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Trade Marks Act 1995
In force
Administered by
Department of Industry, Science and Resources
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C2024C00101 C44
20 March 2024
-
31 March 2024
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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
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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16 Definition of repealed Act
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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
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Part 4—Application for registration
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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
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Part 5—Opposition to registration
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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
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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
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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 advertised
65A Amendment after particulars of application have been published—request for amendment advertised
66 Amendment of other documents
66A Registrar may require certain requests to be in writing
67 Appeal
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Part 7—Registration of trade marks
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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
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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
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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 10 months after end of prescribed period
80H Status of unrenewed trade mark
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Part 8—Amendment, cancellation and revocation of registration
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Division 1—Action by Registrar
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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
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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 if notice of opposition filed within extended time
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
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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.
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Part 11—Voluntary recording of claims to interests in and rights in respect of trade marks
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Division 1—Preliminary
112 Object of Part
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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.
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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
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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
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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.
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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
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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
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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
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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
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Part 17A—Protected international trade marks under the Madrid Protocol
189A Regulations implementing the Madrid Protocol
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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
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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
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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
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Part 21—Miscellaneous
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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
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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
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Division 2A—Computerised decision making
222A Computerised decision making
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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 Publication of Official Journal etc.
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 Appeals 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 Tobacco Plain Packaging Act 2011
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Part 22—Repeal and transitional
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Division 1—Repeal
232 Repeal
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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
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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
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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
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Endnotes
Endnote 1—About the endnotes
Endnote 2—Abbreviation key
Endnote 3—Legislation history
Endnote 4—Amendment history
