Christmas Island;

Cocos (Keeling) Islands;

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 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:

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

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 Customs Act 1901; orsection 68 of the

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 is not such a person but performs services, in the Trade Marks Office, for or on behalf of the Commonwealth.

(a) is a person engaged under the Public Service Act 1999 and is employed in the Trade Marks Office; or

is not such a person but performs services, in the Trade Marks Office, for or on behalf of the Commonwealth.

examine 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.

filing date means:

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

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

in relation to an application to which section 241 applies—the day referred to in subsection 241(5); or

in relation to an application made under section 243—the day referred to in subsection 243(6); or

in relation to a prescribed application—the day determined in the prescribed way.

geographical indication 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: mode of use; or use within a territorial area within Australia; or 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.

mode of use; or

use within a territorial area within Australia; or

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 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:

the person who has filed (under section 52) a notice of opposition to the registration of the trade mark; or

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.

section 8 (interests to which the Act does not apply);

(b) security interest);section 12 (meaning of

Chapter 9 (transitional provisions).

predecessor in title, in relation to a person who claims to be the owner of a trade mark, means:

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

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.

preferred means:

in relation to filing a document with the Trade Marks Office—means the means specified under subsection 213A(4); or

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 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.

registered trade marks attorney means a person registered as a trade marks attorney under this Act.

Registrar means the Registrar of Trade Marks.

registration number 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:

transmission by operation of law; or

devolution on the personal representative of a deceased person; or

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 Saturday; or a Sunday; or a public holiday in the Australian Capital Territory.

a Saturday; or

a Sunday; or

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.

dealt with or provided in the course of trade by another person; and

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.

a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

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.

(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:

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

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:

on a signboard or in an advertisement (including a televised advertisement); or

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.

it lapses (see sections 37 and 54A), is withdrawn (see section 214) or is rejected (see section 33); or

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

if the Registrar refuses (under section 55) to register the trade mark and:

there is an appeal against the decision; and

the decision is confirmed on appeal;

—the day on which the decision is confirmed on appeal; or

the trade mark is registered under section 68.

Application for registration under repealed Act

the application had not lapsed (see subsection 48(1)), been withdrawn (see subsection 40A(1)) or refused (see subsection 44(1)); and

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:

the period allowed for appealing against the decision had not yet ended; or

an appeal had been made against the decision but had not yet been decided; and

the trade mark had not been registered under section 53.

if they are the same as the other goods; or

if they are of the same description as that of the other goods.

if they are the same as the other services; or

if they are of the same description as that of the other services.

(a) the Trade Marks Act 1955 as in force immediately before its repeal; and

the regulations under that Act that were in force immediately before its repeal.

was a registered trade mark; or

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.

goods; or

services; or

both goods and services.

to use the trade mark; and

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.

as a purchaser in good faith for value; and

without notice of any fraud on the part of the owner.

Part 2.5 (taking personal property free of security interests);

Part 2.6 (priority between security interests);

Chapter 4 (enforcement of security interests).

does not have any exclusive rights to use, or authorise other persons to use, the trade mark in relation to:

the article or substance or other goods of the same description; or

the service or other services of the same description; and

is taken to have ceased to have those exclusive rights from and including the day determined by the court under subsection (4).

does not have any exclusive rights to use, or authorise other persons to use, the sign in relation to:

the article or substance or other goods of the same description; or

the service or other services of the same description; and

is taken to have ceased to have those exclusive rights from the day determined by the court under subsection (4).

a registered trade mark consists of, or contains, a sign that describes or is the name of:

an article or substance that was formerly exploited under a patent; or

a service that was formerly provided as a patented process; and

it is at least 2 years since the patent has expired or ceased; and

the sign is the only commonly known way to describe or identify the article, substance or service.

does not have any exclusive rights to use, or authorise other persons to use, the trade mark in relation to:

the article or substance or other goods of the same description; or

the service or other services of the same description; and

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.

does not have any exclusive rights to use, or authorise other persons to use, the sign in relation to:

the article or substance or other goods of the same description; or

the service or other services of the same description; and

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.

