Commonwealth: Trade Marks Act 1995 (Cth)

Trade Marks Act 1995 No. 119, 1995 Compilation No. 47 Compilation date: 14 October 2024 Includes amendments: Act No. 39, 2024 About this compilation This compilation This is a compilation of the Trade Marks Act 1995 that shows the text of the law as amended and in force on 14 October 2024 (the compilation date). The notes at the end of this compilation (the endnotes) include information about amending laws and the amendment history of provisions of the compiled law. Uncommenced amendments The effect of uncommenced amendments is not shown in the text of the compiled law. Any uncommenced amendments affecting the law are accessible on the Register (www.legislation.gov.au). The details of amendments made up to, but not commenced at, the compilation date are underlined in the endnotes. For more information on any uncommenced amendments, see the Register for the compiled law. Application, saving and transitional provisions for provisions and amendments If the operation of a provision or amendment of the compiled law is affected by an application, saving or transitional provision that is not included in this compilation, details are included in the endnotes. Editorial changes For more information about any editorial changes made in this compilation, see the endnotes. Modifications If the compiled law is modified by another law, the compiled law operates as modified but the modification does not amend the text of the law. Accordingly, this compilation does not show the text of the compiled law as modified. For more information on any modifications, see the Register for the compiled law. Self‑repealing provisions If a provision of the compiled law has been repealed in accordance with a provision of the law, details are included in the endnotes. Contents Part 1—Preliminary 1 Short title 2 Commencement 3 Act binds the Crown 4 Application of Act 4A Application of the Criminal Code 5 Repeal of Trade Marks Act 1994 Part 2—Interpretation 6 Definitions 6A Periods expressed in months 7 Use of trade mark 8 Definitions of authorised user and authorised use 9 Definition of applied to and applied in relation to 10 Definition of deceptively similar 11 Definition of pending 12 Definition of priority date 13 Definition of remove from the Register 14 Definition of similar goods and similar services 15 Definition of originate in relation to wine 16 Definition of repealed Act Part 3—Trade marks and trade mark rights 17 What is a trade mark? 18 Certain signs not to be used as trade marks etc. 19 Certain trade marks may be registered 20 Rights given by registration of trade mark 21 Nature of registered trade mark as property 22 Power of registered owner to deal with trade mark 23 Limitation on rights if similar trade marks etc. registered by different persons 24 Trade mark consisting of sign that becomes accepted as sign describing article etc. 25 Trade mark relating to article etc. formerly manufactured under patent 26 Powers of authorised user of registered trade mark Part 4—Application for registration Division 1—General 27 Application—how made 28 Application by joint owners 29 Application for registration of trade mark whose registration has been sought in a Convention country—claim for priority 30 Particulars of application to be published 31 Registrar to examine, and report on, application 32 Registrar to decide on disputed classification of goods etc. 33 Application accepted or rejected 34 Notification of decision 35 Appeal 36 Deferment of acceptance 37 Lapsing of application if not accepted in time 38 Revocation of acceptance Division 2—Grounds for rejecting an application 39 Trade mark containing etc. certain signs 40 Trade mark that cannot be represented graphically 41 Trade mark not distinguishing applicant's goods or services 42 Trade mark scandalous or its use contrary to law 43 Trade mark likely to deceive or cause confusion 44 Identical etc. trade marks Division 3—Divisional applications 45 Divisional applications 46 Rules relating to divisional applications Division 4—Application for registration of series of trade marks 51 Application—series of trade marks 51A Linking series applications Part 5—Opposition to registration Division 1—General 52 Opposition 52A Notice of intention to defend opposition to registration 53 Circumstances in which opposition may proceed in name of a person other than the person who filed the notice 54 Opposition proceedings 54A Lapsing of opposed application if no notice to defend the application filed 55 Decision 56 Appeal Division 2—Grounds for opposing registration 57 Registration may be opposed on same grounds as for rejection 58 Applicant not owner of trade mark 58A Opponent's earlier use of similar trade mark 59 Applicant not intending to use trade mark 60 Trade mark similar to trade mark that has acquired a reputation in Australia 61 Trade mark containing or consisting of a false geographical indication 62 Application etc. defective etc. 62A Application made in bad faith Part 6—Amendment of application for registration of a trade mark and other documents 63 Amendment of application for registration of trade mark 64 Amendment before particulars of application are published 65 Amendment after particulars of application have been published—request for amendment not published 65A Amendment after particulars of application have been published—request for amendment published 66 Amendment of other documents 66A Registrar may require certain requests to be in writing 67 Appeal Part 7—Registration of trade marks Division 1—Initial registration 68 Obligation to register 69 Registration—how effected 70 Colours in registered trade marks 71 Notification of registration 72 Date and term of registration 73 Ceasing of registration 74 Disclaimers Division 2—Renewal of registration (general) 74A Application of this Division 75 Request for renewal 76 Notice of renewal due 77 Renewal before registration expires 78 Failure to renew 79 Renewal within 6 months after registration expires 80 Status of unrenewed trade mark Division 3—Renewal of registration (registration delayed for 10 or more years after filing date) 80A Application of this Division 80B Expiry of registration 80C Notification about renewal 80D