WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
ORGANIZACION MUNDIAL DEL COMERCIO 
Council for Trade-Related Aspects 
of Intellectual Property Rights IPIN/l/AUS/T/l 
1 August 1996 
(96-3059) 
Original: English! 
anglais/ 
ingles 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND REGULATIONS 
NOTIFIED UNDER ARTICLE 63.2 OF THE AGREEMENT 
Australia 
The present document reproduces the Trade Marks Act 1995 (No. 119 of 1995)1, as notified 
by Australia under Article 63.2 of the Agreement (see document IP/N/lIAUS/lIRev.1). 
Conseil des aspects des droits de propriete 
intellectuelle qui touchent au commerce 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES 
A LA PROPRIETE INTELLECTUELLE NOTIFIEES 
AU TITRE DE L'ARTICLE 63:2 DE L'ACCORD 
Australie 
Le present document contient le texte de la Loi de 1995 sur les marques (n° 119 de 1995)1, 
notifiee par l' Australie au titre de I'article 63:2 de l' Accord (voir le document IP/N/lIAUS/lIRev.1). 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL pARRAFO 2 DEL ARTiCULO 63 DEL ACUERDO 
Australia 
En el presente documento se reproduce la Ley de Marcas de 1995 (N° 119 de 1995)1, que 
Australia ha notificado en virtud del parrafo 2 del articulo 63 del Acuerdo (vease el documento 
IP/N/lI AUS/lIRev .1). 
lEnglish only/anglais seulement/ingles solamente. IP/N/l1 AUS/T/l 
Page 2 
Trade Marks Act 1995 
No. 119 of 1995 
READER'S GUIDE 
This guide aims to give you a general idea of the purpose of this Act and some 
information about its structure. It also explains briefly how the operation and 
interpretation of this Act is affected by other Acts. 
Purpose of this Act 
This Act provides for the registration of trade marks, collective trade marks, 
certification trade marks and defensive trade marks (for a definition of these 
terms, see sections 17, 162, 169 and 185 respectively) and sets out and 
protects the rights deriving from registration. 
It is a rewrite of the legislation relating to trade marks, certification trade 
marks and defensive trade marks. The previous Act did not deal with 
collective trade marks. 
755:\3 Cnt. No. <)5 Sf> I f> 8 ISDN 0644 343788 Trade Marks No. 119, 1995 IP/NI1/AUS/TI1 
Page 3 
In rewriting the legislation, some changes have been made to reflect 
international trends towards greater uniformity in that field of law. In 
particular, this Act confonns with the minimum standards and principles 
prescribed for trade marks in the Agreement Establishing the World Trade 
Organization. 
An attempt has also been made to simplify the language as much as possible 
to make it easier for readers to understand the law. For that reason, a number 
of terms used in the old legislation have been replaced by simpler ones. For 
example, the word" owner" has been used where the previous Act referred 
to the proprietor of a trade mark. No difference in meaning is intended when 
simpler tenns have thus been used. 
Summary of this Act 
Part 1: Deals with formal Inatters such as the commencement 
of this Act and its general application. 
Part 2: Contains definitions and terms that are used 
frequently throughout this Act. 
Part 3: Explains what is a trade mark and sets out the rights 
given by this Act to the registered owner and any 
authorised user of a registered trade mark. 
Parts 4 and 5: Deal with the steps that you have to take to have a 
trade mark registered. 
Part 6: Sets out how and why an application for registration 
and other documents may be amended. 
Parts 7, 8 and 9: Deal with the registration of trade marks and how and 
why particulars of the registration of a trade mark may 
be amended, cancelled or removed from the Register. 
Parts 10 and 11: Deal with the assignment of trade marks, the 
registration of assignments of registered trade marks 
and the recording of the rights and interests that 
persons (other than registered owners) may have in 
registered trade marks or trade marks whose 
registration is being sought. 
Parts 12, 13 and 14: Deal with the protection of trade marks. Part 12 sets 
out what constitutes an infringement of a trade mark 
and how to obtain redress and relief in cases of 
infringement. Part 13 provides for a special regime to 
deal with any importation of goods that would 
infringe a registered trade mark. Part 14 makes certain 
types of conduct offences against this Act. IP/N/lIAUS/T/l 
Page 4 
Trade Marks No. 119, 1995 
Parts 15, 16 and 17: Explain what are collective trade marks, certification 
trade marks and defensive trade marks and apply to 
them, with necessary alterations, the provisions of this 
Act relating to trade marks. 
Part 18: Deals with the jurisdiction of the courts to hear and 
determine matters arising under this Act. 
Parts 19 and 20: Deal with the Trade Marks Office, the officials 
responsible for its administration and the keeping of 
the Register of Trade Marks. 
Part 21: Deals with miscellaneous matters such as the payment 
of fees, the service of documents and the making of 
regulations. 
Part 22: Repeals the Trade Marks Act 1955 and explains how 
matters that were being dealt with under that Act at the 
time of its repeal are to be dealt with when this Act is 
in force. 
How to use this Act 
Definitions: Section 6 contains definitions of terms that have special 
meanings and are used frequently in this Act. A list of terms defined in 
section 6 appears after the Table of Provisions. 
Notes: Notes are to be found throughout the text. They are designed to help 
you find your way through the Act. They may tell you that certain words or 
terms are defined and where to find the definition; they may alert you to other 
provisions in this Act and in other legislation that are relevant to the text you 
are reading; or they may draw your attention to infonnation that may help 
you to understand the contents or legal consequences of certain provisions 
or how to comply with them. 
Chart: The appendix to this Guide contains a chart showing the main steps 
involved in obtaining the registration of a trade mark. The chart is intended 
to be used only as an illustration and is not intended to have any other 
effect. If there is any inconsistency between any matter contained in the 
chart and a provision of this Act or the regulations, the provision prevails. 
Related legislation 
The following Acts are directly relevant to the operation or interpretation of 
this Act. 
Acts Interpretation Act 1901 
That Act contains general rules about the meaning or effect of many terms 
and provisions that are commonly used in Commonwealth Acts. Some of 
the notes used in this Act draw your attention to some of them, but it is not 
possible to refer to all of them. Trade Marks No. 119, 1995 
Crimes Act 1914 IP/N/lIAUS/T/l 
Page 5 
In Parts 13 and 14, you will find that a penalty, expressed as imprisonment 
for a particular period or a number of penalty units, is set out at the foot of 
some sections or subsections. Section 40 of the Crimes Act 1914 provides 
that this indicates that any contravention of the section or subsection is an 
offence against this Act punishable upon conviction by a penalty not 
exceeding the penalty set out. 
I f only a term of imprisonment is provided as the penalty for an offence, 
subsections 4B(2) and 4B(3) of the Crimes Act 1914 allow a court to 
impose an appropriate fine instead of, or in addition to, the term of 
imprisonment. 
Section 4AA of the Crimes Act 1914 sets out the amount of a penalty 
unit. Under subsection 4B(3) of that Act a court may impose on a body 
corporate convicted of an offence a fine of up to 5 times the amount of the 
fine that could be imposed on a natural person convicted of that offence. 
The Crimes Act 1914 contains many other general rules that apply to 
offences. It also creates offences for conduct related to Commonwealth 
Acts. For example, if, knowing what is going on, you are in any way 
knowingly involved with another person in committing an offence against 
this Act, section 5 of the Crimes Act 1914 provides that you have committed 
the same offence as the other person. 
Trade Marks Act 1955 
That Act is repealed by this Act. It contained the legislation that previously 
applied to trade marks, certification trade marks and defensive trade 
marks. Even though it is repealed, this Act provides that some of the 
provisions of that Act are to continue to apply to certain matters that were 
being dealt with under that Act immediately before it was repealed. 
The list of Acts cited above is not exhaustive. Other Acts may also affect the 
operation or interpretation of this Act. IP/N/I/AUS/T/l 
Page 6 
APPENDIX-OBTAININ(; REGISTRATION OF A TRADE MARK 
AppUcatlon (~e ~ction 27) 
Must be in approved form. , 
Examination 
TIle application will be examined to ensure il 
is in ocl-onJance wilh the Act and I~re are 
no grounds for rejecting it (~ ~tion 31 ). 
f 
R~port b.~ 
A report to the ~ Applicant f--applicunt e:4plains R~ llny detit:iencies in 
the applil.:illion. , 
+ I R~ratlon 
'r , 
Acttplantt f4- Notice of acceptance is -.enl In Ihe applicant 
and adveni-.ed in the Official jOl/nw/. 
In .. on~ CII'C' the Regi .. tnu muy only 
accept un lIpplication .. ubje<"1 10 cenuin 
condition .. Of limilat;om. I-
" 
R~ktnatioo 
The R~gi .. lrar rnll,1 give I~ regl'lerl"U owner 
il ceni Ikale .. mtl mh ('n i'-C' th<-rq!hlr.tlion in 
the Ojjidul )ollnwlr-.ee ~llon 71 I. 
Initial rtgi .. lrnlion i, for a pc:noJ of 1 () year. ~ fmm lhe tiling Je,le. 
" 
R~~w.1 
Rc.·quirl'd t.'very I () y('ar .... 
~-Hearintt hy R~rar • 
Registrar mu ... pnwide 
the applicant with an 
opportunity 10 be heard 
before an applicDttoo is 
rejected. 
I 
I 
._._1 
()pposItkm 
Another per-on muy 
(~ re~i~ratKlfl of the 
tr.KJe mart.: under Pan 5. 
"4' An ApfX'al IIIay he: ml.W.k III the Fttkfill Court agilin .. 1 lhe: lh'i .. ion of the Regi .. trar. 
.... Unoroken line, .. ignify the IIltl-'-t lihly cour..c of ('v('nt .. , 
Note: Fees unU time limit\ muy apply at vuriou, ~'ag( .. IIf this pnw..'e",. R~jKtion 
~ R('gi,trJI will 
rej(-cl an apphCafKlfl 
if il fail .. any o( (he 
criteria c.ktaikd in 
o;vi .. ton 2 of 
P'".u14. 
RdUSIII to R~fl" 
Aht"r ('t)flstJering 
IIx Cll~ ~ro at 
'W"ilktn rtx 
Rrgi"r..-r IT\OIy 
det:Kk 10 ~ru,< tu 
re~i\.kf the Ir..Je 
m;ad. rrABLE OF PROVISIONS 
Section 
PART 1-PRELIMINARY 
1. Short title 
2. Commencement 
3. Act binds the Crown 
4. Application of Act 
5. Repeal of Trade Marks Act 1994 
PART 2-INTERPRETATION 
6. Definitions 
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 IP/NI1/AUS/TI 1 
Page 7 
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 I-General 
27. Application-how made 
28. Application by joint owners 
29. Application for registration of trade mark whose registration has been sought in a 
Convention country--claim for priority 
30. Particulars of application to be published 
31. Registrar to examine, and report on, application 
32. Registrar to decide on disputed classification of goods etc. 
33. Application accepted or rejected 
34. Notice etc. of decision 
35. Appeal 
36. Deferment of acceptance 
37. Lapsing of application 
38. Revocation of acceptance 
Division 2--Grounds for rejecting an application 
39. Trade mark containing etc. certain signs 
40. Trade mark that cannot be represented graphically IP/N/lIAUS/TIl 
Page 8 
11 
TABLE Of PROVISIONS---colllillued 
Section 
41. Trade mark not distinguishing applicant's goods or services 
42. Trade mark scandalous or its use contrary to law 
43. Trade mark likely to deceive or cause confusion 
44. Identical etc. trade marks 
Dh,ision 3-Dil'isional applications 
45. Definition of dh·'isional application 
46. Divisional application possible only if initial application is pending 
47. Divisional application for registration of part of trade mark 
48. Divisional application for registration of trade mark in respect of some of the goods 
etc. specified in the initial application 
49. Divisional application for registration of trade mark in respect of goods etc. 
excluded from the initial application 
50. Filing date 
Division 4-ApplicatioTl for registration of series of trade marks 
51. Application-series of trade marks 
PART 5-OPPOSITION TO REGISTRATION 
Dil·ision J-General 
52. Opposition 
53. Circumstances in which opposition may proceed in name of a person other than the 
person who filed the notice 
54. Opposition proceedings 
55. Decision 
56. Appeal 
Dh'ision 2-Grounds for opposing registration 
57. Registration may be opposed on same grounds as for rejection 
58. Applicant not owner of trade mark 
59. Applicant not intending 10 use trade mark 
60. Trade mark similar to trade mark that has acquired a reputation in Australia 
61. Trade mark containing or consisting of a false geographical indication 
62. Application etc. defective etc. 
PART 6-A!\-IENDMENT OF APPLICATION FOR REGISTRATION OF 
A TRADE MARK AND OTHER DOCUMENTS 
63. Amendment of application for registration of trade mark 
64. Amendment before particulars of application are published 
65. Amendment after particulars of application have been published 
66. Amendment of other documents 
67. Appeal 
PART 7-REGISTRATION OF TRADE MARKS 
Division J -Initial registration 
68. Obligation to register 
69. Registration-how effected 
70. Colours in registered trade marks 
71. Notification of registration 
72. Date and term of re~istration 
73. Ceasing of registratIOn 
74. Disrlaimns 111 
TABLE OF PROVISIONS-contilJued 
Section IP/NIlIAUS/TI 1 
Page 9 
Dil'ision 2-Renewal of registration 
75. Request for renewal 
76. Notice of renewal due 
77. Renewal before registration expires 
78. Failure to renew 
79. Renewal within 12 months after registration expires 
80. Status of unrenewed trade mark 
PART 8-AMENDMENT AND CANCELLATION OF REGISTRATION 
Dil'ision I-Action by Registrar 
81. Correction of Register 
82. Adaptation of classification 
83. Amendment of particulars of trade mark entered in Register 
84. Cancellation of registration 
Division 2-A ction by Court 
85. Amendment to correct error or omission 
86. Amendment or cancellation on ground of contravention of condition etc. 
87. Amendment or cancellation-loss of exclusive rights to use trade mark 
88. Amendment or cancellation--other specified grounds 
89. Rectification may not be granted in certain cases if registered owner not at fault etc. 
90. Duties and powers of Registrar 
Division 3--Amendment of certificate of registration 
91. Amendment of certificate of registration 
92. 
93. 
94. 
95. 
96. 
97. 
98. 
99. 
100. 
101. 
102. 
103. 
104. 
105. PART 9-REMOVAL OF TRADE MARK FROM REGISTER FOR 
NON-USE 
Application for removal of trade mark from Register etc. 
Time for making application 
Referral to court 
Notification of application 
Notice of opposition 
Removal of trade mark from the Register etc. if application unopposed 
Trade mark restored to Register if notice of opposition filed within extended lime 
Proceedings before Registrar 
Burden on opponent to establish use of trade mark etc. 
Determination of opposed application-general 
Determination of opposed application-localised use of trade mark 
Registrar to comply with order of court 
Appeal 
Certificate-use of trade mark 
PART la-ASSIGNMENT AND TRANSMISSION OF TRADE MARKS 
106. Assignment etc. of trade mark 
107. Applications for record to be made of assignment etc. of trade mark whose 
registration is sought 
108. Recording of assignment etc. of trade mark whose registration is sought 
109. Application for record of nssignmenl etc. of registered trade mark to be entered in 
Register 
110. Recording of assi~nment etc. of registered trade mark 
111. Notice of application to he given to person recorded as c1Himing interest in t",de 
mark de IP/N/lI AUS/T/l 
Page 10 
Section IV 
TABLE OF PROVISIONS-conliflued 
PART Il-VOLUNTARY RECORDING OF CLAIMS TO INTERESTS IN 
AND RIGHTS IN RESPECT OF TRADE MARKS 
Division I-Preliminary 
112. Object of Part 
Division 2-lnterests in, and rights in respect of, registered trade marks 
113. Application to have claims to interest etc. recorded 
114. Record of claims to interest etc. 
115. Amendment and cancellation 
116. Record not proof etc. of existence of right etc. 
Division 3-lnterests in, and n'ghts in respect of, unregistered trade marks 
117. Application to have claims to interest etc. recorded 
118. Record of claims to interest etc. 
119. Amendment and cancellation 
120. 
12l. 
122. 
123. 
124. 
125. 
126. 
127. 
128. 
129. 
130. PART 12-INFRINGEMENT OF TRADE MARKS 
When is a registered trade mark infringed? 
Infringement of trade mark by breach of certain restrictions 
When is a trade mark not infringed? 
Goods etc. to which registered trade mark has been applied by or with consent of 
re~istered owner 
Pnor use of identical trade mark etc. 
What courts may hear action for infringement of registered trade mark 
What relief can be obtained from court 
Special case-plaintiff not entitled to damages etc. 
Circumstances in which action may not be brought 
Groundless threats of legal proceedings 
Counterclaim by defendant in action on groundless threats 
PART 13-IMPORTATION OF GOODS INFRINGING AUSTRALIAN 
TRAI>EMARKS 
131. Object of Part 
132. Notice of objection to importation 
133. Comptroller may seize goods infringing trade mark 
134. Notice of seizure 
135. Forfeiture of goods 
136. Release of goods to owner-no action for infringement 
137. Action for infringement of trade mark 
138. Action for infringement by authorised user 
139. Forfeited goods-how to be disposed of 
140. Power of Comptroller to retain control of goods 
141. Insufficient security 
142. Commonwealth not liable for loss etc. suffered because of seizure 
143. Power to require information 
144. Modification in relation to Norfolk Island etc. 
PART 14-OFFENCES 
145., Falsifying etc. a registered trade mark 
146. Falsely applying a registered trade mark 
147. Manufacture and possession of die etc. for use in commission of offence 
148. Selling etc. goods with false marks v 
TABLE OF PROVISIONS-continued 
Section 
149. Penalty for offence under section 145, 146, 147 or 148 
150. Aiding and abetting offences 
15l. False representations regarding trade marks 
152. False entries in Register etc. 
153. Disobeying summons etc. 
154. Refusing to give evidence etc. 
155. Unauthorised persons not to act in trade mark matters 
156. Unregistered persons 
157. False representation about Trade Marks Office 
158. Trade marks officer not to prepare documents etc. 
159. Forfeiture orders under the Proceeds of Crime Act 1987 
160. Conduct of directors, servants and agents IP/NIlIAUS/TI1 
Page 11 
PART 15-COLLECfIVE TRADE MARKS 
16l. Object of Part 
162. What is a collective trade mark? 
163. Application of Act 
164. Application for registration 
165. Limitation on rights given by registered collective trade mark 
166. Assignment etc. of collective trade mark 
167. Infringement of collective trade mark 
PART 16-CERTIFICATION TRADE MARKS 
168. Object of Part 
169. What is a certification trade mark? 
170. Application of Act 
171. RIghts given by registration of a certification trade mark 
172. Rights of persons allowed to use certification trade mark 
173. Rules governing the use of certification trade marks 
174. Registrar to reject application or send it to Commission 
175. Certificate by Commission 
176. Acceptance of application 
177. Additional ground for rejecting an application or opposing registration-
certification trade mark not distinguishing certified goods or services 
178. Variation of rules 
179. Rules to be avuilable for inspection 
180. Assi~nment of registered certification trade mark 
181. Rectlfication of the Register by order of court 
182. Variation of rules by order of court 
183. Delegation of Commission's powers and functions 
PART 17-DEFENSIVE TRADE MARKS 
184. Object of Part 
185. Defensive trade marks 
186. Application of Act 
187. Additional grounds for rejecting application for registration or opposing 
registration 
188. Amendment or cancellation of registration by order of court 
189. Cancellation of registration by Registrar 
PART 18-JURISDICfION AND POWERS OF COURTS 
190. Prescribed courts 
191. Jurisdiction of the Federal Court 
192. Jurisdiction of other prescrihed courts 
19~. f-xt'rcisc of iurisdiction IP/N/lIAUS/T/1 
Page 12 
Vl 
TABLE OF PROVlSIONS-continued 
Section 
194. Transfer of proceedings 
195. Appeals 
196. Registrar may appear in appeals 
197. Powers of Federal Court 
198. Practice and procedure of prescribed courts 
}lART 19-ADt\-lINISTRATION 
199. Trade Marks Office and sub-offices 
200. Seal of Trade Marks Office 
201. Registrar of Trade Marks 
202. Registrar's powers 
203. Exercise of power by Registrar 
204. Registrar lo act as soon as practicable 
205. Deputy Registrar of Trade Marks 
206. Delegation of Registrar's powers and functions 
PART 20-THE REGISTER AND OFFICIAL DOCUMENTS 
207. The Register 
208. Register may be kept on computer 
209. Inspection of Register 
210. Evidence-the Register 
211. Evidence--certified copies of documents 
PART 2l-MISCELLANEOUS 
Division l-Applications and other documents 
212. Making and signing applications etc. 
213. Filing of documents 
214. Withdrawal of application etc. 
215. Address for service 
216. Change of name 
217. Death of applicant etc. 
Db·ision 2-Proceedings before the Registrar or a court 
218. Description of registered trade mark 
219. Evidence of trade usage 
220. Death of party to proceeding before Registrar 
221. Costs awarded by Registrar 
222. Security for costs 
Division J-General 
223. Fees 
224. Extension of lime 
225. Convention countries 
226. Publication of Official Journal etc. 
227. Notice regarding review of decision by Administrative Appeals Tribunal 
228. Use of trade mark for export trade 
229. Rights etc. of patent attorney 
230. Passing off actions 
231. Regulations 
2]2. Repeal PART 22-REPEAL AND TRANSITIONAL 
D;l';s;on I-Repeal VB 
TABLE OF PROVISIONS-conlirzued 
Section IPINIl! ADS/T/l 
Page 13 
Division 2-Marks registered under the repealed Act 
233. Automatic registration under this Act 
234. Registration conclusive after 7 years 
235. Term of registration 
236. Renewal 
237. Restoration of particulars to Register and renewal of registration where registration 
expired within 12 months before 1 January 1996 
238. Disclaimers 
239. Rules governing the use of certification trade marks registered in Part C of the old 
register 
Division 3-Matters pending immediately before repeal of repealed Act 
240. Applications, notices etc.-general 
241. Application for registration of trade mark 
242. Divisional application in relation to pending application 
243. More than one application lodged on same day for registration of same trade mark 
244. Application for registration of trade mark whose registration has been sought in 
Convention country 
245. Application for registration of a mark in Part C of the old register 
246. Application for registration of a mark in Part D of the old register 
247. Amendment of application-specification of goods or services 
248. Revival of appilcation for registration of trade mark that had lapsed before 
1 January 1996 
249. Application for registration of assignment etc. 
250. Rectification of Register 
251. Action for removal of trade mark from Register for non-use 
252. Action for infringement of trade mark etc. 
253. Action under this Act for infringement of trade mark under repealed Act 
254. Acts not constituting infringement of trade mark 
255. Application of this Act-general 
256. Fees 
Division 4--General 
257. The Registrar and Deputy Registrar 
258. Confidential information received by Registrar under section 74 of the repealed Act 
259. Documents kept under repealed Act 
260. Address for service 
261. Notices to Comptroller objecting to importation of goods IP/N/lIAUS/T/l 
Page 14 
List of terms defined in section 6 
applicant 
applied to 
applied in relation to 
approved form 
assignment 
association 
Australia 
Australian continental shelf 
authorised use 
authorised user 
certification trade mark 
collective trade mark 
Commission 
Comptroller 
Convention country 
date of registration 
deceptively similar 
defensive trade mark 
Deputy Registrar 
designated owner 
divisional application 
empl~yee 
examine 
existing registered mark 
Federal Court 
file 
filing date 
geographical indication 
goods of a person 
lawyer 
limitations 
notified trade mark 
objector Official Journal 
old register 
opponent 
originate 
patent attorney 
pending 
person 
predecessor in title 
prescribed court 
priority date 
Register 
registered owner 
registered trade mark 
Registrar 
registration number 
remove from the Register 
repealed Act 
seized goods 
services of a person 
sIgn similar goods 
similar services 
this Act 
trade mark 
trade marks officer 
transmission 
use 
of a trade mark 
use of a trade mark in relation to 
goods 
use of a trade mark in relation to 
servIces 
word 11ft • • • 
~.J AUSTRALIA tF 
~~~(«<~ IP/NIlIAUS/TI 1 
Page 15 
Trade Marks Act 1995 
No. 119 of 1995 
An Act relating to trade marks 
[Assented to 17 October 1995] 
The Parliament of Australia enacts: 
PART I-PRELIMINARY 
Short title 
1. This Act may be cited as the Trade Marks Act 1995. 
5 Commencement 
2.(1) Part 1 commences on the day on which this Act receives the Royal 
Assent. 
(2) This Act, other than Part 1, commences on 1 January 1996. IP/NI lIAUS/TI 1 
Page 16 
Act binds the Crown Trade Marks No. 119, 1995 
3.(1) This Act binds the Crown in right of the Commonwealth, of each 
of the States, of the Australian Capital Territory, of the Northern Territory 
and of Norfolk IsI~nd. 
(2) Nothing in this Act makes the Crown liable to be prosecuted for an 5 
offence. 
Application of Act 
4. This Act extends to: 
(a) Christmas Island; and 
(b) ~s (Keeling) Islands; and 10 
(c) Norfolk Island; and 
(d) the Australian continental shelf; and 
(e) the waters above the" Australian continental shelf; and 
(f) the airspace above Australia and the Australian continental shelf. 
Note: For Australia and Australian continental shelf see section 6. 15 
Repeal of Trade Marks Act 1994 
5. The Trade Marks Act 1994 is repealed. Trade Marks No. 119, 1995 
PART 2-INTERPRETATION 
Definitions 
6. In this Act, unless the contrary intention appears: IP/NI1/AUS/TI 1 
Page 17 
applicant, in relation to an application, means the person in whose name the 
5 application is for the time being proceeding. 
applied to and applied in relation to have the respective meanings given in 
section 9. 
approved form means a form approved by the Registrar for the purposes of 
the provision in which the expression appears. 
10 assignment, in relation to a trade mark, means an assignment by act of the 
parties concerned. 
association does not include a body corporate. 
Australia includes the following external Territories: 
(a) Christmas Island; 
15 (b) Cocos (Keeling) Islands; 
(c) Norfolk Island. 
Australian continental shelf has the same meaning as in the Seas and 
Submerged Lands Act 1973. 
authorised use, in relation to a trade mark, has the meaning given by 
20 section 8. 
authorised user, in relation to a trade mark, has the meaning given by 
section 8. 
certification trade mark has the nleaning given by section 169. 
collective trade mark has the meaning given by section 162. 
25 Commission means the Trade Practices Commission established under the 
Trade Practices Act 1974. 
