| C2004C07638 | TRADE MARKS ACT 1955 [Note: This Act is "repealed" by Act No. 156 of 1994]
(#DATE 06:07:1994)
- Updated as at 6 July 1994 *1* The Trade Marks Act 1955 as shown in this reprint comprises Act No. 20, 1955 amended as indicated in the Tables below. Table of Acts ----------------------------------------------------------------------------------- Act Date Date of Application, Number and of Assent commencement saving or year transitional provisions ----------------------------------------------------------------------------------- Trade Marks Act 1955 20, 1955 15 June 1955 1 Aug 1958 (see Gazette 1958, p. 2115) Trade Marks Act 1958 42, 1958 23 Sept 1958 23 Sept 1958 - Statute Law Revision (Decimal Currency) Act 1966 93, 1966 29 Oct 1966 1 Dec 1966 - Statute Law Revision Act 1973 216, 1973 19 Dec 1973 31 Dec 1973 Ss. 9 (1) and 10 Administrative Changes (Consequential Provisions) Act 1976 91, 1976 20 Sept 1976 S. 3: (a) S. 4 Trade Marks Amendment Act 1976 163, 1976 9 Dec 1976 Ss. 3, 4, 7 and 10: Ss. 9 (2) and 1 Feb 1977 (see Gazette 10 (2) 1977, No. S3, p. 3) Remainder: Royal Assent Trade Marks Amendment Act 1978 130, 1978 31 Oct 1978 1 Feb 1979 (see Gazette - 1979, No. S14) Jurisdiction of Courts (Miscellaneous Amendments) Act 1979 19, 1979 28 Mar 1979 Parts II-XVII S. 124 (ss. 3-123): 15 May 1979 (see Gazette 1979, No. S86) Remainder: Royal Assent Trade Marks Amendment Act 1981 43, 1981 13 May 1981 22 June 1981 (see Ss. 5 (2)-(6) Gazette 1981, No. G24, and 10 (2) p. 2) Statute Law Revision Act 1981 61, 1981 12 June 1981 Part XXII (ss. 103, - 104): 1 Feb 1977 (b) Statute Law (Miscellaneous Amendments) Act (No. 2) 1982 80, 1982 22 Sept 1982 Part LXXVII (s. 280): S. 280 (2) Royal Assent (c) and (3) Statute Law (Miscellaneous Provisions) Act (No. 1) 1984 72, 1984 25 June 1984 S. 3: 23 July 1984 (d) - Statute Law (Miscellaneous Provisions) Act (No. 1) 1985 65, 1985 5 June 1985 S. 3: 3 July 1985 (e) - Statute Law (Miscellaneous Provisions) Act (No. 2) 1985 193, 1985 16 Dec 1985 S. 3: Royal Assent (f) Ss. 14 and 16 Jurisdiction of Courts (Miscellaneous Amendments) Act 1987 23, 1987 26 May 1987 S. 3: (g) S. 5 Industry, Technology and Commerce Legislation Amendment Act 1989 91, 1989 27 June 1989 S. 15: 14 Dec 1988 S. 27 Part 4 (ss. 20-25): 30 Nov 1989 (see Gazette 1989, No. S371) Part 5 (ss. 26, 27): 1 Aug 1989 (see Gazette 1989, No. S262) Remainder: Royal Assent Industry, Technology and Commerce Legislation Amendment Act (No. 2) 1989 10, 1990 17 Jan 1990 Ss. 40 and 43-49: S. 42 (2) 14 Feb 1990 (h) S. 2 (3) Ss. 41 and 42: 30 Apr (am. by 80, 1991 (h) 1992, s. 229) as amended by Patents Act 1990 83, 1990 30 Oct 1990 30 Apr 1991 - Patents Act 1990 83, 1990 30 Oct 1990 30 Apr 1991 - Industry, Technology and Commerce Legislation Amendment Act 1992 168, 1992 11 Dec 1992 Part V (ss. 14, 15): - 30 July 1975 Remainder: Royal Assent Industry, Technology and Regional Development Legislation Amendment Act 1994 58, 1994 9 Apr 1994 29 June 1994 (see S. 4 (2) Gazette 1994 No. S211) --------------------------------------------------------------------------------- (a) The Trade Marks Act 1955 was amended by section 3 only of the Administrative Changes (Consequential Provisions) Act 1976, subsection 2 (7) of which provides as follows: "(7) The amendments of each other Act specified in the Schedule made by this Act shall be deemed to have come into operation on 22 December 1975." (b) The Trade Marks Act 1955 was amended by Part XXII (sections 103 and 104) only of the Statute Law Revision Act 1981, subsection 2 (9) of which provides as follows: "(9) Part XXII shall be deemed to have come into operation on 1 February 1977." (c) The Trade Marks Act 1955 was amended by Part LXXVII (section 280) only of the Statute Law (Miscellaneous Amendments) Act (No. 2) 1982, subsection 2 (1) of which provides as follows: "(1) Sections 1, 2, 166 and 195 and Parts III, VI, VII, XVI, XXXVI, XLIV, LI, LIII, LIV, LXI and LXXVII shall come into operation on the day on which this Act receives the Royal Assent." (d) The Trade Marks Act 1955 was amended by section 3 only of the Statute Law (Miscellaneous Provisions) Act (No. 1) 1984, subsection 2 (1) of which provides as follows: "(1) Subject to this section, this Act shall come into operation on the twenty-eighth day after the day on which it receives the Royal Assent." (e) The Trade Marks Act 1955 was amended by section 3 only of the Statute Law (Miscellaneous Provisions) Act (No. 1) 1985, subsection 2 (1) of which provides as follows: "(1) Subject to this section, this Act shall come into operation on the twenty-eighth day after the day on which it receives the Royal Assent." (f) The Trade Marks Act 1955 was amended by section 3 only of the Statute Law (Miscellaneous Provisions) Act (No. 2) 1985, subsection 2 (1) of which provides as follows: "(1) Subject to this section, this Act shall come into operation on the day on which it receives the Royal Assent." (g) The Trade Marks Act 1955 was amended by section 3 only of the Jurisdiction of Courts (Miscellaneous Amendments) Act 1987, subsection 2 (2) of which provides as follows: "(2) The amendments made by this Act to an Act specified in the Schedule shall come into operation on such day as is fixed by Proclamation in relation to those amendments." The date fixed in pursuance of subsection 2 (2) was 1 September 1987 (see Gazette 1987, No. S217). (h) The Trade Marks Act 1955 was amended by sections 40-49 only of the Industry, Technology and Commerce Legislation Amendment Act (No. 2) 1989, subsections 2 (3) and (7) of which provide as follows: "(3) Subsection 15 (1), sections 18, 41 and 42, and Part 6, commence on the same day as the Patents Act 1990. "(7) The remaining provisions of this Act commence 28 days after this Act receives the Royal Assent." Table of Amendments ad=added or inserted am=amended rep=repealed rs=repealed and substituted --------------------------------------------------------------------------------- Provision affected How affected --------------------------------------------------------------------------------- S. 3 rep. No. 216, 1973 Ss. 4, 5 am. No. 163, 1976 S. 6 am. No. 216, 1973; No. 163, 1976; No. 130, 1978; No. 193, 1985; No. 23, 1987; Nos. 10 and 83, 1990 S. 6A ad. No. 163, 1976 am. No. 43, 1981 S. 8 rs. No. 163, 1976 S. 10 am. No. 42, 1958; Nos. 91 and 163, 1976; No. 91, 1989; No. 10, 1990; No. 58, 1994 S. 11 rs. No. 91, 1989; No. 58, 1994 S. 14 am. No. 163, 1976 S. 14A ad. No. 10, 1990 Ss. 16, 17 am. No. 10, 1990 S. 18 am. No. 163, 1976; No. 65, 1985 Ss. 19, 20 am. No. 163, 1976; No. 130, 1978; No. 23, 1987 S. 21 am. No. 163, 1976; No. 23, 1987 S. 22 am. No. 163, 1976 S. 23 am. No. 163, 1976; No. 130, 1978; No. 23, 1987 Ss. 24, 25 am. No. 130, 1978 S. 26 am. No. 163, 1976; No. 130, 1978; No. 23, 1987 S. 27 am. No. 163, 1976 S. 29 am. No. 216, 1973 S. 30 am. No. 163, 1976; No. 23, 1987 S. 31 am. No. 130, 1978 S. 32 am. No. 163, 1976 S. 33 am. No. 130, 1978 Ss. 34, 35 am. No. 163, 1976; No. 130, 1978 S. 36 am. No. 163, 1976; No. 130, 1978; No. 72, 1984; No. 23, 1987 S. 38 am. No. 163, 1976 Ss. 39, 40 am. No. 163, 1976; No. 130, 1978 S. 40A ad. No. 10, 1990 S. 42 am. No. 163, 1976; No. 23, 1987 S. 43 am. No. 163, 1976; No. 130, 1978; No. 23, 1987 S. 45 am. No. 163, 1976; No. 130, 1978 S. 46 am. No. 163, 1976; No. 23, 1987 S. 48 am. No. 163, 1976; No. 19, 1979 S. 49 am. No. 163, 1976 S. 51 am. No. 163, 1976; No. 23, 1987 S. 54 am. No. 163, 1976; No. 19, 1979; No. 23, 1987 S. 55 am. No. 163, 1976 S. 56 am. No. 163, 1976; No. 130, 1978 S. 58 am. No. 163, 1976; No. 130, 1978 S. 59 am. No. 163, 1976 Ss. 60, 61 am. No. 163, 1976; No. 130, 1978 S. 62 am. No. 130, 1978 S. 64 am. No. 163, 1976; No. 130, 1978 S. 67 am. No. 163, 1976 rs. No. 43, 1981 S. 68 am. No. 130, 1978 Ss. 69-72 am. No. 163, 1976 Ss. 74, 75 am. No. 163, 1976; No. 130, 1978 S. 76 am. No. 130, 1978 S. 77 am. No. 163, 1976; No. 130, 1978 