     (b)  specify, in accordance with the regulations, the goods and/or services in respect of which it is sought to register the trade mark.

             (4)  Regulations made for the purposes of paragraph (3)(b) may apply, adopt or incorporate any matter contained in any listing of goods and/or services published by the Registrar from time to time and made available for inspection by the public at the Trade Marks Office and its sub‑offices.

             (5)  An application may be made in respect of goods and services of one or more of the classes provided for in regulations made under subsection 19(3).

28  Application by joint owners

                   If the relations between 2 or more persons interested in a trade mark are such that none of them is entitled to use the trade mark except:

                     (a)  on behalf of all of them; or

                     (b)  in relation to goods and/or services with which all of them are connected in the course of trade;

the persons may together apply for its registration under subsection 27(1).

29  Application for registration of trade mark whose registration has been sought in a Convention country—claim for priority

             (1)  If:

                     (a)  a person has made an application for the registration of a trade mark in one or more than one Convention country; and

                     (b)  within 6 months after the day on which that application, or the first of those applications, was made, that person or another person (successor in title) of whom that person is a predecessor in title applies to the Registrar for the registration of the trade mark in respect of some or all of the goods and/or services in respect of which registration was sought in that country or those countries;

that person or that person’s successor in title may, when filing the application, or within the prescribed period after filing the application but before the application is accepted, claim a right of priority for the registration of the trade mark in respect of any or all of those goods and/or services in accordance with the regulations.

Note:          For month see section 6.

             (2)  The priority claimed is for the registration of the trade mark in respect of the goods or services:

                     (a)  if an application to register the trade mark was made in only one Convention country—from (and including) the day on which the application was made in that country; or

                     (b)  if applications to register the trade mark were made in more than one Convention country—from (and including) the day on which the earliest of those applications was made.

             (3)  The regulations may provide for the filing of documents in support of a notice claiming priority and, in particular, for the filing of certified copies of any application for the registration of the trade mark made in a Convention country.

Note:          For Convention country see section 225.

30  Particulars of application to be published

                   The Registrar must publish the particulars of the application in accordance with the regulations.

31  Registrar to examine, and report on, application

                   The Registrar must, in accordance with the regulations, examine and report on:

                     (a)  whether the application has been made in accordance with this Act; and

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

Note:          For this Act see section 6.

32  Registrar to decide on disputed classification of goods etc.

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

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

                     (b)  the decision of the Registrar is not subject to appeal and may not be called into question in an appeal or other proceedings under this Act.

33  Application accepted or rejected

             (1)  The Registrar must, after the examination, accept the application unless he or she is satisfied that:

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

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

Note:          For this Act see section 6.

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

Note:          For limitations see section 6.

             (3)  If the Registrar is satisfied that:

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

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

the Registrar must reject the application.

Note:          For this Act see section 6.

             (4)  The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:          For applicant see section 6.

34  Notice etc. of decision

                   The Registrar must:

                     (a)  notify the applicant in writing of his or her decision under section 33; and

                     (b)  advertise the decision in the Official Journal.

Note:          For applicant see section 6.

35  Appeal

                   The applicant may appeal to the Federal Court against a decision of the Registrar:

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

                     (b)  to reject the application.

Note:          For applicant see section 6.

36  Deferment of acceptance

                   The Registrar may defer the acceptance of the application in the circumstances, and for the period, provided for in the regulations.

37  Lapsing of application

             (1)  Subject to subsection (2), an application lapses if it is not accepted within the prescribed period or within that period as extended in accordance with the regulations.

             (2)  If, after the prescribed period or the prescribed period as extended (as the case may be) has expired, the Registrar extends under section 224 the period within which the application may be accepted, the application:

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

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

38  Revocation of acceptance

             (1)  Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:

                     (a)  the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

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

             (2)  If the Registrar revokes the acceptance:

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

                     (b)  the Registrar must examine, and report on, the application as necessary under section 31; and

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

 

Division 2—Grounds for rejecting an application

39  Trade mark containing etc. certain signs

             (1)  An application for the registration of a trade mark must be rejected if the trade mark contains or consists of a sign that, under regulations made for the purposes of section 18, is not to be used as a trade mark.

             (2)  An application for the registration of a trade mark may be rejected if the trade mark contains or consists of:

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

                     (b)  a sign so nearly resembling:

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

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

as to be likely to be taken for it.

40  Trade mark that cannot be represented graphically

                   An application for the registration of a trade mark must be rejected if the trade mark cannot be represented graphically.

41  Trade mark not distinguishing applicant’s goods or services

             (1)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

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

Note 2:       If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

             (2)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

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

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

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

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

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

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

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

                            (iii)  any other circumstances;

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

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

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

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

Note 2:       Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

             (6)  If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

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

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

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

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

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

Note 2:       Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

42  Trade mark scandalous or its use contrary to law

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

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

                     (b)  its use would be contrary to law.

43  Trade mark likely to deceive or cause confusion

                   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

44  Identical etc. trade marks

             (1)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

                     (a)  the applicant’s trade mark is substantially identical with, or deceptively similar to:

                              (i)  a trade mark registered by another person in respect of similar goods or closely related services; or

                             (ii)  a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

                     (b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:       For deceptively similar see section 10.

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

Note 3:       For priority date see section 12.

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

             (2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

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

                              (i)  a trade mark registered by another person in respect of similar services or closely related goods; or

                             (ii)  a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

                     (b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1:       For deceptively similar see section 10.

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

Note 3:       For priority date see section 12.

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

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

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

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

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:          For limitations see section 6.

             (4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

                     (a)  beginning before the priority date for the registration of the other trade mark in respect of:

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

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

                     (b)  ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

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

Note 2:       For predecessor in title see section 6.

Note 3:       For priority date see section 12.

 

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.

 

Division 4—Application for registration of series of trade marks

51  Application—series of trade marks

             (1)  A person may make a single application under subsection 27(1) for the registration of 2 or more trade marks in respect of goods and/or services if the trade marks resemble each other in material particulars and differ only in respect of one or more of the following matters:

                     (a)  statements or representations as to the goods or services in relation to which the trade marks are used or are intended to be used;

                     (b)  statements or representations as to number, price, quality or names of places;

                     (c)  the colour of any part of the trade mark.

             (2)  If:

                     (a)  the application meets all the requirements of this Act; and

                     (b)  the Registrar is required (under section 68) to register the trade marks;

he or she must register them as a series in one registration.

51A  Linking series applications

             (1)  Subsection (2) applies if:

                     (a)  before the commencement of this section, 2 or more applications (series applications) were made each seeking the registration of the same 2 or more trade marks in respect of goods or services of different classes; and

                     (b)  the filing date of each of the series applications is the same; and

                     (c)  each of the trade marks has the same owner.

Note:          For filing date see section 6.

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

                     (a)  the series applications; or

                     (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.

 

Part 5—Opposition to registration

Division 1—General

52  Opposition

             (1)  If the Registrar has accepted an application for the registration of a trade mark, a person may oppose the registration by filing a notice of opposition.

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

Note:          For approved form and file see section 6.

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

Note:          For opponent see section 6.

             (4)  The registration of a trade mark may be opposed on any of the grounds specified in this Act and on no other grounds.

Note:          For this Act see section 6.

             (5)  If:

                     (a)  a person is granted an extension of time in which to file a notice of opposition; and

                     (b)  before the notice of opposition is filed, the right or interest on which the person could have relied to file the notice of opposition becomes vested in another person; and

                     (c)  the other person notifies the Registrar in writing that the right or interest is vested in him or her;

then:

                     (d)  the other person is taken to have been granted an extension of time in which to file the notice of opposition; and

                     (e)  that extension ends when the extension mentioned in paragraph (a) ends.

53  Circumstances in which opposition may proceed in name of a person other than the person who filed the notice

                   If:

                     (a)  after a person has filed a notice of opposition, the right or interest on which the person relied to file the notice of opposition becomes vested in another person; and

                     (b)  the other person:

                              (i)  notifies the Registrar in writing that the right or interest is vested in him or her; and

                             (ii)  does not withdraw the opposition;

the opposition is to proceed as if the notice of opposition had been filed in that other person’s name.

Note:          For file see section 6.

54  Opposition proceedings

             (1)  The Registrar must give to the opponent and to the applicant an opportunity of being heard on the opposition.

Note:          For opponent and applicant see section 6.

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

55  Decision

             (1)  Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

                     (a)  to refuse to register the trade mark; or

                     (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:          For limitations see section 6.

             (2)  Without limiting subsection (1), if the application was opposed on the ground specified in paragraph 62(a) (that the application, or a document filed in support of the application, was amended contrary to this Act), the Registrar may revoke the acceptance of the application and examine the application again under section 31.

Note:          For examine and this Act see section 6.

56  Appeal

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

Note:          For applicant and opponent see section 6.

 

Division 2—Grounds for opposing registration

57  Registration may be opposed on same grounds as for rejection

                   The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under this Act, except the ground that the trade mark cannot be represented graphically.

Note:          For this Act see section 6.

58  Applicant not owner of trade mark

                   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:          For applicant see section 6.

58A  Opponent’s earlier use of similar trade mark

             (1)  This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

                     (a)  subsection 44(4); or

                     (b)  a similar provision of the regulations made for the purposes of Part 17A.

Note:          Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.

             (2)  The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

                     (a)  first used the similar trade mark in respect of:

                              (i)  similar goods or closely related services; or

                             (ii)  similar services or closely related goods;

                            before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

                     (b)  has continuously used the similar trade mark in respect of those goods or services since that first use.

Note:          For predecessor in title see section 6.

59  Applicant not intending to use trade mark

                   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

                     (a)  to use, or authorise the use of, the trade mark in Australia; or

                     (b)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:          For applicant see section 6.

60  Trade mark similar to trade mark that has acquired a reputation in Australia

                   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

                     (a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

                     (b)  because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

Note:          For priority date see section 12.

61  Trade mark containing or consisting of a false geographical indication

             (1)  The registration of a trade mark in respect of particular goods (relevant goods) may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for goods (designated goods) originating in:

                     (a)  a country, or in a region or locality in a country, other than the country in which the relevant goods originated; or

                     (b)  a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated;

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

                     (b)  the sign has ceased to be used as a geographical indication for the designated goods in the country in which the designated goods originated; or

                     (c)  the applicant, or a predecessor in title of the applicant, used the sign in good faith in respect of the relevant goods, or applied in good faith for the registration of the trade mark in respect of the relevant goods, before:

                              (i)  1 January 1996; or

                             (ii)  the day on which the sign was recognised as a geographical indication for the designated goods in their country of origin;

                            whichever is the later; or

                     (d)  if the registration of the trade mark is being sought in respect of wine or spirits (relevant wine or spirits)—the sign is identical with the name that, on 1 January 1995, was, in the country in which the relevant wine or spirits originated, the customary name of a variety of grapes used in the production of the relevant wine or spirits.