Comptroller means the Comptroller-General of Customs. 
Convention country means a country declared (by regulations made under 
section 225) to be a Convention country for the purposes of this Act. 
30 date of registration, in relation to the registration of a trade mark in respect 
of particular goods or services, means the day from which the registration 
of the trade mark in respect of those goods or services is taken to have had 
effect under subsection 72(1) or (2). 
deceptively similar has the meaning given by section 10. 
35 defensive trade mark has the meaning given by section 185. 
Deputy Registrar means a Deputy Registrar of Trade Marks. 
designated owner, in relation to goods imported into Australia, means the 
person identified as the owner of the goods on the entry made in relation to 
the goods under section 68 of the Custonls Act 1901. 
40 divisional application has the meaning given by section 45. IPINIl! AUS/T 11 
Page 18 
Trade Marks No. 119, 1995 
employee has the same meaning as in the Public Service Act 1922. 
examine, in relation to an application for the registration of a trade mark, 
means to carry out an examination under section 31 in relation to the 
application. 
existing registered 11Ulrk means a mark that was registered in Part A, B, C 5 
or D of the old register before 1 January 1996 and whose registration under 
the repealed Act was due to expire after that day. 
Federal Courl means the Federal Court of Australia. 
file means to file at the Trade Marks Office. 
Note: See section 213. 10 
filing date means: 
(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 15 
mark-the day on which the initial application (within the meaning 
of Division 3 of Part 4) was filed; or 
(c) in relation to an application to which section 241 applies-the day 
referred to in subsection 241(5); or 
(d) in relation to an application made under section 243-the day 20 
referred to in subsection 243(6). 
geographical indication, in relation to goods originating in a particular 
country or in a region or locality of that country, means a sign recognised in 
that country as a sign indicating that the goods: 
(a) originated in that country, region or locality; and 25 
(b) have a quality, reputation or other characteristic attributable to their 
geographical origin. 
goods of a person means goods dealt with or provided in the course of trade 
by the person. 
lawyer means a barrister or solicitor of the High Court or of the Supreme 30 
Court of a State or Territory. 
limitations means limitations of the exclusive right to use a trade mark given 
by the registration of the trade mark, including limitations of that right as to: 
(a) mode of use; or 
(b) use within a territorial area within Australia; or 35 
(c) use in relation to goods or services to be exported. 
notified trade mark means a trade mark in respect of which a notice under 
section 132 is in force. 
objector, in relation to seized goods, means any person who has given under 
section 132 a notice in respect of those goods that is in force. 40 
Official Journal means the Official Journal of Trade Marks mentioned in 
section 226. Trade Marks No. 119, 1995 IPINIl! AUS/T/1 
Page 19 
old register means the Register of Trade Marks kept under the repealed Act. 
opponent, in relation to the registration of a trade mark, means: 
(a) the person who has filed (under section 52) a notice of opposition 
to the registration of the trade mark; or 
5 (b) if section 53 applies-a person in whose name the notice of 
opposition is taken to have been filed. 
originate, in relation to wine, has the meaning given by section 15. 
patent attorney means a person registered as a patent attorney under the 
Patents Act 1990. 
10 pending, in relation to an application for the registration of a trade mark, has 
the meaning given by section 11. 
person includes a body of persons, whether incorporated or not. 
predecessor in title, in relation to a person who claims to be the owner of a 
trade mark, means: 
15 (a) if the trade mark was assigned or transmitted to one or more than one 
other person before it was assigned or transmitted to the 
first-mentioned person-that other person or anyone of those other 
persons; or 
(b) if paragraph (a) does not apply-the person who assigned the trade 
20 mark, or from whom the trade mark \vas transmitted, to the 
first-mentioned person. 
25 
30 
35 
40 Note: In the case of a trade mark that is neither registered nor the subject of an application for 
registration, the trade mark may be assigned or transmitted in Australia only in conjunction with 
the goodwill of a business concerned with the trade mark. If the trade mark is registered or the 
subject of an application for registration, section 106 provides that the trade mark may be 
assigned or transmitted with or without the goodwill of the business. 
prescribed court means a court that is under section 190 a prescribed court 
for the purposes of this Act. 
priority date has the meaning given by section 12. 
Register means the Register of Trade Marks kept under section 207. 
registered owner, in relation to a registered trade mark, means the person in 
whose name the trade mark is registered. 
registered trade mark means a trade mark whose particulars are entered in 
the Register under this Act. 
Registrar means the Registrar of Trade Marks. 
Note: Sections 201,202,203,204 and 206 deal with the office, powers and functions of the Registrar 
of Trade Marks. 
registration nun,ber, in relation to a registered trade mark, means the 
number given to it under subsection 68(2). 
remove/rom the Register, in relation to a trade mark, has the meaning given 
by section 13. 
repealed Act has the meaning given by section 16. 
seized goods means goods seized under section 133. IP/N/lIAUS/T/l 
Page 20 
Trade Marks No. 119, 1995 
services of a person means services dealt with or provided in the course of 
trade by the person. 
sign includes the following or any combination of the following, namely, 
any letter, word, name, signature, numeral, device, brand, heading, label, 
ticket, aspect of packaging, shape, colour, sound or scent. 5 
similar goods has the meaning given by subsection 14(1). 
similar services has the meaning given by subsection 14(2). 
this Act includes the regulations. 
trade mark has the meaning given by section 17. 
trade 17Ulrks officer means a person who: 10 
(a) holds, or performs the duties of, an Australian Public Service office 
in the Trade Marks Office; or 
(b) is an employee employed in the Trade Marks Office; or 
(c) is not a person referred to in paragraph (a) or (b) but performs 
services, under the control of the Registrar, for or on behalf of the 15 
Commonwealth. 
Note 1: For employee see this section. 
Note 2: The Registrar and a Deputy Registrar are trade marks officers. 
transmission means: 
. (a) transmission by operation of law; or 20 
(b) devolution on the personal representative of a deceased person; or 
(c) any other kind of transfer except assignment. 
use of a trade mark has a meaning affected by subsections 7(1), (2) and (3). 
use of a trade mark in relation to goods has the meaning given by subsection 
7(4). 25 
use of a trade mark in relation to services has the meaning given by 
subsection 7(5). 
word includes an abbreviation of a word. 
Use of trade mark 
7.(1) If the Registrar or a prescribed court, having regard to the 30 
circumstances of a particular case, thinks fit, the Registrar or the court may 
decide that a person has used a trade mark if it is established that the person 
has used the trade mark with additions or alterations that do not substantially 
affect the identity of the trade mark. 
Note: For puscrib~d court see section 190. 35 
(2) To avoid any doubt, it is stated that, if a trade mark consists of the 
following, or any combination of the following, namely, any letter, word, 
name or numeral, any aural representation of the trade nlark is, for the 
purposes of this Act, a use of the trade mark. 
(3) An authorised use of a trade mark by a person (see section 8) is 40 
taken, for the purposes of this Act, to be a use of the trade mark by the owner 
of the trade mark. Trade Marks No. 119, 1995 
(4) In this Act: IP/NIlIAUS/TI 1 
Page 21 
use of a trade mark in relation to goods means use of the trade mark upon, 
or in physical or other relation to, the goods (including second-hand goods). 
(5) In this Act: 
5 use of a trade mark in relation to services means use of the trade mark in 
physical or other relation to the services. 
Definitions of authorised user and authorised use 
8.(1) A person is an authorised user of a trade mark if the person uses 
the trade mark in relation to goods or services under the control of the owner 
10 of the trade mark. 
(2) The use of a trade mark by an authorised user of the trade mark is an 
authorised use of the trade mark to the extent only that the user uses the trade 
mark under the control of the owner of the trade mark. 
(3) If the owner of a trade mark exercises quality control over goods or 
15 servIces: 
(a) dealt with or provided in the course of trade by another person; and 
(b) in relation to which the trade mark is used; 
the other person is taken, for the purposes of subsection (1), to use thetrade 
mark in relation to the goods or services under the control of the owner. 
20 (4) If: 
(a) a person deals with or provides, in the course of trade, goods or 
services in relation to which a trade mark is used; and 
(b) the owner of the trade mark exercises financial control over the other 
person's relevant trading activities; 
25 the other person is taken, for the purposes of subsection (1), to use the trade 
mark in relation to the goods or services under the control of the owner. 
(5) Subsections (3) and (4) do not limit the meaning of the expression 
"under the control of" in subsections (1) and (2). 
Definition of applied to and applied in relation to 
30 9.(1) For the purposes of this Act: 
(a) 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 trade mark is taken to be applied in relation to goods or services: 
35 (i) if it is applied to any covering, document, label, reel or thing 
in or with which the goods are, or are intended to bc, 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 IP/N/lIAUS/TIl 
Page 22 
Trade Marks No. 119, 1995 
(c) a trade mark is taken also to be applied in relation to goods or 
services if it is used: . 
(i) on a signboard or in an advertisement (including a televised 
advertisement); or 
(ii) in an invoice, wine list, catalogue, business letter, business 5 
paper, price list or other commercial document; 
and goods are delivered, or services provided (as the case may be) 
to a person following a request or order made by referring to the trade 
mark as so used. 
(2) In subparagraph (1 )(b )(i): 10 
~overing includes packaging, frame, wrapper, container, stopper, lid or cap. 
label includes a band or ticket. 
Definition of deceptively similnr 
10. For the purposes of this Act, a trade mark is taken to be deceptively 
similar to another trade mark if it so nearly resembles that other trade mark 15 
that it is likely to deceive or cause confusion. 
Definition of pending 
Application for registration under this Act 
11.(1) An application for the registration of a trade mark under this Act 
is pending from the time it is filed until: 20 
(a) it lapses (see section 37), is withdrawn (see section 214) or is 
rejected (see section 33); or 
(b) if the Registrar refuses (under section 55) to register the trade mark 
and there is no appeal against the decision-the end of the period 
allowed for the appeal; or 25 
(c) if the Registrar refuses (under section 55) to register the trade mark 
and: 
(i) there is an appeal against the decision; and 
(ii) the decision is confirmed on appeal; 
-the day on which the decision is confirmed on appeal; or 30 
(d) the trade mark is registered under section 68. 
Note: For filt see section 6. 
Application for registration under repealed Act 
(2) An application for the registration of a trade mark under the repealed 
Act was pending immediately before 1 January 1996 if before that day: 35 
(a) the application had not lapsed (see subsection 48( 1 »), been 
withdrawn (see subsection 40A(1» or refused (see subsection 
44(1 »); and Trade Marks No. 119, 1995 IP/N/lIAUS/T/l 
Page 23 
(b) the Registrar had not refused (under section 50) to register the trade 
mark or if he or she had refused to register the trade mark: 
(i) . the period allowed for appealing against the decision had not 
yet ended; or 
5 (ii) an appeal had been made against the decision but had not yet 
been decided; and 
(c) the trade mark had not been registered under section 53. 
Definition of priority date 
12. The priority date for the registration of a trade mark in respect of 
10 particular goods or services is: 
(a) if the trade mark is registered-the date of registration of the trade 
mark in respect of those goods or services; or 
(b) if the registration of the trade mark is being sought-the day that 
would be the date of registration of the trade mark in respect of those 
15 goods or services if the trade mark were registered. 
Definition of remove from the Register 
13. A trade mark is taken to have been removed from the Register if the 
Registrar makes an entry in the Register to the effect that all entries in the 
Register relating to the trade mark are taken to have been removed from the 
20 Register. 
Definition of similar goods and similar services 
14.(1) For the purposes of this Act, goods are similar to other goods: 
(a) if they are the same as the other goods; or 
(b) if they are of the same description as that of the other goods. 
25 (2) For the purposes of this Act, services are similar to other services: 
(a) if they are the same as the other services; or 
(b) if they are of the same description as that of the other services. 
Definition of originate in relation to wine 
15. For the purposes of this Act: 
30 (a) a wine is taken to have originated in a foreign country or Australia 
only if the wine is made within the territory of that country or of 
Australia, as the case may be; and 
(b) a wine is taken to have originated in a particular region or locality 
of a foreign country or of Australia only if the wine is made from 
35 grapes grown in that region or locality. 
Definition : repealed Act 
16.(1) The repealed Act means: IP/NIlIAUS/TI 1 
Page 24 
Trade Marks No. 119,1995 
(a) the Trade Marks Act 1955 as in force immediately before its repeal; 
and 
(b) the regulations under that Act that were in force immediately before 
its repeal. 
Note: For the repeal of the Trail, Marks Act 1955 see section 232. 5 
(2) In this Act, unless the contrary intention appears, a reference to a 
particular section of the repealed Act includes a reference to the regulations 
made for the purposes of that section and that were in force immediately 
before that Act was repealed. Trade Marks No. 119, 1995 IPINIl! AUS/T/l 
Page 25 
PART 3-TRADE MARKS AND TRADE MARK RIGHTS 
What is a trade mark? 
17. A trade mark is a sign used, or intended to be used, to distinguish 
goods or services dealt with or provided in the course of trade by a person 
5 from goods or services so dealt with or provided by any other person. 
Note: For sign sce section 6. 
Certain signs not to be used as trade marks etc. 
18.(1) The regulations may provide that a sign specified in the 
regulations is not to be used as a trade mark or as part of a trade mark. 
10 (2) Regulations made under subsection (1) do not affect any trade mark 
that: 
(a) was a registered trade mark; or 
(b) in the case of an unregistered trade mark-was being used in good 
fai th; 
15 immediately before the regulations were registered under the Legislative 
Instruments Act 1995. 
Note: For registered trade mark see section 6. 
Certain trade marks may be registered 
19.(1) A trade mark may be registered in accordance with this Act in 
20 respect of: 
(a) goods; or 
(b) servIces; or 
(c) both goods and services. 
(2) The registration of a trade mark may be in respect of goods or 
25 services of more than one class. 
Note: See subsection (3) for division into classes. 
(3) The regulations may provide for the classes into which goods and 
services are to be divided for the purposes of this Act. 
Rights given by registration of trade mark 
30 20.(1) If a trade mark is registered, the registered owner of the trade 
mark has, subject to this Part, the exclusive rights: 
(a) to use the trade mark; and 
(b) to authorise other persons to use the trade mark;' 
in relation to the goods and/or services in respect of which the trade mark 
35 is registered. 
Note 1: For r~gisttrtd owner sec section 6. 
Note 2: For use see section 7. 
(2) The registered owner of a trade mark has also the right to obtain relief 
under this Act if the trade mark has been infringed. 
40 Note: For what amounts to an infringement of a trade mark see Part 12. IP/N/lIAUS/TIl 
Page 26 
Trade Marks No. 119, 1995 
(3) The rights are taken to have accrued to the registered owner as from 
the date of registration of the trade mark. 
Note: For tIml of rlgistration see section 6. 
(4) If the trade mark is registered subject to conditions or limitations, the 
rights of the registered owner are restricted by those conditions or 5 
limitations. 
Note: For limitatwns see section 6. 
(5) If the trade mark is registered in the name of 2 or more persons as 
joint 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 10 
person. 
Nature of registered trade "lark as property 
21.(1) A registered trade mark is personal property. 
(2) Equities in respect of a registered trade mark may be enforced in the 
same way as equities in respect of any other personal property. 15 
Note: For r~gisttr~d tradt ITUJrk see section 6. 
Power of registered owner to deal with trade mark 
22.(1) The registered owner of a trade mark may, subject only to any 
rights vested in another person, deal with the trade mark as its absolute owner 
and give in good faith discharges for any consideration for that dealing. 20 
(2) This section does not protect a person who deals with the registered 
owner othelWise than: 
(a) as a purchaser in good faith for value; and 
(b) without notice of any fraud on the part of the owner. 
Note: For r~gist~r~d o ... ·ntr sce section 6. 25 
Limitation on rights if similar trade marks etc. registered by 
different persons 
23. If trade marks that are substantially identical or deceptively similar 
have been registered by more than one person (whether in respect of the same 
or different goods or services), the registered owner of anyone of those trade 30 
marks does not have the right to prevent the registered owner of any 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 d~ctpf;"tly similar sce section 10. 35 Trade Marks No. 119, 1995 IP/N/lIAUS/T/l 
Page 27 
Trade mark consisting of sign that becomes accepted as sign 
describing article etc. 
24.(1) This section applies if a registered trade mark consists of, or 
contains, a sign that, after the date of registration of the trade mark, becomes 
5 generally accepted within the relevant trade as the sign that describes or is 
the name of an article, substance or service. 
Note: For registered trade mark, sign and date of registration see section 6. 
(2) If the trade mark consists of the sign, the registered owner: 
(a) does not have any exclusive rights to use, or authorise other persons 
10 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 
15 including the day determined by the court under subsection (4). 
Note: For registered owner see section 6. 
(3) If the trade mark contains the sign, the registered owner: 
(a) does not have any exclusive rights to use, or authorise other persons 
to use, the sign in relation to: 
20 (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). 
25 Note: For registered owner see section 6. 
(4) For the purposes of subsections (2) and (3), a prescribed court may 
determine the day on which a sign first became generally accepted within the 
relevant trade as the sign that describes or is the name of the article, substance 
or servIce. 
30 Note: For prescribed court see section 190. 
Trade mark relating to article etc. formerly manufactured 
under patent 
25.(1) This section applies if: 
(a) a registered trade mark consists of, or contains, a sign that describes 
35 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 
40 (c) the sign is the only commonly known \vay to describe or identify the 
article, substance or service. 
Note: For registered trade mark and sign sce section 6. IP/N/lIAUS/T/l 
Page 28 
Trade Marks No. 119, 1995 
(2) If the trade mark consists of the sign, the registered owner: 
(a) does not have any exclusive rights la 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 5 
(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. 
(3) If the trade mark contains the sign, the registered owner: 
(a) dqes not have any exclusive rights to use, or authorise other persons 10 
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 15 
of the period of 2 years after the patent expired or ceased. 
Po,"·ers of authorised user of registered trade mark 
26.(1) Subject to any agreement between the registered owner of a 
registered trade mark and an authorised user of the trade mark, the authorised 
user may do any of the follo\ving: 20 
(a) the authorised user may use the trade mark in relation to the goods 
and/or services in respect of which the trade mark is registered, 
subject to any condi tion or I im itation subject to which the trade mark 
is registered; 
(b) the authorised user may (subject to subsection (2) bring an action 25 
for infringement of the trade mark if the registered o\vner refuses or 
neglects to do so \vithin the prescribed period; 
(c) the authorised user may cause to be displayed on goods in respect of 
which the trade mark is registered, or on their package, or on the 
container in which they arc offered to the public, a notice prohibiting 30 
any act that is under subsection 121 (2) a prohibited act in relation 
to the goods; 
(d) the authorised user may: 
(i) give to the Comptroller a notice under section 132 objecting 
to the importation of goods that infringe the trade nlark; or 35 
(ii) revoke such a notice; 
(e) an authorised user may give permission to any person: 
(i) to al tcr or de face; or 
(ii) to make any addition to; or 
(iii) to remove. erase or ohliterate. \vholly or partly: 40 Trade Marks No. 119, 1995 IPINll! AUS/T/1 
Page 29 
a registered trade mark that is applied to any goods, or in relation to 
any goods or services, in respect of which the trade mark is 
registered; 
(t) the authorised user may give permission to any person to apply the 
5 trade mark to goods, or in relation to goods or services, in respect of 
which the trade mark is registered. 
Note 1: For registered owntr and registered trade mark see section 6. 
Note 2: For authorised llser see section 8. 
Note 3: For what amounts to an infringement of a trade mark see Part 12. 
10 Note 4: For apply to and apply in rtlation to see section 9. 
(2) If the authorised user brings an action for infringement of the trade 
mark, the authorised user must make the registered owner of the trade mark 
a defendant in the action. However, the registered owner is not liable for 
costs if he or she does not take part in the proceedings. IP/N/lIAUS/T/l 
Page 30 
Trade Marks No. 119, 1995 
PART 4-APPLICATION FOR REGISTRATION 
Division I-General 
Application-how made 
27.(1) A person may apply for the registration of a trade mark in respect 
5 of goods and/or services if: 
(a) the person claims to be the owner of the trade mark; and 
(b) one of the following applies: 
(i) the person is using or intends to use the trade mark in relation 
to the goods and/or services; 
10 (ii) the person has authorised or intends to authorise another 
15 person to use the trade mark in relation to the goods and/or 
servIces; 
(iii) the person intends to assign the trade mark to a body corporate 
that is about to be constituted with a view to the use by the body 
corporate of the trade mark in relation to the goods and/or 
servIces. 
Note: For use see section 7. 
(2) The application must: 
(a) be in accordance with the regulations; and 
20 (b) be filed, together with any prescribed document, in accordance with 
the regulations. 
Note: For file see section 6. 
(3) Without limiting the particulars that may be included In an 
application, the application must: 
25 (a) include a representation of the trade mark; and 
(b) specify, in accordance with the regulations, the goods and/or services 
in respect of which it is sought to register the trade mark. 
(4) Regulations made for the purposes of paragraph (3)(b) may apply, 
adopt or incorporate any matter contained in any listing of goods and/or 
30 services published by the Registrar from time to time and made available for 
inspection by the public at the Trade Marks Office and its sub-offices. 
(5) An application (other than an application under section 51 for the 
registration of 2 or more trade marks as a series) may be made in respect of 
goods and services of one or more of the classes provided for in regulations 
35 made under subsection 19(3). 
Application by joint owners 
28. If the relations between 2 or more persons interested in a trade mark 
arc such that none of them is entitled to use the trade mark except: Trade Marks No. 119, 1995 
(a) on behalf of all of them; or IP/N/lIAUS/T/1 
Page 31 
(b) in relation to goods and/or services with which all of them are 
connected in the course of trade; 
the persons may together apply for its registration under subsection 27( 1). 
Application for registration of trade mark whose registration has 5 
been sought in a Convention country--claim for priority 
29.(1) If: 
(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 10 
of those applications, was made, that person or another person 
(successor in title) of whom that person is a predecessor in title 
applies to the Registrar for the registration of the trade mark in 
respect of some or all of the goods and/or services in respect of which 
registration was sought in that country or those countries; 15 
that person or that 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 registration 
of the trade mark in respect of any or all of those goods and/or services in 
accordance with the regulations. 20 
I (2) The priority claimed is for the registration of the trade tnark in 
respect of the goods or services: 
(a) jf an application to register the trade mark \vas made in only one 
Convention country-from (and including) the day on which the 
application was made in that country; or 25 
(b) 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. 
(3) The regulations may provide for the filing of documents in support 
of a notice claiming priority and, in particular, for the filing of certified 30 
copies of any application for the registration of the trade mark nUlde in a 
Convention country. 
Note: For Conl'ention country scc section 225. 
Particulars of application to be published 
30. The Registrar must publish the particulars of the application In 35 
accordance with the regulations. 
Registrar to examine, and report on, application 
31. The Registrar must, in accordance with the regulations, examine and 
report on: IP/N/lIAUS/T/l 
Page 32 
Trade Marks No. 119, 1995 
(a) whether the application has been made in accordance with this Act; 
and 
(b) whether there are grounds under Division 2 for rejecting it. 
Registrar to decide on disputed classification of goods etc. 
5 32. If a question arises as to the class in which goods or services are 
comprised: 
(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. 
10 Application accepted or rejected 
33.(1) The Registrar must, after the examination, accept the application 
unless he or she is satisfied that: 
(a) the application has not been made in accordance with this Act; or 
(b) there are grounds for rejecting it. 
15 Note: For the grounds on which an application may be rejected see Division 2. 
(2) The Registrar may accept the application subject to conditions or 
limitations. 
Note: For limitations see section 6. 
(3) If the Registrar is satisfied that: 
20 (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. 
(4) The Registrar may not reject an application without giving the 
applicant an opportunity of being heard. 
25 Note: For applicant scc section 6. 
Notice etc. of decision 
34. The Registrar must: 
(a) notify the applicant in writing of his or her decision under section 33; 
and 
30 (b) advertise the decision in the Official Journal. 
Note: For applicant see section 6. 
Appeal 
35. The applicant may appeal to the Federal Court against a decision of 
the Registrar: 
35 (a) to accept the application subject to conditions or limitations; or 
(b) to reject the application. 
Note: For applicant see section 6. 7i'ade Marks No, 119, 1995 
Deferment of acceptance IP/NIlIAUS/TI 1 
Page 33 
36. The Registrar may defer the acceptance of the application in the 
circumstances, and for the period, provided for in the regulations. 
Lapsing of application 
37.(1) Subject to subsection (2), an application lapses if it is not accepted 5 
within the prescribed period or within that period as extended in accordance 
with the regulations. 
(2) If, after the prescribed period or the prescribed period as extended 
(as the case may be) has expired, the Registrar extends under section 224 the 
period within which the application may be accepted, the application: 10 
(a) is taken not to have lapsed when the prescribed period expired; and 
(b) lapses if it is not accepted within the extended period. 
Revocation of acceptance 
38.(1) I f, before a trade mark is registered, the Registrar is satisfied: 
(a) that the application for registration of the trade mark was accepted 15 
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. 20 
Note: For limiUJ.tions see section 6. 
(2) If the Registrar revokes the acceptance: 
(a) the application is taken to have never been accepted; and 
(b) the Registrar must examine, and report on, the application as 
necessary under section 31; and 25 
(c) sections 33 and 34 again apply in relation to the application. IPlNllIAUS/T/l 
Page 34 
Traclt..' Marks No. 119, 19()5 
Division 2-Grounds for rejecting an application 
Trade mark containing etc. certain signs 
39.(1) An application for the registration of a trade mark must be 
rejected if the trade mark contains or consists of a sign that, under regulations 
5 made for the purposes of section 18, is not to be used as a trade mark. 
(2) An application for the registration of a trade mark may be rejected 
if the trade mark contains or consists of: 
(a) a sign that is prescribed for the purposes of this subsection; or 
(b) a sign so nearly resembling: 
10 (i) a sign referred to in paragraph (a); or 
(ii) a sign referred to in subsection (1); 
as to be likely to be taken for it. 
Trade mark that cannot be represented graphically 
40. An application for the registration of a trade mark must be rejected 
15 if the trade mark cannot be represented graphically. 
Trade mark not distinguishing applicant's goods or services 
41.(1) For the purposes of this section, the use of a trade mark by a 
predecessor in title of an applicant for the registration of the trade mark is 
taken to be a use of the trade mark by the applicant. 
20 Note 1: For applicant and predecessor in title see section 6. 
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use 
of the trade mark by the other person is taken to be a use of the trade mark by the predecessor 
in title (see subsection 7(3) and section ~). 
