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Australia
This page outlines the Australian regime.
It covers -
introduction
The following paragraphs outline key features of the Trade
Marks Act 1995 (Cth). It is important to note that
interpretation of particular parts is based on case law;
key cases are highlighted later
in this profile.
what is a mark?
Definition of mark in the Act -
- s
17 - 'trade mark'
-
s 6 - 'sign'
Rights
of registered owner -
- s
20 - rights given by registration
-
s 21 - trade mark is personal property
-
s 22 - power of registered owner to deal with trade
mark
Licensing
- 'authorised user' -
-
s 6 - definition of 'authorised use'
-
s 26 - powers of authorised user
registration
Requirements -
- s
17 - requirement of 'use or intended to be used'
- s
185 - restrictions on defensive marks
-
mark must distinguish goods or services
-
mark must embody 'capability to distinguish' -
-
s 41(3) - mark 'inherently adapted to distinguish'
-
s 41(5) - mark to some extent 'inherently adapted
to distinguish'
-
s 41(6) - trade mark not 'inherently adapted to
distinguish' but becomes so through 'use'
- dealt
with in course of trade
rejection
Grounds for rejection of an application for registration
of a mark -
-
s 39 - mark contains certain signs (ie prescribed signs)
-
s 40 - cannot be represented graphically
-
s 41 - does not distinguish applicant's goods and services
-
s 42 - is scandalous or contrary to law
-
s 43 - is likely to deceive or cause confusion
-
s 44 - mark is identical etc to trade mark
Grounds
upon which a trade mark application can be opposed -
- s
57 - same grounds as for rejection under Part 4 Div
2, except s 40
-
s 58 - applicant not owner of mark
-
s 59 - applicant not intending to use mark
-
s 60 - mark similar to a mark that has acquired a reputation
-
s 61 - mark consists of a false geographical
indication
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s 62 - application is defective
infringement
Infringing mark must be 'substantially identical or deceptively
similar' (s120) and be in 'use' by the infringer -
-
s 120(1) - infringing use in relation to registered
goods or services
-
s 120(2) - infringing use in relation to 'same description'
or closely related goods or services
-
s 120(3) - infringement of well-known trade marks
Restriction on secondary dealings (including parallel
imports) under s 123.
Remedies for infringement are -
- s
20(2) - registered owner can commence proceedings
-
s 26(1)(b) - authorised user entitled to commence proceedings
in certain circumstances
-
s 125 - where relief can be sought
-
s 126 - relief that can be claimed: injunction, account
of profits or damages
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s 127 - special case where plaintiff not entitled to
damages
-
Pt 14 - criminal procedures and penalties for counterfeiting
-
s 129 - groundless threats
Defences
to infringement are -
-
s 122 - use in 'good faith'
-
s 122(1)(f) - other exemptions, including honest concurrent
use
-
s 124 - prior and continuous use
amendment
Amendment and cancellation of registrations is covered
by -
- Pt
8 Div 1 - action by the Registrar of Trade Marks
-
Pt 8 Div 2 - action by the Federal Court
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