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;

the authorised user may (subject to subsection (2)) bring an action for infringement of the trade mark:

at any time, with the consent of the registered owner; or

during the prescribed period, if the registered owner refuses to bring such an action on a particular occasion during the prescribed period; or

after the end of the prescribed period, if the registered owner has failed to bring such an action during the prescribed period;

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;

the authorised user may:

give to the Comptroller-General of Customs a notice under section 132 objecting to the importation of goods that infringe the trade mark; or

revoke such a notice;

an authorised user may give permission to any person:

to alter or deface; or

to make any addition to; or

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;

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.

an application for the registration of a trade mark may be amended under section 65; and

the applicant has not asked that the application be amended;

the Registrar may, on his or her own initiative but in accordance with the regulations, amend the application as necessary:

to remove any ground on which the application could be rejected; or

so as to ensure that the application is made in accordance with this Act.

the particulars of the application have been published under section 30; and

the amendment requested is not an amendment which could be made under section 65.

the Registrar need not publish the request in accordance with subsection (3); and

the request cannot be opposed, despite subsection (4); and

the Registrar must refuse to grant the request.

to correct a clerical error or an obvious mistake; or

if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.

an opposition to the registration of a trade mark under section 52; or

an opposition to an application under section 92.

must be in accordance with the regulations; and

may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

to use the trade mark in Australia; or

to authorise the use of the trade mark in Australia; or

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 to which the non-use application relates and that the registered owner:

has not used the trade mark in Australia; or

has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

used the trade mark in Australia; or

used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

in accordance with the regulations; and

within the prescribed period.

must be in a form approved by the court; and

must be filed in accordance with the rules of court.

there is no opposition to an application to the Registrar under subsection 92(1); or

an opposition to an application under that subsection has been dismissed (see section 99A);

the Registrar must remove the trade mark from the Register in respect of the goods and/or services specified in the application.

the Registrar has removed a trade mark from the Register under subsection 97(1) because no notice of opposition was filed within the period provided under the regulations; and

the Registrar subsequently extends the period within which the notice may be filed; and

a notice of opposition is filed within the extended period;

the Registrar must restore the trade mark to the Register. Also, the trade mark is taken not to have been removed from the Register.

a person filed a notice of opposition under subsection 96(1) to an application for the removal of a trade mark from the Register; and

(b) the person failed to do a thing (the relevant thing):

that the person is required or permitted by the regulations to do in relation to the person’s opposition to the application; and

that is prescribed by the regulations for the purposes of this subparagraph; and

as a result of the person’s failure to do the relevant thing, the application is taken under the regulations to be unopposed; and

the Registrar removed the trade mark from the Register under paragraph 97(1)(a); and

the Registrar subsequently extends the period under the regulations within which the person is required or permitted to do the relevant thing; and

the person does the relevant thing within the extended period;

the Registrar must restore the trade mark to the Register. Also, the trade mark is taken not to have been removed from the Register.

any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

to use the trade mark in Australia; or

to authorise the use of the trade mark in Australia; or

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 to which the opposed application relates (relevant goods and/or services); or

any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or

any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

the opponent has established that the trade mark or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services before that period; or

in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee in relation to those goods or services before that period and that that use was in accordance with the terms of the assignment; and

the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee before that period as having been a use of the trade mark in relation to those goods or services by the registered owner.

the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or

in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and

the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

the proceedings relating to an opposed application have not been discontinued or dismissed; and

the Registrar is satisfied that the grounds on which the application was made have been established;

the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

similar goods or closely related services; or

similar services or closely related goods;

to those to which the application relates.

the applicant is the registered owner of a trade mark that is substantially identical with, or deceptively similar to, the challenged trade mark and is registered in respect of the goods and/or services specified in the application subject to the condition or limitation that the use of the trade mark is to be restricted to:

(i) goods and/or services to be dealt with or provided in a particular place (specified place) in Australia (otherwise than for export from Australia); or

(ii) goods and/or services to be exported to a particular market (specified market); or

the Registrar or the court is of the opinion that such a trade mark may properly be registered in the name of the applicant with that condition or limitation.

that the challenged trade mark has remained registered for the period referred to in paragraph 92(4)(b); and

that during that period there has been no use, or no use in good faith, of the challenged trade mark in relation to:

goods or services dealt with or provided in the specified place; or

goods or services to be exported to the specified market;

the Registrar may decide, or the court may order, that the challenged trade mark should not be removed from the Register but that the registration of the trade mark should be subject to the conditions or limitations that the Registrar or the court considers necessary to ensure that the registration does not extend to the use of the trade mark in relation to:

goods or services dealt with or provided in the specified place; or

goods or services to be exported to the specified market.