S. 78 am. No. 163, 1976 S. 81 am. No. 163, 1976; No. 23, 1987 S. 82 am. No. 163, 1976; No. 130, 1978 Ss. 83-85 am. No. 130, 1978 S. 86 am. No. 163, 1976; No. 130, 1978; No. 61, 1981; No. 23, 1987 S. 88 am. No. 163, 1976; No. 130, 1978 S. 90 am. No. 163, 1976 S. 92 am. No. 163, 1976 Ss. 93, 94 am. No. 163, 1976; No. 130, 1978 S. 98 am. No. 163, 1976; No. 130, 1978; No. 65, 1985; No. 168, 1992 Ss. 99, 100 am. No. 93, 1966; No. 163, 1976; No. 65, 1985 rs. No. 168, 1992 S. 101 am. No. 163, 1976 rep. No. 168, 1992 S. 102 am. No. 93, 1966; No. 163, 1976 rs. No. 65, 1985 S. 103 am. Nos. 91 and 163, 1976; No. 130, 1978 rs. No. 43, 1981 S. 104 am. No. 93, 1966; No. 163, 1976; No. 43, 1981; No. 65, 1985 S. 105 am. No. 216, 1973; No. 163, 1976 S. 106 am. No. 168, 1992 S. 107 am. No. 130, 1978 S. 107A ad. No. 168, 1992 S. 108 am. No. 163, 1976; No. 193, 1985; No. 10, 1990; No. 58, 1994 S. 109 am. No. 163, 1976 Part XV (ss. 111-116) rep. No. 163, 1976 Part XV (ss. 111-115A) ad. No. 163, 1976 S. 111 rs. No. 163, 1976 am. No. 19, 1979 S. 112 rs. No. 163, 1976 am. No. 19, 1979; No. 43, 1981; No. 23, 1987 S. 113 rs. No. 163, 1976 am. No. 43, 1981 S. 114 rs. No. 163, 1976 am. No. 19, 1979; No. 43, 1981; No. 23, 1987 S. 115 rs. No. 163, 1976 am. No. 23, 1987 S. 115A ad. No. 163, 1976 am. No. 23, 1987 S. 116 rep. No. 163, 1976 Part XVA (ss. 116, 116A) ad. No. 163, 1976 S. 116 ad. No. 163, 1976 am. No. 43, 1981 S. 116A ad. No. 163, 1976 rep. No. 19, 1979 S. 118 am. No. 130, 1978 S. 118A ad. No. 65, 1985 rs. No. 168, 1992 Ss. 120, 121 am. No. 93, 1966; No. 163, 1976; No. 65, 1985 S. 124 am. No. 163, 1976; No. 43, 1981 S. 127 am. No. 163, 1976 S. 129 am. No. 10, 1990 S. 133 am. No. 216, 1973; No. 193, 1985 S. 135 am. No. 42, 1958; No. 93, 1966; No. 163, 1976; No. 65, 1985 S. 137 am. No. 93, 1966; No. 163, 1976; No. 65, 1985 S. 138 am. No. 163, 1976 rep. No. 83, 1990 S. 139 am. No. 163, 1976; No. 130, 1978; No. 23, 1987 S. 142 am. No. 163, 1976; No. 23, 1987 S. 145 am. No. 93, 1966; No. 163, 1976; No. 65, 1985 S. 146 am. No. 93, 1966; No. 163, 1976; No. 130, 1978; No. 65, 1985 S. 147 am. No. 93, 1966; No. 163, 1976; No. 65, 1985; No. 10, 1990 --------------------------------------------------------------------------------- TRADE MARKS ACT 1955 - TABLE OF PROVISIONS
TABLE
TABLE OF PROVISIONS
Section
PART I - PRELIMINARY
1. Short title
2. Commencement
4. Repeal
5. Application of Act
6. Interpretation
6A. References to prescribed courts
7. Crown to be bound
8. Application of Act to Norfolk Island
9. No new application to be made under State Acts
PART II - ADMINISTRATION
10. Registrar and other officers
11. Delegation by Registrar
12. Trade Marks Office and sub-offices
13. Seal of Trade Marks Office
PART III - THE REGISTER OF TRADE MARKS
14. Register of Trade Marks
14A. Register may be kept wholly or partly by computer
15. Trusts not to be noticed
16. Inspection of Register
17. Register and certified copies to be evidence
18. False entries in Register
19. Correction of Register
20. Registration of assignment
21. Alteration of registered trade mark
22. Rectification of Register
23. Provisions as to non-use of trade mark
PART IV - REGISTRABLE TRADE MARKS
24. Registrable trade marks - Part A
25. Registrable trade marks - Part B
26. Distinctiveness
27. Trade marks in colour
28. Scandalous and improper marks
29. Registration may be refused of certain words etc. in trade marks
30. Names etc. of living persons
31. Trade marks to be registered for particular goods or services
32. Disclaimers
33. Identical marks
34. Concurrent use
35. Jointly owned trade marks
36. Association of trade marks
37. Assignment of associated trade marks
38. Use of trade marks whether associated or otherwise
39. Series of trade marks
PART V - APPLICATIONS FOR REGISTRATION
40. Application for registration
40A. Withdrawal of application
41. Applications to be examined
42. Action on Examiner's report
43. Division of application
44. Acceptance of application
45. Application may be accepted where trade mark is to be used by
assignee or registered user
46. Appeals
47. Advertisement of acceptance
48. Limit of time for proceeding with application
PART VI - OPPOSITION TO REGISTRATION
49. Notice of opposition
50. Hearing of opposition
51. Appeal to a prescribed court
52. Security for costs
PART VII - REGISTRATION AND EFFECT OF REGISTRATION
53. Registration of trade mark
54. Time for registration
55. Duration of registration
56. Words used as name or description of an article or substance
57. Powers of registered proprietor
58. Rights given by registration
59. Registration evidence of validity
60. Limitation on removal of trade mark after 3 years
61. Registration conclusive after 7 years
62. Infringement of trade marks
63. Infringement of trade mark by breach of certain restrictions
64. Acts not constituting infringement
65. Relief in infringement actions
66. Evidence of trade usage
67. Action or proceeding may be instituted in prescribed court
68. Passing off actions
PART VIII - RENEWAL OF REGISTRATION
69. Renewal of registration
70. Procedure on expiry of period of registration
71. Restoration of trade mark removed for non-payment of renewal fee
72. Status of un-renewed trade mark
PART IX - REGISTERED USERS
73. Application of Part
74. Registered users
75. Variation etc. of registration
76. Cancellation of registration
77. Effect of permitted user
78. Infringement proceedings
79. Rights of registered user not assignable
80. Hearing by Registrar
81. Appeals
PART X - ASSIGNMENT OF TRADE MARKS
82. Assignment and transmission of trade marks
PART XI - CERTIFICATION TRADE MARKS
83. Certification trade marks
84. Rights given by registration
85. Rules governing the use of certification trade marks
86. Matters to be considered before acceptance
87. Alteration of rules
88. Rectification of Register
89. Certification trade marks not assignable
90. Transitional provisions
91. Rules to be open for inspection
92. Application of Act to certification trade mark
PART XII - DEFENSIVE TRADE MARKS
93. Defensive registration of well-known trade marks
94. Rectification of Register
95. Cancellation by Registrar
96. Rights given by registration
97. Application of Act
PART XIII - PROTECTION OF TRADE MARKS
98. Forgery etc. of trade marks
99. Selling etc. goods with false marks
100. Importing goods with false marks
102. Aiding and abetting offences
103. Importation of goods infringing Australian trade marks
104. Power to require information in respect of imported goods
bearing fraudulent marks
105. Modification in relation to Territories
106. What taken to be forgery of trade mark
107. When trade mark deemed applied
107A. Forfeiture orders under the Proceeds of Crime Act 1987
PART XIV - INTERNATIONAL ARRANGEMENTS
108. Convention countries
109. Applications under International Conventions
110. Manner of application under this Part
PART XV - JURISDICTION AND POWERS OF COURTS
111. Interpretation
112. Jurisdiction of prescribed courts
113. Transfer of proceedings
114. Appeals from prescribed courts
115. Intervention by Registrar
115A. Powers of prescribed courts
PART XVA - APPLICATION FOR REVIEW OF CERTAIN DECISIONS BY
ADMINISTRATIVE APPEALS TRIBUNAL
116. Application for review
PART XVI - MISCELLANEOUS
117. Use of trade mark for export trade
118. Trade mark not to be deemed to be deceptive or confusing in
certain cases
118A. Subsections 99 (1) and 100 (1) may be dealt with summarily
in certain circumstances
119. Powers of Registrar
120. Disobedience to summons an offence
121. Refusal to give evidence an offence
122. Recovery of costs
123. Certificate of validity
124. Groundless threats of legal proceedings
125. Counter-claim by defendant for infringement
126. Description of trade marks in pleadings
127. Power of amendment
128. Exercise of discretionary power by Registrar
129. Fees
130. Extension of time
131. Power to extend times by reason of errors in Trade Marks
Office etc.