(2) An application for the registration of a trade mark must be rejected 
25 if the trade mark is not capable of distinguishing the applicant's goods or 
services in respect of which the trade mark is sought to be registered 
(designated goods or services) from the goods or services of other persons. 
Note: For goods of a person and services of a person see section 6. 
(3) In deciding the question whether or not a trade mark is capable of 
30 distinguishing the designated goods or services from the goods or services 
of other persons, the Registrar must first take into account the extent to which 
the trade mark is inherently adapted to distinguish the designated goods or 
services from the goods or services of other persons. 
(4) Then, if the Registrar is still unable to decide the question, the 
35 following provisions appJy. 
(5) If the Registrar finds that the trade mark is to some extent inherently 
adapted to distinguish the designated goods or services from the goods or 
services of other persons but is unable to decide, on that basis alone, that the 
trade mark is capable of so distinguishing the designated goods or services: Trade Marks No. 119, 1995 IP/NIlIAUS/TI1 
Page 35 
(a) the Registrar is to consider whether, because of the combined effect 
of the following: 
(i) the extent to which the trade n1ark is inherently adapted to 
distinguish the designated goods or services; 
(ii) the use, or intended use, of the trade mark by the applicant; 5 
(iii) any other circumstances; 
the trade mark does or will distinguish the designated goods or 
services as being those of the applicant; and 
(b) jf the Registrar is then satisfied that the trade mark does or will so 
distinguish the designated goods or services-the trade mark is taken 10 
to be capable of distinguishing the applicant's goods or services from 
the goods or services of other persons; and 
(c) if the Registrar is not satisfied that the trade mark does or will so 
distinguish the designated goods or services-the trade mark is taken 
not to be capable of distinguishing the applicant's goods or services 15 
from the goods or services of other persons. 
Note 1: For goods of a person and services of a person see section 6. 
Note 2: Useofa trade mark by a predecessor in title of an applicant and an authorised use of a trade mark 
by another person are each taken to be use of the trade mark hy the appl icant (sec subsections 
(1) and 7(3) and section 8). 20 
(6) If the Registrar finds that the trade mark is not inherently adapted to 
distinguish the designated goods or services from the goods or services of 
other persons, the fol1owing provisions app1y: 
(a) if the applicant establishes that, because of the extent to which the 
applicant has used the trade mark before the filing date in respect of 25 
the application, it does distinguish the designated goods or services 
as being those of the applicant-the trade mark is taken to be capable 
of distinguishing the designated goods or services from the goods or 
services of other persons; 
(b) in any other case-the trade mark is taken not to be capable of 30 
distinguishing the designated goods or services from the goods or 
services of other persons. 
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade 
marks that consist wholly of a sign that is ordinarily used to indicate: 
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other 35 
characteristic. of goods or services; or 
(b) the time of production of goods or of the rendering of services. 
Note 2: Use of a trade mark by a predecessor in title of an appl icanland an authorised use of a trade mark 
by another person are each taken to he use of the trade mark by the applicant (sce subsections 
(I) and 7(3) and section 8). 40 
Trade mark scandalous or its use contrary to law 
42. An application for the registration of a trade mark must be rejected 
if: IP/N/lIAUS/TIl 
Page 36 
Trade Marks No. 119, 1995 
(a) the trade mark contains or consists of scandalous matter; or 
(b) its use \vould be contrary to law. 
Trad~ mark likel~ to deceive or cause confusion 
43 •. An application for the registration of a trade mark in respect of 
5 particular goods or services must be rejected if, because of some connotation 
that the trade mark or a sign contained in the trade mark has, the use of the 
trade mark in relation to those goods or services would be likely to deceive 
or cause confusion. 
Identical etc. trade marks 
10 44.(1) Subject to subsections (3) and (4), an application for the 
registration of a trade mark (applicant's trade mark) in respect of goods 
(applicant's goods) nlust be rejected if: 
(a) the applicant's trade mark is substantially identical with, or 
deceptively similar to: 
15 (i) a trade mark registered by another person in respect of similar 
goods or closely related services; or 
(ii) a trade mark whose registration in respect of similar goods or 
closely related services is being sought by another person; and 
(b) the priority date for the registration of the applicant's trade mark in 
20 respect of the applicant's goods is not earlier than the priority date 
for the registration of the other trade mark in respect of the similar 
goods or closely related services. 
Note 1: For dtCtpti~'e/y similar sce section 10. 
Note 2: For similar goods sec subsection 14( 1). 
25 Note 3: For priority date scc section 12. 
(2) Subject to subsections (3) and (4), an application for the registration 
of a trade mark (applicant's trade ,nark) in respect of services (applicant's 
services) must be rejected if: 
(a) it is substantially identical with, or deceptively similar to: 
30 (i) a trade mark registered by another person in respect of similar 
services or closely related goods; or 
(ii) a trade mark whose registration in respect of similar services 
or closely related goods is being sought by another person; and 
(b) the priority date for the registration of the applicant's trade nlark in 
35 respect of the applicant's services is not earlier than the priority date 
for the registration of the other trade mark in respect of the similar 
services or closely related goods. 
Note 1: For decept' .... 'ely similar scc scct ion 10. 
Note 2: For similar sen'ices sce subsection 14(2). 
40 Note 3: For priority date sce sect ion 12. 
(3) If the Registrar in either case is satisfied: Trade Marks No. 119, 1995 IP/N/1/AUS/T/l 
Page 37 
(a) that there has been honest concurrent use of the 2 trade marks; or 
(b) that, because of 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 conditions or limitations that the Registrar thinks 
fit to impose. If the applicant's trade mark has been used only in a particul':lr 5 
area, the limitations may include that the use of the trade mark is to be 
restricted to that particular area. 
Note: For limitations see section 6. 
(4) If the Registrar in either case is satisfied that the applicant, or the 
applicant and the predecessor in title of the applicant, have continuously 10 
used the Cl.pplicant's trade mark for a period: 
(a) beginning before the priority date for the registration of the other 
trade mark in respect of: 
(i) the similar goods or closely related services; or 
(ii) the similar services or closely related goods; and 15 
(b) ending on the priority date for the registration of the applicant's trade 
mark; 
the Registrar may not reject the application because of the existence of the 
other trade mark. 
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the 20 
owner of the trade mark (see subsection 7(3». 
Note 2: For pncl~cessor in title see section 6. 
Note 3: For priority dat~ see section 12. IP/NIlIAUS/TI 1 
Page 38 
Trade Marks No. 119, 1995 
Division 3-Divisional applications 
Definition of divisional application 
45.(1) A person who has made an application (initial application) for 
the registration of a trade mark in respect of certain goods and/or services 
5 may, in accordance with this Division, make another application (divisional 
application): 
(a) for the registration of a part only of the trade mark in respect of any 
or all those goods and/or services; or 
(b) for the registration of the trade mark in respect of SOITle only of the 
10 goods and/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 and/or services in respect of which registration was sought in 
the first place-for the registration of the trade mark in respect of any 
15 or all of the goods and/or services that have been so excluded. 
(2) For the purposes of this Division, the initial application is taken to 
be the application whose particulars have been published by the Registrar 
under section 30. 
Divisional application possible only if initial application is pending 
20 46. A divisional application for the registration of a trade mark or a part 
of a trade mark may be made only if the initial application for the registration 
of the trade mark is pending. 
Note 1: For initial application and divisional application see section 45. 
Note 2: For pending see section 11. 
25 Divisional application for registration of part of trade mark 
47.(1) This section provides for the making of a divisional application 
for the registration of a part only of the trade mark that is the subject of the 
initial application. 
(2) If a part of a trade mark, by itself, may be registered as a trade mark, 
30 the applicant for the registration of the trade mark may, within the prescribed 
period but subject to subsection (3), make a divisional application for the 
registration of that part as a trade mark in respect of any or all of the goods 
and/or services specified in the initial application. 
Nole: For applicant see section 6. 
35 (3) If the initial application has been accepted, the divisional application 
may not be made after the acceptance is advertised in the Official Journal. 
Note: For initial application and dh'iflionai application see section 45. Trade Marks No. 119, 1995 IP/N/lIAUS/TIl 
Page 39 
Divisional application for registration of trade mark in respect of 
some of the goods etc. specified in the initial application 
48.(1) This section provides for the making of a divisional application 
for the registration of a trade mark in respect of some of the goods and/or 
services in respect of which registration of the trade mark is being sought by 5 
the initial application. 
(2) The applicant for the registration of a trade mark may, subject to 
subsection (3), make a divisional application for the registration of the trade 
mark in respect of any (but not all) of: 
(a) the goods and/or services specified in the initial application; or 10 
(b) if the initial application has been amended to exclude some of the 
goods and/or services specified in that application before its 
amendment-the goods and/or services specified in the initial 
application as amended. 
Note: For applicant see section 6. 15 
(3) If the initial application has been accepted, the divisional application 
may not be made after the acceptance is advertised in the Official Journal. 
Note: For initial application and dil'is;onal application sec section 45. 
Divisional application for registratior:-- of trade mark in respect of 
goods etc. excluded from the initial application 20 
49.(1) This section applies if the initial application for the registration 
of a trade mark is anlended to exclude some of the goods and/or services 
specified in that application before its amendment. It provides for the 
making of a divisional application in respect of any or all of the excluded 
goods and/or services. 25 
(2) If the initial application is amended: 
(a) before a decision is made about it under section 33; or 
(b) if the initial application is accepted-before its acceptance IS 
advertised in the Official Jourllal; 
the applicant may, within the prescribed period but subject to subsection (3), 30 
make a divisional application for the registration of the trade nHHk in respect 
of any or all of the goods and/or services that have been excluded from the 
initial application. 
(3) If the initial application has been accepted, the divisional application 
may not be made after the acceptance is advertised in the Official JOllrnal. 35 
(4) If the initial application (whether it has already been amended or not) 
is amended after its acceptance has been advertised in the Official Journal, 
the applicant may, \vithin the prescribed period, nlake a divisional IP/N/lIAUS/T/l 
Page 40 
Trade Marks No. 119, 1995 
application for the registration of the trade mark in respect of any or all of 
the goods and/or services that have been excluded from the application 
whose acceptance was advertised in the Official Journal. 
Note 1: For initial application and divisional application see section 45. 
5 Note 2: For applicant see section 6. 
Filing date 
50. A divisional application is taken to have been filed on the day on 
which the initial application concerned was filed. 
Note: For fd~ see section 6. Trade Marks No. 119, 1995 IP/N/lIAUS/T/l 
Page 41 
Division 4-Applicalion JOT registration of series of trade marks 
Application-series of trade 'markS 
51.(1) A person may make a single application under subsection 
27(1) for the registration of 2 or more trade marks in respect of similar 
goods or similar services within ,a single class if the trade marks resemble 5 
each other in material particulars and differ only in respect of one or more 
of the following matters: 
, , 
(a) statements or representations as to the goods or services in relation 
to which the trade marks are used or are intended to be used; 
(b) ,.statements or representations as to number, price, quality or names 10 
of places; 
(c) the colour of any part of the trade mark; 
(d) any matter that is not inherently adapted to distinguish the goods or 
services and does not substantially affect the identity of the trade 
marks. 15 
(2) If: 
(a) the application meets all the requirements of this Act; and 
(b) the Registrar is required (under section 68) to register the trade 
marks; 
he or she must register them as a series in one registration. 20 IPINIl! AUS/T/1 
Page 42 
Trade Marks No. 119, 1995 
PART 5-OPPOSITION TO REGISTRATION 
Division I-General 
Opposition 
52.(1) If the Registrar has accepted an application for the registration of 
5 a trade nlark, a person may oppose the registration by filing a notice of 
opposition. 
(2) The notice of opposition must be in an approved form and,must be 
filed within the prescribed period or within that period as extended in 
accordance with the regulations. 
10 Note: For appro~'td fonn andfUt see section 6. 
(3) The opponent must serve a copy of the notice on the applicant. 
Note: For opponent see section 6. 
(4) The registration of a trade mark may be opposed on any of the 
grounds specified in Division 2 and on no other grounds. 
15 Circumstances in which opposition may proceed in name of a person 
other than the person who filed the notice 
53. If: 
(a) after a person has filed a notice of opposition, the right or interest on 
which the person relied to file the notice of opposition becomes 
20 vested in another person; and 
(b) the other person: 
(i) notifies the Registrar in writing that the right or interest is 
vested in him or her; and 
(ii) does not withdraw the opposition; 
25 the opposition is to proceed as if the notice of opposition had been filed in 
that other person's name. 
Note: For file see section 6. 
Opposition proceedings 
54.(1) The Registrar must give to the opponent and to the applicant an 
30 opportunity of being heard on the opposition. 
Note: For oppontlu and applicant see section 6. 
(2) Subject to subsection (1), the proceedings for dealing with the 
opposition must be in accordance with the regulations. 
Decision 
35 55. Unless the proceedings are discontinued or dismissed, the Registrar 
must, at the end, decide: 
(a) to refuse to register the trade mark; or Trade Marks No. 119, 1995 IP/N/1/AUS/T/l 
Page 43 
(b) to register the trade mark (with or without conditions or limitations) 
in respect of the goods and/or 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. 5 
Note: For limi1atWns see section 6. 
Appeal 
56. The applicant or the opponent may appeal to the Federal Court from 
a decision of the Registrar under section 55. 
Note: For applicant and opponent see section 6. 10 IP/NIlIAUS/TIl 
Page 44 
Trade Marks No. 119, 1995 
Division 2-Grounds for opposing registration 
Registration may be opposed on same grounds as for rejection 
57. The registration of a trade mark ~ay be opposed on any of the 
grounds on which an application for the registration of a ~rade mar~ may b~ 
5 rejected under Division 2 of Part 4, except the ground that the trade mark 
cannot be represented graphically. 
Applicant not owner of trade mark 
58. The registration of a trade mark may be opposed on the ground that 
the applicant is not the owner of the trade mark. 
10 Note: For applicant see section 6. 
Applicant not intending to use trade mark 
59. The registration of a trade mark may be opposed on the ground that 
the applicant does not intend: 
(a) to use, or authorise the use of, the trade mark in Australia; or 
15 (b) to assign the trade mark to a body corporate for use by the body 
corporate in Australia; 
in relation to the goods and/or services specified in the application. 
Note: For applicant see section 6. 
Trade mark similar to trade mark that has acquired 
20 a reputation in Australia 
60. The registration of a trade mark in respect of particular goods or 
services may be opposed on the ground that: 
(a) it is substantially identical with, or deceptively similar to, a trade 
mark that, before the priority date for the registration of the 
25 first-mentioned trade mark in respect of those goods or services, 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. 
30 Note 1: For deceptively similar see section 10. 
Nole 2: For priority date sec section 12. 
Trade mark containing or consisting of a false 
geographical indication 
61.(1) The registration of a trade mark in respect of particular goods 
35 (relevant goods) may be opposed on the ground that the trade mark contains 
or consists of a sign that is a geographical indication for goods (designated 
goods) originating in: 
(a) a country, or in a region or locality in a country, other than the country 
in which the relevant goods originated; or Trade Marks No. 119, 1995 IP/N/lIAUS/T/l 
Page 45 
(b) a region or locality in the country in which the relevant goods 
originated other than the region or locality in which the relevant 
goods originated. 
(2) An opposition on a ground referred to in subsection (1) fails if the 
applicant establishes that: 5 
(a) the relevant goods 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 goods in the country in which the designated goods 
originated; or 10 
(c) !he applicant, or a predecessor in title of the applicant, used the sign 
in good faith in respect of the relevant goods, or applied in good faith 
for the registration of the trade mark in respect of the relevant goods, 
before: 
(i) 1 January 1996; or 15 
(ii) the day on which the sign was recognised as a geographical 
indication for the designated goods in their country of origin; 
whichever is the later; or 
(d) if the registration of the trade mark is being sought in respect of wine 
or spirits (relevant wine or spirits}-the sign is identical with the 20 
name that, on 1 January 1995, was, in the country in which the 
relevant \vine or spirits originated, the customary name of a variety 
of grapes used in the production of the relevant wine or spirits. 
(3) An opposition on a ground referred to in subsection (1) also fails if 
the applicant establishes that: 25 
(a) although the sign is a geographical indication for the designated 
goods, it is also a geographical indication for the relevant goods; and 
(b) the applicant has not used, and does not intend to use, the trade mark 
in relation to the relevant goods in a way that is likely to deceive or 
confuse members of the public as to the origin of the relevant goods. 30 
Note 1: For applicant. prtdecessor in title and geographical indication sce secrion 6. 
Note 2: For originate (in relation 10 wine only) scc section 15. 
Application etc. defective etc. 
62. The registration of a trade mark may be opposed on any of the 
following grounds: 35 
(a) that the application, or a document filed in support of 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. 40 
Note: For flIt see scction 6. IP/N/lIAUS/T/l 
Page 46 
Trade Afarks No. 119, 1995 
PART 6-AMENDMENT OF APPLICATION FOR 
REGISTRATION OF A TRADE MARK AND OTHER 
DOCUMENTS 
Amendment of application for registration of trade mark 
5 63.(1) The Registrar may, at the written request of the applicant or of his 
or her agent, amend an application for the registration of a trade mark in 
accordance wi th section 64 or 65. 
(2) If: 
(a) an application for the registration of a trade mark may be amended 
10 under section 65; and 
(b) the applicant has not asked in writing that the application be 
amended; 
the Registrar may, on his or her own initiative but in accordance with the 
regulations, amend the application as necessary to remove any ground on 
15 which the application could be rejected. 
Amendment before particulars of application are published 
64. If: 
(a) the particulars of the application have not yet been published under 
section 30; and 
20 (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. 
Amendment after particulars of application have been published 
65.(1) If the particulars of the application have been published under 
section 30, the application may be amended as provided in this section. 
25 (2) An amendment may be made to the representation of the trade mark 
if the amendment does not substantially affect the identity of the trade mark 
as at the time when the particulars of the application were published. 
(3) An amendment may be made to correct a mistake of fact or an error 
in the classification of any goods or services specified in the application. 
30 (4) An amendment may be made to change the type of registration 
sought in the application (for example, an application for the registration of 
a trade mark as a certification trade mark may be amended to an application 
for registration as a collective trade mark). 
(5) An amendment may be made to any other particular specified in the 
35 application unless the amendment would have the effect of extending the 
rights that (apart from the amendment) the applicant would have under the 
registration if it were granted. Trade Marks No, 119, 1995 
Amendment of other documents IPINlll AUS/T/l 
Page 47 
66. The Registrar may, at the written request of the person who has filed 
an application (other than an application for the registration of a trade mark), 
a notice or other document for the purposes of this Act or at the written 
request of the person's agent, amend the application, notice or document: 5 
(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. 
Note: For file see section 6. 
Appeal 10 
67. A'1 appeal lies to the Federal Court from a decision of the Registrar 
under this Part. IPINIl! AUS/TIl 
Page 48 
Trade Marks No. 119, 1995 
PART 7-REGISTRATION OF TRADE MARKS 
Division I-Initial registration 
Obligation to register 
68.(1) The Registrar must, within the period provided under the 
5 regulations, register a trade mark that has been accepted for registration: 
(a) jf there has been no opposition to the registration; or 
(b) if there has been an opposi tion-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. 
10 Otherwise, the application for the registration of the trade mark lapses. 
(2) On registering the trade mark, the Registrar must give it a number 
by which it may be identified. 
Registration-how effected 
69.(1) The trade mark must be registered: 
15 (a) in the name of the applicant for registration; and 
(b) in respect of the goods and/or 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 
20 deciding to register the trade mark. 
The Registrar must enter these particulars in the Register. 
(2) The Registrar must also enter in the Register: 
(a) a graphical representation of the trade mark; and 
(b) its registration number; and 
25 (c) any other particulars that are required by this Act to be entered in the 
Register. 
(3) If 2 or more persons applied together for the registration of the trade 
mark (see section 28), the applicants must be registered as joint owners of 
the trade mark. 
30 Note: For limitations, Registrar and applicant see section 6. 
Colours in registered trade marks 
70.(1) A trade mark may be registered with limitations as to colour. 
(2) The limitations may be in respect of the whole, or a part, of the trade 
mark. 
35 (3) To the extent that a trade mark is registered without limitations as to 
colour, it is taken to be registered for all colours. 
Note: For limitations see section 6. Trade Marks No. 119, 1995 
Notification of registration IP/N/lIAUS/T/l 
Page 49 
71. When a trade mark has been registered, the Registrar must: 
(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. 5 
Note: For rtgisttred owntr and apprm'tdjorm see section 6. 
Date and term of registration 
72.(1) Subject to subsection (2), the registration of a trade mark in 
respect of the goods and/or services in respect of which the trade mark is 
registered is taken to have had effect from (and including) the filing date in 10 
respect of the application for registration. 
Note: For filing date see section 6. 
(2) If: 
(a) the application \vas in respect of a trade mark whose registration had 
also been sought in one or more than one Convention country; and 15 
(b) the applicant claimed a right of priority under section 29 for the 
registration of the trade mark in respect of particular goods or 
services; and 
(c) the trade mark is registered under this Act; 
the registration of the trade mark in respect of those goods or services is taken 20 
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 25 
Convention country-from (and including) the day on which the 
earliest of those applications was made. 
Note: For Con)'tntWn country sec section 225. 
(3) Unless it is earlier cancelled, or the trade mark is earlier removed 
froln the Register, the registration of the trade mark expires 10 years after 30 
the filing date in respect of the application for its registration. 
Note 1: This is so even for a trade mark whose registration in respect of particular goods orservices has 
effect from (and including) the day on which an application was made in a Convention country. 
Note 2: For filing date sce section 6. 
Ceasing of registration 35 
73. The registration of a trade mark ceases if: 
(a) the trade mark is removed from the Register under section 78 or 
Part 9; or 
(b) the registration of the trade mark is canceJIed. IPlNllIAUS/T/l 
Page 50 
Disclaimers Trade Marks No. 119, 1995 
74.(1) An applicant for the registration of a trade mark, or the registered 
owner of a registered trade mark, may, by notice in writing given to the 
Registrar, disclaim any exclusive right to use, or authorise the use of, a 
5 specified part of the trade mark. 
(2) The disclaimer affects only the rights given by this Act to the 
registered owner of the trade mark on registration of the trade mark. 
(3) The Registrar must, on registering the trade mark or on receiving 
notice of the disclaimer (whichever is later), enter the particulars of the 
10 disclaimer in the Register. 
(4) A disclaimer properly made may not be revoked. 
Note: For applicant, registered owner, registered trade mark and Register see section 6. Trade Marks No. 119, 1995 
Division 2-Renewal of registration 
Request for renewal IP/NI lIAUS/TI 1 
Page 51 
75.(1) . Any person may, withln the prescribed period. before the 
registration of a trade mark expires, ask the Registrar to renew the 
registration. 5 
(2) The request must: 
(a) be in an approved form; and 
(b) be filed in accordance with the regulations. 
Notice of renewal due 
76. If, at the beginning of the prescribed period, the Registrar has not 10 
received a request for the renewal of the registration of the trade mark, the 
Registrar must, in accordance with the regulations, notify the registered 
owner of the trade mark that the renewal is due. 
Note: For r~gist~rtd owner see section 6. 
Renewal before registration expires 15 
77.(1) If a request for the rene\val of the registration of a trade mark is 
made in accordance with section 75, the Registrar must renew the 
registration for a period of 10 years from the day on which the registration 
of the trade mark would expire if it were not renewed. 
(2) The Registrar must give notice of the renewal to the registered owner 20 
of the trade mark in accordance with the regulations. 
Note: For rtgisttr~d own~r see section 6. 
Failure to renew 
78. If the registration of a trade mark is not renewed, then: 
(a) subject to sections 79 and 80, the registration ceases to have effect 25 
when it expires; and 
(b) unless the registration is renewed under section 79, the Registrar 
must remove the trade mark from the Register 12 months after the 
day on which the registration expired. 
Note: For R~gisttr see section 6. 30 
Renewal within 12 months after registration expires 
79. If, within 12 months after the registration of a trade mark has 
expired, a person asks the Registrar, in accordance with subsection 75(2), to 
renew the registration of the trade mark, the Registrar must renew the 
registration of the trade mark for 10 years from the day on which the 35 
registration expired. 
Status of unrenewed trade mark 
80. If: IP/N/l IAUS/TI 1 
Page 52 
Trade Marks No. 119, 1995 
(a) the registration ofa trade mark (unrenewed trade mark) has not been 
renewed; and 
(b) within 12 months after the registration expired, an application for the 
registration of a trade mark is made by a person other than the person 
5 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. IP/NIlIAUS/TI 1 
Page 53 
Trade Marks No. 119, 1995 
PART 8-AMENDMENT AND CANCELLATION OF 
REGISTRATION 
Division I-Action by Registrar 
Correction of Register 
5 81. The Registrar may, on his or her own initiative, correct any error or 
omission made in entering in the Register any particular in respect of the 
registration of a trade mark. 
Note: For Register see section 6. 
Adaptation of classification 
10 82. The Registrar may, in accordance with the regulations, amend the 
Register (whether by making, removing or altering entries) for the purpose 
of adapting the designation of the goods or services in respect of which trade 
marks are registered to reflect any change that has occurred in the 
classification of goods or services for the purposes of this Act. 
15 Note 1: For Rtgisttr see section 6. 
Note 2: For the classification of goods and services see subsection 19(3). 
Amendment of particulars of trade mark entered in Register 
83.(1) Subject to Part 11, the Registrar may, at the written request of the 
registered owner of a registered trade mark: 
20 (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 particulars of the application for 
the registration of the trade mark were published under section 30; 
or 
25 (b) amend any particulars entered in the Register relating to any 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 
30 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. 
Note: For registered owner, registtred trade mark and Register see section 6. 
(2) An appeal lies to the Federal Court from a decision of the Registrar 
35 under subsection (1). 
Note: See sections 215 and 216 for amendments of the Register to record changes in addresses for 
service and in the names of registered owners etc. IP/N/lIAUS/T/l 
Page 54 
Trade Marks No. 119, 1995 
Cancellation of registration 
84.(1) The Registrar must cancel the registration of a trade mark in 
accordance with the regulations if the registered owner asks in writing that 
the registration be cancelled. 
Note: For ngist6nd owner see section 6. 5 
(2) Before cancelling the registration of the trade mark, the Registrar 
must notify in accordance with the regulations: 
(a) any person recorded under Part 11 as claiming a right in respect of, 
or an interest in, the trade mark; and 
(b) if: 10 
(1) an application has been made to the Registrar for a record of 
the assignment or transmission of the trade mark to a person 
. to be entered in the Register (see section 109); and 
(ii) the assignment has not yet been recorded; 
the person to whom the trade mark has been assigned or transmitted. 15 Trade Marks No. 119, 1995 
Division 2-Action by Court 
Amendment to correct error or omission IP/NIlIAUS/TI 1 
Page 55 
85. A prescribed court may, on the application of an aggrieved person, 
order that the Register be rectified by: 
5 (a) entefing In the Register particuiars that were wrongly omitted from 
it; or 
(b) correcting any error in an entry in the Register. 
