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93, 1966 29 Oct 1966 1 Dec 1966 -
Statute Law Revision Act 1973
216, 1973 19 Dec 1973 31 Dec 1973 Ss. 9
10
Administrative Changes (Consequential Provisions) Act 1976
91, 1976 20 Sept 1976 S. 3: (a) S. 4
Trade Marks Amendment Act 1976
163, 1976 9 Dec 1976 Ss. 3, 4, 7 and 10: Ss. 9
1 Feb 1977 (see Gazette 10 (2)
1977, No. S3, p. 3)
Remainder: Royal Assent
Trade Marks Amendment Act 1978
130, 1978 31 Oct 1978 1 Feb 1979 (see Gazette -
1979, No. S14)
Jurisdiction of Courts (Miscellaneous Amendments) Act 1979
19, 1979 28 Mar 1979 Parts II-XVII S. 124
(ss. 3-123): 15 May 1979
(see Gazette 1979,
No. S86)
Remainder: Royal Assent
Trade Marks Amendment Act 1981
43, 1981 13 May 1981 22 June 1981 (see Ss. 5
Gazette 1981, No. G24, and 10
p. 2)
Statute Law Revision Act 1981
61, 1981 12 June 1981 Part XXII (ss. 103, -
104): 1 Feb 1977 (b)
Statute Law (Miscellaneous Amendments) Act (No. 2) 1982
80, 1982 22 Sept 1982 Part LXXVII (s. 280): S. 280
Royal Assent (c) and (3
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Statute Law (Miscellaneous Provisions) Act (No. 1) 1984
72, 1984 25 June 1984 S. 3: 23 July 1984 (d) -
Statute Law (Miscellaneous Provisions) Act (No. 1) 1985
65, 1985 5 June 1985 S. 3: 3 July 1985 (e) -
Statute Law (Miscellaneous Provisions) Act (No. 2) 1985
193, 1985 16 Dec 1985 S. 3: Royal Assent (f) Ss. 14
Jurisdiction of Courts (Miscellaneous Amendments) Act 1987
23, 1987 26 May 1987 S. 3: (g) S. 5
Industry, Technology and Commerce Legislation Amendment Act 1989
91, 1989 27 June 1989 S. 15: 14 Dec 1988 S. 27
Part 4 (ss. 20-25):
30 Nov 1989 (see
Gazette 1989, No. S371)
Part 5 (ss. 26, 27):
1 Aug 1989 (see Gazette
1989, No. S262)
Remainder: Royal Assent
Industry, Technology and Commerce Legislation Amendment Act (No. 2)
10, 1990 17 Jan 1990 Ss. 40 and 43-49: S. 42
14 Feb 1990 (h) S. 2 (
Ss. 41 and 42: 30 Apr (am. b
1991 (h) 1992,
as amended by
Patents Act 1990
83, 1990 30 Oct 1990 30 Apr 1991 -
Patents Act 1990
83, 1990 30 Oct 1990 30 Apr 1991 -
Industry, Technology and Commerce Legislation Amendment Act 1992
168, 1992 11 Dec 1992 Part V (ss. 14, 15): -
30 July 1975
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Remainder: Royal Assent
Industry, Technology and Regional Development Legislation Amendment
1994
58, 1994 9 Apr 1994 29 June 1994 (see S. 4 (
Gazette 1994 No. S211)
(a) The Trade Marks Act 1955 was amended by section 3 only of the
Administrative Changes (Consequential Provisions) Act 1976, subsection
of which provides as follows:
"(7) The amendments of each other Act specified in the Schedule made
Act shall be deemed to have come into operation on 22 December 1975."
(b) The Trade Marks Act 1955 was amended by Part XXII (sections 103 a
only of the Statute Law Revision Act 1981, subsection 2 (9) of which pr
as follows:
"(9) Part XXII shall be deemed to have come into operation on 1 Febru
1977."
(c) The Trade Marks Act 1955 was amended by Part LXXVII (section 280)
of the Statute Law (Miscellaneous Amendments) Act (No. 2) 1982, subsect
(1) of which provides as follows:
"(1) Sections 1, 2, 166 and 195 and Parts III, VI, VII, XVI, XXXVI, X
LI, LIII, LIV, LXI and LXXVII shall come into operation on the day on w
this Act receives the Royal Assent."
(d) The Trade Marks Act 1955 was amended by section 3 only of the Sta
Law (Miscellaneous Provisions) Act (No. 1) 1984, subsection 2 (1) of wh
provides as follows:
"(1) Subject to this section, this Act shall come into operation on t
twenty-eighth day after the day on which it receives the Royal Assent."
(e) The Trade Marks Act 1955 was amended by section 3 only of the Sta
Law (Miscellaneous Provisions) Act (No. 1) 1985, subsection 2 (1) of wh
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provides as follows:
"(1) Subject to this section, this Act shall come into operation on t
twenty-eighth day after the day on which it receives the Royal Assent."
(f) The Trade Marks Act 1955 was amended by section 3 only of the Sta
Law (Miscellaneous Provisions) Act (No. 2) 1985, subsection 2 (1) of wh
provides as follows:
"(1) Subject to this section, this Act shall come into operation on t
on which it receives the Royal Assent."
(g) The Trade Marks Act 1955 was amended by section 3 only of the
Jurisdiction of Courts (Miscellaneous Amendments) Act 1987, subsection
of which provides as follows:
"(2) The amendments made by this Act to an Act specified in the Sched
shall come into operation on such day as is fixed by Proclamation in re
to those amendments."
The date fixed in pursuance of subsection 2 (2) was 1 September 1987
Gazette 1987, No. S217).
(h) The Trade Marks Act 1955 was amended by sections 40-49 only of th
Industry, Technology and Commerce Legislation Amendment Act (No. 2) 198
subsections 2 (3) and (7) of which provide as follows:
"(3) Subsection 15 (1), sections 18, 41 and 42, and Part 6, commence
same day as the Patents Act 1990.
"(7) The remaining provisions of this Act commence 28 days after this
receives the Royal Assent."
Table of Amendments
ad=added or inserted am=amended rep=repealed rs=repealed and substi
Provision affected How affected
S. 3 rep. No. 216, 1973
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Ss. 4, 5 am. No. 163, 1976
S. 6 am. No. 216, 1973; No. 163, 1976; No.
1978; No. 193, 1985; No. 23, 1987; No
and 83, 1990
S. 6A ad. No. 163, 1976
am. No. 43, 1981
S. 8 rs. No. 163, 1976
S. 10 am. No. 42, 1958; Nos. 91 and 163, 19
No. 91, 1989; No. 10, 1990; No. 58, 1
S. 11 rs. No. 91, 1989; No. 58, 1994
S. 14 am. No. 163, 1976
S. 14A ad. No. 10, 1990
Ss. 16, 17 am. No. 10, 1990
S. 18 am. No. 163, 1976; No. 65, 1985
Ss. 19, 20 am. No. 163, 1976; No. 130, 1978; No.
1987
S. 21 am. No. 163, 1976; No. 23, 1987
S. 22 am. No. 163, 1976
S. 23 am. No. 163, 1976; No. 130, 1978; No.
1987
Ss. 24, 25 am. No. 130, 1978
S. 26 am. No. 163, 1976; No. 130, 1978; No.
1987
S. 27 am. No. 163, 1976
S. 29 am. No. 216, 1973
S. 30 am. No. 163, 1976; No. 23, 1987
S. 31 am. No. 130, 1978
S. 32 am. No. 163, 1976
S. 33 am. No. 130, 1978
Ss. 34, 35 am. No. 163, 1976; No. 130, 1978
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S. 36 am. No. 163, 1976; No. 130, 1978; No.
1984; No. 23, 1987
S. 38 am. No. 163, 1976
Ss. 39, 40 am. No. 163, 1976; No. 130, 1978
S. 40A ad. No. 10, 1990
S. 42 am. No. 163, 1976; No. 23, 1987
S. 43 am. No. 163, 1976; No. 130, 1978; No.
1987
S. 45 am. No. 163, 1976; No. 130, 1978
S. 46 am. No. 163, 1976; No. 23, 1987
S. 48 am. No. 163, 1976; No. 19, 1979
S. 49 am. No. 163, 1976
S. 51 am. No. 163, 1976; No. 23, 1987
S. 54 am. No. 163, 1976; No. 19, 1979; No.
1987
S. 55 am. No. 163, 1976
S. 56 am. No. 163, 1976; No. 130, 1978
S. 58 am. No. 163, 1976; No. 130, 1978
S. 59 am. No. 163, 1976
Ss. 60, 61 am. No. 163, 1976; No. 130, 1978
S. 62 am. No. 130, 1978
S. 64 am. No. 163, 1976; No. 130, 1978
S. 67 am. No. 163, 1976
rs. No. 43, 1981
S. 68 am. No. 130, 1978
Ss. 69-72 am. No. 163, 1976
Ss. 74, 75 am. No. 163, 1976; No. 130, 1978
S. 76 am. No. 130, 1978
S. 77 am. No. 163, 1976; No. 130, 1978
S. 78 am. No. 163, 1976
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S. 81 am. No. 163, 1976; No. 23, 1987
S. 82 am. No. 163, 1976; No. 130, 1978
Ss. 83-85 am. No. 130, 1978
S. 86 am. No. 163, 1976; No. 130, 1978; No.
1981; No. 23, 1987
S. 88 am. No. 163, 1976; No. 130, 1978
S. 90 am. No. 163, 1976
S. 92 am. No. 163, 1976
Ss. 93, 94 am. No. 163, 1976; No. 130, 1978
S. 98 am. No. 163, 1976; No. 130, 1978; No.
1985; No. 168, 1992
Ss. 99, 100 am. No. 93, 1966; No. 163, 1976; No.
1985
rs. No. 168, 1992
S. 101 am. No. 163, 1976
rep. No. 168, 1992
TRADE MARKS ACT 1955 - TABLE OF PROVISIONS
TABLE OF PROVISIONS
Section
PART I - PRELIMINARY
1. Short title
2. Commencement
4. Repeal
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5. Application of Act
6. Interpretation
6A. References to prescribed courts
7. Crown to be bound
8. Application of Act to Norfolk Island
9. No new application to be made under State Acts
PART II - ADMINISTRATION
10. Registrar and other officers
11. Delegation by Registrar
12. Trade Marks Office and sub-offices
13. Seal of Trade Marks Office
PART III - THE REGISTER OF TRADE MARKS
14. Register of Trade Marks
14A. Register may be kept wholly or partly by computer
15. Trusts not to be noticed
16. Inspection of Register
17. Register and certified copies to be evidence
18. False entries in Register
19. Correction of Register
20. Registration of assignment
21. Alteration of registered trade mark
22. Rectification of Register
23. Provisions as to non-use of trade mark
PART IV - REGISTRABLE TRADE MARKS
24. Registrable trade marks - Part A
25. Registrable trade marks - Part B
26. Distinctiveness
27. Trade marks in colour
28. Scandalous and improper marks
29. Registration may be refused of certain words etc. in trade ma
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30. Names etc. of living persons
31. Trade marks to be registered for particular goods or services
32. Disclaimers
33. Identical marks
34. Concurrent use
35. Jointly owned trade marks
36. Association of trade marks
37. Assignment of associated trade marks
38. Use of trade marks whether associated or otherwise
39. Series of trade marks
PART V - APPLICATIONS FOR REGISTRATION
40. Application for registration
40A. Withdrawal of application
41. Applications to be examined
42. Action on Examiner's report
43. Division of application
44. Acceptance of application
45. Application may be accepted where trade mark is to be used by
assignee or registered user
46. Appeals
47. Advertisement of acceptance
48. Limit of time for proceeding with application
PART VI - OPPOSITION TO REGISTRATION
49. Notice of opposition
50. Hearing of opposition
51. Appeal to a prescribed court
52. Security for costs
PART VII - REGISTRATION AND EFFECT OF REGISTRATION
53. Registration of trade mark
54. Time for registration
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55. Duration of registration
56. Words used as name or description of an article or substance
57. Powers of registered proprietor
58. Rights given by registration
59. Registration evidence of validity
60. Limitation on removal of trade mark after 3 years
61. Registration conclusive after 7 years
62. Infringement of trade marks
63. Infringement of trade mark by breach of certain restrictions
64. Acts not constituting infringement
65. Relief in infringement actions
66. Evidence of trade usage
67. Action or proceeding may be instituted in prescribed court
68. Passing off actions
PART VIII - RENEWAL OF REGISTRATION
69. Renewal of registration
70. Procedure on expiry of period of registration
71. Restoration of trade mark removed for non-payment of renewal
72. Status of un-renewed trade mark
PART IX - REGISTERED USERS
73. Application of Part
74. Registered users
75. Variation etc. of registration
76. Cancellation of registration
77. Effect of permitted user
78. Infringement proceedings
79. Rights of registered user not assignable
80. Hearing by Registrar
81. Appeals
PART X - ASSIGNMENT OF TRADE MARKS
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82. Assignment and transmission of trade marks
PART XI - CERTIFICATION TRADE MARKS
83. Certification trade marks
84. Rights given by registration
85. Rules governing the use of certification trade marks
86. Matters to be considered before acceptance
87. Alteration of rules
88. Rectification of Register
89. Certification trade marks not assignable
90. Transitional provisions
91. Rules to be open for inspection
92. Application of Act to certification trade mark
PART XII - DEFENSIVE TRADE MARKS
93. Defensive registration of well-known trade marks
94. Rectification of Register
95. Cancellation by Registrar
96. Rights given by registration
97. Application of Act
PART XIII - PROTECTION OF TRADE MARKS
98. Forgery etc. of trade marks
99. Selling etc. goods with false marks
100. Importing goods with false marks
102. Aiding and abetting offences
103. Importation of goods infringing Australian trade marks
104. Power to require information in respect of imported goods
bearing fraudulent marks
105. Modification in relation to Territories
106. What taken to be forgery of trade mark
107. When trade mark deemed applied
107A. Forfeiture orders under the Proceeds of Crime Act 1987
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PART XIV - INTERNATIONAL ARRANGEMENTS
108. Convention countries
109. Applications under International Conventions
110. Manner of application under this Part
PART XV - JURISDICTION AND POWERS OF COURTS
111. Interpretation
112. Jurisdiction of prescribed courts
113. Transfer of proceedings
114. Appeals from prescribed courts
115. Intervention by Registrar
115A. Powers of prescribed courts
PART XVA - APPLICATION FOR REVIEW OF CERTAIN DECISIONS BY
ADMINISTRATIVE APPEALS TRIBUNAL
116. Application for review
PART XVI - MISCELLANEOUS
117. Use of trade mark for export trade
118. Trade mark not to be deemed to be deceptive or confusing in
certain cases
118A. Subsections 99 (1) and 100 (1) may be dealt with summarily
in certain circumstances
119. Powers of Registrar
120. Disobedience to summons an offence
121. Refusal to give evidence an offence
122. Recovery of costs
123. Certificate of validity
124. Groundless threats of legal proceedings
125. Counter-claim by defendant for infringement
126. Description of trade marks in pleadings
127. Power of amendment
128. Exercise of discretionary power by Registrar
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129. Fees
130. Extension of time
131. Power to extend times by reason of errors in Trade Marks
Office etc.
132. Address for service
133. Declaration by disabled person
134. Death of party to a proceeding
135. Unauthorised persons not to act in trade mark matters
136. Privileges of patent attorneys
137. Unregistered persons not to describe themselves as trade mark
agents
139. Adaptation of classification
140. Making and signing of applications
141. Examiners' reports to be communicated
142. Security for costs
143. Costs of attendance of patent attorney
144. Service of orders on appeal
145. Improperly describing an office as the Trade Marks Office
146. Falsely representing a trade mark as registered an offence
147. Regulations
THE SCHEDULE
Repeal of Acts
TRADE MARKS ACT 1955 - LONG TITLE
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An Act relating to Trade Marks
TRADE MARKS ACT 1955 - PART I PART I - PRELIMINARY
TRADE MARKS ACT 1955 - SECT 1 Short title
1. This Act may be cited as the Trade Marks Act 1955.*1*
SEE NOTES TO FIRST ARTICLE OF THIS CHAPTER .
TRADE MARKS ACT 1955 - SECT 2 Commencement
2. This Act shall come into operation on a date to be fixed by
Proclamation.*1*
SEE NOTES TO FIRST ARTICLE OF THIS CHAPTER .
TRADE MARKS ACT 1955 - SECT 4
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Repeal
4. The Acts specified in the first column of the Schedule are repeale
the extent respectively specified in the second column of that Schedule
TRADE MARKS ACT 1955 - SECT 5 Application of Act
5. (1) This Act applies to and in relation to applications for the
registration of trade marks made after the commencement of this Act and
in relation to trade marks registered on those applications.
(2) Subject to section 90, this Act also applies to and in relation t
marks registered under the repealed Acts and those trade marks shall, s
to the next succeeding subsection, be deemed to be registered in Part A
Register.