132. Address for service
133. Declaration by disabled person
134. Death of party to a proceeding
135. Unauthorised persons not to act in trade mark matters
136. Privileges of patent attorneys
137. Unregistered persons not to describe themselves as trade marks
agents
139. Adaptation of classification
140. Making and signing of applications
141. Examiners' reports to be communicated
142. Security for costs
143. Costs of attendance of patent attorney
144. Service of orders on appeal
145. Improperly describing an office as the Trade Marks Office
146. Falsely representing a trade mark as registered an offence
147. Regulations
THE SCHEDULE
Repeal of Acts
TRADE MARKS ACT 1955 - LONG TITLE
SECT
An Act relating to Trade Marks
TRADE MARKS ACT 1955 - PART I
PART I - PRELIMINARY
TRADE MARKS ACT 1955 - SECT 1
Short title
SECT
1. This Act may be cited as the Trade Marks Act 1955.*1*
SEE NOTES TO FIRST ARTICLE OF THIS CHAPTER .
TRADE MARKS ACT 1955 - SECT 2
Commencement
SECT
2. This Act shall come into operation on a date to be fixed by
Proclamation.*1*
SEE NOTES TO FIRST ARTICLE OF THIS CHAPTER .
TRADE MARKS ACT 1955 - SECT 4
Repeal
SECT
4. The Acts specified in the first column of the Schedule are repealed to
the extent respectively specified in the second column of that Schedule.
TRADE MARKS ACT 1955 - SECT 5
Application of Act
SECT
5. (1) This Act applies to and in relation to applications for the
registration of trade marks made after the commencement of this Act and to and
in relation to trade marks registered on those applications.
(2) Subject to section 90, this Act also applies to and in relation to trade
marks registered under the repealed Acts and those trade marks shall, subject
to the next succeeding subsection, be deemed to be registered in Part A of the
Register.
(3) The Registrar may, on the application of the registered proprietor of a
trade mark referred to in the last preceding subsection, transfer the trade
mark from Part A to Part B of the Register.
(4) Subject to section 90, the repealed Acts apply, notwithstanding their
repeal, to and in relation to applications for the registration of trade marks
made before the commencement of this Act and to and in relation to the
registration of trade marks on those applications, but this Act applies to and
in relation to trade marks so registered and those trade marks shall, subject
to the next succeeding subsection, be deemed to be registered in Part A of the
Register.
(5) Before the acceptance of an application for the registration of a trade
mark made before the commencement of this Act, the Registrar may, upon the
request of the applicant, treat the application as an application for
registration in Part B of the Register and deal with the application
accordingly.
(6) The repealed Acts apply, notwithstanding their repeal, to and in
relation to applications for the registration of a person as the registered
user of a trade mark made before the commencement of this Act and to and in
relation to the registration of persons as registered users on those
applications, but this Act applies to and in relation to persons so
registered.
TRADE MARKS ACT 1955 - SECT 6
Interpretation
SECT
6. (1) In this Act, unless the contrary intention appears:
"assignment" means assignment by act of the parties concerned;
"Australia" includes Norfolk Island;
"Convention country" means a country in respect of which there is in force
for the time being a regulation under section 108 declaring that country to be
a Convention country for the purposes of this Act;
"Deputy Registrar" means a Deputy Registrar of Trade Marks;
"Federal Court" means the Federal Court of Australia;
"legal practitioner" means a barrister or solicitor of the High Court or of
the Supreme Court of a State or Territory;
"limitations" means limitations of the right to the exclusive use of a trade
mark given by the registration of the trade mark, including limitations of
that right as to:
(a) mode of use;
(b) use within a territorial area within Australia; or
(c) use in relation to goods to be exported to a market outside Australia;
"mark" includes a device, brand, heading, label, ticket, name, signature,
word, letter or numeral, or any combination thereof;
"Official Journal" has the same meaning as in the Patents Act 1990;
"permitted use", in relation to a registered trade mark, means the use of
the trade mark:
(a) by a registered user of the trade mark in relation to goods or
services:
(i) with which he is connected in the course of trade;
(ii) in respect of which the trade mark remains registered; and
(iii) for which he is registered as a registered user; and
(b) which complies with any conditions or restrictions to which his
registration is subject;
"person" includes a body politic and a body of persons, whether corporate or
unincorporate;
"prescribed court" means the Federal Court, the Supreme Court of a State,
the Supreme Court of the Australian Capital Territory, the Supreme Court of
the Northern Territory of Australia or the Supreme Court of Norfolk Island;
"registered proprietor", in relation to a trade mark, means the person for
the time being entered in the Register as proprietor of the trade mark;
"registered trade mark" means a trade mark which is registered under this
Act;
"registered user" means a person who is registered as such under section
74;
"the expiration of the last registration", in relation to a registered trade
mark, means the date of the expiration of the original registration of the
trade mark or of the last renewal of registration, as the case may be;
"the Register" means the Register of Trade Marks under this Act;
"the Registrar" means the Registrar of Trade Marks holding office under this
Act;
"the repealed Acts" means the Acts repealed by this Act;
"this Act" includes the regulations;
"trade mark" means:
(a) except in relation to Part XI, a mark used or proposed to be used in
relation to goods or services for the purpose of indicating, or so as to
indicate, a connexion in the course of trade between the goods or services and
a person who has the right, either as proprietor or as registered user, to use
the mark, whether with or without an indication of the identity of that
person; and
(b) in relation to Part XI, a mark registrable, or registered, in Part C of
the Register;
"transmission" means transmission by operation of law, devolution on the
personal representative of a deceased person and any other mode of transfer
not being assignment;
"word" includes an abbreviation of a word.
(2) In this Act:
(a) references to the use of a mark shall be construed as references to the
use of a printed or other visual representation of the mark; and
(b) references to the use of a mark in relation to goods shall be construed
as references to the use of the mark upon, or in physical or other relation
to, goods.
(3) For the purposes of this Act, a trade mark shall be deemed to be
deceptively similar to another trade mark if it so nearly resembles that other
trade mark as to be likely to deceive or cause confusion.
TRADE MARKS ACT 1955 - SECT 6A
References to prescribed courts
SECT
6A. A reference in this Act to a prescribed court shall be read:
(a) in relation to the institution of an appeal or other proceeding, as a
reference to a prescribed court having jurisdiction with respect to matters
arising under this Act in respect of which the appeal or other proceeding is
instituted; and
(b) in relation to the exercise of jurisdiction, as a reference to a
prescribed court exercising jurisdiction in accordance with section 112.
TRADE MARKS ACT 1955 - SECT 7
Crown to be bound
SECT
7. This Act binds the Crown in right of the Commonwealth and of the several
States.
TRADE MARKS ACT 1955 - SECT 8
Application of Act to Norfolk Island
SECT
8. (1) This Act extends to Norfolk Island.
(2) An application for registration of a trade mark is not receivable under
a law (other than this Act) in force in Norfolk Island.