             (3)  An opposition on a ground referred to in subsection (1) also fails if the applicant establishes that:

                     (a)  although the sign is a geographical indication for the designated goods, it is also a geographical indication for the relevant goods; and

                     (b)  the applicant has not used, and does not intend to use, the trade mark in relation to the relevant goods in a way that is likely to deceive or confuse members of the public as to the origin of the relevant goods.

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

Note 2:       For originate (in relation to wine only) see section 15.

62  Application etc. defective etc.

                   The registration of a trade mark may be opposed on any of the following grounds:

                     (a)  that the application, or a document filed in support of the application, was amended contrary to this Act;

                     (b)  that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.

Note:          For file see section 6.

62A  Application made in bad faith

                   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

 

Part 6—Amendment of application for registration of a trade mark and other documents

  

63  Amendment of application for registration of trade mark

             (1)  The Registrar may, at the request of the applicant or of his or her agent, amend an application for the registration of a trade mark in accordance with section 64, 65 or 65A.

             (2)  If:

                     (a)  an application for the registration of a trade mark may be amended under section 65; and

                     (b)  the applicant has not asked that the application be amended;

the Registrar may, on his or her own initiative but in accordance with the regulations, amend the application as necessary:

                     (c)  to remove any ground on which the application could be rejected; or

                     (d)  so as to ensure that the application is made in accordance with this Act.

64  Amendment before particulars of application are published

                   If:

                     (a)  the particulars of the application have not yet been published under section 30; and

                     (b)  the request for the amendment is made within the prescribed period;

an amendment may be made to correct a clerical error or an obvious mistake.

65  Amendment after particulars of application have been published—request for amendment not advertised

             (1)  If the particulars of the application have been published under section 30, the application may be amended as provided in this section.

             (2)  An amendment may be made to the representation of the trade mark if the amendment does not substantially affect the identity of the trade mark as at the time when the particulars of the application were published.

             (3)  An amendment may be made to an application to which section 51 applies to remove one or more trade marks from the application.

             (4)  An amendment may be made to correct an error in the classification of goods or services specified in the application.

             (5)  An amendment may be made to add to the class or classes of goods or services specified in the application one or more other classes of goods or services if the Registrar is of the opinion that it is fair and reasonable in all the circumstances to do so.

             (6)  An amendment may be made to change the type of registration sought in the application (for example, an application for the registration of a trade mark as a certification trade mark may be amended to an application for registration as a collective trade mark).

             (7)  An amendment may be made to any other particular specified in the application unless the amendment would have the effect of extending the rights that (apart from the amendment) the applicant would have under the registration if it were granted.

65A  Amendment after particulars of application have been published—request for amendment advertised

             (1)  This section applies if:

                     (a)  the particulars of the application have been published under section 30; and

                     (b)  the amendment requested is not an amendment which could be made under section 65.

             (2)  The application may be amended to correct a clerical error or an obvious mistake in the application if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to make the amendment under this section.

             (3)  Subject to subsection (5), the Registrar must advertise the request for the amendment in the Official Journal.

             (4)  Subject to subsection (5), a person may, as prescribed, oppose the granting of the request for the amendment.

             (5)  If the Registrar is satisfied that a request for an amendment would not be granted even in the absence of opposition under subsection (4):

                     (a)  the Registrar need not advertise the request in accordance with subsection (3); and

                     (b)  the request cannot be opposed, despite subsection (4); and

                     (c)  the Registrar must refuse to grant the request.

66  Amendment of other documents

                   The Registrar may, at the request of the person who has filed an application (other than an application for the registration of a trade mark), a notice or other document for the purposes of this Act or at the request of the person’s agent, amend the application, notice or document:

                     (a)  to correct a clerical error or an obvious mistake; or

                     (b)  if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.

Note:          For file see section 6.

66A  Registrar may require certain requests to be in writing

                   The Registrar may require a request under section 63 or 66 to be in writing if the Registrar is of the opinion that the amendment requested is not minor.

67  Appeal

                   An appeal lies to the Federal Court from a decision of the Registrar under this Part.

 

Part 7—Registration of trade marks

Division 1—Initial registration

68  Obligation to register

             (1)  The Registrar must, within the period provided under the regulations, register a trade mark that has been accepted for registration:

                     (a)  if there has been no opposition to the registration; or

                     (b)  in a case where there has been an opposition:

                              (i)  if the Registrar’s decision, or (in the case of an appeal against the Registrar’s decision) the decision on appeal, is that the trade mark should be registered; or

                             (ii)  if the opposition has been withdrawn; or

                            (iii)  if the opposition has been dismissed under section 222.

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

             (2)  On registering the trade mark, the Registrar must give it a number by which it may be identified.

69  Registration—how effected

             (1)  The trade mark must be registered:

                     (a)  in the name of the applicant for registration; and

                     (b)  in respect of the goods and/or services specified in the application at the time of registration; and

                     (c)  subject to the conditions (if any) and the limitations (if any) imposed by the Registrar in accepting the application for registration or deciding to register the trade mark.

The Registrar must enter these particulars in the Register.

             (2)  The Registrar must also enter in the Register:

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

                     (b)  its registration number; and

                     (c)  any other particulars that are required by this Act to be entered in the Register.

             (3)  If 2 or more persons applied together for the registration of the trade mark (see section 28), the applicants must be registered as joint owners of the trade mark.

Note:          For limitations, Registrar and applicant see section 6.

70  Colours in registered trade marks

             (1)  A trade mark may be registered with limitations as to colour.

             (2)  The limitations may be in respect of the whole, or a part, of the trade mark.

             (3)  To the extent that a trade mark is registered without limitations as to colour, it is taken to be registered for all colours.

Note:          For limitations see section 6.

71  Notification of registration

                   When a trade mark has been registered, the Registrar must:

                     (a)  advertise the registration in the Official Journal; and

                     (b)  give to the registered owner of the trade mark a certificate of registration in an approved form.

Note:          For registered owner and approved form see section 6.

72  Date and term of registration

             (1)  Subject to subsection (2), the registration of a trade mark in respect of the goods and/or services in respect of which the trade mark is registered is taken to have had effect from (and including) the filing date in respect of the application for registration.

Note:          For filing date see section 6.

             (2)  If:

                     (a)  the application was in respect of a trade mark whose registration had also been sought in one or more than one Convention country; and

                     (b)  the applicant claimed a right of priority under section 29 for the registration of the trade mark in respect of particular goods or services; and

                     (c)  the trade mark is registered under this Act;

the registration of the trade mark in respect of those goods or services is taken to have had effect:

                     (d)  if an application to register the trade mark was made in only one Convention country—from (and including) the day on which the application was made in that country; or

                     (e)  if applications to register the trade mark were made in more than one Convention country—from (and including) the day on which the earliest of those applications was made.

Note:          For Convention country see section 225.

             (3)  Unless it is earlier cancelled, or the trade mark is earlier removed from the Register, the registration of the trade mark expires 10 years after the filing date in respect of the application for its registration.

Note 1:       This is so even for a trade mark whose registration in respect of particular goods or services has effect from (and including) the day on which an application was made in a Convention country.

Note 2:       For filing date see section 6.

73  Ceasing of registration

                   The registration of a trade mark ceases if:

                     (a)  the trade mark is removed from the Register under section 78 or 80F or under Part 9; or

                     (b)  the registration of the trade mark is cancelled.

Note:          Section 84C explains the effect of revocation of the registration of a trade mark, applying some provisions as if the registration had ceased at a particular time (but for most purposes treating the registration as if it had never occurred).

74  Disclaimers

             (1)  An applicant for the registration of a trade mark, or the registered owner of a registered trade mark, may, by notice in writing given to the Registrar, disclaim any exclusive right to use, or authorise the use of, a specified part of the trade mark.

             (2)  The disclaimer affects only the rights given by this Act to the registered owner of the trade mark on registration of the trade mark.

             (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.

 

Division 2—Renewal of registration (general)

74A  Application of this Division

                   This Division applies to a registered trade mark if:

                     (a)  particulars of registration were entered in the Register under section 69 before the end of the period of 10 years after the filing date of the application for registration; or

                     (b)  both:

                              (i)  paragraph (a) does not apply; and

                             (ii)  registration has already been renewed under Division 3 for a period that includes the day on which particulars of registration were entered in the Register under section 69.

Note:          For filing date see section 6.

75  Request for renewal

             (1)  Any person may, within the prescribed period before the registration of a trade mark expires, ask the Registrar to renew the registration.

             (2)  The request must:

                     (a)  be in an approved form; and

                     (b)  be filed in accordance with the regulations.

76  Notice of renewal due

                   If, at the beginning of the prescribed period, the Registrar has not received a request for the renewal of the registration of the trade mark, the Registrar must, in accordance with the regulations, notify the registered owner of the trade mark that the renewal is due.

Note:          For registered owner see section 6.

77  Renewal before registration expires

             (1)  If a request for the renewal of the registration of a trade mark is made in accordance with section 75, the Registrar must renew the registration for a period of 10 years from the day on which the registration of the trade mark would expire if it were not renewed.

             (2)  The Registrar must give notice of the renewal to the registered owner of the trade mark in accordance with the regulations.

Note:          For registered owner see section 6.

78  Failure to renew

                   If the registration of a trade mark is not renewed under section 77, then:

                     (a)  subject to sections 79 and 80, the registration ceases to have effect when it expires; and

                     (b)  unless the registration is renewed under section 79, the Registrar must remove the trade mark from the Register 6 months after the day on which the registration expired.

Note:          For month and Register see section 6.

79  Renewal within 6 months after registration expires

                   If, within 6 months after the registration of a trade mark has expired, a person asks the Registrar, in accordance with subsection 75(2), to renew the registration of the trade mark, the Registrar must renew the registration of the trade mark for 10 years from the day on which the registration expired.

Note:          For month see section 6.

80  Status of unrenewed trade mark

                   If:

                     (a)  the registration of a trade mark (unrenewed trade mark) has not been renewed under section 77 or 79; and

                     (b)  an application for the registration of a trade mark is made, or has already been made, by a person other than the person who was registered as the owner of the unrenewed trade mark;

the unrenewed trade mark is taken to be a registered trade mark for the purposes of the application at any time when the registration of the unrenewed trade mark could have been renewed under section 79.