(3) The Registrar may, on the application of the registered proprieto
trade mark referred to in the last preceding subsection, transfer the t
mark from Part A to Part B of the Register.
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(4) Subject to section 90, the repealed Acts apply, notwithstanding t
repeal, to and in relation to applications for the registration of trad
made before the commencement of this Act and to and in relation to the
registration of trade marks on those applications, but this Act applies
in relation to trade marks so registered and those trade marks shall, s
to the next succeeding subsection, be deemed to be registered in Part A
Register.
(5) Before the acceptance of an application for the registration of a
mark made before the commencement of this Act, the Registrar may, upon
request of the applicant, treat the application as an application for
registration in Part B of the Register and deal with the application
accordingly.
(6) The repealed Acts apply, notwithstanding their repeal, to and in
relation to applications for the registration of a person as the regist
user of a trade mark made before the commencement of this Act and to an
relation to the registration of persons as registered users on those
applications, but this Act applies to and in relation to persons so
registered.
TRADE MARKS ACT 1955 - SECT 6 Interpretation
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6. (1) In this Act, unless the contrary intention appears:
"assignment" means assignment by act of the parties concerned;
"Australia" includes Norfolk Island;
"Convention country" means a country in respect of which there is in
for the time being a regulation under section 108 declaring that countr
a Convention country for the purposes of this Act;
"Deputy Registrar" means a Deputy Registrar of Trade Marks;
"Federal Court" means the Federal Court of Australia;
"legal practitioner" means a barrister or solicitor of the High Court
the Supreme Court of a State or Territory;
"limitations" means limitations of the right to the exclusive use of
mark given by the registration of the trade mark, including limitations
that right as to:
(a) mode of use;
(b) use within a territorial area within Australia; or
(c) use in relation to goods to be exported to a market outside Austr
"mark" includes a device, brand, heading, label, ticket, name, signat
word, letter or numeral, or any combination thereof;
"Official Journal" has the same meaning as in the Patents Act 1990;
"permitted use", in relation to a registered trade mark, means the us
the trade mark:
(a) by a registered user of the trade mark in relation to goods or
services:
(i) with which he is connected in the course of trade;
(ii) in respect of which the trade mark remains registered; and
(iii) for which he is registered as a registered user; and
(b) which complies with any conditions or restrictions to which his
registration is subject;
"person" includes a body politic and a body of persons, whether corpo
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unincorporate;
"prescribed court" means the Federal Court, the Supreme Court of a St
the Supreme Court of the Australian Capital Territory, the Supreme Cour
the Northern Territory of Australia or the Supreme Court of Norfolk Isl
"registered proprietor", in relation to a trade mark, means the perso
the time being entered in the Register as proprietor of the trade mark;
"registered trade mark" means a trade mark which is registered under
Act;
"registered user" means a person who is registered as such under sect
74;
"the expiration of the last registration", in relation to a registere
mark, means the date of the expiration of the original registration of
trade mark or of the last renewal of registration, as the case may be;
"the Register" means the Register of Trade Marks under this Act;
"the Registrar" means the Registrar of Trade Marks holding office und
Act;
"the repealed Acts" means the Acts repealed by this Act;
"this Act" includes the regulations;
"trade mark" means:
(a) except in relation to Part XI, a mark used or proposed to be used
relation to goods or services for the purpose of indicating, or so as t
indicate, a connexion in the course of trade between the goods or servi
a person who has the right, either as proprietor or as registered user,
the mark, whether with or without an indication of the identity of that
person; and
(b) in relation to Part XI, a mark registrable, or registered, in Par
the Register;
"transmission" means transmission by operation of law, devolution on
personal representative of a deceased person and any other mode of tran
not being assignment;
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"word" includes an abbreviation of a word.
(2) In this Act:
(a) references to the use of a mark shall be construed as references
use of a printed or other visual representation of the mark; and
(b) references to the use of a mark in relation to goods shall be con
as references to the use of the mark upon, or in physical or other rela
to, goods.
(3) For the purposes of this Act, a trade mark shall be deemed to be
deceptively similar to another trade mark if it so nearly resembles tha
trade mark as to be likely to deceive or cause confusion.
TRADE MARKS ACT 1955 - SECT 6A References to prescribed courts
6A. A reference in this Act to a prescribed court shall be read:
(a) in relation to the institution of an appeal or other proceeding,
reference to a prescribed court having jurisdiction with respect to mat
arising under this Act in respect of which the appeal or other proceedi
instituted; and
(b) in relation to the exercise of jurisdiction, as a reference to a
prescribed court exercising jurisdiction in accordance with section 112
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TRADE MARKS ACT 1955 - SECT 7 Crown to be bound
7. This Act binds the Crown in right of the Commonwealth and of the s
States.
TRADE MARKS ACT 1955 - SECT 8 Application of Act to Norfolk Island
8. (1) This Act extends to Norfolk Island.
(2) An application for registration of a trade mark is not receivable
a law (other than this Act) in force in Norfolk Island.
TRADE MARKS ACT 1955 - SECT 9 No new application to be made under State Acts
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9. An application for the registration of a trade mark under a State
relating to the registration of trade marks is not receivable.
TRADE MARKS ACT 1955 - PART II PART II - ADMINISTRATION
TRADE MARKS ACT 1955 - SECT 10 Registrar and other officers
10. (1) There is to be a Registrar of Trade Marks.
(1A) The Registrar has such powers and functions as are conferred on
her under this Act or any other Act.
(3) There is to be at least one Deputy Registrar of Trade Marks.
(3A) Subject to any direction by the Registrar, a Deputy Registrar ha
the powers and functions of the Registrar under this Act or any other A
except the Registrar's powers of delegation under section 11.
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(3B) A power or function of the Registrar under this Act or any other
when exercised or performed by a Deputy Registrar, shall, for the purpo
this Act or any other Act, be taken to have been exercised or performed
Registrar.
(3C) The exercise of a power, or the performance of a function, of th
Registrar under this Act or any other Act by a Deputy Registrar does no
prevent the exercise of the power, or the performance of the function,
Registrar.
(4) Where, under this Act or any other Act, the exercise of a power o
function by the Registrar, or the operation of a provision of this Act
other Act, depends on the opinion, belief or state of mind of the Regis
relation to a matter:
(a) that power or function may be exercised by a Deputy Registrar on
opinion, belief or state of mind of the Deputy Registrar in relation to
matter; and
(b) that provision may operate on the opinion, belief or state of min
Deputy Registrar in relation to that matter.
(6) There shall be so many Examiners of Trade Marks as are necessary.
(7) Persons holding office as Examiners of Trade Marks at the commenc
of this Act shall continue to hold that office.
TRADE MARKS ACT 1955 - SECT 11 Delegation by Registrar
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11. (1) The Registrar may, by writing, delegate all or any of the
Registrar's powers under this Act or any other Act to:
(a) a prescribed person, or a prescribed class of persons, holding or
performing the duties of an Australian Public Service office in the Tra
Marks Office; or
(b) a prescribed employee, or a prescribed class of employees, employ
the Trade Marks Office.
(2) In this section:
"employee" has the same meaning as in the Public Service Act 1922.
TRADE MARKS ACT 1955 - SECT 12 Trade Marks Office and sub-offices
12. (1) For the purposes of this Act, there shall be an office which
be known as the Trade Marks Office.
(2) There shall be a sub-office of the Trade Marks Office in each Sta
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(3) A document required or permitted by this Act to be lodged at the
Marks Office may be lodged at a sub-office of the Trade Marks Office an
reference in this Act to lodgment at the Trade Marks Office includes a
reference to lodgment at a sub-office of the Trade Marks Office.
TRADE MARKS ACT 1955 - SECT 13 Seal of Trade Marks Office
13. There shall be a seal of the Trade Marks Office and impressions o
seal shall be judicially noticed.
TRADE MARKS ACT 1955 - PART III PART III - THE REGISTER OF TRADE MARKS
TRADE MARKS ACT 1955 - SECT 14 Register of Trade Marks
14. (1) There shall be kept at the Trade Marks Office a Register of T
Marks, in which shall be entered:
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(a) particulars of registered trade marks; and
(b) such other matters as are prescribed.
(2) The Register shall be divided into 4 parts, which shall be known
A, Part B, Part C and Part D, respectively.
(3) Subject to the next succeeding subsection, the Register of Trade
existing at the commencement of this Act shall be incorporated with and
part of Part A of the Register under this Act.
(4) The Registrar shall transfer from Part A of the Register to Part
the Register marks registered as standardization trade marks under the
repealed Acts.
TRADE MARKS ACT 1955 - SECT 14A Register may be kept wholly or partly by computer
14A. (1) The Register may be kept wholly or partly by use of a comput
(2) If the Register is kept wholly or partly by use of a computer:
(a) references in this Act to an entry in the Register include refere
a record of particulars kept by use of the computer and comprising the
Register or part of the Register; and
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(b) references in this Act to particulars being registered, or entere
the Register, include references to the keeping of a record of those
particulars as part of the Register by use of the computer; and
(c) references in this Act to the amendment, alteration or rectificat
the Register include references to the amendment, alteration or rectifi
of the record of particulars kept by use of the computer and comprising
Register or part of the Register.
TRADE MARKS ACT 1955 - SECT 15 Trusts not to be noticed
15. Notice of a trust, expressed, implied or constructive, shall not
entered in the Register or be received by the Registrar.
TRADE MARKS ACT 1955 - SECT 16 Inspection of Register
16. (1) The Register shall be open to the inspection of the public at
convenient times.
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(2) If a record of particulars is kept by use of a computer, subsecti
is to be taken to be complied with, to the extent that the Register con
of those particulars, by giving members of the public access to a compu
terminal which they can use to inspect the particulars, either on a scr
in the form of a computer printout.
TRADE MARKS ACT 1955 - SECT 17 Register and certified copies to be evidence
17. (1) The Register is evidence of all matters required or authorize
this Act to be entered in the Register.
(1A) If the Register is wholly or partly kept by use of a computer, a
document signed by the Registrar and reproducing in writing all or any
particulars comprising the Register, or that part of it, is admissible
proceedings as prima facie evidence of those particulars so reproduced.
(2) The Registrar may, subject to this Act, supply copies of or extra
from the Register, or of or from a document or publication in the Trade
Office, certified by writing under his hand and the seal of the Trade M
Office and a copy or extract so certified and sealed is admissible in e
in all courts and proceedings without further proof or production of th
original.
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(3) The Registrar may, subject to this Act, certify, by writing under
hand and the seal of the Trade Marks Office:
(a) that an entry, matter or thing required by or under this Act or t
repealed Acts to be made or done, or not to be made or done, has, or ha
as the case may be, been made or done; or
(b) that a book, document or publication in the Trade Marks Office wa
available for public inspection in the Trade Marks Office on the date
specified in the certificate;
and such a certificate is evidence of the statements contained in the
certificate.
TRADE MARKS ACT 1955 - SECT 18 False entries in Register
18. A person shall not wilfully:
(a) make or cause to be made a false entry in the Register; or
(b) produce or tender in evidence a document falsely purporting to be
of or extract from an entry in the Register or of or from a document in
Trade Marks Office.
Penalty:
(a) in the case of a natural person - $5,000 or imprisonment for 2 ye
both; or
(b) in the case of a body corporate - $25,000.
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TRADE MARKS ACT 1955 - SECT 19 Correction of Register
19. (1) The Registrar may, on application by the registered proprieto
trade mark, amend or alter the Register by:
(a) correcting an error in the entry of a trade mark in the Register;
(b) entering a change in the name, address or description of the regi
proprietor;
(c) cancelling the entry of a trade mark in the Register;
(d) amending the specification of the goods or services in respect of
the trade mark is registered but so that the amendment does not in any
extend the rights given by the registration of the trade mark; or
(e) entering a disclaimer or memorandum relating to the trade mark wh
does not in any way extend the rights given by the registration of the
mark;
and may make any consequential amendment or alteration in the certifica
registration, and for that purpose may require the certificate of regis
to be produced to him.
(2) The Registrar may, on request made by a registered user of a trad
correct an error, or enter a change, in the name, address or descriptio
the registered user.
(3) An appeal lies to the Federal Court from a decision of the Regist
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under subsection (1) of this section.
TRADE MARKS ACT 1955 - SECT 20 Registration of assignment
20. (1) Where a person becomes entitled by assignment or transmission
registered trade mark, he shall make application to the Registrar to re
his title, and the Registrar shall, on receipt of the application and o
of title to his satisfaction, register that person as the proprietor of
trade mark in respect of the goods or services in respect of which the
assignment or transmission has effect and cause particulars of the assi
or transmission to be entered in the Register.
(2) An appeal lies to the Federal Court from a decision of the Regist
under the last preceding subsection.
(3) Except in the case of an appeal under this section or of an appli
under section 22, a document or instrument in respect of which no entry
been made in the Register in accordance with the provisions of subsecti
is not, unless the court otherwise directs, admissible in evidence in a
in proof of a title to a registered trade mark.
TRADE MARKS ACT 1955 - SECT 21
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Alteration of registered trade mark
21. (1) The registered proprietor of a trade mark may apply to the Re
for leave to alter the trade mark in a manner not substantially affecti
identity and the Registrar may refuse the leave or grant it on such ter
subject to such conditions and limitations as he thinks fit.
(2) The Registrar may cause an application under this section to be
advertised in the Official Journal where it appears to him that it is
desirable to do so.
(3) A person may, within the prescribed time, give notice to the Regi
of opposition to the application and shall serve a copy of the notice o
applicant.
(4) The Registrar shall, after hearing the parties, if desirous of be
heard, decide the matter.
(5) An appeal lies to the Federal Court from a decision of the Regist
under the last preceding subsection.
(6) Where leave is granted, notice of leave having been granted shall
advertised in the Official Journal and the advertisement shall include
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trade mark as altered unless the trade mark has already been advertised
form to which it has been altered in an advertisement under subsection
TRADE MARKS ACT 1955 - SECT 22 Rectification of Register
22. (1) Subject to this Act, a prescribed court may, on the applicati
person aggrieved or of the Registrar, order the rectification of the
Register:
(a) by the making of an entry wrongly omitted to be made in the Regis
(b) by the expunging or amendment of an entry wrongly made in or rema
in the Register;
(c) by the insertion in the Register of a condition or limitation aff
the registration of a trade mark which ought to be inserted; or
(d) by the correction of an error or defect in the Register.
(2) On application to a prescribed court by a person aggrieved or by
Registrar, the prescribed court may make such order as it thinks fit fo
expunging or varying the registration of a trade mark, on the ground of
contravention of, or failure to observe, a condition or limitation ente
the Register in relation to the trade mark.
(3) The power to order the rectification of the Register conferred by
section includes power to order the removal of a registration in Part A
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Register to Part B of the Register.
(4) The Registrar shall not make application to a prescribed court un
this section unless he considers the application desirable in the publi
interest.
(5) Notice of an application to a prescribed court under this section
than an application by the Registrar) shall be given to the Registrar,
appear and be heard and shall appear if so directed by the prescribed c
(6) An office copy of an order under this section shall be served on
Registrar, who shall, upon receipt of the order, take such steps as are
necessary to give effect to the order.
TRADE MARKS ACT 1955 - SECT 23 Provisions as to non-use of trade mark
23. (1) Subject to this section and to section 93, a prescribed court
Registrar may, on application by a person aggrieved, order a trade mark
removed from the Register in respect of any of the goods or services in
respect of which it is registered, on the ground:
(a) that the trade mark was registered without an intention in good f
the part of the applicant for registration that it should be used in re
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to those goods or services by him or, if it was registered under subsec
(1) of section 45, by the body corporate or registered user concerned,
that there has, in fact, been no use in good faith of the trade mark in
relation to those goods or services by the registered proprietor or a
registered user of the trade mark for the time being earlier than 1 mon
before the application; or
(b) that, up to 1 month before the date of the application, a continu
period of not less than 3 years had elapsed during which the trade mark
registered trade mark and during which there was no use in good faith o
trade mark in relation to those goods or services by the registered pro
or a registered user of the trade mark for the time being.
(2) Except where an applicant has been permitted under section 34 to
register a substantially identical or deceptively similar trade mark in
respect of the goods or services to which the application relates, or t
prescribed court or the Registrar is of opinion that the applicant can
properly be permitted to register such a trade mark, a prescribed court
Registrar may refuse an application made under the last preceding subse
in relation to any goods or services if there has been, before the rele
date or during the relevant period, as the case may be, use in good fai
the trade mark by the registered proprietor or a registered user of the
mark for the time being in relation to goods or services in respect of
the trade mark is registered, being:
(a) where the application relates to goods - goods of the same descri
as those goods or services that are closely related to those goods; or
(b) where the application relates to services - services of the same
description as those services or goods that are closely related to thos
services.