TRADE MARKS ACT 1955 - SECT 9
No new application to be made under State Acts
SECT
9. An application for the registration of a trade mark under a State Act
relating to the registration of trade marks is not receivable.
TRADE MARKS ACT 1955 - PART II
PART II - ADMINISTRATION
TRADE MARKS ACT 1955 - SECT 10
Registrar and other officers
SECT
10. (1) There is to be a Registrar of Trade Marks.
(1A) The Registrar has such powers and functions as are conferred on him or
her under this Act or any other Act.
(3) There is to be at least one Deputy Registrar of Trade Marks.
(3A) Subject to any direction by the Registrar, a Deputy Registrar has all
the powers and functions of the Registrar under this Act or any other Act,
except the Registrar's powers of delegation under section 11.
(3B) A power or function of the Registrar under this Act or any other Act,
when exercised or performed by a Deputy Registrar, shall, for the purposes of
this Act or any other Act, be taken to have been exercised or performed by the
Registrar.
(3C) The exercise of a power, or the performance of a function, of the
Registrar under this Act or any other Act by a Deputy Registrar does not
prevent the exercise of the power, or the performance of the function, by the
Registrar.
(4) Where, under this Act or any other Act, the exercise of a power or
function by the Registrar, or the operation of a provision of this Act or any
other Act, depends on the opinion, belief or state of mind of the Registrar in
relation to a matter:
(a) that power or function may be exercised by a Deputy Registrar on the
opinion, belief or state of mind of the Deputy Registrar in relation to that
matter; and
(b) that provision may operate on the opinion, belief or state of mind of a
Deputy Registrar in relation to that matter.
(6) There shall be so many Examiners of Trade Marks as are necessary.
(7) Persons holding office as Examiners of Trade Marks at the commencement
of this Act shall continue to hold that office.
TRADE MARKS ACT 1955 - SECT 11
Delegation by Registrar
SECT
11. (1) The Registrar may, by writing, delegate all or any of the
Registrar's powers under this Act or any other Act to:
(a) a prescribed person, or a prescribed class of persons, holding or
performing the duties of an Australian Public Service office in the Trade
Marks Office; or
(b) a prescribed employee, or a prescribed class of employees, employed in
the Trade Marks Office.
(2) In this section:
"employee" has the same meaning as in the Public Service Act 1922.
TRADE MARKS ACT 1955 - SECT 12
Trade Marks Office and sub-offices
SECT
12. (1) For the purposes of this Act, there shall be an office which shall
be known as the Trade Marks Office.
(2) There shall be a sub-office of the Trade Marks Office in each State.
(3) A document required or permitted by this Act to be lodged at the Trade
Marks Office may be lodged at a sub-office of the Trade Marks Office and a
reference in this Act to lodgment at the Trade Marks Office includes a
reference to lodgment at a sub-office of the Trade Marks Office.
TRADE MARKS ACT 1955 - SECT 13
Seal of Trade Marks Office
SECT
13. There shall be a seal of the Trade Marks Office and impressions of the
seal shall be judicially noticed.
TRADE MARKS ACT 1955 - PART III
PART III - THE REGISTER OF TRADE MARKS
TRADE MARKS ACT 1955 - SECT 14
Register of Trade Marks
SECT
14. (1) There shall be kept at the Trade Marks Office a Register of Trade
Marks, in which shall be entered:
(a) particulars of registered trade marks; and
(b) such other matters as are prescribed.
(2) The Register shall be divided into 4 parts, which shall be known as Part
A, Part B, Part C and Part D, respectively.
(3) Subject to the next succeeding subsection, the Register of Trade Marks
existing at the commencement of this Act shall be incorporated with and form
part of Part A of the Register under this Act.
(4) The Registrar shall transfer from Part A of the Register to Part C of
the Register marks registered as standardization trade marks under the
repealed Acts.
TRADE MARKS ACT 1955 - SECT 14A
Register may be kept wholly or partly by computer
SECT
14A. (1) The Register may be kept wholly or partly by use of a computer.
(2) If the Register is kept wholly or partly by use of a computer:
(a) references in this Act to an entry in the Register include references to
a record of particulars kept by use of the computer and comprising the
Register or part of the Register; and
(b) references in this Act to particulars being registered, or entered in
the Register, include references to the keeping of a record of those
particulars as part of the Register by use of the computer; and
(c) references in this Act to the amendment, alteration or rectification of
the Register include references to the amendment, alteration or rectification
of the record of particulars kept by use of the computer and comprising the
Register or part of the Register.
TRADE MARKS ACT 1955 - SECT 15
Trusts not to be noticed
SECT
15. Notice of a trust, expressed, implied or constructive, shall not be
entered in the Register or be received by the Registrar.
TRADE MARKS ACT 1955 - SECT 16
Inspection of Register
SECT
16. (1) The Register shall be open to the inspection of the public at all
convenient times.
(2) If a record of particulars is kept by use of a computer, subsection (1)
is to be taken to be complied with, to the extent that the Register consists
of those particulars, by giving members of the public access to a computer
terminal which they can use to inspect the particulars, either on a screen or
in the form of a computer printout.
TRADE MARKS ACT 1955 - SECT 17
Register and certified copies to be evidence
SECT
17. (1) The Register is evidence of all matters required or authorized by
this Act to be entered in the Register.
(1A) If the Register is wholly or partly kept by use of a computer, a
document signed by the Registrar and reproducing in writing all or any of the
particulars comprising the Register, or that part of it, is admissible in any
proceedings as prima facie evidence of those particulars so reproduced.
(2) The Registrar may, subject to this Act, supply copies of or extracts
from the Register, or of or from a document or publication in the Trade Marks
Office, certified by writing under his hand and the seal of the Trade Marks
Office and a copy or extract so certified and sealed is admissible in evidence
in all courts and proceedings without further proof or production of the
original.
(3) The Registrar may, subject to this Act, certify, by writing under his
hand and the seal of the Trade Marks Office:
(a) that an entry, matter or thing required by or under this Act or the
repealed Acts to be made or done, or not to be made or done, has, or has not,
as the case may be, been made or done; or
(b) that a book, document or publication in the Trade Marks Office was made
available for public inspection in the Trade Marks Office on the date
specified in the certificate;
and such a certificate is evidence of the statements contained in the
certificate.
TRADE MARKS ACT 1955 - SECT 18
False entries in Register
SECT
18. A person shall not wilfully:
(a) make or cause to be made a false entry in the Register; or
(b) produce or tender in evidence a document falsely purporting to be a copy
of or extract from an entry in the Register or of or from a document in the
Trade Marks Office.
Penalty:
(a) in the case of a natural person - $5,000 or imprisonment for 2 years, or
both; or
(b) in the case of a body corporate - $25,000.
TRADE MARKS ACT 1955 - SECT 19
Correction of Register
SECT
19. (1) The Registrar may, on application by the registered proprietor of a
trade mark, amend or alter the Register by:
(a) correcting an error in the entry of a trade mark in the Register;
(b) entering a change in the name, address or description of the registered
proprietor;
(c) cancelling the entry of a trade mark in the Register;
(d) amending the specification of the goods or services in respect of which
the trade mark is registered but so that the amendment does not in any way
extend the rights given by the registration of the trade mark; or
(e) entering a disclaimer or memorandum relating to the trade mark which
does not in any way extend the rights given by the registration of the trade
mark;
and may make any consequential amendment or alteration in the certificate of
registration, and for that purpose may require the certificate of registration
to be produced to him.
(2) The Registrar may, on request made by a registered user of a trade mark,
correct an error, or enter a change, in the name, address or description of
the registered user.
(3) An appeal lies to the Federal Court from a decision of the Registrar
under subsection (1) of this section.
TRADE MARKS ACT 1955 - SECT 20
Registration of assignment
SECT
20. (1) Where a person becomes entitled by assignment or transmission to a
registered trade mark, he shall make application to the Registrar to register
his title, and the Registrar shall, on receipt of the application and of proof
of title to his satisfaction, register that person as the proprietor of the
trade mark in respect of the goods or services in respect of which the
assignment or transmission has effect and cause particulars of the assignment
or transmission to be entered in the Register.
(2) An appeal lies to the Federal Court from a decision of the Registrar
under the last preceding subsection.
(3) Except in the case of an appeal under this section or of an application
under section 22, a document or instrument in respect of which no entry has
been made in the Register in accordance with the provisions of subsection (1)
is not, unless the court otherwise directs, admissible in evidence in a court
in proof of a title to a registered trade mark.
TRADE MARKS ACT 1955 - SECT 21
Alteration of registered trade mark
SECT
21. (1) The registered proprietor of a trade mark may apply to the Registrar
for leave to alter the trade mark in a manner not substantially affecting its
identity and the Registrar may refuse the leave or grant it on such terms and
subject to such conditions and limitations as he thinks fit.
