Trade Marks Amendment Act 1978

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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 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.”;

(e) by inserting in sub-section (4) “or (3a)” after “sub-section (3)”; and

(f) by inserting in sub-section (4) “or services” after “goods”.

Registrable trade marks— Part A

7. Section 24 of the Principal Act is amended—

(a) by inserting in paragraph (d) of sub-section (1) “or services” after “goods”;

(b) by inserting in sub-section (3) “or services” after “goods” (first occurring); and

(c) by omitting from sub-section (3) “or different goods” and substituting “goods or services or other goods or services”.

Registrable trade marks—Part B

8. Section 25 of the Principal Act is amended—

(a) by inserting in sub-section (1) “or services” after “goods”;

(b) by inserting in sub-section (2) “or services” after “goods” (first occurring); and

(c) by omitting from sub-section (2) “or different goods” and substituting “goods or services or other goods or services”.

Distinctiveness

9. Section 26 of the Principal Act is amended by inserting in sub-section (1), (3) and (5) “or services” after “goods” (wherever occurring).

Trade marks to be registered for particular goods or services

10. Section 31 of the Principal Act is amended by inserting “or services” after “goods” (wherever occurring).

Identical marks

11. Section 33 of the Principal Act is amended—

(a) by omitting from sub-section (1) “or of goods of the same description” and substituting “, of goods of the same description as those goods or of services that are closely related to those goods”; and

(b) by omitting sub-section (2) and inserting the following sub-sections:

“(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.”.

Concurrent use

12. Section 34 of the Principal Act is amended by omitting from sub-section (1) “or different goods” and substituting “goods or services or other goods or services”.

Jointly owned trade marks

13. Section 35 of the Principal Act is amended by inserting in paragraph (b) of sub-section (1) “or services” after “goods”.

Association of trade marks

14. Section 36 of the Principal Act is amended—

(a) by omitting from paragraph (a) of sub-section (1) “or goods of the same description” and substituting “, of goods of the same description as those goods or of services that are closely related to those goods”; and

(b) by inserting after sub-section (1) the following sub-section:

“(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.”.

Series of trade marks

15. Section 39 of the Principal Act is amended—

(a) by omitting from sub-section (1) “goods or” and substituting “goods,”;

(b) by inserting in sub-section (1) “, for the same services or for services of the same description within a single class” after “class”; and

Application for registration

16. Section 40 of the Principal Act is amended by inserting in paragraph (a) of sub-section (2) and in sub-section (3) “or services” after “goods”.

Division of application

17. Section 43 of the Principal Act is amended—

(a) by inserting in sub-section (1) “or services” after “goods”; and

(b) by inserting in sub-section (3) “or services” after “goods” (wherever occurring).

Applications may be accepted where trade mark is to be used by assignee or registered user

18. Section 45 of the Principal Act is amended by inserting “or services” after “goods” (wherever occurring).

Words used as name or description of an article or substance

19. Section 56 of the Principal Act is amended—

(a) by omitting from sub-section (1) “or substance” and substituting “, substance or service”;

(b) by omitting from paragraph (a) of sub-section (2) “or substance” (wherever occurring) and substituting “, substance or service”;

(d) by inserting in paragraph (b) of sub-section (2) “or the service formerly provided was a patented process, as the case requires” after “patent” (first occurring);

(e) by omitting from paragraph (b) of sub-section (2) “or substance” (last occurring) and substituting “, substance or service”;

(f) by inserting in sub-section (3) “, or of the services or of any services of the same description, as the case requires” after “description”;

(g) by inserting in sub-section (4) “, or of the services or of any services of the same description” after “description” (first occurring);

(h) by inserting in sub-section (4) “or to the services or to any service of the same description, as the case may be,” after “description” (second occurring); and

(j) by inserting in sub-section (5) “, or to the service or to any services of the same description, as the case requires” after “description”.

Rights given by registration

20. Section 58 of the Principal Act is amended—

(a) by inserting in sub-section (1) “or services” after “goods”; and

(b) by omitting from sub-section (3) “or different goods” and substituting “goods or services or other goods or services”.

Limitation on removal of trade mark after three years

21. Section 60 of the Principal Act is amended by inserting “or services” after “goods”.

Registration conclusive after seven years

22. Section 61 of the Principal Act is amended by inserting in paragraph (c) of sub-section (1) “or services” after “goods”.

Infringement of trade marks

23. Section 62 of the Principal Act is amended by inserting “or services” after “goods” (wherever occurring).

Acts not constituting infringement

24. Section 64 of the Principal Act is amended—

(a) by inserting in paragraphs (b), (c) and (d) of sub-section (1) “or services” after “goods” (wherever occurring); and

(b) by inserting in sub-section (2) “, in relation to services to be provided in a place” after “market”.

