TRADE MARKS ACT 1995
Table of Provisions
PART 1--PRELIMINARY
- 1 Short title
- 2 Commencement
- 3 Act binds the Crown
- 4 Application of Act
- 4A Application of the
- 5 Repeal of
PART 2--INTERPRETATION
- 6 Definitions
- 6A Periods expressed in months
- 7 Use of trade mark
- 8 Definitions ofand
- 9 Definition ofand
- 10 Definition of
- 11 Definition of
- 12 Definition of
- 13 Definition of
- 14 Definition ofand
- 15 Definition ofin relation to wine
- 16 Definition of
PART 3--TRADE--MARKS AND TRADE MARK RIGHTS
- 17 What is a trade mark?
- 18 Certain signs not to be used as trade marks etc.
- 19 Certain trade marks may be registered
- 20 Rights given by registration of trade mark
- 21 Nature of registered trade mark as property
- 22 Power of registered owner to deal with trade mark
- 23 Limitation on rights if similar trade marks etc. registered by different persons
- 24 Trade mark consisting of sign that becomes accepted as sign describing article etc.
- 25 Trade mark relating to article etc. formerly manufactured under patent
- 26 Powers of authorised user of registered trade mark
PART 4--APPLICATION--FOR REGISTRATION
DIVISION 1--General- 27 Application--how made
- 28 Application by joint owners
- 29 Application for registration of trade mark whose registration has been sought in a Convention country--claim for priority
- 30 Particulars of application to be published
- 31 Registrar to examine, and report on, application
- 32 Registrar to decide on disputed classification of goods etc.
- 33 Application accepted or rejected
- 34 Notification of decision
- 35 Appeal
- 36 Deferment of acceptance
- 37 Lapsing of application if not accepted in time
- 38 Revocation of acceptance DIVISION 2--Grounds for rejecting an application
- 39 Trade mark containing etc. certain signs
- 40 Trade mark that cannot be represented graphically
- 41 Trade mark not distinguishing applicant's goods or services
- 42 Trade mark scandalous or its use contrary to law
- 43 Trade mark likely to deceive or cause confusion
- 44 Identical etc. trade marks DIVISION 3--Divisional applications
- 45 Divisional applications
- 46 Rules relating to divisional applications DIVISION 4--Application for registration of series of trade marks
- 51 Application--series of trade marks
- 51A Linking series applications
PART 5--OPPOSITION--TO REGISTRATION
DIVISION 1--General- 52 Opposition
- 52A Notice of intention to defend opposition to registration
- 53 Circumstances in which opposition may proceed in name of a person other than the person who filed the notice
- 54 Opposition proceedings
- 54A Lapsing of opposed application if no notice to defend the application filed
- 55 Decision
- 56 Appeal DIVISION 2--Grounds for opposing registration
- 57 Registration may be opposed on same grounds as for rejection
- 58 Applicant not owner of trade mark
- 58A Opponent's earlier use of similar trade mark
- 59 Applicant not intending to use trade mark
- 60 Trade mark similar to trade mark that has acquired a reputation in Australia
- 61 Trade mark containing or consisting of a false geographical indication
- 62 Application etc. defective etc.
