WORLD TRADE ORGANIZATION  
ORGANISATION MONDIALE DU COMMERCE  
ORGANIZACIÓN MUNDIAL DEL COMERCIO  IP/N/1/AUS/T/3 
15 August 2007 
 (07-3454) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Original:   English/ 
 anglais/ 
 inglés 
 
MAIN DEDICATED INTELLECTUAL PROPERTY  
LAWS AND REGULATION S NOTIFIED UNDER  
ARTICLE 63.2 OF THE AGREEMENT 
 
AUSTRALIA 
 
 The present document reproduces the text1 of the following laws and regulations, notified by Australia 
under Article 63.2 of the Agreement (see document IP/N/1/AUS/2).  Page 
- Trade Marks Act 1995 - Act No.119 of 1995  as amended - Consolidated as in force 
on 20 October 1999 (includes amendments up to Act No. 100, 1998) 2 
- Trade marks Amendment (Madrid Protocol) Act 2000 - No.117, 2000 117 
- Trade Marks and Other Legislation Amendment Act 2001 - No.99, 2001 123 
 
Conseil des aspects des droits de propriété 
intellectuelle qui touchent au commerce 
 
PRINCIPALES LOIS ET RÉGLEMEN TATIONS CONSACRÉES À LA  
PROPRIÉTÉ INTELLECTUELLE NOTI FIÉES AU TITRE  
DE L'ARTICLE 63:2 DE L'ACCORD 
 
AUSTRALIE 
 
 Le présent document contient le texte1 des lois et réglementations ci-après, notifiées par l'Australie au 
titre de l'article 63:2 de l'Accord  (voir le document IP/N/1/AUS/2). 
 Page 
- Loi de 1995 sur les marques - Loi n° 119 de 1995 modifiée - dans sa version codifiée en 
vigueur le 20 octobre 1999 (y compris les modifications jusqu'à la Loi n° 100 de 1998) 2 
- Loi de 2000 portant modification de la Loi sur les marques (Protocole de Madrid) - n° 117 
de 2000 117 
- Loi de 2001 portant modification de la Loi sur les marques et d'autres lois - n° 99 de 2001 123 
 
Consejo de los Aspectos de los Derechos de Propiedad Intelectual relaciona dos con el Comercio  
 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA  
PROPIEDAD INTELECTUAL NOTI FICADOS EN VIRTUD  
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO 
 
AUSTRALIA 
 
 En el presente documento se reproduce el texto
1 de las siguientes leyes y reglamentos notificados por 
Australia en virtud de lo dispuesto en el párrafo 2 del artículo 63 del Acuerdo (véase el documento IP/N/1/AUS/2). 
 Página 
- Ley de Marcas de 1995 - Ley N° 119 de 1995 modificada - Versión refundida en vigor el 
20 de octubre de 1999 (incluye las modificaciones hasta la Ley Nº 100, 1998) 2 
- Ley de 2000 por la que se modifica la Ley de Marcas (Protocolo de Madrid) - Nº 117, 2000 117 
- Ley de 2001 por la que se modifica la Ley de Marcas y otra legislación - Nº 99, 2001 123 
                                                      
1 In English only/En anglais seulement/En inglés solamente.  IP/N/1/AUS/T/3 
Page 2  
 
   
 
 
Trade Marks Act 1995 
Act No. 119 of 1995 as amended 
Consolidated as in force on 20 October 1999 
(includes amendments up to Act No. 100, 1998) Prepared by the Office of Legislative Drafting, 
Attorney-General’s Department, Canberra  IP/N/1/AUS/T/3 
 Page 3 
 
 
  READER’S GUIDE  
 
This guide aims to give you a general id ea of the purpose of this Act and some 
information about its structure. It also  explains briefly how the operation and 
interpretation of this Act is affected by other Acts. 
 Purpose of this Act  
 
This Act provides for the registration of  trade marks, collective trade marks, 
certification trade marks and defensive trad e marks (for a definition of these terms, 
see sections 17, 162, 169 and 185 respectiv ely) and sets out and protects the rights 
deriving from registration.  
 
It is a rewrite of the legislation relating to trade marks, certification trade marks and 
defensive trade marks. The previous Act di d not deal with collective trade marks.  
 
In rewriting the legislation, some changes have been made to reflect international 
trends towards greater uniformity in that fiel d of law. In particular, this Act conforms 
with the minimum standards and principles prescribed for trade marks in the Agreement Establishing the World Trade Organization.  
An attempt has also been made to simplif y the language as much as possible to make 
it easier for readers to understand the law. Fo r that reason, a number of terms used in 
the old legislation have been replaced by simpler ones. For example, the word 
“owner” has been used where the previous Act referred to the proprietor of a trade 
mark. No difference in meaning is intended when simpler terms have thus been used. 
Summary of this Act  
 Part 1: Deals with formal matters su ch as the commencement of this Act and 
its general application.  
  Part 2: Contains definitions and terms that are used frequently throughout 
this Act.  
  Part 3: Explains what is a trade mark and sets out the rights given by this 
Act to the registered owner and any authorised user of a registered 
trade mark. 
  Parts 4 and 5: Deal with the steps that  you have to take to have a trade mark 
registered.  
 
 Part 6: Sets out how and why an application for registration and other 
documents may be amended.  
  Parts 
7, 8 and 9 : Deal with the registration of trade marks and how and why 
particulars of the registration of a trade mark may be amended, 
cancelled or removed from the Register.  
  Parts 10 and 11: Deal with the assignment of trade marks, the registration of 
assignments of registered trade marks and the recording of the rights and interests that persons (other th an registered owners) may have in IP/N/1/AUS/T/3 
Page 4  
 
  registered trade marks or trade marks whose registration is being 
sought.  
  Parts 12, 13 and 14:   Deal with the protection of trade marks. Part 12 sets out what 
constitutes an infringement of a trade mark and how to obtain redress 
and relief in cases of infringement. Part 13 provides for a special 
regime to deal with any importation of goods that would infringe a registered trade mark. Part 14 makes certain types of conduct offences against this Act.  
 
 Parts 15, 16 and 17:  Explain what are collec tive trade marks, certification trade marks and 
defensive trade marks and apply to  them, with necessary alterations, 
the provisions of this Act relating to trade marks.  
  Part 18: Deals with the jurisdiction of the courts to hear and determine 
matters arising under this Act.  
  Parts 19 and 20: Deal with the Trade Mark s Office, the officials responsible for its 
administration and the keeping of the Register of Trade Marks.  
  Part 21: Deals with miscellaneous matters such as the payment of fees, the 
service of documents and the making of regulations.  
  Part 22: Repeals the Trade Marks Act 1955 and explains how matters that 
were being dealt with under that Act at  the time of its repeal are to be 
dealt with when this Act is in force. 
 
 How to use this Act  
 
 Definitions:  Section 6 contains definitions of terms that have special meanings and are used 
frequently in this Act. A list of terms defi ned in section 6 appears after the Table of 
Provisions. Notes:  Notes are to be found throughout the text. They are designed to help you 
find your way through the Act. They may tell yo u that certain words or terms are defined and 
where to find the definition; they may alert you to other provisions in this Act and in other 
legislation that are relevant to the text you are reading; or they may draw your attention to 
information that may help you to understand th e contents or legal consequences of certain 
provisions or how to comply with them.  
 
 Chart:  The appendix to this Guide contains a ch art showing the main steps involved in 
obtaining the registration of a trade mark. Th e chart is intended to be used only as an 
illustration and is not intended to have any othe r effect. If there is any inconsistency between 
any matter contained in the chart and a provision of this Act or the regulations, the provision 
prevails. 
 
Related legislation  
 
 The following Acts are directly relevant to the operation or interpretation of this Act. 
  Acts Interpretation Act 1901  
 
 That Act contains general rul es about the meaning or effect of  many terms and provisions that 
are commonly used in Commonwealth Acts. Some of the notes used in this Act draw your 
attention to some of them, but it is not possible to refer to all of them.  IP/N/1/AUS/T/3 
 Page 5 
 
 
   
Crimes Act 1914  
 
 In Parts 13 and 14, you will find that a penalty, expressed as imprisonment for a particular 
period or a number of penalty units, is set out at the foot of some sections or subsections. 
Section 4D of the Crimes Act 1914 provides that this indicates that any contravention of the 
section or subsection is an offence against th is Act punishable upon conviction by a penalty 
not exceeding the penalty set out.  
  If only a term of imprisonment is provided as the penalty for an offence, subsections 4B(2) 
and 4B(3) of the Crimes Act 1914 allow a court to impose an appropriate fine instead of, or in 
addition to, the term of imprisonment.  
  Section 4AA of the Crimes Act 1914 sets out the amount of a penalty unit. Under 
subsection 4B(3) of that Act a court may impose on a body corporate convicted of an offence 
a fine of up to 5 times the amount of the fine  that could be imposed on a natural person 
convicted of that offence.  
  The Crimes Act 1914 contains many other general rules that  apply to offences. It also creates 
offences for conduct related to Commonwealth Ac ts. For example, if, knowing what is going 
on, you are in any way knowingly involved with  another person in committing an offence 
against this Act, section 5 of the Crimes Act 1914 provides that you have committed the same 
offence as the other person. 
 
Trade Marks Act 1955  
  That Act is repealed by this Act. It contained the legislation that previously applied to trade 
marks, certification trade marks and defensive trade marks. Even though it is repealed, this 
Act provides that some of the provisions of that Act are to continue to apply to certain matters 
that were being dealt with under that Ac t immediately before it was repealed.  
  The list of Acts cited above is  not exhaustive. Other Acts ma y also affect the operation or 
interpretation of this Act.  
   IP/N/1/AUS/T/3 
Page 6  
 
   
  
Application  (see section 27) 
Must be in approved form.  
Examination  
The application will be exam ined to ensure it is in 
accordance with the Act and there are no grounds for rejecting it (see section 31). 
Report Issued  
A report to the 
applicant explains any deficiencies in the 
a
pplication.  Applicant 
Response  
Reconsideration  
Acceptance  
Notice of acceptance is sent  to the applicant and 
advertised in the Official Journal .  
In some cases the Registrar may only accept an 
application subject to certain conditions or 
limitations.  
Registration  
The Registrar must give the registered owner a 
certificate and advertise the registration in the Official Journal  (see section 71). 
Initial registration is for a period of 10 years from 
the filing date. 
Renewal  
Required every 10 years.  Hearing by Registrar *
Registrar must provid e
the applicant with a n
opportunity to be hear d
before an application i s
rejected. Rejection  
The Registrar will 
reject an application if it fails any of the 
criteria detailed in 
Division 2 of Part 4. 
Opposition  
Another person may 
oppose registration of the trade mark under Part 5.
 
Hearing by Registrar *  Refusal to Register  
After considering the 
case presented at 
opposition the Registrar may decide 
to refuse to register 
the trade mark. 
* An Appeal may be made to the Federal Court against the decision of the Registrar.
 Unbroken lines signify the most likely course of events. 
Note: Fees and time limits may apply at various stages of this process.  APPENDIX—OBTAINING REGISTRATION OF A TRADE MARK IP/N/1/AUS/T/3 
 Page 7 
 
 
  List of terms defined in section 6 
applicant  
applied to  applied in relation to  approved form  
assignment  
association  Australia  Australian continental shelf  authorised use  
authorised user  
certification trade mark  collective trade mark  Commission  Convention country  
Customs CEO 
date of registration  deceptively similar  defensive trade mark  Deputy Registrar  
designated owner  
divisional application  employee  examine  existing registered mark  Federal Court  
file  
filing date  geographical indication  goods of a person  lawyer  
limitations  
notified trade mark  objector   Official Journal  
old register  opponent  originate  
patent attorney  
pending  person  predecessor in title  prescribed court  
priority date  
Register  registered owner  registered trade mark  Registrar  
registration number  
remove from the Register  repealed Act  seized goods  services of a person  
sign  
similar goods  similar services  this Act  trade mark  trade marks officer  
transmission  
use of a trade mark  use of a trade mark in relation to goods  use of a trade mark in relation to services  word 
 
 IP/N/1/AUS/T/3 
Page 8  
 
   
Contents 
 
Part 1—Preliminary  
  1 Short title [ see Note 1]  
  2 Commencement [ see Note 1]  
  3 Act binds the Crown  
  4 Application of Act  
  5 Repeal of Trade Marks Act 1994   
 
Part 2—Interpretation  
  6 Definitions  
  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 consisti ng of sign that becomes accepted as sign describing 
article etc.  
  25 Trade mark relating to article et c. 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 Notice etc. of decision    35 Appeal    36 Deferment of acceptance    37 Lapsing of application  
  38 Revocation of acceptance   IP/N/1/AUS/T/3 
 Page 9 
 
 
   
 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 Definition of divisional application   
  46 Divisional application possible onl y if initial application is pending  
  47 Divisional application for registration of part of trade mark                48 Divisional application for registration of trade mark in respect of some of the 
goods etc. specified in the initial application  
              49 Divisional application fo r registration of trade mark in respect of goods etc. 
excluded from the initial application  
  50 Filing date   
 Division 4—Application for registration of series of trade marks  
  51 Application—series of trade marks   
Part 5—Opposition to registration  
 
 Division 1—General  
  52 Opposition                53 Circumstances in wh ich opposition may proceed in name of a person other 
than the person who filed the notice  
  54 Opposition proceedings    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    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.  
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 particul ars of application are published  
  65 Amendment after particulars of  application have been published  
  66 Amendment of other documents    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  IP/N/1/AUS/T/3 
Page 10  
 
    71 Notification of registration  
  72 Date and term of registration    73 Ceasing of registration    74 Disclaimers    Division 2—Renewal of registration  
  75 Request for renewal  
  76 Notice of renewal due    77 Renewal before registration expires    78 Failure to renew  
  79 Renewal within 12 months  after registration expires  
  80 Status of unrenewed trade mark   
Part 8—Amendment and cancellation of registration  
 
 Division 1—Action by Registrar  
  81 Correction of Register  
  82 Adaptation of classification    83 Amendment of particulars of trade mark entered in Register    84 Cancellation 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  
              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    97 Removal of trade mark from the Register etc. if application unopposed                98 Trade mark restored to  Register if notice of opposition filed within extended 
time  
  99 Proceedings before Registrar  
  100 Burden on opponent to establish use of trade mark etc.  
  101 Determination of o pposed 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   IP/N/1/AUS/T/3 
 Page 11 
 
 
                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 Notice of application to  be given to person recorded as claiming interest in 
trade mark etc.  
 
Part 11—Voluntary recording of claims to intere sts 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 to have claims to interest etc. recorded  
    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 to have claims to interest etc. recorded  
    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?                  123 Goods etc. 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 Groundless threats of legal proceedings  
  130 Counterclaim by defendant in action on groundless threats  
 
Part 13—Importation of goods infringing Australian trade marks  
  131 Object of Part  
  132 Notice of objection to importation    133 Customs CEO may seize goods infringing trade mark  
  134 Notice of seizure  
  135 Forfeiture of goods    136 Release of goods to owner—no action for infringement    137 Action for infringement of trade mark    138 Action for infringement by authorised user  
  139 Forfeited goods—how to be disposed of  
  140 Power of Customs CEO to retain control of goods    141 Insufficient security    142 Commonwealth not liable for loss etc. suffered because of seizure    143 Power to require information  IP/N/1/AUS/T/3 
Page 12  
 
    144 Modification in relation to Norfolk Island etc.  
 
Part 14—Offences  
    145 Falsifying etc. a registered trade mark  
    146 Falsely applying a registered trade mark  
  147 Manufacture and possession of die etc. for use in commission of offence  
  148 Selling etc. goods with false marks    149 Penalty for offence under section 145, 146, 147 or 148  
  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 Unregistered persons    157 False representation about Trade Marks Office  
  158 Trade marks officer not to prepare documents etc.  
  159 Forfeiture orders under the Proceeds of Crime Act 1987   
  160 Conduct of directors, servants and agents   
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 reject application or send it to Commission    175 Certificate by Commission  
  176 Acceptance of application  
              177 Additional ground fo r rejecting an application or opposing registration—
certification trade mark not distinguishing certified goods or services  
  178 Variation of rules    179 Rules to be available for inspection    180 Assignment of registered 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 fo r rejecting application for registration or opposing 
registration   IP/N/1/AUS/T/3 
 Page 13 
 
 
    188 Amendment or cancellation of registration by order of court  
  189 Cancellation of registration by Registrar 88  
Part 18—Jurisdiction and powers of courts  
  190 Prescribed courts    191 Jurisdiction of the Federal Court  
  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    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 Regist rar’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    214 Withdrawal of application etc.  
  215 Address for service  
  216 Change of name    217 Death of applicant etc.   
 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 pr oceeding before Registrar  
  221 Costs awarded by Registrar    222 Security for costs    Division 3—General  
  223 Fees  
  224 Extension of time    225 Convention countries    226 Publication of Official Journal etc.  IP/N/1/AUS/T/3 
Page 14  
 
    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  
  230 Passing off actions  
  231 Regulations   
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 partic ulars to Register and renewal of registration where 
registration expired within 12 m onths before 1 January 1996  
  238 Disclaimers  
              239 Rules governing the use of  certification trade marks registered in Part C of 
the old register  
 
 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 applica tion 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 infringeme nt of trade mark under repealed Act  
  254 Acts not constituting infringement of trade mark  
  255 Application of this Act—general  
  256 Fees   
 Division 4—General  
  257 The Registrar and Deputy Registrar                258 Confidential inform ation received by Regist rar under section 74 of the 
repealed Act  
  259 Documents kept under repealed Act    260 Address for service    261 Notices to Customs CEO objecting to importation of goods   IP/N/1/AUS/T/3 
 Page 15 
 
 
  An Act relating to trade marks 
 
Part 1—Preliminary 
 1  Short title 
[see Note 1]  
 
 This Act may be cited as the Trade Marks Act 1995 . 
 
2  Commencement [see Note 1] 
  (1) Part 1 commences on the day on whic h this Act receives the Royal Assent. 
  (2) This Act, other than Part 1, commences on 1 January 1996. 
 
3  Act binds the Crown 
 
 (1) This Act binds the Crown in right of the Commonwealth, of each of the States, of the 
Australian Capital Territory, of the Nort hern Territory and of Norfolk Island. 
 
 (2) Nothing in this Act makes the Crown liable to be prosecuted for an offence. 
 
4  Application of Act 
 
  This Act extends to: 
 
  (a) Christmas Island; and   (b) Cocos (Keeling) Islands; and   (c) Norfolk Island; and   (d) the Australian continental shelf; and 
  (e) the waters above the Australian continental shelf; and 
  (f) the airspace above Australia a nd the Australian continental shelf. 
 
  
Note: For Australia  and Australian continental shelf  see section 6. 
 
5  Repeal of Trade Marks Act 1994  
 
  T h e  Trade Marks Act 1994 is repealed. 
 Part 2—Interpretation  6  Definitions  
 
  In this Act, unless the contrary intention appears:  
  applicant , in relation to an application, means the person in whose name the 
application is for the time being proceeding. 
 
  applied to  and applied in relation to  have the respective meanings given in section 9. 
 
  approved form  means a form approved by the Registrar for the purposes of the 
provision in which the expression appears. 
 IP/N/1/AUS/T/3 
Page 16  
 
    assignment , in relation to a trade mark, means an assignment by act of the parties 
concerned. 
 
  association  does not include a body corporate. 
 
  Australia  includes the following external Territories: 
   (a) Christmas Island;   (b) Cocos (Keeling) Islands;   (c) Norfolk Island.  
  Australian continental shelf  has the same meaning as in the Seas and Submerged 
Lands Act 1973 . 
 
  authorised use , in relation to a trade mark, has the meaning given by section 8. 
 
  authorised user , in relation to a trade mark, has the meaning given by section 8. 
 
  certification trade mark  has the meaning given by section 169. 
 
  collective trade mark  has the meaning given by section 162. 
 
  Commission  means the Trade Practices Commission established under the Trade 
Practices Act 1974 . 
 
  Convention country  means a country declared (by regulations made under 
section 225) to be a Convention country for the purposes of this Act. 
 
  Customs CEO means the Chief Executive Officer of Customs. 
 
  date of registration , in relation to the registration of a trade mark in respect of 
particular goods or services, means the day from which the registration of the trade 
mark in respect of those goods or services is taken to have had effect under 
subsection 72(1) or (2). 
 
  deceptively similar  has the meaning given by section 10. 
 
  defensive trade mark  has the meaning given by section 185. 
 
  Deputy Registrar  means a Deputy Registrar of Trade Marks. 
 
  designated owner , in relation to goods imported into Australia, means the person 
identified as the owner of the goods on the en try made in relation to the goods under 
section 68 of the Customs Act 1901 . 
 
  divisional application  has the meaning given by section 45. 
 
  employee  has the same meaning as in the Public Service Act 1922 . 
 
  examine , in relation to an application for the registration of a trade mark, means to 
carry out an examination under section 31 in relation to the application. 
  IP/N/1/AUS/T/3 
 Page 17 
 
 
    existing registered mark  means a mark that was registered in Part A, B, C or D of the 
old register before 1 January 1996 and who se registration under the repealed Act was 
due to expire after that day. 
 
  Federal Court  means the Federal Court of Australia. 
 
  file means to file at the Trade Marks Office. 
 
  Note: See section 213. 
 
  filing date  means: 
               (a) in relation to an applica tion for the registration of a trade mark other than an 
application referred to in another para graph of this definition—the day on 
which the application is filed; or 
              (b) in relation to a divisiona l application for the registration of a trade mark—the 
day on which the initial application (within the meaning of Division 3 of Part 4) was filed; or 
              (c) in relation to an app lication to which section 241 applies—the day referred to 
in subsection 241(5); or 
              (d) in relation to an a pplication made under section 243 —the day referred to in 
subsection 243(6). 
 
  geographical indication , in relation to goods originating in a particular country or in 
a region or locality of that country, means a sign recognised in that country as a sign 
indicating that the goods: 
   (a) originated in that country, region or locality; and               (b) have a quality, reputa tion or other characteristic attributable to their 
geographical origin. 
 
  goods of a person  means goods dealt with or provided in the course of trade by the 
person. 
 
  lawyer  means a barrister or solicitor of the High Court or of the Supreme Court of a 
State or Territory. 
 
  limitations  means limitations of the exclusive right  to use a trade mark given by the 
registration of the trade mark, including limitations of that right as to: 
   (a) mode of use; or 
  (b) use within a territorial  area within Australia; or 
  (c) use in relation to goods or services to be exported. 
 
  notified trade mark  means a trade mark in respect of which a notice under section 
132 is in force. 
 
  objector , in relation to seized goods, mean s any person who has given under 
section 132 a notice in respect of those goods that is in force. 
 
  Official Journal  means the Official Journal of Trade Marks mentioned in 
section 226. 
 IP/N/1/AUS/T/3 
Page 18  
 
    old register  means the Register of Trade Marks kept under the repealed Act. 
 
  opponent , in relation to the registration of a trade mark, means: 
              (a) the person who has f iled (under section 52) a notice of opposition to the 
registration of the trade mark; or 
             (b) if section 53 applies— a person in whose name the notice of opposition is 
taken to have been filed. 
 
  originate , in relation to wine, has the meaning given by section 15. 
 
  patent attorney  means a person registered as a patent attorney under the Patents 
Act 1990 . 
 
  p e n d i n g , in relation to an application for the registration of a trade mark, has the 
meaning given by section 11. 
 
  person  includes a body of persons, whether incorporated or not. 
 
  predecessor in title , in relation to a person who claims to be the owner of a trade 
mark, means: 
 
             (a) if the trade mark was as signed or transmitted to one or more than one other 
person before it was assigned or tran smitted to the first-mentioned person—
that other person or any one of those other persons; or 
              (b) if paragraph (a) do es not apply—the person who assigned the trade mark, or 
from whom the trade mark was transmit ted, to the first-mentioned person. 
 
              
Note: In the case of a trade mark that is neither registered nor the subject of an application for 
registration, the trade mark may be assigned or transmitted in Australia only in conjunction 
with the goodwill of a business concerned with the trade mark. If the trade mark is registered 
or the subject of an application for registratio n, section 106 provides that the trade mark may 
be assigned or transmitted with or without the goodwill of the business. 
 
  prescribed court  means a court that is under section 190 a prescribed court for the 
purposes of this Act. 
 
  priority date  has the meaning given by section 12. 
 
  Register  means the Register of Trade Marks kept under section 207. 
 
  registered owner , in relation to a registered trade mark, means the person in whose 
name the trade mark is registered. 
 
  registered trade mark  means a trade mark whose particulars are entered in the 
Register under this Act. 
 
  registered trade marks attorney  means a person registered as a trade marks attorney 
under this Act. 
   
  Registrar  means the Registrar of Trade Marks. 
 
                 Note: Sections 201, 202, 203, 204 a nd 206 deal with the office, powers and functions of the Registrar 
of Trade Marks.  IP/N/1/AUS/T/3 
 Page 19 
 
 
   
  registration number , in relation to a registered trade mark, means the number given 
to it under subsection 68(2). 
 
  remove from the Register , in relation to a trade mark, has the meaning given by 
section 13. 
 
  repealed Act  has the meaning given by section 16. 
 
  seized goods  means goods seized under section 133. 
 
  services of a person  means services dealt with or provided in the course of trade by 
the person. 
 
  s i g n  includes the following or any combinatio n of the following, namely, any letter, 
word, name, signature, numeral, device, bra nd, heading, label, ticket, aspect of 
packaging, shape, colour, sound or scent. 
 
  similar goods  has the meaning given by subsection 14(1). 
 
  similar services  has the meaning given by subsection 14(2). 
 
  this Act  includes the regulations. 
 
  trade mark  has the meaning given by section 17. 
 
  trade marks officer  means a person who: 
               (a) holds, or performs the duties of, an Australian Public Service office in the 
Trade Marks Office; or 
              (b) is an employee employed in the Trade Marks Office; or               (c) is not a person referred to in paragraph (a) or (b) but performs services, under 
the control of the Registrar, for or on behalf of the Commonwealth. 
 
  
Note 1: For employee  see this section. 
 
  Note 2: The Registrar and a Deputy Registrar are trade marks officers. 
 
  transmission  means: 
   (a) transmission by operation of law; or   (b) devolution on the personal representative of a deceased person; or   (c) any other kind of transfer except assignment.  
  use of a trade mark  has a meaning affected by subsections 7(1), (2) and (3). 
 
  use of a trade mark in relation to goods  has the meaning given by subsection 7(4). 
 
  use of a trade mark in relation to services  has the meaning given by subsection 7(5). 
 
  w o r d  includes an abbreviation of a word. 
 IP/N/1/AUS/T/3 
Page 20  
 
  7  Use of trade mark 
 
 (1) If the Registrar or a prescribed court, having regard to the circumstances of a 
particular case, thinks fit, the Registrar or  the court may decide that a person has used 
a trade mark if it is established that the pe rson has used the trade mark with additions 
or alterations that do not substantially affect the identity of the trade mark. 
 
  
Note: For prescribed court  see section 190. 
 
 (2) To avoid any doubt, it is stated that, if a trade mark consists of the following, or any 
combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade 
mark. 
 
 (3) An authorised use of a trade mark by a person (see section 8) is taken, for the 
purposes of this Act, to be a use of the tr ade mark by the owner of the trade mark. 
  (4) In this Act: 
 
  use of a trade mark in relation to goods  means use of the trade mark upon, or in 
physical or other relation to, the goods (including second-hand goods). 
  (5) In this Act: 
 
  use of a trade mark in relation to services  means use of the trade mark in physical or 
other relation to the services. 
 
8  Definitions of authorised user and authorised use  
 
 (1) A person is an authorised user  of a trade mark if the person uses the trade mark in 
relation to goods or services under the control of the owner of the trade mark. 
  (2) The use of a trade mark by an aut horised user of the trade mark is an authorised use  
of the trade mark to the extent only that the user uses the trade mark under the control 
of the owner of the trade mark. 
 
 (3) If the owner of a trade mark exercises quality control over goods or services:    (a) dealt with or provided in the course of trade by another person; and 
  (b) in relation to which the trade mark is used;   the other person is taken, for the purposes of  subsection (1), to use the trade mark in 
relation to the goods or services under the control of the owner. 
  (4) If:               (a) a person deals with or provides, in the course of trade, goods or services in 
relation to which a trade mark is used; and 
             (b) the owner of the trad e mark exercises financial control over the other 
person’s relevant trading activities; 
  the other person is taken, for the purposes of  subsection (1), to use the trade mark in 
relation to the goods or services under the control of the owner. 
  IP/N/1/AUS/T/3 
 Page 21 
 
 
   (5) Subsections (3) and (4) do not limit the meaning of the expression under the control 
of in subsections (1) and (2). 
 
9  Definition of applied to and applied in relation to  
  (1) For the purposes of this Act: 
               (a) a trade mark is taken to be applied to  any goods, material or thing if it is 
woven in, impressed on, worked into, or  affixed or annexed to, the goods, 
material or thing; and 
              (b) a trade mark is taken to be applied in relation to  goods or services: 
                           (i) if it is a pplied to any covering, document, label, reel or thing in or 
with which the goods are, or are intended to be, dealt with or provided in the course of trade; or 
                          (ii) if it is u sed in a manner likely to lead persons to believe that it refers 
to, describes or designates the goods or services; and 
               (c) a trade mark is taken also to be applied in relation to  goods or services if it is 
used: 
 
                           (i) on a signboard or in an advertisement (including a televised 
advertisement); or 
                           (ii) in an invoice, wine list, catalogue, business letter, business paper, 
price list or other commercial document; 
  and goods are delivered, or services provided (as the case may be) to a person 
following a request or order made by re ferring to the trade mark as so used. 
  (2) In subparagraph (1)(b)(i): 
 
  covering  includes packaging, frame, wrapper, container, stopper, lid or cap. 
 
  label  includes a band or ticket. 
 
10  Definition of deceptively similar  
 
  For the purposes of this Act, a trade mark is taken to be deceptively similar  to another 
trade mark if it so nearly resembles that othe r trade mark that it is likely to deceive or 
cause confusion. 
 
