Trade Marks Act 1995

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 those of any other person (s 17). Sign includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent or any combination (s 6). Similar goods are the same as or of the same description as other goods (s 14(1)); similar services are defined analogously (s 14(2)). Deceptively similar means so nearly resembling another trade mark that it is likely to deceive or cause confusion (s 10). Applied to goods, material or thing means woven in, impressed on, worked into, affixed or annexed to them; applied in relation to goods or services includes application to any covering, document, label, reel or thing in or with which they are dealt with or provided, or use likely to lead persons to believe it refers to, describes or designates them, or use on signboards, advertisements, invoices or other commercial documents followed by delivery or provision (s 9). Use of a trade mark in relation to goods means use upon or in physical or other relation to the goods, including second-hand goods (s 7(4)); for services it means use in physical or other relation to the services (s 7(5)). An aural representation of a trade mark consisting of letters, words, names or numerals is a use (s 7(2)). Authorised user means a person who uses the trade mark under the control of the owner; authorised use is use to that extent only (s 8(1)-(2)). Quality control or financial control by the owner deems the other person to use under the owner’s control (s 8(3)-(4)). Pending application runs from filing until lapse, withdrawal, rejection, final refusal on appeal or registration (s 11(1)). Priority date is the date of registration if registered, or the day that would be the date of registration if registration is sought (s 12). Filing date is generally the day the application is filed, with special rules for divisional, Convention and prescribed applications (s 6). Date of registration is the day from which registration has effect under s 72(1) or (2), or the day in s 239A(4) for certain marks (s 6). Registered trade mark means a trade mark whose particulars are entered in the Register under the Act (s 6). Registered owner is the person in whose name it is registered (s 6). Register is the Register of Trade Marks kept under s 207 (s 6). Remove from the Register means the Registrar makes an entry that all entries relating to the trade mark are taken to have been removed (s 13). Repealed Act means the Trade Marks Act 1955 as in force immediately before repeal and its regulations (s 16). Convention country is a foreign country or region prescribed by regulations (s 6). Geographical indication is a sign identifying goods as originating in a country, region or locality where a given quality, reputation or characteristic is essentially attributable to geographical origin (s 6). Prescribed court is a court under s 190 (s 6). Working day excludes Saturdays, Sundays and public holidays in the ACT (s 6). Periods expressed in months end on the corresponding day in the subsequent month or the last day of that month (s 6A). A reference to a country includes a WTO member (s 6(2)). Regulations for Convention country may incorporate other instruments as in force from time to time (s 6(3)).

Key concepts include non-infringement defences under section 122(1) for good-faith use of a person's name or place of business, descriptive indications of kind, quality, quantity, value, geographical origin or other characteristics, intended purpose (especially for accessories or spare parts), comparative advertising, exercise of rights under the Act, and court opinions on registrability. Section 122A provides an exhaustion defence for goods where reasonable inquiries before use would lead a reasonable person to conclude the mark was applied with consent of the registered owner, authorised user, permitted user or associated entity. Section 123 extends consent-based non-infringement to similar services. Section 124 preserves a prior continuous use defence for unregistered marks that are substantially identical or deceptively similar, limited to the area of continuous use. Section 126 provides for injunctions, damages or an account of profits, with additional damages available having regard to flagrancy, deterrence, post-infringement conduct and benefits. Section 127 bars damages or accounts of profits for infringements during a critical non-use period where removal grounds under section 92(4) are established. Section 129 creates an action for unjustified threats of infringement proceedings, with additional damages available. Part 13 enables registered owners or authorised users to lodge objection notices leading to Customs seizure of goods bearing substantially identical or deceptively similar signs. Part 14 creates indictable and summary offences for altering, defacing or removing registered marks (section 145), falsely applying marks (section 146), making or possessing dies or representations (sections 147-147B), dealing in goods with false marks (section 148), false representations about registration status (section 151) and holding out as a trade marks attorney without registration (section 156). Collective trade marks (section 162) distinguish goods or services of association members from non-members, with member use deemed association use. Certification trade marks (section 169) distinguish certified goods or services by quality, accuracy or other characteristics, governed by rules filed under section 173 that must specify certification requirements, assessment processes, certifier attributes, use requirements and dispute resolution procedures. Defensive trade marks (section 185) may be registered where extensive use on other goods or services makes connection likely, even without use or intention to use on the defensive goods or services. Section 222A deems actions of approved computer programs to be those of the Registrar, with substitution power for incorrect decisions. Section 224 mandates extensions of time for relevant acts due to Registrar error or omission and permits discretionary extensions. Section 228 deems acts done in Australia for export to constitute use in relation to the export goods or services. Section 230 preserves passing-off law with a damages bar where the defendant proves unawareness of the registered mark at commencement of use. Section 231 grants broad regulation-making power, including for opposition procedures under sections 52, 65A, 83A and 96. Section 231A authorises regulations on the effect of the Public Health (Tobacco and Other Products) Act 2023. Part 22 continues old Part A/B registrations as registered trade marks, Part C as certification marks and Part D as defensive marks, with conclusive effect after seven years under section 234 unless fraud or failure to distinguish.