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(3) Where, in relation to goods in respect of which a trade mark is
registered:
(a) the matters referred to in paragraph (b) of subsection (1) are sh
far as regards failure to use the trade mark in relation to goods to be
or otherwise traded in, in a particular place in Australia (otherwise t
export from Australia), or in relation to goods to be exported to a par
market outside Australia; and
(b) a person has been permitted under section 34 to register a substa
identical or deceptively similar trade mark in respect of those goods u
registration extending to use in relation to goods to be sold, or other
traded in, in that place (otherwise than for export from Australia), or
relation to goods to be exported to that market, or the prescribed cour
the Registrar is of opinion that that person might properly be permitte
register such a trade mark;
a prescribed court or the Registrar may, on application by that person,
that the registration of the first-mentioned trade mark shall be subjec
such conditions or limitations as the prescribed court or the Registrar
proper for securing that that registration shall cease to extend to use
trade mark in relation to goods to be sold, or otherwise traded in, in
place (otherwise than for export from Australia), or in relation to goo
be exported to that market.
(3A) Where, in relation to services in respect of which a trade mark
registered:
(a) the matters referred to in paragraph (b) of subsection (1) are sh
far as regards failure to use the trade mark in relation to services pr
in a particular place in Australia; and
(b) a person has been permitted under section 34 to register a substa
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identical or deceptively similar trade mark in respect of those service
a registration extending to use in relation to services provided in tha
place, or the prescribed court or the Registrar is of the opinion that
person may properly be permitted to register such a trade mark;
a prescribed court or the Registrar may, on application by that person,
that the registration of the first-mentioned trade mark shall be subjec
such conditions or limitations as the prescribed court or the Registrar
proper for securing that that registration shall cease to extend to use
trade mark in relation to services provided in that place.
(4) An applicant is not entitled to rely, for the purposes of paragra
of subsection (1), or for the purposes of subsection (3) or (3A), on fa
to use a trade mark if the failure is shown to have been due to special
circumstances in the trade and not to an intention not to use or to aba
the trade mark in relation to the goods or services to which the applic
relates.
(5) Where proceedings concerning a trade mark are pending in a court,
application under this section shall not be made except to the prescrib
court.
(6) If the Registrar considers that an application made to him under
section ought to be decided by a prescribed court, he may refer the
application to a prescribed court and the prescribed court may hear and
determine the application as though it had been made to the prescribed
in the first instance.
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(7) An appeal lies to the Federal Court from an order or direction of
Registrar under this section.
(8) An application to a prescribed court under this section and an
application to the Registrar shall be made as prescribed by the regulat
(9) An office copy of an order of a prescribed court under this secti
shall be served on the Registrar who shall take such steps as are neces
give effect to the order.
TRADE MARKS ACT 1955 - PART IV PART IV - REGISTRABLE TRADE MARKS
TRADE MARKS ACT 1955 - SECT 24 Registrable trade marks - Part A
24. (1) A trade mark is registrable in Part A of the Register if it c
or consists of:
(a) the name of a person represented in a special or particular manne
(b) the signature of the applicant for registration or of some predec
in his business;
(c) an invented word;
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(d) a word not having direct reference to the character or quality of
goods or services in respect of which registration is sought and not be
according to its ordinary meaning, a geographical name or a surname; or
(e) any other distinctive mark.
(2) A name, signature or word (not being a name, signature or word de
in paragraph (a), (b), (c) or (d) of the last preceding subsection) is
registrable in Part A of the Register unless it is, by evidence, shown
distinctive.
(3) A trade mark may be registered in Part A of the Register in respe
any goods or services notwithstanding the registration of the trade mar
a part or parts of the trade mark in Part B of the Register, in the nam
the same person, in respect of the same goods or services or other good
services.
TRADE MARKS ACT 1955 - SECT 25 Registrable trade marks - Part B
25. (1) A trade mark is registrable in Part B of the Register if it i
distinctive, or is not distinctive but is capable of becoming distincti
goods or services in respect of which registration of the trade mark is
and with which the applicant for registration is or may be connected in
course of trade.
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(2) A trade mark may be registered in Part B of the Register in respe
any goods or services notwithstanding the registration of the trade mar
a part or parts of the trade mark in Part A of the Register, in the nam
the same person, in respect of the same goods or services or other good
services.
TRADE MARKS ACT 1955 - SECT 26 Distinctiveness
26. (1) For the purposes of this Act, a trade mark is not distinctive
goods or services of a person unless it is adapted to distinguish goods
services with which that person is or may be connected in the course of
from goods or services in respect of which no such connexion subsists,
generally or, where the trade mark is sought to be registered, or is
registered, subject to conditions or limitations, in relation to use su
to those conditions or limitations.
(2) In determining whether a trade mark is distinctive, regard may be
the extent to which:
(a) the trade mark is inherently adapted so to distinguish; and
(b) by reason of the use of the trade mark or of any other circumstan
the trade mark does so distinguish.
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(3) Where:
(a) an application for registration of a trade mark has been made by
person;
(b) before the date of the application, the trade mark was used by a
other than the applicant under the control of, and with the consent and
authority of, the applicant;
(c) an application has been made by the applicant and that other pers
the registration of that other person as a registered user of the trade
and
(d) the Registrar is satisfied that that other person is entitled to
registered as a registered user of the trade mark immediately after the
registration of the trade mark;
the Registrar may, for the purpose of determining whether the trade mar
distinctive of the goods or services of the applicant, treat use of the
mark by that other person as equivalent to use of the trade mark by the
applicant and may make an order that the trade mark is so distinctive.
(4) An appeal lies to the Federal Court from an order of the Registra
the last preceding subsection.
(5) Where an order is made under subsection (3) that the trade mark i
distinctive of the goods or services of the applicant, the registration
trade mark shall cease to have effect if, at the expiration of the pres
period or such further period, not exceeding 6 months, as the Registrar
allows, that other person has not become registered as the registered u
the trade mark.
TRADE MARKS ACT 1955 - SECT 27
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Trade marks in colour
27. (1) A trade mark may be limited in whole or in part to 1 or more
and, in that case, the fact that the trade mark is so limited shall be
into consideration for the purpose of determining whether the trade mar
distinctive.
(2) In so far as a trade mark is registered without limitation as to
it shall be deemed to be registered for all colours.
TRADE MARKS ACT 1955 - SECT 28 Scandalous and improper marks
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.
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TRADE MARKS ACT 1955 - SECT 29 Registration may be refused of certain words etc. in trade marks
29. (1) The Registrar may refuse to accept an application for the
registration of a trade mark which contains or consists of any of the
following marks or a mark so nearly resembling any of those marks as to
likely to be taken for that mark:
(a) the word or words "Patent", "Patented", "By Royal Letters Patent"
"Registered", "Registered Design", "Copyright", "To counterfeit this is
forgery", or a word or words to the like effect;
(b) a representation of the Sovereign or of a member of the Royal Fam
(c) a representation of:
(i) the Royal Arms, crests, armorial bearings, insignia or devices;
(ii) any of the Royal crowns; or
(iii) the national flag of a part of the Queen's dominions;
(d) the word "Royal" or any other word, or any letters or device, lik
lead persons to think that the applicant has or has had Royal or Govern
patronage or authority;
(e) a representation of the Arms, or of any flag or seal, of the
Commonwealth or of a State or Territory;
(f) a representation of the Arms or emblem of a city or town in Austr
of a public authority or public institution in Australia;
(g) a representation of a mark notified by the International Union fo
Protection of Industrial Property as not entitled to registration under
international arrangements; or
(h) a mark which is specified in the regulations as being, for the pu
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of this section, a prohibited mark.
(2) The regulations may provide that a mark in relation to which the
preceding subsection applies (not being a registered trade mark or a ma
use in good faith as a trade mark) shall not be used as a trade mark or
part of a trade mark, either at all or after a date specified in the
regulations.
TRADE MARKS ACT 1955 - SECT 30 Names etc. of living persons
30. (1) Where a person makes an application for registration of a tra
which consists of or includes the name or representation of a living pe
of a person believed by the Registrar to be living, the Registrar may r
the applicant to furnish him with the consent of that person to the nam
representation appearing on the trade mark before he proceeds with the
registration of the trade mark.
(2) Where a person makes an application for registration of a trade m
which consists of or includes the name or a representation of a person
recently dead, or of a person believed by the Registrar to be recently
the Registrar may require the applicant to furnish him with the consent
legal representative of the deceased person to the name or representati
appearing on the trade mark before he proceeds with the registration of
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trade mark.
(3) An appeal lies to the Federal Court from a decision of the Regist
under either of the last 2 preceding subsections.
TRADE MARKS ACT 1955 - SECT 31 Trade marks to be registered for particular goods or services
31. (1) A trade mark shall be registered in respect of any or all of
goods or services comprised in a prescribed class of goods or services.
(2) If a question arises as to the class in which goods or services a
comprised, that question shall be decided by the Registrar and the deci
the Registrar is not subject to appeal and shall not be called in quest
an appeal or other proceedings under this Act.
TRADE MARKS ACT 1955 - SECT 32 Disclaimers
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32. (1) If a trade mark:
(a) contains parts:
(i) which are not the subject of separate applications by the
proprietor for registration as trade marks; or
(ii) which are not separately registered by the proprietor as trade
marks; or
(b) contains matter which is common to the trade or is otherwise not
distinctive;
the Registrar or a prescribed court, in deciding whether the trade mark
be registered or shall remain upon the Register, may, in his or its
discretion, require as a condition that the proprietor shall disclaim a
right to the exclusive use of any of those parts, or of that matter, to
exclusive use of which the Registrar or the prescribed court holds the
proprietor not to be entitled or that the proprietor shall make such ot
disclaimer as the Registrar or the prescribed court considers to be pro
the purpose of defining the rights of the proprietor under the registra
(2) No such disclaimer affects the rights of the proprietor of the tr
mark which do not arise out of the registration of the trade mark.
TRADE MARKS ACT 1955 - SECT 33 Identical marks
33. (1) Subject to this Act, a trade mark is not capable of registrat
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a person in respect of goods if it is substantially identical with or
deceptively similar to a trade mark which is registered, or is the subj
an application for registration, by another person in respect of the sa
goods, of goods of the same description as those goods or of services t
closely related to those goods, unless the date of registration of the
first-mentioned trade mark is, or will be, earlier than the date of
registration of the second-mentioned trade mark.
(2) Subject to this Act, a trade mark is not capable of registration
person in respect of services if it is substantially identical with or
deceptively similar to a trade mark which is registered, or is the subj
an application for registration, by another person in respect of the sa
services, of services of the same description as those services, or of
that are closely related to those services, unless the date of registra
the first-mentioned trade mark is, or will be, earlier than the date of
registration of the second-mentioned trade mark.
(3) Where, in accordance with this section, a trade mark is not capab
registration by reason of the existence of another trade mark, the Regi
may defer acceptance of the application for registration of the
first-mentioned trade mark until the second-mentioned trade mark has be
registered.
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TRADE MARKS ACT 1955 - SECT 34 Concurrent use
34. (1) In case of honest concurrent use or of other special circumst
which, in the opinion of the Registrar, make it proper so to do, the Re
may permit the registration of trade marks which are substantially iden
or deceptively similar, or, but for the honest concurrent use or other
circumstances would be deceptively similar, for the same goods or servi
other goods or services, by more than 1 proprietor subject to such cond
and limitations (if any) as the Registrar imposes.
(2) Where a person has, by himself or his predecessors in business,
continuously used a trade mark before the use, or before the date of
registration, whichever is the earlier, of another registered trade mar
the registered proprietor of that other trade mark, by his predecessors
business or by a registered user of that other trade mark, the Registra
not refuse to register the first-mentioned trade mark by reason of the
registration of that other trade mark.
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TRADE MARKS ACT 1955 - SECT 35 Jointly owned trade marks
35. (1) Where the relations between 2 or more persons interested in a
mark are such that no 1 of them is entitled as between himself and the
or others to use the trade mark except:
(a) on behalf of both or all of them; or
(b) in relation to goods or services with which both or all of them a
connected in the course of trade;
those persons may be registered as joint proprietors of the trade mark,
this Act has effect in relation to any rights of those persons to the u
the trade mark as if those rights were rights of a single person.
(2) Subject to the last preceding subsection, nothing in this Act aut
the registration of 2 or more persons who use a trade mark independentl
propose so to use it, as joint proprietors of the trade mark.
TRADE MARKS ACT 1955 - SECT 36 Association of trade marks
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36. (1) Where a trade mark which is registered, or is the subject of
application for registration, in respect of any goods:
(a) is substantially identical with another trade mark which is regis
or is the subject of an application for registration, in the name of th
proprietor in respect of the same goods, of goods of the same descripti
those goods or of services that are closely related to those goods; or
(b) so nearly resembles such a trade mark as to be likely to deceive
cause confusion if used by a person other than the proprietor;
the Registrar may, at any time, require that the trade marks shall be e
in the Register as associated trade marks.
(1A) Where a trade mark which is registered, or is the subject of an
application for registration, in respect of any services:
(a) is substantially identical with another trade mark which is regis
or is the subject of an application for registration, in the name of th
proprietor in respect of the same services, of services of the same
description as those services, or of goods that are closely related to
services; or
(b) so nearly resembles such a trade mark as to be likely to deceive
cause confusion if used by a person other than the proprietor;
the Registrar may, at any time, require that the trade marks shall be e
in the Register as associated trade marks.
(2) On application made by the registered proprietor of 2 or more ass
trade marks, the Registrar may, if he is satisfied that there would be
likelihood of deception or confusion being caused, dissolve the associa
with respect to 1 or more of those trade marks and amend the Register
accordingly.
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(3) An appeal lies to the Federal Court from a decision of the Regist
under this section.
TRADE MARKS ACT 1955 - SECT 37 Assignment of associated trade marks
37. Associated trade marks are assignable or transmissible only as a
and not separately, but, subject to this Act, they shall for all other
purposes be deemed to have been registered as separate trade marks.
TRADE MARKS ACT 1955 - SECT 38 Use of trade marks whether associated or otherwise
38. (1) Where, under this Act, use of a trade mark is required to be
for any purpose, the Registrar or a prescribed court may, if and so far
or it thinks right, accept use of an associated registered trade mark o
the trade mark with additions or alterations not substantially affectin
identity of the trade mark, as an equivalent for the use required to be
proved.
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(2) The use of the whole of a registered trade mark shall, for the pu
of this Act, be deemed to be also a use of any registered trade mark, b
part thereof, registered in the name of the same proprietor.
TRADE MARKS ACT 1955 - SECT 39 Series of trade marks
39. (1) Where a person who claims to be the proprietor of several tra
marks for the same goods, for goods of the same description within a si
class, for the same services or for services of the same description wi
single class seeks to register those trade marks and the trade marks, a
they resemble each other in material particulars, differ in respect of:
(a) statements or representations as to the goods or services in resp
which the trade marks are used or proposed to be used;
(b) statements or representations as to number, price, quality or nam
places;
(c) other matter which is not distinctive and does not substantially
the identity of the trade marks; or
(d) colour;
or in respect of any 2 or more of those matters, the trade marks may be
registered as a series in 1 registration.
(2) All the trade marks in a series of trade marks so registered shal
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deemed to be, and shall be registered as, associated trade marks.
TRADE MARKS ACT 1955 - PART V PART V - APPLICATIONS FOR REGISTRATION
TRADE MARKS ACT 1955 - SECT 40 Application for registration
40. (1) A person who claims to be the proprietor of a trade mark may
application to the Registrar for the registration of that trade mark in
or Part B of the Register.
(2) The application:
(a) shall specify the goods or services in respect of which registrat
sought; and
(b) shall be lodged by being left at, or delivered by post to, the Tr
Marks Office.
(3) An application shall not be made in respect of goods or services
comprised in more than 1 class.
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TRADE MARKS ACT 1955 - SECT 40A Withdrawal of application
40A. (1) An application is to be treated as having been withdrawn if,
only if, the applicant lodges at the Trade Marks Office a written notic
withdrawal signed by the applicant.
(2) A written notice of withdrawal may be lodged by leaving it at, or
delivering it by post to, the Trade Marks Office.
TRADE MARKS ACT 1955 - SECT 41 Applications to be examined
41. An Examiner shall, in respect of each application, ascertain and
whether:
(a) the application is as prescribed; and
(b) the trade mark is capable of registration under this Act.
TRADE MARKS ACT 1955 - SECT 42 Action on Examiner's report
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42. (1) If the Examiner reports adversely to an application under the
preceding section, the applicant may amend the application so as to rem
grounds of objection and the amended application shall be again reporte
like manner as the original application.
(2) If the applicant does not amend the application to the satisfacti
the Registrar, the Registrar may direct that the application be amended
satisfaction within such time as the Registrar allows.
(3) An amendment shall not be made or directed under either of the la
preceding subsections if the amendment would substantially affect the i
of the trade mark before amendment.
(4) An appeal lies to the Federal Court from a direction of the Regis
under subsection (2).
TRADE MARKS ACT 1955 - SECT 43 Division of application
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43. (1) Where a part of a trade mark which is the subject of an appli
for registration is separately registrable as a trade mark, the applica
before the application has been accepted or refused, make a further
application for the registration of that part in respect of goods or se
in relation to which the first-mentioned application was made.
