Trade Marks Act 1995 (Cth)

Trade Marks Act 1995

No. 119, 1995

Compilation No. 47

Compilation date: 14 October 2024

Includes amendments: Act No. 39, 2024

About this compilation

This compilation

This is a compilation of the Trade Marks Act 1995 that shows the text of the law as amended and in force on 14 October 2024 (the compilation date).

The notes at the end of this compilation (the endnotes) include information about amending laws and the amendment history of provisions of the compiled law.

Uncommenced amendments

The effect of uncommenced amendments is not shown in the text of the compiled law. Any uncommenced amendments affecting the law are accessible on the Register (www.legislation.gov.au). The details of amendments made up to, but not commenced at, the compilation date are underlined in the endnotes. For more information on any uncommenced amendments, see the Register for the compiled law.

Application, saving and transitional provisions for provisions and amendments

If the operation of a provision or amendment of the compiled law is affected by an application, saving or transitional provision that is not included in this compilation, details are included in the endnotes.

Editorial changes

For more information about any editorial changes made in this compilation, see the endnotes.

Modifications

If the compiled law is modified by another law, the compiled law operates as modified but the modification does not amend the text of the law. Accordingly, this compilation does not show the text of the compiled law as modified. For more information on any modifications, see the Register for the compiled law.

Self‑repealing provisions

If a provision of the compiled law has been repealed in accordance with a provision of the law, details are included in the endnotes.

