C2004A04969 — Trade Marks Act 1995

1 Short title This Act may be cited as the Trade Marks Act 1995 . 2 Commencement (1) Part 1 commences on the day on which this Act receives the Royal Assent. (2) This Act, other than Part 1, commences on 1 January 1996. 3 Act binds the Crown (1) This Act binds the Crown in right of the Commonwealth, of each of the States, of the Australian Capital Territory and of the Northern Territory. (2) Nothing in this Act makes the Crown liable to be prosecuted for an offence. 4 Application of Act This Act extends to: (a) Christmas Island; and (b) Cocos (Keeling) Islands; and (c) Norfolk Island; and (d) the Australian continental shelf; and (e) the waters above the Australian continental shelf; and (f) the airspace above Australia and the Australian continental shelf. Note: For Australia and Australian continental shelf see section 6. 4A Application of the Criminal Code Chapter 2 of the Criminal Code applies to all offences created by this Act. Note: Chapter 2 of the Criminal Code sets out the general principles of criminal responsibility. 5 Repeal of Trade Marks Act 1994 The Trade Marks Act 1994 is repealed. 6 Definitions (1) In this Act, unless the contrary intention appears: action period , in relation to particular seized goods, means the period prescribed by the regulations after notice of a claim for release of the goods is given to the objector under section 136C. applicant , in relation to an application, means the person in whose name the application is for the time being proceeding. applied to and applied in relation to have the respective meanings given in section 9. approved form means a form approved by the Registrar for the purposes of the provision in which the expression appears. assignment , in relation to a trade mark, means an assignment by act of the parties concerned. Australia includes the following external Territories: (a) Christmas Island; (b) Cocos (Keeling) Islands; (c) Norfolk Island. Australian continental shelf has the same meaning as in the Seas and Submerged Lands Act 1973 . authorised use , in relation to a trade mark, has the meaning given by section 8. authorised user , in relation to a trade mark, has the meaning given by section 8. Board has the same meaning as in the Patents Act 1990 . certification trade mark has the meaning given by section 169. claim period , in relation to particular seized goods, means the period prescribed by the regulations after notice of seizure of the goods is given to the designated owner under section 134. collective trade mark has the meaning given by section 162. Commission means the Australian Competition and Consumer Commission established under the Competition and Consumer Act 2010 . company means a company registered under the Corporations Act 2001 . Comptroller ‑ General of Customs means the person who is the Comptroller ‑ General of Customs in accordance with subsection 11(3) or 14(2) of the Australian Border Force Act 2015 . Convention country means a foreign country or region of a kind prescribed by the regulations. date of registration means: (a) in relation to the registration of a trade mark in respect of particular goods or services other than a trade mark to which paragraph (b) applies—the day from which the registration of the trade mark in respect of those goods or services is taken to have had effect under subsection 72(1) or (2); or (b) in relation to a trade mark to which subsection 239A(3) applies—the day referred to in subsection 239A(4). deceptively similar has the meaning given by section 10. defensive trade mark has the meaning given by section 185. Deputy Registrar means a Deputy Registrar of Trade Marks. Designated Manager has the same meaning as in the Patents Act 1990 . designated owner , in relation to goods imported into Australia, means: (a) the person identified as the owner of the goods on the entry made in relation to the goods under section 68 of the Customs Act 1901 ; or (b) if no such entry exists—the person determined to be the owner of the goods under section 133A of this Act. divisional application has the meaning given by section 45. employee means a person, other than the Registrar or a Deputy Registrar, who: (a) is a person engaged under the Public Service Act 1999 and is employed in the Trade Marks Office; or (b) is not such a person but performs services, in the Trade Marks Office, for or on behalf of the Commonwealth. examine , in relation to an application for the registration of a trade mark, means to carry out an examination under section 31 in relation to the application. existing registered mark means a mark that was registered in Part A, B, C or D of the old register before 1 January 1996 and whose registration under the repealed Act was due to expire after that day. Federal Court means the Federal Court of Australia. file means to file at the Trade Marks Office. Note: See section 213. filing date means: (a) in relation to an application for the registration of a trade mark other than an application referred to in another paragraph of this definition—the day on which the application is filed; or (b) in relation to a divisional application for the registration of a trade mark—the filing date of the application that is the parent application (within the meaning of section 45) in relation to the divisional application; or (c) in relation to an application to which section 241 applies—the day referred to in subsection 241(5); or (d) in relation to an application made under section 243—the day referred to in subsection 243(6); or (e) in relation to a prescribed application—the day determined in the prescribed way. geographical indication , in relation to goods, means a sign that identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin. goods of a person means goods dealt with or provided in the course of trade by the person. incorporated legal practice means a body corporate recognised under a law of the Commonwealth, a State or a Territory as an incorporated legal practice (however described). incorporated trade marks attorney has the meaning given by subsection 228A(6B). intellectual property advice has the meaning given by subsection 229(3). lawyer means a barrister or solicitor of the High Court or of the Supreme Court of a State or Territory. limitations means limitations of the exclusive right to use a trade mark given by the registration of the trade mark, including limitations of that right as to: (a) mode of use; or (b) use within a territorial area within Australia; or (c) use in relation to goods or services to be exported. month : the end of a period with a length expressed in months is worked out under section 6A. notified trade mark means a trade mark in respect of which a notice under section 132 is in force. objector , in relation to seized goods, means any person who has given under section 132 a notice in respect of those goods that is in force. old register means the Register of Trade Marks kept under the repealed Act. opponent , in relation to the registration of a trade mark, means: (a) the person who has filed (under section 52) a notice of opposition to the registration of the trade mark; or (b) if section 53 applies—a person in whose name the notice of opposition is taken to have been filed. originate , in relation to wine, has the meaning given by section 15. patent attorney means a person registered as a patent attorney under the Patents Act 1990 . pending , in relation to an application for the registration of a trade mark, has the meaning given by section 11. person includes a body of persons, whether incorporated or not. personal information has the same meaning as in the Privacy Act 1988 . PPSA security interest (short for Personal Property Securities Act security interest) means a security interest within the meaning of the Personal Property Securities Act 2009 and to which that Act applies, other than a transitional security interest within the meaning of that Act. Note 1: The Personal Property Securities Act 2009 applies to certain security interests in personal property. See the following provisions of that Act: (a) section 8 (interests to which the Act does not apply); (b) section 12 (meaning of security interest ); (c) Chapter 9 (transitional provisions). Note 2: For the meaning of transitional security interest , see section 308 of the Personal Property Securities Act 2009 . predecessor in title , in relation to a person who claims to be the owner of a trade mark, means: (a) if the trade mark was assigned or transmitted to one or more than one other person before it was assigned or transmitted to the first ‑ mentioned person—that other person or any one of those other persons; or (b) if paragraph (a) does not apply—the person who assigned the trade mark, or from whom the trade mark was transmitted, to the first ‑ mentioned person. Note: In the case of a trade mark that is neither registered nor the subject of an application for registration, the trade mark may be assigned or transmitted in Australia only in conjunction with the goodwill of a business concerned with the trade mark. If the trade mark is registered or the subject of an application for registration, section 106 provides that the trade mark may be assigned or transmitted with or without the goodwill of the business. preferred means : (a) in relation to filing a document with the Trade Marks Office—means the means specified under subsection 213A(4); or (b) in relation to paying a fee—means the means specified under subsection 223AA(4). prescribed court means a court that is under section 190 a prescribed court for the purposes of this Act. priority date has the meaning given by section 12. Register means the Register of Trade Marks kept under section 207. registered owner , in relation to a registered trade mark, means the person in whose name the trade mark is registered. registered trade mark means a trade mark whose particulars are entered in the Register under this Act. Note: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A. registered trade marks attorney means a person registered as a trade marks attorney under this Act. Registrar means the Registrar of Trade Marks. Note: Sections 201, 202, 203, 204 and 206 deal with the office, powers and functions of the Registrar of Trade Marks. registration number , in relation to a registered trade mark, means the number given to it under subsection 68(2). remove from the Register , in relation to a trade mark, has the meaning given by section 13. repealed Act has the meaning given by section 16. seized goods means goods seized under section 133. services of a person means services dealt with or provided in the course of trade by the person. sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent. similar goods has the meaning given by subsection 14(1). similar services has the meaning given by subsection 14(2). this Act includes the regulations. trade mark has the meaning given by section 17. trade marks attorney director has the meaning given by subsection 228A(6C). trade marks work has the meaning given by subsection 157A(8). transmission means: (a) transmission by operation of law; or (b) devolution on the personal representative of a deceased person; or (c) any other kind of transfer except assignment. use of a trade mark has a meaning affected by subsections 7(1), (2) and (3). use of a trade mark in relation to goods has the meaning given by subsection 7(4). use of a trade mark in relation to services has the meaning given by subsection 7(5). word includes an abbreviation of a word. working day means a day that is not: (a) a Saturday; or (b) a Sunday; or (c) a public holiday in the Australian Capital Territory. World Trade Organization means the body of that name established by the WTO Agreement, done at Marrakesh on 15 April 1994. Note: The text of the WTO Agreement is set out in Australian Treaty Series 1995 No. 8 ([1995] ATS 8). In 2009, the text of an Agreement in the Australian Treaty Series was accessible through the Australian Treaties Library on the AustLII website (www.austlii.edu.au). (2) For the purposes of this Act, a reference to a country includes a reference to a member of the World Trade Organization. (3) Despite subsection 14(2) of the Legislation Act 2003 , regulations made for the purposes of the definition of Convention country in subsection (1) may make provision in relation to a matter by applying, adopting or incorporating, with or without modification, any matter contained in any other instrument or other writing as in force or existing from time to time. 6A Periods expressed in months For the purposes of this Act, a period expressed in months and dating from an event ends: (a) on the day, in the relevant subsequent month, which has the same number as the day of the event; or (b) if the relevant subsequent month has no day with the same number—on the last day of the month. Note: For example, a period of 3 months from an event on 30 September ends on 30 December under this rule. 7 Use of trade mark (1) If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark. Note: For prescribed court see section 190. (2) To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark. (3) An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark. (4) In this Act: use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second ‑ hand goods). (5) In this Act: use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services. 