 

Division 3—Renewal of registration (registration delayed for 10 or more years after filing date)

80A  Application of this Division

             (1)  This Division applies to a registered trade mark if particulars of registration were entered in the Register under section 69 on a day (Register entry day) that occurs after the end of the period of 10 years after the filing date of the application for registration.

Note:          For filing date see section 6.

             (2)  For the purposes of this Division, each of the following is a potential renewal period in relation to the registered trade mark:

                     (a)  the period (first potential renewal period) of 10 years that commenced 10 years after the filing date of the application for registration;

                     (b)  any successive period of 10 years, being a period that commences before the Register entry day.

             (3)  For the purposes of this Division, the prescribed period is a period that:

                     (a)  is specified in the regulations; and

                     (b)  commences on the Register entry day.

80B  Expiry of registration

                   To avoid doubt, the registration of the trade mark is taken to have expired, in accordance with subsection 72(3), 10 years after the filing date of the application for registration.

Note:          For filing date see section 6.

80C  Notice about renewal

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

Note:          For registered owner see section 6.

80D  Request for renewal

             (1)  Any person may, within the prescribed period, ask the Registrar to renew, or successively renew, the registration of the trade mark for one or more potential renewal periods nominated in the request.

             (2)  The nomination must cover at least the first potential renewal period.

             (3)  If the nomination relates to more than one potential renewal period, the nomination must cover continuous periods.

             (4)  The request must:

                     (a)  be in an approved form; and

                     (b)  be filed in accordance with the regulations.

80E  Renewal within prescribed period

             (1)  If a request for the renewal of the registration of the trade mark is made in accordance with section 80D, the Registrar must renew, or successively renew, the registration for the potential renewal period or periods to which the request relates.

             (2)  The Registrar must give notice of the renewal or renewals to the registered owner of the trade mark in accordance with the regulations.

Note:          For registered owner see section 6.

80F  Failure to renew

                   If the registration of the trade mark is not renewed under section 80E, or is not renewed under section 80E for each of the potential renewal periods, then:

                     (a)  subject to sections 80G and 80H, the registration ceases to have effect:

                              (i)  if the registration was not renewed under section 80E—when it expired in accordance with section 72(3); or

                             (ii)  if the registration was renewed under section 80E for one or more potential renewal periods—at the end of the last of those periods; and

                     (b)  unless the registration is renewed under section 80G, the Registrar must remove the trade mark from the Register 10 months after the end of the prescribed period.

Note:          For month see section 6.

80G  Renewal within 10 months after end of prescribed period

             (1)  If:

                     (a)  the registration of the trade mark is not renewed under section 80E; and

                     (b)  within 10 months after the end of the prescribed period, a person asks the Registrar to renew, or successively renew, the registration of the trade mark for one or more potential renewal periods nominated in the request;

the Registrar must renew, or successively renew, the registration for the potential renewal period or periods to which the request relates.

Note:          For month see section 6.

             (2)  The nomination must cover at least the first potential renewal period.

             (3)  If the nomination relates to more than one potential renewal period, the nomination must cover continuous periods.

             (4)  The request must:

                     (a)  be in an approved form; and

                     (b)  be filed in accordance with the regulations.

80H  Status of unrenewed trade mark

                   If:

                     (a)  the registration of the trade mark is not renewed under section 80E; and

                     (b)  the registration of the trade mark (unrenewed trade mark) has not been renewed under section 80G; and

                     (c)  an application for the registration of a trade mark is made, or has already been made, by a person other than the person who was registered as the owner of the unrenewed trade mark;

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.

 

Part 8—Amendment, cancellation and revocation of registration

Division 1—Action by Registrar

Subdivision A—Amending Register

81  Correction of Register

                   The Registrar may, on his or her own initiative, correct any error or omission made in entering in the Register any particular in respect of the registration of a trade mark.

Note:          For Register see section 6.

82  Adaptation of classification

                   The Registrar may, in accordance with the regulations, amend the Register (whether by making, removing or altering entries) for the purpose of adapting the designation of the goods or services in respect of which trade marks are registered to reflect any change that has occurred in the classification of goods or services for the purposes of this Act.

Note 1:       For Register see section 6.

Note 2:       For the classification of goods and services see subsection 19(3).

82A  Linking series registrations

             (1)  Subsection (2) applies if:

                     (a)  before the commencement of this section, 2 or more applications were made each seeking the registration of the same 2 or more trade marks in respect of goods or services of different classes; and

                     (b)  the filing date of each of those applications is the same; and

                     (c)  the trade marks are registered trade marks for the purposes of this Act with the same registered owner.

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

             (2)  The registered owner may apply to the Registrar, in writing, to have those trade marks, or so many of those trade marks as are identified in the application to the Registrar, dealt with under this Act as if they were registered as a series in one registration in respect of all goods and services in respect of which the trade marks, or the identified trade marks, were registered.

Note:          For this Act and registered owner see section 6.

             (3)  If an application is made under subsection (2), the Registrar must deal with the trade marks, or the identified trade marks, as if they were one registration.

83  Amendment of particulars of trade mark entered in Register

             (1)  Subject to Part 11, the Registrar may, at the written request of the registered owner of a registered trade mark:

                     (a)  amend the representation of the trade mark as entered in the Register if the amendment does not substantially affect the identity of the trade mark as at the time when the particulars of the application for the registration of the trade mark were published under section 30; or

                     (b)  amend any particulars entered in the Register relating to any goods or services in respect of which the trade mark is registered if the amendment does not have the effect of extending the rights that (apart from the amendment) the owner has under the registration; or

                     (c)  amend, or enter in the Register, any other particular in respect of the trade mark if the amendment or entry does not have the effect of extending the rights that (apart from the amendment or entry) the owner has under the registration.

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

             (2)  An appeal lies to the Federal Court from a decision of the Registrar under subsection (1).

Note:          See sections 215 and 216 for amendments of the Register to record changes in addresses for service and in the names of registered owners etc.

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:

                     (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;

                     (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 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).

84D  Appeal from revocation of registration

                   An appeal lies to the Federal Court from a decision of the Registrar to revoke the registration of a trade mark under section 84A.

 

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.

             (2)  If section 24 or 25 applies in relation to the trade mark because the trade mark contains a sign that:

                     (a)  has become generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service; or

                     (b)  describes or is the name of:

                              (i)  an article or substance that was formerly exploited under a patent; or

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

the court may decide not to make an order under subsection (1) and allow the trade mark to remain on the Register in respect of:

                     (c)  the article or substance or goods of the same description; or

                     (d)  the service or services of the same description;

subject to any condition or limitation that the court may impose.

Note 1:       Sections 24 and 25 provide that the registered owner of a trade mark does not have exclusive rights to use, or to authorise the use of, the trade mark if it consists of, or contains, a sign that:

(a)  becomes generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service; or

(b)  is the only commonly known way to describe or identify an article formerly exploited under a patent, or a service formerly provided as a patented process, where the patent has expired more than 2 years ago.

Note 2:       For registered trade mark, registered owner and Register see section 6.

Note 3:       For prescribed court see section 190.

88  Amendment or cancellation—other specified grounds

             (1)  Subject to subsection (2) and section 89, a prescribed court may, on the application of an aggrieved person or the Registrar, order that the Register be rectified by:

                     (a)  cancelling the registration of a trade mark; or

                     (b)  removing or amending an entry wrongly made or remaining on the Register; or

                     (c)  entering any condition or limitation affecting the registration of a trade mark that ought to be entered.

             (2)  An application may be made on any of the following grounds, and on no other grounds:

                     (a)  any of the grounds on which the registration of the trade mark could have been opposed under this Act;

                     (b)  an amendment of the application for the registration of the trade mark was obtained as a result of fraud, false suggestion or misrepresentation;

                             (c)  because of the circumstances applying at the time when the application for rectification is filed, the use of the trade mark is likely to deceive or cause confusion;

                     (e)  if the application is in respect of an entry in the Register—the entry was made, or has been previously amended, as a result of fraud, false suggestion or misrepresentation.

Note 1:       For prescribed court see section 190.

Note 2:       For file, registered owner and this Act see section 6.

88A  Applications by Registrar

                   The Registrar must not make an application under section 86, 87 or 88 unless he or she considers the application desirable in the public interest.

89  Rectification may not be granted in certain cases if registered owner not at fault etc.

             (1)  The court may decide not to grant an application for rectification made:

                     (a)  under section 87; or

                     (b)  on the ground that the trade mark is liable to deceive or confuse (a ground on which its registration could have been opposed, see paragraph 88(2)(a)); or

                     (c)  on the ground referred to in paragraph 88(2)(c);

if the registered owner of the trade mark satisfies the court that the ground relied on by the applicant has not arisen through any act or fault of the registered owner.

Note:          For registered owner see section 6.

             (2)  In making a decision under subsection (1), the court:

                     (a)  must also take into account any matter that is prescribed; and

                     (b)  may take into account any other matter that the court considers relevant.

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.

 

Division 3—Amendment of certificate of registration

91  Amendment of certificate of registration

                   When the Registrar amends any particular entered in the Register in respect of a trade mark, the Registrar may also amend the certificate of registration if he or she thinks it appropriate to do so.

 

Part 9—Removal of trade mark from Register for non‑use

  

92  Application for removal of trade mark from Register etc.

             (1)  Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.

             (2)  The application:

                     (a)  must be in accordance with the regulations; and

                     (b)  may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

             (3)  An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

Note:          For prescribed court see section 190.

             (4)  An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

                     (a)  that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

                              (i)  to use the trade mark in Australia; or

                             (ii)  to authorise the use of the trade mark in Australia; or

                            (iii)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

                            in relation to the goods and/or services to which the non‑use application relates and that the registered owner:

                            (iv)  has not used the trade mark in Australia; or

                             (v)  has not used the trade mark in good faith in Australia;

                            in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

                     (b)  that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

                              (i)  used the trade mark in Australia; or

                             (ii)  used the trade mark in good faith in Australia;

                            in relation to the goods and/or services to which the application relates.

Note 1:       For file and month see section 6.

Note 2:       If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

             (5)  If the right or interest on which a person relied to make an application (under subsection (1) or (3)) to obtain the removal of a trade mark from the Register becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the court (as the case requires), be substituted for the first‑mentioned person as the applicant.