11  Definition of pending  
 
  Application for registration under this Act 
 
 (1) An application for the registrati on of a trade mark under this Act is pending  from the 
time it is filed until: 
               (a) it lapses (see section 37), is withdrawn (see section 214) or is rejected (see 
section 33); or 
              (b) if the Registrar refuses (under section 55) to register the trade mark and there 
is no appeal against the decision—the end of the period allowed for the appeal; or 
  (c) if the Registrar refuses (under section 55) to register the trade mark and: IP/N/1/AUS/T/3 
Page 22  
 
   
   (i) there is an appeal against the decision; and    (ii) the decision is confirmed on appeal;    —the day on which the decision is confirmed on appeal; or  
  (d) the trade mark is registered under section 68. 
 
  
Note: For file see section 6. 
 
  Application for registration under repealed Act 
 
 (2) An application for the registration of a trade mark under the repealed Act was 
pending  immediately before 1 January 1996 if before that day: 
 
              (a) the application had not lapsed (see subsection 48(1)), been withdrawn (see 
subsection 40A(1)) or refused  (see subsection 44(1)); and 
              (b) the Registrar had not refused (under section 50) to register the trade mark or 
if he or she had refused to register the trade mark: 
 
                           (i) the period allowed for appealing against the decision had not yet 
ended; or 
                           (ii) an appeal had been made against the decision but had not yet been 
decided; and 
   (c) the trade mark had not been registered under section 53.  12  Definition of priority date  
 
  T h e  priority date  for the registration of a trade mark in respect of particular goods or 
services is: 
 
              (a) if the trade mark is registered—the date of registration of the trade mark in 
respect of those goods or services; or 
              (b) if the registration of th e trade mark is being sought—the day that would be 
the date of registration of the trade mark in respect of those goods or services 
if the trade mark were registered. 
 
13  Definition of remove from the Register  
 
  A trade mark is taken to have been removed from the Register  if the Registrar makes 
an entry in the Register to the effect that a ll entries in the Register relating to the trade 
mark are taken to have been removed from the Register. 
 
14  Definition of similar goods and similar services  
 
 (1) For the purposes of this Act, goods are similar  to other goods: 
 
  (a) if they are the same as the other goods; or   (b) if they are of the same description as that of the other goods.   (2) For the purposes of this Act, services are similar  to other services: 
 
  (a) if they are the same as the other services; or  IP/N/1/AUS/T/3 
 Page 23 
 
 
    (b) if they are of the same description as that of the other services. 
 
15  Definition of originate in relation to wine 
 
  For the purposes of this Act: 
 
              (a) a wine is taken to have originated  in a foreign country or Australia only if the 
wine is made within the territory of that country or of Australia, as the case may be; and 
              (b) a wine is taken to have originated  in a particular region or locality of a 
foreign country or of Australia only if the wine is made from grapes grown in 
that region or locality. 
 
16  Definition of repealed Act  
  (1) The repealed Act  means: 
   (a) the Trade Marks Act 1955 as in force immediately before its repeal; and 
              (b) the regulations under th at Act that were in force immediately before its 
repeal. 
 
  
Note: For the repeal of the Trade Marks Act 1955  see section 232. 
 
 (2) In this Act, unless the c ontrary intention appears, a reference to a particular section of 
the repealed Act includes a reference to th e regulations made for the purposes of that 
section and that were in force immediately before that Act was repealed. 
 
Part 3—Trade marks and trade mark rights 
 17  What is a trade mark? 
 
  A  trade mark  is a sign used, or intended to be u sed, to distinguish goods or services 
dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. 
 
  
Note: For sign see section 6. 
 
18  Certain signs not to be used as trade marks etc. 
  (1) The regulations may provide that a sign specified in the regulations is not to be used 
as a trade mark or as part of a trade mark. 
  (2) Regulations made under subsection (1 ) do not affect any trade mark that: 
 
  (a) was a registered trade mark; or 
  (b) in the case of an unregistered tr ade mark—was being used in good faith; 
  immediately before the regula tions were registered under the Legislative Instruments 
Act 1995 . 
 
  
Note: For registered trade mark  see section 6. 
 IP/N/1/AUS/T/3 
Page 24  
 
  19  Certain trade marks may be registered 
 
 (1) A trade mark may be registered in  accordance with this Act in respect of: 
   (a) goods; or 
  (b) services; or 
  (c) both goods and services.   (2) The registration of a trade mark may be in respect of goods or services of more than 
one class. 
 
  
Note: See subsection (3) for division into classes. 
 
 (3) The regulations may provide for the cl asses into which goods and services are to be 
divided for the purposes of this Act. 
 
20  Rights given by registration of trade mark 
 
 (1) If a trade mark is registered, the registered  owner of the trade mark has, subject to this 
Part, the exclusive rights: 
   (a) to use the trade mark; and   (b) to authorise other persons to use the trade mark;   in relation to the goods and/or services in respect of which the trade mark is 
registered. 
 
  
Note 1: For registered owner  see section 6. 
 
  N o t e  2 :  F o r  use see section 7. 
 
 (2) The registered owner of a trade mark h as also the right to obtain relief under this Act 
if the trade mark has been infringed. 
 
  Note: For what amounts to an infringement of a trade mark see Part 12. 
 
 (3) The rights are taken to have accrued to  the registered owner as from the date of 
registration of the trade mark. 
 
  Note: For date of registration  see section 6. 
 
 (4) If the trade mark is registered subject to conditions or limitations, the rights of the 
registered owner are restricted by those conditions or limitations. 
 
  Note: For limitations  see section 6. 
 
 (5) If the trade mark is registered in the name  of 2 or more persons as joint owners of the 
trade mark, the rights granted to those pers ons under this section are to be exercised 
by them as if they were the rights of a single person. 
 
21  Nature of registered trade mark as property 
 
 (1) A registered trade mark is personal property. 
  IP/N/1/AUS/T/3 
 Page 25 
 
 
   (2) Equities in respect of a registered tr ade mark may be enforced in the same way as 
equities in respect of any other personal property. 
 
  Note: For registered trade mark  see section 6. 
 
22  Power of registered owner to deal with trade mark 
 
 (1) The registered owner of a trade mark may, subject only to any rights vested in 
another person, deal with the trade mark as its absolute owner and give in good faith 
discharges for any consideration for that dealing. 
  (2) This section does not protect a person who deals with the registered owner otherwise 
than: 
 
  (a) as a purchaser in good faith for value; and 
  (b) without notice of any fraud on the part of the owner.  
  
Note: For registered owner  see section 6. 
 
23  Limitation on rights if similar trad e marks etc. registered by different persons 
 
  If trade marks that are substantially id entical or deceptively similar have been 
registered by more than one person (whether  in respect of the same or different goods 
or services), the registered owner of any one of those trade marks does not have the 
right to prevent the registered owner of any other of those trade marks from using that trade mark except to the extent that the fi rst-mentioned owner is authorised to do so 
under the registration of his or her trade mark. 
 
  
Note: For deceptively similar  see section 10. 
 
24  Trade mark consisting of sign that beco mes accepted as sign describing article etc. 
  (1) This section applies if a registered trade mark consists of, or contains, a sign that, 
after the date of registration of the trad e mark, becomes generally accepted within the 
relevant trade as the sign that describes or is the name of an article, substance or service. 
 
  
Note: For registered trade mark , sign  and date of registration  see section 6. 
 
 (2) If the trade mark consists of the sign, the registered owner:  
             (a) does not have any exclusive rights to use, or authorise other persons to use, 
the trade mark in relation to: 
    (i) the article or substance or other goods of the same description; or    (ii) the service or other services of the same description; and 
 
             (b) is taken to have ceased  to have those exclusive rights from and including the 
day determined by the court under subsection (4). 
 
  
Note: For registered owner  see section 6. 
 
 (3) If the trade mark contains the sign, the registered owner: IP/N/1/AUS/T/3 
Page 26  
 
   
              (a) does not have any exclusive rights to use, or authorise other persons to use, 
the sign in relation to: 
    (i) the article or substance or other goods of the same description; or 
   (ii) the service or other services of the same description; and 
               (b) is taken to have ceased to have those exclusive rights from the day 
determined by the court under subsection (4). 
 
  
Note: For registered owner  see section 6. 
 
 (4) For the purposes of subsections (2) and (3), a prescribed court may determine the day 
on which a sign first became generally accepted within the relevant trade as the sign 
that describes or is the name of the article, substance or service. 
 
  Note: For prescribed court see section 190. 
 
25  Trade mark relating to article etc. formerly manufactured under patent 
 
 (1) This section applies if:                (a) a registered trade mark consists of, or contains, a sign that describes or is the 
name of: 
    (i) an article or substance that w as formerly exploited under a patent; or 
   (ii) a service that was formerly provided as a patented process; and  
  (b) it is at least 2 years since the patent has expired or ceased; and 
              (c) the sign is the only co mmonly known way to describ e or identify the article, 
substance or service. 
 
  
Note: For registered trade mark  and sign see section 6. 
 
 (2) If the trade mark consists of the sign, the registered owner:               (a) does not have any exclusive rights to use, or authorise other persons to use, 
the trade mark in relation to: 
    (i) the article or substance or other goods of the same description; or    (ii) the service or other services of the same description; and                (b) is taken to have ceased  to have those exclusive rights from the end of the 
period of 2 years after the patent expired or ceased. 
  (3) If the trade mark contains the sign, the registered owner:                (a) does not have any exclusive rights to use, or authorise other persons to use, 
the sign in relation to: 
    (i) the article or substance or other goods of the same description; or    (ii) the service or other services of the same description; and   IP/N/1/AUS/T/3 
 Page 27 
 
 
                (b) is taken to have ceased  to have those exclusive rights from the end of the 
period of 2 years after the patent expired or ceased. 
 
26  Powers of authorised user of registered trade mark 
  (1) Subject to any agreement between the regi stered owner of a registered trade mark and 
an authorised user of the trade mark, the authorised user may do any of the following: 
               (a) the authorised user ma y use the trade mark in relation to the goods and/or 
services in respect of which the trade mark is registered, subject to any 
condition or limitation subject to which the trade mark is registered; 
              (b) the authorised user may (subject to subsection (2)) bring an action for 
infringement of the trade mark if the registered owner refuses or neglects to do so within the prescribed period; 
              (c) the authorised user may cause to be displayed on goods in respect of which 
the trade mark is registered, or on thei r package, or on the container in which 
they are offered to the public, a notice prohibiting any act that is under subsection 121(2) a prohibited act in relation to the goods; 
  (d) the authorised user may:                             (i) give to the Customs CEO a notice under section 132 objecting to the 
importation of goods that infringe the trade mark; or 
   (ii) revoke such a notice;    (e) an authorised user may give permission to any person:  
   (i) to alter or deface; or 
   (ii) to make any addition to; or                            ( iii) to remove, erase or oblite rate, wholly or partly; 
   a registered trade mark that is applied to any goods, or in relation to any 
goods or services, in respect of which the trade mark is registered; 
 
              (f) the authorised user may give permission to any person to apply the trade 
mark to goods, or in relation to goods  or services, in respect of which the 
trade mark is registered. 
 
  
Note 1: For registered owner  and registered trade mark  see section 6. 
 
  N o t e  2 :  F o r  authorised user  see section 8. 
 
  Note 3: For what amounts to an in fringement of a trade mark see Part 12. 
 
  N o t e  4 :  F o r  apply to  and apply in relation to  see section 9. 
 
 (2) If the authorised user brings an ac tion for infringement of the trade mark, the 
authorised user must make the registered owner of the trade mark a defendant in the 
action. However, the registered owner is not liable for costs if he or she does not take 
part in the proceedings. 
 IP/N/1/AUS/T/3 
Page 28  
 
  Part 4—Application for registration 
 Division 1—General  27  Application—how made 
 
 (1) A person may apply for the registration of a trade mark in respect of goods and/or 
services if: 
   (a) the person claims to be the owner of the trade mark; and 
  (b) one of the following applies: 
                            (i) the person is using or intends to use the trade mark in relation to the 
goods and/or services; 
                           (ii) the person has authorised or intends to authorise another person to 
use the trade mark in relation to the goods and/or services; 
                           (iii) the pers on intends to assign the trade mark  to a body corporate that is 
about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services. 
 
  
Note: For use see section 7. 
 
 (2) The application must:    (a) be in accordance with the regulations; and 
              (b) be filed, together with any prescribed documen t, in accordance with the 
regulations. 
 
  
Note: For file see section 6. 
 
 (3) Without limiting the particulars that may be included in an application, the 
application must: 
   (a) include a representation of the trade mark; and 
              (b) specify, in accordance with the regulations, the goods and/or services in 
respect of which it is sought to register the trade mark. 
  (4) Regulations made for the purposes of  paragraph (3)(b) may apply, adopt or 
incorporate any matter contained in any listing of goods and/or services published by 
the Registrar from time to time and made ava ilable for inspection by the public at the 
Trade Marks Office and its sub-offices. 
  (5) An application (other than an application under section 51 for the registration of 2 or 
more trade marks as a series) may be made in respect of goods and services of one or 
more of the classes provided for in regulations made under subsection 19(3). 
 
28  Application by joint owners 
 
  If the relations between 2 or more persons interested in a trade mark are such that 
none of them is entitled to use the trade mark except: 
 
  (a) on behalf of all of them; or  IP/N/1/AUS/T/3 
 Page 29 
 
 
                (b) in relation to goods and/or services with which all of them are connected in 
the course of trade; 
  the persons may together apply for its registration under subsection 27(1). 
 
29  Application for registration of trade mark  whose registration has been sought in a 
Convention country—claim for priority 
 
 (1) If:                (a) a person has made an app lication for the registration of a trade mark in one or 
more than one Convention country; and 
              (b) within 6 months after th e day on which that application, or the first of those 
applications, was made, that  person or another person ( successor in title ) of 
whom that person is a predecessor in title applies to the Registrar for the registration of the trade mark in respect of some or all of the goods and/or 
services in respect of which registration was sought in that country or those 
countries; 
  that person or that person’s successor in title may, when filing the application, or 
within the prescribed period after filing the application but before the application is 
accepted, claim a right of priority for the re gistration of the trade mark in respect of 
any or all of those goods and/or services in accordance with the regulations. 
 
 (2) The priority claimed is for the registration of the trade mark in r espect of the goods or 
services: 
               (a) if an application to re gister the trade mark was made in only one Convention 
country—from (and including) the day on which the application was made in 
that country; or 
              (b) if applications to re gister the trade mark were made in more than one 
Convention country—from (and including) the day on which the earliest of those applications was made. 
 
 (3) The regulations may provide for the filing of documents in support of a notice 
claiming priority and, in particular, for the filing of certified copi es of any application 
for the registration of the trade mark made in a Convention country. 
 
  
Note: For Convention country  see section 225. 
 
30  Particulars of application to be published 
 
  The Registrar must publish the particular s of the application in accordance with the 
regulations. 
 
31  Registrar to examine, and report on, application 
 
  The Registrar must, in accordance with  the regulations, examine and report on: 
 
  (a) whether the application has been  made in accordance with this Act; and 
  (b) whether there are grounds under Division 2 for rejecting it.  
32  Registrar to decide on disputed classification of goods etc. 
   If a question arises as to the class in which goods or services are comprised: IP/N/1/AUS/T/3 
Page 30  
 
   
  (a) that question is to be decided by the Registrar; and               (b) the decision of the Regi strar is not subject to appeal and may not be called 
into question in an appeal or other proceedings under this Act. 
 33  Application accepted or rejected 
 
 (1) The Registrar must, after the examinati on, accept the application unless he or she is 
satisfied that: 
 
  (a) the application has not been ma de in accordance with this Act; or 
  (b) there are grounds for rejecting it.  
  
Note: For the grounds on which an application may be rejected see Division 2. 
 
 (2) The Registrar may accept the application subject to conditions or limitations.  
  
Note: For limitations  see section 6. 
 
 (3) If the Registrar is satisfied that:    (a) the application has not been ma de in accordance with this Act; or 
  (b) there are grounds for rejecting it; 
  the Registrar must reject the application. 
  (4) The Registrar may not reject an application without giving the applicant an 
opportunity of being heard. 
 
  
Note: For applicant  see section 6. 
 
34  Notice etc. of decision 
   The Registrar must: 
   (a) notify the applicant in writing of his or her decision under section 33; and   (b) advertise the decision in the Official Journal . 
 
  
Note: For applicant  see section 6. 
 
35  Appeal 
   The applicant may appeal to the Federal Court against a decision of the Registrar: 
   (a) to accept the application subject to conditions or limitations; or   (b) to reject the application.  
  
Note: For applicant  see section 6. 
 
36  Deferment of acceptance 
   The Registrar may defer the acceptance of the application in the circumstances, and 
for the period, provided for in the regulations. 
  IP/N/1/AUS/T/3 
 Page 31 
 
 
  37  Lapsing of application 
 
 (1) Subject to subsection (2), an appli cation lapses if it is not accepted within the 
prescribed period or within that period as extended in accordance with the regulations. 
 
 (2) If, after the prescribed period or the prescribed period as extended (as the case may 
be) has expired, the Registrar extends u nder section 224 the period within which the 
application may be accepted, the application: 
 
  (a) is taken not to have lapsed when the prescribed period expired; and 
  (b) lapses if it is not accepted within the extended period.  
38  Revocation of acceptance 
  (1) If, before a trade mark is registered, the Registrar is satisfied: 
               (a) that the application for registration of the trade mark was accepted because of 
an error or omission in the course of the examination; or 
              (b) that, in the special ci rcumstances of the case, th e trade mark should not be 
registered, or should be registered subject to conditions or limitations, or to 
additional or different conditions or limitations; 
  the Registrar may revoke the acceptance of the application. 
 
  N o t e : For limitations  see section 6. 
 
 (2) If the Registrar revokes the acceptance:    (a) the application is taken to have never been accepted; and 
              (b) the Registrar must examine, and report on, the application as necessary under 
section 31; and 
  (c) sections 33 and 34 again appl y in relation to the application. 
 
Division 2—Grounds for rejecting an application 
 
39  Trade mark containing etc. certain signs  
 (1) An application for the registration of a tr ade mark must be rejected if the trade mark 
contains or consists of a sign that, u nder regulations made for the purposes of 
section 18, is not to be used as a trade mark. 
 
 (2) An application for the registration of a tr ade mark may be rejected if the trade mark 
contains or consists of: 
   (a) a sign that is prescribed for the purposes of this subsection; or   (b) a sign so nearly resembling: 
 
   (i) a sign referred to in paragraph (a); or    (ii) a sign referred to in subsection (1);    as to be likely to be taken for it.  IP/N/1/AUS/T/3 
Page 32  
 
  40  Trade mark that cannot be represented graphically 
 
  An application for the registration of a trad e mark must be rejected if the trade mark 
cannot be represented graphically. 
 41  Trade mark not distinguishing  applicant’s goods or services 
 
 (1) For the purposes of this section, the use of  a trade mark by a predecessor in title of an 
applicant for the registration of the trade mark  is taken to be a use of the trade mark 
by the applicant. 
 
  
Note 1: For applicant  and predecessor in title  see section 6. 
 
                 Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use 
of the trade mark by the other person is taken to be a use of the trade mark by the predecessor 
in title (see subsecti on 7(3) and section 8). 
 
 (2) An application for the registration of a tr ade mark must be rejected if the trade mark 
is not capable of distinguishing the applican t’s goods or services in respect of which 
the trade mark is sought to be registered ( designated goods or services ) from the 
goods or services of other persons. 
 
  Note: For goods of a person  and services of a person  see section 6. 
 
 (3) In deciding the question whether or not a trade mark is capable of distinguishing the 
designated goods or services from the goods or services of other persons, the 
Registrar must first take into account the exte nt to which the trade mark is inherently 
adapted to distinguish the designated goods or services from the goods or services of other persons. 
  (4) Then, if the Registrar is still unable to  decide the question, the following provisions 
apply. 
 
 (5) If the Registrar finds that the trade mark  is to some extent inherently adapted to 
distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basi s alone, that the trade mark is capable of 
so distinguishing the designated goods or services: 
 
             (a) the Registrar is to consid er whether, because of the combined effect of the 
following: 
                            (i) the extent  to which the trade mark is inherently adapted to distinguish 
the designated goods or services; 
   (ii) the use, or intended use, of the trade mark by the applicant; 
   (iii) any other circumstances;   the trade mark does or will disti nguish the designated goods or services as 
being those of the applicant; and 
 
              (b) if the Registrar is then satisfied that the trade mark does or will so distinguish 
the designated goods or services—the trad e mark is taken to be capable of 
distinguishing the applicant’s goods or services from the goods or services of other persons; and 
              (c) if the Registrar is not sa tisfied that the trade mark does or will so distinguish 
the designated goods or services—the trade mark is taken not to be capable of  IP/N/1/AUS/T/3 
 Page 33 
 
 
  distinguishing the applicant’s goods or services from the goods or services of 
other persons. 
 
  Note 1: For goods of a person  and services of a person  see section 6. 
 
                 Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade 
mark by another person are each taken to be use of the trade mark by the applicant (see 
subsections (1) and 7( 3) and section 8). 
 
 (6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the 
designated goods or services from the goods or services of other persons, the following provisions apply: 
 
             (a) if the applicant establishe s that, because of the exte nt to which the applicant 
has used the trade mark before the filing date in respect of the application, it 
does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the 
designated goods or services from the goods or services of other persons; 
             (b) in any other case—the trade mark is taken not to be capable of distinguishing 
the designated goods or services from the goods or services of other persons. 
 
 
             Note 1: Trade marks that are not inhere ntly adapted to distinguish goods or services are mostly trade 
marks that consist wholly of a sign th at is ordinarily used to indicate: 
                                                (a) the kind, quality,  quantity, intended purpose, value, geographical origin, or some 
other characteristic, of goods or services; or  
                                                 (b) the time of production of goods or of the rendering of services. 
 
              Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade 
mark by another person are each taken to be use of the trade mark by the applicant (see 
subsections (1) and 7( 3) and section 8). 
 
42  Trade mark scandalous or  its use contrary to law 
 
  An application for the registration of a trade mark must be rejected if: 
 
  (a) the trade mark contains or consists of scandalous matter; or 
  (b) its use would be contrary to law.  
43  Trade mark likely to deceive or cause confusion 
 
  An application for the registration of a trade mark in respect of particular goods or 
services must be rejected if, because of so me connotation that the trade mark or a sign 
contained in the trade mark has, the use of the trade mark in relation to those goods or 
services would be likely to deceive or cause confusion. 
 44  Identical etc. trade marks 
 
 (1) Subject to subsections (3) and (4), an a pplication for the registration of a trade mark 
(applicant’s trade mark ) in respect of goods ( applicant’s goods ) must be rejected if: 
 
               (a) the applicant’s trade mark is substantially identical with, or deceptively 
similar to: 
                            (i) a trade mark registered by another person in respect of similar goods 
or closely related services; or IP/N/1/AUS/T/3 
Page 34  
 
                             (ii) a trade mark whose registration in respect of similar goods or closely 
related services is being s ought by another person; and 
                  (b) the priority date for th e registration of the applicant’s trade mark in respect of 
the applicant’s goods is not earlier than th e priority date for the registration of 
the other trade mark in respect of the similar goods or closely related 
services. 
 
  
Note 1: For deceptively similar  see section 10. 
 
  N o t e  2 :  F o r  similar goods  see subsection 14(1). 
 
  N o t e  3 :  F o r  priority date  see section 12. 
 
 (2) Subject to subsections (3) and (4), an a pplication for the registration of a trade mark 
(applicant’s trade mark ) in respect of services ( applicant’s services ) must be rejected 
if: 
 
  (a) it is substantially identical with, or deceptively similar to:                             (i) a trade mark registered by another person in respect of similar 
services or closely related goods; or 
                           (ii) a trade mark whose registration in respect of similar services or 
closely related goods is being sought by another person; and 
                (b) the priority date for the registration of the applicant’s trade mark in respect of 
the applicant’s services is not earlier than  the priority date for the registration 
of the other trade mark in respect of the similar services or closely related 
goods. 
 
Note 1: For deceptively similar  see section 10. 
 
Note 2: For similar services  see subsection 14(2). 
 
Note 3: For priority date  see section 12.  
 
 (3) If the Registrar in either case is satisfied: 
   (a) that there has been honest conc urrent use of the 2 trade marks; or 
  (b) that, because of other circumstances, it is proper to do so;   the Registrar may accept the application for the registration of the applicant’s 
trade mark subject to any conditions or limitations that the Registrar thinks fit 
to impose. If the applicant’s trade mark  has been used only in a particular 
area, the limitations may include that the use of the trade mark is to be 
restricted to that particular area. 
  
Note: For limitations  see section 6. 
 
 (4) If the Registrar in either case is satisfied that the applicant, or the applicant and the 
predecessor in title of the applicant, have continuously used the applicant’s trade 
mark for a period: 
 
              (a) beginning before the prio rity date for the registration of the other trade mark 
in respect of: 
    (i) the similar goods or closely related services; or  IP/N/1/AUS/T/3 
 Page 35 
 
 
     (ii) the similar services or closely related goods; and 
 
(b) ending on the priority date for the registration of the applicant’s trade mark; 
the Registrar may not reject the application because of the existence of the other trade 
mark. 
 
              Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the 
owner of the trade mark (see subsection 7(3)). 
 
  N o t e  2 :  F o r  predecessor in title  see section 6. 
 
  N o t e  3 :  F o r  priority date  see section 12. 
 
Division 3—Divisional applications 
 45  Definition of divisional application  
 
 (1) A person who has made an application ( initial application ) for the registration of a 
trade mark in respect of certain goods and/ or services may, in accordance with this 
Division, make another application ( divisional application ): 
 
              (a) for the registration of a part only of the trade mark in respect of any or all 
those goods and/or services; or 
              (b) for the registration of the trade mark in respect of some only of the goods 
and/or services in respect of which registration is sought under the initial 
application; or 
              (c) if the initial applica tion has been amended to exclude some of the goods 
and/or services in respect of which registration was sought in the first place—for the registration of the trade mark in respect of any or all of the goods 
and/or services that have been so excluded. 
  (2) For the purposes of this Division, the initia l application is taken to be the application 
whose particulars have been publis hed by the Registrar under section 30. 
 
46  Divisional application possible only if initial application is pending 
 
  A divisional application for the registration of a trade mark or a part of a trade mark 
may be made only if the initial application for the registration of the trade mark is 
pending. 
 
Note 1: For initial application  and divisional application  see section 45. 
 
Note 2: For pending  see section 11.  
 
47  Divisional application for registration of part of trade mark 
 
 (1) This section provides for the making of a divisional application for the registration of 
a part only of the trade mark that is the subject of the initial application. 
 
 (2) If a part of a trade mark, by itself, may be  registered as a trade mark, the applicant for 
the registration of the trade mark may, w ithin the prescribed period but subject to 
subsection (3), make a divisional application for the registration of that part as a trade mark in respect of any or all of the goods and/or services specified in the initial application. IP/N/1/AUS/T/3 
Page 36  
 
   
  
Note: For applicant  see section 6. 
 
 (3) If the initial application has been acce pted, the divisional application may not be 
made after the acceptance is advertised in the Official Journal . 
 
  Note: For initial application  and divisional application  see section 45. 
 
48  Divisional application for registration of tr ade mark in respect of some of the goods etc. 
specified in the initial application 
 
 (1) This section provides for the making of a divisional application for the registration of 
a trade mark in respect of some of the goods and/or services in respect of which 
registration of the trade mark is being sought by the initial application. 
  (2) The applicant for the registration of a trad e mark may, subject to subsection (3), make 
a divisional application for the registration of the trade mark in respect of any (but not 
all) of: 
   (a) the goods and/or services specifi ed in the initial application; or 
              (b) if the initial applica tion has been amended to exclude some of the goods 
and/or services specified in that app lication before its amendment—the goods 
and/or services specified in the initial application as amended. 
 
  
Note: For applicant  see section 6. 
 
 (3) If the initial application has been acce pted, the divisional application may not be 
made after the acceptance is advertised in the Official Journal . 
 
  Note: For initial application  and divisional application  see section 45. 
 
49  Divisional application for registration of trad e mark in respect of goods etc. excluded from 
the initial application 
 
 (1) This section applies if the initial applica tion for the registration of a trade mark is 
amended to exclude some of the goods and/ or services specified in that application 
before its amendment. It provides for the ma king of a divisional application in respect 
of any or all of the excluded goods and/or services. 
  (2) If the initial application is amended:  
  (a) before a decision is made  about it under section 33; or 
              (b) if the initial application is accepted—before its accepta nce is advertised in the 
Official Journal ; 
  the applicant may, within the prescribed period but subject to subsection (3), make a 
divisional application for the registration of the trade mark in respect of any or all of 
the goods and/or services that have been  excluded from the initial application. 
  (3) If the initial application has been acce pted, the divisional application may not be 
made after the acceptance is advertised in the Official Journal . 
  (4) If the initial application (whether it ha s already been amended or not) is amended 
after its acceptance has been advertised in the Official Journal , the applicant may,  IP/N/1/AUS/T/3 
 Page 37 
 
 
  within the prescribed period, make a divisi onal application for the registration of the 
trade mark in respect of any or all of the goods and/or services that have been excluded from the application whose acceptance was advertised in the Official 
Journal . 
 
Note 1: For initial application  and divisional application  see section 45. 
 
Note 2: For applicant  see section 6.  
 
50  Filing date 
 
  A divisional application is taken to have  been filed on the day on which the initial 
application concerned was filed. 
 
  Note: For file see section 6. 
 
