Trade Marks Act 1994 (Cth)
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The Parliament of Australia enacts:
(a) each external Territory; and
(b) the Australian continental shelf; and
(c) the waters above the Australian continental shelf; and
(d) the airspace above Australia, each external Territory and the Australian continental shelf.
(a) the Trade Practices Commission established under the
Trade Practices Act 1974; or(b) a member of the Commission (within the meaning of that Act);
(a) is an officer or employee within the meaning of the
Public Service Act 1922 and is performing duties in the Trade Marks Office, the Patent Office or the Designs Office; or(b) is not such an officer or employee but performs services, for or on behalf of the Commonwealth, in the Trade Marks Office, the Patent Office or the Designs Office;
Note: See section 222:
(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:
(i) if the Registrar has given a direction under section 50—the day on which the initial application (within the meaning of Division 3 of Part 4) was filed; or
(ii) if subparagraph (i) does not apply—the day on which the divisional application is filed; or
(c) in relation to an application to which section 249 applies—the day referred to in subsection 249(6); or
(d) in relation to an application made under section 251—the day referred to in subsection 251(3);
(a) originated in that country, region or locality; and
(b) have a quality, reputation or other characteristic attributable to their geographical origin;
(a) mode of use;
(b)use within a territorial area within Australia: or
(c) use in relation to goods to be exported;
(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;
(a) a reference to the
use of a trade mark is a reference to the use of any visual or aural representation of a trade mark in relation to goods or services; and(b) a reference to the
use of a trade mark in relation to goods is a reference to the use of a representation of a trade mark upon, or in physical or other relation to, the goods.
(a) has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark; or
(b) has used an associated trade mark.
Note: A person may bean authorised user of a trade mark even if the person is not a registered user of the trade mark.
(a) dealt with or provided by another person; and
(b) in relation to which the trade mark is used;
the trade mark is taken, for the purposes of subsection (1), to have been used by the other person under the control of the owner. This subsection does not, however, limit the meaning of the expression “under the control of” in subsection (1).
(a) a representation of 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 representation of 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 representation of a trade mark is taken also to be
applied in relation to goods or services if it is used in:(i) a sign or advertisement, including a televised advertisement; or
(ii) 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 maybe) to a person following a request or order made by referring to the trade mark as so used.
(a) is substantially identical with another trade mark that is registered, or whose registration is being sought, in the name of the same person and in respect of,
(i) the same goods; or
(ii) goods of the same description as those goods; or
(iii) services that are closely related to those goods; or
(b) so nearly resembles such a trade mark that the use of the first trade mark by another person would be likely to deceive or cause confusion;
the 2 trade marks are
(a) is substantially identical with another trade mark that is registered, or whose registration is being sought, in the name of the same person and in respect of:
(i) the same services; or
(ii) services of the same description as those services; or
(iii) goods that are closely related to those services; or
(b) so nearly resembles such a trade mark that the use of the first trade mark by another person would be likely to deceive or cause confusion;
the 2 trade marks are
(a) the Registrar has not yet made a decision about it under section 32; or
(b) the Registrar has accepted it under subsection 32(3) but has not yet made a decision whether to register the trade mark or not under section 55.
(a) it had not lapsed or been withdrawn under the repealed Act; and
(b) before the commencing day:
(i) the Registrar had not made a decision about it under subsection 44(1) of that Act; or
(ii) the Registrar had accepted it under that subsection but had not yet made a decision whether to register the trade mark or not under subsection 50(1) of that Act.
(a) the
Trade Marks Act 1955 as In force immediately before its repeal; and(b) the regulations under that Act as in force immediately before its repeal.
Note: For the repeal of the
Trade Marks Act 1955 see section 241.
Note: For “sign” see section 5.
(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 notified in the
(a) goods; or
(b) services; or
(c) both goods and services.
(a) to use the trade mark; and
(b) to authorise other persons to use the trade mark;
in relation to the goods and services in respect of which the trade mark is registered.
Note: For “use” see section 6.
Note: For what amounts to an infringement of a trade mark see Part 13.
Note: For “date of registration” see section 5.
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.
(a) as a purchaser in good faith for value; and
(b) without notice of any fraud on the part of the owner.
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 9.
(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).
(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).
(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.
(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.
(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.
(a) be in accordance with the regulations; and
(b) be filed, together with any prescribed document, in accordance with the regulations.