- 62A Application 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
- 64 Amendment before particulars of application are published
- 65 Amendment after particulars of application have been published--request for amendment not advertised
- 65A Amendment after particulars of application have been published--request for amendment advertised
- 66 Amendment of other documents
- 66A Registrar may require certain requests to be in writing
- 67 Appeal
PART 7--REGISTRATION--OF TRADE MARKS
DIVISION 1--Initial registration- 68 Obligation to register
- 69 Registration--how effected
- 70 Colours in registered trade marks
- 71 Notification of registration
- 72 Date and term of registration
- 73 Ceasing of registration
- 74 Disclaimers DIVISION 2--Renewal of registration (general)
- 74A Application of this Division
- 75 Request for renewal
- 76 Notice of renewal due
- 77 Renewal before registration expires
- 78 Failure to renew
- 79 Renewal within 6 months after registration expires
- 80 Status of unrenewed trade mark DIVISION 3--Renewal of registration (registration delayed for 10 or more years after filing date)
- 80A Application of this Division
- 80B Expiry of registration
- 80C Notification about renewal
- 80D Request for renewal
- 80E Renewal within prescribed period
- 80F Failure to renew
- 80G Renewal within 10 months after end of prescribed period
- 80H Status of unrenewed trade mark
PART 8--AMENDMENT--, CANCELLATION AND REVOCATION OF REGISTRATION
DIVISION 1--Action by Registrar- 81 Correction of Register
- 82 Adaptation of classification
- 82A Linking series registrations
- 83 Amendment of particulars of trade mark entered in Register
- 83A Amendment of registered trade mark--inconsistency with international agreements
- 84 Cancellation of registration
- 84A Registration may be revoked
- 84B Registration must be revoked if opposition was ignored in registration process
- 84C Effect of revocation of registration
- 84D Appeal from revocation of registration DIVISION 2--Action by court
- 85 Amendment to correct error or omission
- 86 Amendment or cancellation on ground of contravention of condition etc.
- 87 Amendment or cancellation--loss of exclusive rights to use trade mark
- 88 Amendment or cancellation--other specified grounds
- 88A Applications by Registrar
- 89 Rectification may not be granted in certain cases if registered owner not at fault etc.
- 90 Duties and powers of Registrar DIVISION 3--Amendment of certificate of registration
- 91 Amendment of certificate of registration
PART 9--REMOVAL--OF TRADE MARK FROM REGISTER FOR NON-USE
- 92 Application for removal of trade mark from Register etc.
- 93 Time for making application
- 94 Referral to court
- 95 Notification of application
- 96 Notice of opposition
- 96A Circumstances in which opposition may proceed in name of a person other than the person who filed the notice
- 97 Removal of trade mark from the Register etc. if application unopposed etc.
- 98 Trade mark restored to Register if notice of opposition filed within extended time
- 99 Proceedings before Registrar
- 99A Dismissal of opposition filed with Registrar
- 100 Burden on opponent to establish use of trade mark etc.
- 101 Determination of opposed application--general
- 102 Determination of opposed application--localised use of trade mark
- 103 Registrar to comply with order of court
- 104 Appeal
- 105 Certificate--use of trade mark
PART 10--ASSIGNMENT--AND TRANSMISSION OF TRADE MARKS
- 106 Assignment etc. of trade mark
- 107 Applications for record to be made of assignment etc. of trade mark whose registration is sought
- 108 Recording of assignment etc. of trade mark whose registration is sought
- 109 Application for record of assignment etc. of registered trade mark to be entered in Register
- 110 Recording of assignment etc. of registered trade mark
- 111 Notification of application to be given to person recorded as claiming interest in trade mark etc.
PART 11--VOLUNTARY--RECORDING OF CLAIMS TO INTERESTS IN AND RIGHTS IN RESPECT OF TRADE MARKS
DIVISION 1--Preliminary- 112 Object of Part DIVISION 2--Interests in, and rights in respect of, registered trade marks
- 113 Application for registration of interest or right in trade mark
- 114 Record of claims to interest etc.
- 115 Amendment and cancellation
- 116 Record not proof etc. of existence of right etc. DIVISION 3--Interests in, and rights in respect of, unregistered trade marks
- 117 Application for recording of interest or right in trade mark
- 118 Record of claims to interest etc.
- 119 Amendment and cancellation
PART 12--INFRINGEMENT--OF TRADE MARKS
- 120 When is a registered trade mark infringed?
- 121 Infringement of trade mark by breach of certain restrictions
- 122 When is a trade mark not infringed?
- 122A Exhaustion of a registered trade mark in relation to goods
- 123 Services to which registered trade mark has been applied by or with consent of registered owner
- 124 Prior use of identical trade mark etc.
- 125 What courts may hear action for infringement of registered trade mark
- 126 What relief can be obtained from court
- 127 Special case--plaintiff not entitled to damages etc.