Passing off actions

25. Section 68 of the Principal Act is amended by inserting “or services” after “goods”.

Registered users

26. Section 74 of the Principal Act is amended—

(a) by inserting in sub-section (1) “or services” after “goods”;

(b) by inserting in paragraphs (b) and (c) of sub-section (2) “or services” after “goods”; and

Variation, &c., of registration

27. Section 75 of the Principal Act is amended by inserting in paragraph (a) “or services” after “goods”.

Cancellation of registration

28. Section 76 of the Principal Act is amended by inserting “or services” after “goods”.

Effect of permitted user

29. Section 77 of the Principal Act is amended by inserting in paragraph (c) of sub-section (2) “or services” after “goods”.

Assignment and transmission of trade marks

30. Section 82 of the Principal Act is amended—

(a) by inserting in sub-section (1) “or services” after “goods” (wherever occurring);

(b) by inserting in paragraph (b) of sub-section (2) “or services” after “goods” (wherever occurring); and

Certification trade marks

31. Section 83 of the Principal Act is amended—

(a) by inserting in sub-section (1) “or services” after “goods” (first occurring);

(b) by inserting in sub-section (1) “or services, as the case may be,” after “goods” (second occurring);

(c) by omitting from sub-section (1) “origin, material, mode of manufacture, quality, accuracy or other characteristics” and substituting “quality, accuracy, or other characteristics, including, in the case of goods, origin, material or mode of manufacture,”;

(d) by inserting in sub-section (1) “or services, as the case may be,” after “goods” (third occurring);

(e) by inserting in sub-section (1) “or services” after “goods” (last occurring);

(f) by inserting in sub-section (2) “or a trade of the provision of services of the kind certified” after “certified”; and

(g) by inserting in sub-section (3) “or services” after “goods”.

Rights given by registration

32. Section 84 of the Principal Act is amended—

(a) by inserting in sub-section (1) “or services” after “goods”;

(b) by inserting in sub-section (2) “, in relation to services to be provided in a place” after “market”;

(d) by inserting in paragraph (a) of sub-section (3) “in the case of goods,” before “as”; and

(e) by inserting in sub-section (4) “or services” after “goods” (wherever occurring).

Rules governing the use of certification trade marks

33. Section 85 of the Principal Act is amended by inserting in sub-section (2) “or services” after “goods” (wherever occurring).

Matters to be considered before acceptance

34. Section 86 of the Principal Act is amended by inserting in paragraph (a) of sub-section (1) “or services” after “goods”.

Rectification of the register

35. Section 88 of the Principal Act is amended by inserting in paragraph (a) of sub-section (1) “or services” after “goods” (wherever occurring).

Defensive registration of well-known trade marks

36. Section 93 of the Principal Act is amended—

(a) by inserting in sub-sections (1), (2) and (3) “or services” after “goods” (wherever occurring); and

(b) by omitting from sub-section (4) “in respect of different goods” and substituting “not registrations in respect of the same goods or services”.

Rectification of Register

37. Section 94 of the Principal Act is amended by inserting in sub-section (1) “or services” after “goods”.

Forgery, &c., of trade marks

38. Section 98 of the Principal Act is amended by inserting in paragraph (b) of sub-section (1) “or services” after “goods”.

Prohibition of importation of goods bearing Australian trade marks

39. Section 103 of the Principal Act is amended by omitting from sub-section (1) “or trader” and substituting “, trader or person providing a service”.

When trade mark deemed applied

40. Section 107 of the Principal Act is amended—

(a) by adding “or” at the end of paragraph (a) of sub-section (2);

(b) by omitting paragraphs (c) and (d) of sub-section (2);

“(2a) A trade mark shall be deemed to be applied to goods or services if—

(a) it is used in a manner likely to lead to the belief that it refers to, describes or designates the goods or services; or

(b) 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 may be, to a person in pursuance of a request or order made by reference to the trade mark as so used.”;

(d) by inserting in sub-section (4) “or services” after “goods” (wherever occurring); and

(e) by inserting in sub-section (5) “or services” after “goods”.

Trade mark not to be deemed to be deceptive or confusing in certain cases

41. Section 118 of the Principal Act is amended by inserting “or services” after “goods” (wherever occurring).

Adaption of classification

42. Section 139 of the Principal Act is amended—

(a) by omitting from sub-section (1) “or classes of goods” and substituting “, classes of goods, services or classes of services”;

(b) by inserting in sub-section (1) “or services” after “goods” (last occurring);

(c) by omitting from sub-section (2) “or classes of goods” and substituting “, classes of goods, services or classes of services”; and

(d) by inserting in sub-section (2) “or services” after “goods” (last occurring).

Falsely representing a trade mark as registered an offence

43. Section 146 of the Principal Act is amended by inserting in paragraph (c) of sub-section (1) “or services” after “goods”.

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

Interactions

Sourced from the Federal Register of Legislation at 26 August 2026. For the latest information on Australian Government law please go to https://www.legislation.gov.au.

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