Request for renewal 80E Renewal within prescribed period 80F Failure to renew 80G Renewal within 6 months after end of prescribed period 80H Status of unrenewed trade mark Part 8—Amendment, cancellation and revocation of registration Division 1—Action by Registrar Subdivision A—Amending Register 81 Correction of Register 82 Adaptation of classification 82A Linking series registrations 83 Amendment of particulars of trade mark entered in Register 83A Amendment of registered trade mark—inconsistency with international agreements Subdivision B—Cancelling registration 84 Cancellation of registration Subdivision C—Revoking registration 84A Registration may be revoked 84B Registration must be revoked if opposition was ignored in registration process 84C Effect of revocation of registration 84D Appeal from revocation of registration Division 2—Action by court 85 Amendment to correct error or omission 86 Amendment or cancellation on ground of contravention of condition etc. 87 Amendment or cancellation—loss of exclusive rights to use trade mark 88 Amendment or cancellation—other specified grounds 88A Applications by Registrar 89 Rectification may not be granted in certain cases if registered owner not at fault etc. 90 Duties and powers of Registrar Division 3—Amendment of certificate of registration 91 Amendment of certificate of registration Part 9—Removal of trade mark from Register for non‑use 92 Application for removal of trade mark from Register etc. 93 Time for making application 94 Referral to court 95 Notification of application 96 Notice of opposition 96A Circumstances in which opposition may proceed in name of a person other than the person who filed the notice 97 Removal of trade mark from the Register etc. if application unopposed etc. 98 Trade mark restored to Register in certain circumstances 99 Proceedings before Registrar 99A Dismissal of opposition filed with Registrar 100 Burden on opponent to establish use of trade mark etc. 101 Determination of opposed application—general 102 Determination of opposed application—localised use of trade mark 103 Registrar to comply with order of court 104 Appeal 105 Certificate—use of trade mark Part 10—Assignment and transmission of trade marks 106 Assignment etc. of trade mark 107 Applications for record to be made of assignment etc. of trade mark whose registration is sought 108 Recording of assignment etc. of trade mark whose registration is sought 109 Application for record of assignment etc. of registered trade mark to be entered in Register 110 Recording of assignment etc. of registered trade mark 111 Notification of application to be given to person recorded as claiming interest in trade mark etc. Part 11—Voluntary recording of claims to interests in and rights in respect of trade marks Division 1—Preliminary 112 Object of Part Division 2—Interests in, and rights in respect of, registered trade marks 113 Application for registration of interest or right in trade mark 114 Record of claims to interest etc. 115 Amendment and cancellation 116 Record not proof etc. of existence of right etc. Division 3—Interests in, and rights in respect of, unregistered trade marks 117 Application for recording of interest or right in trade mark 118 Record of claims to interest etc. 119 Amendment and cancellation Part 12—Infringement of trade marks 120 When is a registered trade mark infringed? 121 Infringement of trade mark by breach of certain restrictions 122 When is a trade mark not infringed? 122A Exhaustion of a registered trade mark in relation to goods 123 Services to which registered trade mark has been applied by or with consent of registered owner 124 Prior use of identical trade mark etc. 125 What courts may hear action for infringement of registered trade mark 126 What relief can be obtained from court 127 Special case—plaintiff not entitled to damages etc. 128 Circumstances in which action may not be brought 129 Application for relief from unjustified threats 130 Counterclaim for infringement 130A Mere notification of registered trade mark not a threat Part 13—Importation of goods infringing Australian trade marks 131 Object of Part 132 Notice of objection to importation 133 Comptroller‑General of Customs may seize goods infringing trade mark 133A Determinations about owners of goods 134 Notice of seizure 134A Inspection, release etc. of seized goods 135 Consent to forfeiture of seized goods 136 Claim for release of seized goods 136A Seized goods not claimed are forfeited 136B Late claim for release of seized goods 136C Objector to be notified of claim 136D Release of seized goods 136E Goods released but not collected are forfeited 137 Action for infringement of trade mark 138 Action for infringement by authorised user 139 Disposal of seized goods forfeited to the Commonwealth 140 Power of Comptroller‑General of Customs to retain control of goods 141 Insufficient security 141A Failure to comply with undertaking etc. 142 Commonwealth not liable for loss etc. suffered because of seizure 143 Power to require information 144 Modification in relation to Norfolk Island etc. Part 14—Offences 145 Falsifying or removing a registered trade mark 146 Falsely applying a registered trade mark 147 Making a die etc. for use in trade marks offence 147A Drawing etc. trade marks for use in offence 147B Possessing or disposing of things for use in trade marks offence 148 Goods with false trade marks 150 Aiding and abetting offences 151 False representations regarding trade marks 152 False entries in Register etc. 153 Disobeying summons etc. 154 Refusing to give evidence etc. 156 Acting or holding out without being registered 157 False representation about Trade Marks Office 157A Incorporated trade marks attorney must have a trade marks attorney director 159 Forfeiture orders under the proceeds of crime legislation 160 Conduct of employees and agents of natural persons Part 15—Collective trade marks 161 Object of Part 162 What is a collective trade mark? 163 Application of Act 164 Application for registration 165 Limitation on rights given by registered collective trade mark 166 Assignment etc. of collective trade mark 167 Infringement of collective trade mark Part 16—Certification trade marks 168 Object of Part 169 What