8 Definitions of authorised user and authorised use (1) A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark. (2) The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark. (3) If the owner of a trade mark exercises quality control over goods or services: (a) dealt with or provided in the course of trade by another person; and (b) in relation to which the trade mark is used; the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner. (4) If: (a) a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and (b) the owner of the trade mark exercises financial control over the other person’s relevant trading activities; the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner. (5) Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2). 9 Definition of applied to and applied in relation to (1) For the purposes of this Act: (a) a trade mark is taken to be applied to any goods, material or thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing; and (b) a trade mark is taken to be applied in relation to goods or services: (i) if it is applied to any covering, document, label, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade; or (ii) if it is used in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services; and (c) a trade mark is taken also to be applied in relation to goods or services if it is used: (i) on a signboard or in an advertisement (including a televised advertisement); or (ii) in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document; and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used. (2) In subparagraph (1)(b)(i): covering includes packaging, frame, wrapper, container, stopper, lid or cap. label includes a band or ticket. 10 Definition of deceptively similar For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion. 11 Definition of pending Application for registration under this Act (1) An application for the registration of a trade mark under this Act is pending from the time it is filed until: (a) it lapses (see sections 37 and 54A), is withdrawn (see section 214) or is rejected (see section 33); or (b) if the Registrar refuses (under section 55) to register the trade mark and there is no appeal against the decision—the end of the period allowed for the appeal; or (c) if the Registrar refuses (under section 55) to register the trade mark and: (i) there is an appeal against the decision; and (ii) the decision is confirmed on appeal; —the day on which the decision is confirmed on appeal; or (d) the trade mark is registered under section 68. Note: For file see section 6. Application for registration under repealed Act (2) An application for the registration of a trade mark under the repealed Act was pending immediately before 1 January 1996 if before that day: (a) the application had not lapsed (see subsection 48(1)), been withdrawn (see subsection 40A(1)) or refused (see subsection 44(1)); and (b) the Registrar had not refused (under section 50) to register the trade mark or if he or she had refused to register the trade mark: (i) the period allowed for appealing against the decision had not yet ended; or (ii) an appeal had been made against the decision but had not yet been decided; and (c) the trade mark had not been registered under section 53. 12 Definition of priority date The priority date for the registration of a trade mark in respect of particular goods or services is: (a) if the trade mark is registered—the date of registration of the trade mark in respect of those goods or services; or (b) if the registration of the trade mark is being sought—the day that would be the date of registration of the trade mark in respect of those goods or services if the trade mark were registered. 13 Definition of remove from the Register A trade mark is taken to have been removed from the Register if the Registrar makes an entry in the Register to the effect that all entries in the Register relating to the trade mark are taken to have been removed from the Register. 14 Definition of similar goods and similar services (1) For the purposes of this Act, goods are similar to other goods: (a) if they are the same as the other goods; or (b) if they are of the same description as that of the other goods. (2) For the purposes of this Act, services are similar to other services: (a) if they are the same as the other services; or (b) if they are of the same description as that of the other services. 15 Definition of originate in relation to wine For the purposes of this Act: (a) a wine is taken to have originated in a foreign country or Australia only if the wine is made from grapes grown within the territory of that country or of Australia, as the case may be; and (b) a wine is taken to have originated in a particular region or locality of a foreign country or of Australia only if the wine is made from grapes grown in that region or locality. 16 Definition of repealed Act (1) The repealed Act means: (a) the Trade Marks Act 1955 as in force immediately before its repeal; and (b) the regulations under that Act that were in force immediately before its repeal. Note: For the repeal of the Trade Marks Act 1955 see section 232. (2) In this Act, unless the contrary intention appears, a reference to a particular section of the repealed Act includes a reference to the regulations made for the purposes of that section and that were in force immediately before that Act was repealed. 17 What is a trade mark? A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. Note: For sign see section 6. 18 Certain signs not to be used as trade marks etc. (1) The regulations may provide that a sign specified in the regulations is not to be used as a trade mark or as part of a trade mark. (2) Regulations made under subsection (1) do not affect any trade mark that: (a) was a registered trade mark; or (b) in the case of an unregistered trade mark—was being used in good faith; immediately before the regulations were registered under the Legislation Act 2003 . Note: For registered trade mark see section 6. 