Non-use removal under s 92(1)-(2) allows any person to apply to the Registrar (or court under s 92(3) if proceedings are pending) on two grounds in s 92(4): lack of good-faith intention to use, authorise use or assign at the original filing date with no subsequent use before the one-month period ending on the application date, or no good-faith use during the continuous three-year period ending one month before the application date. Timing rules appear in s 93, with ground (b) applications possible only after three years from entry under s 69. Opposition occurs under s 96, with the opponent bearing the burden under s 100(1) to rebut allegations by showing use (including authorised use under s 7(3) or assignee use under s 100(2)-(3)) or obstacles to use. The Registrar or court may still decline removal if reasonable under s 101(3), or impose conditions or limitations under s 102 for localised non-use. Transitional infringement defences in ss 254-254C protect continuous conduct that did not infringe under the repealed Act or would not have infringed if a pending application had been registered under the old rules, provided the conduct continues after 1 January 1996. Section 255 applies the 1995 Act to pending actions as if commenced on that date, with s 256 waiving fees for acts taken to be done under the new Act. Existing registered marks (defined in s 6) are preserved under s 233, with Part A marks treated as valid after seven years unless fraud or other exceptions apply under s 234(2). Border procedures in Part 13 require the Comptroller-General of Customs to seize goods on reasonable grounds of infringement under s 133, permit inspection and sampling under s 134A on undertakings, allow claims for release under s 136, and provide for forfeiture under ss 135, 136A and 136E if unclaimed or not collected. Infringement actions may be brought under s 137, with the court able to order release or forfeiture. Criminal offences in Part 14 include indictable offences under ss 145-148 for altering or removing registered marks without permission, applying substantially identical marks, making or possessing instruments likely to be used for such acts, and dealing in goods bearing unauthorised marks, each carrying up to five years' imprisonment or 550 penalty units. Summary offences apply with negligence as the fault element. Section 151 prohibits false representations of registration. Registration rejection under s 44(1)-(2) applies where the mark is substantially identical or deceptively similar (s 10) to an earlier mark for similar goods or services (s 14) or closely related services or goods, unless honest concurrent use or other circumstances justify acceptance under s 44(3) or prior continuous use applies under s 44(4). Divisional applications under ss 45-46 split pending applications, series applications under s 51 register resembling marks together, and opposition under s 52 allows any person to oppose on grounds including those in ss 57-62A. The Register under s 207(1) is kept at the Trade Marks Office, with entries from the old register carried over under s 207(2)(a) and new particulars added under s 207(2)(b)-(c). It may be computerised under s 208, is available for inspection under s 209, and constitutes prima facie evidence under s 210(1), with certified copies admissible under s 211. Address-for-service and name-change notifications are required under ss 215-216. Collective trade marks under s 162 are signs used by association members to distinguish their goods or services, with the Act applied with modifications under s 163, applications made by the association under s 164, and no assignment permitted under s 166.

The Act affects persons claiming ownership who use or intend to use a trade mark, authorise or intend to authorise another, or intend to assign to a body corporate about to be constituted (s 27(1)). It affects joint owners where none may use except on behalf of all or in relation to goods/services with which all are connected (s 28). It affects applicants in Convention countries claiming priority within six months for the same goods/services (s 29(1)-(2)). It affects opponents filing notices of opposition (s 52(1)-(2)), applicants filing notices of intention to defend (s 52A), successors in interest (ss 52(5), 53, 96A), authorised users (ss 26, 138), registered owners, importers and designated owners of seized goods (ss 135-144), trade marks attorneys and agents (ss 156, 157, 157A, 228A-229B), associations for collective trade marks (ss 162-167), certifiers and approved users for certification trade marks (ss 168-183), owners of defensive trade marks (ss 184-189), and persons dealing with the Register, applications, oppositions, renewals, assignments, recordings of interests, infringement actions, threats and importation objections.

Registered owners, applicants, authorised users, predecessors in title, importers and designated owners of goods, the Comptroller-General of Customs, the Registrar and Deputy Registrars, employees and service providers, registered trade marks attorneys and companies, associations applying for collective marks, applicants for certification marks and the Commission, persons aggrieved by threats or Register entries, and courts (prescribed courts under section 190 include the Federal Court, Federal Circuit and Family Court of Australia (Division 2) and State/Territory Supreme Courts). The Administrative Review Tribunal reviews specified decisions, including refusals of time extensions, registration of attorneys, Commission certificates for certification rules and revocation decisions.

Registered owners and applicants for trade marks, opponents to registration or removal, authorised users, assignees and persons claiming interests (Parts 10-11), importers and designated owners of goods, the Comptroller-General of Customs, the Registrar, prescribed courts under s 190, associations holding collective marks, trade marks attorneys and agents under s 156, and witnesses or persons required to produce documents under ss 153-154.