Division 4—Application for registration of series of trade marks 
 51  Application—series of trade marks 
 
 (1) A person may make a single applicati on under subsection 27(1) for the registration 
of 2 or more trade marks in respect of similar goods or similar services within a 
single class if the trade marks resemble each other in material particulars and differ only in respect of one or more of the following matters: 
 
              (a) statements or representa tions as to the goods or services in relation to which 
the trade marks are used or are intended to be used; 
  (b) statements or representations as to number, price, quality or names of places;   (c) the colour of any part of the trade mark;               (d) any matter that is not inherently adapted to distinguish the goods or services 
and does not substantially affect the identity of the trade marks. 
  (2) If:    (a) the application meets all the requirements of this Act; and 
  (b) the Registrar is required (under section 68) to register the trade marks; 
  he or she must register them as a series in one registration.  
Part 5—Opposition to registration 
 Division 1—General 
 
52  Opposition 
 
 (1) If the Registrar has accepted an applica tion for the registration of a trade mark, a 
person may oppose the registration by filing a notice of opposition. 
 
 (2) The notice of opposition must be in an approved form and must be filed within the 
prescribed period or within that period as extended in accordance with the regulations. 
 
  
Note: For approved form  and file see section 6. 
 IP/N/1/AUS/T/3 
Page 38  
 
   (3) The opponent must serve a copy  of the notice on the applicant. 
 
  
Note: For opponent  see section 6. 
 
 (4) The registration of a trade mark may be  opposed on any of the grounds specified in 
Division 2 and on no other grounds. 
 
53  Circumstances in which opposition may procee d in name of a person other than the person 
who filed the notice 
 
  If:                (a) after a person has filed a notice of opposition, the right or interest on which 
the person relied to file the notice of  opposition becomes vested in another 
person; and 
  (b) the other person:                             (i) notifies th e Registrar in writing that the right or interest is vested in 
him or her; and 
   (ii) does not withdraw the opposition; 
   the opposition is to proceed as if the notice of opposition had been filed in that other 
person’s name. 
 
  
Note: For file see section 6. 
 
54  Opposition proceedings 
  (1) The Registrar must give to the opponent and to the applicant an opportunity of being 
heard on the opposition. 
 
  
Note: For opponent  and applicant  see section 6. 
 
 (2) Subject to subsection (1), the proceedings  for dealing with the opposition must be in 
accordance with the regulations. 
 
55  Decision 
 
  Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, 
decide: 
   (a) to refuse to register the trade mark; or               (b) to register the trad e mark (with or without c onditions or limitations) in 
respect of the goods and/or services th en specified in the application; 
  having regard to the extent (if any) to which any ground on which the application was 
opposed has been established. 
 
  N o t e : For limitations  see section 6. 
 
56  Appeal 
 
  The applicant or the opponent may appeal to the Federal Court from a decision of the 
Registrar under section 55.  IP/N/1/AUS/T/3 
 Page 39 
 
 
   
  Note: For applicant  and opponent  see section 6. 
 
Division 2—Grounds for opposing registration  57  Registration may be opposed on same grounds as for rejection 
 
  The registration of a trade mark may be opposed on any of the grounds on which an 
application for the registration of a trade mark may be rejected under Division 2 of 
Part 4, except the ground that the trade mark cannot be represented graphically. 
 
58  Applicant not owner of trade mark 
 
  The registration of a trade mark may be  opposed on the ground that the applicant is 
not the owner of the trade mark. 
 
  
Note: For applicant  see section 6. 
 
59  Applicant not intending to use trade mark 
 
  The registration of a trade mark may be opposed on the ground that the applicant does 
not intend: 
 
  (a) to use, or authorise the use of, the trade mark in Australia; or 
              (b) 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 specified in the application.  
  
Note: For applicant  see section 6. 
 
60  Trade mark similar to trade mark that has acquired a reputation in Australia 
   The registration of a trade mark in respect of particular goods or services may be 
opposed on the ground that: 
               (a) it is substantially identi cal with, or deceptively similar to, a trade mark that, 
before the priority date for the registration of the first-mentioned trade mark 
in respect of those goods or services, had acquired a reputation in Australia; 
and 
               (b) because of the reputa tion of that other trade mark, the use of the first-
mentioned trade mark would be likely to deceive or cause confusion. 
 
  
Note 1: For deceptively similar  see section 10. 
   N o t e  2 :  F o r  priority date  see section 12. 
 
61  Trade mark containing or consisting of a false geographical indication 
  (1) The registration of a trade mark  in respect of particular goods ( relevant goods ) may 
be opposed on the ground that the trade mark contains or consists of a sign that is a 
geographical indication for goods ( designated goods ) originating in: 
               (a) a country, or in a region or locality in a country, other than the country in 
which the relevant goods originated; or IP/N/1/AUS/T/3 
Page 40  
 
                (b) a region or locality in the country in which the relevant goods originated 
other than the region or locality in which the relevant goods originated. 
  (2) An opposition on a ground referred to in  subsection (1) fails if the applicant 
establishes that: 
 
              (a) the relevant goods originated in the country, region or locality identified by 
the geographical indication; or 
              (b) the sign has ceased to be used as a geographical indication for the designated 
goods in the country in which the designated goods originated; or 
              (c) the applicant, or a pred ecessor in title of the appli cant, used the sign in good 
faith in respect of the relevant goods, or applied in good faith for the registration of the trade mark in respect of the relevant goods, before: 
    (i) 1 January 1996; or 
                           (ii) the day on which the sign was recognised as a geographical 
indication for the designated goods in their country of origin; 
   whichever is the later; or               (d) if the registration of the trade mark is being sought in respect of wine or 
spirits ( relevant wine or spirits )—the sign is identical with the name that, on 
1 January 1995, was, in the country in which the relevant wine or spirits 
originated, the customary name of a va riety of grapes used in the production 
of the relevant wine or spirits. 
  (3) An opposition on a ground referred to in s ubsection (1) also fails if the applicant 
establishes that: 
              (a) although the sign is a geographical indication for the designated goods, it is 
also a geographical indication for the relevant goods; and 
             (b) the applicant has not u sed, and does not intend to use, the trade mark in 
relation to the relevant goods in a way that is likely to deceive or confuse 
members of the public as to the origin of the relevant goods. 
 
Note 1: For applicant , predecessor in title  and geographical indication  see section 6. 
 
Note 2: For originate  (in relation to wine only) see section 15.  
 
62  Application etc. defective etc. 
 
  The registration of a trade mark may be opposed on any of the following grounds:                (a) that the application, or a document filed in support of the application, was 
amended contrary to this Act; 
              (b) that the Registrar accepted the application for registration on the basis of 
evidence or representations that were false in material particulars. 
 
  
Note: For file see section 6. 
  IP/N/1/AUS/T/3 
 Page 41 
 
 
  Part 6—Amendment of application for registration of a trade mark and other documents 
 63  Amendment of application for registration of trade mark 
 
 (1) The Registrar may, at the written request of the applicant or of his or her agent, 
amend an application for the registrati on of a trade mark in accordance with 
section 64 or 65. 
  (2) If:  
              (a) an application for th e registration of a trade mark may be amended under 
section 65; and 
              (b) the applicant has not asked in writing that the application be amended; 
  the Registrar may, on his or her own in itiative but in accordance with the regulations, 
amend the application as necessary to rem ove any ground on which the application 
could be rejected. 
 
64  Amendment before particulars of application are published 
 
  If:  
              (a) the particulars of the application have not yet been published under section 
30; and 
  (b) the request for the amendment is  made within the prescribed period; 
  an amendment may be made to correct a clerical error or an obvious mistake.  65  Amendment after particulars of application have been published 
 
 (1) If the particulars of the application have been published under section 30, the 
application may be amended as provided in this section. 
  (2) An amendment may be made to the representation of the trade mark if the 
amendment does not substantially affect the id entity of the trade mark as at the time 
when the particulars of the application were published. 
  (3) An amendment may be made to correct a mistake of fact or an error in the 
classification of any goods or services specified in the application. 
 
 (4) An amendment may be made to change  the type of registration sought in the 
application (for example, an application for the registration of a trade mark as a 
certification trade mark may be amended to an application for registration as a 
collective trade mark). 
 
 (5) An amendment may be made to any other particular specified in the application 
unless the amendment would have the effect of extending the rights that (apart from the amendment) the applicant would have under the registration if it were granted. 
 
66  Amendment of other documents 
 
  The Registrar may, at the written request of the person who has filed an application 
(other than an application for the registration of a trade mark), a notice or other 
document for the purposes of this Act or at the written request of the person’s agent, 
amend the application, notice or document: IP/N/1/AUS/T/3 
Page 42  
 
   
  (a) to correct a clerical e rror or an obvious mistake; or 
              (b) if the Registrar is of the opinion that it is fair and reasonable in all the 
circumstances of the case to do so. 
 
  
Note: For file see section 6. 
 
67  Appeal 
 
  An appeal lies to the Federal Court from a decision of the Registrar under this Part.  
Part 7—Registration of trade marks 
 Division 1—Initial registration 
 
68  Obligation to register 
 
 (1) The Registrar must, within the period pr ovided under the regulations, register a trade 
mark that has been accepted for registration: 
 
  (a) if there has been no opposition to the registration; or               (b) if there has been an opposition—if the Registrar’s decision, or (in the case of 
an appeal against the Registrar’s decisi on) the decision on appeal, is that the 
trade mark should be registered. 
  Otherwise, the application for the registration of the trade mark lapses. 
 
 (2) On registering the trade mark, the Registrar must give it a number by which it may be 
identified. 
 
69  Registration—how effected 
 
 (1) The trade mark must be registered:    (a) in the name of the applicant for registration; and               (b) in respect of the goods and/or services specified in the application at the time 
of registration; and 
              (c) subject to the conditions (if any) and the limitations (if any) imposed by the 
Registrar in accepting the application for registration or deciding to register the trade mark. 
 
  The Registrar must enter these particulars in the Register. 
 
 (2) The Registrar must also enter in the Register:    (a) a graphical representation of the trade mark; and   (b) its registration number; and 
              (c) any other particulars that are required by this Act to be entered in the 
Register. 
  (3) If 2 or more persons applied together for the registration of the trade mark (see 
section 28), the applicants must be regist ered as joint owners of the trade mark. 
 
  
Note: For limitations , Registrar  and applicant  see section 6.  IP/N/1/AUS/T/3 
 Page 43 
 
 
   
70  Colours in registered trade marks 
 
 (1) A trade mark may be registered with limitations as to colour.  
 (2) The limitations may be in respect of the whole, or a part, of the trade mark. 
  (3) To the extent that a trade mark is regi stered without limitations as to colour, it is 
taken to be registered for all colours. 
 
  
Note: For limitations  see section 6. 
 
71  Notification of registration 
   When a trade mark has been registered, the Registrar must: 
   (a) advertise the registration in the Official Journal ; and 
              (b) give to the registered owner of the trade mark a certificate of registration in 
an approved form. 
 
  
Note: For registered owner  and approved form see section 6. 
 
72  Date and term of registration 
 
 (1) Subject to subsection (2), the registra tion of a trade mark in respect of the goods 
and/or services in respect of which the trade mark is registered is taken to have had effect from (and including) the filing date in respect of the application for registration. 
 
  
Note: For filing date  see section 6. 
 
 (2) If: 
 
              (a) the application was in respect of a trade mark whose registration had also 
been sought in one or more than one Convention country; and 
              (b) the applicant claimed a right of priority under section 29 for the registration 
of the trade mark in respect of particular goods or services; and 
  (c) the trade mark is registered under this Act; 
  the registration of the trade mark in respec t of those goods or servi ces is taken to have 
had effect: 
             (d) if an application to re gister the trade mark was made in only one Convention 
country—from (and including) the day on which the application was made in 
that country; or 
             (e) if applications to regi ster the trade mark were made in more than one 
Convention country—from (and including) the day on which the earliest of those applications was made. 
 
  
Note: For Convention country  see section 225. 
 
 (3) Unless it is earlier cancelled, or the trade mark is earlier removed from the Register, 
the registration of the trade mark expires 10 years after the filing date in respect of the application for its registration. 
 IP/N/1/AUS/T/3 
Page 44  
 
                
Note 1: This is so even for a trade mark whose re gistration in respect of pa rticular goods or services 
has effect from (and including) the day on which an application was made in a Convention 
country. 
 
  Note 2: For filing date  see section 6. 
 
73  Ceasing of registration 
   The registration of a trade mark ceases if: 
   (a) the trade mark is removed from the Register under section 78 or Part 9; or    (b) the registration of the trade mark is cancelled.  74  Disclaimers 
 
 (1) An applicant for the registration of a trade mark, or the registered owner of a 
registered trade mark, may, by notice in writing given to the Registrar, disclaim any 
exclusive right to use, or authorise the u se of, a specified part of the trade mark. 
 
 (2) The disclaimer affects only the rights given by this Act to the registered owner of the 
trade mark on registration of the trade mark. 
  (3) The Registrar must, on registering the trade mark or on receiving notice of the 
disclaimer (whichever is later), enter the pa rticulars of the disclaimer in the Register. 
 
 (4) A disclaimer properly made may not be revoked.  
             
Note: For applicant , registered owner , registered trade mark  and Register  see section 6. 
 
Division 2—Renewal of registration 
 75  Request for renewal 
  (1) Any person may, within the prescribed pe riod before the registration of a trade mark 
expires, ask the Registrar to renew the registration. 
  (2) The request must:  
  (a) be in an approved form; and 
  (b) be filed in accordance with the regulations.  
76  Notice of renewal due 
   If, at the beginning of the prescribed period, the Registrar has not received a request 
for the renewal of the registration of the tr ade mark, the Registrar must, in accordance 
with the regulations, notify the registered ow ner of the trade mark that the renewal is 
due. 
 
  
Note: For registered owner  see section 6. 
  IP/N/1/AUS/T/3 
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  77  Renewal before registration expires 
 
 (1) If a request for the renewal of the regist ration of a trade mark is made in accordance 
with section 75, the Registrar must renew the registration for a period of 10 years from the day on which the registration of the trade mark would expire if it were not 
renewed. 
  (2) The Registrar must give notice of the renewal to the registered owner of the trade 
mark in accordance with the regulations. 
 
  
Note: For registered owner  see section 6. 
 
78  Failure to renew 
   If the registration of a trade mark is not renewed, then: 
               (a) subject to sections 79 and 80, the registration ceases to have effect when it 
expires; and 
              (b) unless the registration is renewed under section 79, the Registrar must 
remove the trade mark from the Regist er 12 months after the day on which 
the registration expired. 
 
  
Note: For Register  see section 6. 
 
79  Renewal within 12 months after registration expires 
 
  If, within 12 months after the registration of a trade mark has expired, a person asks 
the Registrar, in accordance with subsecti on 75(2), to renew the registration of the 
trade mark, the Registrar must renew the registration of the trade mark for 10 years 
from the day on which the registration expired. 
 
80  Status of unrenewed trade mark 
 
  If: 
 
              (a) the registration of a trade mark ( unrenewed trade mark ) has not been 
renewed; and 
              (b) within 12 months afte r the registration expired, an application for the 
registration of a trade mark is made by a person other than the person who 
was registered as the owner of the unrenewed trade mark; 
  the unrenewed trade mark is taken to be  a registered trade mark for the purposes of 
the application. 
 
Part 8—Amendment and cancellation of registration 
 
Division 1—Action by Registrar  81  Correction of Register 
 
  The Registrar may, on his or her own initia tive, correct any error or omission made in 
entering in the Register any particular in respect of the registration of a trade mark. 
 
  
Note: For Register  see section 6. IP/N/1/AUS/T/3 
Page 46  
 
   
82  Adaptation of classification 
 
  The Registrar may, in accordance with th e regulations, amend the Register (whether 
by making, removing or altering entries) for the purpose of adapting the designation 
of the goods or services in respect of which trade marks are registered to reflect any 
change that has occurred in  the classification of goods or services for the purposes of 
this Act. 
 
  
Note 1: For Register  see section 6. 
 
  Note 2: For the classification of goods and services see subsection 19(3). 
 
83  Amendment of particulars of trade mark entered in Register 
 
 (1) Subject to Part 11, the Registrar may, at the written request of the registered owner of 
a registered trade mark: 
              (a) amend the representation of  the trade mark as entered in the Register if the 
amendment does not substantially affect the identity of the trade mark as at 
the time when the particulars of the a pplication for the registration of the 
trade mark were published under section 30; or 
             (b) amend any particulars entered in the Register relating to any goods or 
services in respect of which the trade mark is registered if the amendment 
does not have the effect of extending the rights that (apart from the amendment) the owner has under the registration; or 
             (c) amend, or enter in the Register, any other particular in respect of the trade 
mark if the amendment or entry does not have the effect of extending the 
rights that (apart from the amendment or entry) the owner has under the registration. 
 
  
Note: For registered owner , registered trade mark  and Register  see section 6. 
 
 (2) An appeal lies to the Federal Court from a decision of the Registrar under 
subsection (1). 
 
                 Note: See sections 215 and 216 for am endments of the Register to record changes in addresses for 
service and in the names of registered owners etc. 
 
84  Cancellation of registration 
 
 (1) The Registrar must cancel the registra tion of a trade mark in accordance with the 
regulations if the registered owner asks in writing that the registration be cancelled. 
 
  Note: For registered owner  see section 6. 
 
 (2) Before cancelling the registration of th e trade mark, the Registrar must notify in 
accordance with the regulations: 
               (a) any person recorded unde r Part 11 as claiming a right in respect of, or an 
interest in, the trade mark; and 
  (b) if: 
  IP/N/1/AUS/T/3 
 Page 47 
 
 
                             (i) an app lication has been made to the Registrar for a record of the 
assignment or transmission of the trade mark to a person to be entered in the Register (see section 109); and 
   (ii) the assignment has not yet been recorded;  
  the person to whom the trade mark has been assigned or transmitted. 
 
Division 2—Action by court 
 85  Amendment to correct error or omission 
 
  A prescribed court may, on the applicati on of an aggrieved pe rson, order that the 
Register be rectified by: 
   (a) entering in the Register partic ulars that were wrongly omitted from it; or 
  (b) correcting any error in an entry in the Register. 
 
  
Note: For prescribed court see section 190. 
 
86  Amendment or cancellation on gro und of contravention of condition etc. 
 
  A prescribed court may, on the applicati on of an aggrieved pe rson, order that the 
Register be rectified by: 
   (a) cancelling the registration of a trade mark; or 
  (b) removing or amending any entry in the Register relating to the trade mark; 
  on the ground that a condition or limitation entered in the Register in relation to the 
trade mark has been contravened. 
 
  
Note: For prescribed court see section 190. 
 
87  Amendment or cancellation—loss of exclusive rights to use trade mark 
 
 (1) If section 24 or 25 applies in relation to a registered trade mark, a prescribed court 
may, on the application of an aggrieved person, but subject to subsection (2) and 
section 89, order that the Register be rectified by: 
   (a) cancelling the registration of the trade mark; or               (b) removing or amending any entry in the Register relating to the trade mark; 
  having regard to the effect of section 24 or 25 (as the case may be) on the right of the 
registered owner of the trade mark to use the trade mark, or any sign that is part of the 
trade mark, in relation to particular goods or services. 
  (2) If section 24 or 25 applies in relation to the trade mark because the trade mark 
contains a sign that: 
               (a) has become generally  accepted within the relevant trade as the sign that 
describes or is the name of an article, substance or service; or 
  (b) describes or is the name of:  
   (i) an article or substance that w as formerly exploited under a patent; or 
   (ii) a service that was formerly provided as a patented process;  IP/N/1/AUS/T/3 
Page 48  
 
    the court may decide not to make an order under subsection (1) and allow the trade 
mark to remain on the Register in respect of: 
   (c) the article or substance or goods of the same description; or   (d) the service or services of the same description; 
  subject to any condition or limitation that the court may impose. 
 
              
Note 1: Sections 24 and 25 provide that the register ed owner of a trade mark does not have exclusive 
rights to use, or to authorise the use of, the trade mark if it consists of, or contains, a sign that:  
                                                (a) becomes generally accepted within the relevant trade as the sign that descr ibes or is 
the name of an article, substance or service; or  
                                                (b) is the only commonly known way to describe or identify an article formerly 
exploited under a patent, or a service former ly provided as a patented process, where 
the patent has expired more than 2 years ago. 
 
  N o t e  2 :  F o r  registered trade mark , registered owner  and Register  see section 6. 
 
  N o t e  3 :  F o r  prescribed court see section 190. 
 
88  Amendment or cancellation—other specified grounds 
 
 (1) Subject to subsection (2) and section 89, a prescribed court may, on the application of 
an aggrieved person, order that the Register be rectified by: 
 
  (a) cancelling the registration of a trade mark; or                (b) removing or amending an entry wrongly made or remaining on the Register; 
or 
              (c) entering any condition or limitation affecting the registration of a trade mark 
that ought to be entered. 
  (2) An application may be made on any of  the following grounds, and on no other 
grounds: 
               (a) any of the grounds on which the registration of the trade mark could have 
been opposed under Division 2 of Part 5; 
              (b) an amendment of the ap plication for the registration of the trade mark was 
obtained as a result of fraud, false suggestion or misrepresentation; 
              (c) because of the circumst ances applying at the time when the application for 
rectification is filed, the use of the tr ade mark is likely to deceive or cause 
confusion for a reason other than one for which: 
                            (i) the app lication for the registration of the trade mark could have been 
rejected under section 43 or 44; or 
                           (ii) the registration of the trade mark could have been opposed under 
section 60; 
 
  (d) the following circumstances apply:                             (i) the Registrar accepted the application for the registration of the trade 
mark because he or she was satisfied , having regard to the extent to 
which the trade mark was inherently adapted to distinguish the goods 
or services of the applicant for registration from the goods or services of any other person and the intended use of the trade mark, that the trade mark would distinguish those goods or services as being those of the applicant (see paragraph 41(5)(a));  IP/N/1/AUS/T/3 
 Page 49 
 
 
                            (ii) the app lication for rectification is made at least 10 years after the 
filing date; 
                          (iii) in the intervening period, the trade ma rk has not been used to an 
extent sufficient for it to distinguish , in fact, the goods or services of 
the registered owner from the goods or services of any other person; 
 
              (e) if the application is in  respect of an entry in the Register—the entry was 
made, or has been previously amended, as a result of fraud, false suggestion or misrepresentation. 
 
Note 1: For prescribed court  see section 190. 
 
Note 2: For file, filing date  and registered owner  see section 6.  
 
 
89  Rectification may not be granted in certain cases if registered owner not at fault etc. 
 
 (1) The court may decide not to grant an application for rectification made:    (a) under section 87; or               (b) on the ground that the tr ade mark is liable to deceive or confuse (a ground on 
which its registration could have been  opposed, see paragraph 88(2)(a)); or 
              (c) on the gr ound referred to in paragraph 88(2)(c); 
  if the registered owner of the trade ma rk satisfies the court that the ground relied on 
by the applicant has not arisen through an y act or fault of the registered owner. 
 
  
Note: For registered owner  see section 6. 
 
 (2) In making a decision under subsection (1), the court:  
  (a) must also take into account any matter that is prescribed; and 
  (b) may take into account any other ma tter that the court considers relevant. 
 
90  Duties and powers of Registrar 
  (1) A person applying to a prescribed court under this Division must give notice of the 
application to the Registrar. 
 
  N o t e : For prescribed court  see section 190. 
 
 (2) Except for cases where the court directs the Registrar to appear, the Registrar may 
appear before the court and be heard at his or her discretion. 
  (3) The applicant must give to the Registrar a copy of any order made by the court under 
this Division and the Registrar must comply with the order. 
 
Division 3—Amendment of certificate of registration 
 91  Amendment of certificate of registration 
   When the Registrar amends any particular en tered in the Register in respect of a trade 
mark, the Registrar may also amend the certificate of registration if he or she thinks it appropriate to do so. IP/N/1/AUS/T/3 
Page 50  
 
   
Part 9—Removal of trade mark from Register for non-use 
 92  Application for removal of trade mark from Register etc. 
  (1) A person aggrieved by the fact that a trade mark is or may be registered may, subject 
to subsection (3), apply to the Registrar for the trade mark to be removed from the 
Register. 
  (2) The application: 
 
  (a) must be in accordance with the regulations; and               (b) may be made in respect of any or all of the goods and/or services in respect 
of which the trade mark may be, or is, registered. 
 
 (3) An application may not be made to the Registrar under subsection (1) if an action 
concerning the trade mark is pending in a pr escribed court, but the person aggrieved 
may apply to the court for an order directi ng the Registrar to remove the trade mark 
from the Register. 
 
  
Note: For prescribed court  see section 190. 
 
 (4) An application under subsection (1) or (3) ( non-use application ) may be made on 
either or both of the following grounds, and on no other grounds: 
 
              (a) that, on the day on which the application for the registration of the trade mark 
was filed, the applicant for registra tion 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 non-use application 
relates and that the registered owner: 
   (iv) has not used the trade mark in Australia; or 
   (v) has not used the trade mark in good faith in Australia; 
  in relation to those goods and/or services at any time before the period of one 
month ending on the day on which the non-use application is filed; 
               (b) that the trade mark has remained registered for a continuous period of 3 years 
ending one month before the day on whic h the non-use application is filed, 
and, at no time during that period, the person who was then the registered 
owner: 
    (i) used the trade mark in Australia; or    (ii) used the trade mark  in good faith in Australia; 
   in relation to the goods and/or services to which the application relates. 
 
  
Note: For file see section 6. 
 
 (5) If the right or interest on which a person relied to make an application (under 
subsection (1) or (3)) to obtain the removal of a trade mark from the Register becomes vested in another person, the other person may, on giving notice of the  IP/N/1/AUS/T/3 
 Page 51 
 
 
  relevant facts to the Registrar or the cour t (as the case requires), be substituted for the 
first-mentioned person as the applicant. 
 
93  Time for making application 
  (1) Subject to subsection (2), an applica tion for the removal of a trade mark from the 
Register may be made at any time after the filing date in respect of the application for the registration of the trade mark. 
  (2) An application on the ground referred to  in paragraph 92(4)(b) may not be made 
before a period of 5 years has passed from th e filing date in respect of the application 
for the registration of the trade mark. 
 
  
Note: For filing date  see section 6. 
 
94  Referral to court 
 
  If:  
  (a) an application has been made to  the Registrar under subsection 92(1); and 
              (b) the Registrar is of the opinion that the matter should be decided by a 
prescribed court; 
  the Registrar may refer the matter to such a court and the court may hear and 
determine the matter as if an application had been made to it under subsection 92(3). 
 95  Notification of application 
 
 (1) If an application has been made to th e Registrar under section 92, the Registrar must 
give notice of the application in accordance with the regulations. 
 
 (2) If the application is in respect of a tr ade mark already entered on the Register, the 
Registrar must advertise the application in the Official Journal . 
  (3) If the application is in respect of a trad e mark whose registration is being sought, the 
Registrar is to advertise the application in the Official Journal only if the trade mark 
is registered. 
 
96  Notice of opposition 
 
 (1) Any person may oppose an application under section 92 by filing a notice of 
opposition with the Registrar or the court, as the case requires. 
 
 (2) The notice of opposition:    (a) must be in a form approved by the Registrar or by the court; and               (b) must be filed in accordan ce with the regulations or the rules of court (as the 
case may be). 
 
 
 Note: For file see section 6. 
 IP/N/1/AUS/T/3 
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  97  Removal of trade mark from the Register etc. if application unopposed 
 
 (1) If there is no opposition to an applicati on to the Registrar under subsection 92(1), the 
Registrar must remove the trade mark fro m the Register in respect of the goods 
and/or services specified in the application. 
 
 (2) If there is no opposition to an applicatio n to a court under subsection 92(3), the court 
must order the Registrar to remove the trad e mark from the Register in respect of the 
goods and/or services specified in the applica tion. The court must cause a copy of the 
order to be served on the Registrar and the Registrar must comply with the order. 
 
98  Trade mark restored to Register if notice of opposition filed within extended time 
 
  If:  
              (a) the Registrar has removed a trade mark from the Register under 
subsection 97(1) because no notice of opposition was filed within the period 
provided under the regulations; and 
              (b) the Registrar subsequent ly extends the period within which the notice may be 
filed; and 
              (c) a notice of opposition is filed within the extended period; 
  the Registrar must restore the trade mark to  the Register. Also, the trade mark is taken 
not to have been removed from the Register. 
 
  
Note: For file see section 6. 
 
99  Proceedings before Registrar 
 
  If an application to the Registrar is oppo sed, the Registrar must deal with the matter 
in accordance with the regulations. 
 
100  Burden on opponent to establish use of trade mark etc. 
 
 (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 tr ade 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 unde r 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 unde r 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  IP/N/1/AUS/T/3 
 Page 53 
 
 
  which the opposed application was filed,  been used, or been used in good 
faith, by its registered owner in relati on to the relevant goods and/or services. 
 
              Note 1: If the registered owner of the trade mark ha s 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)). 
 
  N o t e  2 :  F o r  file and registered owner  see section 6. 
 
 (2) For the purposes of paragraph 1(b), th e opponent is taken to have rebutted the 
allegation that the trade mark has not, at a ny 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 establis hed 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 oppo nent has established that the tr ade mark, or the trade mark 
with additions or alterations not s ubstantially 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 circumstanc es 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 th e 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), th e opponent is taken to have rebutted the 
allegation that the trade mark has not, at an y 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 establis hed 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 oppo nent has established that the tr ade mark, or the trade mark 
with additions or alterations not s ubstantially affecting its identity, 
was used in good faith by the assignee of the trade mark in relation to IP/N/1/AUS/T/3 
Page 54  
 
  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 circumstanc es of the case, to treat the use of 
the trade mark by the assignee durin g 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 ha s 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)). 
 
  N o t e  2 :  F o r  registered owner  see section 6. 
 
101  Determination of opposed application—general 
 
 (1) Subject to subsection (3) and to section 102, if:                (a) the proceedings re lating to an opposed application have not been 
discontinued or dismissed; and 
              (b) the Registrar is satisfi ed that the grounds on which the application was made 
have been established; 
  the Registrar may decide to remove the trad e mark from the Register in respect of any 
or all of the goods and/or services to which the application relates. 
  (2) Subject to subsection (3) and to section 102,  if, at the end of the proceedings relating 
to an opposed application, the court is satisfied that the grounds on which the 
application was made have been establishe d, the court may order the Registrar to 
remove the trade mark from th e Register in respect of any or all of the goods and/or 
services to which the application relates. 
 