19 Certain trade marks may be registered (1) A trade mark may be registered in accordance with this Act in respect of: (a) goods; or (b) services; or (c) both goods and services. (2) The registration of a trade mark may be in respect of goods or services of more than one class. Note: See subsection (3) for division into classes. (3) The regulations may provide for the classes into which goods and services are to be divided for the purposes of this Act. 20 Rights given by registration of trade mark (1) If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights: (a) to use the trade mark; and (b) to authorise other persons to use the trade mark; in relation to the goods and/or services in respect of which the trade mark is registered. Note 1: For registered owner see section 6. Note 2: For use see section 7. Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A. (2) The registered owner of a trade mark has also the right to obtain relief under this Act if the trade mark has been infringed. Note: For what amounts to an infringement of a trade mark see Part 12. (3) The rights are taken to have accrued to the registered owner as from the date of registration of the trade mark. Note: For date of registration see section 6. (4) If the trade mark is registered subject to conditions or limitations, the rights of the registered owner are restricted by those conditions or limitations. Note: For limitations see section 6. (5) If the trade mark is registered in the name of 2 or more persons as joint owners of the trade mark, the rights granted to those persons under this section are to be exercised by them as if they were the rights of a single person. 21 Nature of registered trade mark as property (1) A registered trade mark is personal property. (2) Equities in respect of a registered trade mark may be enforced in the same way as equities in respect of any other personal property. Note: For registered trade mark see section 6. 22 Power of registered owner to deal with trade mark (1) The registered owner of a trade mark may, subject only to any rights appearing in the Register to be vested in another person, deal with the trade mark as its absolute owner and give in good faith discharges for any consideration for that dealing. (2) This section does not protect a person who deals with the registered owner otherwise than: (a) as a purchaser in good faith for value; and (b) without notice of any fraud on the part of the owner. Note: For registered owner see section 6. (2 A ) Despite subsection (1), the recording in the Register of a right that is a PPSA security interest does not affect a dealing with a trade mark. Note: For PPSA security interest see section 6. (3) Equities in relation to a registered trade mark may be enforced against the registered owner, except to the prejudice of a purchaser in good faith for value. Note: For registered owner and registered trade mark see section 6. (4) Subsection (3) does not apply in relation to an equity that is a PPSA security interest. Note: The Personal Property Securities Act 2009 deals with the rights of purchasers of personal property (including intellectual property such as trade marks) that is subject to PPSA security interests. That Act also provides for the priority and enforcement of PPSA security interests. See the following provisions of that Act: (a) Part 2.5 (taking personal property free of security interests); (b) Part 2.6 (priority between security interests); (c) Chapter 4 (enforcement of security interests). 23 Limitation on rights if similar trade marks etc. registered by different persons If trade marks that are substantially identical or deceptively similar have been registered by more than one person (whether in respect of the same or different goods or services), the registered owner of any one of those trade marks does not have the right to prevent the registered owner of any other of those trade marks from using that trade mark except to the extent that the first ‑ mentioned owner is authorised to do so under the registration of his or her trade mark. Note: For deceptively similar see section 10. 24 Trade mark consisting of sign that becomes accepted as sign describing article etc. (1) This section applies if a registered trade mark consists of, or contains, a sign that, after the date of registration of the trade mark, becomes generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service. Note: For registered trade mark , sign and date of registration see section 6. (2) If the trade mark consists of the sign, the registered owner: (a) does not have any exclusive rights to use, or authorise other persons to use, the trade mark in relation to: (i) the article or substance or other goods of the same description; or (ii) the service or other services of the same description; and (b) is taken to have ceased to have those exclusive rights from and including the day determined by the court under subsection (4). Note: For registered owner see section 6. (3) If the trade mark contains the sign, the registered owner: (a) does not have any exclusive rights to use, or authorise other persons to use, the sign in relation to: (i) the article or substance or other goods of the same description; or (ii) the service or other services of the same description; and (b) is taken to have ceased to have those exclusive rights from the day determined by the court under subsection (4). Note: For registered owner see section 6. (4) For the purposes of subsections (2) and (3), a prescribed court may determine the day on which a sign first became generally accepted within the relevant trade as the sign that describes or is the name of the article, substance or service. Note: For prescribed court see section 190. 25 Trade mark relating to article etc. formerly manufactured under patent (1) This section applies if: (a) a registered trade mark consists of, or contains, a sign that describes or is the name of: (i) an article or substance that was formerly exploited under a patent; or (ii) a service that was formerly provided as a patented process; and (b) it is at least 2 years since the patent has expired or ceased; and (c) the sign is the only commonly known way to describe or identify the article, substance or service. Note: For registered trade mark and sign see section 6. (2) If the trade mark consists of the sign, the registered owner: (a) does not have any exclusive rights to use, or authorise other persons to use, the trade mark in relation to: (i) the article or substance or other goods of the same description; or (ii) the service or other services of the same description; and (b) is taken to have ceased to have those exclusive rights from the end of the period of 2 years after the patent expired or ceased. (3) If the trade mark contains the sign, the registered owner: (a) does not have any exclusive rights to use, or authorise other persons to use, the sign in relation to: (i) the article or substance or other goods of the same description; or (ii) the service or other services of the same description; and (b) is taken to have ceased to have those exclusive rights from the end of the period of 2 years after the patent expired or ceased. 