The registered owner has the exclusive rights to use the trade mark and to authorise others to use it in relation to the goods and/or services in respect of which it is registered, subject to this Part, and the right to obtain relief if the trade mark is infringed (s 20(1)-(2)). Rights accrue from the date of registration (s 20(3)). If registered subject to conditions or limitations, rights are restricted accordingly (s 20(4)). Joint owners exercise rights as if they were a single person (s 20(5)). A registered trade mark is personal property; equities are enforced as for other personal property (s 21). The registered owner may deal with it as absolute owner, subject only to rights appearing in the Register vested in another, and give good-faith discharges (s 22(1)). This does not protect a person dealing otherwise than as a purchaser in good faith for value without notice of fraud (s 22(2)). Recording a PPSA security interest does not affect a dealing (s 22(2A)). Equities may be enforced against the owner except to the prejudice of a good-faith purchaser for value (s 22(3)); this does not apply to a PPSA security interest (s 22(4)). If substantially identical or deceptively similar marks are registered by different persons, no owner may prevent another from using its mark except to the extent authorised under its own registration (s 23). If a registered mark consists of or contains a sign that becomes generally accepted in the relevant trade as describing or naming an article, substance or service, the owner ceases to have exclusive rights to use or authorise use of the sign in relation to that article, substance or same-description goods or services from the day determined by a prescribed court (s 24). If the mark relates to an article, substance or service formerly exploited under a patent that expired or ceased at least two years earlier and the sign is the only commonly known way to describe or identify it, the owner ceases to have exclusive rights from the end of that two-year period (s 25). Subject to agreement, an authorised user may use the mark subject to conditions or limitations, bring infringement proceedings (with consent, during a prescribed period if the owner refuses, or after if the owner fails), display prohibition notices, give or revoke Customs notices under s 132, and give permission to alter, deface, add to, remove or apply the mark (s 26(1)). The authorised user must join the registered owner as defendant in infringement proceedings; the owner is not liable for costs if not participating (s 26(2)). An applicant must apply in accordance with regulations, file any prescribed document, include a representation and specify goods and/or services (s 27(2)-(3)). The Registrar must publish particulars (s 30), examine compliance and rejection grounds (s 31), accept unless non-compliance or grounds exist (s 33(1)-(2)), reject only after opportunity to be heard (s 33(3)-(4)), notify and publish (s 34). Opposition may be filed within the prescribed period (s 52(1)-(2)) on any ground in the Act (s 52(4)). The applicant may file notice of intention to defend (s 52A). The Registrar gives opportunity to be heard (s 54). At the end of proceedings the Registrar decides to refuse or register having regard to established grounds (s 55(1)). Appeals lie to the Federal Court or Federal Circuit and Family Court of Australia (Division 2) (ss 35, 56, 67, 104, 191A). Renewal may be requested within the prescribed period before expiry (s 75). The Registrar notifies if no request received (s 76). Renewal is for 10 years from expiry (s 77). Late renewal within 6 months is possible (s 79). The Registrar may correct errors (s 81), adapt classification (s 82), amend on request (s 83(1)). Cancellation on owner request after notifying claimants (s 84). Revocation within 12 months if should not have been registered and reasonable (s 84A); mandatory if opposition components ignored (s 84B). Prescribed court may rectify for omitted particulars or errors (s 85), cancel or amend on contravention of conditions (s 86), or on ss 24 or 25 grounds (s 87). Other grounds include opposition grounds, fraud in amendment, likelihood of deception/confusion at filing, or fraud in entry (s 88). Registrar may apply only if in public interest (s 88A). Rectification may be refused if ground did not arise through owner’s act or fault (s 89). Non-use removal on no good-faith intention/use at filing or 3-year non-use (s 92(4)). Opponent bears burden of rebutting (s 100(1)). Registrar or court may decline removal if reasonable (s 101(3)). Localised non-use may lead to retention with territorial limitations (s 102). Assignment or transmission wholly or partially as to goods/services but not area, with or without goodwill (s 106). Recording required (ss 107-110). Claims to interests/rights may be recorded (ss 113, 117); record not proof (s 116). Infringement by use as trade mark of substantially identical or deceptively similar sign on registered goods/services (s 120(1)), same-description goods/closely related services unless no deception/confusion (s 120(2)), or unrelated if well known and connection indicated adversely affecting owner (s 120(3)-(4)). No infringement for good-faith use of own name/predecessor name, descriptive indications, intended purpose, comparative advertising, rights under Act, or where court would grant registration; disclaimers protect disclaimed part (s 122). Exhaustion applies where reasonable inquiries show consent (s 122A). Consent-based use on similar services non-infringing (s 123). Prior continuous use defeats infringement (s 124). Unjustified threats actionable (s 129). Objector may lodge notice objecting to importation (s 132). Comptroller-General seizes if reasonable grounds (s 133). Designated owner may consent to forfeiture (s 135) or claim release (s 136). Unclaimed goods forfeit (s 136A). Release mandatory if consent or no action (s 136D). Objector may bring action; court may order release or forfeiture (s 137). Authorised user may commence without first checking owner (s 138). Forfeited goods disposed as prescribed (s 139). Comptroller-General may require documents on fraud suspicion (s 143). Collective trade mark used by association members to distinguish from non-members (s 162). Application by association (s 164). Members cannot prevent compliant use by other members (s 