(2) A further application so made shall, if the Registrar so directs,
deemed to have been lodged on the date on which the first-mentioned
application was lodged.
(3) Where an application has been made for registration of a trade ma
respect of certain goods or services and, before the application has be
accepted or refused, the applicant has made a further application for t
registration of that trade mark in respect of goods or services include
the description of goods or services in respect of which the first-ment
application was made, the Registrar may direct that the further applica
shall be deemed to have been lodged on the date on which the first-ment
application was lodged.
(4) An appeal lies to the Federal Court from a direction of the Regis
under either of the last 2 preceding subsections.
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TRADE MARKS ACT 1955 - SECT 44 Acceptance of application
44. (1) If the Registrar is satisfied that there is no lawful ground
objection to an application, or that the grounds of objection to an
application have been removed, the Registrar shall accept the applicati
without conditions or limitations or subject to such conditions or limi
as he thinks fit; if he is not so satisfied, he may refuse to accept th
application.
(2) In the case of an application for registration of a trade mark in
of the Register, the Registrar may, with the consent of the applicant,
of refusing to accept the application, treat the application as an appl
for registration in Part B of the Register and deal with the applicatio
accordingly.
(3) Where, after the acceptance of an application for registration of
trade mark but before the registration of the trade mark, the Registrar
satisfied:
(a) that the application has been accepted in error; or
(b) that, in the special circumstances of the case, the trade mark sh
not be registered, or should be registered subject to conditions or
limitations, or to additional or different conditions or limitations;
the Registrar may withdraw the acceptance and proceed as if the applica
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had not been accepted.
TRADE MARKS ACT 1955 - SECT 45 Application may be accepted where trade mark is to be used by assigne registered user
45. (1) An application for the registration of a trade mark may be ac
and the trade mark may be registered, notwithstanding that the applican
not use or propose to use the trade mark:
(a) if the Registrar is satisfied that a body corporate is about to b
constituted and that the applicant intends to assign the trade mark to
body corporate with a view to the use by the body corporate of the trad
in relation to the goods or services in respect of which registration i
sought; or
(b) if an application has been made for the registration of a person
registered user of the trade mark and the Registrar is satisfied that t
proprietor intends the trade mark to be used by that person in relation
those goods or services and is also satisfied that that person will be
registered as a registered user of the trade mark immediately after
registration of the trade mark.
(2) Where a trade mark is registered under the last preceding subsect
the name of an applicant who relies on an intention to assign to a body
corporate, then, unless within such period as is prescribed or within s
further period, not exceeding 6 months, as the Registrar allows, the bo
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corporate has been registered as the proprietor of the trade mark in re
of the goods or services in respect of which the trade mark is register
registration shall cease to have effect at the expiration of that perio
the Registrar shall amend the Register accordingly.
TRADE MARKS ACT 1955 - SECT 46 Appeals
46. (1) An appeal lies to the Federal Court from a refusal by the Reg
to accept an application or from the acceptance by the Registrar of an
application subject to conditions or limitations.
(2) The Registrar is entitled to appear and be heard upon the hearing
appeal and shall appear if so directed by the Federal Court.
TRADE MARKS ACT 1955 - SECT 47 Advertisement of acceptance
47. Where an application has been accepted, the Registrar shall give
in writing of the acceptance to the applicant and shall advertise the
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acceptance in the Official Journal.
TRADE MARKS ACT 1955 - SECT 48 Limit of time for proceeding with application
48. (1) Subject to this section, where an application has not been ac
within 12 months after the date on which the first report of the Examin
sent to the applicant, the Registrar shall give notice of the non-accep
to the applicant and if, at the expiration of 1 month from the date of
notice or at the expiration of such further time as the Registrar allow
application has not been accepted, the application shall lapse.
(2) Where, in respect of an application, an appeal under any provisio
this Act has been instituted or an application has been made to the
Administrative Appeals Tribunal for a review of a decision, the Registr
shall not give notice of the non-acceptance of the first-mentioned appl
until the expiration of 3 months after the determination or other dispo
the appeal or review or until the expiration of such further time as th
to which the appeal, or any further appeal, is brought, or the Administ
Appeals Tribunal, or the court to which any appeal arising out of the d
of the Administrative Appeals Tribunal, is brought, as the case may be,
allows.
(3) Where:
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(a) the time within which an appeal, or an application to the Adminis
Appeals Tribunal, mentioned in subsection (2) may be instituted or made
not expired; or
(b) the applicant has died;
the Registrar shall not give notice of the non-acceptance of the applic
for the registration of a trade mark until such time as he determines.
(4) Where acceptance of an application has been deferred under subsec
(2) of section 33, the Registrar shall not give notice of the non-accep
of the application until the expiration of 3 months after the registrat
the second-mentioned trade mark referred to in that subsection.
TRADE MARKS ACT 1955 - PART VI PART VI - OPPOSITION TO REGISTRATION
TRADE MARKS ACT 1955 - SECT 49 Notice of opposition
49. (1) A person may, within 3 months after the date of the advertise
the acceptance of an application, or within such further period, not ex
3 months, as the Registrar, on application made to him within the
first-mentioned period, allows, by notice in writing specifying the gro
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opposition and lodged at the Trade Marks Office, oppose the registratio
the trade mark.
(2) The opponent shall serve a copy of the notice on the applicant.
TRADE MARKS ACT 1955 - SECT 50 Hearing of opposition
50. (1) The Registrar shall, after giving to the applicant and the op
an opportunity of being heard, decide:
(a) to refuse to register the trade mark;
(b) to register the trade mark subject to such conditions or limitati
he thinks fit; or
(c) to register the trade mark without conditions or limitations.
(2) In determining the opposition the Registrar may take into account
ground of objection whether relied upon by the opponent or not.
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TRADE MARKS ACT 1955 - SECT 51 Appeal to a prescribed court
51. The applicant or an opponent may appeal to the Federal Court from
decision of the Registrar under the last preceding section.
TRADE MARKS ACT 1955 - SECT 52 Security for costs
52. If a person giving notice of opposition neither resides nor carri
business in Australia, the Registrar may order him to give security for
within a specified time and, if the order is not complied with, the opp
shall lapse.
TRADE MARKS ACT 1955 - PART VII PART VII - REGISTRATION AND EFFECT OF REGISTRATION
TRADE MARKS ACT 1955 - SECT 53 Registration of trade mark
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53. (1) If there is no opposition to the registration of a trade mark
in the case of opposition, if the Registrar's decision, or the decision
appeal from that decision, is that the trade mark should be registered,
Registrar shall register the trade mark, in the name of the proprietor,
appropriate part of the Register.
(2) Subject to this Act, a trade mark shall be registered as of the d
the lodging of the application for registration and that date shall be
for the purposes of this Act to be the date of registration.
TRADE MARKS ACT 1955 - SECT 54 Time for registration
54. (1) Subject to this section, a trade mark shall not be registered
12 months from the date of the advertisement of the acceptance of the
application.
(2) Where the Registrar has allowed an extension of time within which
of opposition to the registration of a trade mark may be given and noti
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opposition has not been given, an extension of time for the same period
the aggregate of the periods, if more than 1, after the period of 12 mo
referred to in the last preceding subsection shall be allowed for the
registration of the trade mark.
(3) Where the registration of a trade mark is delayed by:
(a) opposition to the registration of the trade mark;
(b) proceedings in a court; or
(c) an application to the Administrative Appeals Tribunal;
that trade mark may be registered within such time as:
(d) in a case to which paragraph (a) applies - the Registrar directs;
(e) in a case to which paragraph (b) applies - the court or, if the
proceedings are discontinued, the Registrar directs; or
(f) in a case to which paragraph (c) applies - the Tribunal or a cour
which an appeal arising out of the decision of the Tribunal is brought,
directs, or, if the proceedings before the Tribunal are, or any such ap
is, discontinued, as the Registrar directs.
(4) Where the applicant dies before the expiration of the time which
otherwise be allowed for registering a trade mark, the trade mark may b
registered at any time within 12 months after his death or within such
period as the Registrar directs.
(5) Where a trade mark cannot be registered within the time allowed b
under this section, that time may, on application made to the Registrar
the prescribed time, but subject to the regulations, be extended for su
further time as is prescribed.
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(6) Where a trade mark has not been registered within the time which
applicable to it under this section the application shall lapse.
TRADE MARKS ACT 1955 - SECT 55 Duration of registration
55. (1) Subject to the next succeeding subsection, the registration o
trade mark as of a date after the commencement of this Act shall be for
period of 7 years.
(2) The registration of a trade mark as of a date before the commence
this Act shall be for a period of 14 years.
(3) The registration of a trade mark may be renewed from time to time
accordance with Part VIII.
TRADE MARKS ACT 1955 - SECT 56 Words used as name or description of an article or substance
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56. (1) Subject to this section, the registration of a trade mark doe
become invalid by reason only of the use, after the date of the registr
of a word or words which the trade mark contains, or of which it consis
the name or description of an article, substance or service.
(2) The succeeding subsections have effect where:
(a) there is a well-known and established use of a word as the name o
description of an article, substance or service by a person or persons
carrying on a trade in that article, substance or service, not being us
relation to goods or services connected in the course of trade with the
proprietor or a registered user of the trade mark or, in the case of a
certification trade mark, in relation to goods or services certified by
proprietor; or
(b) the article or substance was formerly manufactured under a patent
service formerly provided was a patented process, as the case requires,
period of 2 years or more after the patent has ceased has elapsed, and
word is the only practicable name or description of the article, substa
service.
(3) If the trade mark consists solely of that word, the registration
trade mark, so far as regards registration in respect of the article or
substance or of any goods of the same description, or of the services o
any services of the same description, as the case requires, shall be de
for the purposes of section 22 to be an entry wrongly remaining in the
Register.
(4) If the trade mark contains that word and other matter, a prescrib
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court, in deciding whether the trade mark shall remain in the Register,
as regards registration in respect of the article or substance or of an
of the same description, or of the services or of any services of the s
description, may, in the case of a decision in favour of the trade mark
remaining in the Register, require as a condition that the proprietor s
disclaim any right to the exclusive use of that word in relation to tha
article or substance or to any goods of the same description, or to the
services or to any service of the same description, as the case may be,
such disclaimer affects any rights of the proprietor of the trade mark
such as arise out of the registration of the trade mark in respect of w
the disclaimer is made.
(5) For the purposes of any other legal proceedings relating to the t
mark:
(a) if the trade mark consists solely of that word, all rights of the
registered proprietor to the exclusive use of the trade mark; or
(b) if the trade mark contains that word and other matter, all rights
registered proprietor to the exclusive use of that word;
in relation to the article or substance or to any goods of the same
description, or to the service or to any services of the same descripti
the case requires, shall be deemed to have ceased on the date at which
mentioned in paragraph (a) of subsection (2) first became well-known an
established, or at the expiration of the period of 2 years mentioned in
paragraph (b) of that subsection.
TRADE MARKS ACT 1955 - SECT 57 Powers of registered proprietor
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57. (1) Subject to this Act, the registered proprietor of a trade mar
subject to any rights appearing from the Register to be vested in some
person, power to assign the trade mark and to give good discharges for
consideration for the assignment.
(2) Equities in respect of a trade mark may be enforced in like manne
respect of other personal property.
TRADE MARKS ACT 1955 - SECT 58 Rights given by registration
58. (1) Subject to this Act, the registration of a trade mark in Part
Part B of the Register, if valid, gives to the registered proprietor of
trade mark the right to the exclusive use of the trade mark in relation
goods or services in respect of which the trade mark is registered and
obtain relief in respect of infringement of the trade mark in the manne
provided by this Act.
(2) The rights acquired by the registration of a trade mark are subje
any conditions or limitations to which the registration is subject.
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(3) Where 2 or more persons are proprietors of registered trade marks
are substantially identical or deceptively similar, whether for the sam
or services or other goods or services, rights of exclusive use of eith
those trade marks are not (except so far as their respective rights hav
defined by the Registrar or a prescribed court) acquired by any 1 of th
persons as against any other of those persons by registration of the tr
marks but each of those persons has otherwise the same rights as agains
persons (not being registered users) as he would have if he were the so
registered proprietor.
TRADE MARKS ACT 1955 - SECT 59 Registration evidence of validity
59. In legal proceedings relating to a registered trade mark (includi
applications under section 22), the original registration of the trade
and the registration of any assignment or transmission of the trade mar
be deemed to be valid unless the contrary is shown.
TRADE MARKS ACT 1955 - SECT 60 Limitation on removal of trade mark after 3 years
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60. In legal proceedings relating to a trade mark registered in Part
the Register (including applications under section 22) instituted after
expiration of 3 years from the date of registration, the trade mark sha
be removed from the Register or be held invalid on the ground that it w
a registrable trade mark under section 24, unless it is proved that it
not, at the commencement of the proceedings, distinctive of the goods o
services of the registered proprietor.
TRADE MARKS ACT 1955 - SECT 61 Registration conclusive after 7 years
61. (1) In legal proceedings relating to a trade mark registered in P
of the Register (including applications under section 22), the original
registration of the trade mark under this Act shall, after the expirati
years from the date of the original registration, be taken to be valid
respects, unless it is shown:
(a) that the original registration was obtained by fraud;
(b) that the trade mark offends against the provisions of section 28;
(c) that the trade mark was not, at the commencement of the proceedin
distinctive of the goods or services of the registered proprietor.
(2) Paragraph (c) of the last preceding subsection does not apply to
mark registered before the commencement of this Act until after the exp
of 3 years from the commencement of this Act.
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TRADE MARKS ACT 1955 - SECT 62 Infringement of trade marks
62. (1) A registered trade mark is infringed by a person who, not bei
registered proprietor of the trade mark or a registered user of the tra
using by way of permitted use, uses a mark which is substantially ident
with, or deceptively similar to, the trade mark, in the course of trade
relation to goods or services in respect of which the trade mark is
registered.
(2) In an action for infringement of a trade mark registered in Part
the Register (not being an infringement occurring by reason of an act r
to in the next succeeding section), an injunction or other relief shall
granted to the plaintiff if the defendant establishes to the satisfacti
the court that the use of the mark of which the plaintiff complains is
likely to deceive or cause confusion or to be taken as indicating a con
in the course of trade between the goods or services in respect of whic
trade mark is registered and a person having the right, either as regis
proprietor or as registered user, to use the trade mark.
TRADE MARKS ACT 1955 - SECT 63 Infringement of trade mark by breach of certain restrictions
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63. (1) Where, by notice upon goods or upon the container of goods, t
registered proprietor or a registered user of a trade mark registered i
A or Part B of the Register makes a statement prohibiting the doing of
to which this section applies, a person who, being the owner for the ti
being of the goods, does that act, or authorizes it to be done in relat
the goods in the course of trade or with a view to a dealing with the g
the course of trade, infringes the trade mark unless:
(a) at the time when that person agreed to buy the goods he acted in
faith without notice that the statement appeared on the goods; or
(b) he became the owner of the goods by virtue of a title derived fro
another person who had so agreed to buy the goods.
(2) The acts to which this section applies are:
(a) the application of the trade mark upon goods after they have suff
alteration to their state, condition, get-up or packing;
(b) in a case in which the trade mark is upon the goods, the alterati
partial removal or partial obliteration of the trade mark;
(c) in the case in which the trade mark is upon the goods and there i
other matter upon the goods, being matter indicating a connexion in the
of trade between the proprietor or registered user and the goods, the r
or obliteration, whether wholly or partially, of the trade mark unless
other matter is wholly removed or obliterated;
(d) in a case in which the trade mark is upon the goods, the applicat
some other trade mark to the goods; and
(e) in a case in which the trade mark is upon the goods, the addition
goods of other matter, in writing or otherwise, that is likely to injur
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reputation of the trade mark.
(3) In this section, references, in relation to goods, to the registe
proprietor, to a registered user and to the registration of a trade mar
be construed, respectively, as references to the registered proprietor
trade mark, to a registered user of the trade mark and to the registrat
the trade mark, in respect of those goods, and the expression "upon" in
in relation to goods, a reference to physical relation to the goods.
TRADE MARKS ACT 1955 - SECT 64 Acts not constituting infringement
64. (1) Notwithstanding anything contained in this Act, the following
do not constitute an infringement of a trade mark:
(a) the use in good faith by a person of his own name or the name of
place of business or the name, or the name of the place of business, of
his predecessors in business;
(b) the use in good faith by a person of a description of the charact
quality of his goods or services;
(c) the use by a person of a trade mark in relation to goods or servi
relation to which that person has, by himself or his predecessors in bu
continuously used the trade mark from a date before:
(i) the use of the registered trade mark by the registered propriet
by his predecessors in business or by a registered user of the trade ma
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(ii) the registration of the trade mark;
whichever is the earlier;
(d) the use of the trade mark by a person in relation to goods or ser
adapted to form part of, or to be accessory to, other goods or services
relation to which the trade mark has been used without infringement or
for the time being be so used, if the use of the trade mark is reasonab
necessary in order to indicate that the goods or services are so adapte
neither the purpose nor the effect of the use of the trade mark is to
indicate, otherwise than in accordance with the facts, a connexion in t
course of trade between any person and the goods or services; and
(e) the use of a trade mark, being one of 2 or more registered trade
which are substantially identical, in exercise of the right to the use
trade mark given by registration as provided by this Act.