26 Powers of authorised user of registered trade mark (1) Subject to any agreement between the registered owner of a registered trade mark and an authorised user of the trade mark, the authorised user may do any of the following: (a) the authorised user may use the trade mark in relation to the goods and/or services in respect of which the trade mark is registered, subject to any condition or limitation subject to which the trade mark is registered; (b) the authorised user may (subject to subsection (2)) bring an action for infringement of the trade mark: (i) at any time, with the consent of the registered owner; or (ii) during the prescribed period, if the registered owner refuses to bring such an action on a particular occasion during the prescribed period; or (iii) after the end of the prescribed period, if the registered owner has failed to bring such an action during the prescribed period; (c) the authorised user may cause to be displayed on goods in respect of which the trade mark is registered, or on their package, or on the container in which they are offered to the public, a notice prohibiting any act that is under subsection 121(2) a prohibited act in relation to the goods; (d) the authorised user may: (i) give to the Comptroller ‑ General of Customs a notice under section 132 objecting to the importation of goods that infringe the trade mark; or (ii) revoke such a notice; (e) an authorised user may give permission to any person: (i) to alter or deface; or (ii) to make any addition to; or (iii) to remove, erase or obliterate, wholly or partly; a registered trade mark that is applied to any goods, or in relation to any goods or services, in respect of which the trade mark is registered; (f) the authorised user may give permission to any person to apply the trade mark to goods, or in relation to goods or services, in respect of which the trade mark is registered. Note 1: For registered owner and registered trade mark see section 6. Note 2: For authorised user see section 8. Note 3: For what amounts to an infringement of a trade mark see Part 12. Note 4: For apply to and apply in relation to see section 9. (2) If the authorised user brings an action for infringement of the trade mark, the authorised user must make the registered owner of the trade mark a defendant in the action. However, the registered owner is not liable for costs if he or she does not take part in the proceedings. 27 Application—how made (1) A person may apply for the registration of a trade mark in respect of goods and/or services if: (a) the person claims to be the owner of the trade mark; and (b) one of the following applies: (i) the person is using or intends to use the trade mark in relation to the goods and/or services; (ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services; (iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services. Note: For use see section 7. (2) The application must: (a) be in accordance with the regulations; and (b) be filed, together with any prescribed document, in accordance with the regulations; and (c) be made by a person or persons having legal personality. Note: For file see section 6. (2A) Despite paragraph (2)(c), an application for registration of a collective trade mark need not be made by a person or persons having legal personality. Note: For collective trade mark see section 162. (3) Without limiting the particulars that may be included in an application, the application must: (a) include a representation of the trade mark; and (b) specify, in accordance with the regulations, the goods and/or services in respect of which it is sought to register the trade mark. (4) Regulations made for the purposes of paragraph (3)(b) may apply, adopt or incorporate any matter contained in any listing of goods and/or services published by the Registrar from time to time and made available for inspection by the public at the Trade Marks Office and its sub ‑ offices (if any). (5) An application may be made in respect of goods and services of one or more of the classes provided for in regulations made under subsection 19(3). 28 Application by joint owners If the relations between 2 or more persons interested in a trade mark are such that none of them is entitled to use the trade mark except: (a) on behalf of all of them; or (b) in relation to goods and/or services with which all of them are connected in the course of trade; the persons may together apply for its registration under subsection 27(1). 29 Application for registration of trade mark whose registration has been sought in a Convention country—claim for priority (1) If: (a) a person has made an application for the registration of a trade mark in one or more than one Convention country; and (b) within 6 months after the day on which that application, or the first of those applications, was made, that person or another person ( successor in title ) of whom that person is a predecessor in title applies to the Registrar for the registration of the trade mark in respect of some or all of the goods and/or services in respect of which registration was sought in that country or those countries; that person or that person’s successor in title may, when filing the application, or within the prescribed period after filing the application but before the application is accepted, claim a right of priority for the registration of the trade mark in respect of any or all of those goods and/or services in accordance with the regulations. Note: For month see section 6. (2) The priority claimed is for the registration of the trade mark in respect of the goods or services: (a) if an application to register the trade mark was made in only one Convention country—from (and including) the day on which the application was made in that country; or (b) if applications to register the trade mark were made in more than one Convention country—from (and including) the day on which the earliest of those applications was made. (3) The regulations may provide for the filing of documents in support of a notice claiming priority and, in particular, for the filing of certified copies of any application for the registration of the trade mark made in a Convention country. Note: For Convention country see section 225. 