165). Cannot be assigned (s 166). Infringement action may claim member damages (s 167). Certification trade mark distinguishes certified goods/services (s 169). Owner exclusive rights only per rules (s 171). Approved user right to use per rules (s 172). Rules must specify certification requirements, assessment, certifier attributes, user requirements, dispute procedures (s 173). Commission certifies if competent and not detrimental (s 175). Additional rejection/opposition if incapable of distinguishing certified from uncertified (s 177). Rules varied only with Commission approval (s 178). Assignment only with Commission consent (s 180). Court may cancel or vary on lost competence, detriment or non-compliance (ss 181-182). Defensive trade mark registrable where prior use makes connection likely (s 185(1)). Additional rejection/opposition if not already registered or no likely connection (s 187). Registrar may cancel if not otherwise registered (s 189). Regulations may implement Madrid Protocol (s 189A). Prescribed courts include Federal Court, Federal Circuit and Family Court of Australia (Division 2), State/Territory Supreme Courts, Norfolk Island Supreme Court (s 190). Federal Court has jurisdiction; exclusive for Registrar appeals except concurrent with Division 2 and High Court (s 191). Division 2 has parallel jurisdiction (s 191A). Other prescribed courts have jurisdiction with Territory limits (s 192). Transfer between prescribed courts on party application (s 194). Appeals to Federal Court from other prescribed courts or Part 12 actions; leave for Full Court in some cases; special leave to High Court (s 195). Registrar may appear on appeals (s 196). Court may admit evidence, examine witnesses, affirm/reverse/vary, award costs (s 197). Trade Marks Office and sub-offices; seal judicially noticed and usable electronically (ss 199-200). Registrar has powers including summon witnesses, take evidence, require production, award costs, notify (s 202). Must give hearing opportunity before adverse exercise (s 203). Must act as soon as practicable (s 204). Deputy Registrar has powers except delegation (s 205). Registrar may delegate to prescribed employees (s 206). Register kept at Trade Marks Office; entries for old register particulars (except registered users), new registrations and prescribed matters; no associated trade mark entries from old register; old entries deemed from 1 January 1996 (s 207). May be computer-kept; computer records are entries (s 208). Available for inspection; computer access satisfies (s 209). Prima facie evidence; certified copy/extract admissible as original; computer reproduction admissible as prima facie; does not apply to PPSA security interests (s 210). Registrar certificate on acts done/not done or document availability is prima facie; certified copy/extract admissible (s 211). Applications/notices/requests may be made/signed by agent (s 212). Documents filed by Registrar-determined means; preferred means may reduce fees (ss 213, 213A). Registrar may direct form and evidence filing (ss 213B, 213C). Withdrawal possible while under consideration; vested successor may withdraw (s 214). Registrar notifications by any accessible means (s 214A). Address for service must be Australia/New Zealand; service by prescribed means; electronic address rules post-specified time (s 215). Name change notification required; Register amended (s 216). Legal representative may proceed on applicant death; Registrar may substitute on registered owner death/cessation (s 217). Prescribed documents available for public inspection from publication (s 217A). Registered trade mark identified by number in proceedings (s 218). Evidence of trade usage and legitimate marks/get-up admissible (s 219). Registrar may substitute or continue on party death (s 220). Registrar may award costs per regulations; recoverable as debt (s 221). Security for costs possible against non-resident/non-business person in opposition or removal (s 222). Computer programs may make decisions; Registrar may substitute incorrect; ART review of substituted (s 222A). Fees prescribed, varying by timing/means; non-payment consequences per regulations; preferred payment means may reduce amount (ss 223, 223AA). Act may be extended where last day Office not open (s 223A). Registrar must extend time if prevented by Registrar, Deputy, employee or service-provider error (s 224(1)). May extend for applicant/agent error, circumstances beyond control or special circumstances (s 224(2)-(3)). Extensions after expiry possible (s 224(4)). Applications for >3 months published; opposition allowed (s 224(5)-(6)). ART review for refusal (s 224(7)). Convention-country equivalence rules (s 225). Registrar may prepare, publish and sell documents (s 226). Confidential treatment of specified information may be required, varied or revoked (s 226A). No liability for good-faith publication (s 226B). Notice of ART-reviewable decisions with review statement (s 227). Use on export goods/services or preparatory acts constitutes use in Australia (s 228(1)). Register of Trade Marks Attorneys kept by Designated Manager (s 228A(1)). Individuals meeting qualification, character, conviction requirements registered (s 228A(4)). Companies with trade marks attorney director registered as incorporated (s 228A(6A)-(6B)). ART review for refusal (s 228A(7)). Deregistration on prescribed grounds (s 228B). Communications for dominant purpose of registered trade marks attorney providing IP advice privileged equivalently to lawyer advice (s 229(1)-(1B)). Regulations may give lien rights (s 229(2)). Designated Manager may disclose personal information to Board or ASIC (ss 229AA, 229A). Board may publish specified information on website (s 229B). Act does not affect passing-off law, but in passing-off actions involving registered mark substantially identical or deceptively similar, damages unavailable if defendant proves innocent commencement and immediate cessation (s 230). Governor-General may make regulations for prescribed, necessary or convenient matters including appeals, declarations, refunds, exemptions, witness expenses, security for costs, professional conduct of attorneys, penalties up to 10 penalty units, transitional provisions (s 231(1)-(2)). Specific power for oppositions (s 231(3)) and Public Health (Tobacco and Other Products) Act 2023 (s 231A).