(a) include a representation of the trade mark; and
(b) specify the goods and/or services
(“relevant goods and services”) in respect of which it is sought to register the trade mark; and(c) contain:
(i) a statement that the applicant is the owner of the trade mark; and
(ii) a statement of a kind referred to in subsection (4) relating to the use of the trade mark.
(a) a statement that the applicant:
(i) is using or intends to use; or
(ii) has authorised or intends to authorise another person to use; the trade mark in relation to the relevant goods and services; or
(b) a statement that the applicant intends to assign the trade mark to a body corporate that is about to be constituted and that the body corporate intends to use the trade mark in relation to the relevant goods and services.
Note: For “use” see section 6.
(a) on behalf of all of them; or
(b) in relation to goods or services with which all of them are connected in the course of trade;
the persons may together apply for its registration under subsection 25(1).
(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 that person’s successor in title applies to the Registrar for the registration of the trade mark;
the person or the 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 application in accordance with the regulations.
(a) whether the application has been made in accordance with this Act; and
(b) whether there are grounds under Division 2 for rejecting it.
(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 or other proceedings under this Act.
(a) the application has not been made in accordance with this Act; or
(b) there are grounds for rejecting it; the Registrar must reject the application.
Note: For the grounds on which an application may be rejected see Division 2.
(a) notify the applicant in writing of:
(i) his or her findings, and any prescribed matter, arising out of the examination; and
(ii) his or her decision under section 32; and
(b) advertise the decision in the
Official Journal.
(a) to accept the application subject to conditions or limitations; or
(b) to reject the application.
(a) is taken not to have lapsed when the prescribed period expired; and
(b) lapses if it is not accepted within the extended period.
(a) that the application for registration of the trade mark was accepted because of an error or omission in the course of the examination; or
(b) that, in the special 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 revoke the acceptance of the application.
(a) a sign that is prescribed for the purposes of this section; or
(b) a sign so nearly resembling such a sign as to be likely to be taken for it.
Note: “Writing” has the meaning given by section 25 of the
Acts Interpretation Act 1901 which provides as follows: “‘Writing’ includes any mode of representing or reproducing words, figures, drawings or symbols in a visible form.”.
(a) the shape, or some other characteristic, possessed, because of their nature, by the goods; or
(b) a shape, or some other characteristic, that the goods must have if a particular technical result is to be obtained.
(a) the extent to which the trade mark does in fact so distinguish the designated goods or services because of any or all of the following:
(i) the use made by the applicant of the trade mark;
(ii) the extent to which it is inherently adapted to distinguish the designated goods or services;
(iii) any other circumstances; or
(b) the extent to which the trade mark will in fact so distinguish the designated goods or services because of any or all of the following:
(i) the use made, and likely to be made, by the applicant of the trade mark;
(ii) the extent to which it is inherently adapted to distinguish the designated goods or services;
(iii) any other circumstances; or
(c) if the applicant has not used the trade mark—the extent to which the trade mark will in fact so distinguish the designated goods or services because of either or both of the following:
(i) the intended use of the trade mark by the applicant together with the extent to which it is inherently adapted to distinguish the designated goods or services;
(ii) any other circumstances.
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of the goods or services; or
(b) the time of production of the goods or of the rendering of the services.
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law or would not be entitled to protection in a court.
(a) the nature, quality, origin, intended purpose, or some other characteristic, of the goods or services; or
(b) any connection or relationship that they may have with any particular person.
(a) in relation to an application, the Registrar has asked under section 29 that evidence be provided of the consent of a particular person; and
(b) the applicant has not provided the evidence as asked;
the Registrar must reject the application.
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person; or
(ii) a trade mark in respect of which an application for registration has been made by another person;
that relates to:
(iii) goods that are the same as. or of the same description as that of, the goods
(“applicant’s goods”) to which the applicant’s trade mark relates; or(iv) services that are closely related to the applicant’s goods; and
(b) the priority date for the applicant’s trade mark is not earlier than the priority date for the other trade mark.
Note: For “priority date” see subsection (5).
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person; or
(ii) a trade mark in respect of which an application for registration has been made by another person;
that relates to:
(iii) services that are the same as, or are of the same description as that of, the services
(“applicant’s services”) to which the applicant’s trade mark relates; or(iv) goods that are closely related to the applicant’s services; and
(b) the priority date for the applicant’s trade mark is not earlier than the priority date for the other trade mark.
Note: For “priority date” see subsection (5).