93  Time for making application

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

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

Note:          For filing date see section 6.

94  Referral to court

                   If:

                     (a)  an application has been made to the Registrar under subsection 92(1); and

                     (b)  the Registrar is of the opinion that the matter should be decided by a prescribed court;

the Registrar may refer the matter to such a court and the court may hear and determine the matter as if an application had been made to it under subsection 92(3).

95  Notification of application

             (1)  If an application has been made to the Registrar under section 92, the Registrar must give notice of the application in accordance with the regulations.

             (2)  If the application is in respect of a trade mark already entered on the Register, the Registrar must advertise the application in the Official Journal.

             (3)  If the application is in respect of a trade mark whose registration is being sought, the Registrar is to advertise the application in the Official Journal only if the trade mark is registered.

96  Notice of opposition

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

             (2)  The notice of opposition:

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

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

Note:          For file see section 6.

96A  Circumstances in which opposition may proceed in name of a person other than the person who filed the notice

                   If:

                     (a)  after a person has filed a notice of opposition, the right or interest on which the person relied to file the notice of opposition becomes vested in another person; and

                     (b)  the other person:

                              (i)  notifies the Registrar or the court (as the case may be) in writing that the right or interest is vested in him or her; and

                             (ii)  does not withdraw the opposition;

the opposition is to proceed as if the notice of opposition had been filed in that other person’s name.

Note:          For file see section 6.

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

             (1)  If there is no opposition to an application to the Registrar under subsection 92(1), the Registrar must remove the trade mark from the Register in respect of the goods and/or services specified in the application.

             (2)  If there is no opposition to an application to a court under subsection 92(3), the court must order the Registrar to remove the trade mark from the Register in respect of the goods and/or services specified in the application. The court must cause a copy of the order to be served on the Registrar and the Registrar must comply with the order.

98  Trade mark restored to Register if notice of opposition filed within extended time

                   If:

                     (a)  the Registrar has removed a trade mark from the Register under subsection 97(1) because no notice of opposition was filed within the period provided under the regulations; and

                     (b)  the Registrar subsequently extends the period within which the notice may be filed; and

                     (c)  a notice of opposition is filed within the extended period;

the Registrar must restore the trade mark to the Register. Also, the trade mark is taken not to have been removed from the Register.

Note:          For file see section 6.

99  Proceedings before Registrar

                   If an application to the Registrar is opposed, the Registrar must deal with the matter in accordance with the regulations.

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

             (1)  In any proceedings relating to an opposed application, it is for the opponent to rebut:

                     (a)  any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

                              (i)  to use the trade mark in Australia; or

                             (ii)  to authorise the use of the trade mark in Australia; or

                            (iii)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

                            in relation to the goods and/or services to which the opposed application relates (relevant goods and/or services); or

                     (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or

                     (c)  any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

Note 1:       If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2:       For file, month and registered owner see section 6.

             (2)  For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

                     (a)  the opponent has established that the trade mark or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services before that period; or

                     (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

                              (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee in relation to those goods or services before that period and that that use was in accordance with the terms of the assignment; and

                             (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee before that period as having been a use of the trade mark in relation to those goods or services by the registered owner.

Note 1:       If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2:       For registered owner see section 6.

             (3)  For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

                     (a)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or

                     (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

                              (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and

                             (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

                     (c)  the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

Note 1:       If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2:       For registered owner see section 6.

101  Determination of opposed application—general

             (1)  Subject to subsection (3) and to section 102, if:

                     (a)  the proceedings relating to an opposed application have not been discontinued or dismissed; and

                     (b)  the Registrar is satisfied that the grounds on which the application was made have been established;

the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

             (2)  Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

             (3)  If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

             (4)  Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

                     (a)  similar goods or closely related services; or

                     (b)  similar services or closely related goods;

to those to which the application relates.

Note 1:       If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2:       For registered owner see section 6.

102  Determination of opposed application—localised use of trade mark

             (1)  This section applies if an application for the removal of a trade mark (challenged trade mark) from the Register is made on the ground referred to in paragraph 92(4)(b) and:

                     (a)  the applicant is the registered owner of a trade mark that is substantially identical with, or deceptively similar to, the challenged trade mark and is registered in respect of the goods and/or services specified in the application subject to the condition or limitation that the use of the trade mark is to be restricted to:

                              (i)  goods and/or services to be dealt with or provided in a particular place (specified place) in Australia (otherwise than for export from Australia); or

                             (ii)  goods and/or services to be exported to a particular market (specified market); or

                     (b)  the Registrar or the court is of the opinion that such a trade mark may properly be registered in the name of the applicant with that condition or limitation.

Note 1:       For registered owner see section 6.

Note 2:       For deceptively similar see section 10.

             (2)  If the Registrar or the court is satisfied:

                     (a)  that the challenged trade mark has remained registered for the period referred to in paragraph 92(4)(b); and

                     (b)  that during that period there has been no use, or no use in good faith, of the challenged trade mark in relation to:

                              (i)  goods or services dealt with or provided in the specified place; or

                             (ii)  goods or services to be exported to the specified market;

the Registrar may decide, or the court may order, that the challenged trade mark should not be removed from the Register but that the registration of the trade mark should be subject to the conditions or limitations that the Registrar or the court considers necessary to ensure that the registration does not extend to the use of the trade mark in relation to:

                     (c)  goods or services dealt with or provided in the specified place; or

                     (d)  goods or services to be exported to the specified market.

Note:          For limitations see section 6.

103  Registrar to comply with order of court

                   A court making an order under section 101 or 102 must cause a copy of the order to be served on the Registrar and the Registrar must comply with the order.

104  Appeal

                   An appeal lies to the Federal Court from a decision of the Registrar under section 101 or 102.

105  Certificate—use of trade mark

             (1)  If in any proceedings relating to an opposed application the Registrar or the court has found that:

                     (a)  a trade mark has been used in good faith during a particular period; or

                     (b)  a trade mark has not been used during a particular period solely because of circumstances that were an obstacle to its use;

the Registrar or the court must, if so requested by the registered owner of the trade mark, give to the registered owner a certificate of those findings.

             (2)  In any subsequent proceedings in which non‑use of the trade mark is alleged:

                     (a)  the certificate is, on being produced, evidence of the facts stated in it; and

                     (b)  if the proceedings are determined in favour of the opponent and, on or before filing the notice of opposition, the opponent notified the applicant of the contents of the certificate—the opponent is entitled, unless the Registrar or the court otherwise directs, to have the opponent’s full costs paid by the applicant.

 

Part 10—Assignment and transmission of trade marks

  

106  Assignment etc. of trade mark

             (1)  A registered trade mark, or a trade mark whose registration is being sought, may be assigned or transmitted in accordance with this section.

             (2)  The assignment or transmission may be partial, that is, it may apply to some only of the goods and/or services in respect of which registration is sought or the trade mark is registered, but it may not be partial in relation to the use of a trade mark in a particular area.

             (3)  The assignment or transmission may be with or without the goodwill of the business concerned in the relevant goods and/or services.

Note:          For assignment and transmission see section 6.

107  Applications for record to be made of assignment etc. of trade mark whose registration is sought

             (1)  If a trade mark whose registration is being sought is assigned or transmitted:

                     (a)  the applicant for the registration of the trade mark; or

                     (b)  the person to whom it has been assigned or transmitted;

must apply to the Registrar for the assignment or transmission to be recorded.

             (2)  The application must:

                     (a)  be in an approved form; and

                     (b)  be filed, together with any prescribed document, in accordance with the regulations.

Note:          For approved form and file see section 6.

108  Recording of assignment etc. of trade mark whose registration is sought

             (1)  If the application complies with this Act, the Registrar must:

                     (a)  at, or within, the time provided for in the regulations, record in the manner that the Registrar thinks fit (but not in the Register) the particulars of the assignment or transmission; and

                     (b)  publish the particulars of the assignment or transmission in accordance with the regulations.

             (2)  On and after the day on which the Registrar records the particulars of the assignment or transmission, the person to whom the trade mark has been assigned or transmitted is taken, for the purposes of this Act, to be the applicant for the registration of the trade mark.

109  Application for record of assignment etc. of registered trade mark to be entered in Register

             (1)  If a registered trade mark is assigned or transmitted:

                     (a)  the person registered as the owner of the trade mark; or

                     (b)  the person to whom the trade mark has been assigned or transmitted;

must apply to the Registrar for a record of the assignment or transmission to be entered in the Register.

             (2)  The application must:

                     (a)  be in an approved form; and

                     (b)  be filed, together with any prescribed document, in accordance with the regulations.

Note:          For approved form and file see section 6.

110  Recording of assignment etc. of registered trade mark

             (1)  If the application complies with this Act, the Registrar must, at, or within, the time provided for in the regulations:

                     (a)  enter the particulars of the assignment or transmission in the Register; and

                     (b)  register the person to whom the trade mark has been assigned or transmitted (beneficiary) as the owner of the trade mark in relation to the goods and/or services in respect of which the assignment or transmission has effect.

             (2)  The particulars are taken to have been entered in the Register on the day on which the application was filed, and the registration of the beneficiary as the owner of the trade mark is taken to have had effect from and including that day.

             (3)  The Registrar must advertise in the Official Journal:

                     (a)  the recording of the assignment or transmission; and

                     (b)  the registration of the beneficiary as the owner of the trade mark.

111  Notice of application to be given to person recorded as claiming interest in trade mark etc.

                   If an application made under section 107 or 109 in relation to the assignment or transmission of a trade mark complies with this Act, the Registrar must notify in accordance with the regulations any person recorded under Part 11 as claiming an interest in, or a right in respect of, the trade mark.

 

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

Division 1—Preliminary

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.

 

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

113  Application to have claims to interest etc. recorded

             (1)  If:

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

                     (b)  this interest or right may not be recorded in the Register under Part 10;

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

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

Note:          For registered owner, registered trade mark, approved form and file see section 6.

114  Record of claims to interest etc.

             (1)  If the application has been made in accordance with section 113, the Registrar must enter in the Register the particulars of the claim set out in the application.

             (2)  If:

                     (a)  a trade mark is registered; and

                     (b)  immediately before the registration, particulars of a claim to an interest in, or right in respect of, the trade mark were recorded under Division 3;

the Registrar must enter those particulars in the Register.

115  Amendment and cancellation

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

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.

 

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

117  Application to have claims to interest etc. recorded

             (1)  If:

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

                     (b)  another person claims to have an interest in, or a right in respect of, the trade mark;

they may together apply to the Registrar for a record to be kept of the other person’s claim.