Registered owners hold exclusive rights to use and authorise use under section 20, subject to conditions or limitations, with rights accruing from the filing date (section 72) and personal property status (section 21). Authorised users may use the mark, bring infringement actions with consent or after prescribed periods, object to imports and display prohibition notices (section 26), but the owner must be joined as defendant. For certification marks, the owner may use or authorise use only in accordance with rules (section 171); approved users have corresponding rights (section 172). Associations for collective marks may claim damages including member losses (section 167). The Registrar must extend time for relevant acts due to error or omission (section 224(1)), may substitute computer-generated decisions (section 222A), must notify affected persons of review rights (section 227), and must publish rules for certification marks (section 179). Applicants for certification marks must file rules meeting section 173 requirements; the Commission must certify attributes and public-interest compliance before acceptance (section 175). Trade marks attorneys must meet qualification, character and conviction requirements for registration (section 228A); companies require at least one attorney director. Importers must provide documents and information on request where fraudulent use is suspected (section 143). No criminal or civil liability attaches to the Registrar, Deputy or employees for good-faith publication of permitted information (section 226B). The Registrar may require confidentiality of specified information in documents (section 226A). Renewal must be requested within prescribed periods (sections 75-77), with late renewal available within six months (section 79).

Registered owners have the right to apply for renewal under s 75, request amendments under s 83, seek certificates of use under s 105, and bring infringement actions under s 125, but must notify address changes under s 215(3) and name changes under s 216(2), and maintain use to rebut non-use allegations under s 100. Applicants must file notices of intention to defend under s 52A or risk lapse under s 54A. Opponents bear the burden under s 100 to show use or obstacles. Importers must comply with document production requirements under s 143 or face offences. The Registrar must publish applications under s 95, restore marks under s 98 where opposition is filed within extended periods, and enter particulars under s 207(2). Courts must serve orders on the Registrar under s 103 and may join parties or order compensation under s 137(4). Authorised users who are objectors may commence actions under s 138 without first checking the owner's willingness.

Indictable offence (max 5 years or 550 penalty units) to alter, deface, add to or remove registered trade mark without permission or authority (s 145(1)); summary version (max 12 months or 60 penalty units) with negligence (s 145(2)-(3)). Indictable offence (max 5 years or 550 penalty units) to apply substantially identical mark without permission (s 146(1)); summary with negligence (s 146(2)-(3)). Indictable offence (max 5 years or 550 penalty units) to make die, block, machine or instrument likely for ss 145 or 146 offence (strict liability on offence element) (s 147(1)-(2)); summary with negligence (s 147(3)-(5)). Parallel indictable and summary offences for drawing or programming device (s 147A), possessing or disposing (s 147B). Indictable offence (max 5 years or 550 penalty units) to sell, expose, possess for trade or import goods bearing registered trade mark, substantially identical mark or altered mark without permission (s 148(1)); summary with negligence (s 148(2)-(3)). Aiding, abetting or knowingly concerned in overseas act that would be offence if done in Australia constitutes the offence (s 150). Offence (60 penalty units) to represent unregistered trade mark as registered or registration beyond limitations (s 151). Offence (max 2 years imprisonment) to intentionally make false Register entry or tender false copy (s 152). Offence (10 penalty units, strict liability) to fail to appear or produce after summons or requirement with expenses tendered, unless reasonable excuse (s 153). Offence (10 penalty units, strict liability) to refuse oath, lawful questions or production before Registrar, unless reasonable excuse (s 154). Offence (30 penalty units for individuals; 150 for companies; strict liability) to describe or hold out as trade marks attorney without registration or as trade marks agent without qualification (s 156). Offence (30 penalty units, strict liability) to use Trade Marks Office or similar implying official connection (s 157). Offence (150 penalty units) for incorporated trade marks attorney without director to fail to notify Designated Manager within 7 days or to act after 7 days without director (s 157A). Designated Manager may appoint attorney or remove from Register. Forfeiture order provisions of Proceeds of Crime Act 2002 apply where non-DPP person institutes proceedings for indictable offence under Part 14 (s 159). Servant/agent conduct and state of mind within authority attributed to individual unless due diligence shown; no imprisonment if subsections would otherwise convict (s 160). Forfeited goods disposed as prescribed or directed; 30-day hold for s 136A forfeitures; compensation if goods did not infringe and reasonable excuse for non-claim (s 139). Insufficient security or undertaking creates recoverable debt (ss 141, 141A). Commonwealth not liable for seizure, non-seizure or release (s 142). Comptroller-General may require documents and consignor/consignee details where fraudulent trade mark use suspected; non-compliance offence (max 6 months imprisonment) (s 143). Regulations may modify Part 13 for Norfolk Island, Christmas Island or Cocos (Keeling) Islands (s 144). Registrar may award costs per regulations; recoverable as debt (s 221). Security for costs possible against non-resident/non-business person in opposition or removal (s 222).

Part 14 creates indictable offences (up to five years' imprisonment or 550 penalty units) and summary offences (up to 12 months or 60 penalty units, with negligence as the fault element for certain elements) for falsifying marks, false application, making or possessing instruments or representations, dealing in goods with false marks, false representations about registration status, false Register entries and holding out as an attorney. Strict liability applies to some elements, including failure to appear or produce after summons (sections 153-154) and holding out offences (section 156). Section 159 applies Proceeds of Crime Act 2002 forfeiture orders where private prosecutors institute proceedings. Civil enforcement includes injunctions, damages (including additional amounts under section 126(2) and section 129(2A)), accounts of profits and declarations that threats are unjustified. Customs may seize and forfeit goods; courts may order release, forfeiture or compensation for wrongful seizure (section 137). The Registrar may award costs in proceedings (section 221) and require security for costs from non-resident opponents or removal applicants (section 222). Revocation of registration treats it as never having occurred, subject to savings for seizures and proceedings (section 84C).