(2) Where a trade mark is registered subject to conditions or limitat
the trade mark is not infringed by the use of the trade mark in any man
relation to goods to be sold or otherwise traded in in a place, in rela
goods to be exported to a market, in relation to services to be provide
place, or in any other circumstances, to which, having regard to those
conditions or limitations, the registration does not extend.
TRADE MARKS ACT 1955 - SECT 65 Relief in infringement actions
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65. The relief which a court may grant in an action or proceeding for
infringement of a registered trade mark includes an injunction (subject
such terms, if any, as the court thinks fit) and, except in the case of
trade mark registered in Part C of the Register, at the option of the
plaintiff, either damages or an account of profits.
TRADE MARKS ACT 1955 - SECT 66 Evidence of trade usage
66. In an action or proceeding relating to a trade mark, evidence is
admissible of the usages of the trade concerned and of any relevant tra
mark, trade name or get-up legitimately used by other persons.
TRADE MARKS ACT 1955 - SECT 67 Action or proceeding may be instituted in prescribed court
67. An action or proceeding for infringement of a trade mark may be
instituted in a prescribed court, but nothing in this section prevents
action or proceeding being instituted in a court that is not a prescrib
court.
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TRADE MARKS ACT 1955 - SECT 68 Passing off actions
68. In an action for passing off arising out of the use by the defend
a registered trade mark of which he is the registered proprietor or a
registered user, being a trade mark substantially identical with, or
deceptively similar to, the trade mark of the plaintiff, damages shall
awarded against the defendant if he satisfies the court:
(a) that at the time he commenced to use the trade mark he was unawar
had no reasonable means of ascertaining that the trade mark of the plai
was in use; and
(b) that when he became aware of the existence and nature of the plai
trade mark he forthwith ceased to use the trade mark in relation to goo
services in relation to which it was used by the plaintiff.
TRADE MARKS ACT 1955 - PART VIII PART VIII - RENEWAL OF REGISTRATION
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TRADE MARKS ACT 1955 - SECT 69 Renewal of registration
69. The Registrar shall, on application made by the registered propri
a trade mark within the prescribed period, renew the registration of th
mark for a period of 14 years from the expiration of the last registrat
the trade mark.
TRADE MARKS ACT 1955 - SECT 70 Procedure on expiry of period of registration
70. (1) At the prescribed time before the expiration of the last
registration of a trade mark, the Registrar shall send notice to the
registered proprietor or his agent in Australia of the date at which th
existing registration will expire and the conditions as to payment of f
otherwise upon which a renewal of the registration may be obtained.
(2) If, at the expiration of the time prescribed in that behalf, thos
conditions have not been complied with, the Registrar may remove the tr
mark from the Register.
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TRADE MARKS ACT 1955 - SECT 71 Restoration of trade mark removed for non-payment of renewal fee
71. (1) Where a trade mark has been removed from the Register for
non-payment of the prescribed fee, the Registrar may, within 12 months
the date of expiration of the registration of the trade mark, if satisf
that it is just so to do, restore the trade mark to the Register, and r
the registration of the trade mark, either generally or subject to such
conditions or limitations as he sees fit to impose, for a period of 14
from the expiration of the last registration.
(3) Section 130 does not apply in relation to subsection (1).
TRADE MARKS ACT 1955 - SECT 72 Status of un-renewed trade mark
72. Where a trade mark has been removed from the Register for non-pay
the fee for renewal, the trade mark shall, for the purpose of an applic
for registration by another person lodged not later than 12 months next
the expiration of the last registration, be deemed to be a trade mark w
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already registered, unless it is shown to the satisfaction of the Regis
that:
(a) there has been no use in good faith of the trade mark during the
immediately preceding the expiration of the last registration; or
(b) no deception or confusion would be likely to arise from the use o
trade mark which is the subject of the application for registration by
of any previous use of the trade mark which has been removed.
TRADE MARKS ACT 1955 - PART IX PART IX - REGISTERED USERS
TRADE MARKS ACT 1955 - SECT 73 Application of Part
73. This Part applies only in relation to trade marks registered in P
or Part B of the Register.
TRADE MARKS ACT 1955 - SECT 74 Registered users
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74. (1) Subject to this section, a person other than the registered
proprietor of a trade mark may be registered as a registered user of th
trade mark for all or any of the goods or services in respect of which
trade mark is registered.
(2) Where it is proposed that a person shall be registered as a regis
user of a trade mark, the registered proprietor and the proposed regist
user shall apply in writing to the Registrar and shall furnish him with
statutory declaration made by the registered proprietor, or by some per
authorized to act on his behalf and approved by the Registrar:
(a) giving particulars of the relationship, existing or proposed, bet
the registered proprietor and the proposed registered user, including
particulars showing the degree of control by the registered proprietor
the permitted use which their relationship will confer and whether it i
term of their relationship that the proposed registered user will be th
registered user or that there will be any other restriction as to perso
whose registration as registered users application may be made;
(b) stating the goods or services for which registration is proposed;
(c) stating any conditions or restrictions proposed with respect to t
characteristics of the goods or services, to the mode or place of permi
use or to any other matter; and
(d) stating whether the permitted use is to be for a period or withou
of period, and, if for a period, the duration of the period;
and with such further documents, information or evidence as is required
the regulations or by the Registrar.
(3) Where the requirements of the last preceding subsection have been
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complied with and the Registrar, after considering the documents, infor
and evidence furnished to him under that subsection, is satisfied that,
the circumstances, the use of the trade mark in relation to the propose
or services or any of them by the proposed registered user, subject to
conditions or restrictions which the Registrar thinks appropriate, woul
be contrary to the public interest, the Registrar may register the prop
registered user as a registered user for the goods or services as to wh
is so satisfied, subject to those conditions or restrictions.
(4) The Registrar shall not register a person as a registered user of
trade mark if it appears to him that the registration would tend to fac
trafficking in the trade mark.
(5) The Registrar may determine that the registration of a person as
registered user of a trade mark shall be for such period as, having reg
the information referred to in paragraph (d) of subsection (2), the Reg
thinks fit.
(6) The Registrar may determine that the period of the registration o
person as a registered user of a trade mark shall commence on the date
which the application by that person for registration as a registered u
made.
(7) The Registrar shall, if so required by an applicant under subsect
ensure that any document, information or evidence furnished for the pur
that application (other than matter entered in the Register) is not dis
to any other person except by order of a prescribed court.
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TRADE MARKS ACT 1955 - SECT 75 Variation etc. of registration
75. Without affecting the operation of section 22, the registration o
person as a registered user:
(a) may be varied by the Registrar, on the application in writing of
registered proprietor, with respect to the goods or services for which,
with respect to any conditions or restrictions subject to which, the
registration has effect;
(b) may be extended by the Registrar, on the application in writing o
registered proprietor, for such period as the Registrar thinks fit;
(c) may be cancelled by the Registrar on the application of the regis
proprietor or of the registered user or of any other registered user of
trade mark; or
(d) may be cancelled by the Registrar on the application of a person
ground:
(i) that the registered user has used the trade mark otherwise than
way of the permitted use, or in such a way as to cause, or to be likely
cause, deception or confusion;
(ii) that the registered proprietor or the registered user
misrepresented, or failed to disclose, some fact material to the applic
for the registration or that the circumstances have materially changed
the date of the registration; or
(iii) that the registration ought not to have been effected having
regard to rights vested in the applicant by virtue of a contract in the
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performance of which he is interested.
TRADE MARKS ACT 1955 - SECT 76 Cancellation of registration
76. The Registrar may at any time cancel the registration of a person
registered user of a trade mark for any goods or services in respect of
the trade mark is no longer registered.
TRADE MARKS ACT 1955 - SECT 77 Effect of permitted user
77. (1) The permitted use of a registered trade mark shall be deemed
use by the registered proprietor of the trade mark and shall be deemed
be use by a person other than the registered proprietor, for the purpos
section 23 and for any other purpose for which use by the registered
proprietor of the trade mark is material under this Act.
(2) Where:
(a) a person is registered as a registered user of a trade mark;
(b) there has been previous use (whether before or after the commence
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this Act) of the trade mark by that person; and
(c) that use is in relation to goods or services in respect of which
person is registered and, where he is registered subject to conditions
restrictions:
(i) that use complied substantially with those conditions or
restrictions; or
(ii) did not so comply but was not such as to be contrary to the
public interest;
the last preceding subsection has effect as if that previous use had be
permitted use.
(3) Neither the registration of a person as a registered user of a tr
mark, nor the use by that person of the trade mark as a registered user
prejudices any of the rights arising at common law of the person who is
registered proprietor of the trade mark.
(4) For the purpose of determining the rights arising at common law o
person who is the registered proprietor of a trade mark, the use of the
mark by a registered user shall be deemed to be use by that person and
be deemed not to be use by a person other than that person.
TRADE MARKS ACT 1955 - SECT 78 Infringement proceedings
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78. (1) Subject to any agreement subsisting between the registered us
trade mark and the registered proprietor of the trade mark, the registe
user is entitled to call upon the registered proprietor to take proceed
for infringement of the trade mark, and, if the registered proprietor r
or neglects to do so within 2 months after being so called upon, the
registered user may institute proceedings for infringement in his own n
if he were the registered proprietor and shall make the registered prop
a defendant.
(2) A registered proprietor so added as a defendant is not liable for
unless he enters an appearance and takes part in the proceedings.
TRADE MARKS ACT 1955 - SECT 79 Rights of registered user not assignable
79. This Part does not confer on the registered user of a trade mark
assignable or transmissible right to the use of that trade mark.
TRADE MARKS ACT 1955 - SECT 80 Hearing by Registrar
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80. The Registrar shall not exercise a discretionary power under this
adversely to a person without, if so required, giving to each person wh
be affected by the exercise of the power an opportunity of being heard.
TRADE MARKS ACT 1955 - SECT 81 Appeals
81. An appeal lies to the Federal Court from a decision of the Regist
under this Part.
TRADE MARKS ACT 1955 - PART X PART X - ASSIGNMENT OF TRADE MARKS
TRADE MARKS ACT 1955 - SECT 82 Assignment and transmission of trade marks
82. (1) Subject to this section, a registered trade mark may be assig
transmitted with or without the goodwill of the business concerned in t
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goods or services in respect of which the trade mark is registered or o
of those goods or services.
(2) Subject to the next 3 succeeding subsections, an assignment of a
registered trade mark without goodwill, whether before or after the
commencement of this Act, is invalid if:
(a) the trade mark was not at any time in use in good faith in Austra
the assignor or his predecessor in title; or
(b) a substantially identical or deceptively similar trade mark conti
be used by the assignor, after the assignment, in relation to other goo
services, where there exists a connexion in the course of trade between
goods or services and the assignor and where those goods or services ar
the same description as those in respect of which the trade mark has be
assigned, or of such a description that the public is likely to be dece
the use of the trade mark by the assignor and assignee upon their respe
goods or services.
(3) Paragraph (a) of the last preceding subsection does not apply whe
(a) the trade mark was registered with the intention that it should b
assigned to a body corporate to be formed and the trade mark has been s
assigned; or
(b) the trade mark was registered with the intention that a person sh
permitted to use it as a registered user and a registered user has been
registered in respect of the trade mark within 6 months after the regis
of the trade mark and has used the trade mark within that period.
(4) An assignment of a trade mark is not invalid if, at the date of t
institution of the proceedings in which the validity of the assignment
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called in question, the trade mark has come to denote to the public a
connexion in the course of trade between the goods or services and the
assignee to the exclusion of all other persons, or, if the registration
limited to a territory, to the exclusion of all other persons within th
territory.
(5) An assignment of a trade mark shall not be held to be invalid exc
proceedings instituted within 3 years after the registration of the
assignment.
(6) If goods bearing a registered trade mark are purchased or acquire
person, the sale of or other dealing in those goods by that person, or
person claiming under or through him, is not an infringement of the tra
by reason only of the trade mark having been assigned by the registered
proprietor to some other person after the purchase or acquisition of th
goods.
(7) All rights subsisting in a trade mark (being a registered trade m
whether under this Act or otherwise, shall be deemed to be assigned upo
registration of the assignment of the trade mark.
TRADE MARKS ACT 1955 - PART XI PART XI - CERTIFICATION TRADE MARKS
TRADE MARKS ACT 1955 - SECT 83
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Certification trade marks
83. (1) Where a mark is adapted in relation to goods or services to
distinguish in the course of trade goods or services, as the case may b
certified by a person, or by another person authorized by the first-men
person, in respect of quality, accuracy, or other characteristic, inclu
the case of goods, origin, material or mode of manufacture, from goods
services, as the case may be, not so certified, the mark may, upon the
application of the first-mentioned person, be registered in Part C of t
Register, in the name of the applicant as proprietor, as a certificatio
mark in respect of those goods or services.
(2) A mark is not so registrable upon the application of a person who
carries on a trade in goods of the kind certified or a trade of the pro
of services of the kind certified.
(3) In determining whether a mark is adapted so to distinguish in rel
to goods or services, regard may be had to the extent to which:
(a) the mark is inherently adapted so to distinguish; and
(b) by reason of the use of the mark or of any other circumstances, t
has become adapted so to distinguish.
TRADE MARKS ACT 1955 - SECT 84 Rights given by registration
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84. (1) Subject to this Act, the registration of a certification trad
in Part C of the Register, if valid, gives to the registered proprietor
right to the exclusive use of the mark in relation to the goods or serv
respect of which the mark is registered and to obtain relief in respect
infringement of the mark in the manner provided by this Act.
(2) The right to the exclusive use of a certification trade mark give
registration is subject to any conditions or limitations entered in the
Register and is not infringed by the use of the mark in relation to goo
be sold or otherwise traded in in a place, in relation to goods to be e
to a market, in relation to services to be provided in a place, or in a
other circumstances, to which, having regard to those conditions or
limitations, the registration does not extend.
(3) The right to the exclusive use of a certification trade mark give
registration is not infringed by the use of the mark by a person in rel
to goods or services certified by the registered proprietor of the
certification trade mark if:
(a) in the case of goods, as to those goods or a bulk of which they f
part, the registered proprietor, or another person in accordance with h
authority under the rules governing the use of the mark, has applied th
and has not subsequently removed or obliterated it; or
(b) the registered proprietor has expressly or impliedly consented to
use of the mark.
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(4) The last preceding subsection does not have effect in the case of
consisting of the application of a certification trade mark to goods or
services, notwithstanding that they are such goods or services as are
mentioned in that subsection, if the application of the mark is contrar
the rules governing the use of the mark.
TRADE MARKS ACT 1955 - SECT 85 Rules governing the use of certification trade marks
85. (1) An application for the registration of a mark as a certificat
trade mark under this Part shall be accompanied by draft rules for gove
the use of the mark.
(2) The rules shall include provisions as to the cases in which the g
services are to be certified and use of the certification trade mark
authorized and may contain any other provisions which the Registrar req
or permits to be inserted in the rules (including provisions referring
right of appeal to the Registrar against a refusal to certify goods or
services or to authorize the use of the mark in accordance with the rul
TRADE MARKS ACT 1955 - SECT 86 Matters to be considered before acceptance
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86. (1) Before accepting an application under this Part, the Registra
consider:
(a) whether the applicant or person authorized by him is competent to
certify the goods or services in respect of which the mark is to be
registered;
(b) whether the draft rules are satisfactory; and
(c) whether the registration applied for would be to the public advan
(2) Before accepting the application, the Registrar may require the
applicant to make such amendments or modifications of the draft rules a
thinks proper.
(3) An appeal lies to the Federal Court from a decision of the Regist
under the last preceding subsection.
TRADE MARKS ACT 1955 - SECT 87 Alteration of rules
87. (1) The rules governing the use of a certification trade mark may
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the application of the registered proprietor, be altered by the Registr
(2) An application under the last preceding subsection shall be adver
as prescribed and is subject to opposition as prescribed.
TRADE MARKS ACT 1955 - SECT 88 Rectification of Register
88. (1) The power to order the rectification of the Register conferre
section 22 extends, in relation to a certification trade mark, to
rectification on the ground:
(a) that the registered proprietor or person authorized by him is no
competent, in relation to any of the goods or services in respect of wh
mark is registered, to certify those goods or services;
(b) that it is no longer to the public advantage that the mark should
registered as a certification trade mark;
(c) that the registered proprietor has failed to observe a provision
rules governing the use of the mark which he is required to observe; or
(d) that it is necessary, for the public advantage, that if the mark
registered as a certification trade mark, the rules governing the use o
mark should be varied.
(2) A prescribed court may, on the application of a person aggrieved
the Registrar, make such order as it thinks fit for varying the rules
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governing the use of a certification trade mark.