- 128 Circumstances in which action may not be brought
- 129 Application for relief from unjustified threats
- 130 Counterclaim for infringement
- 130A Mere notification of registered trade mark not a threat
PART 13--IMPORTATION--OF GOODS INFRINGING AUSTRALIAN TRADE MARKS
- 131 Object of Part
- 132 Notice of objection to importation
- 133 Comptroller-General of Customs may seize goods infringing trade mark
- 133A Determinations about owners of goods
- 134 Notice of seizure
- 134A Inspection, release etc. of seized goods
- 135 Consent to forfeiture of seized goods
- 136 Claim for release of seized goods
- 136A Seized goods not claimed are forfeited
- 136B Late claim for release of seized goods
- 136C Objector to be notified of claim
- 136D Release of seized goods
- 136E Goods released but not collected are forfeited
- 137 Action for infringement of trade mark
- 138 Action for infringement by authorised user
- 139 Disposal of seized goods forfeited to the Commonwealth
- 140 Power of Comptroller-General of Customs to retain control of goods
- 141 Insufficient security
- 141A Failure to comply with undertaking etc.
- 142 Commonwealth not liable for loss etc. suffered because of seizure
- 143 Power to require information
- 144 Modification in relation to Norfolk Island etc.
PART 14--OFFENCES
- 145 Falsifying or removing a registered trade mark
- 146 Falsely applying a registered trade mark
- 147 Making a die etc. for use in trade marks offence
- 147A Drawing etc. trade marks for use in offence
- 147B Possessing or disposing of things for use in trade marks offence
- 148 Goods with false trade marks
- 150 Aiding and abetting offences
- 151 False representations regarding trade marks
- 152 False entries in Register etc.
- 153 Disobeying summons etc.
- 154 Refusing to give evidence etc.
- 156 Acting or holding out without being registered
- 157 False representation about Trade Marks Office
- 157A Incorporated trade marks attorney must have a trade marks attorney director
- 159 Forfeiture orders under the proceeds of crime legislation
- 160 Conduct of employees and agents of natural persons
PART 15--COLLECTIVE--TRADE MARKS
- 161 Object of Part
- 162 What is a collective trade mark?
- 163 Application of Act
- 164 Application for registration
- 165 Limitation on rights given by registered collective trade mark
- 166 Assignment etc. of collective trade mark
- 167 Infringement of collective trade mark
PART 16--CERTIFICATION--TRADE MARKS
- 168 Object of Part
- 169 What is a certification trade mark?
- 170 Application of Act
- 171 Rights given by registration of a certification trade mark
- 172 Rights of persons allowed to use certification trade mark
- 173 Rules governing the use of certification trade marks
- 174 Registrar to send documents to Commission
- 175 Certificate by Commission
- 176 Acceptance or rejection of application
- 177 Additional ground for rejecting an application or opposing registration--certification trade mark not distinguishing certified goods or services
- 178 Variation of rules
- 179 Registrar must publish rules
- 180 Assignment of registered certification trade mark
- 180A Assignment of unregistered certification trade mark
- 181 Rectification of the Register by order of court
- 182 Variation of rules by order of court
- 183 Delegation of Commission's powers and functions
PART 17--DEFENSIVE--TRADE MARKS
- 184 Object of Part
- 185 Defensive trade marks
- 186 Application of Act
- 187 Additional grounds for rejecting application for registration or opposing registration
- 189 Cancellation of registration by Registrar
PART 17A--PROTECTED--INTERNATIONAL TRADE MARKS UNDER THE MADRID PROTOCOL
- 189A Regulations implementing the Madrid Protocol
PART 18--JURISDICTION--AND POWERS OF COURTS
- 190 Prescribed courts
- 191 Jurisdiction of the Federal Court
- 191A Jurisdiction of the Federal Circuit and Family Court of Australia (Division 2)
- 192 Jurisdiction of other prescribed courts
- 193 Exercise of jurisdiction
- 194 Transfer of proceedings
- 195 Appeals
- 196 Registrar may appear in appeals
- 197 Powers of Federal Court and Federal Circuit and Family Court of Australia (Division 2) on hearing an appeal
- 198 Practice and procedure of prescribed courts
PART 19--ADMINISTRATION
- 199 Trade Marks Office and sub-offices
- 200 Seal of Trade Marks Office
- 201 Registrar of Trade Marks
- 202 Registrar's powers
- 203 Exercise of power by Registrar
- 204 Registrar to act as soon as practicable
- 205 Deputy Registrar of Trade Marks
- 206 Delegation of Registrar's powers and functions
PART 20--THE--REGISTER AND OFFICIAL DOCUMENTS
- 207 The Register
- 208 Register may be kept on computer
- 209 Inspection of Register
- 210 Evidence--the Register
- 211 Evidence--certified copies of documents
PART 21--MISCELLANEOUS
DIVISION 1--Applications and other documents- 212 Making and signing applications etc.
