Trade Marks Act 1995
No. 119, 1995
Compilation No. 47
Compilation date: 14 October 2024
Includes amendments: Act No. 39, 2024
About this compilation
This compilation
This is a compilation of the Trade Marks Act 1995 that shows the text of the law as amended and in force on 14 October 2024 (the compilation date).
The notes at the end of this compilation (the endnotes) include information about amending laws and the amendment history of provisions of the compiled law.
Uncommenced amendments
The effect of uncommenced amendments is not shown in the text of the compiled law. Any uncommenced amendments affecting the law are accessible on the Register (www.legislation.gov.au). The details of amendments made up to, but not commenced at, the compilation date are underlined in the endnotes. For more information on any uncommenced amendments, see the Register for the compiled law.
Application, saving and transitional provisions for provisions and amendments
If the operation of a provision or amendment of the compiled law is affected by an application, saving or transitional provision that is not included in this compilation, details are included in the endnotes.
Editorial changes
For more information about any editorial changes made in this compilation, see the endnotes.
Modifications
If the compiled law is modified by another law, the compiled law operates as modified but the modification does not amend the text of the law. Accordingly, this compilation does not show the text of the compiled law as modified. For more information on any modifications, see the Register for the compiled law.
Self‑repealing provisions
If a provision of the compiled law has been repealed in accordance with a provision of the law, details are included in the endnotes.
Contents
Part 1—Preliminary
1 Short title
2 Commencement
3 Act binds the Crown
4 Application of Act
4A Application of the Criminal Code
5 Repeal of Trade Marks Act 1994
Part 2—Interpretation
6 Definitions
6A Periods expressed in months
7 Use of trade mark
8 Definitions of authorised user and authorised use
9 Definition of applied to and applied in relation to
10 Definition of deceptively similar
11 Definition of pending
12 Definition of priority date
13 Definition of remove from the Register
14 Definition of similar goods and similar services
15 Definition of originate in relation to wine
16 Definition of repealed Act
Part 3—Trade marks and trade mark rights
17 What is a trade mark?
18 Certain signs not to be used as trade marks etc.
19 Certain trade marks may be registered
20 Rights given by registration of trade mark
21 Nature of registered trade mark as property
22 Power of registered owner to deal with trade mark
23 Limitation on rights if similar trade marks etc. registered by different persons
24 Trade mark consisting of sign that becomes accepted as sign describing article etc.
25 Trade mark relating to article etc. formerly manufactured under patent
26 Powers of authorised user of registered trade mark
Part 4—Application for registration
Division 1—General
Overview
The Trade Marks Act 1995 was enacted by the Australian Parliament to provide a comprehensive framework for the registration, protection, and management of trade marks in Australia. It replaced the outdated Trade Marks Act 1955 and aimed to address gaps in the existing legislation by aligning Australian trade mark law with international standards, particularly those prescribed by the Agreement Establishing the World Trade Organization. The Act sought to simplify the language of trade mark law to make it more accessible to the public while ensuring robust protections for trade mark owners. By consolidating and updating trade mark regulations, the Act aimed to streamline the process for registering trade marks, reduce ambiguities, and strengthen the enforcement mechanisms against trade mark infringement and misuse.
Scope and Application
The Trade Marks Act 1995 is a Commonwealth statute that governs the registration, use, and protection of trade marks in Australia. The Act applies to all individuals, entities, and businesses seeking to register trade marks, collective trade marks, certification trade marks, and defensive trade marks within Australia. The Act binds the Crown and extends to Christmas Island, Cocos (Keeling) Islands, Norfolk Island, the Australian continental shelf, and the airspace and waters above these territories. The Act includes provisions for the examination, registration, opposition, and enforcement of trade marks, as well as the administration of the Trade Marks Office. The application of the Act to trade mark attorneys and their practices is detailed in Part 20 and 21, which include the registration, deregistration, and professional conduct of trade mark attorneys. The Act also outlines various exclusions and exemptions, such as certain geographical limitations and transitional provisions for existing trade marks registered under the repealed Trade Marks Act 1955. The application of the Act can be further extended or restricted through subordinate regulations, which can include modifications for specific territories, such as Norfolk Island, and provisions relating to the Public Health (Tobacco and Other Products) Act 2023.
Key Provisions
- The Trade Marks Act 1995 (Act) is a comprehensive piece of legislation governing the registration, protection, and enforcement of trade marks in Australia. Section 17 defines a trade mark as a sign used or intended to be used to distinguish goods or services of one person from those of others. Section 20 grants the registered owner exclusive rights to use the trade mark, subject to certain limitations. These rights include the exclusive right to use the trade mark, to authorise others to use it, and to bring actions for infringement. Section 18 specifies that certain signs, such as scandalous or generic terms, cannot be used as trade marks. The Act outlines the process for registering trade marks, including the requirements for the application (Section 27) and the grounds on which an application may be rejected or opposed (Sections 39-62A).
- The Act imposes obligations on applicants to provide truthful and complete information in their applications and to pay the requisite fees. Section 68 requires the Registrar to register a trade mark if the application is accepted and no grounds for rejection or opposition exist. The Act also imposes obligations on registered owners to use their trade marks and to maintain them by renewing the registration (Sections 74-80H). Section 106 allows for the assignment of trade mark rights, subject to certain conditions.
- The Act provides for various offences and penalties for breaches, including the falsification or removal of registered trade marks (Section 145), false application of trade marks (Section 146), and aiding and abetting such offences (Section 150). These offences carry significant penalties, including imprisonment and fines. The Act also makes false representations about trade marks (Section 151), failure to comply with the Registrar’s directions (Section 153), and acting without being registered (Section 156) offences. Additionally, Section 157A establishes that an incorporated trade marks attorney must have a trade marks attorney director, with penalties for failure to comply. Section 159 provides that forfeiture orders under the Proceeds of Crime legislation apply to offences under this Act.
- Civil and criminal consequences for breach of the Act include financial penalties, imprisonment, and the possibility of having a trade mark removed from the Register. For example, Section 145 imposes a penalty of imprisonment for up to five years or 550 penalty units, or both, for altering or removing a registered trade mark. Similarly, Section 146 imposes a penalty of imprisonment for up to five years or 550 penalty units, or both, for falsely applying a registered trade mark. These penalties reflect the importance of protecting the integrity and exclusivity of trade mark rights in Australia.
- Area of Law
- Intellectual Property Law
- Commercial Law
- Instrument
- Act
- Concepts
- Definitions & Interpretation
- Commencement Provisions
- Repeal & Amendment
- Licensing & Registration
- Infringement of Trade Marks
- Enforcement Powers
- Civil Penalty Provisions