(a) that there has been an honest concurrent use of the 2 trade marks; or
(b) that, because of the other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any condition or limitation that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
(a) that the applicant, or a predecessor in title of the applicant, has continuously used the applicant’s trade mark for a period before the date of registration of the other trade mark: and
(b) that the applicant’s trade mark was never abandoned;
the Registrar may not reject the application because of the existence of the other trade mark.
(a) if the trade mark is registered—the date of registration of the trade mark; or
(b) if the registration of the trade mark is being sought—the day that would be the date of the registration of the trade mark if it were registered.
(a) for the registration of a part only of the trade mark in respect of those goods and services; or
(b) for the registration of the trade mark in respect of some only of the goods or services in respect of which registration is sought under the initial application; or
(c) if the initial application has been amended to exclude some of the goods or services in respect of which registration was sought in the first place—for the registration of the trade mark in respect of any or all of the goods or services that have been so excluded.
(a) the goods and services specified in the initial application; or
(b) if the initial application has been amended to exclude some of the goods or services specified in that application before its amendment—the goods and services specified in the initial application as amended.
(a) before a decision is made about it under section 32; or
(b) if the initial application is accepted—before its acceptance is advertised in the
Official Journal;
the applicant may, within the prescribed period but subject to subsection (3), make a divisional application for the registration of the trade mark in respect of any or all of the goods or services that have been excluded from the initial application.
application for the registration of the trade mark in respect of any or all of the goods or services that have been excluded from the application whose acceptance was advertised in the
(a) the same goods within a single class;
(b) the same services within a single class;
(c) goods of the same description within a single class;
(d) services of the same description within a single class;
if the trade marks resemble each other in material particulars and differ only in respect of one or more of the following matters:
(e) statements or representations as to the goods or services in relation to which the trade marks are used or intended to be used;
(f) statements or representations as to number, price, quality or names of places;
(g) colour;
(h) any matter that is not capable of distinguishing the goods or services and does not substantially affect the identity of the trade marks
(a) giving an opportunity to the applicant to make representations (either orally or in writing) on the matter; and
(b) taking into account the representations (if any) made by the applicant.
(a) the notice of opposition is taken to have been withdrawn; and
(b) the Registrar must re-examine the application as necessary to take into account any matter that he or she failed to consider because of the error or omission; and
(c) sections 32 and 33 again apply in relation to the application.
(a) to refuse to register the trade mark; or
(b) to register the trade mark with or without conditions and limitations in respect of the goods and services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
(a) in order to establish that the applicant is not the owner of the trade mark, the opponent relies on the fact that another person used the trade mark at an earlier time than the applicant; and
(b) the applicant establishes that:
(i) the application was filed with the consent or approval of the other person; and
(ii) as at the filing date in respect of the application, the other person had ceased to use the trade mark.
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods or services specified in the application.
(a) that the opponent, or a predecessor in title of the opponent, had previously used; and
(b) that had not been abandoned by either of them on the filing date in respect of the application for the registration of the trade mark.
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the filing date in respect of the application for the registration of the first-mentioned trade mark, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
(a) a country, or in a region or locality in a country, other than the country in which the relevant wine or spirits originated; or
(b) a region or locality in the country in which the relevant wine or spirits originated other than the region or locality in which the relevant wine or spirits originated.
Note: For “geographical indication” see section 5.
(a) the relevant wine or spirits originated in the country, region or locality identified by the geographical indication; or
(b) the sign has ceased to be used as a geographical indication for the designated wine or spirits in the country in which the designated wine or spirits originated; or
(c) the applicant, or a predecessor in title of the applicant, used the sign in respect of the relevant wine or spirits, or applied for the registration of the trade mark in respect of the relevant wine or spirits, before:
(i) 1 January 1996; or
(ii) the day on which the sign was recognised as a geographical indication for the designated wine or spirits in their country of origin;
whichever is later; or
(d) the sign is identical with the name that, on 1 January 1995, was, in the country in which the relevant wine or spirits originated, the customary name of a variety of grapes used in the production of the relevant wine or spirits.
(a) although the sign is a geographical indication for the designated wine or spirits, it is also a geographical indication for the relevant wine or spirits; and
(b) the applicant has not used, and does not intend to use, the trade mark in relation to the relevant wine or spirits in a way that is likely to deceive or confuse members of the public as to the origin of the relevant wine or spirits.