Part 14 creates indictable offences punishable by up to five years' imprisonment or 550 penalty units (or both) for acts under ss 145(1), 146(1), 147(1), 147A(1), 147B(1) and 148(1), with summary offences up to 12 months or 60 penalty units where negligence applies. Strict liability elements apply to certain paragraphs in ss 147, 147A, 147B, 153 and 154. Section 156 imposes 30 penalty units on individuals and 150 on companies for false descriptions as trade marks attorneys or agents. Section 157 imposes 30 penalty units for improper use of "Trade Marks Office". Section 159 applies Proceeds of Crime Act 2002 forfeiture provisions to private prosecutions. Civil enforcement includes removal orders under s 101, injunctions and damages under s 126, compensation under s 137(4), and restraint of unjustified threats under s 129. The Register provides prima facie evidence under s 210 for enforcement proceedings.

Chapter 2 of the Criminal Code applies to all offences (s 4A). Recording a PPSA security interest does not affect a dealing (s 22(2A)); equities may be enforced except to prejudice of good-faith purchaser for value; does not apply to PPSA security interest (s 22(4)). Register prima facie evidence does not apply to PPSA security interests (s 210(4)). For prosecutions under Act or related Crimes Act/Criminal Code offences, servant/agent conduct and state of mind within authority attributed to individual unless due diligence shown (s 160). Forfeiture order provisions of Proceeds of Crime Act 2002 apply where non-DPP person institutes proceedings for indictable offence under Part 14 (s 159). Comptroller-General must retain control if required by other Commonwealth law (s 140). Regulations may incorporate listings published by the Registrar (s 27(4)). Regulations for Convention country may incorporate other instruments as in force from time to time (s 6(3)). Regulations may extend s 44 to protected international trade marks (s 44 notes). Regulations may prescribe practice/procedure of prescribed courts including time limits and extensions (s 198). Regulations may give trade marks attorneys lien rights equivalent to solicitors (s 229(2)). Act does not affect passing-off law, but in passing-off actions involving registered mark substantially identical or deceptively similar, damages unavailable if defendant proves innocent commencement and immediate cessation (s 230). Specific regulation-making power for effect of Public Health (Tobacco and Other Products) Act 2023 (s 231A). Transfers between Federal Court and Federal Circuit and Family Court of Australia (Division 2) governed by Federal Circuit and Family Court of Australia Act 2021 (s 153) and Federal Court of Australia Act 1976 (ss 32AB, 32AC) (s 194(3)). Registrar may delegate to prescribed employee/class (s 206). Computerised decision-making with substitution and ART review (s 222A). ART review available for various refusals including revocation of acceptance, opposition dismissal, Commission decisions, extensions, attorney registration (ss 38, 99A, 175, 178, 180, 224, 228A). Address for service must be Australia/New Zealand (s 215(5)). Use on export goods/services or preparatory acts constitutes use in Australia (s 228(1)).

Section 122A assesses permission or influence without regard to how it arose, cross-referencing the Corporations Act 2001 for associated entities. Section 231A regulations may be inconsistent with and prevail over the Act to the extent of inconsistency with the Public Health (Tobacco and Other Products) Act 2023. Section 223A disapplies subsection 36(2) of the Acts Interpretation Act 1901 for non-prescribed acts on non-open days. Reviews lie under the Administrative Review Tribunal Act 2024. Section 189A regulations implement the Madrid Protocol and may prevail over the Act. Section 230 preserves the law of passing off. Section 160 attributes conduct and state of mind of employees and agents to natural persons, with due-diligence defences. Section 150 deems aiding or abetting extraterritorial acts that would be offences if done in Australia to constitute the offence. Prescribed courts exercise jurisdiction under the Federal Court of Australia Act 1976 and Federal Circuit and Family Court of Australia Act 2021 for transfers and appeals. Section 229 extends legal professional privilege to trade marks attorneys' communications for intellectual property advice, equivalent to lawyer advice.

Transitional provisions in ss 255-256 and Part 22 apply the 1995 Act to pending matters from the repealed Trade Marks Act 1955, with s 234 preserving validity of old Part A registrations after seven years except in cases of fraud or non-distinctiveness. Section 140 prevents release or disposal of seized goods where other Commonwealth law requires retention. Section 159 incorporates Proceeds of Crime Act 2002 Parts 2-2 and 2-3 for forfeiture in private prosecutions. Section 157A interacts with the Corporations Act 2001 by providing that an appointed trade marks attorney is not a director under that Act. Section 210(4) excludes PPSA security interests from prima facie evidence rules. Section 150 attributes liability for extraterritorial acts under Criminal Code ss 11.2 and 11.2A. Section 160 attributes state of mind and conduct of servants or agents. Section 144 allows regulations to modify Part 13 for external territories. Section 222A permits computerised decision-making with substitution rights, reviewable by the Administrative Review Tribunal.