(2) The Registrar may cause an application under this section to be
advertised in the Official Journal where it appears to him that it is
desirable to do so.
(3) A person may, within the prescribed time, give notice to the Registrar
of opposition to the application and shall serve a copy of the notice on the
applicant.
(4) The Registrar shall, after hearing the parties, if desirous of being
heard, decide the matter.
(5) An appeal lies to the Federal Court from a decision of the Registrar
under the last preceding subsection.
(6) Where leave is granted, notice of leave having been granted shall be
advertised in the Official Journal and the advertisement shall include the
trade mark as altered unless the trade mark has already been advertised in the
form to which it has been altered in an advertisement under subsection (2).
TRADE MARKS ACT 1955 - SECT 22
Rectification of Register
SECT
22. (1) Subject to this Act, a prescribed court may, on the application of a
person aggrieved or of the Registrar, order the rectification of the
Register:
(a) by the making of an entry wrongly omitted to be made in the Register;
(b) by the expunging or amendment of an entry wrongly made in or remaining
in the Register;
(c) by the insertion in the Register of a condition or limitation affecting
the registration of a trade mark which ought to be inserted; or
(d) by the correction of an error or defect in the Register.
(2) On application to a prescribed court by a person aggrieved or by the
Registrar, the prescribed court may make such order as it thinks fit for
expunging or varying the registration of a trade mark, on the ground of a
contravention of, or failure to observe, a condition or limitation entered in
the Register in relation to the trade mark.
(3) The power to order the rectification of the Register conferred by this
section includes power to order the removal of a registration in Part A of the
Register to Part B of the Register.
(4) The Registrar shall not make application to a prescribed court under
this section unless he considers the application desirable in the public
interest.
(5) Notice of an application to a prescribed court under this section (other
than an application by the Registrar) shall be given to the Registrar, who may
appear and be heard and shall appear if so directed by the prescribed court.
(6) An office copy of an order under this section shall be served on the
Registrar, who shall, upon receipt of the order, take such steps as are
necessary to give effect to the order.
TRADE MARKS ACT 1955 - SECT 23
Provisions as to non-use of trade mark
SECT
23. (1) Subject to this section and to section 93, a prescribed court or the
Registrar may, on application by a person aggrieved, order a trade mark to be
removed from the Register in respect of any of the goods or services in
respect of which it is registered, on the ground:
(a) that the trade mark was registered without an intention in good faith on
the part of the applicant for registration that it should be used in relation
to those goods or services by him or, if it was registered under subsection
(1) of section 45, by the body corporate or registered user concerned, and
that there has, in fact, been no use in good faith of the trade mark in
relation to those goods or services by the registered proprietor or a
registered user of the trade mark for the time being earlier than 1 month
before the application; or
(b) that, up to 1 month before the date of the application, a continuous
period of not less than 3 years had elapsed during which the trade mark was a
registered trade mark and during which there was no use in good faith of the
trade mark in relation to those goods or services by the registered proprietor
or a registered user of the trade mark for the time being.
(2) Except where an applicant has been permitted under section 34 to
register a substantially identical or deceptively similar trade mark in
respect of the goods or services to which the application relates, or the
prescribed court or the Registrar is of opinion that the applicant can
properly be permitted to register such a trade mark, a prescribed court or the
Registrar may refuse an application made under the last preceding subsection
in relation to any goods or services if there has been, before the relevant
date or during the relevant period, as the case may be, use in good faith of
the trade mark by the registered proprietor or a registered user of the trade
mark for the time being in relation to goods or services in respect of which
the trade mark is registered, being:
(a) where the application relates to goods - goods of the same description
as those goods or services that are closely related to those goods; or
(b) where the application relates to services - services of the same
description as those services or goods that are closely related to those
services.
(3) Where, in relation to goods in respect of which a trade mark is
registered:
(a) the matters referred to in paragraph (b) of subsection (1) are shown as
far as regards failure to use the trade mark in relation to goods to be sold,
or otherwise traded in, in a particular place in Australia (otherwise than for
export from Australia), or in relation to goods to be exported to a particular
market outside Australia; and
(b) a person has been permitted under section 34 to register a substantially
identical or deceptively similar trade mark in respect of those goods under a
registration extending to use in relation to goods to be sold, or otherwise
traded in, in that place (otherwise than for export from Australia), or in
relation to goods to be exported to that market, or the prescribed court or
the Registrar is of opinion that that person might properly be permitted to
register such a trade mark;
a prescribed court or the Registrar may, on application by that person, direct
that the registration of the first-mentioned trade mark shall be subject to
such conditions or limitations as the prescribed court or the Registrar thinks
proper for securing that that registration shall cease to extend to use of the
trade mark in relation to goods to be sold, or otherwise traded in, in that
place (otherwise than for export from Australia), or in relation to goods to
be exported to that market.
(3A) Where, in relation to services in respect of which a trade mark is
registered:
(a) the matters referred to in paragraph (b) of subsection (1) are shown as
far as regards failure to use the trade mark in relation to services provided
in a particular place in Australia; and
(b) a person has been permitted under section 34 to register a substantially
identical or deceptively similar trade mark in respect of those services under
a registration extending to use in relation to services provided in that
place, or the prescribed court or the Registrar is of the opinion that that
person may properly be permitted to register such a trade mark;
a prescribed court or the Registrar may, on application by that person, direct
that the registration of the first-mentioned trade mark shall be subject to
such conditions or limitations as the prescribed court or the Registrar thinks
proper for securing that that registration shall cease to extend to use of the
trade mark in relation to services provided in that place.
(4) An applicant is not entitled to rely, for the purposes of paragraph (b)
of subsection (1), or for the purposes of subsection (3) or (3A), on failure
to use a trade mark if the failure is shown to have been due to special
circumstances in the trade and not to an intention not to use or to abandon
the trade mark in relation to the goods or services to which the application
relates.
(5) Where proceedings concerning a trade mark are pending in a court, an
application under this section shall not be made except to the prescribed
court.
(6) If the Registrar considers that an application made to him under this
section ought to be decided by a prescribed court, he may refer the
application to a prescribed court and the prescribed court may hear and
determine the application as though it had been made to the prescribed court
in the first instance.
(7) An appeal lies to the Federal Court from an order or direction of the
Registrar under this section.
(8) An application to a prescribed court under this section and an
application to the Registrar shall be made as prescribed by the regulations.
(9) An office copy of an order of a prescribed court under this section
shall be served on the Registrar who shall take such steps as are necessary to
give effect to the order.
TRADE MARKS ACT 1955 - PART IV
PART IV - REGISTRABLE TRADE MARKS
TRADE MARKS ACT 1955 - SECT 24
Registrable trade marks - Part A
SECT
24. (1) A trade mark is registrable in Part A of the Register if it contains
or consists of:
(a) the name of a person represented in a special or particular manner;
(b) the signature of the applicant for registration or of some predecessor
in his business;
(c) an invented word;
(d) a word not having direct reference to the character or quality of the
goods or services in respect of which registration is sought and not being,
according to its ordinary meaning, a geographical name or a surname; or
(e) any other distinctive mark.
(2) A name, signature or word (not being a name, signature or word described
in paragraph (a), (b), (c) or (d) of the last preceding subsection) is not
registrable in Part A of the Register unless it is, by evidence, shown to be
distinctive.
(3) A trade mark may be registered in Part A of the Register in respect of
any goods or services notwithstanding the registration of the trade mark or of
a part or parts of the trade mark in Part B of the Register, in the name of
the same person, in respect of the same goods or services or other goods or
services.
TRADE MARKS ACT 1955 - SECT 25
Registrable trade marks - Part B
SECT
25. (1) A trade mark is registrable in Part B of the Register if it is
distinctive, or is not distinctive but is capable of becoming distinctive, of
goods or services in respect of which registration of the trade mark is sought
and with which the applicant for registration is or may be connected in the
course of trade.
(2) A trade mark may be registered in Part B of the Register in respect of
any goods or services notwithstanding the registration of the trade mark or of
a part or parts of the trade mark in Part A of the Register, in the name of
the same person, in respect of the same goods or services or other goods or
services.
TRADE MARKS ACT 1955 - SECT 26
Distinctiveness
SECT
26. (1) For the purposes of this Act, a trade mark is not distinctive of the
goods or services of a person unless it is adapted to distinguish goods or
services with which that person is or may be connected in the course of trade
from goods or services in respect of which no such connexion subsists, either
generally or, where the trade mark is sought to be registered, or is
registered, subject to conditions or limitations, in relation to use subject
to those conditions or limitations.