Note: For prescribed court see section 190. 
Amendment or cancellation on ground of contravention of 
10 condition etc. 
86. A prescribed court may, on the application of an aggrieved person, 
order that the Register be rectified by: 
(a) cancelling the registration of a trade mark; or 
(b) removing or amending any entry in the Register relating to the trade 
15 mark; 
on the ground that a condition or limitation entered in the Register in relation 
to the trade mark has been contravened. 
Note: For prescribed court see section 190. 
Amendment or cancellation-loss of exclusive rights to use 
20 trade mark 
87.(1) If section 24 or 25 applies in relation to a registered trade mark, 
a prescribed court may, on the application of an aggrieved person, but subject 
to subsection (2) and section 89, order that the Register be rectified by: 
(a) cancelling the registration of the trade mark; or 
25 (b) removing or amending any entry in the Register relating to the trade 
mark; 
having regard to the effect of section 24 or 25 (as the case may be) on the right 
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. 
30 (2) If section 24 or 25 applies in relation to the trade mark because the 
trade mark contains a sign that: 
(a) has become generally accepted within the relevant trade as the sign 
that describes or is the name of an article, substance or service; or 
(b) describes or is the name of: 
35 (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 remaiQ, on the Register in respect of: IP/NI1 IAUS/T/l 
Page 56 
Trade Marks No. 119, 1995 
(c) the article or substance or goods of the same descri ption; or 
(d) the service or services of the same description; 
subject to any condition or limitation that the court may impose. 
Note 1: Sections 24 and 25 provide that the registered owner of a trade mark does not have exclusive 
I rights to use, or to authorise the use of, the trade mark if it consists of, or contains, a sign that: 5 
(a) becomes generally accepted within the relevant trade as the sign that describes or is the 
name of an article, substance or service; or 
(b) is the only commonly known way to describe or identify an article formerly exploited 
under a patent, or a service formerly provided as a patented process, where the patent has 
expired more than 2 years ago. 10 
Note 2: For registered trade mark, registered owner and Register see section 6. 
Note 3: For prescribed court see section 190. 
Amendment or cancellation-other specified grounds 
88.(1) Subject to subsection (2) and section 89, a prescribed court may, 
on the application of an aggrieved person, order that the Register be rectified 15 
by: 
(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 20 
trade n1ark that ought to be entered. 
(2) An application may be made on any of the following grounds, and 
on no other grounds: 
(a) any of the grounds on which the registration of the trade mark could 
have been opposed under Division 2 of Part 5; 25 
(b) an amendment of the application for the registration of the trade 
mark \vas obtained as a result of fraud, false suggestion or 
misrepresentation; 
(c) because of the circumstances applying at the time when the 
application for rectification is filed, the use of the trade mark is likely 30 
to deceive or cause confusion for a reason other than one for which: 
(i) the application for the registration of the trade mark could 
have been rejected under section 43 or 44; or 
(ii) the registration of the trade mark could have been opposed 
under section 60; 35 
(d) the following circumstances apply: 
(i) the Registrar accepted the application for the registration of 
the trade mark because he or she was satisfied, having regard 
to the extent to which the trade mark was inherently adapted 
to distinguish the goods or services of the applicant for 40 Trade A1arks No. 119, 1995 IP/N/lIAUS/TIl 
Page 57 
registration from the goods or services of any other person and 
the intended use of the trade n1ark, that the trade mark would 
distinguish those goods or services as being those of the 
applicant (see paragraph 41(5)(a)); 
5 (ii) the application for rectification is made at least 10 years after 
the filing date; 
(iii) in the intervening period, the trade mark has not been used to 
an extent sufficient for it to distinguish, in fact, the goods or 
services of the registered owner from the goods or services of 
10 any other person; 
(e) if the application is in respect of an entry in the Register-the entry 
was made, or has been previously amended, as a result of fraud, false 
suggestion or misrepresentation. 
Note 1: For prescribed court see section 190. 
15 Note 2: For file, filing date and registered owner see section 6. 
Rectification may not be granted in certain cases if registered owner 
not at fault etc. 
89.(1) The court may decide not to grant an application for rectification 
made: 
20 (a) under section 87; 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 88(2)(a)); or 
(c) on the ground referred to in paragraph 88(2)( c); 
25 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. 
Note: For registered owner see section 6. 
(2) In making a decision under subsection (1), the court: 
30 (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. 
Duties and powers of Registrar 
90.(1) A person applying to a prescribed court under this Division must 
35 give notice of the application to the Registrar. 
Note: For prescribed court see section 190. 
(2) Except for cases where the court directs the Registrar to appear, the 
Registrar may appear before the court and be heard at his or her discretion. 
(3) The applicant must give to the Registrar a copy of any order made 
40 by the court under this Division and the Registrar must comply with the 
order. IP/N/lIAUS/T/l 
Page 58 
Trade Marks No. 1/9, 1995 
Division 3-Amendment of cerlificate of registration 
Amendment of certificate of registration 
91. When the Registrar amends any particular entered in the Register in 
respect of a trade mark, the Registrar may also amend the certificate of 
registration if he or she thinks it appropriate to do so. 5 Trade Marks No. 119, 1995 IP/N/lIAUS/T/l 
Page 59 
PART 9-REMOVAL OF TRADE :MARK FROM REGISTER 
FOR NON-USE 
Application for removal of trade mark from Register etc. 
92.(1) A person aggrieved by the fact that a trade mark is or may be 
5 registered may, subject to subsection (3), apply to the Registrar for the trade 
mark to be removed from the Register. 
(2) The application: 
(a) must be in accordance with the regulations; and 
(b) may be made in respect of any or all of the goods and/or services in 
10 respect of which the trade mark may be, or is, registered. 
(3) An application may not be made to the Registrar under subsection 
(1) if an action concerning the trade mark is pending in a prescribed court, 
but the person aggrieved may apply to the court for an order directing the 
Registrar to remove the trade mark from the Register. 
15 Note: For prescribtd court see section 190. 
(4) An application under subsection (1) or (3) (non-use application) 
may be made on either or both of the following grounds, and on no other 
grounds: 
(a) that, on the day on which the application for the registration of the 
20 trade mark was filed, the applicant for registration had no intention 
in good fai th: 
(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 
25 corporate in Australia; 
in relation to the goods and/or services to which the non-use 
application relates and that the registered owner: 
(iv) has not used the trade mark in Australia; or 
(v) has not used the trade mark in good faith in Australia; 
30 in relation to those goods and/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 for a continuous period 
of 3 years ending one month before the day on which the non-use 
35 application is filed, and, at no time during that period, the person who 
was then the registered owner: 
(i) used the trade mark in Australia; or 
(ii) used the trade mark in good faith in Australia; 
in relation to the goods and/or services to which the application 
40 relates. 
Note: For fd~ see section 6. IP/N/lIAUS/TI 1 
Page 60 
Trade Marks No. 119, 1995 
(5) If the right or interest on which a person relied to make an application 
(under subsection (1) or (3) to obtain the removal of a trade mark from the 
Register becomes vested in another person, the other person may, on giving 
notice of the relevant facts to the Registrar or the court (as the case requires), 
be substituted for the first-mentioned person as the applicant. 5 
Time for making application 
93.(1) Subject to subsection (2), an application for the removal of a trade 
mark from the Register may be made at any time after the filing date in 
respect of the application for the registration of the trade mark. 
(2) An application on the ground referred to in paragraph 92( 4)(b) may 10 
not be made before a period of 5 years has passed from the filing date in 
respect of the application for the registration of the trade mark. 
Note: For filing date sec section 6. 
Referral to court 
94. If: 15 
(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 cou rt; 
the Registrar may refer the matter to such a court and the court may hear and 20 
determine the matter as if an application had been made to it under 
subsection 92(3). 
Notification of application 
95.(1) If an application has been made to the Registrar under section 92, 
the Registrar must give notice of the application in accordance with the 25 
regulations. 
(2) If the application is in respect of a trade mark already entered on the 
Register, the Registrar must advertise the application in the Official Journal. 
(3) If the application is in respect of a trade mark whose registration is 
being sought, the Registrar is to advertise the application in the Official 30 
Journal only if the trade mark is registered. 
Notice of opposition 
96.(1) Any person may oppose an application under section 92 by filing 
a notice of opposition with the Registrar or the court, as the case requires. 
(2) The notice of opposition: 35 
(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). 
Note: For Jile see section 6. Trade Marks No. 119, 1995 IP/N/l! AUS/T/l 
Page 61 
Removal of trade mark from the Register etc. if application 
unopposed 
97.(1) If there is no opposition to an application to the Registrar under 
subsection 92(1), the Registrar must remove the trade mark from the 
5 Register in respect of the goods and/or services specified in the application. 
(2) If there is no opposition to an application to a court under subsection 
92(3), the court must order the Registrar to remove the trade mark from the 
Register in respect of the goods and/or services specified in the application. 
The court must cause a copy of the order to be served on the Registrar and 
10 the Registrar must comply with the order. 
Trade mark restored to Register if notice of opposition filed within 
extended time 
98. If: 
(a) the Registrar has removed a trade mark from the Register under 
15 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; 
20 the Registrar must restore the trade mark to the Register. Also, the trade mark 
is taken not to have been removed from the Register. 
Note: For flIt see section 6. 
Proceedings before Registrar 
99. If an application to the Registrar is opposed, the Registrar must deal 
25 with the matter in accordance with the regulations. 
Burden on opponent to establish use of trade mark etc. 
100.(1) In any proceedings relating to an opposed application, it is for 
the opponent to rebut: 
(a) any allegation made under paragraph 92(4)(a) that, on the day on 
30 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 
35 corporate in Australia; 
in relation to the goods and/or services to which the opposed 
application relates (relevant goods and/or services); or IPINIII AUS/T 11 
Page 62 
Trade Marks No. 119, 1995 
(b) any allegation made under paragraph 92(4)( a) that the trade mark has 
not, at any time before the period of one month ending on the day on 
which the opposed application was filed, been used, or been used in 
good faith, by its registered owner in relation to the relevant goods 
and/or services; or 5 
(c) any allegation made under paragraph 92(4)(b) that the trade mark has 
not, at any time during the period of3 years ending one month before 
the day on which the opposed application was filed, been used, or 
been used in good faith, by its registered owner in relation to the 
relevant goods and/or services. 10 
Note 1: If the registered owner of the Irade mark has authorised another person to use it, any authorised 
use oft:,e trade mark by that person is taken 10 be a use of the trade mark by the registered owner 
(see subsection 7(3)). 
Note 2: For fiJ~ and rtgisUrtd Ok'ntr sec section 6. 
(2) For the purposes of paragraph 1 (b), the opponent is taken to have 15 
rebutted the allegation that the trade mark has not, at any time before the 
period referred to in that paragraph, been used, or been used in good faith, 
by its registered o\vner in relation to the relevant goods and/or services if: 
(a) the opponent has established that the trade mark or the trade mark 
with additions or alterations not substantially affecting its identity, 20 
was used in good faith by its registered owner in relation to those 
goods or services before that period; or 
(b) in a case where the trade mark has been assigned but a record of the 
assignment has not been entered in the Register: 
(i) the opponent has established that the trade mark. or the trade 25 
mark with additions or alterations not substantially affecting 
its identity, was used in good faith by the assignee in relation 
to those goods or services before that period and that that use 
was in accordance with the terms of the assignment: and 
(ii) the Registrar or the court is of the opinion that it is reasonable, 30 
having regard to all the circumstances of the case, to treat the 
use of the trade mark by the assignee before that period as 
having been a use of the trade mark in relation to those goods 
or services by the registered owner. 
Note: J: If the registered owner of the trade mark has authorised another person to use it, any authorised 35 
use of {he trade mark hy that person is taken 10 be a lIse oflhe trade mark by the reg.istered owner 
(see subsection 7(3)). 
Note 2: For rtgi\·tered owner s.ce section (>. 
(3) For the purposes of paragraph 1 (C), the opponent is taken to have 
rebutted the allegation that the trade mark has not, at any time during the 40 
period referred to in that paragraph, been used, or been used in good faith. 
by its registered owner in relation to the relevant goods and/or services if: Trade Marks No. 119, 1995 IP/N/lIAUS/T/l 
Page 63 
(a) the opponent has established that the trade mark, or the trade mark 
with additions or alterations not substantially affecting its identity, 
was used in good faith by its registered owner in relation to those 
goods or services during that period; or 
5 (b) in a case where the trade mark has been assigned but a record of the 
assignment has not been entered in the Register: 
(i) the opponent has established that the trade mark, or the trade 
mark with additions or alterations not substantially affecting 
its identity, was used in good faith by the assignee of the trade 
10 mark in relation to those goods or services during that period 
and that that use was in accordance with the terms of the 
assignment; and 
(ii) 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 
15 use of the trade mark by the assignee during that period as 
having been a use of the trade mark in relation to those goods 
or services by the registered owner; or 
(c) the opponent has established that the trade mark was not used by its 
registered owner in relation to those goods and/or services during 
20 that period 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 that period. 
25 Note 1: If the registered ownerofthe trade mark has authorised another person to use it, any authorised 
use of the trade mark by that person is taken to be a use of the trade mark by the registered owner 
(see subsection 7(3)). 
Note 2: For registered owner see section 6. 
Determination of opposed application-general 
101.(1) Subject to subsection (3) and to section 102, if: 
(a) the proceedings relating to an opposed application have not been 
30 discontinued or dismissed; and 
(b) the Registrar is satisfied that the grounds on \\fhich the application 
was made have been established; 
the Registrar may decide to remove the trade mark from the Register in 
respect of any or all of the goods and/or services to which the application 
35 relates. 
(2) Subject to subsection (3) and to section 102, if, at the end of the 
proceedings relating to an opposed application, the court is. satisfied that the 
grounds on which the application was made have been established, the court 
may order the Registrar to remove the trade mark from the Register in 
40 respect of any or all of the goods and/or services to which the application 
relates. IP/N/lIAUS/T/l 
Page 64 
Trade Marks No. 119, 1995 
(3) If satisfied that it is reasonable to do so, the Registrar or the court may 
decide that the trade mark should not be removed from the Register even if 
the grounds on which the application was made have been established. 
Determination of opposed application-localised use of trade mark 
102.(1) This section applies if an application for the removal of a trade 5 
mark (challenged trade mark) from the Register is made on the ground 
referred to in paragraph 92( 4)(b) and: 
(a) the applicant is the registered owner of a trade mark that is 
substantially identical with, or deceptively similar to, the challenged 
trade mark and is registered in respect of the goods and/or services 10 
spe,,:ified in the application subject to the condition or limitation that 
the use of the trade mark is to be restricted to: 
(i) goods and/or services to be dealt with or provided in a 
particular place (specified place) in Australia (otherwise than 
for export from Australia); or 15 
(ii) goods and/or services to be exported to a particular market 
(specified market); 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. 20 
Note 1: For ngisttrtd owntr see section 6. 
Note 2: For dtctpti~'tly similar see section 10. 
(2) If the Registrar or the court is satisfied: 
(a) that the challenged trade mark has remained registered for the period 
referred to in paragraph 92( 4)(b); and 25 
(b) that during that period there has been no use, or no use in good faith, 
of the challenged trade mark in relation to: 
(i) goods or services dealt with or provided in the specified place; 
or 
(ii) goods or services to be exported to the specified market; 30 
the Registrar may decide, or the court may order, that the challenged trade 
mark should not be removed from 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: 35 
(c) goods or services dealt with or provided in the specified place; or 
(d) goods or services to be exported to the specified market. 
Note: For limitations see section 6. 
Registrar to comply with order of court 
103. A court making an order under section 101 or 102 must cause a 40 
copy of the order to be served on the Registrar and the Registrar must comply 
with the order. Trade Marks No. 119, 1995 
Appeal IP/N/lIAUS/T/l 
Page 65 
104. An appeal lies to the Federal Court from a decision of the Registrar 
under section 101 or 102. 
Certificate-use of trade mark 
5 105.(1) If in any proceedings relating to an opposed application the 
Registrar or the court has found that: 
(a) a trade mark has been used in good faith during a particular period; 
or 
(b) a trade mark has not been used during a particular period solely 
10 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. 
(2) In any subsequent proceedings in which non-use of the trade mark 
is alleged: 
15 (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, 
20 unless the Registrar or the court otherwise directs, to have the 
opponent's full costs paid by the applicant. IP/NIl/AUS/TI 1 
Page 66 
Trade Marks No. 119, 1995 
PART 100ASSIGNMENT AND TRANSMISSION OF TRADE 
MARKS 
Assignment etc. of trade mark 
106.(1) A registered trade mark, or a trade mark whose registration is 
5 being sought, may be assigned or transmitted in accordance with this section. 
(2) The assignment or transmission may be partial, that is, it may apply 
to some only of the goods and/or services in respect of which registration is 
sought or the trade mark is registered, but it may not be partial in relation to 
the use of a trade mark in a particular area. . 
10 (3) The assignment or transmission may be with or without the goodwill 
of the business concerned in the relevant goods and/or services. 
Note: For assignment and transmission see section 6. 
Applications for record to be made of assignment etc. of trade mark 
whose registration is sought 
15 107.(1) If a trade mark whose registration is being sought is assigned or 
transmi tted: 
(a) the applicant for the registration of the trade mark; or 
(b) the person to whom it has been assigned or transmitted; 
must apply to the Registrar for the assignment or transmission to be 
20 recorded. 
(2) The application must: 
(a) be in an approved form; and 
(b) be filed, together \vith any prescribed document, in accordance with 
the regulations. 
25 Note: For approved jonn and file sce section 6. 
Recording of assignment etc. of trade mark whose registration is 
sought 
108.(1) If the application complies with this Act, the Registrar must: 
(a) at, or within, the time provided for in the regulations, record in the 
30 manner that the Registrar thinks fit (but not in the Register) the 
particulars of the assignment or transmission; and 
(b) publish the particulars of the assignment or transmission in 
accordance with the regulations. 
(2) On and after the day on which the Registrar records the particulars 
35 of the assignment or transmission, the person to whom the trade mark has 
been assigned or transmitted is taken, for the purposes of this Act, to be the 
applicant for the registration of the trade mark. 
Application for record of assignment etc. of registered trade mark to 
be entered in Register 
40 109.(1) If a registered trade mark is assigned or transmitted: Trade Marks No. 119, 1995 IP/N/lIAUS/T/l 
Page 67 
(a) the person registered as the owner of the trade mark; or 
(b) the person to whom the trade mark has been assigned or transmitted; 
must apply to the Registrar for a record of the assignment or transmission 
to be entered in the Register. 
(2) The application must: 5 
(a) be in an approved form; and 
(b) be filed, together \vith any prescribed document, in accordance with 
the regulations. 
Note: For approl'td form and file see section 6. 
Recording of assignment etc. of registered trade mark 10 
110.(1) If the application complies with this Act, the Registrar must, at, 
or within, the time provided for in the regulations: 
(a) enter the particulars of the assignment or transmission in the 
Register; and 
(b) register the person to whom the trade mark has been assigned or 15 
transmitted (beneficiary) as the owner of the trade mark in relation 
to the goods andlor services in respect of which the assignment or 
transmission has effect. 
(2) The particulars are taken to have been entered in the Register on the 
day on which the application was filed, and the registration of the beneficiary 20 
as the owner of the trade mark is taken to have had effect from and including 
that day. 
(3) The Registrar must advertise in the Official Journal: 
(a) the recording of the assignment or transmission; and 
(b) the registration of the beneficiary as the owner of the trade mark. 25 
Notice of application to be given to person recorded as claiming 
interest in trade mark etc. 
111. If an application made under section 107 or 109 in relation to the 
assignment or transmission of a trade mark complies with this Act, the 
Registrar must notify in accordance with the regulations any person recorded 30 
under Part 11 as claiming an interest in, or a right in respect of, the trade 
mark. IP/N/lIAUS/T/l 
Page 68 
Trade Marks No. 119,1995 
PART Il-VOLUNTARY RECORDING OF ClAIMS TO 
INTERESTS IN AND RIGHTS IN RESPECT OF TRADE 
MARKS 
Division l-Preliminary 
5 Object of Part 
112. This Part makes provision: 
(a) for recording in the Register claims to interests in, and rights in 
respect of, registered trade marks that may not be so recorded under 
another Part; and 
10 (b) for the Registrar to keep a record of claims to interests in, and rights 
in respect of, trade marks for which registration is sought. 
Note: For rtgisttrtd tradt mark see section 6. Trade Marks No. 119, 1995 IP/N/I/AUS/T/l 
Page 69 
Division 2-1 nterests in, and rights 'in respect of, registered trade marks 
Application to have claims to interest etc. recorded 
113.(1) If: 
(a) a person (other than the registered owner of the trade mark) claims 
to have an interest in, or a right in respect of, a registered trade mark; 5 
and 
(b) this interest or right may not be recorded in the Register under 
Part 10; 
the person and the registered owner of the trade mark may together apply to 
the Registrar to have particulars of the claim recorded in the Register. 10 
(2) The application must be in an approved form and must be filed in 
accordance with the regulations. 
Note: For registered owner, registered trade mark, approved form and file see section 6. 
Record of claims to interest etc. 
114.(1) If the application has been made in accordance with section 113, 15 
the Registrar must enter in the Register the particulars of the claim set out 
in the application. 
(2) If: 
(a) a trade mark is registered; and 
(b) immediately before the registration, particulars of a claim to an 20 
interest in, or right in respect of, the trade mark were recorded under 
Division 3; 
the Registrar must enter those particulars in the Register. 
Amendment and cancellation 
115. The regulations may provide for the amendment and cancellation 25 
of particulars entered in the Register under this Division. 
Record not proof etc. of existence of right etc. 
116. The fact that a record has been made in the Register under this Part 
that a person claims an interest in, or a right in respect of, a registered trade 
mark is not proof or evidence that the person has that right or interest. 30 IP/N/lIAUS/TIl 
Page 70 
Trade Marks No. 119, 1995 
Division 3-Interests in, and rights in respect of, unregistered trade 
marks 
Application to have claims to interest etc. recorded 
117.(1) If: 
5 (a) a person has applied for the registration of a trade mark; and 
(b) another person claims to have an interest in, or a right in respect of, 
the trade mark; 
they may together apply to the Registrar for a record to be kept of the other 
person's claim. 
10 (2) The application must be in an approved form and must be filed in 
accordance with the regulations. 
Note: For approved fonn and filt see section 6. 
Record of claims to interest etc. 
118. If the application has been made in accordance with section 117, the 
15 Registrar must record in the manner that the Registrar thinks fit (but not in 
the Register) the particulars of the claim set out in the application. 
Amendment and cancellation 
119. The regulations may provide for the amendment and cancellation 
of particulars recorded under this Division. IP IN 11/ A US/T 11 
Page 71 
Trade Marks No. 119, 1995 
PART 12-INFRINGEMENT OF TRADE MARKS 
When is a registered trade mark infringed? 
120.(1) A person infringes a registered trade mark if the person uses as 
a trade mark a sign that is substantially identical with, or deceptively similar 
5 to, the trade mark in relation to goods or services in respect of which the trade 
mark is registered. 
Note 1: For registered trade mark see section 6. 
Note 2: For deceptively similar see section 10. 
(2) A person infringes a registered trade mark if the person uses as a trade 
10 mark a sign that is substantially identical with, or deceptively similar to, the 
trade mark in relation to: 
(a) goods of the same description as that of goods (registered goods) in 
respect of which the trade mark is registered; or 
(b) services that are closely related to registered goods; or 
15 (c) services of the sanle description as that of services (registered 
services) in respect of which the trade mark is registered; or 
(d) goods that are closelyrelated to registered services. 
However, the person is not taken to have infringed the trade mark if the 
person establishes that using the sign as the person did is not likely to deceive 
20 or cause confusion. 
Note 1: For registered trade mark see section 6. 
Note 2: For dectptively similar see section 10. 
(3) A person infringes a registered trade mark if: 
(a) the trade mark is well known in Australia; and 
25 (b) the person uses as a trade mark a sign that is substantially identical 
with, or deceptively similar to, the trade mark in relation to: 
(i) goods (unrelated goods) that are not of the same description 
as that of the goods in respect of which the trade mark is 
registered (registered goods) or are not closely related to 
30 services in respect of which the trade mark i~ registered 
(registered services); or 
(ii) services (unrelated services) that are not of the same 
description as that of the registered services or are not closely 
related to registered goods; and 
35 (c) because the trade mark is well known, the sign would be likely to be 
taken as indicating a connection between the unrelated goods or 
services and the registered owner of the trade mark; and 
(d) for that reason, the interests of the registered owner are likely to be 
adversely affected. 
40 Note 1: For registered trade mark sec section 6. 
Note 2: For deceptively similar see section 10. 
Note 3: For well known in Australia sec subsection (4). IP/N/1/AUS/T/l 
Page 72 
Trade Marks No. 119, 1995 
(4) In deciding, for the purposes of paragraph (3)(a), whether a trade 
mark is well known in Australia, one must take account of the extent to 
which the trade mark is known within the relevant sector of the public, 
whether as a result of the promotion of the trade mark or for any other reason. 
Infringement of trade mark by breach of certain restrictions 5 
121.(1) This section applies to a registered trade mark if the registered 
owner, or an authorised user of the trade mark having power to do so, has 
caused to be displayed on goods (registered goods) in respect of which the 
trade mark is registered, or on their package, or on the container in \vhich 
they are offered to the public, a notice (notice ofprohibition) prohibiting any 10 
act that is under subsection (2) a prohibited act in relation to the goods. 
Note 1: An authorised user of the trade mark may not have power 10 cause notices of prohibition to be 
displayed on goods etc. because of the terms of the agreement between the authorised user and 
the registered owner of the trade mark (see section 26). 
Note 2: For registered owner and registered trade mark see section 6. 15 
Note 3: For authorised user see section 8. 