(a) that the application, or a document filed with the application, was amended contrary to this Act;
(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
(a) an application for the registration of a trade mark may be amended under section 66; and
(b) the applicant has not asked that the application be amended;
the Registrar may, in accordance with the regulations, direct that the application be amended as necessary to remove any ground on which the application could be rejected.
(a) the details of the application have not yet been published under section 28; and
(b) the request for the amendment is made within the prescribed period; an amendment may be made to correct a clerical error or an obvious mistake.
(a) to correct a clerical error or an obvious mistake; or
(b) if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.
(a) if there has been no opposition to the registration; or
(b) if there has been an opposition—if the Registrar’s decision, or (in the case of an appeal against the Registrar’s decision) the decision on appeal, is that the trade mark should be registered.
Otherwise, the application for the registration of the trade mark lapses.
(a) in the name of the applicant for registration; and
(b) in respect of the goods and services specified in the application at the time of registration; and
(c) subject to the conditions (if any) and the limitations (if any) imposed by the Registrar in accepting the application for registration or deciding to register the trade mark.
The Registrar must enter these particulars in the Register.
(a) a representation in writing of the trade mark; and
(b) its registration number; and
(c) any other particulars that are prescribed.
(a) advertise the registration in the
Official journal; and(b) give to the registered owner of the trade mark a certificate of registration in an approved form
(a) the application was in respect of a trade mark whose registration had also been sought in one or more than one Convention country; and
(b) the applicant claimed a right of priority for the registration under section 27; and
(c) the trade mark is registered under this Act;
the registration of the trade mark is taken to have had effect:
(d) 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
(e) 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.
Note: This is so even for a trade mark whose registration has effect from (and including) the day on which an application was made in a Convention country.
(a) the trade mark is taken to have been removed from the Register under section 79 or Part 9; or
(b) the registration of the trade mark is cancelled.
(a) be in an approved form; and
(b) be filed in accordance with the regulations.
(a) subject to subsection 80(1), the registration ceases to have effect when it expires; and
(b) the Registrar must remove the trade mark from the Register.
(a) restore the trade mark to the Register; and
(b) renew the registration of the trade mark for 10 years from the day on which the registration of the trade mark expired;
if the Registrar is satisfied that it is just to do so.
(a) the registration of a trade mark
(“unrenewed trade mark”) has not been renewed; and(b) within the prescribed period after the registration expired, an application for the registration of a trade mark is made by a person other than the person who was registered as the owner of the unrenewed trade mark;
the unrenewed trade mark is taken to be a registered trade mark for the purposes of the application unless the Registrar is satisfied that:
(c) there has been no use in good faith of the unrenewed trade mark during the 2 years immediately before its registration expired; or
(d) no deception or confusion is likely to arise from the use of the trade mark whose registration is sought because of any previous use of the unrenewed trade mark.
Note; For the classification of goods and services see subsection 18(3).
(a) amend the representation of the trade mark as entered in the Register if the amendment does not substantially affect the identity of the trade mark as at the time when the details of the trade mark were published under section 28; or
(b) amend particulars of the goods or services in respect of which the trade mark is registered If the amendment does not have the effect of extending the rights that (apart from the amendment) the owner has under the registration; or
(c) amend, or enter in the Register, any other particular in respect of the trade mark if the amendment or entry does not have the effect of extending the rights that (apart from the amendment or entry) the owner has under the registration.
(a) if the registered owner asks in writing that the registration be cancelled; or
(b) if:
(i) the application for registration stated that the applicant intended to assign the trade mark to a body corporate about to be constituted; and
(ii) the body corporate has not, within the prescribed period, applied for a record of the assignment to be entered in the Register.
(a) entering in the Register particulars that were wrongly omitted from it; or
(b) correcting any error in an entry in the Register.
(a) cancelling the registration of a trade mark; or
(b) removing or amending any entry in the Register relating to the trade mark;
on the ground that a condition or limitation entered in the Register in relation to the trade mark has been contravened.
(a) cancelling the registration of the trade mark; or
(b) removing or amending any entry in the Register relating to the trade mark;
having regard to the effect of section 23 or 24 (as the case may be) on the rights of the registered owner of the trade mark to use the trade mark, or any sign that is part of the trade mark, in relation to particular goods or services.