(2) In determining whether a trade mark is distinctive, regard may be had to
the extent to which:
(a) the trade mark is inherently adapted so to distinguish; and
(b) by reason of the use of the trade mark or of any other circumstances,
the trade mark does so distinguish.
(3) Where:
(a) an application for registration of a trade mark has been made by a
person;
(b) before the date of the application, the trade mark was used by a person
other than the applicant under the control of, and with the consent and
authority of, the applicant;
(c) an application has been made by the applicant and that other person for
the registration of that other person as a registered user of the trade mark;
and
(d) the Registrar is satisfied that that other person is entitled to be
registered as a registered user of the trade mark immediately after the
registration of the trade mark;
the Registrar may, for the purpose of determining whether the trade mark is
distinctive of the goods or services of the applicant, treat use of the trade
mark by that other person as equivalent to use of the trade mark by the
applicant and may make an order that the trade mark is so distinctive.
(4) An appeal lies to the Federal Court from an order of the Registrar under
the last preceding subsection.
(5) Where an order is made under subsection (3) that the trade mark is
distinctive of the goods or services of the applicant, the registration of the
trade mark shall cease to have effect if, at the expiration of the prescribed
period or such further period, not exceeding 6 months, as the Registrar
allows, that other person has not become registered as the registered user of
the trade mark.
TRADE MARKS ACT 1955 - SECT 27
Trade marks in colour
SECT
27. (1) A trade mark may be limited in whole or in part to 1 or more colours
and, in that case, the fact that the trade mark is so limited shall be taken
into consideration for the purpose of determining whether the trade mark is
distinctive.
(2) In so far as a trade mark is registered without limitation as to colour
it shall be deemed to be registered for all colours.
TRADE MARKS ACT 1955 - SECT 28
Scandalous and improper marks
SECT
28. A mark:
(a) the use of which would be likely to deceive or cause confusion;
(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 court of
justice;
shall not be registered as a trade mark.
TRADE MARKS ACT 1955 - SECT 29
Registration may be refused of certain words etc. in trade marks
SECT
29. (1) The Registrar may refuse to accept an application for the
registration of a trade mark which contains or consists of any of the
following marks or a mark so nearly resembling any of those marks as to be
likely to be taken for that mark:
(a) the word or words "Patent", "Patented", "By Royal Letters Patent",
"Registered", "Registered Design", "Copyright", "To counterfeit this is a
forgery", or a word or words to the like effect;
(b) a representation of the Sovereign or of a member of the Royal Family;
(c) a representation of:
(i) the Royal Arms, crests, armorial bearings, insignia or devices;
(ii) any of the Royal crowns; or
(iii) the national flag of a part of the Queen's dominions;
(d) the word "Royal" or any other word, or any letters or device, likely to
lead persons to think that the applicant has or has had Royal or Government
patronage or authority;
(e) a representation of the Arms, or of any flag or seal, of the
Commonwealth or of a State or Territory;
(f) a representation of the Arms or emblem of a city or town in Australia or
of a public authority or public institution in Australia;
(g) a representation of a mark notified by the International Union for the
Protection of Industrial Property as not entitled to registration under
international arrangements; or
(h) a mark which is specified in the regulations as being, for the purposes
of this section, a prohibited mark.
(2) The regulations may provide that a mark in relation to which the last
preceding subsection applies (not being a registered trade mark or a mark in
use in good faith as a trade mark) shall not be used as a trade mark or as
part of a trade mark, either at all or after a date specified in the
regulations.
TRADE MARKS ACT 1955 - SECT 30
Names etc. of living persons
SECT
30. (1) Where a person makes an application for registration of a trade mark
which consists of or includes the name or representation of a living person or
of a person believed by the Registrar to be living, the Registrar may require
the applicant to furnish him with the consent of that person to the name or
representation appearing on the trade mark before he proceeds with the
registration of the trade mark.
(2) Where a person makes an application for registration of a trade mark
which consists of or includes the name or a representation of a person
recently dead, or of a person believed by the Registrar to be recently dead,
the Registrar may require the applicant to furnish him with the consent of the
legal representative of the deceased person to the name or representation
appearing on the trade mark before he proceeds with the registration of the
trade mark.
(3) An appeal lies to the Federal Court from a decision of the Registrar
under either of the last 2 preceding subsections.
TRADE MARKS ACT 1955 - SECT 31
Trade marks to be registered for particular goods or services
SECT
31. (1) A trade mark shall be registered in respect of any or all of the
goods or services comprised in a prescribed class of goods or services.
(2) If a question arises as to the class in which goods or services are
comprised, that question shall be decided by the Registrar and the decision of
the Registrar is not subject to appeal and shall not be called in question in
an appeal or other proceedings under this Act.
TRADE MARKS ACT 1955 - SECT 32
Disclaimers
SECT
32. (1) If a trade mark:
(a) contains parts:
(i) which are not the subject of separate applications by the
proprietor for registration as trade marks; or
(ii) which are not separately registered by the proprietor as trade
marks; or
(b) contains matter which is common to the trade or is otherwise not
distinctive;
the Registrar or a prescribed court, in deciding whether the trade mark shall
be registered or shall remain upon the Register, may, in his or its
discretion, require as a condition that the proprietor shall disclaim any
right to the exclusive use of any of those parts, or of that matter, to the
exclusive use of which the Registrar or the prescribed court holds the
proprietor not to be entitled or that the proprietor shall make such other
disclaimer as the Registrar or the prescribed court considers to be proper for
the purpose of defining the rights of the proprietor under the registration.
(2) No such disclaimer affects the rights of the proprietor of the trade
mark which do not arise out of the registration of the trade mark.
TRADE MARKS ACT 1955 - SECT 33
Identical marks
SECT
33. (1) Subject to this Act, a trade mark is not capable of registration by
a person in respect of goods if it is substantially identical with or
deceptively similar to a trade mark which is registered, or is the subject of
an application for registration, by another person in respect of the same
goods, of goods of the same description as those goods or of services that are
closely related to those goods, unless the date of registration of the
first-mentioned trade mark is, or will be, earlier than the date of
registration of the second-mentioned trade mark.
(2) Subject to this Act, a trade mark is not capable of registration by a
person in respect of services if it is substantially identical with or
deceptively similar to a trade mark which is registered, or is the subject of
an application for registration, by another person in respect of the same
services, of services of the same description as those services, or of goods
that are closely related to those services, unless the date of registration of
the first-mentioned trade mark is, or will be, earlier than the date of
registration of the second-mentioned trade mark.
(3) Where, in accordance with this section, a trade mark is not capable of
registration by reason of the existence of another trade mark, the Registrar
may defer acceptance of the application for registration of the
first-mentioned trade mark until the second-mentioned trade mark has been
registered.
TRADE MARKS ACT 1955 - SECT 34
Concurrent use
SECT
34. (1) In case of honest concurrent use or of other special circumstances
which, in the opinion of the Registrar, make it proper so to do, the Registrar
may permit the registration of trade marks which are substantially identical
or deceptively similar, or, but for the honest concurrent use or other special
circumstances would be deceptively similar, for the same goods or services or
other goods or services, by more than 1 proprietor subject to such conditions
and limitations (if any) as the Registrar imposes.
(2) Where a person has, by himself or his predecessors in business,
continuously used a trade mark before the use, or before the date of
registration, whichever is the earlier, of another registered trade mark by
the registered proprietor of that other trade mark, by his predecessors in
business or by a registered user of that other trade mark, the Registrar shall
not refuse to register the first-mentioned trade mark by reason of the
registration of that other trade mark.
TRADE MARKS ACT 1955 - SECT 35
Jointly owned trade marks
SECT
35. (1) Where the relations between 2 or more persons interested in a trade
mark are such that no 1 of them is entitled as between himself and the other
or others to use the trade mark except:
(a) on behalf of both or all of them; or
(b) in relation to goods or services with which both or all of them are
connected in the course of trade;
those persons may be registered as joint proprietors of the trade mark, and
this Act has effect in relation to any rights of those persons to the use of
the trade mark as if those rights were rights of a single person.
(2) Subject to the last preceding subsection, nothing in this Act authorizes
the registration of 2 or more persons who use a trade mark independently, or
propose so to use it, as joint proprietors of the trade mark.
TRADE MARKS ACT 1955 - SECT 36
Association of trade marks
SECT
36. (1) Where a trade mark which is registered, or is the subject of an
application for registration, in respect of any goods:
(a) is substantially identical with another trade mark which is registered,
or is the subject of an application for registration, in the name of the same
proprietor in respect of the same goods, of goods of the same description as
those goods or of services that are closely related to those goods; or
(b) so nearly resembles such a trade mark as to be likely to deceive or
cause confusion if used by a person other than the proprietor;
the Registrar may, at any time, require that the trade marks shall be entered
in the Register as associated trade marks.
