Commonwealth Consolidated Acts

TRADE MARKS ACT 1995 - SECT 129

             (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.