is a certification trade mark? 170 Application of Act 171 Rights given by registration of a certification trade mark 172 Rights of persons allowed to use certification trade mark 173 Rules governing the use of certification trade marks 174 Registrar to send documents to Commission 175 Certificate by Commission 176 Acceptance or rejection of application 177 Additional ground for rejecting an application or opposing registration—certification trade mark not distinguishing certified goods or services 178 Variation of rules 179 Registrar must publish rules 180 Assignment of registered certification trade mark 180A Assignment of unregistered certification trade mark 181 Rectification of the Register by order of court 182 Variation of rules by order of court 183 Delegation of Commission's powers and functions Part 17—Defensive trade marks 184 Object of Part 185 Defensive trade marks 186 Application of Act 187 Additional grounds for rejecting application for registration or opposing registration 189 Cancellation of registration by Registrar Part 17A—Protected international trade marks under the Madrid Protocol 189A Regulations implementing the Madrid Protocol Part 18—Jurisdiction and powers of courts 190 Prescribed courts 191 Jurisdiction of the Federal Court 191A Jurisdiction of the Federal Circuit and Family Court of Australia (Division 2) 192 Jurisdiction of other prescribed courts 193 Exercise of jurisdiction 194 Transfer of proceedings 195 Appeals 196 Registrar may appear in appeals 197 Powers of Federal Court and Federal Circuit and Family Court of Australia (Division 2) on hearing an appeal 198 Practice and procedure of prescribed courts Part 19—Administration 199 Trade Marks Office and sub‑offices 200 Seal of Trade Marks Office 201 Registrar of Trade Marks 202 Registrar's powers 203 Exercise of power by Registrar 204 Registrar to act as soon as practicable 205 Deputy Registrar of Trade Marks 206 Delegation of Registrar's powers and functions Part 20—The Register and official documents 207 The Register 208 Register may be kept on computer 209 Inspection of Register 210 Evidence—the Register 211 Evidence—certified copies of documents Part 21—Miscellaneous Division 1—Applications and other documents 212 Making and signing applications etc. 213 Filing of documents 213A Approved means of filing documents 213B Directions by Registrar for filing of documents 213C Directions by Registrar for filing of evidence 214 Withdrawal of application etc. 214A Notifications by Registrar under this Act 215 Address for service 216 Change of name 217 Death of applicant etc. 217A Prescribed documents relating to trade marks to be made available for public inspection Division 2—Proceedings before the Registrar or a court 218 Description of registered trade mark 219 Evidence of trade usage 220 Death of party to proceeding before Registrar 221 Costs awarded by Registrar 222 Security for costs Division 2A—Computerised decision‑making 222A Computerised decision‑making Division 3—General 223 Fees 223AA Approved means of paying a fee 223A Doing act when Trade Marks Office reopens after end of period otherwise provided for doing act 224 Extension of time 225 Convention countries 226 Preparation etc. of documents relating to trade marks 226A Requirements for confidential treatment of information held in the Trade Marks Office 226B Certain proceedings do not lie 227 Notice regarding review of decision by Administrative Review Tribunal 228 Use of trade mark for export trade 228A Registration of trade marks attorneys 228B Deregistration of trade marks attorneys 229 Privileges of trade marks attorney and patent attorney 229AA Designated Manager may disclose information to Board 229A Designated Manager may disclose information to ASIC 229B Publishing personal information of registered trade marks attorneys 230 Passing off actions 231 Regulations 231A Regulations may make provision in relation to the Public Health (Tobacco and Other Products) Act 2023 Part 22—Repeal and transitional Division 1—Repeal 232 Repeal Division 2—Marks registered under the repealed Act 233 Automatic registration under this Act 234 Registration conclusive after 7 years 235 Term of registration 236 Renewal 237 Restoration of particulars to Register and renewal of registration where registration expired within 12 months before 1 January 1996 238 Disclaimers 239 Rules governing the use of certification trade marks registered in Part C of the old register 239A Linked trade marks Division 3—Matters pending immediately before repeal of repealed Act 240 Applications, notices etc.—general 241 Application for registration of trade mark 242 Divisional application in relation to pending application 243 More than one application lodged on same day for registration of same trade mark 244 Application for registration of trade mark whose registration has been sought in Convention country 245 Application for registration of a mark in Part C of the old register 246 Application for registration of a mark in Part D of the old register 247 Amendment of application—specification of goods or services 248 Revival of application for registration of trade mark that had lapsed before 1 January 1996 249 Application for registration of assignment etc. 250 Rectification of Register 251 Action for removal of trade mark from Register for non‑use 252 Action for infringement of trade mark etc. 253 Action under this Act for infringement of trade mark under repealed Act 254 Acts not constituting infringement of existing registered mark 254A Acts not constituting infringement of trade mark—pending application under the repealed Act 254B Part B defence—infringement of existing registered mark 254C Part B defence—infringement of trade mark (pending application under the repealed Act) 255 Application of this Act—general 256 Fees Division 4—General 257 The Registrar and Deputy Registrar 258 Confidential information received by Registrar under section 74 of the repealed Act 259 Documents kept under repealed Act 260 Address for service Endnotes Endnote 1—About the endnotes Endnote 2—Abbreviation key Endnote 3—Legislation history Endnote 4—Amendment history READER'S GUIDE This guide aims to give you a general idea 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 