TRADE MARKS ACT 1994 No. 156 of 1994 - SECT 100 Burden on opponent to establish use of trade mark etc.

TRADE MARKS ACT 1994 No. 156 of 1994 - SECT 100

100.(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 or
               services to which the opposed application relates; or

   (b)  any allegation (made under paragraph 92(4)(a) or (b)) that a
        trade mark has not, at any time before or during a specified period
        (as the case may be), been used in good faith by its registered owner
        in relation to the goods or
services to which the opposed application relates ("relevant goods or
services").

(2) For the purposes of subsection (1), (except if subsection (5) applies) the
opponent is taken to have rebutted the allegation that a trade mark has not
been used in good faith by its registered owner in relation to the
relevant goods or services if the opponent has established:

   (a)  that the trade mark has been used by its registered owner in relation
        to the relevant goods or services; or

   (b)  that the trade mark has been used by its registered owner in relation
        to goods or services in respect of which the trade mark is registered
("registered goods or services") that are goods of the same description as, or
closely related to, the relevant goods or services; or

   (c)  that the trade mark with additions or alterations not substantially
        affecting its identity has been used by its registered owner in
        relation to:

        (i)    the relevant goods or services; or

        (ii)   registered goods or services that are of the same description
               as, or closely related to, the relevant goods or services; or

   (d)  the trade mark was not used by its registered owner 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 the specified period.

(3) For the purposes of subsection (1), (except if subsection (5) applies) the
opponent is also taken to have rebutted the allegation that the trade mark has
not been used in good faith by its registered owner in relation to the
relevant goods or services if the opponent has established:

   (a)  that the trade mark, or the trade mark with additions or alterations
        not substantially affecting its identity, has been used by the
        registered owner in relation to goods or services (other than
        registered goods or services) that are of the same description as, or
        closely related to, the relevant goods or services (for example, the
        relevant goods may be silk ties and the unregistered goods nylon
        ties); or

   (b)  that the registered owner of the trade mark has used an associated
        trade mark; and 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 registered owner as having used the trade mark in relation
        to the relevant goods or services.

(4) For the purposes of subsection (1), (except if subsection (5) applies) the
opponent is also taken to have rebutted the allegation that the trade mark has
not been used in good faith by the registered owner in relation to the
relevant goods or services if the opponent has established that the trade
mark, or the trade mark with additions or alterations not substantially
affecting its identity, was used by an unregistered assignee of the trade mark
in relation to:

   (a)  the relevant goods or services; or

   (b)  goods or services (whether registered or not) that are of the same
        description as, or closely related to, the relevant goods or services;
        and 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 registered owner as having used the trade mark in relation
        to the relevant goods or services if:

   (c)  the unregistered assignee subsequently becomes the registered owner of
        the trade mark; and

   (d)  the use of the trade mark by the assignee is in accordance with the
        assignment.

(5) The opponent to an application may not rely on paragraph (2)(b),
subparagraph (2)(c)(ii) or paragraph (3)(a) or (b):

   (a)  in the case of an application by the registered owner of a trade mark
        registered in respect of the relevant goods or services-if the
        applicant's trade mark is substantially identical with, or
        deceptively similar to, the opponent's trade mark and:

        (i)    the applicant was granted registration of his or her trade mark
               on the ground that there had been honest concurrent use of the
               trade marks; or

        (ii)   the applicant was a person in relation to whom subsection 
               44(4) applied; or

   (b)  in any other case-if:

        (i)    the applicant's trade mark is substantially identical with, or
               deceptively similar to, the opponent's trade mark; and

        (ii)   the Registrar or the court is of the opinion that the
               applicant's trade mark could properly be granted registration
               in respect of the relevant goods or services on the ground that
               there has been honest concurrent use of the trade marks or on
               the ground that subsection 44(4) would apply in relation to the
               applicant.