(2) Each of the follo\ving is a prohibited act: 
(a) applying the trade mark to registered goods, or using the trade mark 
in physical relation to them, after the state, condition, get-up or 
packaging in which they were originally offered to the public has 20 
been altered; 
(b) altering, or partially removing or obliterating, any representation of 
the trade mark applied to registered goods or used in physical relation 
to them; 
(c) if the trade mark has been applied to registered goods, or used in 25 
physical relation to them, together with other matter indicating that 
the registered owner or authorised user has dealt with the 
goods-removing or obliterating, totally or in part, any 
representation of the trade (nark without totally removing or 
obliterating the other matter; 30 
(d) applying another trade mark to registered goods or using another 
trade mark in physical relation to them; 
(e) if the trade mark has been applied to registered goods or used in 
physical relation to them-using on the goods, or on the packaging 
or container of the goods, any matter that is likely to injure the 35 
reputation of the trade mark. 
Note 1: For applitd to see section 9. 
Note 2: For authorised lIser see section 8. 
(3) Subject to subsection (4), a person infringes a trade mark to which 
this section applies if the person: 40 
(a) is the owner of registered goods; and 
(b) in the course of tradc, or with a view to a dealing \vith the goods in 
the course of trade: IP/NIlIAUS/TI 1 
Page 73 
Trade Marks No. 119, 1995 
(i) does an act that is prohibited under the notice of prohibition; 
or 
(ii) authorises that act to be done. 
(4) The trade mark is not infringed if the owner of the gO<Xls: 
5 (a) acquired them in good faith and without being aware of the notice 
of prohibition; or 
(b) became the owner of the goods by virtue of a title derived from a 
person who had so acquired them. 
When is a trade mark not infringed'? 
10 122.(1) In spite of section 120, a person does not infringe a registered 
trade mark when: 
(a) the person uses in good fai th: 
. (i) the person's name or the name of the person'5 place of 
business; or 
15 (ii) the name of a predecessor in business of the person or the name 
of the predecessor's place of business; or 
(b) the person uses a sign in good faith to indicate: 
(i) the kind, quality, quantity, intended purpose, value, 
geographical origin, or some other characteristic, of goods or 
20 servIces; or 
(ii) the time of production of goods or of the rendering of services; 
or 
(c) the person uses the trade mark in good faith to indicate the intended 
purpose of goods (in particular as accessories or spare parts) or 
25 servIces; or 
(d) the person uses the trade mark for the purposes of comparative 
advertising; or 
(e) the person exercises a right to use a trade mark given to the person 
under this Act; or 
30 (t) the court is of the opinion that the person would obtain registration 
of the trade n1ark in his or her name if the person \vere to apply for 
it; or 
(g) the person, in using a sign referred to in subsection 120(1), (2) or 
(3) in a manner referred to in that subsection, does not (because of 
35 a condition or limitation subject to which the trade mark is 
registered) infringe the excl usive right of the registered owner to use 
the trade mark. 
(2) In spite of section 120, if a disclaimer has been registered in respect 
of a part of a registered trade mark, a person does not infringe the trade mark 
40 by using that part of the trade mark. IPINIl! A US/T 11 
Page 74 
Trade Marks No. 119, 1995 
Goods etc. to which registered trade mark has been applied by or 
with consent of registered owner 
123.(1) In spite of section 120, a person who uses a registered trade mark 
in relation to goods that are similar to goods in respect of which the trade 
mark is registered does not infringe the trade mark if the trade mark has been 5 
applied to, or in relation to, the goods by, or \vith the consent of, the 
registered owner of the trade n1ark. 
Note: For similar goods sce subsection 14( 1). 
(2) In spi te of section 120, a person who llses a registered trade mark in 
relation to services that are similar to services in respect of which the trade 10 
mark is registered does not infringe the trade mark if the trade mark has been 
applied ill relation to the services by, or with the consent of, the registered 
owner of the trade mark. 
Note: For similar sen-ices see subsection 14(2), 
Prior use of identical trade mark etc. 15 
124.(1) A person does not infringe a registered trade mark by using an 
unregistered trade mark that is substantially identical \vith, or deceptively 
similar to, the registered trade mark in relation to: 
(a) goods similar to goods (registered goods) in respect of which the 
trade mark is registered; or 20 
(b) services closely related to registered goods; or 
(c) services similar to services (registered services) in respect of which 
the trade mark is registered; or 
(d) goods closely related to registered services; 
if the person, or the person and the person's predecessor in title, have 25 
continuously used in the course of trade the unregistered trade mark in 
relation to those goods or services from a time before: 
(e) the date of registration of the registered trade mark; or 
(f) the registered owner of the registered trade mark, or a predecessor 
in title, or a person who was a registered user of the trade mark under 30 
the repealed Act, first used the trade mark; 
whichever is earlier. 
Note 1: For deceptively similar see section 10, 
Note 2: For predecessor in title and dale of registration see section 6. 
(2) If the unregistered trade mark has continuously been used only in a 35 
particular area of Australia, subsection (1) applies only to the use of the 
trade mark by the person in that area. 
What courts may hear action for infringement 
of registered trade mark 
125.(1) An action for an infringement of a registered trade mark may be 40 
brought in a prescribed court. 
Note: For prtscn'htd COllrt sec sert ion 190. IP/N/lIAUS/T/l 
Page 75 
Trade Marks No. 119, 1995 
(2) Subsection (1) does not prevent an action for infringement of a 
registered trade mark from being brought in any other court that has 
jurisdiction to hear the action. 
What relief can be obtained from court 
5 126. The relief that a court may grant in an action for an infringement 
of a registered trade mark includes: 
(a) an injunction, which may be granted subject to any condition that the 
court thinks fit; and 
(b) at the option of the plaintiff but subject to section 127, damages or 
10 an account of profits. 
Special case--plaintiff not entitled to damages etc. 
127. If: 
(a) in an action for the infringement of a trade mark registered in respect 
of particular goods or services, the court finds that the defendant has 
15 infringed the trade mark; and 
(b) the defendant has applied to the court under subsection 92(3) for an 
order directing the Registrar to remove the trade mark from the 
Register in respect of those goods or services; and 
(c) the court finds that, because the trade mark has not during a particular 
20 period (critical period) been used in good faith by its registered 
owner in relation to those goods or services, there are grounds (under 
subsection 92(4» for so removing the trade mark from the Register; 
the court may not grant relief to the plaintiffby way of damages or an account 
of profits in respect of any infringement of the trade mark that happened 
25 during the critical period. 
Circumstances in which action may not be brought 
128. If the registration of a trade mark is renewed (under section 79) within 
12 months after it has expired, an action may not be brought in respect of 
an act that: 
30 (a) infringed the trade mark; and 
(b) was done after the registration had expired and before it was 
renewed. 
Groundless threats of legal proceedings 
129.(1) If a person threatens to bring an action against another person 
35 (threatened person) on the ground that the threatened person has infringed: 
(a) a registered trade mark; or 
(b) a trade mark alleged by the person to be registered; IP/N/1/AUS/TIl 
Page 76 
Trade Marks No. 119,1995 
any person aggrieved by the threat (plaintiff) may bring an action (either in 
a prescribed court or in any other court having jurisdiction) against the 
person making the threat (defendant). 
Note: For prescribed court see section 190. 
(2) The purpose of the action is to obtain from the court: 5 
(a) a declaration that the defendant has no grounds formaking the threat; 
and 
(b) an injunction restraining the defendant from continuing to make the 
threat. 
The plaintiff may also recover any damages that he or she has sustained 10 
because of the defendant's conduct. 
(3) The action may be brought whether or not the defendant is the 
registered owner, or an authorised user, of the trade mark alleged to have 
been infringed. 
Note: For authorised user see section 8. 15 
(4) The court may not find in favour of the plaintiff if the defendant 
satisfies the court that: 
(a) the trade mark is registered; and 
(b) the acts of the threatened person in respect of which the defendant 
threatened to bring an action constitute an infringement of the trade 20 
mark. 
(5) An action may not be brought, or (ifbrought) may not proceed, under 
this section if the registered owner of the trade mark, or an authorised user 
of the trade mark having power to bring an action for infringement of the 
trade mark, with due diligence, begins and pursues an action against the 25 
threatened person for infringement of the trade mark. 
Note: An authorised user of the trade mark may not have power to bring an action for infringement of 
the trade mark because of the terms of the agreement between the authorised user and the 
registered owner of the trade mnrk (sec section 26). 
(6) This section does not make a lawyer or patent attorney liable to an 30 
action for an act done in a professional capacity on behalf of a client. 
Note: For lawyer and patent attorney see section 6. 
Counterclaim by defendant in action on groundless threats 
130. If the defendant in an action brought under section 129 would be 
entitled to bring against the plaintiff an action for infringement of the 35 
registered trade mark (infringement action): 
(a) the defendant may file in the court a counterclaim against the 
plaintiff for any relief to which the defendant would be entitled in the 
infringenlent action; and 
(b) the provisions of this Act applicable to infringement actions apply 40 
in relation to the counterclaim as if it were an infringement action 
brought by the defendant against the plaintiff. IP/N/lIAUS/T/l 
Page 77 
Trade Marks No. 119, 1995 
PART 13-IMPORTATION OF GOODS INFRINGING 
AUSTRALIAN TRADE MARKS 
Object of Part 
131. The object of this Part is to protect registered trade marks by 
5 making provision allowing the Comptroller to seize and deal with goods that 
are imported into Australia if the importation infringes, or appears to 
infringe, a registered trade mark. 
Notice of objection to importation 
132.(1) The registered owner of a registered trade mark may give to the 
10 Comptroller a notice in writing objecting to the importation after the date of 
the notice of goods that infringe the trade mark. The notice is to be given 
together wi th any prescribed document. 
(2) If: 
(a) the registered owner of the registered trade mark has not given a 
15 notice under subsection (1); or 
(b) any notice given under subsection (1) is no longer in force; 
an authorised user of the trade mark having power to give a notice under 
subsection (1) may ask the registered owner to give such a notice in respect 
of the trade mark. 
20 Note 1: For authorised user see section 8. 
Note 2: An authorised user of the trade mark may not have power to give a notice under subsection 
(1) because of the termsofthe agreement between the authorised user and the registered owner 
of the trade mark (see section 26). 
(3) If the registered owner does not comply with the request within the 
25 prescribed period, the authorised user may give the notice to the 
Comptroller. The authorised user must give also to the Comptroller, together 
with the notice: 
(a) any document prescribed for the purposes of subsection (1); and 
(b) any other prescribed document. 
30 (4) A notice given by the registered owner of a trade mark remains in 
force for 2 years from the ·day on which the notice is given unless it is 
revoked, before the end. of that period, by notice in writing given to the 
Comptroller by the person who is then the registered owner of the trade 
mark. 
35 (5) A notice given by an authorised user of the trade mark remains in 
force for 2 years unless it is revoked, before the end of that period, by notice 
in writing given to the Comptroller: 
(a) if the authorised user has power to revoke the notice-by the 
authorised user; or IP/N/I/AUS/T/l 
Page 78 
Trade Marks No. 119, 1995 
(b) in any other case-by the person who is then the registered owner of 
the trade mark. 
Note 1: For authorised user see section 8. 
Note 2: An authorised userofa trade mark may not have power to revoke the notice because of the terms 
of the agreement between the authorised user and the registered owner of the trade mark (see 5 
section 26). 
Comptroller may seize goods infringing trade mark 
133.(1) This section applies to goods manufactured outside Australia 
that: 
(a) are imported into Australia; and 10 
(b) ·are subject to the control of the Customs within the meaning of the 
CustonlS Act 1901. 
(2) If goods to which this section applies: 
(a) have applied to them or in relation to them a sign that, in the opinion 
of the Comptroller, is substantially identical with, or deceptively 15 
similar to, a notified trade mark; and 
(b) are goods in respect of which the notified trade mark is registered; 
the Comptroller must seize the goods unless he or she is satisfied that there 
are no reasonable grounds for believing that the notified trade mark is 
infringed by the importation of the goods. 20 
Note 1: For applied to or in relation to goods see section 9. 
Note 2: For deceptil'ely similar see section 10. 
Note 3: For notified trade mllrk see section 6. 
(3) The Comptroller may decide not to seize the goods if he or she has 
not been given by the objector, or by one or more of the objectors, security 25 
in an amount that he or she considers sufficient to repay to the 
Commonwealth the expense that may be incurred by the Commonwealth if 
the goods were seized. 
Note: For objtctar see section 6. 
(4) Goods seized under this section must be kept in a secure place as 30 
directed by the Comptroller. 
Notice of seizure 
134. The Comptroller nlust, as soon as practicable: 
(a) give (either personally or by post) to the designated owner of any 
seized goods a notice in writing identifying the goods and stating that 35 
they have been seized u'nder section 133; and 
(b) give (either personally or by post) to the objector, or to each objector, 
a notice in writing: 
(i) identifying the goods and stating that they have been seized 
under section 133: and 40 5 
10 IP/N/lIAUS/T/l 
Page 79 
Trade Marks No. 119, 1995 
(ii) giving the full name and address of the designated owner of the 
goods and any information that the Comptroller has and that 
he or she believes, on reasonable grounds, to be likely to help 
the objector to identify the importer of the goods; and 
(iii) stating that the goods will be released to the designated owner 
unless the objector or one of the objectors (as the case requires) 
brings an action for infringement of the notified trade mark in 
respect of the goods, and gives to the Comptroller notice in 
writing of the action, within the period of 10 working days 
after he or she has been given the notice or, if the Comptroller 
extends that period under subsection 137( 1), within the 
extended period. 
Note: For designated owner, objector, seized goods and notifitd trade mark see section 6. 
Forfeiture of goods 
15 135.(1) The designated owner of any seized goods may, at any time 
before an objector starts an action for infringement of a notified trade mark 
in respect of the goods, consent to the goods being forfeited to the 
Commonwealth by giving notice in writing to that effect to the Comptroller. 
(2) If the designated owner gives such a notice, the goods are forfeited 
20 to the Commonwealth. 
Note: For designated owner, seized goods, objector and notified trade mark see section 6. 
Release of goods to owner-no action for infringement 
136.(1) The ComptroIJer must release the seized goods to their 
designated owner if, \vithin the action period, the objector has not, or none 
25 of the objectors has: 
(a) brought an action for infringement of the notified trade mark in 
respect of the goods; and 
(b) given to the Comptroller notice in writing of the action. 
Note 1: For seized goods, designattd owner, objector and notified trade ttUlrk see section 6. 
30 Note 2: For action period see subsection (4). 
(2) The Comptroller m ust also release the seized goods to their 
designated owner if: 
(a) before the end of the action period, the objector or each of the 
objectors has, by notice in writing to the Comptroller, consented to 
35 the release of the goods; and 
(b) at that time: 
(i) the objector has not, or none of the objectors has, brought an 
action for infringement of the notified trade mark in respect of 
the goods; or 
40 (ii) any action brought by an objector has been withdrawn. 
Note 1: For seiztd goods, dt.\';gIlQftd owner, objtctor and notifltd trade mark see section 6. 
No(e 2: For ac/loN fllfriod ,",cc IItJh~C(.'(j(l1l (4). IP/NIlIAUS/TI 1 
Page 80 
Trade Marks No. 119, 1995 
(3) The Comptroller may release the seized goods to their designated 
owner at any time before the end of the action period if: 
(a) the Comptroller, having regard to information that has come to his 
or her knowledge after the goods were seized, is satisfied that there 
are no reasonable grounds for believing that the notified trade mark 5 
has been infringed by the importation of the goods; and 
(b) the objector has not, or none of the objectors has, brought an action 
for infringement of the notified trade mark in respect of the goods. 
Note 1: For seized goods, designated owner, objector and notified trade mark see section 6. 
Note 2: For action period see subsection (4). 10 
Note 3: In obtaining information for the purposes of (his section, the Comptroller must comply with 
Principles 1, 2 and 3 in section 14 of the PrivQcy Act 1988. 
(4) In this section: 
action period, in relation to seized goods, means: 
(a) if there is only one objector to the in1portation of the goods-the 15 
period within which the objector may bring an action for 
infringement of the registered trade mark in respect of goods under 
subsection 137(1); or 
(b) if there is more than one objector to the importation of the 
goods-the period beginning on the earliest day on which an 20 
objector may bring an action for infringement of the registered trade 
mark in respect of the goods under subsection 137(1) and ending at 
the end of the last day on which an objector may bring such an action 
under subsection 137(1). 
Note: For objector see section 6. 25 
Action for infringement of trade nlark 
137.(1) An objector may bring an action for infringement of a notified 
trade mark in respect of seized goods and give notice of it to the Comptroller: 
(a) if paragraph (b) does not apply-within the period (notified period) 
of 10 working days specified in the notice given to the objector in 30 
respect of the goods under section 134; or 
(b) if: 
(i) the objector has, before the end of the notified period, applied 
in writing to the Comptroller for an extension of the notified 
period; and 35 
(ii) the Comptroller, being satisfied that in the circumstances of 
the case it is fair and reasonable to do so, has extended the 
notified period for a number of working days not exceeding 
10' , 
within that period as so extended by the Comptroller. 40 
Note: For objector, notified trade mark and seized K(){)d'l see section 6. 
(2) The court hearing the action: IP IN 111 A US/T /1 
Page 81 
Trade Marks No. 119, 1995 
(a) nlay, on the application of a person, allow the person to be joined as 
a defendant to the action; and 
(b) must allow the Comptroller to appear and be heard. 
(3) In addition to any relief that the court may grant apart from this 
5 section, the court may: 
(a) at any time, if it thinks it just, order that the seized goods be released 
to their designated owner subject to the conditions (if any) that the 
court considers fit to impose; or 
(b) order that the seized goods be forfeited to the Commonwealth. 
10 Note: For seized goods and designated owner see section 6. 
(4) If: 
(a) the court decides that the trade mark was not infringed by the 
importation of the goods; and 
(b) the designated owner of the goods, or any other defendant, satisfies 
15 the court that he or she has suffered loss or damage because the goods 
were seized; 
the court may order the objector to pay to the designated owner or other 
defendant compensation, in the amount detennined by the court, for any part 
of that loss or damage that is attributable to any period beginning on or after 
20 the day on which the action was brought. 
(5) I f, after 3 weeks from the day on which the action was brought, there 
is not in force at any time an order of the court preventing the goods from 
being released, the Comptroller must release the goods to their designated 
owner. 
25 (6) If the court orders that the goods be released, the Comptroller must, 
subject to section 140, comply with the order. 
Action for infringement by authorised user 
138. If an authorised user of a notified trade mark is an objector in 
relation to any seized goods, the authorised user may start an action for the 
30 infringement of the trade mark in respect of the goods within the required 
period without first ascertaining whether the registered owner is willing to 
bring the action. 
Note 1: For notiJi~d trade mark, objector and sti1.ed goods see section 6. 
Note 2: For authorised user see section 8. 
35 Note 3: Under paragraph 26{b) an authorised userof a trade mark may bringan action forinfringement 
of the trade mark only if the registered owner of the trade mark refuses or neglects to do so. 
Forfeited goods-how to be disposed of 
139. If: 
(a) goods are forfeited to the Commonwealth under section 135; or 
40 (b) the court orders under section 137 that goods be forfeited to the 
Commonwealth; IP/NIl/AUS/TI 1 
Page 82 
Trade Marks No. 119, 1995 
the.goods are to be disposed of as the Comptroller directs. 
Power of Comptroller to retain c~ntrol of goods 
140. In spite of this Part, the Comptroller: 
(a) must not release, or dispose of, any seized goods; or 
(b) must not take any action in relation to the goods to give effect to any 5 
order of a court under section 137; 
if the Comptroller is required or allowed to retain control of the goods under 
any other law of the Commonwealth. 
Note:' For seized goods see section 6. 
Insufficient security 10 
141. If security given under subsection 133(3) by the objector or 
objectors who gave notice under section 132 in respect of a trade mark is not 
sufficient to meet the expenses incurred by the Commonwealth as a result 
of the action taken by the Comptroller under this Part because of the notice, 
the amount of the difference between those expenses and the amount of 15 
security: 
(a) is a debt due by the objector, or by the objectors jointly or each of 
them separately, to the Commonwealth; and 
(b) may be recovered by an action taken in a court of competent 
jurisdiction. 20 
Note: For objector see section 6. 
Commonwealth not liable for loss etc. suffered because of seizure 
142. The Commonwealth is not liable for any loss or damage suffered 
by a person: 
(a) because the Comptroller seized, or failed to seize, goods under this 25 
Part; or 
(b) because of the release of any seized goods. 
Power to require information 
143.(1) If: 
(a) goods that may be seized under this Part are inlported into Australia; 30 
and 
(b) the Comptroller, relying on information received, is satisfied on 
reasonable grounds that the use of a trade mark applied to or in 
relation to those goods is fraudulent; 
the Comptroller may ask the' importer of the goods or an agent of the 35 
importer: 
(c) to produce any document in his or her possession relating to the 
goods; and 
(d) to give information about: IP/N/1/AUS/T/l 
Page 83 
Trade Marks No. 119, 1995 
(i) the name and address of the person by whom the goods were 
consigned to Australia; and 
(ii) the name and address of the person in Australia to whom the 
goods were consigned. 
5 Note 1: For app{kd to in rtlation to goods see section 9. 
Note 2: In obtaining information for the purposes of this subsection, the Comptroller must comply with 
Principles 1, 2 and 3 in section 14 of the Privacy Act 1988. 
(2) If the importer or his or her agent intentionally or recklessly fails to 
comply with the request within the prescribed period, the importer or agent 
10 is guilty of an offence punishable, on conviction, by imprisonment for a 
period not exceeding 6 months. 
Note: The Reader's Guide gives information about penalti~ (see the paragraphs under the subheading 
Crimes Act 1914). 
Modification in relation to Norfolk Island etc. 
15 144. The regulations may provide for the modification or adaptation of 
this Part in its application to: 
(a) Norfolk Island; or 
(b) Christmas Island; or 
(c) Cocos (Keeling) Islands. IP/N/lIAUS/T/l 
Page 84 
Trade Marks No. 119, 1995 
PART 14-0FFENCES 
Falsifying etc. a registered trade mark 
145.(1) A person is guilty of an offence if, intentionally or recklessly, the 
person falsifies or unlawfully removes a trade mark that: 
5 (a) has been applied to any goods that are being, or are to be, dealt with 
or provided in the course of trade; or 
(b) has been applied in relation to any goods or services that are being, 
or are to be, dealt with or provided in the course of trade; 
knowing that the trade mark is registered or reckless of whether or not the 
10 trade mark is registered. 
Note 1: For applied to goods and applied in rewtion to goods or services see section 9. 
Note 2: For the penalty for this offence see section 149. 
(2) A person faIsifies a registered trade mark if the person: 
(a) alters or defaces it; or 
15 (b) makes any addition to it; or 
(c) partly removes, erases or obliterates it; 
without the permission of the registered o\vner, or an authorised user, of the 
trade mark and \vithout being required or authorised to do so by this Act, a 
direction of the Registrar or an order of a court. 
20 Note 1: For registered trade mark and registered owner see section 6. 
Note 2: For authorised user see section 8. 
(3) A person unlawfully removes a registered trade mark jf the person 
wholly removes, erases or obliterates it: 
(a) without the permission of the registered owner, or an authorised user, 
25 of the trade mark; and 
(b) without being required or authorised to do so by this Act, a direction 
of the Registrar or an order of a court. 
Note 1: For regL\'ttred trade mark ant.! regisltrtd OWlltr st!e st!l:tion 6. 
Note 2: For authorised llser see section 8. 
30 Falsely applying a registered trade mark 
146.(1) A person is guilty of an offence if, intentionally or recklessly, the 
person: 
(a) falsely applies a registered trade mark to goods that are being, or are 
to be, dealt with or provided in the course of trade; or 
35 (b) falsely applies a registered trade mark in relation to goods or services 
that are being, or are to be, dealt with or provided in the course of 
trade; 
knowing that the trade mark is registered or reckless of whether or not the 
trade mark is registered. 
40 Note 1: For regLr;tertd tradt ITUlrk see seclion 6. 
Note 2: For the penalty for this offence scc section 149. Trade Marks No. 119, 1995 IP/NI1/AUS/TI 1 
Page 85 
(2) A person falsely applies a registered trade mark to goods, or in 
relation to goods or services if the person applies the trade mark or a sign 
substantially identical with it to the goods or in relation to the goods or 
servlces: 
(a) without the permission of the registered owner, or of an authorised 5 
user, of the trade mark; and 
(b) without being required or authorised to do so by this Act, a direction 
of the Registrar or an order of a court. 
Note 1: For registered trade mark and registered owner see section 6. 
Note 2: For authorised user see section 8. 10 
Manufacture and possession of die etc. for use in 
commission of offence 
147.(1) A person is guilty of an offence if the person makes a die, block, 
machine or instrument: 
(a) knowing that it is likely to be used for, or in the course of, committing 15 
an offence against section 145 or 146; or 
(b) reckJess of whether or not it is likely to be used for, or in the course 
of, committing an offence against section 145 or 146. 
(2) A person is guilty of an offence if the person dra\vs, or programs a 
computer or other device to draw, a registered trade mark or part of a 20 
registered trade mark: 
(a) knowing that the trade mark or part of the trade mark is likely to be 
used for, or in the course of, committing an offence against section 
145 or 146; or 
(b) reckless of whether or not the trade mark or part of a trade mark is 25 
likely to be used for, or in the course of, committing an offence 
against section 145 or 146. 
(3) A person is guilty of an offence if intentionally the person has in his 
or her possession, or disposes of: 
(a) a die, block, machine or instrument; or 30 
(b) a computer, or other device, programmed to draw a registered trade 
mark or part of a registered trade mark; or 
(c) a representation of a registered trade mark or of part of a registered 
trade mark; 
knowing that, or reckless of whether or not, the die, block, machine, 35 
instrume'nt, computer, device or representation is likely to be used for, or in 
the course of, committing an offence against section 145 or 146. 
Note 1: For rtgisttrtd trcuft mark see section 6. 
Note 2: For the penalty for an offence under this section see section 149. 
Selling etc. goods with false marks 40 
148. A person is guilty of an offence if the person intentionally: IF/N/l! AUS/T/l 
Page 86 
Trade Marks No. 119, 1995 
(a) sells goods; or 
(b) exposes goods for sale; or 
(c) has goods in his or her possession for the purpose of trade or 
manufacture; or 
5 (d) imports goods into Australia for the purpose of trade or manufacture; 
knowing that, or reckless of whether or not: 
(e) a falsified registered trade mark is applied to them or in relation to 
them; or 
(t) a registered trade mark has been unlawfully removed from them; or 
10 (g) a registered trade mark is falsely applied to them or in relation to 
them. 
Note 1: For registered trade tnllrk see section 6. 
Note 2: For applitd to or in relation to goods see section 9. 
Note 3: For the penalty for this offence see section 149. 