 (3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the 
trade mark should not be removed from the Register even if the grounds on which the application was made have been established. 
 
102  Determination of opposed application—localised use of trade mark 
  (1) This section applies if an application for the removal of a trade mark ( challenged 
trade mark ) from the Register is made on the ground referred to in 
paragraph 92(4)(b) and: 
              (a) the applicant is the regi stered owner of a trade mark that is substantially 
identical with, or deceptively similar to, the challenged trade mark and is 
registered in respect of the goods and/or  services specified in the application 
subject to the condition or limitation that the use of the trade mark is to be restricted to: 
  IP/N/1/AUS/T/3 
 Page 55 
 
 
                             (i) goods a nd/or services to be dealt with or provided in a particular 
place ( specified place ) in Australia (otherwise than for export from 
Australia); or 
                          (ii) goods and/or services to be exported to a particular market ( specified 
market ); or 
 
              (b) the Registrar or the court is of the opinion that such a trade mark may 
properly be registered in the name of the applicant with that condition or limitation. 
 
  
Note 1: For registered owner  see section 6. 
 
  N o t e  2 :  F o r  deceptively similar  see section 10. 
 
 (2) If the Registrar or the court is satisfied:  
              (a) that the challenged trad e mark has remained registered for the period referred 
to in paragraph 92(4)(b); and 
              (b) that during that period there has been no use, or no use in good faith, of the 
challenged trade mark in relation to: 
 
   (i) goods or services dealt with or provided in the specified place; or 
   (ii) goods or services to be exported to the specified market;   the Registrar may decide, or the court may order, that the challenged trade mark 
should not be removed from the Register but that the registration of the trade mark should be subject to the conditions or lim itations that the Registrar or the court 
considers necessary to ensure that the regi stration does not extend to the use of the 
trade mark in relation to: 
   (c) goods or services dealt with or provided in the specified place; or   (d) goods or services to be exported to the specified market.  
  
Note: For limitations  see section 6. 
 
103  Registrar to comply with order of court 
 
  A court making an order under section 101 or 102 must cause a copy of the order to 
be served on the Registrar and the Registrar must comply with the order. 
 
104  Appeal 
   An appeal lies to the Federal Court from a decision of the Registrar under section 101 
or 102. 
 
105  Certificate—use of trade mark 
  (1) If in any proceedings rela ting to an opposed application the Registrar or the court has 
found that: 
   (a) a trade mark has been used in good faith during a particular period; or               (b) a trade mark has not b een used during a particular period solely because of 
circumstances that were an obstacle to its use; IP/N/1/AUS/T/3 
Page 56  
 
    the Registrar or the court must, if so re quested by the registered owner of the trade 
mark, give to the registered owner a certificate of those findings. 
  (2) In any subsequent proceedings in wh ich non-use of the trade mark is alleged: 
 
  (a) the certificate is, on being produced, evidence of the facts stated in it; and 
              (b) if the proceedings are dete rmined in favour of the op ponent and, on or before 
filing the notice of opposition, the opponent notified the applicant of the contents of the certificate—the opponent  is entitled, unless the Registrar or 
the court otherwise directs, to have the opponent’s full costs paid by the 
applicant. 
 
Part 10—Assignment and transmission of trade marks 
 106  Assignment etc. of trade mark 
 
 (1) A registered trade mark, or a trade ma rk whose registration is being sought, may be 
assigned or transmitted in accordance with this section. 
  (2) The assignment or transmission may be par tial, that is, it may apply to some only of 
the goods and/or services in respect of which registration is sought or the trade mark 
is registered, but it may not be partial in relation to the use of a trade mark in a 
particular area. 
  (3) The assignment or transmission may be w ith or without the goodwill of the business 
concerned in the relevant goods and/or services. 
 
  
Note: For assignment  and transmission  see section 6. 
 
107  Applications for record to be made of assign ment etc. of trade mark whose registration is 
sought 
 
 (1) If a trade mark whose registration is  being sought is assi gned or transmitted: 
   (a) the applicant for the registration of the trade mark; or 
  (b) the person to whom it has been assigned or transmitted; 
  must apply to the Registrar for the assignment or transmission to be recorded.   (2) The application must:    (a) be in an approved form; and 
              (b) be filed, together with any prescribed documen t, in accordance with the 
regulations. 
 
  
Note: For approved form  and file see section 6. 
 
108  Recording of assignment etc. of trade mark whose registration is sought 
 
 (1) If the application complies with this Act, the Registrar must:  
              (a) at, or within, the time  provided for in the regulations, record in the manner 
that the Registrar thinks fit (but not in the Register) the particulars of the assignment or transmission; and  IP/N/1/AUS/T/3 
 Page 57 
 
 
                (b) publish the particulars of the assignment or transmission in accordance with 
the regulations. 
  (2) On and after the day on which the Regist rar records the particulars of the assignment 
or transmission, the person to whom the trade mark has been assigned or transmitted 
is taken, for the purposes of this Act, to be the applicant for the registration of the 
trade mark. 
 
109  Application for record of assignment etc. of registered trade mark to be entered in Register 
  (1) If a registered trade mark is assigned or transmitted: 
   (a) the person registered as the owner of the trade mark; or   (b) the person to whom the trade mark has been assigned or transmitted; 
  must apply to the Registrar for a reco rd of the assignment or transmission to be 
entered in the Register. 
  (2) The application must:    (a) be in an approved form; and                (b) be filed, together  with any prescribed documen t, in accordance with the 
regulations. 
 
Note: For approved form  and file see section 6. 
 
110  Recording of assignment etc. of registered trade mark 
 
 (1) If the application complies with this Act,  the Registrar must, at, or within, the time 
provided for in the regulations: 
   (a) enter the particulars of the assignment or transmission in the Register; and               (b) register the person to  whom the trade mark has been assigned or transmitted 
(beneficiary ) as the owner of the trade mark in relation to the goods and/or 
services in respect of which the assignment or transmission has effect. 
  (2) The particulars are taken to have been entered in the Register on the day on which the 
application was filed, and the registration of  the beneficiary as the owner of the trade 
mark is taken to have had effect from and including that day. 
  (3) The Registrar must advertise in the Official Journal : 
   (a) the recording of the assignment or transmission; and   (b) the registration of the beneficiary as the owner of the trade mark. 
 
111  Notice of application to be given to person rec orded as claiming interest in trade mark etc. 
 
  If an application made under section 107 or 109 in relation to the assignment or 
transmission of a trade mark complies with this Act, the Registrar must notify in 
accordance with the regulations any pers on recorded under Part 11 as claiming an 
interest in, or a right in respect of, the trade mark. 
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  Part 11—Voluntary recording of claims to intere sts in and rights in respect of trade marks 
 Division 1—Preliminary  112  Object of Part 
 
  This Part makes provision:                (a) for recording in the Regi ster claims to interests in, and rights in respect of, 
registered trade marks that may not be  so recorded under another Part; and 
              (b) for the Registrar to keep  a record of claims to interests in, and rights in 
respect of, trade marks for which registration is sought. 
 
  
Note: For registered trade mark  see section 6. 
 
Division 2—Interests in, and rights in respect of, registered trade marks 
 113  Application to have claims to interest etc. recorded 
  (1) If: 
               (a) a person (other than the re gistered owner of the trade mark) claims to have an 
interest in, or a right in respect of, a registered trade mark; and 
  (b) this interest or right may not be recorded in the Register under Part 10;   the person and the registered owner of the trade mark may together apply to the 
Registrar to have particulars of th e claim recorded in the Register. 
  (2) The application must be in an approved form and must be filed in accordance with the 
regulations. 
 
  N o t e :  F o r  registered owner , registered trade mark , approved form  and file see section 6. 
 
114  Record of claims to interest etc. 
  (1) If the application has been made in acc ordance with section 113, the Registrar must 
enter in the Register the particulars of the claim set out in the application. 
  (2) If:  
  (a) a trade mark is registered; and 
              (b) immediately before the registration, particulars of a claim to an interest in, or 
right in respect of, the trade mark were recorded under Division 3; 
  the Registrar must enter those particulars in the Register.  115  Amendment and cancellation 
 
  The regulations may provide for the amendment and cancellation of particulars 
entered in the Register under this Division. 
  IP/N/1/AUS/T/3 
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  116  Record not proof etc. of existence of right etc. 
 
  The fact that a record has been made in  the Register under this Part that a person 
claims an interest in, or a right in respect of, a registered trade mark is not proof or 
evidence that the person has that right or interest. 
 
Division 3—Interests in, and rights in respect of, unregistered trade marks 
 117  Application to have claims to interest etc. recorded 
  (1) If: 
   (a) a person has applied for the registration of a trade mark; and               (b) another person claims to ha ve an interest in, or a right in respect of, the trade 
mark; 
  they may together apply to the Registrar fo r a record to be kept of the other person’s 
claim. 
  (2) The application must be in an approved form and must be filed in accordance with the 
regulations. 
 
  
Note: For approved form  and file see section 6. 
 
118  Record of claims to interest etc. 
   If the application has been made in acc ordance with section 117, the Registrar must 
record in the manner that the Registrar thinks fit (but not in the Register) the particulars of the claim set out in the application. 
 
119  Amendment and cancellation 
 
  The regulations may provide for the amendment and cancellation of particulars 
recorded under this Division. 
 
Part 12—Infringement of trade marks 
 
120  When is a registered trade mark infringed? 
 
 (1) A person infringes a registered trade mark  if the person uses as a trade mark a sign 
that is substantially identical with, or decep tively similar to, the trade mark in relation 
to goods or services in respect of which the trade mark is registered. 
 
  
Note 1: For registered trade mark  see section 6. 
 
  N o t e  2 :  F o r  deceptively similar  see section 10. 
 
 (2) A person infringes a registered trade mark  if the person uses as a trade mark a sign 
that is substantially identical with, or decep tively similar to, the trade mark in relation 
to: 
              (a) goods of the same description as that of goods ( registered goods ) in respect 
of which the trade mark is registered; or 
             (b) services that are closely related to registered goods; or IP/N/1/AUS/T/3 
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                (c) services of the same description as that of services ( registered services ) in 
respect of which the trade mark is registered; or 
  (d) goods that are closely related to registered services.   However, the person is not taken to ha ve infringed the trade mark if the person 
establishes that using the sign as the person did is not likely to deceive or cause 
confusion. 
 
  
Note 1: For registered trade mark  see section 6. 
 
  N o t e  2 :  F o r  deceptively similar  see section 10. 
 
 (3) A person infringes a registered trade mark if: 
   (a) the trade mark is well known in Australia; and 
              (b) the person uses as a trade mark a sign that is substantially identical with, or 
deceptively similar to, the trade mark in relation to: 
                            (i) goods ( unrelated goods ) that are not of the same description as that 
of the goods in respect of which the trade mark is registered 
(registered goods ) or are not closely related to services in respect of 
which the trade mark is registered ( registered services ); or 
                          (ii) services ( unrelated services ) that are not of the same description as 
that of the registered services or are not closely related to registered goods; and 
 
              (c) because the trade mark is well known, the sign would be likely to be taken as 
indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and 
              (d) for that reason, the inter ests of the registered owner are likely to be adversely 
affected. 
 
Note 1: For registered trade mark  see section 6. 
 
Note 2: For deceptively similar  see section 10. 
 
Note 3: For well known in Australia  see subsection (4). 
 
 (4) In deciding, for the purposes of para graph (3)(a), whether a trade mark is well known 
in Australia , one must take account of the extent  to which the trade mark is known 
within the relevant sector of the public, whether as a result of the promotion of the 
trade mark or for any other reason. 
 
121  Infringement of trade mark by breach of certain restrictions 
 
 (1) This section applies to a registered tr ade mark if the registered owner, or an 
authorised user of the trade mark having pow er to do so, has cau sed to be displayed 
on goods ( registered goods ) in respect of which the trade mark is registered, or on 
their package, or on the container in whic h they are offered to the public, a notice 
(notice of prohibition ) prohibiting any act that is under subsection (2) a prohibited act 
in relation to the goods. 
 
              Note 1: An authorised user of the trade mark may not have power to cause no tices of prohibition to be 
displayed on goods etc. because of the terms of the agreement between the authorised user and 
the registered owner of the trade mark (see section 26). 
  IP/N/1/AUS/T/3 
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    N o t e  2 :  F o r  registered owner  and registered trade mark  see section 6. 
 
  N o t e  3 :  F o r  authorised user  see section 8. 
 
 (2) Each of the following is a prohibited act: 
 
              (a) applying the trade mark to registered goods, or using the trade mark in 
physical relation to them, after the state, condition, get-up or packaging in which they were originally offere d to the public has been altered; 
              (b) altering, or partially removing or obliterating, any representation of the trade 
mark applied to registered goods or used in physical relation to them; 
              (c) if the trade mark has been applied to registered goods, or used in physical 
relation to them, together with other matter indicating that the registered 
owner or authorised user has dealt with the goods—removing or obliterating, 
totally or in part, any representation of the trade mark without totally 
removing or obliterating the other matter; 
             (d) applying another trade ma rk to registered goods or using another trade mark 
in physical relation to them; 
             (e) if the trade mark has been  applied to registered goods or used in physical 
relation to them—using on the goods, or on the packaging or container of the goods, any matter that is likely to injure the reputation of the trade mark. 
 
Note 1: For applied  to see section 9. 
 
Note 2: For authorised user see section 8. 
 
 (3) Subject to subsection (4), a person infring es a trade mark to which this section applies 
if the person: 
   (a) is the owner of registered goods; and               (b) in the course of trade, or with a view to a dealing with the goods in the course 
of trade: 
 
   (i) does an act that is prohibited under the notice of prohibition; or    (ii) authorises that act to be done.   (4) The trade mark is not infringed if the owner of the goods: 
 
              (a) acquired them in good faith and without being aware of the notice of 
prohibition; or 
              (b) became the owner of th e goods by virtue of a title derived from a person who 
had so acquired them. 
 122  When is a trade mark not infringed? 
 
 (1) In spite of section 120, a person does not infringe a registered trade mark when:    (a) the person uses in good faith: 
 
   (i) the person’s name or the name of the person’s place of business; or                            (ii) the name of a predecessor in business of the person or the name of 
the predecessor’s place of business; or 
 
  (b) the person uses a sign in good faith to indicate: IP/N/1/AUS/T/3 
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                             (i) the kind, quality, quantity, intended purpose, value, geographical 
origin, or some other characteristic, of goods or services; or 
   (ii) the time of production of goods or of the rendering of services; or                (c) the person uses the trade mark in good faith to indicate the intended purpose 
of goods (in particular as accessories or spare parts) or services; or 
  (d) the person uses the trade mark for th e purposes of comparative advertising; or 
              (e) the person exercises a right to use a trade mark given to the person under this 
Act; or 
              (f) the court is of the op inion that the person would obtain registration of the 
trade mark in his or her name if the person were to apply for it; or 
              (g) the person, in using a sign referred to in subsection 120(1), (2) or (3) in a 
manner referred to in that subsecti on, does not (because of a condition or 
limitation subject to which the trade mark is registered) infringe the exclusive right of the registered owner to use the trade mark. 
 
 (2) In spite of section 120, if a disclaimer h as been registered in respect of a part of a 
registered trade mark, a person does not infringe the trade mark by using that part of the trade mark. 
 
123  Goods etc. to which registered trade mark  has been applied by or with consent of 
registered owner 
 
 (1) In spite of section 120, a person who uses a registered trade mark in relation to goods 
that are similar to goods in respect of wh ich the trade mark is registered does not 
infringe the trade mark if the trade mark h as been applied to, or in relation to, the 
goods by, or with the consent of, the registered owner of the trade mark. 
 
  
Note: For similar goods  see subsection 14(1). 
 
 (2) In spite of section 120, a person who u ses a registered trade mark in relation to 
services that are similar to services in resp ect of which the trade mark is registered 
does not infringe the trade mark if the trade mark has been applied in relation to the 
services by, or with the consent of, the registered owner of the trade mark. 
 
  Note: For similar services  see subsection 14(2). 
 
124  Prior use of identical trade mark etc. 
 
 (1) A person does not infringe a registered trade mark by using an unregistered trade 
mark that is substantially identical with, or  deceptively similar to, the registered trade 
mark in relation to: 
               (a) goods similar to goods ( registered goods ) in respect of which the trade mark 
is registered; or 
  (b) services closely related to registered goods; or 
              (c) services similar to services ( registered services ) in respect of which the trade 
mark is registered; or 
  (d) goods closely related to registered services;   if the person, or the person and the person’s predecessor in title, have continuously 
used in the course of trade the unregistered trade mark in relation to those goods or 
services from a time before: 
              (e) the date of registration of the registered trade mark; or  IP/N/1/AUS/T/3 
 Page 63 
 
 
                (f) the registered owner of the registered trade mark, or a predecessor in title, or 
a person who was a registered user of the trade mark under the repealed Act, 
first used the trade mark; 
  whichever is earlier.  
Note 1: For deceptively similar  see section 10. 
 
Note 2: For predecessor in title  and date of registration  see section 6. 
 
 (2) If the unregistered trade mark has continuous ly been used only in a particular area of 
Australia, subsection (1) applies only to the use of the trade mark by the person in 
that area. 
 
125  What courts may hear action for infringement of registered trade mark 
 
 (1) An action for an infringement of a registered trade mark may be brought in a 
prescribed court. 
 
  Note: For prescribed court see section 190. 
 
 (2) Subsection (1) does not prevent an action for infringement of a registered trade mark 
from being brought in any other court that has jurisdiction to hear the action. 
 
126  What relief can be obtained from court 
   The relief that a court may grant in an ac tion for an infringement of a registered trade 
mark includes: 
              (a) an injunction, which ma y be granted subject to any condition that the court 
thinks fit; and 
             (b) at the option of the plai ntiff but subject to section 127, damages or an account 
of profits. 
 
127  Special case—plaintiff not entitled to damages etc. 
   If: 
               (a) in an action for the in fringement of a trade mark registered in respect of 
particular goods or services, the court finds that the defendant has infringed 
the trade mark; and 
              (b) the defendant has app lied to the court under subsection 92(3) for an order 
directing the Registrar to remove the trade mark from the Register in respect 
of those goods or services; and 
              (c) the court finds that, because the trade mark has not during a particular period 
(critical period ) been used in good faith by its registered owner in relation to 
those goods or services, there are grounds (under subsection 92(4)) for so 
removing the trade mark from the Register; 
  the court may not grant relief to the plaintiff by way of damages or an account of 
profits in respect of any infringement of the trade mark that happened during the critical period. 
 IP/N/1/AUS/T/3 
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  128  Circumstances in which action may not be brought 
 
  If the registration of a trade mark is renewed (under section 79) within 12 months 
after it has expired, an action may not be brought in respect of an act that: 
 
  (a) infringed the trade mark; and 
  (b) was done after the registration ha d expired and before it was renewed. 
 
129  Groundless threats of legal proceedings  
  (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 ha ving 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 defe ndant 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 th e defendant is the regi stered 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 br ought) 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). 
  IP/N/1/AUS/T/3 
 Page 65 
 
 
   (6) This section does not make a lawyer, re gistered 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. 
 
130  Counterclaim by defendant in action on groundless threats 
   If the defendant in an action brought under section 129 would be entitled to bring 
against the plaintiff an action for infri ngement of the registered trade mark 
(infringement action ): 
                (a) the defendant may file in the court a counterclaim against the plaintiff for any 
relief to which the defendant would be  entitled in the infringement action; 
and 
               (b) the provisions of this Act applicable to infringement  actions apply in relation 
to the counterclaim as if it were an  infringement action brought by the 
defendant against the plaintiff. 
 Part 13—Importation of goods infringing Australian trade marks  131  Object of Part 
 
  The object of this Part is to protect registered trade marks by making provision 
allowing the Customs CEO to seize and deal with goods that are imported into 
Australia if the importation infringes, or a ppears to infringe, a registered trade mark. 
 
132  Notice of objection to importation 
 
 (1) The registered owner of a registered trade mark may give to the Customs CEO a 
notice in writing objecting to the importation after the date of the notice of goods that 
infringe the trade mark. The notice is to be given together with any prescribed 
document. 
  (2) If: 
 
             (a) the registered owner of the registered trade mark has not given a notice under 
subsection (1); or 
  (b) any notice given under subsection (1) is no longer in force;   an authorised user of the trade mark having power to give a notice under 
subsection (1) may ask the registered owner to give such a notice in respect of the 
trade mark. 
 
  
Note 1: For authorised user see section 8. 
 
                 Note 2: An authorised user of th e trade mark may not have power to give a notice under subsection (1) 
because of the terms of the agreement between th e authorised user and the registered owner of 
the trade mark (see section 26). 
 
 (3) If the registered owner does not comply w ith the request within the prescribed period, 
the authorised user may give the notice to  the Customs CEO. The authorised user 
must give also to the Customs CEO, together with the notice: 
 
  (a) any document prescribed for the purposes of subsection (1); and IP/N/1/AUS/T/3 
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    (b) any other prescribed document. 
  (4) A notice given by the registered owner of  a trade mark remains in force for 2 years 
from the day on which the notice is given unl ess it is revoked, before the end of that 
period, by notice in writing given to the Customs CEO by the person who is then the 
registered owner of the trade mark. 
  (5) A notice given by an authorised user of  the trade mark remains in force for 2 years 
unless it is revoked, before the end of that period, by notice in writing given to the Customs CEO: 
 
              (a) if the authorised user has power to revoke the notice—by the authorised user; 
or 
              (b) in any other case—by the person who is then the registered owner of the 
trade mark. 
 
  
Note 1: For authorised user see section 8. 
 
                 Note 2: An authorised user of a trade mark may not have power to revoke the notice because of the 
terms of the agreement between the authorised user and the registered owner of the trade mark 
(see section 26). 
 
133  Customs CEO may seize goods infringing trade mark 
 
 (1) This section applies to goods manufactured outside Australia that: 
   (a) are imported into Australia; and               (b) are subject to the control of the Customs within the meaning of the Customs 
Act 1901 . 
  (2) If goods to which this section applies:                (a) have applied to them or  in relation to them a sign that, in the opinion of the 
Customs CEO, is substantially identic al with, or deceptively similar to, a 
notified trade mark; and 
  (b) are goods in respect of which the notified trade mark is registered;   the Customs CEO must seize the goods unless he  or she is satisfied that there are no 
reasonable grounds for believing that the no tified trade mark is infringed by the 
importation of the goods. 
 
Note 1: For applied to or in relation to goods  see section 9. 
 
Note 2: For deceptively similar  see section 10. 
 
Note 3: For notified trade mark  see section 6. 
 
 (3) The Customs CEO may decide not to seize the goods if he or she has not been given 
by the objector, or by one or more of the objectors, security in an amount that he or she considers sufficient to repay to th e Commonwealth the expense that may be 
incurred by the Commonwealth if the goods were seized. 
 
  
Note: For objector  see section 6. 
 
 (4) Goods seized under this section must be kept in a secure place as directed by the 
Customs CEO.  IP/N/1/AUS/T/3 
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  134  Notice of seizure 
 
  The Customs CEO must, as soon as practicable:                (a) give (either personally or by post) to the designated owner of any seized 
goods a notice in writing identifying the goods and stating that they have 
been seized under section 133; and 
              (b) give (either personally  or by post) to the objector, or to each objector, a 
notice in writing: 
 
                          (i) identifying the goods and stating that they have been seized under 
section 133; and 
                          (ii) givi ng the full name and address of the designated owner of the 
goods and any information that the Customs CEO has and that he or she believes, on reasonable grounds, to be likely to help the objector 
to identify the importer of the goods; and 
                         (iii) stating that the goods will be released to the designated owner unless 
the objector or one of the objectors (as the case requires) brings an action for infringement of the notified trade mark in respect of the goods, and gives to the Customs CEO notice in writing of the action, within the period of 10 working days after he or she has been given 
the notice or, if the Customs CEO extends that period under 
subsection 137(1), within the extended period. 
 
              
Note: For designated owner , objector , seized goods  and notified trade mark  see section 6. 
 
135  Forfeiture of goods 
 
 (1) The designated owner of any seized goods may, at any time before an objector starts 
an action for infringement of a notified trad e mark in respect of the goods, consent to 
the goods being forfeited to the Commonwealth  by giving notice in writing to that 
effect to the Customs CEO. 
  (2) If the designated owner gives such  a notice, the goods are forfeited to the 
Commonwealth. 
 
Note: For designated owner , seized goods , objector  and notified trade mark  see section 6. 
 
136  Release of goods to owner—no action for infringement 
 
 (1) The Customs CEO must release the seized goods to their designated owner if, within 
the action period, the objector has not, or none of the objectors has: 
              (a) brought an action for infri ngement of the notified trade mark in respect of the 
goods; and 
  (b) given to the Customs CEO notice in writing of the action.  
Note 1: For seized goods , designated owner , objector  and notified trade mark  see section 6. 
 
Note 2: For action period  see subsection (4). 
 
 (2) The Customs CEO must also release the seized goods to their designated owner if: IP/N/1/AUS/T/3 
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                (a) before the end of the action period, the objector or each of the objectors has, 
by notice in writing to the Customs CE O, consented to the release of the 
goods; and 
              (b) at that time:  
                           (i) the objector has not, or none of the objectors has, brought an action 
for infringement of the notified trad e mark in respect of the goods; or 
                          (ii) any action brought by an objector has been withdrawn.  
Note 1: For seized goods , designated owner , objector  and notified trade mark  see section 6. 
 
Note 2: For action period  see subsection (4). 
 
 (3) The Customs CEO may release the sei zed goods to their designated owner at any 
time before the end of the action period if: 
 
             (a) the Customs CEO, having regard to information that has come to his or her 
knowledge after the goods were seized, is satisfied that there are no 
reasonable grounds for believing that the notified trade mark has been infringed by the importation of the goods; and 
             (b) the objector has not, or none of the objectors has, brought an action for 
infringement of the notified trade mark in respect of the goods. 
 
  N o t e  1 :  F o r  seized goods , designated owner , objector  and notified trade mark  see section 6. 
 
  N o t e  2 :  F o r  action period  see subsection (4). 
 
                 Note 3: In obtaining information fo r the purposes of this section, the Customs CEO must comply with 
Principles 1, 2 and 3 in section 14 of the Privacy Act 1988 . 
 
 (4) In this section: 
 
  action period , in relation to seized goods, means: 
               (a) if there is only one objector to the importation of the goods—the period 
within which the objector may bring an action for infringement of the 
registered trade mark in respect of goods under subsection 137(1); or 
              (b) if there is more than one objector to the importation of the goods—the period 
beginning on the earliest day on which an objector may bring an action for infringement of the registered trade mark in respect of the goods under subsection 137(1) and ending at the end of the last day on which an objector 
may bring such an action under subsection 137(1). 
 
Note: For objector  see section 6. 
 
137  Action for infringement of trade mark 
 
 (1) An objector may bring an action for infri ngement of a notified trade mark in respect 
of seized goods and give notice of it to the Customs CEO: 
              (a) if paragraph (b) does not apply—within the period ( notified period ) of 10 
working days specified in the notice give n to the objector in respect of the 
goods under section 134; or 
             (b) if:  IP/N/1/AUS/T/3 
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                           (i) the obj ector has, before the end of the notified period, applied in 
writing to the Customs CEO for an extension of the notified period; and 
                           (ii) the Cu stoms CEO, being satisfied that in the circumstances of the 
case it is fair and reasonable to do so, has extended the notified 
period for a number of working days not exceeding 10; 
   within that period as so extended by the Customs CEO.  
  
Note: For objector , notified trade mark  and seized goods  see section 6. 
 
 (2) The court hearing the action:                (a) may, on the application of a person, allow the person to be joined as a 
defendant to the action; and 
              (b) must allow the Customs CEO to appear and be heard.   (3) In addition to any relief that the court may grant apart from this section, the court 
may: 
 
              (a) at any time, if it thinks it just, order that the seized goods be released to their 
designated owner subject to the conditions (if any) that the court considers fit to impose; or 
  (b) order that the seized goods be forfeited to the Commonwealth.  
  
Note: For seized goods  and designated owner  see section 6. 
 
 (4) If: 
 
              (a) the court decides that the trade mark was not infringed by the importation of 
the goods; and 
              (b) the designated owner of  the goods, or any other de fendant, satisfies the court 
that he or she has suffered loss or  damage because the goods were seized; 
  the court may order the objector to pay to the designated owner or other defendant 
compensation, in the amount determined by the court, for any part of that loss or 
damage that is attributable to any period  beginning on or after the day on which the 
action was brought. 
  (5) If, after 3 weeks from the day on which th e action was brought, there is not in force at 
any time an order of the court preventing the goods from being released, the Customs 
CEO must release the goods to their designated owner. 
  (6) If the court orders that the goods be released, the Customs CEO must, subject to 
section 140, comply with the order. 
 
138  Action for infringement by authorised user 
 
  If an authorised user of a notified trade mark is an objector in relation to any seized 
goods, the authorised user may start an action for the infringement of the trade mark in respect of the goods within the required period without first ascertaining whether 
the registered owner is willing to bring the action. 
 
Note 1: For notified trade mark , objector  and seized goods  see section 6. IP/N/1/AUS/T/3 
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  N o t e  2 :  F o r  authorised user  see section 8. 
 
              Note 3: Under paragraph 26(b) an authorised user of a trade mark may bring an action for infringement 
of the trade mark only if the registered owner of  the trade mark refuses or neglects to do so. 
 
139  Forfeited goods—how to be disposed of 
   If: 
   (a) goods are forfeited to the Commonwealth under section 135; or               (b) the court orders  under section 137 that goods be forfeited to the 
Commonwealth; 
  the goods are to be disposed of as the Customs CEO directs. 
 
140  Power of Customs CEO to retain control of goods 
 
  In spite of this Part, the Customs CEO:  
  (a) must not release, or dispose of, any seized goods; or 
              (b) must not take any action in  relation to the goods to give effect to any order of 
a court under section 137; 
  if the Customs CEO is required or allowe d to retain control of the goods under any 
other law of the Commonwealth. 
 