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

Note:          For approved form and file see section 6.

118  Record of claims to interest etc.

                   If the application has been made in accordance with section 117, the Registrar must record in the manner that the Registrar thinks fit (but not in the Register) the particulars of the claim set out in the application.

119  Amendment and cancellation

                   The regulations may provide for the amendment and cancellation of particulars recorded under this Division.

 

Part 12—Infringement of trade marks

  

120  When is a registered trade mark infringed?

             (1)  A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

Note 1:       For registered trade mark see section 6.

Note 2:       For deceptively similar see section 10.

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

             (2)  A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:

                     (a)  goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or

                     (b)  services that are closely related to registered goods; or

                     (c)  services of the same description as that of services (registered services) in respect of which the trade mark is registered; or

                     (d)  goods that are closely related to registered services.

However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.

Note 1:       For registered trade mark see section 6.

Note 2:       For deceptively similar see section 10.

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

             (3)  A person infringes a registered trade mark if:

                     (a)  the trade mark is well known in Australia; and

                     (b)  the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:

                              (i)  goods (unrelated goods) that are not of the same description as that of the goods in respect of which the trade mark is registered (registered goods) or are not closely related to services in respect of which the trade mark is registered (registered services); or

                             (ii)  services (unrelated services) that are not of the same description as that of the registered services or are not closely related to registered goods; and

                     (c)  because the trade mark is well known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and

                     (d)  for that reason, the interests of the registered owner are likely to be adversely affected.

Note 1:       For registered trade mark see section 6.

Note 2:       For deceptively similar see section 10.

Note 3:       For well known in Australia see subsection (4).

Note 4:       In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

             (4)  In deciding, for the purposes of paragraph (3)(a), whether a trade mark is well known in Australia, one must take account of the extent to which the trade mark is known within the relevant sector of the public, whether as a result of the promotion of the trade mark or for any other reason.

121  Infringement of trade mark by breach of certain restrictions

             (1)  This section applies to a registered trade mark if the registered owner, or an authorised user of the trade mark having power to do so, has caused to be displayed on goods (registered goods) in respect of which the trade mark is registered, or on their package, or on the container in which they are offered to the public, a notice (notice of prohibition) prohibiting any act that is under subsection (2) a prohibited act in relation to the goods.

Note 1:       An authorised user of the trade mark may not have power to cause notices of prohibition to be displayed on goods etc. because of the terms of the agreement between the authorised user and the registered owner of the trade mark (see section 26).

Note 2:       For registered owner and registered trade mark see section 6.

Note 3:       For authorised user see section 8.

Note 4:       In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

             (2)  Each of the following is a prohibited act:

                     (a)  applying the trade mark to registered goods, or using the trade mark in physical relation to them, after the state, condition, get‑up or packaging in which they were originally offered to the public has been altered;

                     (b)  altering, or partially removing or obliterating, any representation of the trade mark applied to registered goods or used in physical relation to them;

                     (c)  if the trade mark has been applied to registered goods, or used in physical relation to them, together with other matter indicating that the registered owner or authorised user has dealt with the goods—removing or obliterating, totally or in part, any representation of the trade mark without totally removing or obliterating the other matter;

                     (d)  applying another trade mark to registered goods or using another trade mark in physical relation to them;

                     (e)  if the trade mark has been applied to registered goods or used in physical relation to them—using on the goods, or on the packaging or container of the goods, any matter that is likely to injure the reputation of the trade mark.

Note 1:       For applied to see section 9.

Note 2:       For authorised user see section 8.

             (3)  Subject to subsection (4), a person infringes a trade mark to which this section applies if the person:

                     (a)  is the owner of registered goods; and

                     (b)  in the course of trade, or with a view to a dealing with the goods in the course of trade:

                              (i)  does an act that is prohibited under the notice of prohibition; or

                             (ii)  authorises that act to be done.

             (4)  The trade mark is not infringed if the owner of the goods:

                     (a)  acquired them in good faith and without being aware of the notice of prohibition; or

                     (b)  became the owner of the goods by virtue of a title derived from a person who had so acquired them.

122  When is a trade mark not infringed?

             (1)  In spite of section 120, a person does not infringe a registered trade mark when:

                     (a)  the person uses in good faith:

                              (i)  the person’s name or the name of the person’s place of business; or

                             (ii)  the name of a predecessor in business of the person or the name of the predecessor’s place of business; or

                     (b)  the person uses a sign in good faith to indicate:

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

                             (ii)  the time of production of goods or of the rendering of services; or

                     (c)  the person uses the trade mark in good faith to indicate the intended purpose of goods (in particular as accessories or spare parts) or services; or

                     (d)  the person uses the trade mark for the purposes of comparative advertising; or

                     (e)  the person exercises a right to use a trade mark given to the person under this Act; or

                      (f)  the court is of the opinion that the person would obtain registration of the trade mark in his or her name if the person were to apply for it; or

                    (fa)  both:

                              (i)  the person uses a trade mark that is substantially identical with, or deceptively similar to, the first‑mentioned trade mark; and

                             (ii)  the court is of the opinion that the person would obtain registration of the substantially identical or deceptively similar trade mark in his or her name if the person were to apply for it; or

                     (g)  the person, in using a sign referred to in subsection 120(1), (2) or (3) in a manner referred to in that subsection, does not (because of a condition or limitation subject to which the trade mark is registered) infringe the exclusive right of the registered owner to use the trade mark.

             (2)  In spite of section 120, if a disclaimer has been registered in respect of a part of a registered trade mark, a person does not infringe the trade mark by using that part of the trade mark.

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

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

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

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

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

124  Prior use of identical trade mark etc.

             (1)  A person does not infringe a registered trade mark by using an unregistered trade mark that is substantially identical with, or deceptively similar to, the registered trade mark in relation to:

                     (a)  goods similar to goods (registered goods) in respect of which the trade mark is registered; or

                     (b)  services closely related to registered goods; or

                     (c)  services similar to services (registered services) in respect of which the trade mark is registered; or

                     (d)  goods closely related to registered services;

if the person, or the person and the person’s predecessor in title, have continuously used in the course of trade the unregistered trade mark in relation to those goods or services from a time before:

                     (e)  the date of registration of the registered trade mark; or

                      (f)  the registered owner of the registered trade mark, or a predecessor in title, or a person who was a registered user of the trade mark under the repealed Act, first used the trade mark;

whichever is earlier.

Note 1:       For deceptively similar see section 10.

Note 2:       For predecessor in title and date of registration see section 6.

             (2)  If the unregistered trade mark has continuously been used only in a particular area of Australia, subsection (1) applies only to the use of the trade mark by the person in that area.

125  What courts may hear action for infringement of registered trade mark

             (1)  An action for an infringement of a registered trade mark may be brought in a prescribed court.

Note:          For prescribed court see section 190.

             (2)  Subsection (1) does not prevent an action for infringement of a registered trade mark from being brought in any other court that has jurisdiction to hear the action.

126  What relief can be obtained from court

                   The relief that a court may grant in an action for an infringement of a registered trade mark includes:

                     (a)  an injunction, which may be granted subject to any condition that the court thinks fit; and

                     (b)  at the option of the plaintiff but subject to section 127, damages or an account of profits.

127  Special case—plaintiff not entitled to damages etc.

                   If:

                     (a)  in an action for the infringement of a trade mark registered in respect of particular goods or services, the court finds that the defendant has infringed the trade mark; and

                     (b)  either:

                              (i)  the defendant has applied to the court under subsection 92(3) for an order directing the Registrar to remove the trade mark from the Register in respect of those goods or services; or

                             (ii)  the defendant has applied to the Registrar under subsection 92(1) for the trade mark to be removed from the Register in respect of those goods or services, and the matter has been referred to a court under section 94; and

                     (c)  the court finds that, because the trade mark has not during a particular period (critical period) been used in good faith by its registered owner in relation to those goods or services, there are grounds (under subsection 92(4)) for so removing the trade mark from the Register;

the court may not grant relief to the plaintiff by way of damages or an account of profits in respect of any infringement of the trade mark that happened during the critical period.

128  Circumstances in which action may not be brought

             (1)  If the registration of a trade mark is renewed under section 79 within 6 months after it has expired, an action may not be brought in respect of an act that:

                     (a)  infringed the trade mark; and

                     (b)  was done after the registration had expired and before it was renewed.

             (2)  If the registration of a trade mark is renewed under section 80G within 10 months after the end of the prescribed period, an action may not be brought in respect of an act that:

                     (a)  infringed the trade mark; and

                     (b)  was done after the end of the prescribed period and before the registration was renewed.

             (3)  In subsection (2):

prescribed period has the same meaning as in Division 3 of Part 7.

Note:          For month see section 6.

129  Groundless threats of legal proceedings

             (1)  If a person threatens to bring an action against another person (threatened person) on the ground that the threatened person has infringed:

                     (a)  a registered trade mark; or

                     (b)  a trade mark alleged by the person to be registered;

any person aggrieved by the threat (plaintiff) may bring an action (either in a prescribed court or in any other court having jurisdiction) against the person making the threat (defendant).

Note:          For prescribed court see section 190.

             (2)  The purpose of the action is to obtain from the court:

                     (a)  a declaration that the defendant has no grounds for making the threat; and

                     (b)  an injunction restraining the defendant from continuing to make the threat.

The plaintiff may also recover any damages that he or she has sustained because of the defendant’s conduct.

             (3)  The action may be brought whether or not the defendant is the registered owner, or an authorised user, of the trade mark alleged to have been infringed.

Note:          For authorised user see section 8.

             (4)  The court may not find in favour of the plaintiff if the defendant satisfies the court that:

                     (a)  the trade mark is registered; and

                     (b)  the acts of the threatened person in respect of which the defendant threatened to bring an action constitute an infringement of the trade mark.

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

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

             (6)  This section does not make a lawyer, registered trade marks attorney or patent attorney liable to an action for an act done in a professional capacity on behalf of a client.

Note:          For lawyer, registered trade marks attorney and patent attorney see section 6.

130  Counterclaim by defendant in action on groundless threats

                   If the defendant in an action brought under section 129 would be entitled to bring against the plaintiff an action for infringement of the registered trade mark (infringement action):

                     (a)  the defendant may file in the court a counterclaim against the plaintiff for any relief to which the defendant would be entitled in the infringement action; and

                     (b)  the provisions of this Act applicable to infringement actions apply in relation to the counterclaim as if it were an infringement action brought by the defendant against the plaintiff.