trade marks (for a definition of these terms, see sections 17, 162, 169 and 185 respectively) 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 did not deal with collective trade marks. In rewriting the legislation, some changes have been made to reflect international trends towards greater uniformity in that field 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 simplify the language as much as possible to make it easier for readers to understand the law. For 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 such 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 than registered owners) may have in 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 collective 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 17A: Enables the making of regulations to enable the performance of the obligations of Australia, or to obtain for Australia any advantage or benefit, under the Madrid Protocol. Those regulations prevail over this Act to the extent of any inconsistency. 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 Marks 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 defined 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 you 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 the contents or legal consequences of certain provisions or how to comply with them. Chart: The appendix to this Guide contains a chart showing the main steps involved in obtaining the registration of a trade mark. The chart is intended to be used only as an illustration and is not intended to have any other 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 rules 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. 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 this 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. Criminal Code The Criminal Code is set out in the Schedule to the Criminal Code Act 1995. It contains many general rules that apply to offences. Chapter 2 of the Criminal Code sets out the general principles of criminal responsibility. For example, it has default fault elements that apply to offences that do not specify a fault element and provides the consequences of an offence being an offence of strict liability. 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 Act immediately before it was repealed. The list of Acts cited above is not exhaustive. Other Acts may also affect the operation or interpretation of this Act. List of terms defined in section 6 action period intellectual property advice applicant lawyer applied to limitations applied in relation to month approved form notified trade mark assignment objector Australia old register Australian continental shelf opponent authorised use originate authorised user patent attorney Board pending certification trade mark person claim period personal information collective trade mark PPSA security interest Commission predecessor in title company preferred means Comptroller‑General of Customs prescribed court Convention country priority date date of registration Register deceptively similar registered owner defensive trade mark registered trade mark Deputy Registrar registered trade marks attorney Designated Manager Registrar designated owner registration number divisional application remove from the Register employee repealed Act examine seized goods existing registered mark services of a person Federal Court sign file similar goods filing date similar services geographical indication this Act goods of a person trade mark incorporated legal practice trade marks attorney director incorporated trade marks attorney trade marks work use of a trade mark in relation to services transmission word use of a trade mark working day use of a trade mark in relation to goods World Trade Organization An Act relating to trade marks Part 1—Preliminary 1 Short title This Act may be cited as the Trade Marks Act 1995. 2 Commencement (1) Part 1 commences on the day on which 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 and of the Northern Territory. (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 and the Australian continental shelf. Note: For Australia and Australian continental shelf see section 6. 4A Application of the Criminal Code Chapter 2 of the Criminal Code applies to all offences created by this Act. Note: Chapter 2 of the Criminal Code sets out the general principles of criminal responsibility. 5 Repeal of Trade Marks Act 1994 The Trade Marks Act 1994 is repealed. Part 2—Interpretation 6 Definitions (1) In this Act, unless the contrary intention appears: action period, in relation to particular seized goods, means the period prescribed by the regulations after notice of a claim for release of the goods is given to the objector under section 136C. 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. assignment, in relation to a trade mark, means an assignment by act of the parties concerned. 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. Board has the same meaning as in the Patents Act 1990. certification trade mark has the meaning given by section 169. claim period, in relation to particular seized goods, means the period prescribed by the regulations after notice of seizure of the goods is given to the designated owner under section 134. collective trade mark has the meaning given by section 162. Commission means the Australian Competition and Consumer Commission established under the Competition and Consumer Act 2010. company means a company registered under the Corporations Act 2001. Comptroller‑General of Customs means the person who is the Comptroller‑General of Customs in accordance with subsection 11(3) or 14(2) of the Australian Border Force Act 2015. Convention country means a foreign country or region of a kind prescribed by the regulations. date of registration means: (a) in relation to the registration of a trade mark in respect of particular goods or services other than a trade mark to which paragraph (b) applies—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); or (b) in relation to a trade mark to which subsection 239A(3) applies—the day referred to in subsection 239A(4). 