  
Note: For seized goods  see section 6. 
 
141  Insufficient security 
 
  If security given under subsection 133(3) by the objector or objectors who gave 
notice under section 132 in respect of a trad e mark is not sufficient to meet the 
expenses incurred by the Commonwealth as a result of the action taken by the Customs CEO under this Part because of the notice, the amount of the difference 
between those expenses and the amount of security: 
 
              (a) is a debt due by the objector, or by the objectors jointly or each of them 
separately, to the Commonwealth; and 
              (b) may be recovered by an action taken in a court of competent jurisdiction.  
  
Note: For objector  see section 6. 
 
142  Commonwealth not liable for loss etc. suffered because of seizure 
   The Commonwealth is not liable for an y loss or damage suffered by a person: 
   (a) because the Customs CEO seized, or failed to seize, goods under this Part; or   (b) because of the release of any seized goods.  143  Power to require information 
 
 (1) If:    (a) goods that may be seized under this Part are imported into Australia; and  IP/N/1/AUS/T/3 
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                (b) the Customs CEO, rely ing on information received, is satisfied on reasonable 
grounds that the use of a trade mark applied to or in relation to those goods is fraudulent; 
  the Customs CEO may ask the importer of the goods or an agent of the importer: 
  (c) to produce any document in his or her possession relating to the goods; and 
  (d) to give information about: 
                            (i) th e name and address of the pers on by whom the goods were 
consigned to Australia; and 
                          (ii) the name and address of the person in Australia to whom the goods 
were consigned. 
 
  
Note 1: For applied to in relation to goods  see section 9. 
 
                 Note 2: In obtaining information for the purposes of this subsecti on, the Customs CEO must comply 
with Principles 1, 2 and 3 in section 14 of the Privacy Act 1988 . 
 
 (2) If the importer or his or her agent intenti onally or recklessly fails to comply with the 
request within the prescribed period, the im porter or agent is guilty of an offence 
punishable, on conviction, by imprisonment for a period not exceeding 6 months. 
 
                 Note: The Reader’s Guide gi ves information about penaltie s (see the paragraphs under the 
subheading Crimes Act 1914 ). 
 
144  Modification in relation to Norfolk Island etc. 
   The regulations may provide for the modification or adaptation of this Part in its 
application to: 
   (a) Norfolk Island; or   (b) Christmas Island; or   (c) Cocos (Keeling) Islands. 
 
Part 14—Offences 
 145  Falsifying etc. a registered trade mark 
  (1) A person is guilty of an offence if, inten tionally or recklessly, the person falsifies or 
unlawfully removes a trade mark that: 
               (a) has been applied to any goods that are being, or are to be, dealt with or 
provided in the course of trade; or 
              (b) has been applied in relati on to any goods or services that are being, or are to 
be, dealt with or provided in the course of trade; 
  knowing that the trade mark is registered or reckless of whether or not the trade mark 
is registered. 
 
Note 1: For applied to goods  and applied in relation to goods or services  see section 9. 
 
Note 2: For the penalty for this offence see section 149. 
 
 (2) A person falsifies a registered trade mark if the person:   (a) alters or defaces it; or   (b) makes any addition to it; or IP/N/1/AUS/T/3 
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    (c) partly removes, erases or obliterates it; 
  without the permission of the registered owner, or an authorised user, of the trade 
mark and without being required or authorised to do so by this Act, a direction of the 
Registrar or an order of a court. 
 
Note 1: For registered trade mark  and registered owner  see section 6. 
 
Note 2: For authorised user  see section 8. 
 
 (3) A person unlawfully removes a registered trade mark if the person wholly removes, 
erases or obliterates it: 
               (a) without the permission of the registered owner, or an authorised user, of the 
trade mark; and 
              (b) without being required or authorised to do so by this Act, a direction of the 
Registrar or an order of a court. 
 
Note 1: For registered trade mark  and registered owner  see section 6. 
 
Note 2: For authorised user  see section 8. 
 
146  Falsely applying a registered trade mark  
 (1) A person is guilty of an offence if, intentionally or recklessly, the person: 
               (a) falsely applies a registered trade mark to goods that are being, or are to be, 
dealt with or provided in the course of trade; or 
              (b) falsely applies a registered trade mark in relation to goods or services that are 
being, or are to be, dealt with or provided in the course of trade; 
  knowing that the trade mark is registered or reckless of whether or not the trade mark 
is registered. 
 
Note 1: For registered trade mark  see section 6. 
 
Note 2: For the penalty for this offence see section 149. 
 
 (2) A person falsely applies a registered trade mark to goods, or in relation to goods or 
services if the person applies the trade mark or  a sign substantially identical with it to 
the goods or in relation to the goods or services: 
               (a) without the permission of the registered owner, or of an authorised user, of 
the trade mark; and 
              (b) without being required or authorised to do so by this Act, a direction of the 
Registrar or an order of a court. 
 
Note 1: For registered trade mark  and registered owner  see section 6. 
 
Note 2: For authorised user  see section 8. 
 
147  Manufacture and possession of die et c. for use in commission of offence 
 
 (1) A person is guilty of an offence if the person makes a die, block, machine or 
instrument: 
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                (a) knowing that it is likely to be used for, or in the course of, committing an 
offence against section 145 or 146; or 
              (b) reckless of whether or not it is likely to be used for, or in the course of, 
committing an offence against section 145 or 146. 
 
 (2) A person is guilty of an offence if the person draws, or programs a computer or other 
device to draw, a registered trade mark or part of a registered trade mark: 
               (a) knowing that the trade mark or part of the trade mark is likely to be used for, 
or in the course of, committing an o ffence against section 145 or 146; or 
              (b) reckless of whether or not the trade mark or part of a trade mark is likely to 
be used for, or in the course of, co mmitting an offence against section 145 
or 146. 
  (3) A person is guilty of an offence if in tentionally the person has in his or her 
possession, or disposes of: 
   (a) a die, block, machine or instrument; or               (b) a computer, or other device, programmed to draw a registered trade mark or 
part of a registered trade mark; or 
              (c) a representation of a registered trade mark or of part of a registered trade 
mark; 
  knowing that, or reckless of whether or not, the die, block, machine, instrument, 
computer, device or representation is likely to be used for, or in the course of, 
committing an offence against section 145 or 146. 
 
Note 1: For registered trade mark  see section 6. 
 
Note 2: For the penalty for an offenc e under this section see section 149. 
 
148  Selling etc. goods with false marks 
   A person is guilty of an offence if the person intentionally: 
   (a) sells goods; or   (b) exposes goods for sale; or   (c) has goods in his or her possession for the purpose of trade or manufacture; or 
  (d) imports goods into Australia for the purpose of trade or manufacture; 
  knowing that, or reckless of whether or not:   (e) a falsified registered trade mark is applied to them or in relation to them; or 
  (f) a registered trade mark has been unlawfully removed from them; or   (g) a registered trade mark is falsely applied to them or in relation to them. 
 
  
Note 1: For registered trade mark  see section 6. 
 
  N o t e  2 :  F o r  applied to or in relation to goods  see section 9. 
 
  Note 3: For the penalty for this offence see section 149. 
 
149  Penalty for offence under section 145, 146, 147 or 148 
 
  A person guilty of an offence under secti on 145, 146, 147 or 14 8 is punishable on 
conviction by: 
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    (a) a fine not exceeding 500 penalty units; or 
  (b) imprisonment for a period not exceeding 2 years; or   (c) by both a fine and a term of imprisonment.  
              
Note: The Reader’s Guide gives information about penalties (see the paragraphs under the 
subheading Crimes Act 1914 .) 
 
150  Aiding and abetting offences 
 
 (1) If a person:    (a) aids, abets, counsels or procures; or 
              (b) is in any way, directly or indirectly, knowingly concerned in, or party to; 
  the doing of an act outside Australia which, if it were done in Australia, would be an 
offence against this Act, the person is ta ken to have committed that offence and is 
punishable accordingly. 
 
 (2) Subsection (1) does not affect the operation of section 5 of the Crimes Act 1914 . 
 
151  False representations regarding trade marks 
 
 (1) A person must not intentionally or reckl essly make a representation to the effect that 
a trade mark is a registered trade mark unless the person knows, or has reasonable 
grounds to believe, that the trade mark is registered in Australia. 
   Penalty: 60 penalty units.   (2) A person must not intentionally or reckl essly make a representation to the effect that 
a part of a registered trade mark is registered as a trade mark unless the person knows, 
or has reasonable grounds to believe, that that part is registered as a trade mark in Australia. 
   Penalty: 60 penalty units.  
 (3) A person must not intentionally or reckl essly make a representation to the effect that 
a trade mark is registered in respect of goods or services unless the person knows, or has reasonable grounds to believe, that the tr ade mark is registered in Australia in 
respect of those goods or services. 
 
  Penalty: 60 penalty units. 
  (4) A person must not intentionally or reckl essly make a representation to the effect that 
the registration of a trade mark gives ex clusive rights to use the trade mark in 
circumstances in which, having regard to  conditions or limitations entered in the 
Register, the registration does not give those rights unless the person has reasonable 
grounds to believe that the registration does give those exclusive rights. 
   Penalty: 60 penalty units.  
  N o t e  1 :  F o r  registered trade mark  and limitations  see section 6. 
 
                 Note 2: The Reader’s Guide gives information about penaltie s (see the paragraphs under the 
subheading Crimes Act 1914 ). 
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   (5) For the purposes of this section, the use in Australia in relation to a trade mark: 
   (a) of the word registered ; or 
              (b) of any other word or any symbol referring (either expressly or by 
implication) to registration; 
  is taken to be a representation that the trad e mark is registered in Australia in respect 
of the goods or services in relation to which it is used except if the trade mark is 
registered in a country other than Australia in respect of those goods or services and: 
              (c) the word or symbol by it self indicates that the trade ma rk is registered in that 
other country or in a country outside Australia; or 
              (d) the word or symbol is used, together with other words or symbols of the same 
or a bigger size, to indicate that the trade mark is registered in that other country or in a country outside Australia; or 
              (e) the word or symbol is used in relation to goods that are to be exported to that 
country. 
 
Note: For use of a trade mark in re lation to goods or services  see subsections 7(4) and (5). 
 
152  False entries in Register etc. 
 
A person must not intentionally: 
   (a) make a false entry in the Register; or   (b) cause a false entry to be made in the Register; or               (c) tender in evidence a document that falsely purports to be a copy of, or an 
extract from, an entry in the Register or a document in the Trade Marks 
Office. 
   Penalty: Imprisonment for 2 years.  
              
Note: The Reader’s Guide gives information about penalties (see the paragraphs under the 
subheading Crimes Act 1914 ). 
 
153  Disobeying summons etc. 
 
 (1) A person:  
  (a) who has been summonsed to appear  as a witness before the Registrar; and 
  (b) to whom a reasonable sum has been tendered in payment for expenses;   must not, without reasonable excuse, fail  to appear in answer to the summons. 
   Penalty: 10 penalty units.  
 (2) A person: 
              (a) who has been required by  the Registrar to produce a document or any other 
thing; and 
  (b) to whom a reasonable sum has been tendered in payment for expenses; 
  must not, without reasonable excuse, fail to produce the document or thing. 
   Penalty: 10 penalty units.   (3) An offence under this section is  an offence of strict liability. IP/N/1/AUS/T/3 
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             Note 1: The Reader’s Guide give s information about penalties (see the paragraphs under the 
subheading Crimes Act 1914 ). 
 
              Note 2: An offence is one of strict  liability if a person may be f ound guilty of the offence just for 
having done, or not having done, so mething regardless of any intention or recklessness on his 
or her part. 
 
154  Refusing to give evidence etc. 
 
 (1) A person appearing before the Registrar as a witness must not, without reasonable 
excuse: 
   (a) refuse to be sworn or to make an affirmation; or 
  (b) refuse to answer questions that he or she is lawfully required to answer; or 
              (c) fail to produce any documen t or thing that he or she is lawfully required to 
produce. 
   Penalty: 10 penalty units. 
 
 (2) An offence under this section is  an offence of strict liability. 
 
 
                Note 1: The Reader’s Guide gives information about penaltie s (see the paragraphs under the 
subheading Crimes Act 1914 ). 
 
  Note 2: For what is an offence of strict  liability see note 2 at the end of section 153. 
 
156  Unregistered persons  
 
 (1) A person must not describe himself or herself, or hold himself or herself out, or 
permit himself or herself to be described or  held out, as a trade marks attorney unless 
the person is a registered trade marks attorney. 
   Penalty: 30 penalty units. 
 
Note 1: The  Reader’s Guide gives information about penalties (see the paragraphs under the 
subheading  Crimes Act 1914 ). 
 
Note 2: For  registered trade marks attorney , see section 6. 
 
 (2) A person must not describe himself or herself, or hold himself or herself out, or 
permit himself or herself to be described or held out, as a trade marks agent unless the person is a registered trade marks attorney or  a patent attorney or a lawyer or a person 
referred to in paragraph 135(1)(h) or (i) of the repealed Act. 
   Penalty: 30 penalty units.  
Note 1: The Reader’s Guide gi ves information about penaltie s (see the paragraphs under the 
subheading Crimes Act 1914 ). 
 
Note 2: For lawyer , registered trade marks attorney  and patent attorney  see section 6. 
 
                 Note 4: Paragraphs 135(1 )(h) and (i) of the repealed Act provided as follows:  
                                                “(h) a person who, within 1 year after the commencement of this Act, has satisf ied the 
Registrar that, for a continuous period of 2 years immediately before 1 January 1955, 
he was practising as a trade marks agent in Australia; or  
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     (i) a person who:  
 
                                                                (i) within 1 year after the commencement of this Act, has satis fied the 
Registrar that, for a continuous peri od of 2 years immediately before 1 
January 1955, he was employed by a regi stered patent attorney in Australia 
and his duties related solely or princi pally to the lodging, prosecuting and 
opposing of applications for the registration of trade marks; and  
                                                                (ii) unless the Registrar otherwise directs, has, within 1 year  after the 
commencement of this Act or within such further time as the Registrar 
allows, passed the prescribed examination.”. 
                                               Subsection 135(2) of the repealed Act provided as follows:  
 
                                              “(2) For the purposes of paragraph (h) of the last preceding subsection, a person  shall not 
be deemed to have practised as a trade marks agent unless the only or the principal 
business carried on by him was the busin ess of lodging, prosecuting and opposing, 
for gain, applications for the registration of trade marks in Australia on behalf of 
applicants or opponents.”. 
 
 (3) If: 
   (a) a body corporate is found guilty of an offence against this section; and               (b) a director, manager, secretary or other officer of the body corporate has 
knowingly been a party to the offence; 
  the director, manager, secretary or officer is guilty of an offence punishable, on 
conviction, by a fine not exceeding 30 penalty units. 
  (4) In spite of section 15B of the Crimes Act 1914 , a prosecution for an offence against 
this section may be started at any time within 5 years after the offence was 
committed. 
  (6) An offence under this section is  an offence of strict liability. 
 
Note: For what is an offence of strict li ability see note 2 at the end of section 153. 
 
157  False representation about Trade Marks Office 
 
 (1) A person: 
 
  (a) must not:                             (i) place, or allow to be placed, on the buildin g in which his or her office 
is situated; or 
   (ii) use when advertising his or her office or business; or 
   (iii) place on a document, as a description of his or her office or business; 
  the words “Trade Marks Office” or “Office for registering trade marks”, or 
words of similar import (whether alone or together with other words); or 
               (b) must not use in any ot her way, in connection with his or her business, words 
that would reasonably lead other persons to  believe that his or her office is, or 
is officially connected with, the Trade Marks Office. 
   Penalty: 30 penalty units.   (2) An offence under this section is  an offence of strict liability. 
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  Note 1: The Reader’s Guide gi ves information about penaltie s (see the paragraphs under the 
subheading Crimes Act 1914 ). 
 
Note 2: For what is an offence of strict liability see note 2 at the end of section 153. 
 
158  Trade marks officer not to prepare documents etc. 
 
 (1) A trade marks officer must not: 
 
  (a) prepare, or help prepare, a document to be filed under this Act; or 
              (b) search th e records of the Trade Marks Office; 
  unless required or authorised to do so by this Act, or any other Act (including the 
regulations under that Act), a written direction of the Registrar or an order of a court. 
 
  Penalty: 10 penalty units. 
  (2) An offence under this section is  an offence of strict liability. 
 
Note 1: For trade marks officer  see section 6. 
 
Note 2: The Reader’s Guide gi ves information about penaltie s (see the paragraphs under the 
subheading Crimes Act 1914 ). 
 
Note 3: For what is an offence of strict liability see note 2 at the end of section 153. 
 
159  Forfeiture orders under the Proceeds of Crime Act 1987 
 
  If a person other than the Director of P ublic Prosecutions has instituted proceedings 
for the trial of another person in respect of  an indictable offence against this Part, 
Division 2 of Part II of the  Proceeds of Crime Act 1987  applies as if a reference in 
that Division to the Director of Public Pr osecutions includes a reference to the person 
who has instituted the proceedings. 
 
160  Conduct of directors, servants and agents 
 
 (1) This section applies for the purposes of a prosecution for: 
 
  (a) an offence under this Act; or               (b) an offence under section 6, 7 or 7A or subsection 86(1) of the Crimes Act 
1914 that relates to this Act. 
 
 (2) If it is necessary to prove the state of mind of a body corporate in relation to 
particular conduct, it is enough to show: 
               (a) that the conduct was engaged in by a director, servant or agent of the body 
corporate within the scope of his or he r actual or apparent authority; and 
  (b) that the director, servant or agent had the state of mind. 
  (3) Any conduct engaged in on behalf of a body corporate by a director, servant or agent 
of the body corporate within the scope of his or her actual or apparent authority is taken to have been engaged in also by th e body corporate, unless it proves that it took 
reasonable precautions and exercised due diligence to avoid the conduct. 
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   (4) If it is necessary to prove the state of mind of an individual in relation to particular 
conduct, it is enough to show: 
               (a) that the conduct was enga ged in by a servant or agent of the individual within 
the scope of his or her actual or apparent authority; and 
  (b) that the servant or agent had the state of mind. 
  (5) Any conduct engaged in on behalf of an individual by a servant or agent of the 
individual within the scope of his or her actua l or apparent authority is taken to have 
been engaged in also by the individual, unl ess the individual establishes that he or she 
took reasonable precautions and exercised due diligence to avoid the conduct. 
  (6) If:    (a) an individual is convicted of an offence under this Act; and 
              (b) the individual would not ha ve been convicted of the offence if subsections (4) 
and (5) had not been enacted; 
   the individual is not liable to be punished by imprisonment for that offence.   (7) In this section:  
  director , in relation to a body that: 
               (a) is incorporated for a public purpose by a law of the Commonwealth, of a 
State or of a Territory; and 
  (b) is constituted by one or more members; 
  means the member, or any of the members, constituting the body. 
 
  engage in conduct  includes fail or refuse to engage in conduct. 
 
  state of mind , in relation to a person, includes: 
 
  (a) the person’s knowledge, intenti on, opinion, belief or purpose; and 
  (b) the person’s reasons for the in tention, opinion, belief or purpose. 
 
Part 15—Collective trade marks 
 
161  Object of Part 
 
  This Part:    (a) defines a collective trade mark; and 
              (b) provides to what extent , and subject to what modifications or additions, the 
provisions of this Act relating to trade marks apply to collective trade marks. 
 
162  What is a collective trade mark? 
   A  collective trade mark  is a sign used, or intended to be used, in relation to goods or 
services dealt with or provided in the course of trade by members of an association to 
distinguish those goods or services from goods or services so dealt with or provided by persons who are not members of the association. 
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Note: For association  see section 6. 
 
163  Application of Act 
 
 (1) Subject to this Part, the provisions of this Act relating to tr ade marks (other than 
Part 10—Assignment and Transmission of Trade Marks) apply to collective trade marks and so apply as if: 
 
              (a) a reference to a trade mark included a reference to a collective trade mark; 
and 
              (b) a reference to a person doing something for the registration of a trade mark 
included a reference to an association do ing that thing for the registration of 
the collective trade mark; and 
              (c) a reference to a trade mark registered by a person included a reference to a 
collective trade mark registered by an association. 
  (2) For the purposes of this Act:                (a) the use of a collective tr ade mark by a member of the association that is the 
applicant for the registration of the coll ective trade mark is taken to be a use 
of the collective trade mark by the applicant; and 
               (b) the use of a registered  collective trade mark by a member of the association 
that is the registered owner of the collect ive trade mark is taken to be a use of 
the collective trade mark by the registered owner. 
 
 (3) Section 41 (trade mark not distinguishing applicant’s goods or services) applies in 
relation to a collective trade mark as if a refe rence to the applicant were a reference to 
the members of the association that applie d for registration of the collective trade 
mark. 
 164  Application for registration 
 
  An application for the registration of a collective trade mark must be made by the 
association to which the mark belongs. 
 165  Limitation on rights given by registered collective trade mark 
 
  A member of an association in whose name  a collective trade mark is registered does 
not have the right to prevent another member of the association from using the collective trade mark in accordance with  the rules of the association (if any). 
 166  Assignment etc. of collective trade mark 
 
  A collective trade mark may not be assigned or transmitted.  
167  Infringement of collective trade mark 
 
  In an action by an association in whose name a collective trade mark is registered 
seeking relief for infringement of the collective trade mark, the association may take into account, in claiming damages, any damage  or loss of profits sustained or incurred 
by the members of the association as a result of the infringement. 
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  Part 16—Certification trade marks 
 168  Object of Part  
  This Part:  
  (a) defines a certification trade mark; and               (b) provides to what extent , and subject to what modifications or additions, the 
provisions of this Act relating to trade marks apply to certification trade marks; and 
               (c) outlines the role of the Commission in the regulation of certification trade 
marks. 
 
169  What is a certification trade mark? 
   A  certification trade mark  is a sign used, or intended to be used, to distinguish goods 
or services: 
   (a) dealt with or provided in the course of trade; and               (b) certified by a person ( owner of the certification trade mark ), or by another 
person approved by that person, in rela tion to quality, accuracy or some other 
characteristic, including (in the case of goods) origin, material or mode of 
manufacture; 
  from other goods or services dealt with or provided in the course of trade but not so 
certified. 
 
              
Note: The goods or services certified may be t hose of any person, including the owner of the 
certification trade mark or any person approved by the owner for the purpose of certifying 
goods or services. 
 
170  Application of Act 
   Subject to this Part, the provisions of th is Act relating to trade marks (other than 
sections 8 and 26, paragraph 27(1)(b), sec tions 33, 34 and 41, paragraph 88(2)(d), 
sections 121 and 127, Part 9—Removal of tr ade mark from Register for non-use and 
Part 17—Defensive Trade Marks) apply to cer tification trade marks and so apply as if 
a reference to a trade mark included a re ference to a certification trade mark. 
 
171  Rights given by registration of a certification trade mark 
 
  Section 20 applies in relation to a certification trade mark as if subsection (1) were 
omitted and the following sub section were substituted: 
 
              “(1) If a certification trade mark is registered, the registered owner has, subject to 
this Part, the exclusive rights to use, and to allow other persons to use, the 
certification trade mark, in relation to the goods and/or services in respect of which the certification trade mark is registered. The registered owner may, however, use the certification trade ma rk only in accordance with the rules 
governing the use of the certification trade mark. 
 
Note: For the rules governing the use of the certification trade mark see section 173.”. 
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  172  Rights of persons allowed to use certification trade mark 
 
  When the registered owner of a registered certification trade mark allows another 
person ( approved user ) to use the certification trade mark in relation to goods or 
services in respect of which it is registered, the approved user has a right to use the 
certification trade mark in relation to th ose goods or services in accordance with the 
rules governing the use of the certification trade mark. 
 
Note 1: For registered owner  see section 6. 
 
Note 2: For the rules governing the use of the certification trade mark see section 173. 
 
173  Rules governing the use of certification trade marks 
 
 (1) A person who has filed an application for the registration of a certification trade mark 
must, in accordance with the regulations, file a copy of the rules governing the use of 
the certification trade mark. The copy of the rules is to be filed in addition to any 
document prescribed under subsection 27(2). 
 
  Note: For file see section 6. 
 
 (2) The rules are to include provisions regarding:                (a) the persons ( approved certifiers ) who may be approved for the purpose of 
certifying goods and/or services; and 
  (b) the cases in which goods or services are to be certified; and 
              (c) the conditions under whic h an approved user is to be allowed to use the 
certification trade mark in relation to goods or services; and 
              (d) the use of the certification trade mark by the owner (if he or she intends to 
use it) and any approved user; and 
  (e) the settlement of any dispute arising from a refusal: 
   (i) to certify goods or services; or    (ii) to allow the use of the certification trade mark;   and any other provision that the Commiss ion requires or permits to be inserted. 
 
  
Note: For approved user  see section 172. 
 
174  Registrar to reject application or send it to Commission 
  (1) If, after examining the application, the Registrar is satisfied that: 
   (a) the application has been ma de in accordance with this Act; and 
              (b) there are no grounds for rejecting it;   the Registrar must send to the Commission a copy of the application and of any 
prescribed document. 
  (2) If the Registrar is not satisfied as set out in paragraph (1)(b), he or she must:    (a) reject the application; and   (b) give notice of the decision to the applicant. 
 
 (3) The Registrar may not reject the application without giving the applicant an 
opportunity of being heard.  IP/N/1/AUS/T/3 
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175  Certificate by Commission 
 
 (1) The Commission must consider the a pplication and any documents received under 
section 174 in accordance with the regulations. 
 (2) If the Commission is satisfied that: 
               (a) the applicant or the approved certifiers are competent to certify the goods 
and/or services in respect of which the certification trade mark is to be registered; and 
  (b) the rules referred to in section 173: 
    (i) would not be to the detriment of the public; and                            (ii) are satisfactory having regard to the criteria prescribed for the 
purposes of this paragraph; 
 
  the Commission must give a certificate to that effect and send a copy to the Registrar. 
The Commission must also send a certified copy of the rules to the Registrar. 
 
Note 1: For applicant  see section 6. 
 
Note 2: For approved certifiers  see paragraph 173(2)(a). 
 
 (3) The Commission may require the applicant to make amendments or modifications to 
the rules as the Commission considers necessary. 
 
 (4) If the Commission is not satisfied as set out in subsection (2): 
              (a) the Commission must notify th e applicant and the Registrar, in writing, of its 
decision not to give a certificate; and 
             (b) the Registrar must advertise the matter in the Official Journal in accordance 
with the regulations. 
 
 (5) An application may be made to the Admi nistrative Appeals Tribunal for the review of 
a decision of the Commission refusing to give a certificate. 
 
176  Acceptance of application 
 
 (1) If the Commission has given a certificat e under subsection 175(2), the Registrar must 
accept the application. Otherwise, the Re gistrar must reject the application. 
  (2) The Registrar may accept the application subject to conditions or limitations. 
 
  N o t e :  F o r  limitations  see section 6. 
 
 (3) The Registrar must:    (a) give to the applicant notice in writing of his or her decision; and   (b) advertise the decision in the Official Journal . 
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  177  Additional ground for rejecting an application or opposing registration—certification trade 
mark not distinguishing certified goods or services 
 
 (1) In addition to a ny other ground on which: 
 
              (a) an application for the registration of a certification trade mark may be 
rejected; or 
  (b) the registration of a certification trade mark may be opposed;   the application must be rejected or the registration may be opposed if the trade mark 
is not capable of distinguishing goods or services certified by the applicant or an 
approved certifier from goods or services not so certified. 
 
Note 1: For applicant  see section 6. 
 
Note 2: For approved certifier  see paragraph 173(2)(a). 
 
Note 3: Division 2 of Part 4 sets out the grounds fo r rejecting an applicati on, but section 41 does not 
apply to certification trade marks (see section 170). 
 
 (2) In deciding whether or not the certificati on trade mark is capable of so distinguishing 
goods or services certified by the applicant or an approved certifier, the Registrar 
must take into account: 
               (a) the extent to which the certification trade mark is inherently adapted so to 
distinguish those goods or services; or 
              (b) the extent to which, because of its use or of any other circumstances, the 
certification trade mark has become adapted so to distinguish those goods or 
services. 
 
178  Variation of rules 
 
 (1) Subject to subsection (2), the rules gove rning the use of a registered certification 
trade mark may be varied in accordance with the regulations. 
  (2) The rules may not be varied without the approval of the Commission.   (3) Before deciding to approve a variation,  the Commission must be satisfied that the 
rules as varied: 
   (a) would not be to the detriment of the public; and               (b) are satisfactory having regard to the criteria prescribed for the purposes of 
paragraph 175(2)(b). 
 
 (4) The Commission must notify the registered owner of the certification trade mark and 
the Registrar, in writing, of its decision to approve or not to approve a variation of the rules and the Registrar must cause a notice of the decision and (if applicable) of any variation of the rules to be advertised in the Official Journal in accordance with the 
regulations. 
 
  
Note: For registered owner  see section 6. 
 
 (5) An application may be made to the Admi nistrative Appeals Tribunal for the review of 
a decision of the Commission to approve or not to approve a variation of the rules. 
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   (6) If the Commission approves a varia tion of the rules, the Commission: 
               (a) must certify in writing that it is satisfied of the matters referred to in 
subsection (3) and send a copy of the certificate to the Registrar; and 
  (b) must also send a certified copy of  the rules as varied to the Registrar. 
 
179  Rules to be available for inspection 
 
  Rules governing the use of a registered cer tification trade mark must be available for 
inspection at the same time and in the same manner as the Register. 
 
  
Note: For provisions regarding the inspect ion of the Register see section 209. 
 
180  Assignment of registered certification trade mark 
 
 (1) A registered certification trade mark may be assigned only with the consent of the 
Commission. 
  (2) An application to the Commission for its  consent to the assignment of a registered 
certification trade mark must be in accordance with the regulations. 
  (3) In deciding whether or not to give its consent, the Commission must have regard to 
the matters provided for under the regulations. 
  (4) An application may be made to the Admi nistrative Appeals Tribunal for the review of 
a decision of the Commission refusing to give its consent. 
 