 

Part 13—Importation of goods infringing Australian trade marks

  

131  Object of Part

                   The object of this Part is to protect registered trade marks by making provision allowing the Customs CEO to seize and deal with goods that are imported into Australia if the importation infringes, or appears to infringe, a registered trade mark.

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

132  Notice of objection to importation

             (1)  The registered owner of a registered trade mark may give to the Customs CEO a notice in writing objecting to the importation after the date of the notice of goods that infringe the trade mark. The notice is to be given together with any prescribed document.

             (2)  If:

                     (a)  the registered owner of the registered trade mark has not given a notice under subsection (1); or

                     (b)  any notice given under subsection (1) is no longer in force;

an authorised user of the trade mark having power to give a notice under subsection (1) may ask the registered owner to give such a notice in respect of the trade mark.

Note 1:       For authorised user see section 8.

Note 2:       An authorised user of the trade mark may not have power to give a notice under subsection (1) because of the terms of the agreement between the authorised user and the registered owner of the trade mark (see section 26).

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

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

                     (b)  during the prescribed period, if the registered owner refuses to comply with the request on a particular occasion during the prescribed period; or

                     (c)  after the end of the prescribed period, if the registered owner has failed to give such a notice during the prescribed period.

The authorised user must give also to the Customs CEO, together with the notice:

                     (d)  any document prescribed for the purposes of subsection (1); and

                     (e)  any other prescribed document.

             (4)  A notice given by the registered owner of a trade mark remains in force for 4 years from the day on which the notice is given unless it is revoked, before the end of that period, by notice in writing given to the Customs CEO by the person who is then the registered owner of the trade mark.

             (5)  A notice given by an authorised user of the trade mark remains in force for 4 years unless it is revoked, before the end of that period, by notice in writing given to the Customs CEO:

                     (a)  if the authorised user has power to revoke the notice—by the authorised user; or

                     (b)  in any other case—by the person who is then the registered owner of the trade mark.

Note 1:       For authorised user see section 8.

Note 2:       An authorised user of a trade mark may not have power to revoke the notice because of the terms of the agreement between the authorised user and the registered owner of the trade mark (see section 26).

133  Customs CEO may seize goods infringing trade mark

             (1)  This section applies to goods manufactured outside Australia that:

                     (a)  are imported into Australia; and

                     (b)  are subject to the control of the Customs within the meaning of the Customs Act 1901.

             (2)  If goods to which this section applies:

                     (a)  have applied to them or in relation to them a sign that, in the opinion of the Customs CEO, is substantially identical with, or deceptively similar to, a notified trade mark; and

                     (b)  are goods in respect of which the notified trade mark is registered;

the Customs CEO must seize the goods unless he or she is satisfied that there are no reasonable grounds for believing that the notified trade mark is infringed by the importation of the goods.

Note 1:       For applied to or in relation to goods see section 9.

Note 2:       For deceptively similar see section 10.

Note 3:       For notified trade mark see section 6.

             (3)  Subject to subsection (3A), the Customs CEO may decide not to seize the goods unless he or she has been given by the objector (or by one or more of the objectors) a written undertaking acceptable to the Customs CEO to repay to the Commonwealth the expenses of seizing the goods.

Note:          For objector see section 6.

          (3A)  The Customs CEO may decide not to seize the goods unless he or she has been given by the objector (or one or more of the objectors), instead of an undertaking, security in an amount that the Customs CEO considers sufficient to repay to the Commonwealth the expenses of seizing the goods if:

                     (a)  an amount payable under an undertaking given by the objector (or one or more of the objectors) in relation to other goods has not been paid in accordance with the undertaking; and

                     (b)  the Customs CEO considers it reasonable in all the circumstances to require the security.

          (3B)  An undertaking may be withdrawn or varied if the Customs CEO consents in writing to a written request from the objector or objectors to do so.

             (4)  Goods seized under this section must be kept in a secure place as directed by the Customs CEO.

             (5)  In this section:

expenses of seizing goods means the expenses that may be incurred by the Commonwealth if the goods were seized.

133A  Determinations about owners of goods

                   The Customs CEO or an officer of Customs (within the meaning of subsection 4(1) of the Customs Act 1901) may determine that a person is the owner of goods for the purposes of paragraph (b) of the definition of designated owner if the person is an owner (within the meaning of that subsection) of the goods.

Note:          For designated owner see section 6.

134  Notice of seizure

                   The Customs CEO must, as soon as practicable:

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

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

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

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

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

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

135  Forfeiture of goods

             (1)  The designated owner of any seized goods may, at any time before an objector starts an action for infringement of a notified trade mark in respect of the goods, consent to the goods being forfeited to the Commonwealth by giving notice in writing to that effect to the Customs CEO.

             (2)  If the designated owner gives such a notice, the goods are forfeited to the Commonwealth.

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

136  Release of goods to owner—no action for infringement

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

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

                     (b)  given to the Customs CEO notice in writing of the action.

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

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

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

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

                     (b)  at that time:

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

                             (ii)  any action brought by an objector has been withdrawn.

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

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

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

                     (a)  the Customs CEO, having regard to information that has come to his or her knowledge after the goods were seized, is satisfied that there are no reasonable grounds for believing that the notified trade mark has been infringed by the importation of the goods; and

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

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

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

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

             (4)  In this section:

action period, in relation to seized goods, means:

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

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

Note:          For objector see section 6.

137  Action for infringement of trade mark

             (1)  An objector may bring an action for infringement of a notified trade mark in respect of seized goods and give notice of it to the Customs CEO:

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

                     (b)  if:

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

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

                            within that period as so extended by the Customs CEO.

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

             (2)  The court hearing the action:

                     (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 their 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.

             (5)  If, after 20 working days from the day on which the action was brought, there is not in force at any time an order of the court directed at the Customs CEO preventing the goods from being released, the Customs CEO must release the goods to their designated owner.

             (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 registered owner of the trade mark gives consent to the bringing of such an action or refuses or fails to bring such an action.

139  Forfeited goods—how to be disposed of

                   If:

                     (a)  goods are forfeited to the Commonwealth under section 135; or

                     (b)  the court orders under section 137 that goods be forfeited to the Commonwealth;

the goods are to be disposed of as the Customs CEO directs.

140  Power of Customs CEO to retain control of goods

                   In spite of this Part, the Customs CEO:

                     (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.

             (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.

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

             (2)  If the importer or his or her agent fails to comply with the request within the prescribed period, the importer or agent is guilty of an offence punishable, on conviction, by imprisonment for a period not exceeding 6 months.

Note 1:       The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).

Note 2:       For month see section 6.

144  Modification in relation to Norfolk Island etc.

                   The regulations may provide for the modification or adaptation of this Part in its application to:

                     (a)  Norfolk Island; or

                     (b)  Christmas Island; or

                     (c)  Cocos (Keeling) Islands.

 

Part 14—Offences

  

145  Falsifying etc. a registered trade mark

             (1)  A person is guilty of an offence if the person falsifies or unlawfully removes a trade mark that:

                     (a)  has been applied to any goods that are being, or are to be, dealt with or provided in the course of trade; or

                     (b)  has been applied in relation to any goods or services that are being, or are to be, dealt with or provided in the course of trade;

knowing that the trade mark is registered or reckless of whether or not the trade mark is registered.

Note 1:       For applied to goods and applied in relation to goods or services see section 9.

Note 2:       For the penalty for this offence see section 149.

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

             (2)  A person falsifies a registered trade mark if the person:

                     (a)  alters or defaces it; or

                     (b)  makes any addition to it; or

                     (c)  partly removes, erases or obliterates it;

without the permission of the registered owner, or an authorised user, of the trade mark and without being required or authorised to do so by this Act, a direction of the Registrar or an order of a court.

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

Note 2:       For authorised user see section 8.

             (3)  A person unlawfully removes a registered trade mark if the person wholly removes, erases or obliterates it:

                     (a)  without the permission of the registered owner, or an authorised user, of the trade mark; and

                     (b)  without being required or authorised to do so by this Act, a direction of the Registrar or an order of a court.

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

Note 2:       For authorised user see section 8.

146  Falsely applying a registered trade mark

             (1)  A person is guilty of an offence if the person:

                     (a)  falsely applies a registered trade mark to goods that are being, or are to be, dealt with or provided in the course of trade; or

                     (b)  falsely applies a registered trade mark in relation to goods or services that are being, or are to be, dealt with or provided in the course of trade;

knowing that the trade mark is registered or reckless of whether or not the trade mark is registered.

Note 1:       For registered trade mark see section 6.

Note 2:       For the penalty for this offence see section 149.

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

             (2)  A person falsely applies a registered trade mark to goods, or in relation to goods or services if the person applies the trade mark or a sign substantially identical with it to the goods or in relation to the goods or services:

                     (a)  without the permission of the registered owner, or of an authorised user, of the trade mark; and

                     (b)  without being required or authorised to do so by this Act, a direction of the Registrar or an order of a court.

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

Note 2:       For authorised user see section 8.

147  Manufacture and possession of die etc. for use in commission of offence

             (1)  A person is guilty of an offence if the person makes a die, block, machine or instrument:

                     (a)  knowing that it is likely to be used for, or in the course of, committing an offence against section 145 or 146; or

                     (b)  reckless of whether or not it is likely to be used for, or in the course of, committing an offence against section 145 or 146.

             (2)  A person is guilty of an offence if the person draws, or programs a computer or other device to draw, a registered trade mark or part of a registered trade mark:

                     (a)  knowing that the trade mark or part of the trade mark is likely to be used for, or in the course of, committing an offence against section 145 or 146; or

                     (b)  reckless of whether or not the trade mark or part of a trade mark is likely to be used for, or in the course of, committing an offence against section 145 or 146.

             (3)  A person is guilty of an offence if intentionally the person has in his or her possession, or disposes of:

                     (a)  a die, block, machine or instrument; or

                     (b)  a computer, or other device, programmed to draw a registered trade mark or part of a registered trade mark; or

                     (c)  a representation of a registered trade mark or of part of a registered trade mark;

knowing that, or reckless of whether or not, the die, block, machine, instrument, computer, device or representation is likely to be used for, or in the course of, committing an offence against section 145 or 146.

Note 1:       For registered trade mark see section 6.

Note 2:       For the penalty for an offence under this section see section 149.