(3) Notice of an application to a prescribed court under this section
than an application by the Registrar) shall be given to the Registrar,
appear and be heard and shall appear if so directed by the prescribed c
(4) An office copy of an order under this section shall be served on
Registrar, who shall, upon receipt of the order, take such steps as are
necessary to give effect to the order.
TRADE MARKS ACT 1955 - SECT 89 Certification trade marks not assignable
89. A certification trade mark may be assigned or transmitted with th
consent of the Registrar.
TRADE MARKS ACT 1955 - SECT 90 Transitional provisions
90. (1) The repealed Acts apply, notwithstanding their repeal, to and
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relation to applications for the registration of standardization trade
made before the commencement of this Act.
(2) A mark registered on such an application shall be registered as a
certification trade mark in Part C of the Register and this Act applies
in relation to a certification trade mark so registered.
(3) The Registrar may require an applicant under an application refer
in subsection (1) to lodge at the Trade Marks Office such rules as the
Registrar permits or requires governing the use of the mark.
(4) Marks which, immediately before the commencement of this Act, wer
registered under the repealed Acts as standardization trade marks shall
deemed to be registered as certification trade marks in Part C of the
Register.
(5) The registered proprietor of such a mark may lodge, or may be req
by the Registrar as a condition of the continuance of the registration
lodge, at the Trade Marks Office such rules as the Registrar permits or
requires governing the use of the mark.
(6) Where no rules have been lodged at the Trade Marks Office in resp
a certification trade mark registered under this section, this Part has
in relation to that mark as if references in this Part to rules had bee
omitted.
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TRADE MARKS ACT 1955 - SECT 91 Rules to be open for inspection
91. Rules governing the use of certification trade marks shall be ope
inspection in like manner as the Register.
TRADE MARKS ACT 1955 - SECT 92 Application of Act to certification trade mark
92. The provisions of this Act (other than sections 23, 24, 25, 26, 3
and 38, subsection (1) of section 40, sections 45, 58, 60 and 61, subse
(2) of section 62, section 63 and Parts IX, X and XII) apply in relatio
the registration of a mark as a certification trade mark under this Par
to a mark registered as a certification trade mark.
TRADE MARKS ACT 1955 - PART XII PART XII - DEFENSIVE TRADE MARKS
TRADE MARKS ACT 1955 - SECT 93
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Defensive registration of well-known trade marks
93. (1) Where a trade mark registered in Part A of the Register has b
used to such an extent in relation to all or any of the goods or servic
respect of which it is registered that the use of the trade mark in rel
to other goods or services would be likely to be taken as indicating a
connexion between those other goods or services and the registered prop
the trade mark may, upon the application of the registered proprietor o
trade mark, be registered as a defensive trade mark in Part D of the Re
in the name of the applicant as proprietor, in respect of all or any of
other goods or services notwithstanding that he does not use or propose
the trade mark in relation to those other goods or services and
notwithstanding anything in section 23.
(2) A trade mark registered as a defensive trade mark in respect of g
services is not liable to be removed from the Register under section 23
respect of those goods or services.
(3) A trade mark may be registered as a defensive trade mark in respe
goods or services notwithstanding that the trade mark is already regist
the name of the applicant in respect of those goods or services otherwi
as a defensive trade mark or may be registered in respect of goods or s
otherwise than as a defensive trade mark notwithstanding that the trade
is already registered in the name of the applicant in respect of those
or services as a defensive trade mark.
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(4) A trade mark registered as a defensive trade mark and that trade
otherwise registered in the name of the same person shall, notwithstand
that the respective registrations are not registrations in respect of t
goods or services, be deemed to be, and shall be registered as, associa
trade marks.
TRADE MARKS ACT 1955 - SECT 94 Rectification of Register
94. (1) A prescribed court may, on the application of a person aggrie
of the Registrar, cancel the registration of a defensive trade mark in
of all or any of the goods or services in respect of which it is regist
on the ground that the requirements of subsection (1) of the last prece
section are no longer satisfied.
(2) Notice of an application to a prescribed court under this section
than an application by the Registrar) shall be given to the Registrar,
appear and be heard and shall appear if so directed by the prescribed c
(3) An office copy of an order under this section shall be served on
Registrar, who shall, upon receipt of the order, take such steps as are
necessary to give effect to the order.
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(4) The powers conferred on a prescribed court by this section are in
addition to the powers conferred by section 22.
TRADE MARKS ACT 1955 - SECT 95 Cancellation by Registrar
95. The Registrar may cancel the registration of a defensive trade ma
where there is no longer a registration in the name of the registered
proprietor of the defensive trade mark otherwise than as a defensive tr
mark.
TRADE MARKS ACT 1955 - SECT 96 Rights given by registration
96. Subject to this Act, the registration of a defensive trade mark i
D of the Register, if valid, gives to the registered proprietor of the
the right to obtain relief in respect of infringement of the mark in th
manner provided by this Act.
TRADE MARKS ACT 1955 - SECT 97
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Application of Act
97. Subject to this Part, the provisions of this Act apply in relatio
the registration of a trade mark as a defensive trade mark and to a tra
registered as a defensive trade mark but it is not necessary for the
registered proprietor of a defensive trade mark to prove use of the tra
for the purpose of obtaining renewal of the registration.
TRADE MARKS ACT 1955 - PART XIII PART XIII - PROTECTION OF TRADE MARKS
TRADE MARKS ACT 1955 - SECT 98 Forgery etc. of trade marks
98. (1) A person shall not:
(a) forge a registered trade mark;
(b) falsely apply a registered trade mark to goods or services;
(c) make a die, block, machine or instrument for the purpose of forgi
of being used for forging, a registered trade mark; or
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(d) dispose of or have in his possession a die, block, machine or ins
for the purpose of forging, or of being used for forging, a registered
mark.
Penalty: Imprisonment for 2 years.
TRADE MARKS ACT 1955 - SECT 99 Selling etc. goods with false marks
99. (1) A person must not:
(a) sell; or
(b) expose for sale; or
(c) have in his or her possession for sale or for the purpose of trad
manufacture;
goods, if the person knows that the goods are goods to which a forgery
registered trade mark is applied, or to which a registered trade mark i
falsely applied.
(2) A contravention by a person of subsection (1) is an offence punis
on conviction by a fine not exceeding $500 for each item of goods to wh
offence relates or imprisonment for a period not exceeding 2 years, or
(3) If a fine is imposed on a person because of subsection (2) in rel
to an offence committed by the person and there are 2 or more items of
to which the offence relates, the fine imposed in respect of that offen
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not exceed $50,000.
(4) For the purposes of establishing a contravention of subsection (1
having regard to:
(a) a person's abilities, experience, qualifications and other attrib
and
(b) all the circumstances surrounding the alleged contravention of th
subsection;
the person ought reasonably to have known that the goods are goods of a
referred to in that subsection, the person is taken to have known that
goods are goods of that kind.
TRADE MARKS ACT 1955 - SECT 100 Importing goods with false marks
100. (1) A person must not import into Australia goods for the purpos
trade or manufacture if the person knows that the goods are goods to wh
(a) a forged registered trade mark is applied; or
(b) a registered trade mark is falsely applied.
(2) A contravention by a person of subsection (1) is an offence punis
on conviction by a fine not exceeding $500 for each item of goods to wh
offence relates or imprisonment for a period not exceeding 2 years, or
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(3) If a fine is imposed on a person because of subsection (2) in rel
to an offence committed by the person and there are 2 or more items of
to which the offence relates, the fine imposed in respect of that offen
not exceed $50,000.
(4) For the purposes of establishing a contravention of subsection (1
having regard to:
(a) a person's abilities, experience, qualifications and other attrib
and
(b) all the circumstances surrounding the alleged contravention of th
subsection;
the person ought reasonably to have known that the goods are goods of a
referred to in that subsection, the person is taken to have known that
goods are goods of that kind.
TRADE MARKS ACT 1955 - SECT 102 Aiding and abetting offences
102. (1) A person who aids, abets, counsels or procures, or is in any
directly or indirectly, knowingly concerned in, or party to, the doing
act outside Australia which, if it were done in Australia, would be an
against this Act, shall be deemed to have committed that offence and is
punishable accordingly.
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(2) Subsection (1) does not affect the operation of section 5 of the
Act 1914.
TRADE MARKS ACT 1955 - SECT 103 Importation of goods infringing Australian trade marks
103.*2* (1) In this section:
"objector", in relation to goods imported into Australia, means:
(a) if the registered proprietor of the relevant trade mark had, befo
importation of the goods, given a notice of the kind referred to in par
(3) (b) in relation to that trade mark and had not, before the importat
the goods, given notice in writing to the Comptroller-General of Custom
revoking that notice - the registered proprietor; or
(b) in a case to which paragraph (a) does not apply - a registered us
the relevant trade mark, who had, before the importation of the goods,
notice of the kind referred to in paragraph (3) (b) in relation to that
mark and had not, before the importation of the goods, given notice in
to the Comptroller-General revoking that notice;
"owner", in relation to goods imported into Australia, means the pers
whose name appears on the entry made in relation to the goods under sec
of the Customs Act 1901 as being the owner of the goods.
(2) References in this section to the owner of goods shall, where a n
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under subsection (7) has been given to a person who acted as agent of t
owner in relation to the importation of the goods, be read as including
references to the person to whom that notice was given.
(3) Where:
(a) goods manufactured outside Australia are imported into Australia
are, in accordance with the Customs Act 1901, subject to the control of
Customs;
(b) a notice in writing objecting to the importation of goods infring
trade mark registered in respect of goods (in this section referred to
"relevant trade mark") has been given to the Comptroller-General of Cus
after the commencement of the Trade Marks Amendment Act 1981 and before
importation of the goods referred to in paragraph (a), being a notice t
not been revoked, by:
(i) the registered proprietor of the relevant trade mark; or
(ii) if a registered user of the relevant trade mark satisfies the
Comptroller-General that he is, by virtue of subsection (5), entitled t
such a notice - that registered user;
(c) the goods referred to in paragraph (a) have applied to them a mar
in the opinion of the Comptroller-General, is substantially identical w
deceptively similar to, the relevant trade mark; and
(d) the goods referred to in paragraph (a) are goods in respect of wh
relevant trade mark is registered;
the Comptroller-General shall, unless he is satisfied that there are no
reasonable grounds for believing that the importation of the goods cons
an infringement of the relevant trade mark, seize the goods.
(4) The Comptroller-General of Customs may refuse to take any action
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subsection (3) in relation to goods unless he has been given by the obj
or by one or more of the objectors, security to the satisfaction of the
Comptroller-General for reimbursing the Commonwealth in respect of expe
that may be incurred by the Commonwealth by virtue of action taken by t
Comptroller-General under this section in relation to the goods.
(5) Subject to any agreement between a registered user of a trade mar
the registered proprietor of that trade mark, that registered user is e
to call upon the registered proprietor to give a notice of the kind ref
to in paragraph (3) (b) in relation to that trade mark and, if the regi
proprietor refuses or neglects to do so within 2 months of being so cal
upon, the registered user is entitled to give such a notice.
(6) Goods seized under subsection (3) shall be taken to such place of
security as the Comptroller-General of Customs directs.
(7) Where goods have been seized under subsection (3), the
Comptroller-General of Customs shall, as soon as practicable after the
were seized:
(a) give to the owner of the goods or a person who acted as agent of
owner in relation to the importation of the goods, either personally or
post, a notice in writing identifying the goods and stating that the go
identified have been seized under subsection (3); and
(b) give to the objector or to each objector, either personally or by
a notice in writing:
(i) identifying the goods and stating that the goods so identified
have been seized under subsection (3); and
(ii) stating that the goods will be released to the owner unless an
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action or proceeding for infringement of the relevant trade mark in res
the goods is instituted by an objector before the expiration of the per
one month after the giving of the notice and the objector gives notice
writing to the Comptroller-General before the expiration of that period
stating that that action or proceeding has been instituted.
(8) Where:
(a) goods have been seized under subsection (3);
(b) the Comptroller-General of Customs is satisfied that, having rega
information that has come to his knowledge after the goods were so seiz
there are no reasonable grounds for believing that the importation of t
goods constituted an infringement of the relevant trade mark; and
(c) no action or proceeding for infringement of the relevant trade ma
been instituted in respect of the goods by an objector;
the Comptroller-General may release the goods to the owner.
(9) The owner of goods seized under subsection (3) may, by notice in
given to the Comptroller-General of Customs at any time before an actio
proceeding for infringement of the relevant trade mark is instituted in
respect of the goods by an objector, consent to the goods being forfeit
the Commonwealth and, where the owner gives such a notice, the goods ar
forfeited to the Commonwealth and may be disposed of in such manner as
prescribed or as the Comptroller-General directs.
(10) Where:
(a) goods have been seized under subsection (3);
(b) the objector or each objector gives notice in writing to the
Comptroller-General of Customs stating that that objector consents to t
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release of the goods; and
(c) no action or proceeding for infringement of the relevant trade ma
been instituted by an objector in respect of the goods;
the Comptroller-General shall release the goods to the owner.
(11) Subject to the regulations, where goods have been seized under
subsection (3), the Comptroller-General of Customs may, at any time bef
action or proceeding for infringement of the relevant trade mark is ins
by an objector in respect of the goods, if in his opinion any possible
infringement of the relevant trade mark did not occur either knowingly
negligently, release the goods to the owner upon security being given t
satisfaction of the Comptroller-General:
(a) that the improper marks will be effectually removed from the good
(b) that such additions will be made as will render unobjectionable a
applied to the goods; or
(c) that the goods will be forthwith exported.
(12) The Comptroller-General of Customs shall release goods seized un
subsection (3) (not being goods forfeited to the Commonwealth under sub
(9)) to the owner on the expiration of the period of one month after th
giving of a notice under subsection (7) to the objector or the objector
unless an objector has, before the expiration of that period:
(a) instituted an action or proceeding for infringement of the releva
trade mark in respect of the goods; and
(b) given notice in writing to the Comptroller-General stating that t
action or proceeding has been instituted.
(13) Where:
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(a) goods have been seized under subsection (3); and
(b) an objector is a registered user of the relevant trade mark;
nothing in section 78 prevents the institution of an action or proceedi
infringement of the relevant trade mark in respect of the goods by that
registered user, being an action or proceeding instituted before the
expiration of the period referred to in subsection (12).
(14) Where:
(a) an action or proceeding for infringement of a trade mark has been
instituted in respect of goods seized under subsection (3); and
(b) at any time after the expiration of 3 weeks after the date on whi
action or proceeding was instituted there is not in force an order of t
court in which the action or proceeding was instituted restraining the
of the goods;
the Comptroller-General of Customs shall release the goods to the owner
(15) Where:
(a) an action or proceeding for infringement of a trade mark has been
instituted in respect of goods seized under subsection (3); and
(b) a person applies to the court in which the action or proceeding w
instituted to be joined as a defendant to the action or proceeding;
the court may permit that person to be joined as a defendant to the act
proceeding.
(16) Where, in an action or proceeding for infringement of a trade ma
respect of goods seized under subsection (3), a court makes an order in
relation to the release of the goods, the Comptroller-General of Custom
comply with the terms of that order.
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(17) Where:
(a) in an action or proceeding for infringement of a trade mark insti
by an objector in respect of goods seized under subsection (3), a court
determines that the importation of the goods did not constitute an
infringement of the relevant trade mark; and
(b) the defendant satisfies the court that he has suffered loss or da
reason of the goods being detained;
the court may order the objector to pay to the defendant such amount as
court determines as compensation for that loss or damage, other than an
of that loss or damage that is attributable to any period before the da
which that action or proceeding was instituted.
(18) Where the Comptroller-General of Customs has seized goods under
subsection (3), the Comptroller-General shall not release or dispose of
goods under this section, and shall not take any action in relation to
goods in pursuance of an order of a court made in an action or proceedi
infringement of a trade mark instituted in respect of the goods, if the
Comptroller-General is required or permitted, under any other law of th
Commonwealth, to retain control of the goods.
(19) Without limiting the relief that a court may grant apart from th
section, where an objector has instituted an action or proceeding for
infringement of a trade mark in respect of goods seized under subsectio
the court in which the action or proceeding was instituted:
(a) may, at any time, if it thinks just, make an order, subject to su
terms (if any) as the court thinks fit, requiring the goods to be relea
the owner; or
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(b) may order that the goods be forfeited to the Commonwealth.
(20) Where a court orders that goods be forfeited to the Commonwealth
goods shall be disposed of in such manner as is prescribed or as the
Comptroller-General of Customs directs.
(21) A court in which an action or proceeding is instituted in respec
goods seized under subsection (3) shall permit the Comptroller-General
Customs to appear and be heard.
(22) Where security given under subsection (4) for reimbursing the
Commonwealth in respect of expenses that may be incurred by the Commonw
by virtue of action taken by the Comptroller-General of Customs under t
section in relation to goods seized under subsection (3) is insufficien
meet those expenses, the amount of the excess is a debt due by the obje
or, if there is more than one objector, jointly and severally by the
objectors, to the Commonwealth and may be recovered by action taken in
of competent jurisdiction.