181  Rectification of the Register by order of court 
 
 (1) Section 88 applies in relation to a certif ication trade mark as if “or under section 177” 
was added at the end of paragraph (2)(a). 
 
              
Note: Paragraph 88(2)(a) provides that  an application to a prescribed court for the rectification of the 
Register may be made on “any of the grounds on which the registration of the trade mark could 
have been opposed under Division 2 of Part 5” . Section 177 provides an additional ground on 
which the registration of a certif ication trade mark may be opposed. 
 
 (2) In addition to its powers under Division 2 of Part 8 (as affected by subsection (1)) in 
relation to certification trade marks, a prescribed court may, on the application of a 
person aggrieved, order that the Register be  rectified by cancelling the registration of 
a certification trade mark, or removing or amending an entry in the Register relating 
to the certification trade mark, on the ground that: 
              (a) the registered owner or an  approved certifier is no longer competent to certify 
any of the goods and/or services in respect  of which the mark is registered; or 
             (b) the rules governing the use of the certification trade mark are detrimental to 
the public; or 
             (c) the registered owner or an approved user has failed to comply with a 
provision of the rules governing the use of the certification trade mark. 
 
Note 1: For prescribed court  see section 190. 
 
Note 2: For approved certifier  see paragraph 173(2)(a). 
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  Note 3: For approved user  see section 172. 
 
 (3) Notice of an application to the prescribed court must be given to the Registrar and to 
the Commission. 
  (4) Except for cases in which the court direct s the Registrar to appear, the Registrar may 
appear before the court and be heard at his or her discretion. 
 
 (5) Except for cases in which the court dir ects the Commission to appear, a delegate of 
the Commission may appear before the court and be heard at his or her discretion. 
  (6) A copy of any order made by the co urt under this section must be given to the 
Registrar and the Registrar must comply with the order. 
 182  Variation of rules by order of court 
 
 (1) A prescribed court may, on the applicati on of a person aggrieved,  make such orders 
as it thinks fit for varying the rules governing the use of a certification trade mark. 
 
  
Note: For prescribed court  see section 190. 
 
 (2) Notice of an application to the prescribed court must be given to the Commission.  
 (3) Except for cases in which the court dir ects the Commission to appear, a delegate of 
the Commission may appear before the court and be heard at his or her discretion. 
  (4) A copy of any order made by the co urt under this section must be given to the 
Commission. 
 
 (5) If the court orders that the rules are to be varied, the registered owner of the 
certification trade mark must give to the Regi strar a copy of the rules as varied that is 
certified by the Commission to be a true copy. 
 
183  Delegation of Commission’s powers and functions 
 
  The Commission may, by resolution, delega te all or any of its powers and functions 
under this Part to a member of the Commission. 
 
              
Note: See section 34AB of the Acts Interpretation Act 1901 about the effect of  this section. 
 
Part 17—Defensive trade marks 
 184  Object of Part 
 
  This Part:                (a) provides for the registra tion of certain trade marks as defensive trade marks; 
and 
              (b) provides to what extent , and subject to what modifications or additions, the 
provisions of this Act relating to trade marks apply to defensive trade marks. 
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  185  Defensive trade marks 
 
 (1) If, because of the extent to which a regist ered trade mark has been used in relation to 
all or any of the goods or services in respect of which it is registered, it is likely that 
its use in relation to other goods or services will be taken to indicate that there is a 
connection between those other goods or ser vices and the registered owner of the 
trade mark, the trade mark may, on the a pplication of the registered owner, be 
registered as a defensive trade mark  in respect of any or all of those other goods or 
services. 
 
Note: For registered trade mark  and registered owner  see section 6. 
 
 (2) A trade mark may be registered as a defe nsive trade mark in respect of particular 
goods or services even if the registered owne r does not use or intend to use the trade 
mark in relation to those goods or services. 
  (3) A trade mark may be registered as a defe nsive trade mark in respect of particular 
goods or services even if it is already registered otherwise than as a defensive trade mark in the name of the applicant in respect of those goods or services. 
 
 (4) A trade mark that is registered as a defe nsive trade mark in respect of particular goods 
or services may be subsequently registered otherwise than as a defensive trade mark in the name of the registered owner in respect of the same goods or services. 
 
186  Application of Act 
 
  Subject to this Part, the provisions of  this Act (other than subsection 20(1), 
paragraph 27(1)(b), sections 41 and 59, pa ragraph 88(2)(d), sections 121 and 127, 
Part 9—Removal of trade mark from Regist er for non-use and Part 16—Certification 
Trade Marks) apply to defensive trade marks and so apply as if a reference to a trade 
mark included a reference to a defensive trade mark. 
 
187  Additional grounds for rejecting applicatio n for registration or opposing registration 
 
  In addition to any other ground on which: 
 
              (a) an application for the re gistration of a trade mark as a defensive trade mark 
may be rejected; or 
              (b) the registration of a trade mark as a defensive trade mark may be opposed; 
  the application must be rejected or the registration may be opposed:               (c) if the trade mark is not registered as a trade mark in the name of the 
applicant; or 
              (d) in the case of a register ed trade mark—if it is not likely that the use of the 
trade mark in relation to the goods or  services in respect of which its 
registration as a defensive trade mark is  sought will be taken to indicate that 
there is a connection between those goods or services and the registered 
owner. 
 
              
Note: Division 2 of Part 4 sets out the grounds fo r rejecting an applicati on but section 41 does not 
apply to defensive trade marks (see section 186). Division 2 of Part 5 sets out the grounds for 
opposing registration. 
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  188  Amendment or cancellation of registration by order of court 
 
  Section 88 applies in relation to a defensive trade mark as if “or under section 187” 
were added at the end of paragraph (2)(a). 
 
                          
Note: Paragraph 88(2)(a) provides that  an application to a prescribed court for the rectification of the 
Register may be made on “any of the grounds on which the registration of the trade mark could 
have been opposed under Division 2 of Part 5”. Section 187 provides additional grounds on 
which the registration of a trade mark as a defensive trade mark may be opposed. 
 
189  Cancellation of registration by Registrar 
 
  The Registrar may cancel the registration of a trade mark as a defensive trade mark if 
the trade mark is not otherwise registered in  the name of the registered owner of the 
defensive trade mark. 
 
Part 18—Jurisdiction and powers of courts 
 190  Prescribed courts 
 
  Each of the following courts is a pr escribed court for the purposes of this Act: 
   (a) the Federal Court;   (b) the Supreme Court of a State;   (c) the Supreme Court of the Australian Capital Territory; 
  (d) the Supreme Court of the Northern Territory; 
  (e) the Supreme Court of Norfolk Island.  
191  Jurisdiction of the Federal Court 
  (1) The Federal Court has jurisdiction with respect to matters arising under this Act. 
  (2) The jurisdiction of the Federal Court to hear and determine appeals against decisions, 
directions or orders of the Registrar is ex clusive of the jurisdiction of any other court 
except the jurisdiction of the High Court under section 75 of the Constitution. 
 
 (3) A prosecution for an offence against this Act may not be started in the Federal Court. 
 
192  Jurisdiction of other prescribed courts 
 
 (1) Each prescribed court (other than the Fe deral Court) has jurisdiction with respect to 
matters in respect of which an action or pro ceeding may, under this Act, be started in 
a prescribed court. 
 
  
Note: For prescribed court  see section 190. 
 
 (2) The jurisdiction conferred by subsection (1) on the Supreme Court of a Territory is 
conferred to the extent that the Constitution permits in the case of: 
   (a) an action for the infringement of a trade mark; or 
  (b) an action under section 129; or 
              (c) a matter arising under th is Act that may be heard and determined in the 
course of such an action.  IP/N/1/AUS/T/3 
 Page 89 
 
 
   
 (3) In any other case, the jurisdiction is c onferred only in rela tion to an action or 
proceeding brought by a natural person who is resident in the Territory, or a corporation that has its principal place of business in the Territory, when the action or 
proceeding is started. 
 
193  Exercise of jurisdiction 
 
  The jurisdiction of a prescribed court under section 191 or 192 is to be exercised by a 
single judge. 
 
  
Note: For prescribed court  see section 190. 
 
 194  Transfer of proceedings 
 
 (1) A prescribed court in which an action or  proceeding under this Act has been started 
may, on the application of a party made at any stage, by an order, transfer the action or proceeding to another prescribed court having jurisdiction to hear and determine 
the action or proceeding. 
 
  
Note: For prescribed court  see section 190. 
 
 (2) When a court transfers an ac tion or proceeding to another court: 
               (a) all relevant documents of record filed in the transferring court must be sent to 
the other court by the Registrar or other appropriate officer of the transferring 
court; and 
              (b) the action or proceeding must continue in the other court as if: 
    (i) it had been started there; and                            (ii) all steps taken in the transferring court had been taken in the other 
court. 
195  Appeals 
 
 (1) An appeal lies to the Federal Court against a judgment or order of:    (a) another prescribed court exerci sing jurisdiction under this Act; or 
  (b) any other court in an action under Part 12. 
 
  
Note: For prescribed court  see section 190. 
 
 (2) Except with the leave of the Federal Court,  an appeal does not lie to the Full Court of 
the Federal Court against a judgment or orde r of a single judge of the Federal Court 
in the exercise of its jurisdiction to hear  and determine appeals from decisions or 
directions of the Registrar. 
  (3) With the special leave of the High Court,  an appeal lies to the High Court against a 
judgment or order referred to in subsection (1). 
  (4) Except as otherwise provided by this section, an appeal does not lie against a 
judgment or order referred to in subsection (1). 
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  196  Registrar may appear in appeals 
 
  The Registrar may appear and be heard at  the hearing of an appeal to the Federal 
Court against a decision or direction of the Registrar. 
 197  Powers of Federal Court 
 
  On hearing an appeal against a decision or direction of the Registrar, the Federal 
Court may do any one or more of the following: 
 
  (a) admit further evidence orally, or on affidavit or otherwise; 
              (b) permit the examination and cross-examination of witnesses, including 
witnesses who gave evidence before the Registrar; 
  (c) order an issue of fact to be tried as it directs;   (d) affirm, reverse or vary the Registrar’s decision or direction; 
              (e) give any judgment, or make  any order, that, in all the circumstances, it thinks 
fit; 
  (f) order a party to pay costs to another party.  
198  Practice and procedure of prescribed courts 
   The regulations may make provision about  the practice and procedure of prescribed 
courts in an action or proceeding under this Act, including provision: 
               (a) prescribing the time fo r starting the action or pr oceeding or for doing any 
other act or thing; or 
  (b) for an extension of that time. 
 
  
Note: For prescribed court  see section 190. 
 
Part 19—Administration  199  Trade Marks Office and sub-offices 
 
 (1) For the purposes of this Act, there is to  be an office called the Trade Marks Office. 
 
 (2) There is to be a sub-office of the Trade Marks Office in each State. 
 
200  Seal of Trade Marks Office 
 
  There is to be a seal of the Trade Mark s Office and impressions of the seal must be 
judicially noticed. 
201  Registrar of Trade Marks 
 
 (1) There is to be a Registrar of Trade Marks.  
 (2) The Registrar has the powers and functions that are given to him or her under this Act 
or any other Act (including regulations under that Act). 
 
202  Registrar’s powers 
 
  The Registrar may, for the purposes of this Act: 
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    (a) summon witnesses; and 
  (b) receive written or oral evidence on oath or affirmation; and   (c) require the production of documents or articles; and   (d) award costs against a party to pro ceedings brought before the Registrar; and 
              (e) notify, as he or she cons iders fit, any person of any matter that, in his or her 
opinion, should be brought to the person’s notice. 
 
  
Note: For the awarding of costs see section 221. 
 
203  Exercise of power by Registrar 
 
  The Registrar may not exercise a power under this Act in any way that adversely 
affects a person applying for the exercise of that power without first giving that 
person a reasonable opportunity of being heard. 
 
204  Registrar to act as soon as practicable 
 
  If: 
 
  (a) the Registrar is required under this Act to do any act or thing; and 
              (b) no time or period is provided within which the act or thing is to be done;   the Registrar is to do the act or thing as soon as practicable.  
205  Deputy Registrar of Trade Marks 
  (1) There is to be at least one Deputy Registrar of Trade Marks. 
  (2) Subject to any direction by the Registra r, a Deputy Registrar has all the powers and 
functions of the Registrar, except the powers of delegation under section 206. 
 
 (3) A power or function of the Registrar, when exercised by a Deputy Registrar, is taken 
to have been exercised by the Registrar. 
  (4) The exercise of a power or function of the Registrar by a Deputy Registrar does not 
prevent the exercise of the power or function by the Registrar. 
 
 (5) If the exercise of a power or function by the Registrar is dependent on the opinion, 
belief or state of mind of the Registrar in relation to a matter, that power or function 
may be exercised by a Deputy Registrar on his or her opinion, belief or state of mind in relation to that matter. 
 
 (6) If the operation of a provision of this Ac t or another Act is dependent on the opinion, 
belief or state of mind of the Registrar in relation to a matter, that provision may operate on the opinion, belief or state of mi nd of a Deputy Registrar in relation to that 
matter. 
 206  Delegation of Registrar’s powers and functions 
 
 (1) The Registrar may by signed instrument de legate all or any of his or her powers or 
functions to: 
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                (a) a prescribed person, or persons included in a prescribed class, holding or 
performing the duties of an Australian Public Service office in the Trade 
Marks Office; or 
              (b) a prescribed employee, or employees included in a prescribed class, 
employed in the Trade Marks Office. 
 
  
Note 1: For employee  see section 6. 
 
                 Note 2: See section 34AB of the Acts Interpretation Act 1901 about the effect of  this subsection. 
 
 (2) A delegate must, if so required by the instrument of delegation, exercise or perform a 
delegated power or function under the direction or supervision of: 
   (a) the Registrar; or               (b) a person specified in the instrument, being a person referred to in 
paragraph (1)(a) or (b). 
 
Part 20—The Register and official documents 
 207  The Register 
  (1) A Register of Trade Marks is to be kept at the Trade Marks Office. 
  (2) The Registrar must enter in the Register in accordance with this Act: 
               (a) all particulars of registered trade marks, certification trade marks and 
defensive trade marks, and all other ma tters, that were on the old register 
when the repealed Act was repealed, with the exception of particulars and 
other matters relating to registered users of trade marks; and 
 
  
Note 1: For old register  see section 6. 
 
  Note 2: See subsection (3) for entries relating to associated trade marks. 
 
              (b) particulars of trade ma rks, certification trade marks, collective trade marks 
and defensive trade marks, and all other matters, that are required to be registered under this Act; and 
      (c) other prescribed matters. 
  (3) If 2 or more trade marks were entered as  associated trade marks in the old register, no 
equivalent entry designating them as associat ed trade marks is to be made in the 
Register. 
 
  
Note: For old register  see section 6. 
 
 (4) All particulars entered in the Register under paragraph (2)(a) are taken to have been 
so entered on 1 January 1996. 
 
208  Register may be kept on computer 
 
 (1) The Register may be kept in whole or in part by using a computer. 
 
 (2) Any record of a particular or other matter made by using a computer for the purpose 
of keeping the Register is taken to be an entry in the Register.  IP/N/1/AUS/T/3 
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209  Inspection of Register 
 
 (1) The Register must be available at the Trade Marks Office for inspection by any 
person during the hours when the Office is open for business. 
 
 (2) If the Register, or any part of the Regist er, is kept by using a computer, subsection (1) 
is satisfied if a person who wants to inspect th e Register or that part of the Register is 
given access to a computer terminal from which he or she can read on a screen, or obtain a printed copy of, the particulars or other matters recorded in the Register or 
that part of the Register. 
 
210  Evidence—the Register 
 
 (1) The Register is prima facie evidence of any particular or other matter entered in it. 
 
  
Note: See section 116 about records of claims to interests and rights made under Part 11. 
 
 (2) A copy of, or an extract from, the Register that is certified by the Registrar to be a 
true record or extract is admissible in any proceedings as if it were the original. 
  (3) If the Register or a part of the Register is kept by using a computer, a document 
certified by the Registrar as reproducing in writin g a computer record of all or any of 
the particulars comprised in the Register or in that part of the Register is admissible in any proceedings as evidence of those particulars. 
 
211  Evidence—certified copies of documents 
 
 (1) A certificate signed by the Registrar and stating that:  
              (a) anything required or perm itted to be done by the Act or the repealed Act was 
done or not done on, or had been done or not been done by, a specified date; 
or 
              (b) anything prohibited by the Act or the repealed Act was done or not done on, 
or had been done or not been done by, a specified date; or 
              (c) a document was available for public inspection at the Trade Marks Office on 
a specified date or during a specified period; 
  i s  prima facie evidence of the matters so stated. 
  (2) A copy of, or an extract from, a document held in the Trade Marks Office that is 
certified by the Registrar to be a true copy or extract is admissible in any proceedings 
as if it were the original. 
 
Part 21—Miscellaneous 
 Division 1—Applications and other documents 
 
212  Making and signing applications etc. 
 
  An application, notice or request required or permitted under this Act to be made or 
signed by a person may be made or signed, on behalf of that person, by any other 
person. 
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  213  Filing of documents 
 
 (1) A document is taken to be filed at the Tr ade Marks Office if it is filed at a sub-office 
of the Trade Marks Office. 
 
 (2) A document may be filed at the Trade Marks Office or any of its sub-offices by being 
delivered there: 
   (a) personally; or   (b) by post; or 
  (c) by any prescribed means. 
 
214  Withdrawal of application etc. 
 
 (1) A person who has filed an application,  notice or request may withdraw it, in 
accordance with the regulations, at any time while it is still being considered by the 
Registrar. 
  (2) If:                (a) the right or interest on which the person relied to file the application, notice 
or request has become vested in another person; and 
              (b) the other person notifies the Registrar in writing that the right or interest is 
vested in him or her; 
  the other person may withdraw the application, notice or request as provided in 
subsection (1). 
 
Note: For file see section 6. 
 
215  Address for service 
 
 (1) The address for service of a person who has filed an application, notice or request is:    (a) the address for service stated in the application, notice or request; or 
              (b) if the person subsequently notifies in writing another address to the 
Registrar—that other address. 
 
Note: For file see section 6. 
 
 (2) When: 
   (a) a trade mark is registered; or               (b) a claim to an interest in, or  to a right in respect of, a registered trade mark that 
a person has is recorded in the Register; 
  the Registrar must enter in the Register  as the address for service of the registered 
owner or of the person: 
              (c) if paragraph (d) does not apply—the address given, or last given, by the 
registered owner or the person to the Registrar under subsection (1); or 
              (d) if, before the Registrar registers the trade mark or records the claim to the 
interest or right, the registered owner or person gives in writing to the 
Registrar another address as his or her address for service—that other 
address. 
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 Page 95 
 
 
  Note: For registered trade mark  and registered owner  see section 6. 
 
 (3) The registered owner of a registered trade mark, or any person whose claim to an 
interest in, or to a right in respect of, a tr ade mark is recorded in the Register, must 
notify the Registrar in writing of any change  in his or her address for service and the 
Registrar must amend the Register accordingly. 
  (4) The address for service of: 
 
  (a) the registered owner of a registered trade mark; or               (b) a person whose claim to an interest in, or to a right in respect of, a trade mark 
is recorded in the Register; 
  is the address set out from time to time in the Register as being the address for service 
of the registered owner or of the person. 
 
 (5) An address for service must be an address in Australia.   (6) If this Act provides that a document is to  be served on, or given or sent to, a person: 
 
              (a) the document may be left at, or sent by post to, the address for service of the 
person; or 
              (b) if the person does not  have an address for service—the document may be 
served on an agent of the person in Australia or may be sent by post to any address of the person in Australia that is known to the Registrar. 
 
 (7) Subsection (6) does not affect the operation of section 28A of the Acts Interpretation 
Act 1901 . 
 
               
Note: Section 28A of the Acts Interpretation Act 1901 provides that a document may be served (this 
term includes given, or sent, to):  
                                       “(a) on a natural person:  
                                                    (i) by delivering it to the person personally; or 
                                                    (ii) by leaving it at, or by sending it by pre-paid post to, the address of  the 
place of residence or business of the person last known to the person 
serving the document; or  
                                        (b) on a body corporate—by leaving it at, or sending it by pre-paid post to, the head o ffice, a 
registered office or a principal office of the body corporate.”. 
 
216  Change of name 
 
 (1) If there is a change in the name of a person who has filed an application, notice or 
request, the person must notify the Registrar in writing of the change. 
 
  Note: For file see section 6. 
 
 (2) If there is a change in the name of: 
   (a) the registered owner of a registered trade mark; or               (b) a person whose claim to an interest in, or to a right in respect of, a trade mark 
is recorded in the Register; 
  the registered owner or the person must notify the Registrar in writing of the change 
and the Registrar must amend the Register accordingly. 
 IP/N/1/AUS/T/3 
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  217  Death of applicant etc. 
 
 (1) If an applicant for the registration of a trade mark dies before registration is granted 
on the application, his or her legal repre sentative may proceed with the application. 
 
Note: For applicant  see section 6. 
 
 (2) If, at any time after a trade mark is regist ered, the Registrar is satisfied that the person 
in whose name the trade mark is register ed had died (or, in the case of a body 
corporate, had ceased to exist) before registration was granted, the Registrar may amend the Register by substituting for the name  entered in the Register the name of 
the person who should be the registered owner of the trade mark. 
 
Division 2—Proceedings before the Registrar or a court 
 
218  Description of registered trade mark 
 
  In an indictment, information, pleading or proceeding relating to a registered trade 
mark, the trade mark may be identified by its registration number. It is not necessary 
to reproduce or describe the trade mark. 
 
219  Evidence of trade usage 
 
  In an action or proceeding relating to a trade mark, evidence is admissible of the 
usage of the trade concerned and of any re levant trade mark, trade name or get-up 
legitimately used by other persons. 
 
220  Death of party to proceeding before Registrar 
 
  If a person who is party to a proceedi ng pending before the Registrar dies, the 
Registrar may: 
               (a) on being so asked, subs titute in the proceeding another person in the place of 
the deceased party if the Registrar is satis fied that the interest of the deceased 
party has been transmitted to that other person; or 
              (b) allow the proceeding to continue without any substit ution if the Registrar is 
of the opinion that the interest of  the deceased party is sufficiently 
represented by the surviving parties. 
 
221  Costs awarded by Registrar 
  (1) The Registrar may award costs in respec t of the matters, and in the amounts, provided 
for in the regulations against any party to  proceedings brought before him or her. 
  (2) A party desiring to obtain costs must a pply to the Registrar in  accordance with the 
regulations. 
 
 (3) If a party is ordered to pay the costs of another party, the costs may be recovered in a 
court of competent jurisdiction as a debt due by the first party to the other party. 
 
222  Security for costs 
   If a person who neither resides nor carries on business in Australia:  IP/N/1/AUS/T/3 
 Page 97 
 
 
   
  (a) gives notice of opposition under this Act; or               (b) applies to the Registrar under Part 9 for a trade mark to be removed from the 
Register; 
  the Registrar may require the person to gi ve security for the costs of the proceeding 
and may, if security is not given, dismiss the proceeding. 
 
Division 3—General 
 223  Fees 
 
 (1) The regulations may prescribe the fees to  be paid for the purposes of this Act and 
may prescribe different fees in respect of the doing of an act according to the time when the act is done. 
 
 (2) Prescribed fees are payable in  accordance with the regulations. 
  (3) If a fee is payable in respect of the doi ng of an act by the Registrar, the Commission 
or the Customs CEO, the Registrar, Commi ssion or Customs CEO must not do the act 
until the fee has been paid. 
 
 (4) Subject to subsection (5), if: 
               (a) a fee is payable in respect of the doing of an act by a person other than the 
Registrar, the Commission or the Customs CEO; or 
              (b) a fee is payable in respect of the filing of a document; 
  the act is taken to have been done, or th e document is taken to have been filed, in 
spite of the failure to pay the fee. 
 
Note: For file see section 6. 
 
 (5) If the Registrar, the Commission or th e Customs CEO notifies the person concerned 
or his or her agent, in accordance with the regulations, that the fee has not been paid, 
the act is not taken to have been done, or  the document is not taken to have been 
filed, before the day on which the fee is paid. 
 
224  Extension of time 
 
 (1) If, because of an error or omission by a trade marks officer, a relevant act that is 
required by this Act to be done within a cer tain time is not, or cannot be, done within 
that time, the Registrar must extend the time for doing the act. 
 
Note: For trade marks officer  see section 6. 
 
 (2) If, because of: 
   (a) an error or omission by the person concerned or by his or her agent; or   (b) circumstances beyond the control of the person concerned;   a relevant act that is required by this Ac t to be done within a certain time is not, or 
cannot be, done within that time, the Regi strar may, on application made by the 
person concerned in accordance with the re gulations, extend the time for doing the 
act. 
 IP/N/1/AUS/T/3 
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   (3) If: 
               (a) a relevant act that a pers on is required by this Act to do within a certain time 
is not, or cannot be, done within that time; and 
              (b) on application made by  that person in accordance with the regulations, the 
Registrar is of the opinion that special  circumstances exist that justify an 
extension of that time; 
  the Registrar may extend the time for doing the act.   (4) The time allowed for doing a relevant act  may be extended, whether before or after 
that time has expired. 
  (5) If an application is made under subsection (2) or (3) for an extension of time for more 
than 3 months, the Registrar must advertise the application in the Official Journal . 
 
 (6) A person may, as prescribed, oppose the granting of the application. 
  (7) An application may be made to the Admi nistrative Appeals Tribunal for the review of 
a decision of the Registrar not to extend the time for the doing of an act. 
  (8) In this section:  
  relevant act  means: 
   (a) any act (other than a prescribed act) done in relation to a trade mark; or 
  (b) the filing of any document (o ther than a prescribed document); or 
  (c) any proceedings (other than court proceedings). 
 
225  Convention countries 
 
 (1) The regulations may declare a foreign country to be a Convention country for the 
purposes of this Act. 
 
 (2) If:                (a) the regulations declare that, under the terms of a treaty subsisting between 2 
or more Convention countries, an app lication made for the registration of a 
trade mark in one of those countries is equivalent to an application made in 
another of those countries; and 
              (b) an application for the registration of a trade mark is made in one of those 
Convention countries; 
  then, for the purposes of this Act, an app lication for the registration of the trade mark 
is taken to have also been made in the other Convention country or in each of the 
other Convention countries (as the case may be). 
  (3) If:                (a) the regulations decl are that, under the law of a Convention country, an 
application for the registration of a trade mark made in another country is 
equivalent to an application ma de in the Convention country; and 
              (b) an application for the registration of a trade mark is made in that other 
country;  IP/N/1/AUS/T/3 
 Page 99 
 
 
    then, for the purposes of this Act, an app lication for the registration of the trade mark 
is taken to have also been made in the Convention country. 
 
226  Publication of Official Journal etc. 
  (1) The Registrar must issue at regular inte rvals, as determined by the Registrar, an 
Official Journal of Trade Marks containing: 
               (a) the matters that ar e required under this Act to be advertised in the Official 
Journal ; and 
  (b) any other matter that the Registrar thinks fit. 
  (2) The Registrar must make arrangements for selling copies of the Official Journal . 
  (3) The Registrar may prepare, publish and sell documents relating to trade marks as the 
Registrar thinks fit. 
 
227  Notice regarding review of decision by Administrative Appeals Tribunal 
 
 (1) If, under a provision of this Act, an application may be made to the Administrative 
Appeals Tribunal for the review of a decision of a person: 
 
              (a) the person must give a written notice of the decision to any person affected 
by it; and 
              (b) the notice must include  a statement to the effect that, subject to the 
Administrative Appeals Tribunal Act 1975 , application may be made to the 
Administrative Appeals Tribunal for the review of the decision to which the 
notice relates by or on behalf of th e person or persons whose interests are 
affected by the decision. 
  (2) Failure to comply with subsection (1) in relation to a decision does not affect the 
validity of the decision. 
 
 (3) In this section: 
 
  decision  has the same meaning as in the Administrative Appeals Tribunal Act 1975 . 
 228  Use of trade mark for export trade 
 
 (1) If:    (a) a trade mark is applied in Australia:  
                           (i) to, or in relation to goods that are to be exported from Australia 
(export goods ); or 
                           (ii) in relation to services that are to be exported from Australia ( export 
services ); or 
 
              (b) any other act is done in  Australia to export goods or export services which, if 
done in relation to goods or services to be dealt with or provided in the course 
of trade in Australia, would constitute a use of the trade mark in Australia; 
  the application of the trade mark or the othe r act is taken, for the purposes of this Act, 
to constitute use of the trade mark in re lation to the export goods or export services. IP/N/1/AUS/T/3 
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Note: For applied to or in relation to goods  and applied in relation to services  see section 9. 
 
 
 (2) Subsection (1) applies to an act done be fore 1 January 1996 as it applies to an act 
done on or after that day, but it does not affect: 
   (a) a decision of a court made before that day; or 
  (b) the determination of an appeal from such a decision. 
 
228A  Registration of trade marks attorneys 
 
 (1) A Register of Trade Marks Attorneys is  to be kept by the Designated Manager. 
 
Note: Designated Manager is defined by subsection (9). 
 
 (2) The Register of Trade Marks Attorneys may be kept wholly or partly by use of a 
computer. 
  (3) If the Register of Trade Marks Attorney s is kept wholly or partly by use of a 
computer, references in this Act to an entr y in the Register of Trade Marks Attorneys 
are to be read as including references to a record of particulars kept by use of the 
computer and comprising the Register of Trade Marks Attorneys or part of the 
Register of Trade Marks Attorneys. 
  (4) The Designated Manager must register as a trade marks attorney a person who:                (a) holds such qualifica tions as are specified in, or ascertained in accordance 
with, the regulations; and 
  (b) is of good fame, integrity and character; and               (c) has not been convicted of a prescribed offence during the previous 5 years; 
and 
  (d) is not under sentence of imprisonment for a prescribed offence.  
  The registration is to consist of entering  the person’s name in the Register of Trade 
Marks Attorneys. 
  (5) A qualification specified in, or ascertain ed in accordance with, regulations made for 
the purposes of paragraph (4)(a) may consis t of passing an examination conducted by 
the Professional Standards Board. This s ubsection does not limit paragraph (4)(a). 
  (6) Paragraphs (4)(c) and (d) do not limit paragraph (4)(b). 
  (7) A person may apply to the Administrative  Appeals Tribunal for review of a decision 
of the Designated Manager not to regist er the person as a trade marks attorney. 
  (8) A reference in this section to convicti on of an offence includes a reference to the 
making of an order under section 19B of the Crimes Act 1914 , or a corresponding 
provision of a law of a State or a Territory, in relation to the offence. 
 