Contents Part 1—Preliminary 1 Short title 2 Commencement 3 Act binds the Crown 4 Application of Act 4A Application of the Criminal Code 5 Repeal of Trade Marks Act 1994 Part 2—Interpretation 6 Definitions 6A Periods expressed in months 7 Use of trade mark 8 Definitions of authorised user and authorised use 9 Definition of applied to and applied in relation to 10 Definition of deceptively similar 11 Definition of pending 12 Definition of priority date 13 Definition of remove from the Register 14 Definition of similar goods and similar services 15 Definition of originate in relation to wine 16 Definition of repealed Act Part 3—Trade marks and trade mark rights 17 What is a trade mark? 18 Certain signs not to be used as trade marks etc. 19 Certain trade marks may be registered 20 Rights given by registration of trade mark 21 Nature of registered trade mark as property 22 Power of registered owner to deal with trade mark 23 Limitation on rights if similar trade marks etc. registered by different persons 24 Trade mark consisting of sign that becomes accepted as sign describing article etc. 25 Trade mark relating to article etc. formerly manufactured under patent 26 Powers of authorised user of registered trade mark Part 4—Application for registration Division 1—General 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 Notification of decision 35 Appeal 36 Deferment of acceptance 37 Lapsing of application if not accepted in time 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 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 Division 3—Divisional applications 45 Divisional applications 46 Rules relating to divisional applications Division 4—Application for registration of series of trade marks 51 Application—series of trade marks 51A Linking series applications Part 5—Opposition to registration Division 1—General 52 Opposition 52A Notice of intention to defend opposition to registration 53 Circumstances in which opposition may proceed in name of a person other than the person who filed the notice 54 Opposition proceedings 54A Lapsing of opposed application if no notice to defend the application filed 55 Decision 56 Appeal Division 2—Grounds for opposing registration 57 Registration may be opposed on same grounds as for rejection 58 Applicant not owner of trade mark 58A Opponent's earlier use of similar trade mark 59 Applicant not intending to 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. 62A Application made in bad faith Part 6—Amendment 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—request for amendment not published 65A Amendment after particulars of application have been published—request for amendment published 66 Amendment of other documents 66A Registrar may require certain requests to be in writing 67 Appeal Part 7—Registration of trade marks Division 1—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 registration 73 Ceasing of registration 74 Disclaimers Division 2—Renewal of registration (general) 74A Application of this Division 75 Request for renewal 76 Notice of renewal due 77 Renewal before registration expires 78 Failure to renew 79 Renewal within 6 months after registration expires 80 Status of unrenewed trade mark Division 3—Renewal of registration (registration delayed for 10 or more years after filing date) 80A Application of this Division 80B Expiry of registration 80C Notification about renewal 80D Request for renewal 80E Renewal within prescribed period 80F Failure to renew 80G Renewal within 6 months after end of prescribed period 80H Status of unrenewed trade mark Part 8—Amendment, cancellation and revocation of registration Division 1—Action by Registrar Subdivision A—Amending Register 81 Correction of Register 82 Adaptation of classification 82A Linking series registrations 83 Amendment of particulars of trade mark entered in Register 83A Amendment of registered trade mark—inconsistency with international agreements Subdivision B—Cancelling registration 84 Cancellation of registration Subdivision C—Revoking registration 84A Registration may be revoked 84B Registration must be revoked if opposition was ignored in registration process 84C Effect of revocation of registration 84D Appeal from revocation of registration Division 2—Action 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 88A Applications by Registrar 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 Part 9—Removal of trade mark from Register for non‑use 92 Application for removal of trade mark from Register etc. 93 Time for making application 94 Referral to court 95 Notification of application 96 Notice of opposition 96A Circumstances in which opposition may proceed in name of a person other than the person who filed the notice 97 Removal of trade mark from the Register etc. if application unopposed etc. 98 Trade mark restored to Register in certain circumstances 99 Proceedings before Registrar 99A Dismissal of opposition filed with Registrar 100 Burden on opponent to establish use of trade mark etc. 101 Determination of opposed application—general 102 Determination of opposed application—localised use of trade mark 103 Registrar to comply with order of court 104 Appeal 105 Certificate—use of trade mark Part 10—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 assignment etc. of registered trade mark to be entered in Register 110 Recording of assignment etc. of registered trade mark 111 Notification of application to be given to person recorded as claiming interest in trade mark etc. Part 11—Voluntary recording of claims to interests in and rights in respect of trade marks Division 1—Preliminary 112 Object of Part Division 2—Interests in, and rights in respect of, registered trade marks 113 Application for registration of interest or right in trade mark 114 Record of claims to interest etc. 115 Amendment and cancellation 116 Record not proof etc. of existence of right etc. Division 3—Interests in, and rights in respect of, unregistered trade marks 117 Application for recording of interest or right in trade mark 118 Record of claims to interest etc. 119 Amendment and cancellation Part 12—Infringement of trade marks 120 When is a registered trade mark infringed? 121 Infringement of trade mark by breach of certain restrictions 122 When is a trade mark not infringed? 122A Exhaustion of a registered trade mark in relation to goods 123 Services to which registered trade mark has been applied by or with consent of registered owner 124 Prior use of identical trade mark etc. 125 What courts may hear action for infringement of registered trade mark 126 What relief can be obtained from court 127 Special case—plaintiff not entitled to damages etc. 128 Circumstances in which action may not be brought 129 Application for relief from unjustified threats 130 Counterclaim for infringement 130A Mere notification of registered trade mark not a threat Part 13—Importation of goods infringing Australian trade marks 131 Object of Part 132 Notice of objection to importation 133 Comptroller‑General of Customs may seize goods infringing trade mark 133A Determinations about owners of goods 134 Notice of seizure 134A Inspection, release etc. of seized goods 135 Consent to forfeiture of seized goods 136 Claim for release of seized goods 136A Seized goods not claimed are forfeited 136B Late claim for release of seized goods 136C Objector to be notified of claim 136D Release of seized goods 136E Goods released but not collected are forfeited 137 Action for infringement of trade mark 138 Action for infringement by authorised user 139 Disposal of seized goods forfeited to the Commonwealth 140 Power of Comptroller‑General of Customs to retain control of goods 141 Insufficient security 141A Failure to comply with undertaking etc. 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 or removing a registered trade mark 146 Falsely applying a registered trade mark 147 Making a die etc. for use in trade marks offence 147A Drawing etc. trade marks for use in offence 147B Possessing or disposing of things for use in trade marks offence 148 Goods with false trade marks 150 Aiding and abetting offences 151 False representations regarding trade marks 152 False entries in Register etc. 153 Disobeying summons etc. 154 Refusing to give evidence etc. 156 Acting or holding out without being registered 157 False representation about Trade Marks Office 157A Incorporated trade marks attorney must have a trade marks attorney director 159 Forfeiture orders under the proceeds of crime legislation 160 Conduct of employees and agents of natural persons Part 15—Collective trade marks 161 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 send documents to Commission 175 Certificate by Commission 176 Acceptance or rejection 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 Registrar must publish rules 180 Assignment of registered certification trade mark 180A Assignment of unregistered certification trade mark 181 Rectification 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 189 Cancellation of registration by Registrar Part 17A—Protected international trade marks under the Madrid Protocol 189A Regulations implementing the Madrid Protocol Part 18—Jurisdiction and powers of courts 190 Prescribed courts 191 Jurisdiction of the Federal Court 191A Jurisdiction of the Federal Circuit and Family Court of Australia (Division 2) 192 Jurisdiction of other prescribed courts 193 Exercise of jurisdiction 194 Transfer of proceedings 195 Appeals 196 Registrar may appear in appeals 197 Powers of Federal Court and Federal Circuit and Family Court of Australia (Division 2) on hearing an appeal 198 Practice and procedure of prescribed courts Part 19—Administration 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 to 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 21—Miscellaneous Division 1—Applications and other documents 212 Making and signing applications etc. 213 Filing of documents 213A Approved means of filing documents 213B Directions by Registrar for filing of documents 213C Directions by Registrar for filing of evidence 214 Withdrawal of application etc. 214A Notifications by Registrar under this Act 215 Address for service 216 Change of name 217 Death of applicant etc. 217A Prescribed documents relating to trade marks to be made available for public inspection Division 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 2A—Computerised decision‑making 222A Computerised decision‑making Division 3—General 223 Fees 223AA Approved means of paying a fee 223A Doing act when Trade Marks Office reopens after end of period otherwise provided for doing act 224 Extension of time 225 Convention countries 226 Preparation etc. of documents relating to trade marks 226A Requirements for confidential treatment of information held in the Trade Marks Office 226B Certain proceedings do not lie 227 Notice regarding review of decision by Administrative Review Tribunal 228 Use of trade mark for export trade 228A Registration of trade marks attorneys 228B Deregistration of trade marks attorneys 229 Privileges of trade marks attorney and patent attorney 229AA Designated Manager may disclose information to Board 229A Designated Manager may disclose information to ASIC 229B Publishing personal information of registered trade marks attorneys 230 Passing off actions 231 Regulations 231A Regulations may make provision in relation to the Public Health (Tobacco and Other Products) Act 2023 Part 22—Repeal and transitional Division 1—Repeal 232 Repeal 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 239A Linked trade marks 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 application 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 existing registered mark 254A Acts not constituting infringement of trade mark—pending application under the repealed Act 254B Part B defence—infringement of existing registered mark 254C Part B defence—infringement of trade mark (pending application under the repealed Act) 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 Endnotes Endnote 1—About the endnotes Endnote 2—Abbreviation key Endnote 3—Legislation history Endnote 4—Amendment history