(23) Sections 130 and 131 do not apply in relation to this section.
(24) An action or proceeding does not lie against the Commonwealth in
respect of any loss or damage suffered by a person by reason of:
(a) goods being seized or not being seized under this section; or
(b) the release of goods seized under this section.
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(25) The Comptroller-General of Customs may, either generally or as
otherwise provided by the instrument of delegation, by writing signed b
delegate to a person who is an officer for the purposes of the Customs
1901 any of his powers under this section, other than this power of
delegation.
(26) A power so delegated, when exercised by the delegate, shall, for
purposes of this section, be deemed to have been exercised by the
Comptroller-General of Customs.
(27) A delegation under subsection (25) does not prevent the exercise
power by the Comptroller-General of Customs.
*2* S. 103 - Section 103 of the Trade Marks Act 1955 was repealed and
substituted by the Trade Marks Amendment Act 1981, subsection 5 (6) of
provides as follows:
"(6) Section 103 of the Principal Act continues to apply in relation
goods imported into Australia before the commencement of this Act, not
goods in relation to which section 103 of the Principal Act as amended
Act applies by virtue of subsection (2)."
Section 103 of the Principal Act, which was continued in force by sub
5 (6) of the Trade Marks Amendment Act 1981 provided as follows:
"103. (1) Goods manufactured outside Australia and having applied to
trade mark, being, or being substantially identical with, a registered
mark the registered proprietor or a registered user of which is a
manufacturer, dealer, trader or person providing a service in Australia
if the registered proprietor or registered user notifies the
Comptroller-General of Customs in writing that he objects to the import
of the goods, prohibited to be imported and, if imported, may be seized
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forfeited to the Commonwealth.
"(2)(a) Subject to the regulations, the Comptroller-General of Custom
on appeal from him the Minister of State for Business and Consumer Affa
may, if in his opinion the contravention has not occurred either knowin
negligently, permit goods which are liable to be or have been seized as
forfeited under this section to be delivered to the owner or
importer upon security being given to the satisfaction of the
Comptroller-General:
(a) that the improper marks will be effectually removed from the good
(b) that such additions will be made as will render unobjectionable a
applied to the goods; or
(c) that the goods will be forthwith exported.
"(3) The provisions of the Customs Act 1901-1954 apply to the seizure
forfeiture of goods under this section as if the goods were prohibited
under that Act.
"(4) Before taking action under this section or permitting an officer
take action under this section, the Comptroller-General of Customs may
the person requesting the action to give security in accordance with th
regulations.
"(5)(a) Where an application has been made to the Administrative Appe
Tribunal, whether before or after the commencement of this subsection,
review of a decision of the Comptroller-General of Customs made under
subsection (2), a person is not entitled to appeal to the Minister for
Business and Consumer Affairs against that decision."
(a) Section 103, as continued in force, was amended by section 280 an
Schedule 12 of the Statute Law (Miscellaneous Amendments) Act (No. 2) 1
The provisions of Schedule 12 applicable to section 103 provide as foll
"Subsection 103 (2) as continued in force by subsection 5 (6) of the
Marks Amendment Act 1981
Omit 'of State for Business and Consumer Affairs', substitute 'for In
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and Commerce'.
Subsection 103 (5) as continued in force by subsection 5 (6) of the T
Marks Amendment Act 1981
Omit 'Business and Consumer Affairs' substitute 'Industry and Commerc
TRADE MARKS ACT 1955 - SECT 104 Power to require information in respect of imported goods bearing fraudulent marks
104. (1) Where goods which are liable to be seized under section 103
imported into Australia and the Comptroller-General of Customs is, upon
representations made to him, satisfied that the use of the trade mark i
fraudulent, an officer of Customs may require the importer of the goods
his agent, to produce any documents in his possession relating to the g
and to furnish information as to the name and address of the person by
the goods were consigned to Australia and the name and address of the p
to whom the goods were sent in Australia.
(2) The importer or his agent shall, within 14 days, comply with the
requirement.
Penalty:
(a) in the case of a natural person - $1,000 or imprisonment for 6 mo
or both; or
(b) in the case of a body corporate - $5,000.
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(3) Information obtained from the importer of the goods or his agent
this section, or from any other source, may be communicated by the
Comptroller-General to the registered proprietor or registered user of
trade mark which is alleged to have been used or infringed.
TRADE MARKS ACT 1955 - SECT 105 Modification in relation to Territories
105. The regulations may provide for the modification or adaptation o
provisions of the last 2 preceding sections in relation to Norfolk Isla
TRADE MARKS ACT 1955 - SECT 106 What taken to be forgery of trade mark
106. (1) A person is taken to forge a registered trade mark:
(a) if the person knows that the trade mark is a registered trade mar
(b) the person:
(i) without the agreement of the registered proprietor of the trade
mark or of a registered user of the trade mark, or the authority of thi
makes the trade mark, the trade mark with additions or alterations not
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substantially affecting its identity or a mark substantially identical
it; or
(ii) falsifies the registered trade mark, whether by alteration,
addition, effacement or otherwise.
(2) In a prosecution for forging a trade mark, the burden of proving
assent of the registered proprietor or registered user lies on the defe
(3) For the purposes of establishing a contravention of subsection (1
having regard to:
(a) a person's abilities, experience, qualifications and other attrib
and
(b) all of the circumstances surrounding the alleged contravention of
subsection;
the person ought reasonably to have known that the trade mark is a regi
trade mark, the person is taken to have known that the trade mark is a
registered trade mark.
TRADE MARKS ACT 1955 - SECT 107 When trade mark deemed applied
107. (1) A trade mark shall be deemed to be applied to goods if it is
in, impressed on, worked into, or annexed or affixed to, the goods.
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(2) A trade mark shall be deemed to be applied to goods if:
(a) it is applied to the goods themselves; or
(b) it is applied to a covering, label, reel or thing in or with whic
goods are sold or exposed or had in possession for a purpose of trade o
manufacture.
(2A) A trade mark shall be deemed to be applied to goods or services
(a) it is used in a manner likely to lead to the belief that it refer
describes or designates the goods or services; or
(b) it is used in:
(i) a sign or advertisement, including a televised advertisement; o
(ii) an invoice, wine list, catalogue, business letter, business
paper, price list or other commercial document;
and goods are delivered, or services provided, as the case may be, to a
in pursuance of a request or order made by reference to the trade mark
used.
(3) For the purposes of this section, "covering" includes a stopper,
bottle, vessel, box, capsule, case, frame or wrapper, and "label" inclu
band or ticket.
(4) A registered trade mark shall be deemed to be falsely applied to
or services if, without the assent of the registered proprietor of the
mark or of a registered user of the trade mark, or the authority of thi
the trade mark or a mark substantially identical with it is applied to
goods or services.
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(5) In a prosecution for falsely applying a registered trade mark to
or services, the burden of proving the assent of the registered proprie
a registered user lies on the defendant.
TRADE MARKS ACT 1955 - SECT 107A Forfeiture orders under the Proceeds of Crime Act 1987
107A. If a person other than the Director of Public Prosecutions has
instituted proceedings for trial of another person in respect of an ind
offence against this Part, Division 2 of Part 2 of the Proceeds of Crim
1987 applies as if a reference in that Division to the Director of Publ
Prosecutions includes a reference to the first-mentioned person.
TRADE MARKS ACT 1955 - PART XIV PART XIV - INTERNATIONAL ARRANGEMENTS
TRADE MARKS ACT 1955 - SECT 108 Convention countries
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108. (1) The Governor-General may make regulations declaring that a c
specified in the regulations is a Convention country for the purposes o
Act.
(2) The Governor-General may make regulations declaring a part of the
Queen's dominions which has made satisfactory provision for the protect
that part, of trade marks to be a Convention country for the purposes o
Act.
(3) Where the Governor-General makes regulations declaring that an
application made in a foreign country for the registration of a trade m
(a) is, in accordance with the terms of a treaty subsisting between 2
more Convention countries, equivalent to an application made in 1 of th
Convention countries, the first-mentioned application shall, for the pu
of this Act, be deemed to have been made in that Convention country; or
(b) is, in accordance with the law of a Convention country, equivalen
application made in that Convention country, the first-mentioned applic
shall, for the purposes of this Act, be deemed to have been made in tha
Convention country.
TRADE MARKS ACT 1955 - SECT 109 Applications under International Conventions
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109. (1) Where a person has made an application for the registration
trade mark in a Convention country and that person, or his legal
representative or assignee, makes an application for the registration o
trade mark within 6 months after the date on which the application was
the Convention country, the trade mark shall, if registered, be registe
of the date on which the application was made in the Convention country
that date shall, subject to subsection (3), be deemed for the purposes
Act to be the date of registration.
(2) Where applications have been made for the registration of a trade
in 2 or more Convention countries, the period of 6 months referred to i
last preceding subsection shall be reckoned from the date on which the
or earliest of those applications was made.
(3) For the purposes of determining the period of registration of the
mark, the date of registration of the trade mark shall be deemed to be
date on which the application for registration under this Act was made.
TRADE MARKS ACT 1955 - SECT 110 Manner of application under this Part
110. An application for the registration of a trade mark under this P
shall be made and dealt with in the same manner as an application other
than under this Part.
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TRADE MARKS ACT 1955 - PART XV PART XV - JURISDICTION AND POWERS OF COURTS
TRADE MARKS ACT 1955 - SECT 111 Interpretation
111. In this Part, "decision", in relation to the Registrar, includes
(a) an order of the Registrar;
(b) a refusal by the Registrar, under section 44, to accept an applic
and
(c) an acceptance, subject to conditions or limitations, by the Regis
under section 44, of an application.
TRADE MARKS ACT 1955 - SECT 112 Jurisdiction of prescribed courts
112. (1) The Federal Court has jurisdiction with respect to matters a
under this Act.
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(1A) The jurisdiction of the Federal Court to hear and determine appe
from decisions, directions or orders of the Registrar is exclusive of t
jurisdiction of any other court, other than the jurisdiction of the Hig
under section 75 of the Constitution.
(1B) Subject to subsection (2), each prescribed court (other than the
Federal Court) has jurisdiction with respect to matters arising under t
in respect of which actions or proceedings may, under a provision of th
be instituted in a prescribed court.
(1C) A prosecution for an offence against this Act shall not be insti
in the Federal Court.
(2) The jurisdiction conferred by subsection (1B) on the Supreme Cour
Territory:
(a) to the extent that it relates to an action or proceeding for the
infringement of a trade mark, an action under section 124 or a matter a
under this Act that may be heard and determined together with such an a
or proceeding - is conferred to the extent that the Constitution permit
(b) in any other case - is conferred only in relation to an action or
proceeding instituted by a natural person who is resident in the Territ
a corporation that has its principal place of business in the Territory
the time of the institution of the action or proceeding.
(3) The jurisdiction of a prescribed court under this section shall b
exercised by a single Judge.
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(4) The regulations may make provision for and in relation to the pra
and procedure of prescribed courts in an action or proceeding under thi
including provision prescribing the time within which any action or pro
may be instituted or any other act or thing may be done, and providing
extension of any such time.
TRADE MARKS ACT 1955 - SECT 113 Transfer of proceedings
113. (1) A prescribed court in which an action or proceeding has been
instituted under this Act may, if the court thinks fit, upon applicatio
party made at any stage in the action or proceeding, by order, transfer
action or proceeding to another prescribed court having jurisdiction to
and determine the action or proceeding.
(2) Where an action or proceeding is transferred from a court in purs
of this section:
(a) all documents filed of record in that court shall be transmitted
Registrar or other proper officer of that court to the Registrar or oth
proper officer of the court to which the action or proceeding is transf
and
(b) the court to which the action or proceeding is transferred shall
as if the action or proceeding had been originally instituted in that c
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and as if the same proceedings had been taken in that court as had been
in the court from which the action or proceeding was transferred.
TRADE MARKS ACT 1955 - SECT 114 Appeals from prescribed courts
114. (1) An appeal lies to the Federal Court from a judgment or order
(a) another prescribed court exercising jurisdiction under this Act;
(b) any other court in an action or proceeding referred to in section
124.
(2) Except with the leave of the Federal Court, an appeal does not li
the Full Court of the Federal Court from a judgment or order of a singl
of the Federal Court in the exercise of its jurisdiction to hear and de
appeals from decisions, directions or orders of the Registrar.
(3) An appeal lies to the High Court, with special leave of the High
from a judgment or order referred to in subsection (1).
(4) Except as provided in the foregoing provisions of this section, n
appeal lies from a judgment or order referred to in subsection (1).
TRADE MARKS ACT 1955 - SECT 115
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Intervention by Registrar
115. The Federal Court may grant to the Registrar leave to intervene
appeal to the court from a decision, direction or order of the Registra
TRADE MARKS ACT 1955 - SECT 115A Powers of prescribed courts
115A. Upon the hearing of an appeal from a decision or direction of t
Registrar, the Federal Court may:
(a) admit further evidence, either orally or upon affidavit or otherw
(b) permit the examination and cross-examination of witnesses, includ
witnesses who gave evidence orally or upon affidavit or otherwise at th
hearing before the Registrar;
(c) order an issue of fact to be tried in such manner as it directs;
(d) affirm, reverse or modify the decision or direction appealed from
(e) give such judgment, or make such order, as in all circumstances i
thinks fit, or refuse to make an order; and
(f) order a party to pay costs to another party.
TRADE MARKS ACT 1955 - PART XVA PART XVA - APPLICATION FOR REVIEW OF CERTAIN DECISIONS BY
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ADMINISTRATIVE APPEALS TRIBUNAL
TRADE MARKS ACT 1955 - SECT 116 Application for review
116. An application may be made to the Administrative Appeals Tribuna
review of any of the following decisions made on or after the commencem
this Part:
(a) a decision of the Registrar under subsection (2) of section 70,
subsection (1) of section 71 or subsection (1) of section 127; or
(b) a decision of the Registrar under subsection (1) of section 131 n
extend the time for doing an act or taking a step.
TRADE MARKS ACT 1955 - PART XVI PART XVI - MISCELLANEOUS
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TRADE MARKS ACT 1955 - SECT 117 Use of trade mark for export trade
117. (1) The application in Australia of a trade mark to goods to be
exported from Australia and any other act done in Australia in relation
goods to be so exported which, if done in relation to goods to be sold
otherwise traded in within Australia, would constitute use of a trade m
Australia, shall, for the purposes of this Act, be deemed to constitute
the trade mark in relation to those goods.
(2) The last preceding subsection shall be deemed to have had effect
relation to an act done before the date of the commencement of this Act
has effect in relation to an act done after that date, but does not aff
determination of a court which has been made before that date or the
determination of an appeal from a determination so made.
TRADE MARKS ACT 1955 - SECT 118 Trade mark not to be deemed to be deceptive or confusing in certain cas
118. The use of a registered trade mark in relation to goods or servi
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between which and the person using the trade mark a form of connexion i
course of trade subsists shall not be deemed to be likely to cause dece
or confusion on the ground only that the trade mark has been, or is, us
relation to goods or services between which and that person or a predec
in title of that person a different form of connexion in the course of
subsisted or subsists.
TRADE MARKS ACT 1955 - SECT 118A Subsections 99 (1) and 100 (1) may be dealt with summarily in certain circumstances
118A. (1) Despite an offence against subsection 99 (1) or 100 (1) bei
idictable offence, a court of summary jurisdiction may hear and determi
proceedings in respect of such an offence if the court is satisfied tha
proper to do so and the defendant and the prosecutor consent.
(2) If, in accordance with subsection (1), a court of summary jursidi
convicts a person of an offence against subsection 99 (1) or 100 (1), t
penalty that the court may impose is a fine not exceeding $500 for each
of goods to which the offence relates or imprisonment for a period not
exceeding 12 months, or both.
(3) If a fine is imposed on a person because of subsection (2) in rel
to an offence committed by the person and there are 2 or more items of
to which the offence relates, the fine imposed in respect of that offen
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not exceed $10,000.
TRADE MARKS ACT 1955 - SECT 119 Powers of Registrar
119. The Registrar may, for the purposes of this Act:
(a) summon witnesses;
(b) receive evidence on oath, whether orally or otherwise;
(c) require the production of documents or articles; and
(d) award costs against a party to proceedings before him.
TRADE MARKS ACT 1955 - SECT 120 Disobedience to summons an offence
120. (1) A person who has been summoned to appear as a witness before
Registrar shall not, without lawful excuse, and after tender of reasona
expenses, fail to appear in obedience to the summons.
Penalty: $1,000 or imprisonment for 6 months, or both.
(2) A person who has been required by the Registrar to produce a docu
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article shall not, without lawful excuse, and after tender of reasonabl
expenses, fail to produce the document or article.
Penalty for contravention of this subsection:
(a) in the case of a natural person - $1,000 or imprisonment for 6 mo
or both; or
(b) in the case of a body corporate - $5,000.