(a) has become well known, or accepted generally, as the sign that describes or is the name of an article, substance or service; or
(b) describes or is the name of:
(i) an article or substance that was formerly exploited under a patent; or
(ii) a service that was formerly provided as a patented process; the court may decide not to make an order under subsection (1) and allow the trade mark to remain on the Register in respect of:
(c) the article or substance or goods of the same description; or
(d) the service or services of the same description; subject to any condition or limitation that the court may impose.
(a) cancelling the registration of a trade mark; or
(b) removing or amending an entry wrongly made or remaining on the Register; or
(c) entering any condition or limitation affecting the registration of a trade mark that ought to be entered.
(a) any of the grounds on which the registration of the trade mark could have been opposed under Division 2 of Part 5;
(b) the entry was made, or has been previously amended, as a result of fraud, false suggestion or misrepresentation;
(c) an amendment of the application for the registration of the trade mark was obtained as a result of fraud, false suggestion or misrepresentation;
(d) the trade mark:
(i) is not inherently capable of distinguishing the goods or services; and
(ii) on the day on which the application for rectification was filed, had ceased to be used to a sufficient extent for it to be capable of distinguishing the goods or services of the registered owner from the goods or services of any other person;
(e) the following circumstances apply:
(i) on the filing date in relation to the application for its registration, the trade mark did not distinguish the goods or services of the registered owner from the goods or services of any other person; and
(ii) the application for rectification is made at least 10 years after that filing date; and
(iii) on the day on which the application for rectification is filed, the trade mark still does not so distinguish the goods or services of the registered owner.
(a) under section 88; or
(b) on the ground that the trade mark is liable to deceive or confuse (a ground on which its registration could have been opposed, see paragraph (2)(a)); or
(c) on the ground referred to in paragraph 2(d);
if the registered owner of the trade mark satisfies the court that the ground relied on by the applicant has not arisen through any act or fault of the registered owner.
(a) must also take into account any matter that is prescribed; and
(b) may take into account any other matter that the court considers relevant.
(a) removing a registered trade mark from the Register; or
(b) not restoring to the Register a trade mark that has been removed because of a failure to renew the registration;
if the registered owner of the trade mark has not used the trade mark in good faith.
(a) a trade mark is or may be registered; or
(b) a trade mark removed from the Register for non-renewal of its registration may be restored to the Register;
may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from, or not to be restored to, the Register.
(a) must be in accordance with the regulations; and
(b) may be made in respect of any or all of the goods or services in respect of which the trade mark may be, is, or was, registered.
(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods or services to which the non-use application relates and that the registered owner has not used the trade mark in good faith in Australia in relation to those goods or services at any time before the period of one month ending on the day on which the non-use application is filed;
(b) that the trade mark has remained registered, or (if it were restored to the Register) would have remained registered, for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner used the trade mark in good faith in Australia in relation to the goods or services to which the application relates.
(a) an application has been made to the Registrar under subsection 92(1); and
(b) the Registrar is of the opinion that the matter should be decided by a prescribed court;
the Registrar may refer the matter to that court and the court may hear and determine the matter as if an application had been made to it under subsection 92(3).
(a) must be in a form approved by the Registrar or by the court; and
(b) must be filed in accordance with the regulations or the rules of court (as the case may be).
(a) the Registrar has removed a trade mark from the Register under subsection 97(1) because no notice of opposition was filed within the period provided under the regulations; and
(b) the Registrar subsequently extends the period within which the notice may be filed; and
(c) a notice of opposition is filed within the extended period;
the Registrar must restore the trade mark to the Register. Also, the trade mark is taken not to have been removed from the Register.
(a) any allegation (made under paragraph 92(4)(a)) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods or services to which the opposed application relates; or
(b) any allegation (made under paragraph 92(4)(a) or (b)) that a trade mark has not, at any time before or during a specified period (as the case may be), been used in good faith by its registered owner in relation to the goods or services to which the opposed application relates
(“relevant goods or services”).
(a) that the trade mark has been used by its registered owner in relation to the relevant goods or services; or
(b) that the trade mark has been used by its registered owner in relation to goods or services in respect of which the trade mark is registered (“
registered goods or services ”) that are goods of the same description as, or closely related to, the relevant goods or services; or(c) that the trade mark with additions or alterations not substantially affecting its identity has been used by its registered owner in relation to:
(i) the relevant goods or services; or
(ii) registered goods or services that are of the same description as, or closely related to, the relevant goods or services; or
(d) the trade mark was not used by its registered owner because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during the specified period.