 (9) In this section: 
 
  Designated Manager has the same meaning as in the Patents Act 1990 .  IP/N/1/AUS/T/3 
 Page 101 
 
 
   
  Professional Standards Board  has the same meaning as in the Patents Act 1990 . 
 
228B  Deregistration of trade marks attorneys 
   The name of the person registered as a trade marks attorney may be removed from the 
Register of Trade Marks Attorneys in th e prescribed manner and on the prescribed 
grounds. 
 
229  Privileges of trade marks a ttorney and patent attorney 
 
 (1) A communication between a registered trad e marks attorney and the attorney’s client 
in intellectual property matters, and any record or document made for the purposes of such a communication, are privileged to the same extent as a communication between a solicitor and his or her client. 
 
 (2) The regulations may provide that a regi stered trade marks attorney or a patent 
attorney has, in relation to documents and pr operty of a client in a matter relating to 
trade marks, the same right of lien that a solicitor has in relation to the documents and 
property of a client. 
 
 (3) In this section: 
 
  intellectual property matters  means: 
   (a) matters relating to patents; or 
  (b) matters relating to trade marks; or 
  (c) matters relating to designs; or   (d) any related matters.  
230  Passing off actions 
  (1) Except as provided in subsection (2), th is Act does not affect the law relating to 
passing off. 
  (2) In an action for passing off arising out of  the use by the defendant of a registered 
trade mark: 
 
  (a) of which he or she is the regist ered owner or an authorised user; and 
              (b) that is substantially iden tical with, or deceptively sim ilar to, the trade mark of 
the plaintiff; 
  damages may not be awarded against th e defendant if the defendant satisfies the 
court: 
              (c) that, at the time when the defendant began to use the trade mark, he or she 
was unaware, and had no reasonable means of finding out, that the trade mark 
of the plaintiff was in use; and 
              (d) that, when the defendant  became aware of the existence and nature of the 
plaintiff’s trade mark, he or she imme diately ceased to use the trade mark in 
relation to the goods or services in relation to which it was used by the 
plaintiff. 
 
Note 1: For authorised user  see section 8. 
 IP/N/1/AUS/T/3 
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  Note 2: For deceptively similar  see section 10. 
 
231  Regulations  
 
 (1) The Governor-General may make regulations:    (a) prescribing matters required or permitted by this Act to be prescribed; or               (b) prescribing matters nec essary or convenient to be prescribed for carrying out 
or giving effect to this Act; or 
              (c) prescribing matters necessary or convenient to be prescribed for the conduct 
of any business relating to the Trade Marks Office or a sub-office of the Trade Marks Office. 
  (2) Without limiting subsection (1), the regulations may: 
 
              (a) provide for appeals against decisions of the Registrar made under the 
regulations; and 
              (b) require persons to make statutory declarations in support of any application, 
notice or request filed under this Act; and 
 
Note: For file see section 6. 
 
              (c) provide for the making of  a declaration, or the doing of an act, under this Act 
on behalf of a person who, because of  infancy or physical or mental 
disability, is unable to make the declaration or do the act; and 
              (d) provide for the refund, in specific circumstances, of the whole or part of a fee 
paid under this Act; and 
              (e) provide for the remission of, or the exemption of specified classes of persons 
from the payment of, the whole or part of a fee; and 
              (f) provide for the expen ses and allowances to be paid to witnesses or persons 
attending at proceedings before the Registrar; and 
  (g) give power to the Registrar: 
 
                           (i) to requi re, in specified circumstances,  a person applying under Part 9 
for a trade mark to be removed from the Register to give security for 
any costs that may arise from the proceedings; and 
   (ii) not to proceed with the application if security is not given; and 
                           (iii) to refund to the applicant any amount given as security and not 
applied in settling costs awarded against the applicant; and 
               (h) provide for the destruc tion of documents relating to a trade mark at least 25 
years after the registration of the trade mark has ceased; and 
              (ha) provide for the control of the professional conduct of registered trade marks 
attorneys and the practice of the profession and, for that purpose, make 
provision for and in relation to all or any of the following: 
                            (i) making complaints, and hearing charges, against registered trade 
marks attorneys about their professional conduct; 
                           (ii) imposing penalties on registered trade marks attorneys (including 
issuing a reprimand and suspe nding or cancelling registration); 
   (iii) summoning witnesses;                            (iv) requiring persons to give evidence on oath (whether orally or 
otherwise);  IP/N/1/AUS/T/3 
 Page 103 
 
 
                             (v) administering oaths to persons giving evidence (whether orally or 
otherwise); 
                           (vi)  requiring persons to produce documents or articles; and 
               (i) prescribe as penalti es for offences against the regulations fines not 
exceeding 10 penalty units; and 
              (j) make transitional or  consequential provision as necessary or convenient 
because of the repeal of the repealed Act and the enactment of this Act; and 
              (k) provide for regulations  made under the repealed Act to continue to have 
effect (with any prescribed alterations ) for specified purposes of this Act. 
 
Part 22—Repeal and transitional 
 Division 1—Repeal  
232  Repeal  
  T h e  Trade Marks Act 1955 is repealed. 
 
Division 2—Marks registered under the repealed Act 
 
233  Automatic registration under this Act  
 (1) All trade marks that, immediately before  1 January 1996, were registered in Part A 
or B, or both Parts A and B, of the old register are registered trade marks for the purposes of this Act. 
 
Note: For old register  and registered trade mark  see section 6. 
 
 (2) All trade marks that, immediately befo re 1 January 1996, were registered as 
certification trade marks in Part C of the old register are registered certification trade 
marks for the purposes of this Act. 
  (3) All trade marks that, immediately before 1 January 1996, were registered as defensive 
trade marks in Part D of the old register are registered as defensive trade marks for 
the purposes of this Act. 
 
234  Registration conclusive after 7 years 
 
 (1) This section applies in relation to:  
  (a) a registered trade mark that: 
                            (i) immediately before 1 January 1996, was registered in Part A of the 
old register; and 
   (ii) has not at any time on or after that day ceased to be registered; and 
 
  (b) a registered trade mark:                             (i) whose application for registration in Part A of the old register had 
been accepted under the repeal ed Act and was still pending 
immediately before 1 January 1996; and 
   (ii) that has not at any time on or after that day ceased to be registered. IP/N/1/AUS/T/3 
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Note 1: For registered trade mark  and old register  see section 6. 
 
Note 2: For pending  see subsection 11(2). 
 
 (2) In any legal proceedings: 
               (a) the original registration under the repealed Act of a trade mark referred to in 
paragraph (1)(a); or 
              (b) the original registration under this Act of a trade mark referred to in 
paragraph (1)(b); 
  is taken to be valid in all respects after a period of 7 years from the date of 
registration of the trade mark unless it is shown that: 
  (c) the original registration was obtained by fraud; or               (d) the registration of the trade mark would be contrary to section 28 of the 
repealed Act; or 
              (e) the trade mark did not, at the commencement of the proceedings, distinguish 
the goods or services of the registered owner in relation to which the trade 
mark is used from the goods or services of other persons. 
 
  
Note 1: For date of registration  see section 6. 
 
  Note 2: Section 28 of the re pealed Act provided as follows: 
                                                “28. A mark:  
                                                                (a) the use of which would be likely to deceive or cause confus ion;  
                                                                (b) the use of which would be contrary to law;  
                                                                (c) which comprises or contains scandalous matter; or  
                                                                (d) which would otherwise be not entitled to protection in a co urt of justice; 
                                                                shall not be registered as a trade mark.”. 
 
235  Term of registration 
 
  The registration of an existing register ed mark expires on the day on which it would 
have expired under the repealed Act if  that Act had not been repealed. 
 
Note: For existing registered mark  see section 6. 
 
236  Renewal 
 
 (1) Division 2 of Part 7 applies in relation to  the renewal of the registration of an existing 
registered mark. 
 
 (2) If, before 1 January 1996, the Registra r had (under section 69 of the repealed Act) 
renewed for a period of 14 years the regist ration of a trade mark that was due to 
expire on or after that day: 
 
  (a) that renewal has no effect for the purposes of this Act; and 
              (b) the Registrar must renew the registration of the trade mark for a period of 10 
years from the day on which the registration would expire if it were not renewed. 
  IP/N/1/AUS/T/3 
 Page 105 
 
 
  237  Restoration of particulars to Register and renewal of registration where registration 
expired within 12 months before 1 January 1996 
 
 (1) This section applies if the registration of a trade mark under the repealed Act had 
expired within 12 months before 1 January 1996. 
 
 (2) The Registrar must:                (a) make an entry in the Regi ster to the effect that all particulars of the trade 
mark removed from the old register under the repealed Act (because the trade 
mark had not been renewed) are restored to the Register; and 
  (b) enter those particulars in the Register.  
Note: For old register  see section 6. 
 
 (3) If an application for the renewal of the registration of the trade mark is made under 
this Act within 12 months from the day on which the registration expired, the 
Registrar must renew the registration of the trade mark for the period beginning on 1 January 1996 that, together with the peri od during which the trade mark remained 
unregistered under the repealed Act, equals 10 years. 
  (4) If the registration of the trade mark is not renewed under subsection (3), the Registrar 
must remove the trade mark from the Register 12 months after the day on which the registration expired. 
 238  Disclaimers 
 
  If the particulars entered in the Register  under paragraph 207(2)(a) in respect of an 
existing registered mark include particulars of a disclaimer made (under section 32 of the repealed Act) by the registered proprieto r of the mark about the exclusive right to 
use a specified part of the mark, that disclaimer has effect as if it were a disclaimer 
made under section 74 of this Act. 
 
Note: For existing registered mark  see section 6. 
 
239  Rules governing the use of certification trade marks registered in Part C of the old register 
 
  Any rules that, immediately before 1 Janua ry 1996, were governing the use of a trade 
mark then registered as a certification tr ade mark in Part C of the old register: 
 
             (a) apply in relation to the u se of the certification trade mark on or after that day 
as if they were rules made in accordance with this Act; and 
  (b) may be varied under section 178.  
  N o t e :  F o r  old register  see section 6. 
 
Division 3—Matters pending immediately before repeal of repealed Act 
 
240  Applications, notices etc.—general  
 (1) Subject to this Division, an application, notice or request that:    (a) was lodged with the Registrar in  accordance with the repealed Act; and IP/N/1/AUS/T/3 
Page 106  
 
                (b) was pending immediately before 1 January 1996; 
  is to be dealt with in accordance with this Act.  
Note: For pending  see subsection 11(2). 
 
 (2) The application, notice or request is take n to have been filed in accordance with this 
Act. 
 
Note: For file see section 6. 
 
241  Application for registration of trade mark 
  (1) This section applies if an application fo r the registration of a trade mark in Part A 
or B of the old register was pending immediately before 1 January 1996. 
 
Note 1: For old register  see section 6. 
 
Note 2: For pending  see subsection 11(2). 
 
 (2) If the application had been accepted under the repealed Act and the acceptance was in 
force immediately before 1 January 1996, the following provisions apply: 
               (a) subject to subsection (4 ), the repealed Act (other than paragraph 45(1)(b)) 
continues to apply in relation to the application; 
              (b) if, after dealing with th e application in accordance w ith the repealed Act, the 
Registrar is required under section 53 of that Act to register the trade mark in the old register—the Registrar is to register the trade mark under Part 7 of this Act. 
 
                                 Note: Subsection 45(1) of the repe aled Act provided as follows:  
                                                “45.(1) An application for the registration of a trade mark may be accepted, an d the trade 
mark may be registered, notwithstanding th at the applicant does not use or propose 
to use the trade mark:  
                                                                (a) ...  
                                                                (b) if an application has been made for the registration of a p erson as a 
registered user of the trade mark and the Registrar is satisfied that the 
proprietor intends the trade mark to be used by that person in relation to 
those goods or services and is also satisfied that that person will be 
registered as a registered user of the trade mark immediately after 
registration of the trade mark.”. 
 
 (3) If, immediately before 1 January 1996, the application had not been accepted, the 
following provisions apply: 
               (a) subject to subsection 240( 2) and subsection (5) of this section, the application 
is to be dealt with in accordance with this Act; 
   (b) if: 
    (i) there is no opposition to the registration; or                            (ii) there is an opposition to the registrati on but the Registrar’s decision, 
or (in the case of an appeal against the Registrar’s decision) the decision on appeal, is that the trade mark should be registered; 
   Part 7 is to apply in relation to the registration of the trade mark. 
   IP/N/1/AUS/T/3 
 Page 107 
 
 
   (4) If, when dealing with the applica tion under the repealed Act as provided by 
paragraph (2)(a), the Registrar withdraw s the acceptance of the application under 
subsection 44(3) of that Act, the following provisions apply: 
               (a) subject to subsection 240( 2) and subsection (5) of this section, the application 
is to be dealt with in accordance with this Act as if it were an application 
whose acceptance had been re voked under subsection 38(1); 
  (b) if:     (i) there is no opposition to the registration; or 
                           (ii) there is an opposition to the registrati on but the Registrar’s decision, 
or (in the case of an appeal against the Registrar’s decision) the decision on appeal, is that the trade mark should be registered; 
   Part 7 is to apply in relation to the registration of the trade mark.  
 (5) The filing date in respect of the application is: 
               (a) if paragraph (b) does not apply—the day on which the application was lodged 
with the Trade Marks Office under the repealed Act; or 
              (b) if section 43 of the rep ealed Act applied to the application and the Registrar 
had made the proper direction—the day on which the application is to be 
taken to have been lodged with the Trade Marks Office under the repealed 
Act. 
 
242  Divisional application in relation to pending application 
  (1) This section applies if, immediately before 1 January 1996, an application ( initial 
application ) for the registration of a trade mark  in the old register was pending and 
had not been accepted. 
 
Note 1: For old register  see section 6. 
 
Note 2: For pending  see subsection 11(2). 
 
 (2) If:                (a) at any time within 6 mo nths after 1 January 1996, the initial application is 
still pending; and 
              (b) a part of the trade mark, by itself, may be registered as a trade mark;   the applicant may, subject to subsection (4), make an application ( divisional 
application ) for the registration of that part as a trade mark in respect of any or all of 
the goods or services specified in the initial application. 
 
Note: For pending  see subsection 11(1). 
 
 (3) If the initial application: 
 
              (a) was amended under the repealed Act to exclude some of the goods and/or 
services specified in the application before its amendment; and 
              (b) is still pending at  any time within one month after 1 January 1996; 
  the applicant may, subject to subsection (4), make an application ( divisional 
application ) for the registration of the trade mark in respect of any or all of the goods 
and/or services that were excluded from the initial application. IP/N/1/AUS/T/3 
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Note: For pending  see subsection 11(1). 
 
 (4) If the initial application is accepted under Pa rt 4, a divisional application may not be 
made after the acceptance is advertised in the Official Journal . 
 
243  More than one application lodged on same day for registration of same trade mark 
  (1) If: 
               (a) before 1 January 1996  a person made a number of applications each seeking 
the registration of one and the same tr ade mark but in respect of goods or 
services of different classes; and 
              (b) all the applications were  lodged, or were taken under the repealed Act to have 
been lodged, on the same day with the Trade Marks Office; 
  the applications are called linke d applications in this section. 
  (2) This section applies if, immediately before 1 January 1996, a number of linked 
applications for the registration of a tr ade mark were pending and had not been 
accepted. 
 
Note: For pending  see subsection 11(2). 
 
 (3) If, at any time on or after 1 January 19 96, there are linked applications pending, the 
applicant may, subject to subsection (4), appl y to the Registrar to have some or all of 
those applications dealt with under this Ac t as if they were one application for the 
registration of the trade mark in respect of all goods and services specified in those 
applications. 
 
Note: For pending  see subsection 11(1). 
 
 (4) If: 
 
  (a) one of the linked applications has been accepted under Part 4; and               (b) the acceptance has been advertised in the Official Journal ; 
  that application may not be included in the application made to the Registrar under 
subsection (3). 
 
 (5) If an application is made under subsection (3), the Registrar must deal with the linked 
applications as if they were a single application for the registration of a trade mark made on 1 January 1996. 
  (6) The filing date for the single app lication taken to have been made under 
subsection (5) is the day on which the linked applications were lodged, or were taken 
to have been lodged (as the case may be), with the Trade Marks Office under the repealed Act. 
 
244  Application for registration of trade mark  whose registration has been sought in 
Convention country 
 
 (1) This section applies if:   IP/N/1/AUS/T/3 
 Page 109 
 
 
                (a) an application for the registration in Australia of a trade mark whose 
registration had been sought  in one or more than one Convention country was 
made under section 109 of the repealed Act; and 
  (b) immediately before 1 January 1996, the application was still pending. 
 
Note 1: For pending  see subsection 11(2). 
 
Note 2: For Convention country  see section 225. 
 
 (2) If: 
 
              (a) for the purposes of the re pealed Act, the Registrar had been notified that an 
application had been made in that Convention country or in those Convention countries for the registration of the trade mark; and 
              (b) the trade mark is registered under this Act;   subsection 72(2) applies in relation to the re gistration as if a right of priority had been 
claimed under section 29 for the registration of the trade mark. 
  (3) If the Registrar had not, for the purposes of the repealed Act, been notified that an 
application had been made in that Convention country or in those Convention countries for the registration of the trade mark, the applicant must, within 6 months 
after 1 January 1996 but subject to subsection (5), claim a right of priority for the 
registration of the trade mark in accorda nce with section 29 in order to obtain 
registration from the date on which that  application or the earliest of those 
applications was made in a Convention country. 
 
 (4) If: 
               (a) the applicant claims a ri ght of priority for the registration of the trade mark 
under subsection (3); and 
  (b) the trade mark is registered under this Act;   subsection 72(2) applies in relation to the registration. 
 
 (5) If the application is accepted under Part 4, the applicant may not claim a right of 
priority in accordance with section 29 afte r the acceptance is advertised in the Official 
Journal . 
 245  Application for registration of a mark in Part C of the old register 
 
 (1) Subject to Part 16, section 241 applies to an application for the registration of a mark 
as a certification trade mark in Part C of the old register as if the reference in subsection (1) to Part A or B of the old regi ster were a reference to Part C of that 
register. 
 
 (2) Subject to Part 16, sections 242 to 244 apply to an application for the registration of a 
mark as a certification trade mark in Part C of the old register. 
 
Note: For old register  see section 6. 
 IP/N/1/AUS/T/3 
Page 110  
 
  246  Application for registration of a mark in Part D of the old register 
 
 (1) Subject to Part 17, section 241 applies to an application for the registration of a mark 
as a defensive trade mark in Part D of the old register as if the reference in subsection (1) to Part A or B of the old register were a reference to Part D of that register. 
 
 (2) Subject to Part 17, sections 242 to 244 apply to an application for the registration of a 
mark as a defensive trade mark in Part D of the old register. 
 
247  Amendment of application—specification of goods or services 
 
 (1) This section applies if:                (a) immediately before 1 January 1996 an application for the registration of a 
mark in Part A, B, C or D of the old re gister (other than an application made 
under section 39 of the repealed Act) was pending and had not been accepted; 
and 
  (b) the application had previously been amended; and               (c) the application as ame nded did not relate to all of the goods or services 
specified in the application before its amendment. 
 
Note 1: For old register  see section 6. 
 
Note 2: For pending  see subsection 11(2). 
 
 (2) The applicant may, within 6 months after 1 January 1996, apply to the Registrar for 
the application to be again amended so as to  relate to some or all of the goods or 
services specified in the application before its amendment under the repealed Act, if: 
   (a) the application is still pending under this Act; and: 
 
   (i) it has not been accepted; or                            (ii) if it has been accepted, the acceptance h as not been advertised in the 
Official Journal ; and 
 
              (b) subsection 43(3) of th e repealed Act would apply in relation to a further 
application for the registration of the mark in respect of the goods or services included from the original application,  if that Act were still in force. 
 
Note: For pending  see subsection 11(1). 
 
 (3) If an application is amended under sub section (2), it must (if necessary) be also 
amended so as to be in accordance with Part 4. 
 248  Revival of application for registration of trade mark that had lapsed before 1 January 1996 
 
 (1) If:                (a) an application under the repealed Act for the registration of a trade mark had 
lapsed (under subsection 48(1) of that Act); and 
              (b) the application would ha ve been pending immediately before 1 January 1996 
if: 
  IP/N/1/AUS/T/3 
 Page 111 
 
 
                            (i) an application had been made to the Registrar under the repealed Act 
for an extension of the time within which the application for registration would be accepted; and 
                          (ii) the Re gistrar had allowed an extension of that time under that Act; 
  the applicant may apply in writing to the Registrar for a declaration that the 
application is revived. 
 
Note: For pending  see subsection 11(2). 
 
 (2) The Registrar must grant the application if he or she considers, in all the 
circumstances of the case, that it is fair and reasonable to do so. 
  (3) If the Registrar declares that the applicati on is revived, the application is to be dealt 
with as if it were an application that was pending immediately before 1 January 1996. 
 
Note 1: For pending  see subsection 11(2). 
 
Note 2: Sections 240 to 247 make provision relating to  applications for registra tion of trade marks that 
were pending immediately before 1 January 1996. 
 
249  Application for registration of assignment etc. 
 
  If an application for the registration in the old register of the assignment or 
transmission of an existing registered mark was pending immediately before 1 
January 1996, this Act applies in relation to the application as if: 
               (a) it were an application under section 109 for a record of the assignment or 
transmission to be entered in the Register; and 
  (b) that application was filed on 1 January 1996. 
 
Note: For old register , existing registered mark  and file see section 6. 
 
250  Rectification of Register 
 
  If proceedings arising from an applicat ion to a court under section 22 (Rectification 
of Register) of the repealed Act were pendi ng immediately before 1 January 1996, the 
matter is to be decided under the repealed Act as if the old register were to be 
rectified, but any order made by the Court may only be in respect of the rectification 
of the Register. 
 
  Note: For old register  see section 6. 
 
251  Action for removal of trade mark from Register for non-use 
 
  If proceedings arising from an application to  the Registrar or a court under section 23 
(Provisions as to non-use of trade mark ) of the repealed Act were pending 
immediately before 1 January 1996, the repealed Act continues to apply: 
   (a) in relation to those proceedings; and               (b) for the purposes of any appeal from an order or direction of the Registrar or 
the court under that section; 
  as if the reference in subsection 23(1) to th e Register were a reference to the Register 
within the meaning of this Act. 
 IP/N/1/AUS/T/3 
Page 112  
 
    N o t e :  F o r  pending  see subsection 11(2). 
 
252  Action for infringement of trade mark etc. 
 
  Sections 62 to 67 and section 78 of the rep ealed Act continue to apply in relation to 
an action for the infringement of a trade ma rk that was pending immediately before 1 
January 1996. 
 253  Action under this Act for infringe ment of trade mark under repealed Act 
 
  If:               (a) before 1 January 1 996 a person engaged in conduct that infringed a mark 
registered under the repealed Act; and 
              (b) an action relating to that infringement was not pending immediately 
before 1 January 1996; and 
              (c) the mark is an existing registered mark for the purposes of this Act;   then, subject to any law limiting the time w ithin which such an action may be started, 
an action may be brought under this Act for that infringement of the trade mark. A person is not, however, entitled under this Ac t to any injunction or other relief to 
which the person would not have been  entitled under the repealed Act. 
 
Note: For existing registered mark  see section 6. 
 
254  Acts not constituting infringement of trade mark 
 
 (1) This section applies if:                (a) immediately before 1 January 1996, a person was engaging in conduct that 
did not constitute an infringement of a mark registered under the repealed 
Act; and 
  (b) the mark is an existing registered mark for the purposes of this Act; and               (c) the person has, on or af ter that day, continuously engaged in, and is engaging 
in, that conduct; and 
              (d) that conduct is an infringe ment of the existing registered mark under this Act. 
 
 (2) In spite of section 120, the person does not infringe the existing registered mark by 
engaging in that conduct. 
 
Note: For existing registered mark  see section 6. 
 
255  Application of this Act—general 
 
 (1) If: 
 
             (a) an action or proceeding validly brought for the pur poses of the repealed Act 
was still pending immediately before 1 January 1996; and 
             (b) that action or proceeding could have been brought unde r this Act if this Act 
had been in force when the ac tion or proceeding was started; 
  then, except as otherwise provided by this Division or the regulations, this Act applies 
in relation to the action or proceeding as if it were an action or proceeding validly brought on 1 January 1996 under the relevant provision of this Act. 
  IP/N/1/AUS/T/3 
 Page 113 
 
 
   (2) Anything done under the repealed Act for the purposes of the action or proceeding is 
taken to have been done: 
   (a) on 1 January 1996; and   (b) in accordance with this Act. 
 
256  Fees 
 
  No fee is payable under this Act in relati on to an act that was done under the repealed 
Act and is taken, under this Division,  to be an act done under this Act. 
 
Division 4—General 
 257  The Registrar and Deputy Registrar 
   Persons holding office as Registrar of Trade Marks and Deputy Registrar of Trade 
Marks immediately before 1 January 1996 c ontinue to hold those respective offices 
on and after that day. 
 
258  Confidential information received by Re gistrar under section 74 of the repealed Act 
   If, immediately before 1 January 1996, the Registrar was required under 
subsection 74(7) of the repealed Act to en sure that any document, information or 
evidence given for the purpose of an applica tion for the registration of a person as a 
registered user of a trade mark was not disclosed to any other person, the Registrar must continue to ensure that the docu ment, information or evidence is not so 
disclosed except by order of a prescribed court. 
 
Note: For prescribed court  see section 190. 
 
259  Documents kept under repealed Act 
 
  The Registrar is to continue to keep in  accordance with this Act all documents that, 
immediately before 1 January 1996, were kept by the Registrar under the repealed 
Act. 
 
260  Address for service 
 
 (1) If, immediately before 1 January 1996, the address for service of an applicant for the 
registration of a trade mark, or of an o pponent to the registration, under subsection 
132(1) or (2) of the repealed Act ( existing address ) was an address in Australia, that 
address remains the address for service of the applicant or opponent for the purposes 
of this Act until he or she notifies anot her address to the Registrar under section 215. 
 
Note: For applicant  and opponent  see section 6. 
 
 (2) If the existing address of an applicant for the registration of a trade mark or of an 
opponent to the registration is not an addr ess in Australia, the applicant or opponent 
must give in writing to the Registrar an address in Australia as his or her address for service. 
 
 (3) If, immediately before 1 January 1996, the proprietor of an existing registered mark 
had an agent in Australia for the purposes of subsection 70(1) of the repealed Act, the IP/N/1/AUS/T/3 
Page 114  
 
  address of that agent is the address for service of the registered owner of the mark for 
the purposes of this Act until the registered owner notifies another address to the Registrar under section 215. 
 
Note: For existing registered mark  see section 6. 
 
 (4) If:  
              (a) immediately before 1 Ja nuary 1996, the proprietor of an existing registered 
mark did not have an agent in Australia for the purposes of subsection 70(1) of the repealed Act; and 
              (b) the address then entere d in the old register as the address of the proprietor 
was an address in Australia; 
  that address is the address for service of the registered owner of the mark for the 
purposes of this Act until the registered owner notifies another address to the 
Registrar under section 215. 
 
Note: For existing registered mark  and old register  see section 6. 
 
 (5) If:                (a) immediately before 1 Ja nuary 1996, the proprietor of an existing registered 
mark did not have an agent in Australia for the purposes of subsection 70(1) 
of the repealed Act; and 
              (b) the address then entere d in the old register as the address of the proprietor 
was not an address in Australia; 
  that address is not to be used as the addr ess for service of the registered owner of the 
mark, and the registered owner must give in writing to the Registrar an address in 
Australia as his or her address for service. 
 
Note: For existing registered mark  and old register  see section 6. 
 
261  Notices to Customs CEO objecting to importation of goods  
 (1) If a notice under paragraph 103(3)(b) of th e repealed Act objecting to the importation 
of goods infringing a registered trade mark  had not been revoked before 1 January 
1996, then, subject to subsection (2), the notice continues to have effect for the 
purposes of Part 13 of this Act as if it were a notice given under section 132 of this 
Act. 
  (2) The notice ceases to have effect:                (a) if the Customs CEO is given a notice under section 132 objecting to any 
importation of goods infringing the trade mark; or 
              (b) at the end of 3 months from 1 January 1996;   whichever first occurs.  IP/N/1/AUS/T/3 
 Page 115 
 
 
  NOTE 
 
1. The Trade Marks Act 1995  as shown in this reprint comprises Act No. 119, 1995 amended as 
indicated in the Tables below. 
 The Trade Marks Act 1995  was modified by the Trade Marks Regulations 1995  (1995 
No. 341 as amended) and Trade Marks Regulations 1999 (No. 2)  (1999 No. 186). The 
modifications made by the Regulations are not incorporated in this consolidation. 
 
Table of Acts 
 
Act Number  
and year Date  
of Assent Date of 
commencement Application, 
saving or 
transitional provisions 
Trade Marks Act 1995 119, 1995 17 Oct 1995 Part 1 (ss. 1-5): 
Royal Assent Remainder: 1 Jan 1996  
Industry, Science and Tourism   Legislation Amendment Act 1997 91, 1997 30 June 1997 Schedule 1 
(items 25-41): 1 Jan 1996 (a) — 
Intellectual Property Laws 
  Amendment Act 1998 100, 1998 27 July 1998 Schedule 2 
(items 33-46): 27 Jan 1999 (b) — 
 
(a) The Trade Marks Act 1995  was amended by Schedule 1 (items 25-41) only of the  Industry, 
Science and Tourism Legisl ation Amendment Act 1997 , subsection 2(4) of which provides as 
follows: 
 “(4) The amendments of the Trade Marks Act 1995  made by Schedule 1 are taken to have 
commenced on 1 January 1996.” 
 