- 213 Filing of documents
- 213A Approved means of filing documents
- 213B Directions by Registrar for filing of documents
- 213C Directions by Registrar for filing of evidence
- 214 Withdrawal of application etc.
- 214A Notifications by Registrar under this Act
- 215 Address for service
- 216 Change of name
- 217 Death of applicant etc.
- 217A Prescribed documents relating to trade marks to be made available for public inspection DIVISION 2--Proceedings before the Registrar or a court
- 218 Description of registered trade mark
- 219 Evidence of trade usage
- 220 Death of party to proceeding before Registrar
- 221 Costs awarded by Registrar
- 222 Security for costs DIVISION 2A--Computerised decision-making
- 222A Computerised decision-making DIVISION 3--General
- 223 Fees
- 223AA Approved means of paying a fee
- 223A Doing act when Trade Marks Office reopens after end of period otherwise provided for doing act
- 224 Extension of time
- 225 Convention countries
- 226 Publication ofetc.
- 226A Requirements for confidential treatment of information held in the Trade Marks Office
- 226B Certain proceedings do not lie
- 227 Notice regarding review of decision by Administrative Appeals Tribunal
- 228 Use of trade mark for export trade
- 228A Registration of trade marks attorneys
- 228B Deregistration of trade marks attorneys
- 229 Privileges of trade marks attorney and patent attorney
- 229AA Designated Manager may disclose information to Board
- 229A Designated Manager may disclose information to ASIC
- 229B Publishing personal information of registered trade marks attorneys
- 230 Passing off actions
- 231 Regulations
- 231A Regulations may make provision in relation to the
PART 22--REPEAL--AND TRANSITIONAL
DIVISION 1--Repeal- 232 Repeal DIVISION 2--Marks registered under the repealed Act
- 233 Automatic registration under this Act
- 234 Registration conclusive after 7 years
- 235 Term of registration
- 236 Renewal
- 237 Restoration of particulars to Register and renewal of registration where registration expired within 12 months before 1 January 1996
- 238 Disclaimers
- 239 Rules governing the use of certification trade marks registered in Part C of the old register
- 239A Linked trade marks DIVISION 3--Matters pending immediately before repeal of repealed Act
- 240 Applications, notices etc.--general
- 241 Application for registration of trade mark
- 242 Divisional application in relation to pending application
- 243 More than one application lodged on same day for registration of same trade mark
- 244 Application for registration of trade mark whose registration has been sought in Convention country
- 245 Application for registration of a mark in Part C of the old register
- 246 Application for registration of a mark in Part D of the old register
- 247 Amendment of application--specification of goods or services
- 248 Revival of application for registration of trade mark that had lapsed before 1 January 1996
- 249 Application for registration of assignment etc.
- 250 Rectification of Register
- 251 Action for removal of trade mark from Register for non-use
- 252 Action for infringement of trade mark etc.
- 253 Action under this Act for infringement of trade mark under repealed Act
- 254 Acts not constituting infringement of existing registered mark
- 254A Acts not constituting infringement of trade mark--pending application under the repealed Act
- 254B Part B defence--infringement of existing registered mark
- 254C Part B defence--infringement of trade mark (pending application under the repealed Act)
- 255 Application of this Act--general
- 256 Fees DIVISION 4--General
- 257 The Registrar and Deputy Registrar
- 258 Confidential information received by Registrar under section 74 of the repealed Act
- 259 Documents kept under repealed Act
- 260 Address for service