The notes contain no specific recent amendments or policy reasons for changes. Section 231A authorises regulations addressing the effect of the Public Health (Tobacco and Other Products) Act 2023 on the Act, including deeming provisions. Section 222A and related provisions in Part 21 facilitate computerised decision-making and electronic filing. Section 229AA-229B authorise disclosure of personal information by the Designated Manager to the Board or ASIC and publication of specified attorney details. No other recent changes are identified in the source notes. The transitional provisions in Part 22 and ss 254-260 address the commencement of the Act on 1 January 1996 under s 2(2), carrying forward existing registered marks under s 233, restoring expired marks under s 237(2), treating disclaimers under s 238, and applying old rules to certain pending assignment and rectification proceedings under ss 249-251. Section 239A permits linking of same-day applications for different classes into a single registration. Section 234(2) deems old Part A registrations valid after seven years unless fraud or other exceptions are shown.

The notes name no specific cases or controversies. No specific cases, challenges or controversies are named in the source notes. No specific cases are named in the source notes.

Application lapses if not accepted within prescribed period (or extension); late extension under s 224 revives until extended period expires (s 37). Acceptance may be revoked before registration if should not have been accepted and revocation reasonable (s 38(1)). If notice of opposition filed and no intention to defend within prescribed period (or extension), application lapses (s 54A). If opposition on ground of amendment contrary to Act, Registrar may revoke acceptance and re-examine (s 55(2)). If proceedings discontinued, dismissed or lapse under s 54A, s 55(2) does not apply (s 55(3)). Revocation of registration within 12 months if should not have been registered and reasonable; treats registration as never occurred with savings for certain proceedings, seizures and liabilities (ss 84A, 84C). Mandatory revocation within 1 month if opposition components ignored (s 84B). Non-use application on 3-year ground only after 3 years from entry (s 93). Opponent bears burden of rebutting no-intention or non-use allegations (s 100(1)). Registrar or court may decline removal if reasonable even if grounds made out (s 101(3)). For localised non-use, retention with conditions/limitations possible (s 102). Unrenewed mark ceases on expiry and removed after 6 months; remains treated as registered for third-party applications during window (ss 78, 80). For marks entered more than 10 years after filing, special renewal rules with potential periods and prescribed period for requests (ss 80A-80H). Amendment after publication limited; must not substantially affect identity or extend rights (s 65). Other documents except opposition notices under ss 52 or 92 may be amended (s 66(2)). Assignment or transmission not partial by area (s 106). Record of interest not proof (s 116). No infringement action for acts during expired but later-renewed periods (s 128). Mere notification of registration not a threat (s 130A). Designated owner may consent to forfeiture before infringement action (s 135). Late claims for release only if no infringement action instituted, reasonable in circumstances and goods not disposed (s 136B). Released goods forfeit if not collected within 90 days (s 136E). Insufficient security or undertaking creates recoverable debt (ss 141, 141A). Commonwealth not liable for seizure, non-seizure or release (s 142). Non-compliance with document requirement on fraud suspicion is offence (max 6 months imprisonment) (s 143). Collective trade mark cannot be assigned or transmitted (s 166). Certification trade mark assignment only with Commission consent (ss 180-180A). Defensive trade mark cancellable by Registrar if not otherwise registered (s 189). Regulations may prevail over Act for Madrid Protocol (s 189A). No prosecutions in Federal Court or Division 2 (ss 191, 191A). Transfer between Federal Court and Division 2 governed by separate legislation (s 194(3)). Leave required for Full Court appeals from single-judge or Division 2 decisions on Registrar appeals (s 195(2)). Special leave to High Court (s 195(3)). No other appeals (s 195(4)). Registrar must give hearing opportunity before adverse exercise (s 203). Address for service must be Australia/New Zealand; non-Australian old addresses require new Australian address (s 215(5), s 260). Confidential registered-user information under repealed Act remains protected (s 258). Documents kept under repealed Act continue (s 259). Existing addresses for service under repealed Act remain valid until new notified (s 260). Pre-commencement series applications with same filing date and owner may be linked (s 51A). Pre-commencement series registrations may be linked (s 82A). After 7 years from registration, original registration under repealed Act or this Act of pending Part A applications taken valid unless obtained by fraud, contrary to s 28 of repealed Act, or does not distinguish (s 234). Term of existing marks expires on day it would have under repealed Act (s 235). Pre-1996 14-year renewals ineffective and replaced by 10-year (s 236). Expired marks within 12 months before 1 January 1996 may be restored and renewed within 12 months (s 237). Old disclaimers have effect as if made under s 74 (s 238). Old Part C rules continue and may be varied (s 239). Linked trade marks may be treated as one (s 239A). Pending applications, notices and requests under repealed Act dealt with under this Act and taken filed under it (s 240). Specific transitional rules for pending Part A/B applications, divisional, linked, Convention, certification, defensive, amendments, lapsed, assignments, rectification, non-use, infringement (ss 241-254C). General transitional preserve repealed Act operation for pending proceedings with adjustments (s 255). No fees for acts done under repealed Act taken done under this Act (s 256). Registrar and Deputy in office on 1 January 1996 continue (s 257).