TRADE MARKS ACT 1955 - SECT 121 Refusal to give evidence an offence
121. A person who appears before the Registrar as a witness shall not
without lawful excuse, refuse to be sworn or to make an affirmation, or
produce documents or articles, or to answer questions, which he is lawf
required to produce or answer.
Penalty: $1,000 or imprisonment for 6 months, or both.
TRADE MARKS ACT 1955 - SECT 122 Recovery of costs
122. Costs awarded by the Registrar may, in default of payment, be re
in a court of competent jurisdiction as a debt due by the person agains
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the costs were awarded to the person in whose favour they were awarded.
TRADE MARKS ACT 1955 - SECT 123 Certificate of validity
123. In an action or proceeding in which the validity of the registra
a trade mark is unsuccessfully disputed, the court may certify that the
validity of the registration of the trade mark came in question and, if
court so certifies, then, in a subsequent action or proceeding in which
validity of the registration of the trade mark is disputed, the registe
proprietor of the trade mark, on obtaining a final order or judgment in
favour, is entitled, unless the court trying the action or proceeding
otherwise directs, to have his full costs, charges and expenses as betw
solicitor and client.
TRADE MARKS ACT 1955 - SECT 124 Groundless threats of legal proceedings
124. (1) Where a person, by means of circulars, advertisements or oth
threatens a person with an action or proceeding for infringement of a t
mark which is registered, or alleged by the first-mentioned person to b
registered, or some other like proceeding, a person aggrieved may, whet
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person making the threats is or is not the registered proprietor or the
registered user of the trade mark, bring an action against the first-me
person and may obtain a declaration to the effect that the threats are
unjustifiable, and an injunction against the continuance of the threats
may recover such damages (if any) as he has sustained, unless the
first-mentioned person satisfies the court that the trade mark is regis
and that the acts in respect of which the proceedings were threatened
constitute, or, if done, would constitute, an infringement of the trade
(2) The last preceding subsection does not apply if the registered
proprietor of the trade mark, or a registered user acting in pursuance
subsection (1) of section 78, with due diligence commences and prosecut
action against the person threatened for infringement of the trade mark
(3) Nothing in this section renders a legal practitioner or a patent
attorney liable to an action under this section in respect of an act do
him in his professional capacity on behalf of a client.
(4) An action under this section may be instituted in a prescribed co
but nothing in this section prevents such an action being instituted in
court that is not a prescribed court.
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TRADE MARKS ACT 1955 - SECT 125 Counter-claim by defendant for infringement
125. The defendant in an action or proceeding under the last precedin
section may apply, by way of counter-claim, for relief to which he woul
entitled in a separate action in respect of an infringement by the plai
of the trade mark to which the threats relate and in that case the prov
of this Act with respect to an action for infringement of a trade mark
mutatis mutandis, applicable in relation to that action.
TRADE MARKS ACT 1955 - SECT 126 Description of trade marks in pleadings
126. In an indictment, information, pleading or proceeding in relatio
registered trade mark, it is not necessary to set out a copy or facsimi
the trade mark or a description of it, but the trade mark may be referr
as a registered trade mark and identified by its registered number.
TRADE MARKS ACT 1955 - SECT 127 Power of amendment
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127. (1) The Registrar may, on such terms as to costs or otherwise as
thinks just:
(a) whether for the purpose of correcting a clerical error or an obvi
mistake or otherwise, permit the amendment of an application for the
registration of a trade mark, a notice of opposition or other document
at the Trade Marks Office; or
(b) for the purpose of correcting a clerical error or an obvious mist
amend the Register or a certificate of registration of a trade mark.
(3) An amendment of an application shall not be permitted under this
if the amendment would substantially affect the identity of the trade m
specified in the application before amendment.
TRADE MARKS ACT 1955 - SECT 128 Exercise of discretionary power by Registrar
128. Where a discretionary power is, by this Act, given to the Regist
shall not exercise that power adversely to a person applying for the ex
of that power without (if so required by that person within such time a
specified by the Registrar) giving to that person an opportunity of bei
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heard.
TRADE MARKS ACT 1955 - SECT 129 Fees
129. (1) There shall be paid to the Registrar such fees as are prescr
(2) Where a fee is payable in respect of the doing of an act by the
Registrar, the Registrar must not do the act until the fee has been pai
(3) Subject to subsection (4), where a fee is payable in respect of t
doing of an act by a person other than the Registrar, or a fee is payab
respect of the lodging of a document, the act is to be regarded as done
the document is to be regarded as lodged, even if the fee is not paid.
(4) Where the Registrar notifies the person concerned, or his or her
in accordance with the regulations, of failure to pay the fee, the act
to be regarded as done, or the document is not to be regarded as lodged
before the day on which the fee is paid.
TRADE MARKS ACT 1955 - SECT 130 Extension of time
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130. Where, by this Act, a time is specified within which an act or t
to be done, the Registrar may, unless otherwise expressly provided, ext
time either before or after its expiration.
TRADE MARKS ACT 1955 - SECT 131 Power to extend times by reason of errors in Trade Marks Office etc.
131. (1) Where, by reason of:
(a) circumstances beyond the control of the person concerned; or
(b) an error or action on the part of an officer or person employed i
Trade Marks Office;
an act or step in relation to an application for the registration of a
mark or in proceedings under this Act (not being proceedings in a court
required to be done or taken within a certain time has not been so done
taken, the Registrar may extend the time for doing the act or taking th
and permit the act to be done or the step to be taken.
(2) The time required for doing an act or taking a step may be extend
under this section although that time has expired.
TRADE MARKS ACT 1955 - SECT 132 Address for service
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132. (1) An address for service stated in an application or notice of
opposition shall, for the purposes of the application or notice of oppo
be deemed to be the address of the applicant or opponent, as the case m
and all documents in relation to the application or notice of oppositio
be served by leaving them at or sending them by post to the address for
service of the applicant or opponent, as the case may be.
(2) An address for service may be changed by notice in writing to the
Registrar.
(3) The registered proprietor of a trade mark shall from time to time
the Registrar in writing of any change in his address, and request him
enter the change in the Register, and the Registrar shall alter the Reg
accordingly.
(4) The address of the registered proprietor of a trade mark, as appe
for the time being in the Register, shall for all purposes under this A
deemed to be the address of the registered proprietor.
TRADE MARKS ACT 1955 - SECT 133 Declaration by disabled person
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133. If a person is, by reason of infancy or physical or mental disab
incapable of making a declaration or doing anything required or permitt
this Act, the guardian or committee of the incapable person, or if ther
such guardian or committee, a person appointed by a court, or a Justice
Judge of a court, of the Commonwealth or of a State or Territory posses
jurisdiction in respect of the property of incapable persons, upon the
petition of a person on behalf of the incapable person, or of some othe
person interested in the making of the declaration or the doing of the
may make the declaration (or a declaration as nearly corresponding to t
declaration as the circumstances permit) and may do that thing, in the
and on behalf of the incapable person and all acts so done are, for the
purposes of this Act, as effectually done as if they had been done by t
incapable person and that person had not been incapable at the time of
making of the declaration or the doing of the thing.
TRADE MARKS ACT 1955 - SECT 134 Death of party to a proceeding
134. If a person who is party to a proceeding under this Act (not bei
proceeding in a court) dies pending the proceeding, the Registrar may,
request, and on proof to his satisfaction of the transmission of the in
of the deceased person, substitute in the proceeding his successor in i
in his place, or, if the Registrar is of opinion that the interest of t
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deceased person is sufficiently represented by the surviving parties, p
the proceeding to continue without the substitution of his successor in
interest.
TRADE MARKS ACT 1955 - SECT 135 Unauthorised persons not to act in trade mark matters
135. (1) Subject to section 138, a person shall not, for gain:
(a) apply for or obtain the registration of a trade mark;
(b) prepare, or cause to be lodged at the Trade Marks Office, or at a
sub-office of the Trade Marks Office, a document necessary for obtainin
opposing the registration of a trade mark; or
(c) give advice as to the validity of the registration of a trade mar
to the infringement of a trade mark;
unless he is:
(d) a legal practitioner;
(e) a registered patent attorney;
(f) the applicant or the opponent concerned;
(g) a person in the sole and permanent employment of the applicant or
opponent concerned;
(h) a person who, within 1 year after the commencement of this Act, h
satisfied the Registrar that, for a continuous period of 2 years immedi
before 1 January 1955, he was practising as a trade marks agent in Aust
or
(i) a person who:
(i) within 1 year after the commencement of this Act, has satisfied
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the Registrar that, for a continuous period of 2 years immediately befo
January 1955, he was employed by a registered patent attorney in Austra
his duties related solely or principally to the lodging, prosecuting an
opposing of applications for the registration of trade marks; and
(ii) unless the Registrar otherwise directs, has, within 1 year aft
the commencement of this Act or within such further time as the Registr
allows, passed the prescribed examination.
Penalty: $1,000.
(2) For the purpose of paragraph (h) of the last preceding subsection
person shall not be deemed to have practised as a trade marks agent unl
only or the principal business carried on by him was the business of lo
prosecuting and opposing, for gain, applications for the registration o
marks in Australia on behalf of applicants or opponents.
TRADE MARKS ACT 1955 - SECT 136 Privileges of patent attorneys
136. (1) A patent attorney:
(a) is entitled to prepare documents, transact business and conduct
proceedings for the purposes of this Act; and
(b) has such other rights and privileges as are prescribed.
(2) Nothing in this section authorizes a patent attorney to prepare a
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document which is to be issued from or filed in a court or to transact
business or to conduct proceedings in a court.
TRADE MARKS ACT 1955 - SECT 137 Unregistered persons not to describe themselves as trade marks agents
137. (1) Subject to the next succeeding section:
(a) a person shall not describe himself or hold himself out, or permi
himself to be described or held out, as a trade marks attorney, trade m
agent or agent for obtaining the registration of trade marks, unless he
legal practitioner, registered as a patent attorney or a person referre
paragraph (h) or (i) of subsection (1) of section 135; or
(b) the members of a partnership shall not describe themselves or hol
themselves out, or permit themselves to be described or held out, as tr
marks attorneys, trade marks agents or agents for obtaining the registr
of trade marks, unless each member of the partnership is so registered,
legal practitioner or is a person referred to in paragraph (h) or (i) o
subsection (1) of section 135.
Penalty: $1,000.
(2) A company shall not describe itself or hold itself out, or permit
to be described or held out, as a trade marks attorney, trade marks age
agent for obtaining the registration of trade marks.
Penalty: $5,000.
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(3) A director, manager, secretary or other officer of a company whic
guilty of an offence against the last preceding subsection who is knowi
party to the offence is guilty of an offence punishable, upon convictio
fine not exceeding $1,000.
TRADE MARKS ACT 1955 - SECT 139 Adaptation of classification
139. (1) The regulations may make provision for the amendment of the
Register, whether by making, expunging or varying entries in the Regist
the purpose of adapting the designation in the Register of the goods, c
of goods, services or classes of services in respect of which trade mar
registered to any amended or substituted classification of goods or ser
which is prescribed.
(2) An amendment for the purpose referred to in the last preceding
subsection shall not be made if it would have the effect of adding good
classes of goods, services or classes of services to those in respect o
a trade mark is registered (whether in 1 or more classes) immediately b
the amendment is to be made, or of antedating the registration of a tra
in respect of goods or services.
(3) The last preceding subsection does not have effect in relation to
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as to which the Registrar is satisfied:
(a) that compliance with that subsection in relation to those goods w
involve undue complexity; and
(b) that the addition or antedating, as the case may be, would not af
substantial quantity of goods and would not substantially prejudice the
of any person.
(4) A proposal for the amendment of the Register for the purpose refe
in subsection (1):
(a) shall be notified to the registered proprietor of the trade mark
affected;
(b) shall be advertised in the Official Journal; and
(c) may be opposed before the Registrar by a person aggrieved on the
that the proposed amendment contravenes the provisions of subsection (1
(5) An appeal lies to the Federal Court from a decision of the Regist
under this section.
TRADE MARKS ACT 1955 - SECT 140 Making and signing of applications
140. Where, by this Act, an application or notice is required or perm
to be made or signed by a person, that application or notice may be mad
signed, on behalf of that person, by a patent attorney, legal practitio
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person entitled to practise as a trade marks agent.
TRADE MARKS ACT 1955 - SECT 141 Examiners' reports to be communicated
141. A copy of each report of an Examiner under this Act shall be sen
the applicant or registered proprietor of the trade mark concerned, as
case requires.
TRADE MARKS ACT 1955 - SECT 142 Security for costs
142. If a person who appeals to the Federal Court neither resides nor
carries on business in Australia, the Federal Court may require that pe
give security for the costs of the appeal, and in default of security b
given to the satisfaction of the Federal Court, the appeal may be dismi
TRADE MARKS ACT 1955 - SECT 143 Costs of attendance of patent attorney
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143. Where, at the hearing of an action or proceeding under this Act,
patent attorney attends in court for the purpose of assisting a party i
conduct of the hearing and an order is made for payment of the costs of
party, those costs may include an allowance in respect of that attendan
TRADE MARKS ACT 1955 - SECT 144 Service of orders on appeal
144. (1) Where by this Act provision is made for the service on the
Registrar of a judgment or order of a court, and an order is made by th
in Council, or by a court, on appeal from such a judgment or order, a p
in whose favour the order on appeal is made is not entitled to enforce
order until he has served on the Registrar an office copy of the order.
(2) Upon the service on him of such an order, the Registrar shall mak
entries (if any) in the Register, or take such other action (if any), a
case requires.
TRADE MARKS ACT 1955 - SECT 145 Improperly describing an office as the Trade Marks Office
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145. (1) A person shall not use, in connexion with his business, word
would reasonably lead to the belief that his office is, or is officiall
connected with, the Trade Marks Office.
Penalty:
(a) in the case of a natural person - $500; or
(b) in the case of a body corporate - $2,500.
(2) Without limiting the effect or application of the last preceding
subsection, a person who:
(a) places, or suffers or permits to be placed, on the building in wh
office is situated;
(b) uses in advertising his office or business; or
(c) places on a document, as a description of his office or business;
the words "Trade Marks Office", the words "Office for registering trade
marks", or words of similar import, whether alone or in conjunction wit
words, shall be deemed to use, in connexion with his business, words wh
would reasonably lead to the belief that his office is the Trade Marks
TRADE MARKS ACT 1955 - SECT 146 Falsely representing a trade mark as registered an offence
146. (1) A person shall not make a representation:
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(a) with respect to a mark, not being a registered trade mark, to the
that it is a registered trade mark;
(b) with respect to a part of a registered trade mark, not being a pa
separately registered as a trade mark, to the effect that it is so
registered;
(c) to the effect that a registered trade mark is registered in respe
goods or services in respect of which it is not registered; or
(d) to the effect that the registration of a trade mark gives a right
exclusive use of the trade mark in circumstances in which, having regar
conditions or limitations entered on the Register, the registration doe
give that right.
Penalty:
(a) in the case of a natural person - $1,000; or
(b) in the case of a body corporate - $5,000.
(2) For the purposes of this section, the use in Australia, in relati
trade mark, of the word "registered, or of some other word referring wh
expressly or impliedly to registration, shall be deemed to import a ref
to registration under this Act, except:
(a) where that word is used in physical association with other words
delineated in characters at least as large as those in which that word
delineated, and indicating that the reference is to registration as a t
mark under the law of a country outside Australia, being a country unde
law of which the registration referred to is in force;
(b) where that word (being a word other than the word "registered") i
itself such as to indicate that the reference is to such registration a
referred to in the last preceding paragraph; or
(c) where that word is used in relation to a mark registered as a tra
under the law of a country outside Australia and in relation to goods t
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exported to that country.
TRADE MARKS ACT 1955 - SECT 147 Regulations
147. The Governor-General may make regulations, not inconsistent with
Act, prescribing all matters which by this Act are required or permitte
prescribed, or which are necessary or convenient to be prescribed for c
out or giving effect to this Act, or for the conduct of any business re
to the Trade Marks Office, and in particular:
(a) for providing for the destruction of documents relating to trade
the registration of which has ceased not less than 25 years before the
destruction; and
(b) for prescribing penalties not exceeding a fine of $500 for offenc
against the regulations; and
(c) making provision for and in relation to the refund, in specified
circumstances, of the whole or part of a fee paid in respect of the lod
a document; and
(d) making provision for and in relation to the remission of, or the
exemption of specified classes of persons from the payment of, the whol
part of a fee.
TRADE MARKS ACT 1955 - SCHEDULE 1
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THE SCHEDULE Sectio
First Column Second Column
Acts Repealed Extent of Repeal
Trade Marks Act 1905 The whole
Patents Trade Marks and Designs Act 1910 Section 4
Trade Marks Act 1912 The whole
Trade Marks Act 1919 The whole
Trade Marks Act 1922 The whole
Trade Marks Act 1936 The whole
Trade Marks Act 1948 The whole