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 Manager has the same meaning as in the Patents Act 1990. designated owner, in relation to goods imported into Australia, means: (a) the person identified as the owner of the goods on the entry made in relation to the goods under section 68 of the Customs Act 1901; or (b) if no such entry exists—the person determined to be the owner of the goods under section 133A of this Act. divisional application has the meaning given by section 45. employee means a person, other than the Registrar or a Deputy Registrar, who: (a) is a person engaged under the Public Service Act 1999 and is employed in the Trade Marks Office; or (b) is not such a person but performs services, in the Trade Marks Office, for or on behalf of the Commonwealth. 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. 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 whose 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 application for the registration of a trade mark other than an application referred to in another paragraph of this definition—the day on which the application is filed; or (b) in relation to a divisional application for the registration of a trade mark—the filing date of the application that is the parent application (within the meaning of section 45) in relation to the divisional application; or (c) in relation to an application to which section 241 applies—the day referred to in subsection 241(5); or (d) in relation to an application made under section 243—the day referred to in subsection 243(6); or (e) in relation to a prescribed application—the day determined in the prescribed way. geographical indication, in relation to goods, means a sign that identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin. goods of a person means goods dealt with or provided in the course of trade by the person. incorporated legal practice means a body corporate recognised under a law of the Commonwealth, a State or a Territory as an incorporated legal practice (however described). incorporated trade marks attorney has the meaning given by subsection 228A(6B). intellectual property advice has the meaning given by subsection 229(3). 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. month: the end of a period with a length expressed in months is worked out under section 6A. 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, means any person who has given under section 132 a notice in respect of those goods that is in force. 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 filed (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. pending, 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. personal information has the same meaning as in the Privacy Act 1988. PPSA security interest (short for Personal Property Securities Act security interest) means a security interest within the meaning of the Personal Property Securities Act 2009 and to which that Act applies, other than a transitional security interest within the meaning of that Act. Note 1: The Personal Property Securities Act 2009 applies to certain security interests in personal property. See the following provisions of that Act: (a) section 8 (interests to which the Act does not apply); (b) section 12 (meaning of security interest); (c) Chapter 9 (transitional provisions). Note 2: For the meaning of transitional security interest, see section 308 of the Personal Property Securities Act 2009. 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 assigned or transmitted to one or more than one other person before it was assigned or transmitted to the first‑mentioned person—that other person or any one of those other persons; or (b) if paragraph (a) does not apply—the person who assigned the trade mark, or from whom the trade mark was transmitted, 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 registration, section 106 provides that the trade mark may be assigned or transmitted with or without the goodwill of the business. preferred means: (a) in relation to filing a document with the Trade Marks Office—means the means specified under subsection 213A(4); or (b) in relation to paying a fee—means the means specified under subsection 223AA(4). 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. Note: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A. 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 and 206 deal with the office, powers and functions of the Registrar of Trade Marks. 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. sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, 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 attorney director has the meaning given by subsection 228A(6C). trade marks work has the meaning given by subsection 157A(8). 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). word includes an abbreviation of a word. 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. World Trade Organization means the body of that name established by the WTO Agreement, done at Marrakesh on 15 April 1994. Note: The text of the WTO Agreement is set out in Australian Treaty Series 1995 No. 8 ([1995] ATS 8). In 2009, the text of an Agreement in the Australian Treaty Series was accessible through the Australian Treaties Library on the AustLII website (www.austlii.edu.au). (2) For the purposes of this Act, a reference to a country includes a reference to a member of the World Trade Organization. (3) Despite subsection 14(2) of the Legislation Act 2003, regulations made for the purposes of the definition of Convention country in subsection (1) may make provision in relation to a matter by applying, adopting or incorporating, with or without modification, any matter contained in any other instrument or other writing as in force or existing from time to time. 6A Periods expressed in months For the purposes of this Act, a period expressed in months and dating from an event ends: (a) on the day, in the relevant subsequent month, which has the same number as the day of the event; or (b) if the relevant subsequent month has no day with the same number—on the last day of the month. Note: For example, a period of 3 months from an event on 30 September ends on 30 December under this rule. 