a trade mark has been used in good faith during a particular period; or

a trade mark has not been used during a particular period solely because of circumstances that were an obstacle to its use;

the Registrar or the court must, if so requested by the registered owner of the trade mark, give to the registered owner a certificate of those findings.

the certificate is, on being produced, evidence of the facts stated in it; and

if the proceedings are determined in favour of the opponent and, on or before filing the notice of opposition, the opponent notified the applicant of the contents of the certificate—the opponent is entitled, unless the Registrar or the court otherwise directs, to have the opponent’s full costs paid by the applicant.

the applicant for the registration of the trade mark; or

the person to whom it has been assigned or transmitted;

must apply to the Registrar for the assignment or transmission to be recorded.

be in an approved form; and

be filed, together with any prescribed document, in accordance with the regulations.

at, or within, the time provided for in the regulations, record in the manner that the Registrar thinks fit (but not in the Register) the particulars of the assignment or transmission; and

publish the particulars of the assignment or transmission in accordance with the regulations.

the person registered as the owner of the trade mark; or

the person to whom the trade mark has been assigned or transmitted;

must apply to the Registrar for a record of the assignment or transmission to be entered in the Register.

be in an approved form; and

be filed, together with any prescribed document, in accordance with the regulations.

enter the particulars of the assignment or transmission in the Register; and

(b) register the person to whom the trade mark has been assigned or transmitted (beneficiary) as the owner of the trade mark in relation to the goods and/or services in respect of which the assignment or transmission has effect.

the recording of the assignment or transmission; and

the registration of the beneficiary as the owner of the trade mark.

(a) goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or

services that are closely related to registered goods; or

(c) services of the same description as that of services (registered services) in respect of which the trade mark is registered; or

goods that are closely related to registered services.

However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.

the trade mark is well known in Australia; and

the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:

(i) goods (unrelated goods) that are not of the same description as that of the goods in respect of which the trade mark is registered (registered goods) or are not closely related to services in respect of which the trade mark is registered (registered services); or

(ii) services (unrelated services) that are not of the same description as that of the registered services or are not closely related to registered goods; and

because the trade mark is well known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and

for that reason, the interests of the registered owner are likely to be adversely affected.

applying the trade mark to registered goods, or using the trade mark in physical relation to them, after the state, condition, get-up or packaging in which they were originally offered to the public has been altered;

altering, or partially removing or obliterating, any representation of the trade mark applied to registered goods or used in physical relation to them;

if the trade mark has been applied to registered goods, or used in physical relation to them, together with other matter indicating that the registered owner or authorised user has dealt with the goods—removing or obliterating, totally or in part, any representation of the trade mark without totally removing or obliterating the other matter;

applying another trade mark to registered goods or using another trade mark in physical relation to them;

if the trade mark has been applied to registered goods or used in physical relation to them—using on the goods, or on the packaging or container of the goods, any matter that is likely to injure the reputation of the trade mark.

is the owner of registered goods; and

in the course of trade, or with a view to a dealing with the goods in the course of trade:

does an act that is prohibited under the notice of prohibition; or

authorises that act to be done.

acquired them in good faith and without being aware of the notice of prohibition; or

became the owner of the goods by virtue of a title derived from a person who had so acquired them.

the person uses in good faith:

the person’s name or the name of the person’s place of business; or

the name of a predecessor in business of the person or the name of the predecessor’s place of business; or

the person uses a sign in good faith to indicate:

the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

the time of production of goods or of the rendering of services; or

the person uses the trade mark in good faith to indicate the intended purpose of goods (in particular as accessories or spare parts) or services; or

the person uses the trade mark for the purposes of comparative advertising; or

the person exercises a right to use a trade mark given to the person under this Act; or

the court is of the opinion that the person would obtain registration of the trade mark in his or her name if the person were to apply for it; or

both:

the person uses a trade mark that is substantially identical with, or deceptively similar to, the first-mentioned trade mark; and

the court is of the opinion that the person would obtain registration of the substantially identical or deceptively similar trade mark in his or her name if the person were to apply for it; or

the person, in using a sign referred to in subsection 120(1), (2) or (3) in a manner referred to in that subsection, does not (because of a condition or limitation subject to which the trade mark is registered) infringe the exclusive right of the registered owner to use the trade mark.

the goods are similar to goods in respect of which the trade mark is registered; and

before the time of use, the person had made reasonable inquiries in relation to the trade mark; and