(a) that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, has been used by the registered owner in relation to goods or services (other than registered goods or services) that are of the same description as, or closely related to, the relevant goods or services (for example, the relevant goods may be silk ties and the unregistered goods nylon ties); or
(b) that the registered owner of the trade mark has used an associated trade mark;
and the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the registered owner as having used the trade mark in relation to the relevant goods or services.
(a) the relevant goods or services; or
(b) goods or services (whether registered or not) that are of the same description as, or closely related to, the relevant goods or services;
and the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the registered owner as having used the trade mark in relation to the relevant goods or services if:
(c) the unregistered assignee subsequently becomes the registered owner of the trade mark: and
(d) the use of the trade mark by the assignee is in accordance with the assignment.
(a) in the case of an application by the registered owner of a trade mark registered in respect of the relevant goods or services—if the applicant’s trade mark is substantially identical with, or deceptively similar to, the opponent’s trade mark and:
(i) the applicant was granted registration of his or her trade mark on the ground that there had been honest concurrent use of the trade marks; or
(ii) the applicant was a person in relation to whom subsection 44(4) applied; or
(b) in any other case—if:
(i) the applicant’s trade mark is substantially identical with, or deceptively similar to, the opponent’s trade mark; and
(ii) the Registrar or the court is of the opinion that the applicant’s trade mark could properly be granted registration in respect of the relevant goods or services on the ground that there has been honest concurrent use of the trade marks or on the ground that subsection 44(4) would apply in relation to the applicant.
(a) the applicant is the registered owner of a trade mark that is substantially identical with, or deceptively similar to, that of the opponent and is registered in respect of the goods or services specified in the application subject to the condition or limitation that the use of a trade mark is to be restricted to:
(i) goods to be sold, or otherwise traded in, in a particular place
(“specified place”) in Australia (otherwise than for export from Australia); or(ii) goods to be exported to a particular market
(“specified market”); or(iii) services provided in a particular place in Australia
(“specified place”); or(b) the Registrar or the court is of the opinion that such a trade mark may properly be registered in the name of the applicant with that condition or limitation.
(a) that the opponent’s trade mark has remained registered for the period referred to in paragraph 92(4)(b); and
(b) that during that period there has been no use in good faith of the opponent’s trade mark in relation to:
(i) goods to be sold, or otherwise traded in, in the specified place; or
(ii) goods to be exported to the specified market; or
(iii) services provided in the specified place;
the Registrar or the court may decide that the opponent’s trade mark should not be removed from, or should be restored to, the Register but that the registration of the trade mark should be subject to the conditions or limitations that the Registrar or the court considers necessary to ensure that the registration does not extend to the use of the trade mark in relation to:
(c) goods to be sold, or otherwise traded in, in the specified place; or
(d) goods to be exported to the specified market; or
(e) services provided in the specified place.
(a) the trade mark has been used during a particular period; or
(b) a trade mark has not been used during a particular period solely because of circumstances that were an obstacle to its use;
the Registrar or the court must, if so requested by the registered owner of the trade mark, give to the registered owner a certificate of those findings.
(a) the certificate is, on being produced, evidence of the facts stated in it; and
(b) if the proceedings are determined in favour of the opponent and, on or before filing the notice of opposition, the opponent notified the applicant of the contents of the certificate—the opponent is entitled, unless the Registrar or the court otherwise directs, to have the opponent’s full costs paid by the applicant.
(a) associated trade marks have been assigned to a person; and
(b) subsequently it is found that another trade mark associated with those trade marks has not been assigned to the assignee;
(a) when proceedings before him or her are discontinued; or
(b) when they are over.
(a) a patent attorney has attended in court to assist a party at the hearing of an action or proceeding under this Act; and
(b) an order is made for payment of the costs of that party;
those costs may include an allowance for that attendance.
(a) gives notice of opposition under this Act; or
(b) applies to the Registrar under Part 9 for a trade mark to be removed from, or not to be restored to, the Register; or
(c) appeals to the Federal Court under this Act;
the Registrar or the Federal Court (as the case may be) may require the person to give security for the costs of the proceeding or appeal and may, if security is not given, dismiss the proceeding or appeal.