(1A) Where a trade mark which is registered, or is the subject of an
application for registration, in respect of any services:
(a) is substantially identical with another trade mark which is registered,
or is the subject of an application for registration, in the name of the same
proprietor in respect of the same services, of services of the same
description as those services, or of goods that are closely related to those
services; or
(b) so nearly resembles such a trade mark as to be likely to deceive or
cause confusion if used by a person other than the proprietor;
the Registrar may, at any time, require that the trade marks shall be entered
in the Register as associated trade marks.
(2) On application made by the registered proprietor of 2 or more associated
trade marks, the Registrar may, if he is satisfied that there would be no
likelihood of deception or confusion being caused, dissolve the association
with respect to 1 or more of those trade marks and amend the Register
accordingly.
(3) An appeal lies to the Federal Court from a decision of the Registrar
under this section.
TRADE MARKS ACT 1955 - SECT 37
Assignment of associated trade marks
SECT
37. Associated trade marks are assignable or transmissible only as a whole
and not separately, but, subject to this Act, they shall for all other
purposes be deemed to have been registered as separate trade marks.
TRADE MARKS ACT 1955 - SECT 38
Use of trade marks whether associated or otherwise
SECT
38. (1) Where, under this Act, use of a trade mark is required to be proved
for any purpose, the Registrar or a prescribed court may, if and so far as he
or it thinks right, accept use of an associated registered trade mark or of
the trade mark with additions or alterations not substantially affecting the
identity of the trade mark, as an equivalent for the use required to be
proved.
(2) The use of the whole of a registered trade mark shall, for the purposes
of this Act, be deemed to be also a use of any registered trade mark, being a
part thereof, registered in the name of the same proprietor.
TRADE MARKS ACT 1955 - SECT 39
Series of trade marks
SECT
39. (1) Where a person who claims to be the proprietor of several trade
marks for the same goods, for goods of the same description within a single
class, for the same services or for services of the same description within a
single class seeks to register those trade marks and the trade marks, although
they resemble each other in material particulars, differ in respect of:
(a) statements or representations as to the goods or services in respect of
which the trade marks are used or proposed to be used;
(b) statements or representations as to number, price, quality or names of
places;
(c) other matter which is not distinctive and does not substantially affect
the identity of the trade marks; or
(d) colour;
or in respect of any 2 or more of those matters, the trade marks may be
registered as a series in 1 registration.
(2) All the trade marks in a series of trade marks so registered shall be
deemed to be, and shall be registered as, associated trade marks.
TRADE MARKS ACT 1955 - PART V
PART V - APPLICATIONS FOR REGISTRATION
TRADE MARKS ACT 1955 - SECT 40
Application for registration
SECT
40. (1) A person who claims to be the proprietor of a trade mark may make
application to the Registrar for the registration of that trade mark in Part A
or Part B of the Register.
(2) The application:
(a) shall specify the goods or services in respect of which registration is
sought; and
(b) shall be lodged by being left at, or delivered by post to, the Trade
Marks Office.
(3) An application shall not be made in respect of goods or services
comprised in more than 1 class.
TRADE MARKS ACT 1955 - SECT 40A
Withdrawal of application
SECT
40A. (1) An application is to be treated as having been withdrawn if, and
only if, the applicant lodges at the Trade Marks Office a written notice of
withdrawal signed by the applicant.
(2) A written notice of withdrawal may be lodged by leaving it at, or
delivering it by post to, the Trade Marks Office.
TRADE MARKS ACT 1955 - SECT 41
Applications to be examined
SECT
41. An Examiner shall, in respect of each application, ascertain and report
whether:
(a) the application is as prescribed; and
(b) the trade mark is capable of registration under this Act.
TRADE MARKS ACT 1955 - SECT 42
Action on Examiner's report
SECT
42. (1) If the Examiner reports adversely to an application under the last
preceding section, the applicant may amend the application so as to remove the
grounds of objection and the amended application shall be again reported on in
like manner as the original application.
(2) If the applicant does not amend the application to the satisfaction of
the Registrar, the Registrar may direct that the application be amended to his
satisfaction within such time as the Registrar allows.
(3) An amendment shall not be made or directed under either of the last 2
preceding subsections if the amendment would substantially affect the identity
of the trade mark before amendment.
(4) An appeal lies to the Federal Court from a direction of the Registrar
under subsection (2).
TRADE MARKS ACT 1955 - SECT 43
Division of application
SECT
43. (1) Where a part of a trade mark which is the subject of an application
for registration is separately registrable as a trade mark, the applicant may,
before the application has been accepted or refused, make a further
application for the registration of that part in respect of goods or services
in relation to which the first-mentioned application was made.
(2) A further application so made shall, if the Registrar so directs, be
deemed to have been lodged on the date on which the first-mentioned
application was lodged.
(3) Where an application has been made for registration of a trade mark in
respect of certain goods or services and, before the application has been
accepted or refused, the applicant has made a further application for the
registration of that trade mark in respect of goods or services included in
the description of goods or services in respect of which the first-mentioned
application was made, the Registrar may direct that the further application
shall be deemed to have been lodged on the date on which the first-mentioned
application was lodged.
(4) An appeal lies to the Federal Court from a direction of the Registrar
under either of the last 2 preceding subsections.
TRADE MARKS ACT 1955 - SECT 44
Acceptance of application
SECT
44. (1) If the Registrar is satisfied that there is no lawful ground of
objection to an application, or that the grounds of objection to an
application have been removed, the Registrar shall accept the application
without conditions or limitations or subject to such conditions or limitations
as he thinks fit; if he is not so satisfied, he may refuse to accept the
application.
(2) In the case of an application for registration of a trade mark in Part A
of the Register, the Registrar may, with the consent of the applicant, instead
of refusing to accept the application, treat the application as an application
for registration in Part B of the Register and deal with the application
accordingly.
(3) Where, after the acceptance of an application for registration of a
trade mark but before the registration of the trade mark, the Registrar is
satisfied:
(a) that the application has been accepted in error; or
(b) that, in the special circumstances of the case, the 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 withdraw the acceptance and proceed as if the application
had not been accepted.
TRADE MARKS ACT 1955 - SECT 45
Application may be accepted where trade mark is to be used by assignee or
registered user
SECT
45. (1) An application for the registration of a trade mark may be accepted,
and the trade mark may be registered, notwithstanding that the applicant does
not use or propose to use the trade mark:
(a) if the Registrar is satisfied that a body corporate is about to be
constituted and that the applicant intends to assign the trade mark to the
body corporate with a view to the use by the body corporate of the trade mark
in relation to the goods or services in respect of which registration is
sought; or
(b) if an application has been made for the registration of a person 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.
(2) Where a trade mark is registered under the last preceding subsection in
the name of an applicant who relies on an intention to assign to a body
corporate, then, unless within such period as is prescribed or within such
further period, not exceeding 6 months, as the Registrar allows, the body
corporate has been registered as the proprietor of the trade mark in respect
of the goods or services in respect of which the trade mark is registered, the
registration shall cease to have effect at the expiration of that period and
the Registrar shall amend the Register accordingly.
TRADE MARKS ACT 1955 - SECT 46
Appeals
SECT
46. (1) An appeal lies to the Federal Court from a refusal by the Registrar
to accept an application or from the acceptance by the Registrar of an
application subject to conditions or limitations.
(2) The Registrar is entitled to appear and be heard upon the hearing of the
appeal and shall appear if so directed by the Federal Court.
TRADE MARKS ACT 1955 - SECT 47
Advertisement of acceptance
SECT
47. Where an application has been accepted, the Registrar shall give notice
in writing of the acceptance to the applicant and shall advertise the
acceptance in the Official Journal.
TRADE MARKS ACT 1955 - SECT 48
Limit of time for proceeding with application
SECT
48. (1) Subject to this section, where an application has not been accepted
within 12 months after the date on which the first report of the Examiner was
sent to the applicant, the Registrar shall give notice of the non-acceptance
to the applicant and if, at the expiration of 1 month from the date of the
notice or at the expiration of such further time as the Registrar allows, the
application has not been accepted, the application shall lapse.
(2) Where, in respect of an application, an appeal under any provision of
this Act has been instituted or an application has been made to the
Administrative Appeals Tribunal for a review of a decision, the Registrar
shall not give notice of the non-acceptance of the first-mentioned application
until the expiration of 3 months after the determination or other disposal of
the appeal or review or until the expiration of such further time as the court
to which the appeal, or any further appeal, is brought, or the Administrative
Appeals Tribunal, or the court to which any appeal arising out of the decision
of the Administrative Appeals Tribunal, is brought, as the case may be,
allows.