(b) The Trade Marks Act 1995  was amended by Schedule 2 (items 33-46) only of the Intellectual 
Property Laws Amendment Act 1998 , subsections 2(4) and (5) of which provide as follows: 
 “(4) Subject to subsection (5), Schedul e 2 commences on a day to be fixed by 
Proclamation.   
 “(5) If Schedule 2 does not commence under subsection (4) within the period of 6 months 
beginning on the day on which this Act receives the Royal Assent, Schedule 2 
commences on the first day after the end of that period.” IP/N/1/AUS/T/3 
Page 116  
 
  Table of Amendments 
 
ad. = added or inserted      am. = amended      rep. = repealed      rs. = repealed and substituted 
 
Provision affected How affected 
 
List of terms  am. No. 91, 1997 
S. 6  am. No. 91, 1997; No. 100, 1998 
S. 26  am. No. 91, 1997 
S. 129  am. No. 100, 1998 Note to s. 129(6)  am. No. 100, 1998 
Ss. 131, 132  am. No. 91, 1997 
Heading s. 133  am. No. 91, 1997 Ss. 133-137  am. No. 91, 1997 
S.139  am. No. 91, 1997 
Heading to s. 140  am. No. 91, 1997 Ss. 140-143  am. No. 91, 1997 
S. 155  rep. No. 100, 1998 
S. 156  am. No. 100, 1998 Note 2 to s. 156(2)  am. No. 100, 1998 
Note 3 to s. 156(2)  rep. No. 100, 1998 
Note 4 to s. 156(2)    Relocated from s. 155(2) No. 100, 1998 
S. 212  rs. No. 100, 1998 
S. 223  am. No. 91, 1997 Ss. 228A, 228B  ad. No. 100, 1998 
S. 229  rs. No. 100, 1998 
S. 231  am. No. 100, 1998 Heading to s. 261  am. No. 91, 1997 
S. 261  am. No. 91, 1997 
  IP/N/1/AUS/T/3 
 Page 117 
 
 
  
 
 
   
Trade Marks Amendment (Madrid Protocol) Act 2000 
   
 
 No. 117, 2000 
 
  
 
 
An Act to amend the Trade Marks Act 1995 , and for related purposes 
 
   IP/N/1/AUS/T/3 
Page 118  
 
  Contents 
 
  1 Short title 
    2 Commencement     3 Schedule(s)  
 
Schedule 1—Protected international trade marks under the Madrid Protocol  
 
 Trade Marks Act 1995   
 
  IP/N/1/AUS/T/3 
 Page 119 
 
 
  An Act to amend the Trade Marks Act 1995 , and for related purposes 
 
[Assented to 7 September 2000 ] 
 
The Parliament of Australia enacts: 
 
1  Short title 
  This Act may be cited as the Trade Marks Amendment (M adrid Protocol) Act 2000 . 
 
2  Commencement 
  (1) Subject to subsection (2), this Act comme nces on a day to be fixed by Proclamation. 
  (2) If this Act does not commence under subsec tion (1) within the period of 12 months 
beginning on the day on which it receives the Royal Assent, it commences on the first 
day after the end of that period. 
 
3  Schedule(s) 
 
  Each Act that is specified in a Schedule to  this Act is amended or repealed as set out 
in the applicable items in the Schedule con cerned, and any other item in a Schedule to 
this Act has effect according to its terms. IP/N/1/AUS/T/3 
Page 120  
 
  Schedule 1—Protected international trade marks under the Madrid Protocol 
   
 
Trade Marks Act 1995 
 
1  Section 6 (at the end of the definition of registered trade mark ) 
 
 Add:  
              
Note: In addition, the regulations may provide for the effect of a protected international trade mark: 
see Part 17A. 
 
2  At the end of subsection 20(1) 
  Add: 
 
 
             Note 3: In addition, the regulations ma y provide for the effect of a protected international trade mark: 
see Part 17A. 
 
3  At the end of subsection 44(1) 
  Add: 
 
 
             Note 4: The regulations may provide that an application must also be rejected if the trade mark is 
substantially identical with, or deceptively simila r to, a protected international trade mark or a 
trade mark for which there is a request to extend international registration to Australia: see Part 17A. 
 
4  At the end of subsection 44(2) 
  Add: 
 
              
Note 4: The regulations may provide that an application must also be rejected if the trade mark is 
substantially identical with, or deceptively simila r to, a protected international trade mark or a 
trade mark for which there is a request to extend international registration to Australia: see 
Part 17A. 
 
5  At the end of subsection 120(1) 
  Add: 
 
              
Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: 
see Part 17A. 
 
6  At the end of subsection 120(2) 
 
 Add:  
 
             Note 3: In addition, the regulations ma y provide for the effect of a protected international trade mark: 
see Part 17A. 
 
7  At the end of subsection 120(3) 
 
 Add:   IP/N/1/AUS/T/3 
 Page 121 
 
 
                Note 4: In addition, the regulations ma y provide for the effect of a protected international trade mark: 
see Part 17A. 
 
8  At the end of subsection 121(1) 
 
 Add: 
 
              Note 4: In addition, the regulations may provide for the effect of a protected international trade mark: 
see Part 17A. 
 
9  At the end of section 131 
 
 Add:  
 
                Note: In addition, the regulations ma y provide for the effect of a protected international trade mark: 
see Part 17A. 
 
10  At the end of subsection 145(1) 
 
 Add:  
              
Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: 
see Part 17A. 
 
11  At the end of subsection 146(1) 
 
 Add:  
              
Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: 
see Part 17A. 
 
12  At the end of section 148 
 
 Add:  
 
             Note 4: In addition, the regulations ma y provide for the effect of a protected international trade mark: 
see Part 17A. 
 
13  At the end of subsection 151(4) 
 
 Add:  
              
Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: 
see Part 17A. 
 
14  After Part 17 
 
 Insert:  IP/N/1/AUS/T/3 
Page 122  
 
  Part 17A—Protected international trade marks under the Madrid Protocol 
   
189A  Regulations implementing the Madrid Protocol 
 
 (1) The regulations may provide for such matters as are necessary to enable the 
performance of the obligations of Australia, or to obtain for Australia any advantage 
or benefit, under the Madrid Protocol. 
  (2) In particular (but without limiting subsec tion (1)), the regulations may deal with the 
following matters: 
 
              (a) the procedure for dealin g with applications for international registration of 
trade marks that are to be filed with  the International Bureau through the 
intermediary of the Trade Marks Office; 
              (b) the procedure for deali ng with requests to extend to Australia the protection 
resulting from international registration of trade marks; 
  (c) the protection given to protected international trade marks in Australia; 
              (d) the circumstances in which such protection ceases and the procedures to be 
followed in cases of cessation; 
              (e) the cancellation of an international registration at Australia’s request, as 
contemplated by Article 6 of the Madrid Protocol; 
  (f) the effect of cancelling an international registration. 
  (3) Regulations made for the purposes of this section:    (a) may be inconsistent with this Act; and 
              (b) prevail over this Act (including any other regulati ons or other instruments 
made under this Act), to the ex tent of any inconsistency. 
  (4) In this section:   International Bureau means the International Bureau  of the World Intellectual 
Property Organization. 
 
  international registration  of a trade mark  means registration of the mark in the 
register of the International Bureau. 
 
  Madrid Protocol  means the Protocol Relating to the Madrid Agreement concerning 
the International Registration of Marks,  as signed at Madrid on 28 June 1989. 
 
  protected international trade mark  means a trade mark to which protection resulting 
from international registration of the mark is extended in Australia in accordance with 
the regulations. 
 
[Minister’s second reading speech made in— 
House of Representatives on 28 June 2000 
Senate on 17 August 2000 ]  IP/N/1/AUS/T/3 
 Page 123 
 
 
  
 
 
   
Trade Marks and Other Legislation Amendment Act 2001 
   
 
No. 99, 2001 
 
   
 
An Act to amend the Trade Marks Act 1995 , and for other purposes IP/N/1/AUS/T/3 
Page 124  
 
  Contents 
 
  1 Short title  
   2 Commencement     3 Schedule(s)  
 
Schedule 1—Amendment of the Trade Marks Act 1995  
 
 Part 1—General amendments    Part 2—Amendment relating to the Administrative Review Tribunal  
 
Schedule 2—Amendment of the Patents Amendment (Innovation Patents) Act 2000  
  IP/N/1/AUS/T/3 
 Page 125 
 
 
  An Act to amend the Trade Marks Act 1995 , and for other purposes 
 
[Assented to 22 August 2001] 
 
The Parliament of Australia enacts: 
 
1  Short title 
  This Act may be cited as the Trade Marks and Other Legislation Amendment 
Act 2001 . 
 2  Commencement 
 
 (1) Subject to this section, this Act commences on the 28th day after the day on which it 
receives the Royal Assent. 
 
 (2) Part 2 of Schedule 1 commences at the later of: 
               (a) the time when Parts 4 to 10 of the Administrative Review Tribunal Act 2001  
commence; and 
              (b) the time immediately after the commencement of section 180A of the Trade 
Marks Act 1995 . 
 
 (3) Schedule 2 commences, or is taken to  have commenced, immediately after the 
commencement of the Patents Amendment (Innovation Patents) Act 2000 . 
 
3  Schedule(s) 
 
  Subject to section 2, each Act that is specifi ed in a Schedule to this Act is amended or 
repealed as set out in the applicable items  in the Schedule concerned, and any other 
item in a Schedule to this Act has effect according to its terms. IP/N/1/AUS/T/3 
Page 126  
 
   
Schedule 1—Amendment of the Trade Marks Act 1995 
 
Part 1—General amendments 
 
1  Section 6 (definition of Commission) 
  Omit “Trade Practices Commission”, substitute  “Australian Competition and Consumer 
Commission”. 
 
2  Section 6 
 
 Insert:  
  working day means a day that is not: 
   (a) a Saturday; or   (b) a Sunday; or 
  (c) a public holiday in the Australian Capital Territory. 
 
3  Paragraph 26(1)(b) 
 
 Repeal the paragraph, substitute:  
              (b) the authorised user may (subject to subsection (2)) bring an action for 
infringement of the trade mark: 
                            (i) at any time, with the consent of the registered owner; or                            (ii) during the prescribed period, if the re gistered owner refuses to bring 
such an action on a particular occasion during the prescribed period; 
or 
                          (iii) after the end of the prescribed period, if the registered owner has 
failed to bring such an action during the prescribed period; 
 4  Application of amendment—section 26 of the Trade Marks Act 1995 
 
The amendment of section 26 of the Trade Marks Act 1995  made by this Schedule applies in 
relation to a prescribed period that begins at  or after the commencement of this item. 
 
5  Transitional—paragraph 26(1)(b) of the Trade Marks Act 1995 
 
(1) This item applies to regulations if:                (a) the regulations were made for the purposes of paragraph 26(1)(b) of the 
Trade Marks Act 1995 ; and 
              (b) the regulations were in force immediately before the commencement of this 
item. 
 (2) The regulations have effect, after the commenc ement of this item, as if they were made for 
the purposes of the corresponding provision of that Act as amended by this Schedule. 
  IP/N/1/AUS/T/3 
 Page 127 
 
 
  6  Subsection 45(1) 
 
 Omit “A person who has made an application ( initial application ) for the registration of a 
trade mark in respect of certain goods and/ or services”, substitute “If an application 
(initial application ) for the registration of a trade mark in respect of certain goods 
and/or services is pending, the applicant”. 
 
7  At the end of subsection 45(1) 
 
 Add: 
 
  Note 1: For applicant  see section 6. 
 
  N o t e  2 :  F o r  pending  see section 6. 
 
8  At the end of section 45 
 
 Add:   (3) To avoid doubt, subsection (2) does not prevent a divisional application from being 
made by a person who has become the appli cant in relation to the initial application 
because of subsection 108(2) (which deals with assignment and transmission). 
 
9  Section 46 
 
 Repeal the section. 
 
10  At the end of subsection 52(2) 
 
 Add “or in accordance with subsection (5)”.  
11  At the end of section 52 
 
 Add:   (5) If:  
              (a) a person is granted an  extension of time in which to file a notice of 
opposition; and 
              (b) before the notice of opposition is filed, the right or interest on which the 
person could have relied to file the notice of opposition becomes vested in 
another person; and 
              (c) the other person notifies the Registrar in writing that the right or interest is 
vested in him or her; 
  then:               (d) the other person is taken to have been granted an extension of time in which 
to file the notice of opposition; and 
  (e) that extension ends when the ex tension mentioned in paragraph (a) ends. 
 IP/N/1/AUS/T/3 
Page 128  
 
  12  Application of amendments—section 52 of the Trade Marks Act 1995 
 
 The amendments of section 52 of the Trade Marks Act 1995  made by this Schedule apply in 
relation to a right or interest that become s vested in another person at or after the 
commencement of this item. 
 
13  Subsection 63(2) 
 
 Omit all the words after “ame nd the application”, substitute: 
 
  as necessary: 
   (c) to remove any ground on which th e application could be rejected; or 
  (d) so as to ensure that the applica tion is made in accordance with this Act. 
 14  Paragraph 68(1)(b) 
 
 Repeal the paragraph, substitute:   (b) in a case where there has been an opposition:                             (i) if the Registrar’s decision, or (in the case of an appeal against the 
Registrar’s decision) the decision on appeal, is that the trade mark 
should be registered; or 
   (ii) if the opposition has been withdrawn; or    (iii) if the opposition has been dismissed under section 222.  15  Transitional—subsection 68(1) of the Trade Marks Act 1995 
 
(1) This item applies if, before the commencement of  this item, the Registrar purported to register 
a trade mark under subsection 68(1) of the Trade Marks Act 1995  on the basis that there had 
been an opposition, but: 
 
  (a) the opposition had been withdrawn; or 
  (b) the opposition had been dism issed under section 222 of that Act. 
 (2) The registration is as valid as it would have been  if the amendment of subsection 68(1) of that 
Act made by this Schedule had been in force at the time of the registration. 
 
16  Section 73 
 
 After “section 78 or”, insert “80F or under”.  
17  Division 2 of Part 7 (heading) 
 
 Repeal the heading, substitute:  
Division 2—Renewal of registration (general) 
 
18  Before section 75  
 Insert:   IP/N/1/AUS/T/3 
 Page 129 
 
 
  74A  Application of this Division 
 
  This Division applies to a registered trade mark if:               (a) particulars of registration were entered in the Register under section 69 
before the end of the period of 10 year s after the filing date of the application 
for registration; or 
  (b) both:     (i) paragraph (a) does not apply; and                            (ii) registration has already been renewed under Division 3 for a period 
that includes the day on which particulars of registration were entered 
in the Register under section 69. 
 
Note: For filing date  see section 6. 
 
19  Section 78 
 
 After “not renewed”, insert “under section 77”.  20  Paragraph 80(a) 
 
 After “renewed”, insert “under section 77 or 79”.  
21  Paragraph 80(b) 
  Omit “within 12 months after the registration expi red, an application for the registration of a 
trade mark is made”, substitute “an application for the registration of a trade mark is made, or 
has already been made,”. 
 
22  At the end of section 80 
 
 Add “at any time when the registration of the unrenewed trade mark could have been renewed 
under section 79”. 
 
23  Transitional—Division 2 of Part 7 of the Trade Marks Act 1995 
 
(1) This item applies if, before the commencement of this item: 
               (a) the Registrar purported to renew registration of a trade mark under section 77 
or 79 of the Trade Marks Act 1995 ; and 
              (b) particulars of registra tion were entered in the Register under section 69 of 
that Act after the end of the period of 10 years after the filing date of the 
application for registration. 
 (2) In the case of a purported renewal under section 77, the renewal is as valid as it would have 
been if, at the time of the request for renewal: 
 
              (a) the words “, within th e prescribed period before the registration of a trade 
mark expires,” were omitted from subsection 75(1) of the Trade Marks Act 
1995 ; and 
  (b) the words “of a trade mark” had been  added at the end of that subsection. 
 IP/N/1/AUS/T/3 
Page 130  
 
  (3) In the case of a purported renewal under section 79, the renewal is as valid as it would have 
been if, at the time of the request for renewa l, the words “, within 12 months after the 
registration of a trade mark has expired,” were omitted from that section. 
 
24  At the end of Part 7 
 
 Add:  
Division 3—Renewal of registration (registratio n delayed for 10 or more years after filing date) 
 
80A  Application of this Division  
 (1) This Division applies to a registered trade mark if particulars of registration were 
entered in the Register under section 69 on a day (Register entry day ) that occurs 
after the end of the period of 10 years after the filing date of the application for 
registration. 
 
  
Note: For filing date  see section 6. 
 
 (2) For the purposes of this Division, each of the following is a potential renewal period  
in relation to the registered trade mark: 
               (a) the period (first potential renewal period ) of 10 years that commenced 10 
years after the filing date of the application for registration; 
              (b) any successive period of 10 years, being a period that commences before the 
Register entry day. 
  (3) For the purposes of this Division, the prescribed period  is a period that: 
   (a) is specified in the regulations; and 
  (b) commences on the Register entry day. 
 
80B  Expiry of registration 
 
  To avoid doubt, the registration of the tr ade mark is taken to  have expired, in 
accordance with subsection 72(3), 10 years afte r the filing date of the application for 
registration. 
 
Note: For filing date  see section 6. 
 
80C  Notice about renewal 
 
  As soon as practicable after the Register entry day, the Registrar must, in accordance 
with the regulations, notify the registered ow ner of the trade mark that a request may 
be made for renewal of the registration. 
 
Note: For registered owner  see section 6. 
 
80D  Request for renewal 
 
 (1) Any person may, within the prescribed period, ask the Registrar to renew, or 
successively renew, the registration of the trade mark for one or more potential 
renewal periods nominated in the request.  IP/N/1/AUS/T/3 
 Page 131 
 
 
   
 (2) The nomination must cover at least the first potential renewal period.   (3) If the nomination relates to more than one potential renewal period, the nomination 
must cover continuous periods. 
 
 (4) The request must:    (a) be in an approved form; and   (b) be filed in accordance with the regulations. 
 
80E  Renewal within prescribed period 
 
 (1) If a request for the renewal of the registra tion of the trade mark is made in accordance 
with section 80D, the Registrar must renew, or successively renew, the registration 
for the potential renewal period or periods to which the request relates. 
  (2) The Registrar must give notice of the rene wal or renewals to the registered owner of 
the trade mark in accordance with the regulations. 
 
Note: For registered owner  see section 6. 
 
80F  Failure to renew 
 
  If the registration of the trade mark is not renewed under section 80E, or is not 
renewed under section 80E for each of the potential renewal periods, then: 
   (a) subject to sections 80G and 80H, the registration ceases to have effect:                            (i) if the registration was not renewed under section 80E—when it 
expired in accordance with section 72(3); or 
                          (ii) if the registration was renewed under section 80E for one or more 
potential renewal periods—at the end of  the last of those periods; and 
               (b) unless the registration is renewed under section 80G, the Registrar must 
remove the trade mark from the Regi ster 10 months after the end of the 
prescribed period. 
 
80G  Renewal within 10 months after end of prescribed period 
 
 (1) If: 
 
  (a) the registration of the trade ma rk is not renewed under section 80E; and 
              (b) within 10 months after the end of the prescribed period, a person asks the 
Registrar to renew, or successively renew, the registration of the trade mark for one or more potential renewal periods nominated in the request; 
  the Registrar must renew, or successively renew, the registration for the potential 
renewal period or periods to which the request relates. 
  (2) The nomination must cover at least the first potential renewal period.   (3) If the nomination relates to more than one potential renewal period, the nomination 
must cover continuous periods. IP/N/1/AUS/T/3 
Page 132  
 
   
 (4) The request must:    (a) be in an approved form; and   (b) be filed in accordance with the regulations. 
 
80H  Status of unrenewed trade mark 
 
  If:  
  (a) the registration of the trade ma rk is not renewed under section 80E; and 
              (b) the registration of the trade mark ( unrenewed trade mark ) has not been 
renewed under section 80G; and 
              (c) an application for the registration of a trade mark is made, or has already 
been made, by a person other than the person who was registered as the 
owner of the unrenewed trade mark; 
  the unrenewed trade mark is taken to be  a registered trade mark for the purposes of 
the application at any time when the registration of the unrenewed trade mark could have been renewed under section 80G. 
 
25  Paragraph 88(2)(d) 
 
 Repeal the paragraph.  
26  After section 96 
  Insert: 
 
96A  Circumstances in which opposition may pro ceed in name of a person other than the person 
who filed the notice 
 
  If:  
              (a) after a person has filed a notice of opposition, the right or interest on which 
the person relied to file the notice of  opposition becomes vested in another 
person; and 
  (b) the other person: 
 
                           (i) notifies the Registrar or the court (as the case may be) in writing that 
the right or interest is vested in him or her; and 
                           (ii) does not withdraw the opposition;   the opposition is to proceed as if the notice of opposition had been filed in that other 
person’s name. 
 
Note: For file see section 6. 
 
27  After paragraph 122(1)(f) 
 
 Insert:    (fa) both:   IP/N/1/AUS/T/3 
 Page 133 
 
 
                             (i) the pers on uses a trade mark that is su bstantially identical with, or 
deceptively similar to, the first-mentioned trade mark; and 
                          (ii) the cour t is of the opinion that the pers on would obtain registration of 
the substantially identical or deceptiv ely similar trade mark in his or 
her name if the person were to apply for it; or 
 
28  Paragraph 127(b) 
 
 Repeal the paragraph, substitute:  
  (b) either: 
                            (i) the de fendant has applied to the court under subsection 92(3) for an 
order directing the Registrar to remove the trade mark from the Register in respect of those goods or services; or 
                           (ii) the defendant has applied to the Re gistrar under subsection 92(1) for 
the trade mark to be removed from the Register in respect of those goods or services, and the matter has been referred to a court under section 94; and 
 
29  Section 128 
 
 Omit “(under section 79)”, s ubstitute “under section 79”. 
 
30  At the end of section 128 
  Add: 
  (2) If the registration of a trade mark is  renewed under section 80G within 10 months 
after the end of the prescribed period, an ac tion may not be brought in respect of an 
act that: 
 
  (a) infringed the trade mark; and 
              (b) was done after the end of the prescribed period and before the registration 
was renewed. 
  (3) In subsection (2):  
  prescribed period  has the same meaning as in Division 3 of Part 7. 
 
31  Subsection 132(3) 
 
 Repeal the subsection, substitute: 
 
 (3) The authorised user may give  the notice to the Customs CEO: 
   (a) at any time, with the consent of the registered owner; or               (b) during the prescribed peri od, if the registered owner refuses to comply with 
the request on a particular occasion during the prescribed period; or 
              (c) after the end of the prescribed period, if the registered owner has failed to 
give such a notice during the prescribed period. 
  The authorised user must give also to the Customs CEO, together with the notice: 
  (d) any document prescribed for the purposes of subsection (1); and IP/N/1/AUS/T/3 
Page 134  
 
    (e) any other prescribed document. 
 
32  Application of amendment—section 132 of the Trade Marks Act 1995 
 
 The amendment of section 132 of the Trade Marks Act 1995  made by this Schedule applies in 
relation to a prescribed period that begins at  or after the commencement of this item. 
 
33  Transitional—subsection 132(3) of the Trade Marks Act 1995 
 
(1) This item applies to regulations if: 
 
              (a) the regulations were  made for the purposes of subsection 132(3) of the Trade 
Marks Act 1995 ; and 
              (b) the regulations were in force immediately before the commencement of this 
item. 
 
(2) The regulations have effect, after the commenc ement of this item, as if they were made for 
the purposes of the corresponding provision of that Act as amended by this Schedule. 
 
34  Subsection 137(5) 
  Omit “3 weeks”, substitute “20 working days”. 
 
35  Subsection 137(5) 
 
 After “court”, insert “directed at the Customs CEO”. 
 
36  Section 138 (note 3) 
 
 Omit “26(b)”, substitute “26(1)(b)”.  
37  Section 138 (note 3) 
 
 Omit “refuses or neglects to do so”, substitute “gives consent to the bringing of such an action 
or refuses or fails to bring such an action”. 
 
38  Section 158 
 
 Repeal the section.  
39  Section 159 
 
 Omit “trial”, substitute “prosecution”. 
 
40  Section 159 
 
 Omit “Division 2 of Part II of the Proceeds of Crime Act 1987  applies as if a reference in that 
Division”, substitute “the forfeiture order pr ovisions apply as if a reference in those 
provisions”. 
 
41  At the end of section 159 
 
Add:  IP/N/1/AUS/T/3 
 Page 135 
 
 
   (2) In this section: 
 
  forfeiture order provisions  means: 
               (a) Division 1 of Part II of the Proceeds of Crime Act 1987 , to the extent to 
which that Division relates to forfeiture orders; and 
  (b) Division 2 of Part II of the Proceeds of Crime Act 1987 . 
 
42  Section 170 
  Omit “paragraph 88(2)(d),”. 
 
43  After section 180 
  
 Insert: 
 
180A  Assignment of unregistered certification trade mark 
 
 (1) If:                (a) an application has been made for the registration of a certification trade mark; 
and 
              (b) a copy of the app lication has been sent to the Commission, but the 
certification trade mark has not been registered; 
  the certification trade mark may be assigned only with the consent of the 
Commission. 
 
 (2) An application to the Commission for its consent to the assignment of a certification 
trade mark must be in acco rdance with the regulations. 
  (3) In deciding whether or not to give its consent, the Commission must have regard to 
the matters provided for under the regulations. 
 
 (4) An application may be made to the Admi nistrative Appeals Tribunal for the review of 
a decision of the Commission refusing to give its consent. 
 
44  Section 186 
 
 Omit “paragraph 88(2)(d),”.  
45  Paragraph 222(a) 
 
 Omit “this Act”, substitute “sec tion 52 or subsection 224(6)”. 
 
46  After section 254 
 
 Insert:  254A  Acts not constituting infringement of  trade mark—pending application under the 
repealed Act 
 
 (1) This section applies if:  IP/N/1/AUS/T/3 
Page 136  
 
                (a) an application for the registration of a trade mark under the repealed Act was 
pending immediately before 1 January 1996; and 
              (b) immediately before 1 January 1996, a person was engaging in conduct that 
would not have constituted an infringement  of the mark if the mark had been 
registered under the repealed Act before 1 January 1996; and 
              (c) the person has, on or af ter that day, continuously engaged in, and is engaging 
in, that conduct; and 
  (d) the mark becomes a register ed trade mark under this Act; and 
  (e) that conduct is an infringement of the registered trade mark under this Act. 
 
 (2) Despite section 120, the person does not  infringe the registered trade mark by 
engaging in that conduct. 
 
254B  Part B defence—infringement of existing registered mark 
  (1) This section applies if: 
               (a) immediately before 1 January 1996, a person was engaging in conduct that 
constituted an infringement of a mark registered under the repealed Act; and 
  (b) the mark is an existing registered mark for the purposes of this Act; and               (c) the mark was registered in Part B of the old register before 1 January 1996; 
and 
              (d) the person has, on or af ter that day, continuously engaged in, and is engaging 
in, that conduct; and 
  (e) that conduct is an infringement of th e existing registered mark under this Act. 
 
 (2) In an action for infringement of the existing registered mark (not being an 
infringement occurring by reason of an act referred to in section 121), an injunction or other relief must not be granted if the person establishes to the satisfaction of the 
court that the use of the mark is not likely to: 
   (a) deceive or cause confusion; or 
              (b) be taken as indicating a connection in the course of trade between the goods 
and/or services in respect of which the trade mark is registered and a person having the right, either as registered owner or as authorised user, to use the trade mark. 
 
Note: For existing registered mark  see section 6. 
 
254C  Part B defence—infringement of trade mark (pending application under the repealed 
Act) 
 
 (1) This section applies if:                (a) an application for the registration of a trade mark in Part B of the old register 
was pending immediately before 1 January 1996; and 
              (b) immediately before 1 January 1996, a person was engaging in conduct that 
would have constituted an infringement of the mark if the mark had been 
registered in Part B of the old register before 1 January 1996; and 
              (c) the person has, on or af ter that day, continuously engaged in, and is engaging 
in, that conduct; and 
  (d) the mark becomes a register ed trade mark under this Act; and 
  (e) that conduct is an infringement of the registered trade mark under this Act.  IP/N/1/AUS/T/3 
 Page 137 
 
 
   
 (2) In an action for infringement of the regi stered trade mark (not being an infringement 
occurring by reason of an act referred to in  section 121), an injunction or other relief 
must not be granted if the person establishes to the satisfaction of the court that the use of the mark is not likely to: 
 
  (a) deceive or cause confusion; or               (b) be taken as indicating a connection in the course of trade between the goods 
and/or services in respect of which the trade mark is registered and a person having the right, either as registered owner or as authorised user, to use the 
trade mark. 
 
Note: For existing registered mark  see section 6. 
 
Note: The heading to section 254 is altered by omitting “ trade ” and substituting “ existing registered ”. 
 
Part 2—Amendment relating to the Administrative Review Tribunal  47  Subsection 180A(4) 
 
 Omit “Administrative Appeals Tribunal”, s ubstitute “Administrative Review Tribunal”. 
 
 
Schedule 2—Amendment of the Pate nts Amendment (Innovation Patents) 
Act 2000 
   
1  Subitem 2(2) of Schedule 2 
 
 Omit “88 and 89”, subs titute “89 and 90”. 
 
2  Item 7 of Schedule 2 
  Omit “85, 86, 88 and 89” (wherever occurring), substitu te “86, 87, 89 and 90”. 
   [Minister’s second reading speech made in— 
House of Representatives on 4 April 2001 
Senate on 28 June 2001 ] 
__________