15 Penalty for offence under section 145, 146, 147 or 148 
149. A person guilty of an offence under section 145, 146, 147 or 148 
is punishable on conviction by: 
(a) a fine not exceeding 500 penalty units; or 
(b) imprisonment for a period not exceeding 2 years; or 
20 (c) by both a fine and a tenn of imprisonment. 
Note: The Reader's Guide gives information about penalties (see the paragraphs under the subheading 
Crimes Act 1914). 
Aiding and abetting offences 
150.(1) If a person: 
25 (a) aids, abets, counsels or procures; or 
(b) is in any way, directly or indirectly, knowingly concerned in, or party 
to; 
the doing of an act outside Australia which, if it were done in Australia, 
would be an offence against this Act, the person is taken to have committed 
30 that offence and is punishable accordingly. 
(2) Subsection (1) does not affect the operation of section 5 of the 
Crimes Act 1914. 
False representations regarding trade marks 
151.(1) A person must not intentionally or recklessly make a 
35 representation to the effect that a trade mark is a registered trade mark unless 
the person knows, or has reasonable grounds to believe, that the trade mark 
is registered in Australia. 
Penalty: 60 penalty units. Trade Marks No. 119, 1995 IP/N/1/AUS/T/l 
Page 87 
(2) A person must not intentionally or recklessly make a representation 
to the effect that a part of a registered trade mark is registered as a trade mark 
unless the person knows, or has reasonable grounds to believe, that that part 
is registered as a trade mark in Australia. 
Penalty: 60 penalty units. 5 
(3) A person must not intentionally or recklessly make a representation 
to the effect that a trade mark is registered in respect of goods or services 
unless the person knows, or has reasonable grounds to believe, that the trade 
mark is registered in Australia in respect of those goods or services. 
Penalty: 60 penalty units. 10 
(4) A person must not intentionally or recklessly make a representation 
to the effect that the registration of a trade mark gives exclusive rights to use 
the trade mark in circumstances in which, having regard to conditions or 
limitations entered in the Register, the registration does not give those rights 
unless the person has reasonable grounds to believe that the registration does 15 
give those exclusive rights. 
Penalty: 60 penalty units. 
Note 1: For rtgistered trade TTUlrk and limitations see section 6. 
Note 2: The Reader's Guide gives information about penalties (see the paragraphs under the 
subheading Crimes Act 1914). 20 
(5) For the purposes of this section, the use in Australia in relation to a 
trade mark: 
(a) of the \vord "registered"; or 
(b) of any other word or any sYlnbol referring (either expressly or by 
implication) to registration; 25 
is taken to be a representation that the trade mark is registered in Australia 
in respect of the goods or services in relation to which it is used except if the 
trade mark is registered in a country other than Australia in respect of those 
goods or services and: 
(c) the word or symbol by itselfindicates that the trade mark is registered 30 
in that other country or in a country outside Australia; or 
(d) the \vord or symbol is used, together with other words or symbols of 
the same or a bigger size, to indicate that the trade mark is registered 
in that other country or in a country outside Australia; or 
(e) the word or symbol is used in relation to goods that are to be exported 35 
to that country. 
Nole: For use oJ a trade mark iTl relation to gOOd5 or sen'ices see subsections 7(4) and (5). 
False entries in Register etc. 
152. A person must not intentionally: 
(a) make a false entry in the Register; or 40 
(h) cause a false entry to he made in the Register; or IP/NIlIAUS/TI 1 
Page 88 
Trade Marks No. 119, 1995 
(c) tender in evidence a document that falsely purports to be a copy of, 
or an extract from, an entry in the Register or a document in the Trade 
Marks Office. 
Penalty: Imprisonment for 2 years. 
5 Note: The Reader's Guide gives infonnation about penalties (see the paragraphs under the subheading 
Crimes Act 1914). 
Disobeying summons etc. 
153.(1) A person: 
(a) who has been summonsed to appear as a witness before the Registrar; 
10 and 
(b) to whom a reasonable sum has been tendered in payment for 
expenses; 
must not, without reasonable excuse, fail to appear in answer to the 
summons. 
15 Penalty: 10 penalty units. 
(2) A person: 
(a) who has been required by the Registrar to produce a document or any 
other thing; and 
(b) to \vhom a reasonable sum has been tendered in payment for 
20 expenses~ 
25 
30 
35 
40 must not, without reasonable excuse, fail to produce the document or thing. 
Penalty: 10 penalty units. 
(3) An offence under this section is an offence of strict liability. 
Note 1: The Reader's Guide gives information about penalties (see the paragraphs under the 
subheading Crimes Act 1914). 
Note 2: An offence isone of strict liability if a person may be found guilty oflhe offence just Cor having 
done, or not having done, something regardless of any intention or recklessness on his or her 
part. 
Refusing to give evidence etc. 
154.(1) A person appearing before the Registrar as a witness must not, 
without reasonable excuse: 
(a) refuse to be sworn or to make an affirmation; or 
(b) refuse to answer questions that he or she is lawfully required to 
answer; or 
(c) fail to produce any document or thing that he or she is lawfully 
required to produce. 
Penalty: 10 penalty units. 
(2) An offence under this section is an offence of strict liability. 
Note 1: The Reader's Guide gives information about penalties (see the paragraphs under the 
subheading Crimes Act 1914). 
Note 2: For what is an offence of strict liability see note 2 at the end of section 153. Trade ~1 arks No. 119, 1995 IP/N/lIAUS/T/l 
Page 89 
Unauthorised persons not to act in trade mark matters 
155.(1) A person must not ask, or accept, any payment or other reward 
for: 
(a) applying for, or obtaining, on behalf of another person: 
(i) the registration of a trade nlark; or 5 
(ii) the making of any entry in the Register; or 
(iii) the amendment, cancellation, removal or restoration of any 
entry in the Register; or 
(b) preparing, or causing to be filed in accordance with this Act, a 
document necessary for another person to obtain or oppose: 10 
(i) the registration of a trade mark; or 
(ii) the making of an entry in the Register; or 
(iii) the amendment, cancellation, removal or restoration of any 
entry in the Register; or 
(c) giving advice to another person about the validity of the registration 15 
of a trade mark or the infringement of a trade mark; 
unless the person is: 
(d) a lawyer; or 
(e) a patent attorney; or 
(f) a person permanently employed by, and only by, that other person; 20 
or 
(g) a person referred to in paragraph 135(1)(h) or (i) of the repealed Act. 
Penalty: 30 penalty units. 
(2) An offence under this section is an offence of strict liability, 
Note 1: The Reader's Guide gives information ahout penalties (see the paragraphs under the 25 
subheading Crimes Act 1(14). 
Note 2: For what is an offence of slriclliability see note 2 at the t!nd of section 153. 
Note 3: For file, lawyer and patent attorney see section 6. 
Note 4: Paragraphs 135(1)(h) and (i) of the re pt: a led Act provided as follows: 
lI(h) a person who, within 1 year after the commencement of this Act, has satisfied the 30 
Registrar that, for a continuous period of 2 years immediately before 1 January 1955, 
he was practising a~ a trade marks agent in Austral ia; or 
(i) a person who: 
(i) within 1 year after the commencement of this Act, has satisfied the Registnr 
that, for a continuous period of 2 years immediately before 1 January 1955, he 35 
was employed by a registered patent attorney in Australia and his duties related 
solely or principally to the lodging, prosecuting and opposing of applications 
for the registration of trade marks; and 
(ii) unless the Registrar othenvise directs, has, within 1 year after the 
commencement of this Act or within such further time as the Registrar allows, 40 
passed the prescribed examination.". 
Subsection 135(2) of the repealed Act provided as follows: 
"(2) For the purposes of paragraph (h) of the lasl preceding subsection, a person shall not 
he deemed to have practised as n trade marks agent unless the only or the principal husiness 
curried 011 hy him was tilt! nusiness of lodging, prosecuting nnd opposing, for gain, 45 
applications for the registration of Irade marks in Auslrulia on behalf of urplil'i.lnls or 
OPpO!1I.'11IS.·' . IPtN/lI ADS/T/1 
Page 90 
Trade Marks No. 119, 1995 
Unregistered persons 
156.(1) A person must not carry on business or practise as a trade marks 
attorney, trade marks agent or agent for obtaining the registration of trade 
marks unless the person is: 
5 (a) a lawyer; or 
(b) a patent attorney; or 
(c) a person referred to in paragraph 135(1)(h) or (i) of the repealed Act. 
Penalty: 30 penalty units. 
(2) A person must not describe himself or herself, or hold himself or 
10 herself out, or permit himself or herself to be described or held out, as: 
(a) a trade marks attorney; or 
(b) a trade marks agent; or 
(c) an agent for obtaining the registration of a trade mark; 
unless the person is a patent attorney or a lawyer or a person referred to in 
15 paragraph 135(1 )(h) or (i) of the repealed Act. 
Penalty: 30 penalty units. 
Note 1: The Reader's Guide gives information about penalties (see the paragraphs under the 
subheading Crimes Act 1914). 
Note 2: For /awytr and patent attorney see section 6. 
20 Note 3: For the provisions of paragraphs 135(1 Xh) and (i) of the repealed Act see note 4 at the end of 
section 155. 
(3) If: 
(a) a body corporate is found guilty of an offence against this section; 
and 
25 (b) a director, manager, secretary or other officer of the body corporate 
has knowingly been a party to the offence; 
the director, manager, secretary or officer is guilty of an offence punishable, 
on conviction, by a fine not exceeding 30 penalty units. 
(4) In spite of section 15B of the Crimes Act 1914, a prosecution for an 
30 offence against this section may be started at any time within 5 years after 
the offence was committed. 
(5) For the purposes of this section, a person is taken to carry on business 
or practise as a trade marks attorney or a trade marks agent if the person 
undertakes in Australia to do, for gain, any or all of the acts referred to in 
35 paragraph 155(a), (b) or (c). 
(6) An offence under this section is an offence of strict liability_ 
Note: For what is an offence of strict liability see note 2 at the end of section 153. 
False representation about Trade Marks Office 
157.(1) A person: 
40 (a) must not: Trade Marks No. 119, 1995 IP/NIlIAUS/T/l 
Page 91 
(i) place, or allow to be placed, on the building in which his or her 
office is situated; or 
(ii) use when advertising his or her office or business; or 
(iii) place on a document, as a description of his or her office or 
business; 5 
the words "Trade Marks Office" or "Office for registering trade 
marks", or words of similar import (whether alone or together with 
other words); or 
(b) must not use in any other way, in connection with his or her business, 
words that would reasonably lead other persons to believe that his or 10 
"her office is, or is officially connected with, the Trade Marks Office. 
Penalty: 30 penalty units. 
(2) An offence under this section is an offence of strict liability. 
Note 1: The Reader's Guide gives information about penalties (see the paragraphs under the 
subheading Crimes Act 1914). 15 
Note 2: For what is an offence of strict liability see note 2 at the end of section 153. 
'Trade marks officer not to prepare documents etc. 
158.(1) A trade marks officer must not: 
(a) prepare, or help prepare, a document to be filed under this Act; or 
(b) search the records of the Trade Marks Office; 20 
unless required or authorised to do so by this Act, or any other Act (including 
the regulations under that Act), a \vritten direction of the Registrar or an 
order of a court. 
Penalty: 10 penalty units. 
(2) An offence under this section is an offence of strict liability. 25 
Note 1: For trade marks officer see section 6. 
Note 2: The Reader's Guide gives information about penalties (see the paragraphs under the 
subheading Crimes Act 1914). 
Note 3: For what is an offence of strict liability sce notl! 2 at the end of section 153. 
Forfeiture orders under the Proceeds of Crime Act 1987 30 
159. If a person other than the Director of Public Prosecutions has 
instituted proceedings for the trial of another person in respect of an 
indictable offence against this Part, Division 2 of Part 11 of the Proceeds 
o/Crinle Act 1987 applies as if a reference in that Division to the Director 
of Public Prosecutions includes a reference to the person who has 35 
instituted the proceedings. 
Conduct of directors, servants and agents 
160.(1) This section applies for the purposes of a prosecution for: 
(a) an offence under this Act; or 
(b) an offence under section 6, 7 or 7 A or subsection 86(1) of the Crinles 40 
Act 1914 that relates to this Act. IP/N/lIAUS/T/l 
Page 92 
Trade Marks No. 119, 1995 
(2) If it is necessary to prove the state of mind of a body corporate in 
relation to particular conduct, it is enough to show: 
(a) that the conduct was engaged in by a director, servant or agent of the 
body corporate within the scope of his or her actual or apparent 
5 authority; and 
Cb) that the director, servant or agent had the state of mind. 
(3) Any conduct engaged in on behalf of a body corporate by a director, 
servant or agent of the body corporate within the scope of his or her actual 
or apparent authority is taken to have been engaged in also by the body 
10 corporate, unless it proves that it took reasonable precautions and exercised 
due diligence to avoid the conduct. 
(4) If it is necessary to prove the state of n1ind of an individual in relation 
to particular conduct, it is enough to show: 
(a) that the conduct was engaged in by a servant or agent of the 
15 individual within the scope of his or her actual or apparent authority; 
and 
(b) that the servant or agent had the state of mind. 
(5) Any conduct engaged in on behalf of an individual by a servant or 
agent of the individual within the scope of his or her actual or apparent 
20 authority is taken to have been engaged in also by the individual, unless the 
individual establishes that he or she took reasonable precautions and 
exercised due diligence to avoid the conduct. 
(6) If: 
(a) an individual is convicted of an offence under this Act; and 
25 Cb) the individual would not have been convicted of the offence if 
subsections (4) and (5) had not been enacted; 
the individual is not liable to be punished by imprisonment for that offence. 
(7) In this section: 
director, in relation to a body that: 
30 (a) is incorporated for a public purpose by a law of the Commonwealth, 
of a State or of a Territory; and 
Cb) is constituted by one or more members; 
means the member, or any of the members, constituting the body. 
engage in conduct includes fail or refuse to engage in conduct. 
35 state of mind, in relation to a person, includes: 
(a) the person's knowledge, intention, opinion, belief or purpose; and 
(b) the person's reasons for the intention, opinion, belief or purpose. IP/NIlIAUS/TI 1 
Page 93 
Trade Marks No. 119, 1995 
PART 15-COLLECTIVE TRADE MARKS 
Object of Part 
161. This Part: 
(a) defines a collective trade mark; and 
5 (b) provides to what extent, and subject to what modifications or 
additions, the provisions of this Act relating to trade marks apply to 
collective trade marks. 
What is a collective trade mark? 
162. A collective trade mark is a sign used, or intended to be used, in 
10 relation to goods or services dealt with or provided in the course of trade by 
members of an association to distinguish those goods or services from goods 
or services so dealt with or provided by persons who are not members of the 
association. 
Note: For association see section 6. 
15 Application of Act 
163.(1) Subject to this Part, the provisions of this Act relating to trade 
marks (other than Part 1000Assignment and Transmission of Trade Marks) 
apply to collective trade marks and so apply as if: 
(a) a reference to a trade mark included a reference to a collective trade 
20 mark; and 
(b) a reference to a person doing something for the registration of a trade 
mark included a reference to an association doing that thing for the 
registration of the collective trade mark; and 
(c) a reference to a trade mark registered by a person included a 
25 reference to a collective trade mark registered by an association. 
(2) For the purposes of this Act: 
(a) the use of a collective trade mark by a member of the association that 
is the applicant for the registration of the collective trade mark is 
taken to be a use of the collective trade mark by the applicant; and 
30 (b) the use of a registered collective trade mark by a member of the 
association that is the registered owner of the collective trade mark 
is taken to be a use' of the collective trade mark by the registered 
owner. 
(3) Section 41 (trade mark not distinguishing applicant's goods or 
35 services) applies in relation to a collective trade mark as if a reference to the 
applicant were a reference to the members of the association that applied for 
registration of the collective trade mark. 
Application for registration 
164. An application for the registration of a collective trade mark must 
40 be made by the association to which the mark belongs. IPINI 1 IAUS/TI 1 
Page 94 
Trade Marks No. 119, 1995 
Limitation on rights given by registered collective trade mark 
165. A member of an association in whose name a collective trade mark 
is registered does not have the right to prevent another member of the 
association from using the collective trade mark in accordance with the rules 
of the association (if any). . 5 
Assignment etc. of collective trade mark 
166. A collective trade mark may not be assigned or transmitted. 
Infringement of collective trade mark 
167 .. In an action by an association in whose name a collective trade 
mark is registered seeking relief for infringement of the collective trade 10 
mark, the association may take into account, in claiming damages, any 
damage or loss of profits sustained or incurred by the members of the 
association as a result of the infringement. IP/NIlIAUS/TI 1 
Page 95 
Trade Marks No. 119, 1995 
PART 16--CERTIFICATION TRADE MARKS 
Object of Part 
168. This Part: 
(a) defines a certification trade mark; and 
5 (b) provides to what extent, and subject to what modifications or 
additions, the provisions of this Act relating to trade marks apply to 
certification trade marks; and 
(c) outlines the role of the Commission in the regulation of certifi~tion 
trade marks. 
10 What is a certification trade mark? 
169. A certification trade mark is a sign used, or intended to be used, 
to distinguish goods or services: 
(a) dealt with or provided in the course of trade; and 
(b) certified by a person (owner of the certification trade 11UZTk), or by 
15 another person approved by that person, in relation to quality, 
accuracy or some other characteristic, including (in the case of 
goods) origin, material or mode of manufacture; 
from other goods or services dealt with or provided in the course of trade but 
not so certified. 
20 Note: The goods or services certified may be those of any person, including the owner of the 
certification trade markor any person approved by the owner for the purpose of certifying goods 
or services. 
Application of Act 
170. Subject to this Part, the provisions of this Act relating to trade 
25 marks (other than sections 8 and 26, paragraph 27(1 )(b), sections 33, 34 and 
41, paragraph 88(2)(d), sections 121 and 127, Part 9-Removal of trade 
mark from Register for non-use and Part 17-Defensive Trade Marks) apply 
to certification trade marks and so apply as if a reference to a trade mark 
included a reference to a certification trade mark. 
30 Rights given by registrati~n of a certification trade mark 
171. Section 20 applies in relation to a certification trade mark as if 
subsection (1) were omitted and the following subsection were substituted: 
"( 1) If a certification trade mark is registered, the registered owner has, 
subject to this Part, the exclusive rights to use, and to allow other persons to 
35 use, the certification trade mark, in relation to the goods and/or services in 
respect of which the certification trade mark is registered. The registered 
owner may, however, use the certification trade mark only in accordance 
with the rules governing the use of the certification trade mark. 
Note: For the rules governing the use of the certification trade mark see section 173.". IP/NIlIAUS/TI 1 
Page 96 
Trade Marks No. 119, 1995 
Rights of persons allowed to use certification trade mark 
172. When the registered owner of a registered certification trade mark 
allows another person (approved user) to use the certification trade mark in 
relation to goods or services in respect of which it is registered, the approved 
user has a right to use the certification trade mark in relation to those goods 5 
or services in accordance with the rules governing the use of the certification 
trade mark. 
Note 1: For rtgisttred owntr see section 6. 
Note 2: For the rules governing the use of the certification trade mark see section 173. 
Rules governing the use of certification trade marks 10 
173.(1) A person who has filed an application for the registration of a 
certification trade mark must, in accordance with the regulations, file a copy 
of the rules governing the use of the certification trade mark. The copy of 
the rules is to be filed in addition to any document prescribed under 
subsection 27(2). 15 
Note: For filt see section 6. 
(2) The rules are to include provisions regarding: 
(a) the persons (approved certifiers) who may be approved for the 
purpose of certifying goods and/or services; and 
(b) the cases in which goods or services are to be certified; and 20 
(c) the conditions under which an approved user is to be allowed to use 
the certification trade mark in relation to goods or services; and 
(d) the use of the certification trade mark by the owner (if he or she 
intends to use it) and any approved user; and 
(e) the settlement of any dispute arising from a refusal: 25 
(i) to certify goods or services; or 
(ii) to allow the use of the certification trade mark; 
and any other provision that the Commission requires or permits to be 
inserted. 
Note: For approved user see section 172. 30 
Registrar to reject application or send it to Commission 
174.(1) If, after examining the application, the Registrar is satisfied that: 
(a) the application has been made in accordance with this Act; and 
(b) there are no grounds for rejecting it; 
the Registrar must send to the Commission a copy of the application and of 35 
any prescribed document. 
(2) If the Registrar is not satisfied as set out in paragraph (1 )(b), he or 
she must: 
(a) reject the application; and 
(b) give notice of the decision to the applicant. 40 Trade Marks No. 119, 1995 IP/N/lIAUS/T/l 
Page 97 
(3) The Registrar may not reject the application without giving the 
applicant an opportunity of being heard. 
Certificate by Commission 
175.(1) The Commission must consider the application and any 
5 documents received under section 174 in accordance with the regulations. 
(2) If the Commission is satisfied that: 
(a) the applicant or the approved certifiers are competent to certify the 
goods and/or services in respect of which the certification trade mark 
is to be registered; and 
10 (b) the rules referred to in section 173: 
(i) would not be to the detriment of the public; and 
(ii) are satisfactory having regard to the criteria prescribed for the 
purposes of this paragraph; 
the Commission must give a certificate to that effect and send a copy to the 
15 Registrar. The Commission must also send a certified copy of the rules to the 
Registrar. 
Note 1: For applicant see section 6. 
Note 2: For approved certifiers see paragraph 173(2){ a). 
(3) The Commission may require the applicant to make amendments or 
20 modifications to the rules as the Commission considers necessary. 
(4) If the Commission is not satisfied as set out in subsection (2): 
(a) the Commission must notify the applicant and the Registrar, in 
writing, of its decision not to give a certificate; and 
(b) the Registrar must advertise the matter in the Official Journal in 
25 accordance with the regulations. 
(5) An application may be made to the Administrative Appeals Tribunal 
for the review of a decision of the Commission refusing to give a certificate. 
Acceptance of application 
176.(1) If the Commission has given a certificate under subsection 
30 175(2), the Registrar must accept the application. Otherwise, the Registrar 
must reject the application. 
(2) The Registrar may accept the application subject to conditions or 
limitations. 
Note: For limitations see section 6. 
35 (3) The Registrar must: 
(a) give to the applicant notice in writing of his or her decision; and 
(b) advertise the decision in the Official Journal. IP/NIlIAUS/TI1 
Page 98 
Trade Marks No. 119, 1995 
Additional ground for rejecting an application or opposing 
registration--certification trade mark not distinguishing certified 
goods or services 
177.(1) In addition to any other ground on which: 
(a) an application for the registration of a certification trade mark may 5 
be rejected; or 
(b) the registration of a certification trade mark may be opposed; 
the application must be rejected or the registration may be opposed if the 
trade mark is not capable of distinguishing goods or services certified by the 
applicant or an approved certifier from goods or services not so certified. 10 
Note 1: For applicant see section 6. 
Note 2: For approved certifier see paragraph 173(2)(a). 
Note 3: Division 2 of Part 4 sets out the grounds for rejecting an application, but section 41 does not 
apply to certification trade marks (see section 170). 
(2) In deciding whether or not the certification trade mark is capable of 15 
so distinguishing goods or services certified by the applicant or an approved 
certifier, the Registrar must take into account: 
(a) the extent to which the certification trade mark is inherently adapted 
so to distinguish those goods or services; or 
(b) the extent to which, because of its use or of any other circumstances, 20 
the certification trade mark has become adapted so to distinguish 
those goods or services. 
Variation of rules 
178.(1) Subject to subsection (2), the rules governing the use of a 
registered certification trade mark may be varied in accordance with the 25 
regulations. 
(2) The rules may not be varied without the approval of the Commission. 
(3) Before deciding to approve a variation, the Commission must be 
satisfied that the rules as varied: 
(a) would not be to the detriment of the public; and 3r 
(b) are satisfactory having regard to the criteria prescribed for the 
purposes of paragraph 175(2)(b). 
(4) The Commission must notify the registered owner of the 
certification trade mark and the Registrar, in writing, of its decision to 
approve or n01 to approve a variation of the rules and the Registrar must 35 
cause a notice of the decision and (i f applicable) of any variation of the rules 
to be advertised in the Official Journal in accordance with the regulations. 
Note: For ugistered owntr see section 6 . 
. (5) An application may be made to the Administrative Appeals Tribunal 
for the rtview of H decision of the ('OIlHllission to approve or not to approve 40 
a variation of the rules. Trade Marks No. 119, 1995 IP/N/lIAUS/T/l 
Page 99 
(6) If the Commission approves a variation of the rules, the 
Commission: 
(a) must certify in writing that it is satisfied of the matters referred to in 
subsection (3) and send a copy of the certificate to the Registrar; and 
5 (b) must also send a certified copy of the rules as varied to the Registrar. 
Rules to be available for inspection 
179. Rules governing the use of a registered certification trade mark 
must be available for inspection at the same time and in the same manner as 
the Register. 
10 Note: For provisions regarding the inspection of the Register see section 209. 
Assignment of registered certification trade mark 
180.(1) A registered certification trade mark n1ay be assigned only with 
the consent of the Commission. 
(2) An application to the Commission for its consent to the assignment 
15 of a registered certification trade mark must be in accordance with the 
regulations. 
(3) In deciding whether or not to give its consent, the Commission must 
have regard to the matters provided for under the regulations. 
(4) An application may be made to the Administrative Appeals Tribunal 
20 for the review of a decision of the Commission refusing to give its consent. 
25 
30 
35 Rectification of the Register by order of court 
181.(1) Section 88 applies in relation to a certification trade nlark as if 
"or under section 177" was added at the end of paragraph (2)(a). 
Note: Paragraph 88(2)(a) provides that an application to a prescribed court for the rectification of the 
Register may be made on "any of the grounds on which the registration of the trade mark could 
have been opposed under Division 2 of Part 5". Section 177 provides an additional ground on 
which the registration of a certification trade mark may be opposed. 
(2) In addition to its powers under Division 2 of Part 8 (as affected by 
subsection (1» in relation to certification trade marks, a prescribed court 
may, on the application of a person aggrieved, order that the Register be 
rectified by cancelling the registration of a certification trade mark, or 
removing or amending an entry in the Register relating to the certification 
trade mark, on the ground that: 
(a) the registered owner or an approved certifier is no longer competent 
to certify any of the goods and/or services in respect of which the 
mark is registered; or 
(h) the rules governing the lIse of the certification trade rllilrk are 
de t ri III e n t Cl I tot her 1I b I i <.: ~ () r IP/N/lIAUS/TIl 
Page 100 
Trade Marks No. 119, 1995 
(c) the registered owner or an approved user has failed to comply with 
a provision of the rules governing the use of the certification trade 
mark. 