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 person 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 trade 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 authorised 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 trade 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. (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 applied 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 used 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 referring 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 other 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 registration of a trade mark under this Act is pending from the time it is filed until: (a) it lapses (see sections 37 and 54A), 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: (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 The 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 the 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 all 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 (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 from grapes grown 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 that 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 contrary intention appears, a reference to a particular section of the repealed Act includes a reference to the 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 used, 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 trade mark—was being used in good faith; immediately before the regulations were registered under the Legislation Act 2003. Note: For registered trade mark see section 6. 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 classes 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. Note 2: For use see section 7. Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A. (2) The registered owner of a trade mark has 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 persons 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. (2) Equities in respect of a registered trade 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 appearing in the Register to be 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. (2A) Despite subsection (1), the recording in the Register of a right that is a PPSA security interest does not affect a dealing with a trade mark. Note: For PPSA security interest see section 6. (3) Equities in relation to a registered trade mark may be enforced against the registered owner, except to the prejudice of a purchaser in good faith for value. Note: For registered owner and registered trade mark see section 6. (4) Subsection (3) does not apply in relation to an equity that is a PPSA security interest. Note: The Personal Property Securities Act 2009 deals with the rights of purchasers of personal property (including intellectual property such as trade marks) that is subject to PPSA security interests. That Act also provides for the priority and enforcement of PPSA security interests. See the following provisions of that Act: (a) Part 2.5 (taking personal property free of security interests); (b) Part 2.6 (priority between security interests); (c) Chapter 4 (enforcement of security interests). 23 Limitation on rights if similar trade marks etc. registered by different persons If trade marks that are substantially identical 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 first‑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 becomes 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 trade 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: (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 was 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 commonly known way to describe 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 (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 registered 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 may 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: (i) at any time, with the consent of the registered owner; or (ii) during the prescribed period, if the registered 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; (c) the authorised user may cause to be displayed on goods in respect of which the trade mark is registered, or on their 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 Comptroller‑General of Customs 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 obliterate, 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. Note 2: For authorised user see section 8. Note 3: For what amounts to an infringement of a trade mark see Part 12. Note 4: For apply to and apply in relation to see section 9. (2) If the authorised user brings an action 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. 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 person 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 document, in accordance with the regulations; and (c) be made by a person or persons having legal personality. Note: For file see section 6. (2A) Despite paragraph (2)(c), an application for registration of a collective trade mark need not be made by a person or persons having legal personality. Note: For collective trade mark see section 162. (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 available for inspection by the public at the Trade Marks Office and its sub‑offices (if any). (5) An application 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 (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 application for the registration of a trade mark in one or more than one Convention country; and (b) within 6 months after the 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 registration of the trade mark in respect of any or all of those goods and/or services in accordance with the regulations. Note: For month see section 6. (2) The priority claimed is for the registration of the trade mark in respect of the goods or services: (a) if an application to register 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 register 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 copies 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 particulars 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 this Act for rejecting it. Note: For this Act see section 6. 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: (a) that question is to be decided by the Registrar; and (b) the decision of the Registrar is not subject to appeal and may not be called into question in an appeal o