TRADE MARKS AMENDMENT ACT 1978
No. 130 of 1978
An Act to amend the Trade Marks Act 1955.
BE IT ENACTED by the Queen, and the Senate and House of Representatives of the Commonwealth of Australia, as follows:
Short title, &c.
1. (1) This Act may be cited as the Trade Marks Amendment Act 1978.
(2) The Trade Marks Act 1955 is in this Act referred to as the Principal Act.
Commencement
2. This Act shall come into operation on a date to be fixed by Proclamation.
Interpretation
3. Section 6 of the Principal Act is amended—
(a) by inserting “or services” after “goods” in paragraph (a) of the definition of “permitted use” in sub-section (1); and
(b) by inserting “or services” after “goods” (wherever occurring) in the definition of “trade mark” in sub-section (1).
Correction of Register
4. Section 19 of the Principal Act is amended by inserting in paragraph (d) of sub-section (1) “or services” after “goods”.
Registration of assignment
5. Section 20 of the Principal Act is amended by inserting in sub-section (1) “or services” after “goods”.
Provisions as to non-use of trade mark
6. Section 23 of the Principal Act is amended—
(a) by inserting in sub-section (1) “or services” after “goods” (wherever occurring);
(b) by inserting in sub-section (2) “or services” after “goods” (first and second occurring);
(c) by omitting from sub-section (2) “in relation to goods of the same description, being goods in respect of which the trade mark is registered.” and substituting:
“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.”;
(d) by inserting after sub-section (3) the following sub-section:
“(3a) Where, in relation to services in respect of which a trade mark is registered—
(a) the matters referred to in paragraph (b) of sub-section (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…
Overview
The Trade Marks Amendment Act 1978 (Cth) was enacted to amend the Trade Marks Act 1955 (Cth) by extending the scope of the legislation to include services, in addition to goods, thereby addressing the gap in the original act that did not adequately cover services under the trade marks regime. The Act was passed by the Parliament of Australia, with the aim of modernising the trade mark system to encompass the growing service-oriented economy. This legislative amendment ensures that trade marks for services receive the same protection and regulatory oversight as trade marks for goods, fostering a more comprehensive and inclusive trade mark system in Australia.
Scope and Application
The Trade Marks Amendment Act 1978 amends the Trade Marks Act 1955 (Principal Act) to expand the application of trade mark law to include services, in addition to goods. The Act applies to any person or entity seeking to register a trade mark, or who is registered as a proprietor of a trade mark, and it applies across the Commonwealth of Australia. The scope of the Act is broadened to include the registration, use, and protection of trade marks for both goods and services. This encompasses all industries and transactions that involve trade marks for goods or services. The Act also extends to the registration process, permissible uses, and the infringement of trade marks, ensuring that both goods and services are covered. Notably, the Act does not specify any exclusions or exemptions; however, the substantive provisions of the Principal Act, which may include certain exclusions or limitations, remain applicable. The Trade Marks Amendment Act 1978 facilitates the registration and protection of trade marks by incorporating services into the legislative framework, thereby ensuring that the trade mark system is comprehensive and applicable to the modern economy's diverse needs.
Key Provisions
- The Trade Marks Amendment Act 1978 makes several amendments to the Trade Marks Act 1955, primarily to extend the application of the Act to services, in addition to goods. Key provisions include:
- Section 3 amends the definition of "permitted use" and "trade mark" to include services, thereby broadening the scope of what can be protected as a trade mark. Section 4 extends the correction of the Register to include services. Section 5 allows for the registration of assignments pertaining to services. Section 6 modifies the provisions for non-use of trade marks to account for services, and introduces new provisions for cases where a trade mark has not been used in relation to services in a particular place in Australia. Section 7, 8, and 9 extend the criteria for registrable trade marks, distinctiveness, and trade marks to be registered for particular goods or services to include services.
- The Act imposes several obligations on parties and entities it governs. For instance, Section 10 mandates that trade marks must be registered for particular goods or services, including services. Section 11 ensures that a trade mark is not capable of registration if it is substantially identical or deceptively similar to another registered trade mark for the same services, unless certain conditions are met. Section 12 allows for concurrent use of trade marks for goods or services, and Section 13 permits jointly owned trade marks for goods or services.
- Sections 38 and 43 detail the offences and penalties for breach of the Act, which include forgery, counterfeiting, and misrepresentation of trade marks. The maximum penalties for these offences can be severe, including substantial fines and imprisonment. The Act also outlines civil consequences for infringement of trade marks, including the right to damages and an injunction.
- The Trade Marks Amendment Act 1978 ensures that the Trade Marks Act 1955 is updated to reflect modern commercial practices that involve services, not just goods. The Act maintains the integrity and enforceability of trade marks in Australia by imposing clear obligations and consequences for non-compliance.
- Area of Law
- Intellectual Property Law
- Instrument
- Act
- Concepts
- Definitions & Interpretation
- Repeal & Amendment
- Licensing & Registration
- Enforcement Powers
- Infringement of trade marks