Note 1: For prescribed court see section 190. 
Note 2: For approved certifier see paragraph 173(2)( a). 5 
Note 3: For approved user see section 172. 
(3) Notice of an application to the prescribed court must be given to the 
Registrar and to the Commission. 
(4) Except for cases in which the court directs the Registrar to appear, 
the Registrar may appear before the court and be heard at his or her 10 
discretion. 
(5) Except for cases in which the court directs the Commission to appear, 
a delegate of the Commission may appear before the court and be heard at 
his or her discretion. 
(6) A copy of any order made by the court under this section must be 15 
given to the Registrar and the Registrar must comply with the order. 
Variation of rules by order of court 
182.(1) A prescribed court may, on the application of a person 
aggrieved, make such orders as it thinks fit for varying the rules governing 
the use of a certification trade mark. 20 
Note: For prtscribtd court see section 190. 
(2) Notice of an application to the prescribed court must be given to the 
Commission. 
(3) Except for cases in which the court directs the Commission to appear, 
a delegate of the Commission may appear before the court and be heard at 25 
his or her discretion. 
(4) A copy of any order made by the court under this section must be 
given to the Commission. 
(5) If the court orders that the rules are to be varied, the registered owner 
of the certification trade mark must give to the Registrar a copy of the rules 30 
as varied that is certified by the Commission to be a true copy. 
Delegation of Commission's powers and functions 
183. The Commission may, by resolution, delegate all or any of its 
powers and functions under this Part to a member of the Commission. 
Note: See section 34AB of the Acts Interpretation Act 1901 about the effect of this section. 35 Trade Marks No. 119, 1995 IP IN 111 A US/T 11 
Page 101 
PART 17-DEFENSIVE TRADE MARKS 
Object of Part 
184. This Part: 
(a) provides for the registration of certain trade marks as defensive trade 
5 marks; and 
(b) provides to what extent, and subject to what modifications or 
additions, the provisions of this Act relating to trade marks apply to 
defensive trade marks. 
Defensive trade marks 
10 185.(1) If, because of the extent to which a registered trade mark has 
been used in relation to all or any of the goods or services in respect of which 
it is registered, it is likely that its use in relation to other goods or services 
will be taken to indicate that there is a connection between those other goods 
or services and the registered owner of the trade mark, the trade mark may, 
15 on the application of the registered owner, be registered as a defensive trade 
mark in respect of any or all of those other goods or services. 
Note: For registered trade mark and registered owner see section 6. 
(2) A trade mark may be registered as a defensive trade mark in respect 
of particular goods or services even if the registered owner does not use or 
20 intend to use the trade mark in relation to those goods or services. 
(3) A trade mark may be registered as a defensive trade mark in respect 
of particular goods or services even if it is already registered otherwise than 
as a defensive trade mark in the name of the applicant in respect of those 
goods or services. 
25 (4) A trade mark that is registered as a defensive trade mark in respect 
of particular goods or services may be subsequently registered otherwise 
than as a defensive trade mark in the name of the registered owner in respect 
of the same goods or services. 
Application of Act 
30 186. Subject to this Part, the provisions of this Act (other than subsection 
20(1), paragraph 27(1)(b), sections 41 and 59, paragraph 88(2)(d), sections 
121 and 127, Part 9-Removal of trade mark from Register for non-use and 
Part 16-Certification Trade Marks) apply to defensive trade marks and so 
apply as if a reference to a trade mark included a reference to a defensive 
35 trade mark. 
Additional grounds for rejecting application for registration or 
opposing registration 
187. In addition to any other ground on \vhich: !P/N/lIAUS/T/1 
Page 102 
Trade Marks No. 119, 1995 
(a) an application for the registration of a trade mark as a defensive trade 
mark may be rejected; or 
(b) the registration of a trade mark as a defensive trade mark may be 
opposed; 
the application must be rejected or the registration may be opposed: 5 
(c) if the trade mark is not registered as a trade mark in the name of the 
applicant; or 
(d) in the case of a registered trade mark-if it is not likely that the use 
of the trade mark in relation to the goods or services in respect of 
which its registration as a defensive trade mark is sought will be 10 
taken to indicate that there is a connection between those goods or 
services and the registered owner. 
Note: Division 2 of Part 4 sets out the grounds for rejecting an application but section 41 does not apply 
to defensive trade marks (see section 186). Division 2 of Part 5 sets out the grounds for opposing 
registration. 15 
Amendment or cancellation of registration by order of court 
188. Section 88 applies in relation to a defensive trade mark as if "or 
under section 187" were added at the end of paragraph (2)(a). 
Note: Paragraph 88(2)(a) provides that an application to a prescribed court for the rectification of the 
Register may be made on "any of the grounds on which the registration of the trade mark could 20 
have been opposed under Division 2 of Part 5". Section 187 prov ides additional grounds on 
wh ich the registration of a trade mark as a defensive trade mark may be opposed. 
Cancellation of registration by Registrar 
189. The Registrar may cancel the registration of a trade mark as a 
defensive trade mark if the trade mark is not otherwise registered in the name 25 
of the registered owner of the defensive trade mark. Trade Marks No. 119, 1995 IP/N/lIAUS/T/1 
Page 103 
PART IS-JURISDICTION AND POWERS OF COURTS 
Prescribed courts 
190. Each of the following courts is a prescribed court for the purposes 
of this Act: 
5 (a) the Federal Court; 
(b) the Supreme Court of a State; 
(c) the Supreme Court of the Australian Capital Territory; 
(d) the Supreme Court of the Northern Territory; 
(e) the Supreme Court of Norfolk Island. 
10 Jurisdiction of the Federal Court 
191.(1) The Federal Court has jurisdiction with respect to matters 
arising under this Act. 
(2) The jurisdiction of the Federal Court to hear and determine appeals 
against decisions, directions or orders of the Registrar is exclusive of the 
15 jurisdiction of any other court except the jurisdiction of the High Court under 
section 75 of the Constitution. 
(3) A prosecution for an offence against this Act may not be started in 
the Federal Court. 
Jurisdiction of other prescribed courts 
20 192.(1) Each prescribed court (other than the Federal Court) has 
jurisdiction \vith respect to matters in respect of which an action or 
proceeding may, under this Act, be started in a prescribed court. 
Note: For prescribed courl see section 190. 
(2) The jurisdiction conferred by subsection (1) on the Supreme Court 
25 of a Territory is conferred to the extent that the Constitution permits in the 
case of: 
(a) an action for the infringement of a trade mark; or 
(b) an action under section 129; or 
(c) a matter arising under this Act that may be heard and determined in 
30 the course of such an action. 
(3) In any other case, the jurisdiction is conferred only in relation to an 
action or proceeding brought by a natural person who is resident in the 
Territory, or a corporation that has its principal place of business in the 
Territory, when the action or proceeding is started. 
35 Exercise of jurisdiction 
193. The jurisdiction of a prescribed court under section 191 or 192 is 
to be exercised by a single judge. 
Note: For prescribed cuurl see section 1 <J(). IP/NI lIAUS/TI 1 
Page 104 
Trade Marks No. 119, 1995 
Transfer of proceedings 
194.(1) A prescribed court in which an action or proceeding under this 
Act has been started may, on the application of a party made at any stage, by 
an order, transfer the action or proceeding to another prescribed court having 
jurisdiction to hear and determine the action or proceeding. 5 
Note: For prescribed court see section 190. 
(2) When a court transfers an action or proceeding to another court: 
(a) all relevant documents of record filed in the transferring court must 
be sent to the other court by the Registrar or other appropriate officer 
,of the transferring court; and 10 
(b) the action or proceeding must continue in the other court as if: 
(i) it had been started there; and 
(ii) all steps taken in the transferring court had been taken in the 
other court. 
Appeals 15 
of: 195.(1) An appeal lies to the Federal Court against a judgment or order 
(a) another prescribed court exercising jurisdiction under this Act; or 
(b) any other court in an action under Part 12. 
Note: For prescribed court see section 190. 20 
(2) Except \vith the leave of the Federal Court, an appeal does not lie to 
the Full Court of the Federal Court against a judgment or order of a single 
judge of the Federal Court in the exercise of its jurisdiction to hear and 
determine appeals from decisions or directions of the Registrar. 
(3) With the special leave of the High Court, an appeal lies to the High 25 
Court against a judgment or order referred to in subsection (1). 
(4) Except as otherwise provided by this section, an appeal does not] ie 
against a judgment or order referred to in subsection (1). 
Registrar may a ppear in appeals 
196. The Registrar may appear and be heard at the hearing of an appeal 30 
to the Federal Court against a decision or direction of the Registrar. 
Powers of Federal Court 
197. On hearing an appeal against a decision or direction of the 
Registrar, the Federal Court may do anyone or more of the following: 
(a) admit further evidence orally, or on affidavit or otherwise; 35 
(b) permit the examination and cross-examination of witnesses, 
including \vitnesses who gave evidence before the Registrar; 
.(c) order an issue of fact to be tried as it directs; Trade Marks No. 119, 1995 IP/N/lIAUS/T/1 
Page 105 
(d) affirm, reverse or vary the Registrar's decision or direction; 
(e) give any judgment, or make any order, that, in all the circumstances, 
it thinks fit; 
(f) order a party to pay costs to another party. 
5 Practice and procedure of prescribed courts 
198. The regulations may make provision about the practice and 
procedure of prescribed courts in an action or proceeding under this Act, 
including provision: 
(a) prescribing the time for starting the action or proceeding or for doing 
10 any other act or thing; or 
(b) for an extension of that time. 
Note: For prescribed court see section 190. IP/N/lIAUS/T/l 
Page 106 
Trade Marks No. 119, 1995 
PART 19-ADMINISTRATION 
Trade Marks Office and sub-offices 
199.(1) For the purposes of this Act, there is to be an office called the 
Trade Marks Office. 
S (2) There is to be a sub-office of the Trade Marks Office in each State. 
Seal of Trade Marks Office 
200. There is to be a seal of the Trade Marks Office and impressions of 
the seal must be judicially noticed. 
Registrar of Trade Marks 
10 201.(1) There is to be a Registrar of Trade Marks. 
(2) The Registrar has the powers and functions that are given to him or 
her under this Act or any other Act (including regulations under that Act). 
Registrar's powers 
202. The Registrar may, for the purposes of this Act: 
15 (a) summon witnesses; and ' 
(b) receive written or oral evidence on oath or affinnation; and 
(c) require the production of documents or articles; and 
(d) award costs against a party to proceedings brought before the 
Registrar; and 
20 (e) notify, as he or she considers fit, any person of any matter that, in his 
or her opinion, should be brought to the person's notice. 
Note: For the awarding of costs see section 221. 
Exercise of power by Registrar 
203. The Registrar may not exercise a power under this Act in any way 
25 that adversely affects a person applying for the exercise of that power 
without first giving that person a reasonable opportunity of being heard. 
Registrar to act as soon as practicable 
204. If: 
(a) the Registrar is required under this Act to do any act or thing; and 
30 (b) no time or period is provided within which the act or thing is to be 
done; 
the Registrar is to do the act or thing as soon as practicable. 
Deputy Registrar of Trade Marks 
205.(1) There is to be at least one Deputy Registrar of Trade Marks. 
35 (2) Subject to any direction by the Registrar, a Deputy Registrar has all 
the powers and functions of the Registrar, except the powers of delegation 
under section 206. Trade Marks No. 119, 1995 IP/N/lIAUS/T/1 
Page 107 
(3) A power or function of the Registrar, when exercised by a Deputy 
Registrar, is taken to have been exercised by the Registrar. 
(4) The exercise of a power or function of the Registrar by a Deputy 
Registrar does not prevent the exercise of the power or function by the 
Registrar. 5 
(5) If the exercise of a power or function by the Registrar is dependent 
on the opinion, belief or state of mind of the Registrar in relation to a matter, 
that power or function may be exercised by a Deputy Registrar on his or her 
opinion, belief or state of mind in relation to that matter . 
.: ~ 
(6) If the operation of a provision of this Act or another Act is dependent 10 
on the opinion, belief or state of mind of the Registrar in relation to a matter, 
that provision may operate on the opinion, belief or state of mind of a Deputy 
Registrar in relation to that matter. 
Delegation of Registrar's powers and functions 
206.(1) The Registrar may by signed instrument delegate all or any of 15 
his or her powers or functions to: 
(a) a prescribed person, or persons included in a prescribed class, 
holding or performing the duties of an Australian Public Service 
office in the Trade Marks Office; or 
(b) a prescribed employee, or employees included in a prescribed class, 20 
employed in the Trade Marks Office. 
Note 1: For employee sce section 6. 
Note 2: See section 34AB of the Acts Interpretation Act 1901 about the effect of this subsection. 
(2) A delegate must, if so required by the instrument of delegation, 
exercise or perform a delegated power or function under the direction or 25 
supervision of: 
(a) the Registrar; or 
(b) a person specified in the instrument, being a person referred to in 
paragraph (l)(a) or (b). IP/N/1/AUS/T/1 
Page 108 
Trade Marks No. 119, 1995 
PART 20-THE REGISTER AND OFFICIAL DOCUMENTS 
The Register 
207.(1) A Register of Trade Marks is to be kept at the Trade Marks 
Office. 
5 (2) The Registrar must enter in the Register in accordance with this Act: 
(a) all particulars of registered trade marks, certification trade marks and 
defensive trade marks, and all other matters, that were on the old 
register when the repealed Act was repealed, with the exception of 
particulars and other matters relating to registered users of trade 
10 marks; and 
Note 1: For old register see section 6. 
Note 2: See subseclion (3) for entries relating to associated trade marks. 
(b) particulars of trade marks, certification trade marks, collective trade 
marks and defensive trade marks, and all other matters, that are 
15 required to be registered under this Act; and 
(c) other prescribed matters. 
(3) If 2 or more trade marks were entered as associated trade marks in 
the old register, no equivalent entry designating them as ass~iated trade 
marks is to be made in the Register. 
20 Note: For old register see section 6. 
(4) All particulars entered in the Register under paragraph (2)(a) are 
taken to have been so entered on 1 January 1996. 
Register may be kept on computer 
208.(1) The Register may be kept in whole or in part by uSing a 
25 conlputer. 
(2) Any record of a particular or other matter made by using a computer 
for the purpose of keeping the Register is taken to be an entry in the Register. 
Inspection of Register 
209.(1) The Register must be available at the Trade Marks Office for 
30 inspection by any person during the hours \vhen the Office is open for 
business. 
(2) If the Register, or any part of the Register, is kept by using a 
computer, subsection (1) is satisfied if a person who wants to inspect the 
Register or that part of the Register is given access to a computer terminal 
35 from which he or she can read on a screen, or obtain a printed copy of, the 
particulars or other matters recorded in the Register or that part of the 
Register. Trade Marks No. 119, 1995 
Evidence-the Register IP/N/lIAUS/TIl 
Page 109 
210.(1) The Register is prinlQ facie evidence of any particular or other 
matter entered in it. 
Note: See section 116 about records of claims to interests and rights made under Part 11. 
(2) A copy of, or an extract from, the Register that is certified by the 5 
Registrar to be a true record or extract is admissible in any proceedings as 
if it were the original. 
(3) If the Register or a part of the Register is kept by using a computer, 
a document certified by the Registrar as reproducing in writing a computer 
record ef all or any of the particulars comprised in the Register or in that part 10 
of the Register is admissible in any proceedings as evidence of those 
particulars. 
Evidence--certified copies of documents 
211.(1) A certificate signed by the Registrar and stating that: 
(a) anything required or permitted to be done by the Act or the repealed 15 
Act was done or not done on, or had been done or not been done by, 
a specified date; or 
(b) anything prohibited by the Act or the repealed Act was done or not 
done on, or had been done or not been done by, a specified date; or 
(c) a document was available for public inspection at the Trade Marks 20 
Office on a specified date or during a specified period; 
is prinla facie evidence of the matters so stated. 
(2) A copy of, or an extract from, a document held in the Trade Marks 
Office that is certified by the Registrar to be a true copy or extract is 
admissible in any proceedings as if it were the original. 25 IP/N/l IAUS/TI 1 
Page 110 
Trade Marks No. 119, 1995 
PART 2l-MISCELlANEOUS 
Division l-Applications and other documents 
Making and signing applications etc. 
212. An application, notice or request required or permitted under this 
5 Act to be made or signed by a person may be made or signed, on behalf of 
that person, by: 
(a) a lawyer; or 
(b) a patent attorney; or 
(c) a person permanently employed by, and only by, that person; or 
10 (d) a person referred to in paragraph 135(1)(h) or (i) of the repealed Act. 
Note 1: For lawyer and patent attorney see section 6. 
Note 2: Paragraphs 135(1)(h) and (i) of the repealed Act provided as follows: 
"(h) a person who, within 1 year after the commencement of this Act, has satisfied the 
Registrar that, for a continuous period of 2 years immediately before 1 January 1955, 
15 he was practising as a trade marks agent in Australia; or 
(i) a person who: 
(i) within 1 year after the commencement of this Act, has satisfied the Registrar 
that, for a continuous period of 2 years immediately before 1 January 1955, he 
was employed by a registered patent attorney in Australia and his duties related 
20 solely or principally to the lodging, prosecuting and op(X)sing of applications 
for the registration of trade marks; and 
(ii) unless the Registrar otherwise directs, has, within 1 year after the commencement 
of this Act or within such further time as the Registrar allows, passed the prescribed 
examination." . 
25 Subsection 135(2) of the repealed Act provided as follows: 
"(2) For the purposes of paragraph (h) of the last preceding subsection, a person shall not 
be deemed to have practised as a trade marks agent unless the only or the principal business 
carried on by him was the businessof lodging, prosecuting and opposing, for gain, applications 
for the registration of trade marks in Australia on behalf of applicants or opponents.". 
30 Filing of documents 
213.(1) A document is taken to be filed at the Trade Marks Office if it 
is filed at a sub-office of the Trade Marks Office. 
(2) A document may be filed at the Trade Marks Office or any of its 
sub-offices by being delivered there: 
35 (a) personally; or 
(b) by post; or 
(c) by any prescribed means. 
Withdrawal of application etc. 
214.(1) A person who has filed an application, notice or request may 
40 withdraw it, in accordance with the regulations, at any time while it is still 
being considered by the Registrar. 
(2) If: 
(a) the right or interest on which the person relied to file the application, 
notice or request has beC0J11e vested in another person; and Trade Marks No. 119, 1995 IPINIl! AUS/T/1 
Page 111 
(b) the other person notifies the Registrar in writing that the right or 
interest is vested in him or her; 
the other person may withdraw the application, notice or request as provided 
in subsection (1). 
Note: For filt see section 6. 5 
Address for service 
215.(1) The address for service of a person who has filed an application, 
notice or request is: 
(a) the address for service stated in the application, notice or request; or 
(b) if the person subsequently notifies in writing another address to the 10 
Registrar-that other address. 
Note: For filt see section 6. 
(2) When: 
(a) a trade mark is registered; or 
(b) a claim to an interest in, or to a right in respect of, a registered trade 15 
mark that a person has is recorded in the Register; 
the Registrar must enter in the Register as the address for service of the 
registered owner or of the person: 
(c) if paragraph (d) does not apply-the address given, or last given, by 
the registered owner or the person to the Registrar under 20 
subsection (1); or 
(d) if, before the Registrar registers the trade mark or records the claim 
to the interest or right, the registered owner or person gives in writing 
to the Registrar another address as his or her address for 
service-that other address. 25 
Note: For registered trade mark and registered owner see section 6. 
(3) The registered owner of a registered trade mark, or any person whose 
claim to an interest in, or to a right in respect of, a trade mark is recorded in 
the Register, must notify the Registrar in writing of any change in his or her 
address for service and the Registrar must amend the Register accordingly. 30 
(4) The address for service of: 
(a) the registered owner of a registered trade mark; or 
(b) a person whose claim to an interest in, or to a right in respect of, a 
trade mark is recorded in the Register; 
is the address set out from time to time in the Register as being the address 35 
for service of the registered owner or of the person. 
(5) An address for service must be an address in Australia. 
(6) If this Act provides that a document is to be served on, or given or 
sent to, a person: 
(a) the document may be left at, or sent by post to, the address for service 40 
of the person: tH IP/NIlIAUS/TI 1 
Page 112 
Trade Marks No. 119, 1995 
(b) if the person does not have an address for service-the document 
may be served on an agent of the person in Australia or may be sent 
by post to any address of the person in Australia that is known to the 
Registrar. 
S (7) Subsection (6) does not affect the operation of section 28A of the 
Acts Interpretation Act 1901. 
Note: Section 28A of the AClslnterpretarion Act 1901 provides that a document may be served (this 
term includes given, or sent, to): 
"(a) on a natural person: 
10 (i) by delivering it to the person personally; or 
(ii) by leaving it at, or by sending it by pre-paid post to, the address of the place of residence 
or business of the person last known to the person serving the document; or 
(b) on a body corporate-by leaving it at, or sending it by pre-paid post to, the head office, 
a registered office or a principal office of the body corporate." 
15 Change of name 
216.(1) If there is a change in the name of a person who has filed an 
application, notice or request, the person must notify the Registrar in writing 
of the change. 
Note: For file see section 6. 
20 (2) If there is a change in the name of: 
(a) the registered owner of a registered trade mark; or 
(b) a person whose claim to an interest in, or to a right in respect of, a 
trade mark is recorded in the Register; 
the registered owner or the person must notify the Registrar in writing of the 
25 change and the Registrar must amend the Register accordingly. 
Death of applicant etc. 
217.(1) If an applicant for the registration of a trade mark dies before 
registration is granted on the application, his or her legal representative may 
proceed with the application. 
30 Note: For applicant see section 6. 
(2) If, at any time after a trade mark is registered, the Registrar is 
satisfied that the person in whose name the trade mark is registered had died 
(or, in the case of a body corporate, had ceased to exist) before registration 
was granted, the Registrar may amend the Register by substituting for the 
35 name entered in the Register the name of the person who should be the 
registered owner of the trade mark. Trade Marks No. 119, 1995 IP IN 111 A US/T 11 
Page 113 
Division 2-Proceedings before the Registrar or a court 
Description of registered trade mark 
218. In an indictment, information, pleading or proceeding relating to 
a ·registered trade mark, the trade mark may be identified by its registration 
number. It is not necessary to reproduce or describe the trade mark. 5 
Evidence of trade usage 
219. In an action or proceeding relating to a trade mark, evidence is 
admissible of the usage of the trade concerned and of any relevant trade 
mark, trade name or get-up legitimately used by other persons. 
Death of party to proceeding before Registrar 10 
220. If a person who is party to a proceeding pending before the 
Registrar dies, the Registrar n1ay: 
(a) on being so asked, substitute in the proceeding another person in the 
place of the deceased party jf the Registrar is satisfied that the interest 
of the deceased party has been transmitted to that other person; or 15 
(b) allow the proceeding to continue without any substitution if the 
Registrar is of the opinion that the interest of the deceased party is 
sufficiently represented by the surviving parties. 
Costs awarded by Registrar 
221.(1) The Registrar may award costs in respect of the matters, and in 20 
the amounts, provided for in the regulations against any party to proceedings 
brought before him or her. 
(2) A party desiring to obtain costs must apply to the Registrar in 
accordance with the regulations. 
(3) If a party is ordered to pay the costs of another party, the costs may 25 
be recovered in a court of competent jurisdiction as a debt due hy the first 
party to the other party. . 
Security for costs 
222. If a person who neither resides nor carries on business in Australia: 
(a) gives notice of opposition under this Act; or 30 
(b) applies to the Registrar under Part 9 for a trade mark to be removed 
from the Register; 
the Registrar may require the person to give security for the costs of the 
proceeding and may, if security is not given, dismiss the proceeding. !PIN/II ADS/T/I 
Page 114 
Trade Marks No. 119, 1995 
Division 3-General 
Fees 
223.(1) The regulations may prescribe the fees to be paid for the 
purposes of this Act and may prescribe different fees in respect of the doing 
5 of an act according to the time when the act is done. 
(2) Prescribed fees are payable in accordance with the regulations. 
(3) If a fee is payable in respect of the doing of an act by the Registrar, 
the Commission or the Comptroller, the Registrar, Commission or 
Comptroller must not do the act until the fee has been paid. 
10 (4) Subject to subsection (5), if: 
(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, or the document is taken to have been filed, 
15 in spite of the failure to pay the fee. 
Note: For file see section 6. 
(5) If the Registrar, the Commission or the Comptroller notifies the 
person concerned or his or her agent, in accordance with the regulations, that 
the fee has not been paid, the act is not taken to have been done, or the 
20 document is not taken to have been filed, before the day on which the fee is 
paid. 
Extension of tinle 
224.(1) If, because of an error or omission by a trade marks officer, a 
relevant act that is required by this Act to be done within a certain time is not, 
25 or cannot be, done within that time, the Registrar must extend the time for 
doing the act. 
Note: For trade marks officer see section 6. 
(2) If, because of: 
(a) an error or omission by the person concerned or by his or her agent; 
30 or 
(b) circunlstances beyond the control of the person concerned; 
a relevant act that is required by this Act 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 
35 time for doing the act. 
(3) If: 
(a) a relevant act that a person is required by this Act 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 
40 regulations, the Registrar is of the opinion that special circumstances 
exist that justify an extension of that time; Trade Marks No. 119, 1995 
the Registrar may extend the tinle for doing the act. IP/NIlIAUS/TI1 
Page 115 
(4) The time allowed for doing a relevant act may be extended, whether 
before or after that time has expired. 
(5) If an application is made under subsection (2) or (3) for an 
extension of time for more than 3 months, the Registrar must advertise the 5 
application in the Officia I Journal. 
(6) A person may, as prescribed, oppose the granting of the application. 
(7) An application may be made to the Administrative Appeals Tribunal 
for the review of a decision of the Registrar not to extend the time for the 
doing of an act. 10 
(8) In this section: 
relevant act means: 
(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); or 15 
(c) any proceedings (other than court proceedings). 
Convention countries 
225.(1) The regulations may declare a foreign country to be a 
Convention country for the purposes of this Act. 
(2) If: 20 
(a) the regulations declare that, under the terms of a treaty subsisting 
between 2 or more Convention countries, an application made for the 
registration of a trade mark in one of those countries is equivalent to 
an application made in another of those countries; and 
(b) an application for the registration of a trade mark is made in one of 25 
those Convention countries; 
then, for the purposes of this Act, an application for the registration of the 
trade mark is taken to have also been made in the other Convention country 
or in each of the other Convention countries (as the case may be). 