             (4)  For the purposes of an offence against subsection (1), (2) or (3), strict liability applies to the physical element of the offence, that the offence referred to in paragraph (1)(a), (1)(b), (2)(a) or (2)(b) or subsection (3) is an offence against section 145 or 146.

Note:          For strict liability, see section 6.1 of the Criminal Code.

148  Selling etc. goods with false marks

                   A person is guilty of an offence if the person intentionally:

                     (a)  sells goods; or

                     (b)  exposes goods for sale; or

                     (c)  has goods in his or her possession for the purpose of trade or manufacture; or

                     (d)  imports goods into Australia for the purpose of trade or manufacture;

knowing that, or reckless of whether or not:

                     (e)  a falsified registered trade mark is applied to them or in relation to them; or

                      (f)  a registered trade mark has been unlawfully removed from them; or

                     (g)  a registered trade mark is falsely applied to them or in relation to them.

Note 1:       For registered trade mark see section 6.

Note 2:       For applied to or in relation to goods see section 9.

Note 3:       For the penalty for this offence see section 149.

Note 4:       In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

149  Penalty for offence under section 145, 146, 147 or 148

                   A person guilty of an offence under section 145, 146, 147 or 148 is punishable on conviction by:

                     (a)  a fine not exceeding 500 penalty units; or

                     (b)  imprisonment for a period not exceeding 2 years; or

                     (c)  by both a fine and a term of imprisonment.

Note:          The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914.)

150  Aiding and abetting offences

             (1)  If a person:

                     (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 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 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

                     (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.

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  Unregistered persons

             (1)  A person must not describe himself or herself, or hold himself or herself out, or permit himself or herself to be described or held out, as a trade marks attorney unless the person is a registered trade marks attorney.

Penalty:  30 penalty units.

Note 1:       The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).

Note 2:       For registered trade marks attorney, see section 6.

             (2)  A person must not describe himself or herself, or hold himself or herself out, or permit himself or herself to be described or held out, as a trade marks agent unless the person is a registered trade marks attorney or a patent attorney or a lawyer or a person referred to in paragraph 135(1)(h) or (i) of the repealed Act.

Penalty:  30 penalty units.

Note 1:       The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914).

Note 2:       For lawyer, registered trade marks attorney and patent attorney see section 6.

Note 4:       Paragraphs 135(1)(h) and (i) of the repealed Act provided as follows:

“(h)   a person who, within 1 year after the commencement of this Act, has satisfied the Registrar that, for a continuous period of 2 years immediately before 1 January 1955, he was practising as a trade marks agent in Australia; or

(i)      a person who:

(i)      within 1 year after the commencement of this Act, has satisfied the Registrar that, for a continuous period of 2 years immediately before 1 January 1955, he was employed by a registered patent attorney in Australia and his duties related solely or principally to the lodging, prosecuting and opposing of applications for the registration of trade marks; and

(ii)     unless the Registrar otherwise directs, has, within 1 year after the commencement of this Act or within such further time as the Registrar allows, passed the prescribed examination.”.

Subsection 135(2) of the repealed Act provided as follows:

“(2)   For the purposes of paragraph (h) of the last preceding subsection, a person shall not be deemed to have practised as a trade marks agent unless the only or the principal business carried on by him was the business of lodging, prosecuting and opposing, for gain, applications for the registration of trade marks in Australia on behalf of applicants or opponents.”.

             (3)  If:

                     (a)  a body corporate is found guilty of an offence against this section; and

                     (b)  a director, manager, secretary or other officer of the body corporate has been a party to the offence;

the director, manager, secretary or officer is guilty of an offence punishable, on conviction, by a fine not exceeding 30 penalty units.

             (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.

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.

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 the Director of Public Prosecutions includes a reference to the person who has instituted the proceedings.

             (2)  In this section:

forfeiture order provisions means:

                     (a)  Division 1 of Part II of the Proceeds of Crime Act 1987, to the extent to which that Division relates to forfeiture orders; and

                     (b)  Division 2 of Part II of the Proceeds of Crime Act 1987; and

                     (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.

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.

 

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

                     (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.

 

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.

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:

                     (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 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.

          (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.

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.

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).

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.

183  Delegation of Commission’s powers and functions

                   The Commission may, by resolution, delegate all or any of its powers and functions under this Part to a member of the Commission.

Note:          See section 34AB of the Acts Interpretation Act 1901 about the effect of this section.

 

Part 17—Defensive trade marks

  

184  Object of Part

                   This Part:

                     (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.

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.

 

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.

international registration of a trade mark means registration of the mark in the register of the International Bureau.

Madrid Protocol means the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks, as signed at Madrid on 28 June 1989.

Protected international trade mark means a trade mark to which protection resulting from international registration of the mark is extended in Australia in accordance with the regulations.

 

Part 18—Jurisdiction and powers of courts

  

190  Prescribed courts

                   Each of the following courts is a prescribed court for the purposes of this Act:

                     (a)  the Federal 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 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.

192  Jurisdiction of other prescribed courts

             (1)  Each prescribed court (other than the Federal Court) has jurisdiction with respect to matters in respect of which an action or proceeding may, under this Act, be started in a prescribed court.

Note:          For prescribed court see section 190.

             (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 or 192 is to be exercised by a single judge.

Note:          For prescribed court see section 190.

194  Transfer of proceedings

             (1)  A prescribed court in which an action or proceeding under this Act has been started may, on the application of a party made at any stage, by an order, transfer the action or proceeding to another prescribed court having jurisdiction to hear and determine the action or proceeding.

Note:          For prescribed court see section 190.

             (2)  When a court transfers an action or proceeding to another court:

                     (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.

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 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).

196  Registrar may appear in appeals

                   The Registrar may appear and be heard at the hearing of an appeal to the Federal Court against a decision or direction of the Registrar.

197  Powers of Federal Court

                   On hearing an appeal against a decision or direction of the Registrar, the Federal Court may do any one or more of the following:

                     (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.

 

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)  There is to be a sub‑office of the Trade Marks Office in each State.

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.

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, 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 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).

 

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.

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.

211  Evidence—certified copies of documents

             (1)  A certificate signed by the Registrar and stating that:

                     (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.

 

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

             (1)  A document is taken to be filed at the Trade Marks Office if it is filed at a sub‑office of the Trade Marks Office.

             (2)  A document may be filed at the Trade Marks Office or any of its sub‑offices by being delivered there:

                     (a)  personally; or

                     (b)  by post; or

                     (c)  by any 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.

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.

             (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:          Section 28A of the Acts Interpretation Act 1901 provides that a document may be served (this term includes given, or sent, to):

“(a)   on a natural person:

(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.

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.

 

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.

             (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.

 

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, 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.

             (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:

                     (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.

             (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

             (1)  The regulations may declare a foreign country to be a Convention country for the purposes of this Act.

             (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.

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.

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.

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:          Designated Manager is defined by subsection (9).

             (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.

             (4)  The Designated Manager must register as a trade marks attorney a person 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.

The registration is to consist of entering the person’s name in the Register of Trade Marks Attorneys.

             (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).

             (6)  Paragraphs (4)(c) and (d) do not limit paragraph (4)(b).

             (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.

             (9)  In this section:

Designated Manager has the same meaning as in the Patents Act 1990.

Professional Standards Board has the same meaning as in the Patents Act 1990.

228B  Deregistration of trade marks attorneys

                   The name of the person registered as a trade marks attorney may be removed from the Register of Trade Marks Attorneys in the prescribed manner and on the prescribed grounds.

229  Privileges of trade marks attorney and patent attorney

             (1)  A communication between a registered trade marks attorney and the attorney’s client in intellectual property matters, and any record or document made for the purposes of such a communication, are privileged to the same extent as a communication between a solicitor and his or her client.

             (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)  In this section:

intellectual property matters means:

                     (a)  matters relating to patents; or

                     (b)  matters relating to trade marks; or

                     (c)  matters relating to designs; or

                     (d)  any related matters.

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.

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

                            (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;

                             (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.

 

Part 22—Repeal and transitional

Division 1—Repeal

232  Repeal

                   The Trade Marks Act 1955 is repealed.

 

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:

                     (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:

                     (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.

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 lodged, or were taken to have been lodged (as the case may be), with the Trade Marks Office under the repealed Act.

 

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:

“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 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

                     (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:

                     (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.

             (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.

             (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:

                     (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.

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

                     (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

                     (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.

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

                     (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.

 

Division 4—General

257  The Registrar and Deputy Registrar

                   Persons holding office as Registrar of Trade Marks and Deputy Registrar of Trade Marks immediately before 1 January 1996 continue to hold those respective offices on and after that day.

258  Confidential information received by Registrar under section 74 of the repealed Act

                   If, immediately before 1 January 1996, the Registrar was required under subsection 74(7) of the repealed Act to ensure that any document, information or evidence given for the purpose of an application for the registration of a person as a registered user of a trade mark was not disclosed to any other person, the Registrar must continue to ensure that the document, information or evidence is not so disclosed except by order of a prescribed court.

Note:          For prescribed court see section 190.

259  Documents kept under repealed Act

                   The Registrar is to continue to keep in accordance with this Act all documents that, immediately before 1 January 1996, were kept by the Registrar under the repealed Act.

260  Address for service

             (1)  If, immediately before 1 January 1996, the address for service of an applicant for the registration of a trade mark, or of an opponent to the registration, under subsection 132(1) or (2) of the repealed Act (existing address) was an address in Australia, that address remains the address for service of the applicant or opponent for the purposes of this Act until he or she notifies another address to the Registrar under section 215.

Note:          For applicant and opponent see section 6.

             (2)  If the existing address of an applicant for the registration of a trade mark or of an opponent to the registration is not an address in 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.

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.

Notes to the Trade Marks Act 1995

Note 1

The Trade Marks Act 1995 as shown in this compilation comprises Act No. 119, 1995 amended as indicated in the Tables below.

The Trade Marks Act 1995 was modified by the Trade Marks Regulations 1995 (1995 No. 341 as amended). The modifications are not incorporated in this compilation.

For all relevant information pertaining to application, saving or transitional provisions see Table A.