(c) at the time of use, a reasonable person, after making those inquiries, would have concluded that the trade mark had been applied to, or in relation to, the goods by, or with the consent of, a person (a relevant person) who was, at the time of the application or consent (as the case may be):

the registered owner of the trade mark; or

an authorised user of the trade mark; or

a person permitted to use the trade mark by the registered owner; or

a person permitted to use the trade mark by an authorised user who has power to give such permission under paragraph 26(1)(f); or

a person with significant influence over the use of the trade mark by the registered owner or an authorised user; or

(vi) an associated entity (within the meaning of the Corporations Act 2001) of a relevant person mentioned in subparagraph (i), (ii), (iii), (iv) or (v).

consent subject to a condition (for example, a condition that the goods are to be sold only in a foreign country); and

consent that can be reasonably inferred from the conduct of a relevant person.

whether it arose directly or indirectly; or

whether it arose by way of proprietary interest, contract, arrangement, understanding, a combination of those things, or otherwise.

whether it arose directly or indirectly; or

whether it arose by way of proprietary interest, contract, arrangement, understanding, a combination of those things, or otherwise.

(a) goods similar to goods (registered goods) in respect of which the trade mark is registered; or

services closely related to registered goods; or

(c) services similar to services (registered services) in respect of which the trade mark is registered; or

goods closely related to registered services;

if the person, or the person and the person’s predecessor in title, have continuously used in the course of trade the unregistered trade mark in relation to those goods or services from a time before:

the date of registration of the registered trade mark; or

the registered owner of the registered trade mark, or a predecessor in title, or a person who was a registered user of the trade mark under the repealed Act, first used the trade mark;

whichever is earlier.

an injunction, which may be granted subject to any condition that the court thinks fit; and

at the option of the plaintiff but subject to section 127, damages or an account of profits.

the flagrancy of the infringement; and

the need to deter similar infringements of registered trade marks; and

the conduct of the party that infringed the registered trade mark that occurred:

after the act constituting the infringement; or

after that party was informed that it had allegedly infringed the registered trade mark; and

any benefit shown to have accrued to that party because of the infringement; and

all other relevant matters.

infringed the trade mark; and

was done after the registration had expired and before it was renewed.

infringed the trade mark; and

was done after the end of the prescribed period and before the registration was renewed.

a registered trade mark; or

a trade mark alleged by the person to be registered;

any person aggrieved by the threat (plaintiff) may bring an action (either in a prescribed court or in any other court having jurisdiction) against the person making the threat (defendant).

a declaration that the threat is unjustified; and

an injunction restraining the defendant from continuing to make the threat.

The plaintiff may also recover any damages that he or she has sustained because of the defendant’s conduct.

the flagrancy of the threat; and

the need to deter similar threats; and

the conduct of the defendant that occurred after the defendant made the threat; and

any benefit shown to have accrued to the defendant because of the threat; and

all other relevant matters.

the trade mark is registered; and

the acts of the threatened person in respect of which the defendant threatened to bring an action constitute an infringement of the trade mark.

the registered owner of the registered trade mark has not given a notice under subsection (1); or

any notice given under subsection (1) is no longer in force;

an authorised user of the trade mark having power to give a notice under subsection (1) may ask the registered owner to give such a notice in respect of the trade mark.

at any time, with the consent of the registered owner; or

during the prescribed period, if the registered owner refuses to comply with the request on a particular occasion during the prescribed period; or

after the end of the prescribed period, if the registered owner has failed to give such a notice during the prescribed period.

The authorised user must give also to the Comptroller-General of Customs, together with the notice:

any document prescribed for the purposes of subsection (1); and

any other prescribed document.

if the authorised user has power to revoke the notice—by the authorised user; or

in any other case—by the person who is then the registered owner of the trade mark.

are imported into Australia; and

(b) are subject to customs control under the Customs Act 1901.

have applied to them or in relation to them a sign that, in the opinion of the Comptroller-General of Customs, is substantially identical with, or deceptively similar to, a notified trade mark; and

are goods in respect of which the notified trade mark is registered;

the Comptroller-General of Customs must seize the goods unless he or she is satisfied that there are no reasonable grounds for believing that the notified trade mark is infringed by the importation of the goods.

an amount payable under an undertaking given by the objector (or one or more of the objectors) in relation to other goods has not been paid in accordance with the undertaking; and

the Comptroller-General of Customs considers it reasonable in all the circumstances to require the security.