(3) If: 30 
(a) the regulations declare that, under the Jaw of a Convention country, 
an application for the registration of a trade mark made in another 
country is equivalent to an application made in the Convention 
country; and 
(b) an application for the registration of a trade mark is made in that other 35 
country; 
then. for the purposes of this Act, an application for the registration of the 
trude Illurk is taken to have also been Illude in the Convention country. IP/N/lIAUS/T/1 
Page 116 
Trade Marks . No. 119, 1995 
Publication of Official Journal etc. 
226.(1) The Registrar must issue at regular intervals, as determined by 
the Registrar, an Official Journal o/Trade Marks containing: 
(a) the matters that are required under this Act to be advertised in the 
5 Official Journal; and 
(b) any other matter that the Registrar thinks fit. 
(2) The Registrar must make arrangements for selling copies of the 
Official Journal. 
(3) The Registrar may prepare, publish and sell documents relating to 
10 trade marks as the Registrar thinks fit. 
Notice regarding review of decision by Administrative 
Appeals Tribunal 
227.(1) If, under a provision of this Act, an application may be made to 
the Administrative Appeals Tribunal for the review of a decision of a person: 
15 (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 TribunalAct 1975, application may be made 
to the Administrative Appeals Tribunal for the review of the decision 
20 to which the notice relates by or on behalf of the person or persons 
whose interests are affected by the decision. 
(2) Failure to comply with subsection (1) in relation to a decision does 
not affect the validity of the decision. 
(3) In this section: 
25 decision has the same meaning as in theAdministrativeAppeals Tribuna/Act 
1975. 
Use of trade mark for export trade 
228.(1) If: 
(a) a trade mark is applied in Australia: 
30 (i) to, or in relation to goods that are to be exported from Australia 
(export goods); or 
(ii) in relation to services that are to be exported from Australia 
(export services); or 
(b) any other act is done in Australia to export goods or export services 
35 which, if done in relation to goods or services to be dealt with or 
provided 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 
40 or export services. 
Note: For applltd 10 or In rtlatlun to goodJ and app/ltd /n ft/a//on to NlrYICtJ .\Cc I'.(clion C). Trade Marks No. 119, 1995 IP/NIlIAUS/TI 1 
Page 117 
(2) Subsection (1) applies to an act done before 1 January 1996 as it 
applies to an act done on or after that day, but it does not affect: 
(a) a decision of a court made bef~re that day; or 
(b) the determination of an appeal from such a decision. 
Rights etc. of patent attorney 5 
229.(1) A patent attorney: 
(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. 
(2) Tnis section does not authorise a patent attorney: 10 
(a) to prepare a document that is to be issued from or filed in a court; or 
(b) to transact business or to conduct proceedings in a court. 
Note: For patent attorney sec section 6. 
Passing off actions 
230.(1) Except as provided in subsection (2), this Act does not affect the 15 
law relating to passing off. 
(2) In an action for passing off arising out of the use by the defendant of 
a registered trade mark: 
(a) of which he or she is the registered owner or an authorised user; and 
(b) that is substantially identical with, or deceptively similar to, the trade 20 
mark of the plaintiff; 
damages may not be awarded against the defendant if the defendant satisfies 
the court: 
(c) that, at the time \vhen the defendant began to use the trade mark, he 
or she was unaware, and had no reasonable means of finding out, that 25 
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. 30 
Note 1: For authoristd user see section 8. 
Note 2: For deceptivtly s;miwr see section 10. 
Regulations 
231.(1) The Governor-General may make regulations: 
(a) prescribing olatters required or permitted by this Act to be 35 
prescribed; or 
(b) prescribing matters necessary or convenient to be prescribed for 
carrying out or giving effect to this Act; or IP/N/lIAUS/T/1 
Page 118 
Trade Marks No. 119, 1995 
(c) prescribing matters necessary or convenient to be prescribed for the 
conduct of any business relating to the Trade Marks Office or a 
sub-office of the Trade Marks Office. 
(2) Without limiting subsection (1), the regulations may: 
5 (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 
Note: For file see section 6. 
1 0 (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 
15 of a fee paid under this Act; 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) provide for the expenses and allowances to be paid to witnesses or 
persons attending at proceedings before the Registrar; and 
20 (g) 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 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 
25 (iii) to refund to the applicant any amount given as security and not 
applied in settling costs awarded against the applicant; and 
(h) 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 
(i) prescribe as penalties for offences against the regulations fines not 
30 exceeding 10 penalty units; and 
U) make transitional or consequential provision as necessary or 
convenient because of the repeal of the repealed Act and the 
enactment of this Act; and 
(k) provide for regulations made under the repealed Act to continue to 
35 have effect (with any prescribed alterations) for specified purposes 
of this Act. 5 Trade Marks No. 119, 1995 IP/N/lIAUS/T/1 
Page 119 
PART 22--REPEAL AND TRANSITIONAL 
Dil,is;on I-Repeal 
Repeal 
232. The Trade Marks Act 1955 is repealed. 
Division 2-Marks registered under the repealed Act 
Automatic registration under this Act 
233.(1) All trade marks that, immediately before 1 January 1996, were 
registered in Part A or 8, or both Parts A and B, of the old register are 
registered trade marks for the purposes of this Act. 
10 Note: For old register and registered trade mark see section 6 .. 
(2) AIl trade marks that, immediately before 1 January 1996, were 
registered as certification trade marks in Part C of the old register are 
registered certification trade marks for the purposes of this Act. 
(3) All trade marks that, immediately before 1 January 1996, were 
15 registered as defensive trade marks in Part D of the old register are registered 
as defensive trade marks for the purposes of this Act. 
Registration conclusive after 7 years 
234.(1) This section applies in relation to: 
(a) a registered trade mark that: 
20 (i) immediately before 1 January 1996, was registered in Part A 
of the old register; and 
(ii) has not at any time on or after that day ceased to be registered; 
and 
(b) a registered trade mark: 
25 (i) whose application for registration in Part A of the old register 
had been accepted under the repealed Act and was still pending 
irnmediately before 1 January 1996; and 
(ii) that has not at any time on or after that day ceased to be 
registered. 
30 Note 1: For registered trade mark and old regbiter see section 6. 
Note 2: For pending see subsection 11 (2). 
(2) In any legal proceedings: 
(a) the original registration under the repealed Act of a trade mark 
referred to in paragraph (1 )(a); or 
35 (b) the original registration under this Act of a trade mark referred to in 
paragraph (1 )(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: IP/NI1/AUS/TI 1 
Page 120 
Trade Marks No. 119, 1995 
(c) the original registration was obtained by fraud; or 
(d) the registration of the trade mark would be contrary to section 28 of 
the repealed Act; or 
(e) the trade mark did not, at the commencement of the proceedings, 
distinguish the goods or services of the registered owner in relation 5 
to which the trade mark is llsed from the goods or services of other 
persons. 
Note 1: For date of registration see section 6. 
Note 2: Section 28 of the repealed Act provided as follows: 
"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.". 
Term of registration 
235. The registration of an existing registered mark expires on the day 
on which it would have expired under the repealed Act if that Act had not 
been repealed. 10 
15 
Note: For existing registertd mark see section 6. 20 
Renewal 
236.(1) Division 2 of Part 7 applies in relation to the renewal of the 
'egistration of an existing registered mark. 
(2) If, before 1 January 1996, the Registrar had (under section 69 of the 
repealed Act) renewed for a period of 14 years the registration of a trade 25 
mark that was due to expire on or after that day: 
(a) that renewal has no effect for the purposes of this Act; and 
(b) the Registrar must renew the registration of the trade mark for a 
. period of 10 years from the day on which the registration would 
expire if it were not renewed. 30 
Restoration of particulars to Register and renewal of registration 
where registration expired within 12 months before 1 January 1996 
237.(1) This section applies if the registration of a trade mark under the 
repealed Act had expired within 12 months before 1 January 1996. 
(2) The Registrar must: 35 
(a) make an entry in the Register to the effect that all particulars of the 
trade mark removed from the old register under the repealed Act 
(because the trade mark had not been renewed) are restored to the 
Register; and 
(b) enter those particulars in the Register. 40 
Nnte: For old rtgister see section 6. Trade Marks No. 119, 1995 IP/N/1/AUS/T/1 
Page 121 
(3) If an application for the renewal of the registration of the trade mark 
is made under this Act within 12 months from the day on which the 
registration expired, the Registrar must renew the registration of the trade 
mark for the period beginning on 1 January 1996 that, together with the 
5 period during which the trade mark remained unregistered under the 
repealed Act, equals 10 years. 
(4) If the registration of the trade mark is not renewed under subsection (3), 
the Registrar must remove the trade mark from the Register 12 months after 
the day on which the registration expired. 
10 Disclaimers 
238. If the particulars entered in the Register under paragraph 207(2}(a} 
in respect of an existing registered mark include particulars of a disclaimer 
made (under section 32 of the repealed Act) by the registered proprietor of 
the mark about the exclusive right to use a specified part of the mark, that 
15 disclaimer has effect as if it were a disclaimer made under section 74 of this 
Act. 
Note: For existing registered mark see section 6. 
Rules governing the use of certification trade marks registered in 
Part C of the old register 
20 239. Any rules that, immediately before 1 January 1996, were governing 
the use of a trade mark then registered as a certification trade mark in Part 
C of the old register: 
(a) apply in relation to the use of the certification trade mark on or after 
that day as if they were rules made in accordance with this Act; and 
25 (b) may be varied under section 178. 
Note: For old register see section 6. IP/NIlIAUS/TI 1 
Page 122 
Trade Marks No. 119, 1995 
Division 3-Matters pending immediately before repeal of repealed Act 
Applications, notices etc.-general 
240.(1) Subject to this Division, an application, notice or request that: 
(a) was lodged with the Registrar in accordance with the repealed Act; 
and 5 
(b) was pending immediately before 1 January 1996; 
is to be dealt with in accordance with this Act. 
Note: For pending see subsection 11(2). 
(2) The application, notice or request is taken to have been filed in 
accordance with this Act. 10 
Note: For file see section 6. 
Application for registration of trade mark 
241.(1) This section applies if an application for the registration of a 
trade mark in Part A or B of the old register was pending immediately before 
1 January 1996. 15 
Note 1: For old register see section 6. 
Note 2: For pending see subsection 11(2). 
(2) If the application had been accepted under the repealed Act and the 
acceptance was in force immediately before 1 January 1996, the following 
proyisions apply: 20 
(a) subject to subsection (4), the repealed Act (other than paragraph 
45(1)(b)) continues to apply in relation to the application; 
(b) if, after dealing with the application in accordance with the repealed 
Act, the Registrar is required under section 53 of that Act to register 
the trade mark in the old register-the Registrar is to register the 25 
trade mark under Part 7 of this Act. 
Note: Subsection 45(1) of the repealed Act provided as follows: 
.. 45.(1) An application forthe registration of a trade mark may be accepted, and the trade mark 
may be registered, notwithstanding that the applicant does not use or propose lo use the trade 
ma~: 30 
(a) ... 
(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 35 
registration of the trade mark.". 
(3) If, immediately before 1 January 1996, the application had not been 
accepted, the following provisions apply: 
(a) subject to subsection 240(2) and subsection (5) of this section, the 
application is to be dealt with in accordance with this Act; 40 
(b) if: 
(i) there is no opposition to the registration; or Trade Marks No. 119,1995 IP/N/lIAUS/T/l 
Page 123 
(ii) there is an opposition to the registration but 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; 
5 Part 7 is to apply in relation to the registration of the trade mark. 
(4) If, when dealing with the application under the repealed Act as 
provided by paragraph (2)(a), the Registrar withdraws the acceptance of the 
application under subsection 44(3) of that Act, the following provisions 
apply: 
10 (a) subject to subsection 240(2) and subsection (5) of this section, the 
application is to be dealt with in accordance with this Act as if it were 
an application whose acceptance had been revoked under subsection 
38(1); 
(b) if: 
15 (i) there is no opposition to the registration; or 
(ii) there is an opposition to the registration but 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; 
20 Part 7 is to apply in relation to the registration of the trade mark. 
(5) The filing date in respect of the application is: 
(a) if paragraph (b) does not apply-the day on which the application 
\vas lodged with the Trade Marks Office under the repealed Act; or 
(b) if section 43 of the repealed Act applied to the application and the 
25 Registrar had made the proper direction-the day on which the 
application is to be taken to have been lodged with the Trade Marks 
Office under the repealed Act. 
Divisional application in relation to pending application 
242.(1) This section applies if, immediately before 1 January 1996, an 
30 application (initial application) for the registration of a trade mark in the old 
register was pending and had not been accepted. 
Note 1: For old register see section 6. 
Note 2: For ptnding see subsection 11(2). 
(2) If: 
35 (a) at any time within 6 months after 1 January 1996, the initial 
application is still pending; and 
(b) a part of the trade mark, by itself, may be registered as a trade mark; 
the applicant may, subject to subsection (4), make an application (divisional 
application) for the registration of that part as a trade mark in respect of any 
40 or all of the goods or services specified in the initial application. 
Note: For pending see subsection ll( 1). IP/N/lIAUS/T/l 
Page 124 
Trade Marks No. 119, 1995 
(3) If the initial application: 
(a) was amended under the repealed Act to exclude some of the goods 
and/or services specified in the application before its amendment; 
and 
(b) is still pending at any time within one month after 1 January 1996; 5 
the applicant may, subject to subsection (4), make an application (divisional 
application) for the registration of the trade mark in respect of any or all of 
the goods and/or services that were excluded from the initial application. 
Note: For p~nding see subsection 11(1). 
(4) If the initial application is accepted under Part 4, a divisional 10 
application may not be made after the acceptance is advertised in the 
Official Journal. 
More than one application lodged on same day for registration of 
same trade mark 
243.(1) If: 15 
(a) before 1 January 1996 a person made a number of applications each 
seeking the registration of one and the same trade mark but in respect 
of goods or services of different classes; and 
(b) all the applications were lodged, or were taken under the repealed 
Act to have been lodged, on the same day with the Trade Marks 20 
Office; 
the applications are called linked applications in this section. 
(2) This section applies if, immediately before 1 January 1996, a number 
of linked applications for the registration of a trade mark were pending and 
had not been accepted. 25 
Note: For pending see subsection 11(2). 
(3) If, at any time on or after 1 January 1996, there are linked 
applications pending, the applicant may, subject to subsection (4), apply to 
the Registrar to have some or all of those applications dealt with under this 
Act as if they were one application for the registration of the trade mark in 30 
respect of all goods and services specified in those applications. 
Note: For pending see subsection 11(1). 
(4) If: 
(a) one of the linked applications has been accepted under Part 4; and 
(b) the acceptance has bee~ advertised in the Official Journal; 35 
that application may not be included in the application made to the Registrar 
under subsection (3). 
(5) If an application is nlade under subsection (3), the Registrar must 
deal with the linked applications as if they were a sing1e application for the 
registration of a trade mark Jnaoe on 1 January 1 ~~6. 40 Trade Marks No. 119, 1995 IP/N/lIAUS/T/1 
Page 125 
(6) The filing date for the single application taken to have been made 
under subsection (5) is the day on which the linked applications were 
lodged, or were taken to have been lodged (as the case may be), with the 
Trade Marks Office under the repealed Act. 
5 Application for registration of trade mark whose registration has 
been sought in Convention country 
244.(1) This section applies if: 
(a) an application for the registration in Australia of a trade mark whose 
registration had been sought in one or more than one Convention 
10 country \vas made under section 109 of the repealed Act; and 
(b) immediately before 1 January 1996, the application was still 
pending. 
Note 1: For pending see subsection 11(2). 
Note 2: For Convention country see section 225. 
15 (2) If: 
(a) for the purposes of the repealed Act, the Registrar had been notified 
that an application had been made in that Convention country or in 
those Convention countries for the registration of the trade mark; and 
(b) the trade mark is registered under this Act; 
20 subsectioh 72(2) applies in relation to the registration as if a right of priority 
had been claimed under section 29 for the registration of the trade mark. 
(3) I f the Registrar had not, for the purposes of the repealed Act, been 
notified that an application had been made in that Convention country or in 
those Convention countries for the registration of the trade mark, the 
25 applicant must, within 6 months after 1 January 1996 but subject to 
subsection (5), claim a right of priority for the registration of the trade mark 
in accordance with section 29 in order to obtain registration from the date 
on which that application or the earliest of those applications was made in 
a Convention country. 
30 (4) If: 
(a) the applicant claims a right of priority for the registration of the trade 
mark under subsection (3); and 
(b) the trade mark is registered under this Act; 
subsection 72(2) applies in relation to the registration. 
35 (5) If the application is accepted under Part 4, the applicant may not 
claim a right of priority in accordance with section 29 ufter the acceptance 
is advertised in the Official Journal. IPIN/lIAUS/T/l 
Page 126 
Trade Marks No. 119, 1995 
Application for registration of a mark in Part C of the old register 
245.(1) Subject to Part 16, section 241 applies to an application for the 
registration of a mark as a certification trade mark in Part C of the old register 
as if the reference in subsection (1) to Part A or B of the old register were 
a reference to Part C of that register. . 5 
(2) Subject to Part 16, sections 242 to 244 apply to an application for the 
registration of a mark as a certification trade mark in Part C of the old 
register. 
Note: For old register see section 6. 
Applicatior. for registration of a mark in Part D of the old register 10 
246.(1) Subject to Part 17, section 241 applies to an application for the 
registration of a mark as a defensive trade mark in Part D of the old register 
as if the reference in subsection (1) to Part A or B of the old register were 
a reference to Part D of that register. 
(2) Subject to Part 17, sections 242 to 244 apply to an application for the 15 
registration of a mark as a defensive trad,e mark in Part D of the old register. 
Amendment of application-specification of goods or services 
247.(1) This section applies if: 
(a) immediately before 1 January 1996 an application for the 
registration of a mark in Part A, B, C or D of the old register (other 20 
than an application made under section 39 of the repealed Act) was 
pending and had not been accepted; 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. 25 
Note 1: For old register see section 6. 
Note 2: For pending see subsection 11 (2). 
(2) The applicant may, within 6 months afte~ 1 January 1996, apply to 
the Registrar for the application to be again amended so as to relate to some 
or all of the goods or services specified in the application before its 30 
amendment under the repealed Act, if: 
(a) the application is still pending under this Act; and: 
(i) it has not been accepted; or 
(ii) if it has been acc:epted, the acceptance has not been advertised 
in the Official Journal; and 35 
(b) 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 included from the original application, if that Act 
were still in force. 
No(e: For pending sec suhscction 11 (1). 40 5 
10 
15 
20 
25 
30 Trade Marks No. 119, 1995 IP/N/lIAUS/T/1 
Page 127 
(3) If an application is amended under subsection (2), it must (if 
necessary) be also amended so as to be in accordance with Part 4. 
Revival of application for registration of trade mark that had lapsed 
before 1 January 1996 
248.(1) If: 
(a) an application under the repealed Act for the registration of a trade 
mark had lapsed (under subsection 48(1) of that Act); and 
(b) the application would have been pending immediately before 
1 January 1996 if: 
(i) an application had been made to the Registrar under the 
repealed Act for an extension of the time within which the 
. application for registration would be accepted; and 
(ii) the Registrar had allo\ved an extension of that time under that 
Act· , 
the applicant may apply in writing to the Registrar for a declaration that the 
application is revived. 
Note: For pending see subsection 11(2). 
(2) The Registrar must grant the application if he or she considers, in all 
the circumstances of the case, that it is fair and reasonable to do so. 
(3) If the Registrar declares that the application is revived, the 
application is to be dealt with as if it wert} an application that was pending 
immediately before 1 January 1996. 
Note 1: For pending see subsection 11(2). 
Note 2: Sections 240 to 247 make provision relating to applications for registration of trade marks that 
were pending immediately before 1 January 1996. 
Application for registration of assignment etc. 
249. If an application for the registration in the old register of the 
assignment or transmission of an existing registered mark was pending 
immediately before 1 January 1996, this Act applies in relation to the 
application as if: 
(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 1 January 1996. 
Note: For old registtr, existing registend mark and file see section 6. 
35 Rectification of Register 
250. If proceedings arising from an application to a court under section 22 
(Rectification of Register) of the repealed Act were pending immediately 
before 1 January 1996, the matter is to be decided under the repealed Act 
as if the old register were to be rectified, but any order made by the Court 
40 may only be in respect of the rectification of the Register. 
Note: For old rt~i.'l(tr see section 6. IP 1Nl 11 A US/T /1 
Page 128 
Trade Marks No. 119, 1995 
Action for removal of trade mark from Register for non-use 
251. If proceedings arising from an application to the Registrar or a court 
under section 23 (Provisions as to non-use of trade mark) of the repealed Act 
were pending immediatel y before 1 J an uary 1996, the repealed Act 
continues to apply: 5 
(a) in relation to those proceedings; and 
Cb) 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 the 
Register within the meaning of this Act. 10 
Note: For pending see subsection 11(2). 
Action for infringement of trade mark etc. 
252. Sections 62 to 67 and section 78 of the repealed Act continue to 
apply in relation to an action for the infringement of a trade mark that was 
pending immediately before 1 January 1996. 15 
Action under this Act for infringement of trade mark under 
repealed Act 
253. If: 
(a) before 1 January 1996 a person engaged in conduct that infringed a 
mark registered under the repealed Act; and 20 
(b) an action relating to that infringement \vas not pending immediately 
before 1 January 1996; and 
(c) the mark is an existing registered ITIark 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 25 
the trade mark. A person is not, however, entitled under this Act to any 
injunction or other relief to which the person would not have been entitled 
under the repealed Act. 
Note: For existing registered mark see section 6. 
Acts not constituting infringement of trade mark 3u 
254.(1) This section applies if: 
(a) immediately before 1 January 1996, 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; 35 
and 
(c) the person has, on or after that day, continuously engaged in, and is 
engaging in, that conduct; and 
(d) that conduct is an infringeolent of the existing registered mark under 
this Act. 40 Trade Marks No. 119, 1995 IP/N/lIAUS/T/1 
Page 129 
(2) In spite of section 120, the person does not infringe the existing 
registered mark by engaging in that conduct. 
Note: For existing registered mark see section 6. 
Application of this Act-general 
5 255.(1) If: 
(a) an action or proceeding validly brought for the purposes of the 
repealed Act was still pending immediately before 1 January 1996; 
and 
(b) that action or proceeding could have been brought under this Act if 
10 this Act had been in force when the action or proceeding was started; 
then, except as otherwise provided by this Division or the regulations, this 
Act applies in relation to the action or proceeding as if it were an action or 
proceeding validly brought on 1 January 1996 under the relevant provision 
of this Act. 
15 (2) Anything done under the repealed Act for the purposes of the action 
or proceeding is taken to have been done: 
(a) on 1 January 1996; and 
(b) in accordance with this Act. 
Fees 
20 256. No fee is payable under this Act in relation to an act that was done 
under the repealed Act and is taken, under this Division, to be an act done 
under this Act. IP/NIlIAUS/TI 1 
Page 130 
Trade Marks No. 119, 1995 
Division 4-General 
The Registrar and Deputy Registrar 
257. Persons holding office as Registrar of Trade Marks and Deputy 
Registrar of Trade Marks immediately before 1 January 1996 continue to 
hold those respective offices on and after that day. 5 
Confidential information received by Registrar under section 74 of 
the repealed Act 
258. If, immediately before 1 January 1996, the Registrar was required 
under subsection 74(7) of the repealed Act to ensure that any document, 
information or evidence given for the purpose of an application for the 10 
registration of a person as a registered user of a trade mark was not disclosed 
to any other person, the Registrar must continue to ensure that the document, 
information or evidence is not so disclosed except by order of a prescribed 
court. 
Note: For prescribed court see section 190. 15 
Documents kept under repealed Act 
259. The Registrar is to continue to keep in accordance \vith this Act all 
documents that, immediately before 1 January 1996, were kept by the 
Registrar under the repealed Act. 
Address for service 20 
260.(1) If, immediately before 1 January 1996, the address for service 
of an applicant for the registration of a trade mark, or of an opponent to the 
registration, under subsection 132(1) or (2) of the repealed Act (existing 
address) was an address in Australia, that address remains the address for 
service of the applicant or opponent for the purposes of this Act until he or 25 
she notifies another address to the Registrar under section 215. 
Note: For applicant and opponent see section 6. 
(2) If the existing address of an applicant for the registration of a trade 
mark or of an opponent to the registration is not an address in Australia, the 
applicant or opponent must give in writing to the Registrar an address in 30 
Australia as his or her address for service. 
(3) If, immediately before 1 January 1996, the proprietor of an existing 
registered mark had an agent in Australia for the purposes of subsection 
70( 1) of the repealed Act, the address of that agent is the address for service 
of the registered owner of the mark for the purposes of this Act until the 35 
registered owner notifies another address to the Registrar under section 215. 
Note: For existing registered mark see section 6. 
(4) If: 
(a) imlnediately before 1 January 1996, the proprietor of an existing 
registered mark did not have an agent in Australia for the purposes 40 
of subsection 70( 1) of the repealed Act; and Trade Marks No. 119, 1995 IP/N/lIAUS/T/1 
Page 131 
(b) the address then entered in the old register as the address of the 
proprietor was an address in Australia; 
that address is the address for service of the registered owner of the mark for 
the purposes of this Act until the registered owner notifies another address 
5 to the Registrar under section 215. 
Note: For existing rtgisttred mark and old register see section 6. 
(5) If: 
(a) immediately before 1 January 1996, the proprietor of an existing 
registered mark did not have an agent in Australia for the purposes 
10 of subsection 70(1) of the repealed Act; and 
(b) the address then entered in the old register as the address of the 
proprietor was not an address in Australia; 
that address is not to be used as the address for service of the registered owner 
of the mark, and the registered owner must give in writing to the Registrar 
15 an address in Australia as his or her address for service. 
Note: For existing registered mark and old register see section 6. 
Notices to Comptroller objecting to importation of goods 
261.(1) If a notice under paragraph l03(3)(b) of the repealed Act 
objecting to the importation of goods infringing a registered trade mark had 
20 not been revoked before 1 January 1996, then, subject to subsection (2), the 
notice continues to have effect for the purposes of Part 13 of this Act as if 
it were a notice given under section 132 of this Act. 
(2) The notice ceases to have effect: 
(a) if the Comptroller is given a notice under section 132 objecting to 
25 any inlportation of goods infringing the trade mark; or 
(b) at the end of 3 months from 1 January 1996; 
whichever first occurs. 
[Minister s second reading speech made in­
Senate on 30 March 1995 
House of Representatives on 27 September 1995] 
Printed hy Authority hy the COlTlmonwealth Governmenl Printrr (49/9~ ) 