30 Particulars of application to be published The Registrar must publish the particulars of the application in accordance with the regulations. 31 Registrar to examine, and report on, application The Registrar must, in accordance with the regulations, examine and report on: (a) whether the application has been made in accordance with this Act; and (b) whether there are grounds under this Act for rejecting it. Note: For this Act see section 6. 32 Registrar to decide on disputed classification of goods etc. If a question arises as to the class in which goods or services are comprised: (a) that question is to be decided by the Registrar; and (b) the decision of the Registrar is not subject to appeal and may not be called into question in an appeal or other proceedings under this Act. 33 Application accepted or rejected (1) The Registrar must, after the examination, accept the application unless he or she is satisfied that: (a) the application has not been made in accordance with this Act; or (b) there are grounds under this Act for rejecting it. Note: For this Act see section 6. (2) The Registrar may accept the application subject to conditions or limitations. Note: For limitations see section 6. (3) If the Registrar is satisfied that: (a) the application has not been made in accordance with this Act; or (b) there are grounds under this Act for rejecting it; the Registrar must reject the application. Note: For this Act see section 6. (4) The Registrar may not reject an application without giving the applicant an opportunity of being heard. Note: For applicant see section 6. 34 Notification of decision The Registrar must: (a) notify the applicant of his or her decision under section 33; and (b) publish the decision in accordance with the regulations. Note: For applicant see section 6. 35 Appeal The applicant may appeal to the Federal Court or the Federal Circuit and Family Court of Australia (Division 2) against a decision of the Registrar: (a) to accept the application subject to conditions or limitations; or (b) to reject the application. Note: For applicant see section 6. 36 Deferment of acceptance The Registrar may defer the acceptance of the application in the circumstances, and for the period, provided for in the regulations. 37 Lapsing of application if not accepted in time (1) Subject to subsection (2), an application lapses if it is not accepted within the prescribed period or within that period as extended in accordance with the regulations. (2) If, after the prescribed period or the prescribed period as extended (as the case may be) has expired, the Registrar extends under section 224 the period within which the application may be accepted, the application: (a) is taken not to have lapsed when the prescribed period expired; and (b) lapses if it is not accepted within the extended period. 38 Revocation of acceptance (1) Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that: (a) the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and (b) it is reasonable to revoke the acceptance, taking account of all the circumstances. (2) If the Registrar revokes the acceptance: (a) the application is taken to have never been accepted; and (b) the Registrar must examine, and report on, the application as necessary under section 31; and (c) sections 33 and 34 again apply in relation to the application. 39 Trade mark containing etc. certain signs (1) An application for the registration of a trade mark must be rejected if the trade mark contains or consists of a sign that, under regulations made for the purposes of section 18, is not to be used as a trade mark. (2) An application for the registration of a trade mark may be rejected if the trade mark contains or consists of: (a) a sign that is prescribed for the purposes of this subsection; or (b) a sign so nearly resembling: (i) a sign referred to in paragraph (a); or (ii) a sign referred to in subsection (1); as to be likely to be taken for it. 40 Trade mark that cannot be represented graphically An application for the registration of a trade mark must be rejected if the trade mark cannot be represented graphically. 41 Trade mark not distinguishing applicant’s goods or services (1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services ) from the goods or services of other persons. Note: For goods of a person and services of a person see section 6. (2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark. (3) This subsection applies to a trade mark if: (a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and (b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant. (4) This subsection applies to a trade mark if: (a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and (b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following: (i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons; (ii) the use, or intended use, of the trade mark by the applicant; (iii) any other circumstances. Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate: (a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or (b) the time of production of goods or of the rendering of services. Note 2: For goods of a person and services of a person see section 6. Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8). (5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant. Note 1: For applicant and predecessor in title see section 6. Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8). 42 Trade mark scandalous or its use contrary to law An application for the registration of a trade mark must be rejected if: (a) the trade mark contains or consists of scandalous matter; or (b) its use would be contrary to law. 43 Trade mark likely to deceive or cause confusion An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion. 44 Identical etc. trade marks (1) Subject to subsections (3) and (4), an application for the registration of a trade mark ( applicant’s trade mark ) in respect of goods ( applicant’s goods ) must be rejected if: (a) the applicant’s trade mark is substantially identical with, or deceptively similar to: (i) a trade mark registered by another person in respect of similar goods or closely related services; or (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and (b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services. Note 1: For deceptively similar see section 10. Note 2: For similar goods see subsection 14(1). Note 3: For priority date see section 12. Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. (2) Subject to subsections (3) and (4), an application for the registration of a trade mark ( applicant’s trade mark ) in respect of services ( applicant’s services ) must be rejected if: (a) it is substantially identical with, or deceptively similar to: (i) a trade mark registered by another person in respect of similar services or closely related goods; or (ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and (b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods. Note 1: For deceptively similar see section 10. Note 2: For similar services see subsection 14(2). Note 3: For priority date see section 12. Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. (3) If the Registrar in either case is satisfied: (a) that there has been honest concurrent use of the 2 trade marks; or (b) that, because of other circumstances, it is proper to do so; the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. Note: For limitations see section 6. (4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period: (a) beginning before the priority date for the registration of the other trade mark in respect of: (i) the similar goods or closely related services; or (ii) the similar services or closely related goods; and (b) ending on the priority date for the registration of the applicant’s trade mark; the Registrar may not reject the application because of the existence of the other trade mark. Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)). Note 2: For predecessor in title see section 6. Note 3: For priority date see section 12. 45 Divisional applications (1) If a single application for the registration of a trade mark in respect of certain goods and/or services is pending ( parent application ), the applicant may make another application ( divisional application ) for the registration of the trade mark in respect of some only of the goods and/or services in respect of which registration is sought under the parent application. Note: For applicant and pending see section 6. (2) To avoid doubt, the parent application may itself be a divisional application. Note: A divisional application may be made by a person who has become the applicant in relation to the parent application because of subsection 108(2) (which deals with assignment and transmission). 46 Rules relating to divisional applications (1) A divisional application must: (a) be for the registration of the trade mark to which the parent application relates; and (b) specify the goods and/or services to which it relates; and (c) specify the goods and/or services that are to remain in the parent application. Note: For divisional application and parent application see section 45. (2) When a divisional application is made, the Registrar must, unless the parent application has lapsed, amend the parent application by excluding the goods and/or services in respect of which the divisional application is made. Note: Section 204 requires the Registrar, where no time or period is specified for doing a thing, to do the thing as soon as practicable. However, it is possible that a parent application will lapse before it is practicable for the Registrar to amend it under subsection (2) of this section. 51 Application—series of trade marks (1) A person may make a single application under subsection 27(1) for the registration of 2 or more trade marks in respect of goods and/or services if the trade marks resemble each other in material particulars and differ only in respect of one or more of the following matters: (a) statements or representations as to the goods or services in relation to which the trade marks are used or are intended to be used; (b) statements or representations as to number, price, quality or names of places; (c) the colour of any part of the trade mark. (2) If: (a) the application meets all the requirements of this Act; and (b) the Registrar is required (under section 68) to register the trade marks; he or she must register them as a series in one registration. 51A Linking series applications (1) Subsection (2) applies if: (a) before the commencement of this section, 2 or more applications ( series applications ) were made each seeking the registration of the same 2 or more trade marks in respect of goods or services of different classes; and (b) the filing date of each of the series applications is the same; and (c) each of the trade marks has the same owner. Note: For filing date see section 6. (2) The owner of the trade marks may apply to the Registrar, in writing, to have: (a) the series applications; or (b) so many of the series applications as are identified in the application to the Registrar; dealt with under this Act as if they were one application for the registration of the trade marks in respect of all goods and services specified in the series applications or the identified series applications. Note: For this Act see section 6. (3) If an application is made under subsection (2), the Registrar must deal with the series applications that are the subject of the application under that subsection as if they were one application. 52 Opposition (1) If the Registrar has accepted an application for the registration of a trade mark, a person may oppose the registration by filing a notice of opposition. (2) The notice of opposition must be filed: (a) in accordance with the regulations; and (b) within the prescribed period, or within that period as extended in accordance with the regulations or in accordance with subsection (5). (3) Regulations made for the purposes of paragraph (2)(a) or (b) may make different provision with respect to different components (if any) of the notice of opposition. (3A) Subsection (3) does not limit subsection 33(3A) of the Acts Interpretation Act 1901 . (4) The registration of a trade mark may be opposed on any of the grounds specified in this Act and on no other grounds. Note: For this Act see section 6. (5) If: (a) a person is granted an extension of time in which to file a notice of opposition; and (b) before the notice of opposition is filed, the right or interest on which the person could have relied to file the notice of opposition becomes vested in another person; and (c) the other person notifies the Registrar in writing that the right or interest is vested in him or her; then: (d) the other person is taken to have been granted an extension of time in which to file the notice of opposition; and (e) that extension ends when the extension mentioned in paragraph (a) ends. 52A Notice of intention to defend opposition to registration (1) If a notice of opposition is filed in accordance with section 52, the applicant may file a notice of intention to defend the application for registration of a trade mark. Note: Failure to file a notice of intention will result in the application lapsing: see section 54A. (2) The notice must be filed within the prescribed period, or within that period as extended by the Registrar in accordance with the regulations. 