(a) of which he or she is the registered proprietor or a registered user; and
(b) that is substantially identical with, or deceptively similar to, the trade mark of the plaintiff;
damages may not be awarded against the defendant if the defendant satisfies the court:
(c) that, at the time when the defendant began to use the trade mark, he or she was unaware, and had no reasonable means of finding out, that the trade mark of the plaintiff was in use; and
(d) that, when the defendant became aware of the existence and nature of the plaintiff’s trade mark, he or she immediately ceased to use the trade mark in relation to the goods or services in relation to which it was used by the plaintiff.
(a) a fee is payable in respect of the doing of an act by a person other than the Registrar, the Commission or the Comptroller; or
(b) a fee is payable in respect of the filing of a document;
the act is taken to have been done
(a) an error or omission by the person concerned or by his or her agent or attorney; or
(b) circumstances beyond the control of the person concerned; a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Registrar may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.
(a) a relevant act that a person is required to do within a certain time is not, or cannot be, done within that time; and
(b) on application made by that person in accordance with the regulations, the Registrar is of the opinion that special circumstances exist that justify an extension of that time;
the Registrar may extend the time for doing the act.
(a) the day on which the trade mark was removed from the Register because a particular act was not done within a particular period; and
(b) the day on which the trade mark is restored to the Register because the act was done within the period as extended under this section.
(a) any act (other than a prescribed act) done in relation to a trade mark; or
(b) the filing of any document (other than a prescribed document) for the purposes of this Act; or
(c) any proceedings under this Act (other than court proceedings).
(a) the matters that are required under this Act to be advertised in the
Official Journal; and(b) any other matter that the Registrar thinks fit.
(a) the person must give a written notice of the decision to any person affected by it; and
(b) the notice must include a statement to the effect that, subject to the
Administrative Appeals Tribunal Act 1975, application may be made to the Administrative Appeals Tribunal for the review of the decision to which the notice relates by or on behalf of the person or persons whose interests are affected by the decision.
(a) a trade mark is applied in Australia to goods that are to be exported from Australia
(“export goods”); or(b) any other act is done in Australia to export goods which, if done in relation to goods to be dealt with in the course of trade in Australia, would constitute a use of the trade mark in Australia;
the application of the trade mark or the other act is taken, for the purposes of this Act, to constitute use of the trade mark in relation to the export goods.
(a) is entitled to prepare documents, transact business and conduct proceedings for the purposes of this Act: and
(b) has any right or privilege that is prescribed.
(a) prescribing matters required or permitted by this Act to be prescribed; or
(b) prescribing matters necessary or convenient to be prescribed for carrying out or giving effect to this Act; or
(c) prescribing matters necessary or convenient to be prescribed for the conduct of any business relating to the Trade Marks Office.
(a) provide for appeals against decisions of the Registrar made under the regulations; and
(b) require persons to make statutory declarations in support of any application, notice or request filed under this Act; and
(c) provide for the making of a declaration, or the doing of an act, under this Act on behalf of a person who, because of infancy or physical or mental disability, is unable to make the declaration or do the act; and
(d) provide for the refund, in specific circumstances, of the whole or part of a fee paid in respect of the filing of a document; and
(e) provide for the remission of, or the exemption of specified classes of persons from the payment of, the whole or part of a fee; and
(f) give power to the Registrar:
(i) to require, in specified circumstances, a person applying under Part 9 for a trade mark to be removed from, or not to be restored to. the Register to give security for any costs that may arise from the proceedings; and
(ii) not to proceed with the application if security is not given; and
(iii) to refund to the applicant any amount given as security and not applied in settling costs awarded against the defendant; and
(g) provide for the destruction of documents relating to a trade mark at least 25 years after the registration of the trade mark has ceased; and
(h) prescribe as penalties for offences against the regulations fines not exceeding 10 penalty units; and
(i) make transitional or consequential provision as necessary or convenient because of the repeal of the repealed Act and the enactment of this Act; and
(j) provide for regulations made under the repealed Act to continue to have effect (with any prescribed alterations) for specified purposes of this Act.
(a) a registered trade mark that:
(i) immediately before the commencement of this Act, was registered in Part A of the old register; and
(ii) has not at any time after the commencement of this Act ceased to be registered; and
(b) a registered trade mark:
(i) whose application for registration in Part A of the old register had been accepted under the repealed Act and was still pending before the Registrar immediately before the commencement of this Act; and
(ii) that has not at any time after the commencement of this Act ceased to be registered.