Table of Acts

Act	Number and year	Date of Assent	Date of commencement	Application, saving or transitional provisions
Trade Marks Act 1995	119, 1995	17 Oct 1995	Part 1 (ss. 1–5): Royal Assent Remainder: 1 Jan 1996
Industry, Science and 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	27 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)	—
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)

(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:

                 (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

Table of Amendments

ad. = added or inserted     am. = amended     rep. = repealed     rs. = repealed and substituted
Provision affected	How affected
Reader’s Guide...................	am. No. 140, 2001; No. 114, 2006
List of terms........................	am. No. 91, 1997; No. 48, 2003; No. 114, 2006
Part 1
S. 4A...................................	ad. No. 140, 2001
Part 2
S. 6......................................	am. No. 91, 1997; No. 100, 1998; Nos. 144 and 146, 1999; No. 117, 2000; No. 99, 2001; No. 48, 2003; Nos. 106 and 114, 2006
S. 6A...................................	ad. No. 114, 2006
S. 15....................................	am. No. 114, 2006
Part 3
Note 3 to s. 20(1)................	ad. No. 117, 2000
S. 22....................................	am. No. 114, 2006
S. 26....................................	am. No. 91, 1997; No. 99, 2001
Part 4
Division 1
S. 27....................................	am. No. 114, 2006
Note to s. 29(1)...................	ad. No. 114, 2006
S. 31....................................	am. No. 114, 2006
Note to s. 31........................	ad. No. 114, 2006
S. 33....................................	am. No. 114, 2006
Note to s. 33(1)...................	rs. No. 114, 2006
Note to s. 33(3)...................	ad. No. 114, 2006
S. 38....................................	am. No. 106, 2006
Division 2
S. 41....................................	am. No. 114, 2006
Note 4 to s. 44(1)................	ad. No. 117, 2000
Note 4 to s. 44(2)................	ad. No. 117, 2000
Division 3
Div. 3 of Part 4....................	rs. No. 114, 2006
S. 45....................................	am. No. 99, 2001
	rs. No. 114, 2006
Notes 1, 2 to s. 45(1)..........	ad. No. 99, 2001
	rep. No. 114, 2006
S. 46....................................	rep. No. 99, 2001
	ad. No. 114, 2006
Ss. 47–50............................	rep. No. 114, 2006
Division 4
S. 51....................................	am. No. 114, 2006
S. 51A.................................	ad. No. 114, 2006
Part 5
Division 1
S. 52....................................	am. No. 99, 2001; No. 114, 2006
Note to s. 52(4)...................	ad. No. 114, 2006
S. 55....................................	am. No. 114, 2006
Division 2
S. 57....................................	am. No. 114, 2006
Note to s. 57........................	ad. No. 114, 2006
S. 58A.................................	ad. No. 114, 2006
S. 60....................................	am. No. 114, 2006
Notes 1, 2 to s. 60...............	rep. No. 114, 2006
Note to s. 60........................	ad. No. 114, 2006
S. 61....................................	am. No. 114, 2006
S. 62A.................................	ad. No. 114, 2006
Part 6
S. 63....................................	am. No. 99, 2001; No. 114, 2006
S. 65....................................	rs. No. 114, 2006
S. 65A.................................	ad. No. 114, 2006
S. 66....................................	am. No. 114, 2006
S. 66A.................................	ad. No. 114, 2006
Part 7
Division 1
S. 68....................................	am. No. 99, 2001
S. 73....................................	am. No. 99, 2001
Note to s. 73........................	ad. No. 106, 2006
Division 2
Heading to Div. 2 of Part 7..	rs. No. 99, 2001
S. 74A.................................	ad. No. 99, 2001
S. 78....................................	am. No. 99, 2001; No. 114, 2006
Note to s. 78........................	am. No. 114, 2006
Heading to s. 79..................	am. No. 114, 2006
S. 79....................................	am. No. 114, 2006
Note to s. 79........................	ad. No. 114, 2006
S. 80....................................	am. No. 99, 2001
Division 3
Div. 3 of Part 7....................	ad. No. 99, 2001
Ss. 80A–80F.......................	ad. No. 99, 2001
Note to s. 80F......................	ad. No. 114, 2006
S. 80G.................................	ad. No. 99, 2001
Note to s. 80G(1)................	ad. No. 114, 2006
S. 80H.................................	ad. No. 99, 2001
Part 8
Heading to Part 8.................	rs. No. 106, 2006
Division 1
Subdivision A
Heading to Subdiv. A of...... Div. 1 of Part 8	ad. No. 106, 2006
S. 82A.................................	ad. No. 114, 2006
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
Ss. 84A–84D.......................	ad. No. 106, 2006
Division 2
Ss. 86, 87............................	am. No. 114, 2006
S. 88....................................	am. No. 99, 2001; No. 114, 2006
Note 2 to s. 88(2)................	rs. No. 114, 2006
S. 88A.................................	ad. No. 114, 2006
S. 90....................................	am. No. 114, 2006
Part 9
S. 92....................................	am. No. 114, 2006
Note to s. 92(4)...................	rep. No. 114, 2006
Notes 1, 2 to s. 92(4)..........	ad. No. 114, 2006
S. 96A.................................	ad. No. 99, 2001
Note 2 to s. 100(1)..............	am. No. 114, 2006
S. 101..................................	am. No. 114, 2006
Part 12
Note 3 to s. 120(1)..............	ad. No. 117, 2000
Note 3 to s. 120(2)..............	ad. No. 117, 2000
Note 4 to s. 120(3)..............	ad. No. 117, 2000
Note 4 to s. 121(1)..............	ad. No. 117, 2000
S. 122..................................	am. No. 99, 2001
S. 127..................................	am. No. 99, 2001
S. 128..................................	am. No. 99, 2001; No. 114, 2006
Note to s. 128......................	ad. No. 114, 2006
S. 129..................................	am. No. 100, 1998
Note to s. 129(6).................	am. No. 100, 1998
Part 13
S. 131..................................	am. No. 91, 1997
Note to s. 131......................	ad. No. 117, 2000
S. 132..................................	am. No. 91, 1997; No. 99, 2001; No. 114, 2006
Heading s. 133....................	am. No. 91, 1997
S. 133..................................	am. No. 91, 1997; No. 114, 2006
S. 133A...............................	ad. No. 144, 1997
Ss. 134–136........................	am. No. 91, 1997
S. 137..................................	am. No. 91, 1997; No. 99, 2001
Note 3 to s. 138...................	am. No. 99, 2001
S.139...................................	am. No. 91, 1997
Heading to s. 140................	am. No. 91, 1997
S. 140..................................	am. No. 91, 1997
S. 141..................................	am. No. 91, 1997; No. 114, 2006
S. 141A...............................	ad. No. 114, 2006
S. 142..................................	am. No. 91, 1997
S. 143..................................	am. No. 91, 1997; No. 140, 2001
Note to s. 143(2) Renumbered Note 1.........	No. 114, 2006
Note 2 to s. 143(2)..............	ad. No. 114, 2006
Part 14
S. 145..................................	am. No. 140, 2001
Note 3 to s. 145(1)..............	ad. No. 117, 2000
S. 146..................................	am. No. 140, 2001
Note 3 to s. 146(1)..............	ad. No. 117, 2000
S. 147..................................	am. No. 140, 2001
Note 4 to s. 148...................	ad. No. 117, 2000
Ss. 150, 151........................	am. No. 140, 2001
Note 3 to s. 151(4)..............	ad. No. 117, 2000
S. 153..................................	am. No. 140, 2001
Note 2 to s. 153(3)..............	rs. No. 140, 2001
S. 154..................................	am. No. 140, 2001
Note 2 to s. 154(2)..............	rs. No. 140, 2001
S. 155..................................	rep. No. 100, 1998
S. 156..................................	am. No. 100, 1998; No. 140, 2001
Note 2 to s. 156(2)..............	am. No. 100, 1998
Note 3 to s. 156(2)..............	rep. No. 100, 1998
Note 4 to s. 156(2).............. Relocated from s. 155(2)	No. 100, 1998
Note to s. 156(6).................	rs. No. 140, 2001
Note 2 to s. 157(2)..............	rs. No. 140, 2001
S. 158..................................	rep. No. 99, 2001
Heading to s.. 159...............	am. No. 86, 2002
S. 159..................................	am. No. 99, 2001; No. 86, 2002
Heading to s. 160................	rs. No. 140, 2001
S. 160..................................	am. No. 140, 2001
Note to s. 160(1).................	ad. No. 140, 2001
Part 15
Note to s. 162......................	rep. No. 114, 2006
Part 16
S. 170..................................	am. No. 99, 2001
S. 173..................................	am. No. 106, 2006
S. 174..................................	rs. No. 106, 2006
S. 175..................................	am. No. 106, 2006
Note 2 to s. 175(2)..............	rs. No. 106, 2006
Note 3 to s. 175(2)..............	ad. No. 106, 2006
Heading to s. 176................	rs. No. 106, 2006
S. 176..................................	am. No. 106, 2006
Note 2 to s. 177(1)..............	am. No. 106, 2006
Note 3 to s. 177(1)..............	am. No. 114, 2006
S. 178..................................	am. No. 106, 2006
S. 179..................................	rs. No. 106, 2006
S. 180A...............................	ad. No. 99, 2001
Note 2 to s. 181(2)..............	am. No. 106, 2006
S. 181..................................	am. No. 114, 2006
Part 17
S. 186..................................	am. No. 99, 2001
Note to s. 187......................	rs. No. 114, 2006
S. 188..................................	rep. No. 114, 2006
Part 17A
Part 17A..............................	ad. No. 117, 2000
S. 189A...............................	ad. No. 117, 2000
Part 18
S. 197..................................	am. No. 114, 2006
Part 19
S. 206..................................	am. No. 146, 1999; No. 48, 2003; No. 106, 2006
Part 21
Division 1
S. 212..................................	rs. No. 100, 1998
S. 217A...............................	ad. No. 106, 2006
Division 2
S. 222..................................	am. No. 99, 2001
Division 3
S. 223..................................	am. No. 91, 1997; No. 106, 2006
S. 223A...............................	ad. No. 106, 2006
S. 224..................................	am. No. 48, 2003; No. 106, 2006
Note to s. 224(5).................	ad. No. 114, 2006
S. 226..................................	am. No. 114, 2006
S. 226A...............................	ad. No. 106, 2006
S. 226B...............................	ad. No. 114, 2006
Ss. 228A, 228B...................	ad. No. 100, 1998
S. 229..................................	rs. No. 100, 1998
S. 231..................................	am. No. 100, 1998
Part 22
Division 2
S. 239A...............................	ad. No. 114, 2006
Division 3
Heading to s. 254................	am. No. 99, 2001
Ss. 254A–254C...................	ad. No. 99, 2001
Division 4
Heading to s. 261................	am. No. 91, 1997
S. 261..................................	am. No. 91, 1997