Commonwealth Consolidated Acts

TRADE MARKS ACT 1995

TABLE OF PROVISIONS

           Long Title

   PART 1--PRELIMINARY

   1.      Short title  
   2.      Commencement  
   3.      Act binds the Crown  
   4.      Application of Act  
   4A.     Application of the Criminal Code  
   5.      Repeal of Trade Marks Act 1994  

   PART 2--INTERPRETATION

   6.      Definitions  
   6A.     Periods expressed in months  
   7.      Use of trade mark  
   8.      Definitions of authorised user and authorised use  
   9.      Definition of applied to and applied in relation to  
   10.     Definition of deceptively similar  
   11.     Definition of pending  
   12.     Definition of priority date  
   13.     Definition of remove from the Register  
   14.     Definition of similar goods and similar services  
   15.     Definition of originate in relation to wine  
   16.     Definition of repealed Act  

   PART 3--TRADE--MARKS AND TRADE MARK RIGHTS

   17.     What is a trade mark?  
   18.     Certain signs not to be used as trade marks etc.  
   19.     Certain trade marks may be registered  
   20.     Rights given by registration of trade mark  
   21.     Nature of registered trade mark as property  
   22.     Power of registered owner to deal with trade mark  
   23.     Limitation on rights if similar trade marks etc. registered by different persons  
   24.     Trade mark consisting of sign that becomes accepted as sign describing article etc.  
   25.     Trade mark relating to article etc. formerly manufactured under patent  
   26.     Powers of authorised user of registered trade mark  

   PART 4--APPLICATION--FOR REGISTRATION

           Division 1--General

   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 published  
   65A.    Amendment after particulars of application have been published--request for amendment published  
   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 6 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

              Subdivision A--Amending Register

   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  

              Subdivision B--Cancelling registration

   84.     Cancellation of registration  

              Subdivision C--Revoking 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 in certain circumstances  
   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.    Preparation etc. of documents relating to trade marks  
   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 Review 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 Public Health (Tobacco and Other Products) Act 2023  

   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