(3) Where:
(a) the time within which an appeal, or an application to the Administrative
Appeals Tribunal, mentioned in subsection (2) may be instituted or made has
not expired; or
(b) the applicant has died;
the Registrar shall not give notice of the non-acceptance of the application
for the registration of a trade mark until such time as he determines.
(4) Where acceptance of an application has been deferred under subsection
(2) of section 33, the Registrar shall not give notice of the non-acceptance
of the application until the expiration of 3 months after the registration of
the second-mentioned trade mark referred to in that subsection.
TRADE MARKS ACT 1955 - PART VI
PART VI - OPPOSITION TO REGISTRATION
TRADE MARKS ACT 1955 - SECT 49
Notice of opposition
SECT
49. (1) A person may, within 3 months after the date of the advertisement of
the acceptance of an application, or within such further period, not exceeding
3 months, as the Registrar, on application made to him within the
first-mentioned period, allows, by notice in writing specifying the grounds of
opposition and lodged at the Trade Marks Office, oppose the registration of
the trade mark.
(2) The opponent shall serve a copy of the notice on the applicant.
TRADE MARKS ACT 1955 - SECT 50
Hearing of opposition
SECT
50. (1) The Registrar shall, after giving to the applicant and the opponent
an opportunity of being heard, decide:
(a) to refuse to register the trade mark;
(b) to register the trade mark subject to such conditions or limitations as
he thinks fit; or
(c) to register the trade mark without conditions or limitations.
(2) In determining the opposition the Registrar may take into account a
ground of objection whether relied upon by the opponent or not.
TRADE MARKS ACT 1955 - SECT 51
Appeal to a prescribed court
SECT
51. The applicant or an opponent may appeal to the Federal Court from a
decision of the Registrar under the last preceding section.
TRADE MARKS ACT 1955 - SECT 52
Security for costs
SECT
52. If a person giving notice of opposition neither resides nor carries on
business in Australia, the Registrar may order him to give security for costs
within a specified time and, if the order is not complied with, the opposition
shall lapse.
TRADE MARKS ACT 1955 - PART VII
PART VII - REGISTRATION AND EFFECT OF REGISTRATION
TRADE MARKS ACT 1955 - SECT 53
Registration of trade mark
SECT
53. (1) If there is no opposition to the registration of a trade mark, or,
in the case of opposition, if the Registrar's decision, or the decision on
appeal from that decision, is that the trade mark should be registered, the
Registrar shall register the trade mark, in the name of the proprietor, in the
appropriate part of the Register.
(2) Subject to this Act, a trade mark shall be registered as of the date of
the lodging of the application for registration and that date shall be deemed
for the purposes of this Act to be the date of registration.
TRADE MARKS ACT 1955 - SECT 54
Time for registration
SECT
54. (1) Subject to this section, a trade mark shall not be registered after
12 months from the date of the advertisement of the acceptance of the
application.
(2) Where the Registrar has allowed an extension of time within which notice
of opposition to the registration of a trade mark may be given and notice of
opposition has not been given, an extension of time for the same period, or
the aggregate of the periods, if more than 1, after the period of 12 months
referred to in the last preceding subsection shall be allowed for the
registration of the trade mark.
(3) Where the registration of a trade mark is delayed by:
(a) opposition to the registration of the trade mark;
(b) proceedings in a court; or
(c) an application to the Administrative Appeals Tribunal;
that trade mark may be registered within such time as:
(d) in a case to which paragraph (a) applies - the Registrar directs;
(e) in a case to which paragraph (b) applies - the court or, if the
proceedings are discontinued, the Registrar directs; or
(f) in a case to which paragraph (c) applies - the Tribunal or a court to
which an appeal arising out of the decision of the Tribunal is brought,
directs, or, if the proceedings before the Tribunal are, or any such appeal
is, discontinued, as the Registrar directs.
(4) Where the applicant dies before the expiration of the time which would
otherwise be allowed for registering a trade mark, the trade mark may be
registered at any time within 12 months after his death or within such further
period as the Registrar directs.
(5) Where a trade mark cannot be registered within the time allowed by or
under this section, that time may, on application made to the Registrar within
the prescribed time, but subject to the regulations, be extended for such
further time as is prescribed.
(6) Where a trade mark has not been registered within the time which is
applicable to it under this section the application shall lapse.
TRADE MARKS ACT 1955 - SECT 55
Duration of registration
SECT
55. (1) Subject to the next succeeding subsection, the registration of a
trade mark as of a date after the commencement of this Act shall be for a
period of 7 years.
(2) The registration of a trade mark as of a date before the commencement of
this Act shall be for a period of 14 years.
(3) The registration of a trade mark may be renewed from time to time in
accordance with Part VIII.
TRADE MARKS ACT 1955 - SECT 56
Words used as name or description of an article or substance
SECT
56. (1) Subject to this section, the registration of a trade mark does not
become invalid by reason only of the use, after the date of the registration,
of a word or words which the trade mark contains, or of which it consists, as
the name or description of an article, substance or service.
(2) The succeeding subsections have effect where:
(a) there is a well-known and established use of a word as the name or
description of an article, substance or service by a person or persons
carrying on a trade in that article, substance or service, not being used in
relation to goods or services connected in the course of trade with the
proprietor or a registered user of the trade mark or, in the case of a
certification trade mark, in relation to goods or services certified by the
proprietor; or
(b) the article or substance was formerly manufactured under a patent or the
service formerly provided was a patented process, as the case requires, a
period of 2 years or more after the patent has ceased has elapsed, and the
word is the only practicable name or description of the article, substance or
service.
(3) If the trade mark consists solely of that word, the registration of the
trade mark, so far as regards registration in respect of the article or
substance or of any goods of the same description, or of the services or of
any services of the same description, as the case requires, shall be deemed
for the purposes of section 22 to be an entry wrongly remaining in the
Register.
(4) If the trade mark contains that word and other matter, a prescribed
court, in deciding whether the trade mark shall remain in the Register, so far
as regards registration in respect of the article or substance or of any goods
of the same description, or of the services or of any services of the same
description, may, in the case of a decision in favour of the trade mark
remaining in the Register, require as a condition that the proprietor shall
disclaim any right to the exclusive use of that word in relation to that
article or substance or to any goods of the same description, or to the
services or to any service of the same description, as the case may be, but no
such disclaimer affects any rights of the proprietor of the trade mark except
such as arise out of the registration of the trade mark in respect of which
the disclaimer is made.
(5) For the purposes of any other legal proceedings relating to the trade
mark:
(a) if the trade mark consists solely of that word, all rights of the
registered proprietor to the exclusive use of the trade mark; or
(b) if the trade mark contains that word and other matter, all rights of the
registered proprietor to the exclusive use of that word;
in relation to the article or substance or to any goods of the same
description, or to the service or to any services of the same description, as
the case requires, shall be deemed to have ceased on the date at which the use
mentioned in paragraph (a) of subsection (2) first became well-known and
established, or at the expiration of the period of 2 years mentioned in
paragraph (b) of that subsection.
TRADE MARKS ACT 1955 - SECT 57
Powers of registered proprietor
SECT
57. (1) Subject to this Act, the registered proprietor of a trade mark has,
subject to any rights appearing from the Register to be vested in some other
person, power to assign the trade mark and to give good discharges for any
consideration for the assignment.
(2) Equities in respect of a trade mark may be enforced in like manner as in
respect of other personal property.
TRADE MARKS ACT 1955 - SECT 58
Rights given by registration
SECT
58. (1) Subject to this Act, the registration of a trade mark in Part A or
Part B of the Register, if valid, gives to the registered proprietor of the
trade mark the right to the exclusive use of the trade mark in relation to the
goods or services in respect of which the trade mark is registered and to
obtain relief in respect of infringement of the trade mark in the manner
provided by this Act.
(2) The rights acquired by the registration of a trade mark are subject to
any conditions or limitations to which the registration is subject.
(3) Where 2 or more persons are proprietors of registered trade marks which
are substantially identical or deceptively similar, whether for the same goods
or services or other goods or services, rights of exclusive use of either of
those trade marks are not (except so far as their respective rights have been
defined by the Registrar or a prescribed court) acquired by any 1 of those
persons as against any other of those persons by registration of the trade
marks but each of those persons has otherwise the same rights as against other
persons (not being registered users) as he would have if he were the sole
registered proprietor.
TRADE MARKS ACT 1955 - SECT 59
Registration evidence of validity
SECT
59. In legal proceedings relating to a registered trade mark (including
applications under section 22), the original registration of the trade mark
and the registration of any assignment or transmission of the trade mark shall
be deemed to be valid unless the contrary is shown.
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