Commonwealth Numbered Acts
[Index]
[Table]
[Search]
[Search this Act]
[Notes]
[Noteup]
[Previous]
[Next]
[Download]
[Help]
TRADE MARKS ACT 1995 No. 119 of 1995 - SECT 100
Burden on opponent to establish use of trade mark etc.
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 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
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.
AustLII: Copyright Policy
| Disclaimers
| Privacy Policy
| Feedback