53 Circumstances in which opposition may proceed in name of a person other than the person who filed the notice If: (a) after a person has filed a notice of opposition, the right or interest on which the person relied to file the notice of opposition becomes vested in another person; and (b) the other person: (i) notifies the Registrar in writing that the right or interest is vested in him or her; and (ii) does not withdraw the opposition; the opposition is to proceed as if the notice of opposition had been filed in that other person’s name. Note: For file see section 6. 54 Opposition proceedings (1) The Registrar must give to the opponent and to the applicant an opportunity of being heard on the opposition. Note: For opponent and applicant see section 6. (2) Subject to subsection (1), the proceedings for dealing with the opposition must be in accordance with the regulations. (3) Without limiting subsection (2), the regulations may prescribe the circumstances in which the Registrar may dismiss the opposition. 54A Lapsing of opposed application if no notice to defend the application filed (1) Subject to subsection (2), an application lapses if: (a) a notice of opposition to the registration of the trade mark is filed (see subsection 52(1)); and (b) the applicant does not file an intention to defend the application for registration of the trade mark within the prescribed period, or that period as extended (see section 52A). (2) If, after the prescribed period has expired, the Registrar extends the period within which the notice to defend the application may be filed (see section 52A), the application: (a) is taken not to have lapsed when the prescribed period expired; and (b) lapses if the notice to defend the application is not filed within the extended period. 55 Decision (1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide: (a) to refuse to register the trade mark; or (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application; having regard to the extent (if any) to which any ground on which the application was opposed has been established. Note: For limitations see section 6. (2) Without limiting subsection (1), if the application was opposed on the ground specified in paragraph 62(a) (that the application, or a document filed in support of the application, was amended contrary to this Act), the Registrar may revoke the acceptance of the application and examine the application again under section 31. Note: For examine and this Act see section 6. (3) This subsection applies to the proceedings if: (a) the proceedings are discontinued; or (b) the proceedings are dismissed; or (c) the application lapses because of the operation of section 54A (about lapsing of applications if a notice to defend the application is not filed). 56 Appeal The applicant or the opponent may appeal to the Federal Court or the Federal Circuit and Family Court of Australia (Division 2) from a decision of the Registrar under section 55. Note: For applicant and opponent see section 6. 57 Registration may be opposed on same grounds as for rejection The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under this Act, except the ground that the trade mark cannot be represented graphically. Note: For this Act see section 6. 58 Applicant not owner of trade mark The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. Note: For applicant see section 6. 58A Opponent’s earlier use of similar trade mark (1) This section applies to a trade mark ( section 44 trade mark ) the application for registration of which has been accepted because of: (a) subsection 44(4); or (b) a similar provision of the regulations made for the purposes of Part 17A. Note: Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first ‑ mentioned trade mark has been continuously used since before the priority date of the other trade mark. (2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark ( similar trade mark ) or the predecessor in title: (a) first used the similar trade mark in respect of: (i) similar goods or closely related services; or (ii) similar services or closely related goods; before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and (b) has continuously used the similar trade mark in respect of those goods or services since that first use. Note: For predecessor in title see section 6. 59 Applicant not intending to use trade mark The registration of a trade mark may be opposed on the ground that the applicant does not intend: (a) to use, or authorise the use of, the trade mark in Australia; or (b) to assign the trade mark to a body corporate for use by the body corporate in Australia; in relation to the goods and/or services specified in the application. Note: For applicant see section 6. 60 Trade mark similar to trade mark that has acquired a reputation in Australia The registration of a trade mark in respect of particular goods or services may be opposed on the ground that: (a) another trade mark had, before the priority date for the registration of the first ‑ mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and (b) because of the reputation of that other trade mark, the use of the first ‑ mentioned trade mark would be likely to deceive or cause confusion. Note: For priority date see section 12. 61 Trade mark containing or consisting of a false geographical indication (1) The registration of a trade mark in respect of particular goods ( relevant goods ) may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for goods ( designated goods ) originating in: (a) a country, or in a region or locality in a country, other than the country in which the relevant goods originated; or (b) a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated; if the relevant goods are similar to the designated goods or the use of a trade mark in respect of the relevant goods would be likely to deceive or cause confusion. (2) An opposition on a ground referred to in subsection (1) fails if the applicant establishes that: (a) the relevant goods originated in the country, region or locality identified by the geographical indication; or (aa) the sign is not recognised as a geographical indication for the designated goods in the country in which the designated goods originated; or (b) the sign has ceased to be used as a geographical indication for the designated goods in the country in which the designated goods originated; or (c) the applicant, or a