Defences under section 122 are limited to good-faith use and do not apply where use is not descriptive or comparative. The section 122A exhaustion defence requires reasonable inquiries before use and applies only to goods; section 123 applies consent to services. The prior-use defence under section 124 is confined to the particular area of continuous use. Additional damages under sections 126(2) and 129(2A) require consideration of flagrancy and deterrence. Unjustified-threat actions under section 129 are unavailable if the defendant proves registration and infringement. Importation notices remain in force for four years unless revoked (section 132(4)). Certification rules must meet detailed section 173 requirements and obtain Commission approval; variations require further approval (section 178). Defensive registration may be cancelled if the mark is not otherwise registered in the owner's name (section 189). Time extensions over three months must be published and may be opposed (section 224). Computer-generated decisions may be substituted, but review rights attach to the substituted decision (section 222A). Transitional provisions under Part 22 apply specific rules to pre-1996 applications, including revival of lapsed applications and continuous-use defences. Section 124(2) limits the prior-use defence to the area of use. Section 127 prevents damages where non-use removal grounds are established for the critical period. Section 128 bars actions for acts in renewal grace periods. Section 130A clarifies that mere notification of a registered mark is not a threat.

Opponents in non-use proceedings under s 100 must rebut allegations with evidence of use or obstacles, as authorised use counts as owner use under s 7(3). Removal under s 97(1) may be restored under s 98 if opposition is filed within an extended period. Localised non-use may lead only to conditions or limitations under s 102 rather than full removal. Computer-generated decisions under s 222A may be substituted by the Registrar, triggering fresh review rights. Transitional address-for-service rules under s 260 require Australian addresses where the old address was not in Australia. Collective marks cannot be assigned under s 166. Forfeited goods under s 136A cannot be disposed of until 30 days after forfeiture under s 139(2). Section 127 bars damages or accounts of profits in infringement actions during periods where non-use removal grounds exist. Section 151(5) deems use of "registered" symbols as representations of registration except in export cases.

File application in accordance with regulations with prescribed document, representation and goods/services specification by person or persons having legal personality (or association for collective) (s 27(2)-(2A), (3)). Claim Convention priority within six months with supporting documents if required (s 29). Publish particulars (s 30). Examine for compliance and rejection grounds (s 31). Accept unless non-compliance or grounds; may be subject to conditions/limitations (s 33). Oppose within prescribed period by notice in accordance with regulations (s 52). File notice of intention to defend (s 52A). Give opportunity to be heard in opposition (s 54). Decide to refuse or register having regard to established grounds (s 55). Register accepted mark within prescribed period if unopposed or opposition resolved (s 68). Enter graphical representation, number and particulars (s 69). Publish registration and issue certificate (s 71). Request renewal within prescribed period before expiry in approved form (s 75). Notify name changes (s 216). Record assignments/transmissions in approved form with prescribed documents (ss 107, 109). Apply to record interests/rights in approved form with proof (ss 113, 117). Lodge objection notice to importation (s 132). For seized goods, designated owner consent to forfeiture or claim release with prescribed information (ss 135-136). Bring infringement action within action period (s 137). For collective, apply by association; rules govern member use (ss 164, 165). For certification, file rules specifying requirements, assessment, attributes, disputes (s 173); obtain Commission certificate (s 175). For defensive, show likely connection from prior use (s 185). Maintain address for service in Australia/New Zealand (s 215). Notify changes; use prescribed or Registrar-determined filing means (ss 213, 215, 216). Pay prescribed fees by approved means (s 223). Seek extensions under s 224 where applicable. Comply with Registrar directions on form and evidence (ss 213B, 213C). For attorneys, maintain registration, director requirements and notifications (ss 156, 157A, 228A-228B). Preserve privilege for IP advice (s 229). For transitional marks, note automatic carry-over, 7-year validity rule, renewal replacement and address preservation (ss 233-260).

Owners should maintain good-faith use records, renew within prescribed periods (sections 75-79), notify name or address changes (section 216), and record assignments or interests (Parts 10-11). Applicants for certification marks must file comprehensive rules under section 173 and obtain Commission certification before acceptance. Importers should conduct reasonable inquiries before using marks on goods to establish section 122A consent. Persons facing threats should consider section 129 actions promptly. Trade marks attorneys must satisfy registration criteria under section 228A and maintain professional conduct standards prescribed by regulation. Parties should use approved filing means (section 213), maintain addresses for service in Australia or New Zealand (section 215), and seek extensions under section 224 where errors or special circumstances arise. For oppositions or removal applications, follow prescribed procedures under sections 52, 96 and regulations. Computerised decisions should be monitored for substitution opportunities. Transitional applicants should comply with Part 22 revival and amendment rules for pre-1996 matters.

Owners should maintain records of good-faith use (including authorised use) to rebut s 92(4) allegations, request renewal within prescribed periods under s 75 or late renewal under s 79, notify address and name changes under ss 215-216, and respond to opposition notices under s 52A. Applicants should search for substantially identical or deceptively similar marks before filing to address s 44 grounds, file divisional or series applications correctly under ss 45-46 and 51, and ensure opposition notices comply with regulations under s 52(3). Importers should provide required documents under s 143 and claim release of seized goods under s 136 with prescribed information. Associations seeking collective marks must apply under s 164 and maintain rules for member use under s 163. All parties should use prescribed forms for applications, oppositions and claims, and seek certificates under s 105 where use or obstacles are established. The Registrar must be notified of substitutions under ss 92(5) and 96A where interests vest in others.