(a) the original registration under the repealed Act of a trade mark referred to in paragraph (l)(a); or
(b) the original registration under this Act of a trade mark referred to in paragraph (l)(b);
is taken to be valid in all respects after a period of 7 years from the date of registration of the trade mark unless it is shown that:
(c) the original registration was obtained by fraud; or
(d) an application for the registration of the trade mark would be rejected under section 42; or
(e) the trade mark was not, at the commencement of the proceedings, capable of distinguishing the goods or services of the registered owner in relation to which the trade mark is used from the goods or services of other persons.
(a) a trade mark was removed from the old register under subsection 70(2) of the repealed Act because the registration of the trade mark had expired and had not been renewed; and
(b) the registration of the trade mark had expired within 12 months before the commencing day;
then, if the Registrar is satisfied that it is just to do so, the Registrar may, within 12 months from the day on which the registration expired:
(c) make an entry inthe Register to the effect that all particulars of the trade mark removed from the old register under the repealed Act are restored to the Register; and
(d) renew the registration of the trade mark for the period beginning on the commencing day that, together with the period immediately before the commencing day during which the trade mark remained unregistered, equals 14 years.
(a) was lodged with the Registrar in accordance with the repealed Act; and
(b) was pending immediately before the commencement of this Act; is to be dealt with as if it had been made under this Act.
(a) on the same day before the commencement of this Act, a person made more than one application each seeking the registration of the same trade mark but in respect of goods or services of different classes; and
(b) those applications
(“existing applications”) were pending, but had not been accepted, immediately before the commencement of this Act;
the applicant may, at any time before any existing application is accepted, apply to the Registrar to have all the existing applications dealt with under this Act as if they were one application for the registration of the trade mark in respect of all goods and services specified in the existing applications.
(a) an application for the registration in Australia of a trade mark whose registration had been sought in a Convention country was made under section 109 of the. repealed Act: and
(b) the application was still pending immediately before the commencement of this Act.
(a) the application had been accepted, but the trade mark had not been registered, under the repealed Act; and
(b) the trade mark is registered under this Act;
subsection 73(2) applies in relation to the registration as if priority had been claimed under section 27.
(a) an application for the registration of a mark in Part A, B
, C or D of the old register was pending, but had not been accepted, immediately before the commencement of this Act; and(b) the application had previously been amended; and
(c) the application as amended did not relate to all of the goods or services specified in the application before its amendment;
the applicant may, within 6 months alter the commencing day, apply to the Registrar for the application to be again amended so as to relate to some or all of the goods and services specified in the application before its amendment under the repealed Act, if:
(d) the application is still pending, but has not been accepted, under this Act and
(e) subsection 43(3) of the repealed Act would apply in relation to a further application for the registration of the mark in respect of the goods or services excluded from the original application, if that Act were still in force.
(a) a trade mark, collective trade mark, certification trade mark or defensive trade mark is registered under this Act; and
(b) the filing date in respect of the application for the registration of the trade mark is a date before the commencement of this Act;
the registration or the trade mark is to expire 7 years after the filing date.
(a) it were an application under section 109 for a record of the assignment or transmission to be entered in the Register; and
(b) that application was filed on the commencement of this Act.
(a) in relation to those proceedings; and
(b) for the purposes of any appeal from an order or direction of the Registrar or the court under that section;
as if the reference in subsection 23(1) to the Register were a reference to
(a) before the commencement of this Act a person engaged in conduct that infringed a mark registered under the repealed Act; and
(b) an action relating to that infringement was not pending immediately before the commencement of this Act; and
(c) the mark is an existing registered mark for the purposes of this Act;
then, subject to any law limiting the time within which such an action may be started, an action may be brought under this Act for that infringement of the trade mark. The registered owner (or a registered user) of the existing trade mark is not, however, entitled under this Act to any injunction or other relief to which he or she would not have been entitled under the repealed Act.
(a) immediately before the commencement of this Act, a person was engaging in conduct that did not constitute an infringement of a mark registered under the repealed Act; and
(b) the mark is an existing registered mark for the purposes of this Act; and
(c) the person has, since the commencement of this Act, continuously engaged in, and is engaging in, that conduct; and
(d) that conduct is an infringement of the existing registered mark under this Act.
(a) on the commencing day; and
(b) in accordance with this Act.
(a) it the Comptroller is given a notice under section 141 objecting to any importation of goods infringing the trade mark; or
(b) at the end of 3 months from the commencing day;
whichever first occurs.
[
Minister’s second reading speech made in—House of Representatives on 18 October 1994 Senate on 7 November 1994
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