the designated owner makes a claim for the release of the goods within the claim period; and

the objector has not, by the end of the action period:

instituted an action for infringement of the notified trade mark in respect of the goods; and

given the Comptroller-General of Customs written notice of that action.

set out the claim period for the goods; and

set out the action period for the goods and state that the action period will begin only if the designated owner makes a claim for the release of the goods; and

if the notice is given to the objector—state the name and the address of the place of business or residence of the designated owner (if known), unless the Comptroller-General of Customs is satisfied, for reasons of confidentiality, that it is not desirable to do so; and

if the notice is given to the designated owner—state the name and the address of the place of business or residence of:

the objector; or

if the objector has nominated a person to be the objector’s agent or representative for the purposes of this Division—that person;

unless the Comptroller-General of Customs is satisfied, for reasons of confidentiality, that it is not desirable to do so.

the name and the address of the place of business or residence of any person or body (whether in or outside Australia) that made arrangements, on behalf of the designated owner of the goods, for the goods to be brought to Australia or any information that the Comptroller-General of Customs has, and believes on reasonable grounds may help in identifying and locating such a person or body; and

any information (including personal information) that the Comptroller-General of Customs has and believes on reasonable grounds may be relevant for the purpose of identifying and locating the importer of the goods; and

any information (including personal information) that the Comptroller-General of Customs has and believes on reasonable grounds may be relevant for the purpose of identifying and locating the designated owner of the goods.

return the sample goods to the Comptroller-General of Customs at a specified time that is satisfactory to the Comptroller-General of Customs; and

take reasonable care to prevent damage to the sample goods.

damage to any of the seized goods incurred during that inspection; or

anything done by the objector or any other person to, or in relation to, sample goods removed from the custody of the Comptroller-General of Customs or any use made by the objector of such sample goods.

an action for infringement of the notified trade mark in respect of the goods has not been instituted; and

the Comptroller-General of Customs considers it reasonable in the circumstances; and

the goods have not been disposed of under section 139.

must be in writing; and

may include any information that the Comptroller-General of Customs has, and believes on reasonable grounds may be relevant, for the purpose of identifying and locating either or both of the following:

the importer of the goods;

any other person or body (whether in or outside Australia) that made arrangements for the goods to be brought to Australia.

the objector gives written notice to the Comptroller-General of Customs stating that the objector consents to the release of the seized goods; and

the goods have not been disposed of under section 139.

the Comptroller-General of Customs, having regard to information that has come to his or her knowledge after the goods were seized, is satisfied that there are no reasonable grounds for believing that the notified trade mark has been infringed by the importation of the goods; and

the objector has not brought an action for infringement of the notified trade mark in respect of the goods.

the designated owner has made a claim for the release of the goods; and

the objector has not, by the end of the action period:

instituted an action for infringement of the notified trade mark in respect of the goods; and

given the Comptroller-General of Customs written notice of that action.

the designated owner has made a claim for the release of the goods; and

action for infringement of the notified trade mark in respect of the goods has been instituted; and

at the end of a period of 20 working days commencing on the day on which the action was instituted, there is not in force an order of the court in which the action was instituted preventing the release of the goods.

may, on the application of a person, allow the person to be joined as a defendant to the action; and

must allow the Comptroller-General of Customs to appear and be heard.

at any time, if it thinks it just, order that the seized goods be released to the designated owner subject to the conditions (if any) that the court considers fit to impose; or

order that the seized goods be forfeited to the Commonwealth.

the court decides that the trade mark was not infringed by the importation of the goods; and

the designated owner of the goods, or any other defendant, satisfies the court that he or she has suffered loss or damage because the goods were seized;

the court may order the objector to pay to the designated owner or other defendant compensation, in the amount determined by the court, for any part of that loss or damage that is attributable to any period beginning on or after the day on which the action was brought.

in the manner prescribed by the regulations; or

if no manner of disposal is so prescribed—as the Comptroller-General of Customs directs.

the goods did not infringe the objector’s notified trade mark; and

the person establishes, to the satisfaction of the court:

that he or she was the owner of the goods immediately before they were forfeited; and

that there were circumstances providing a reasonable excuse for the failure to make a claim for the release of the goods.

is a debt due by the objector, or by the objectors jointly or each of them separately, to the Commonwealth; and

may be recovered by an action taken in a court of competent jurisdiction.

is a debt due by the objector, or by the objectors jointly or each of them separately, to the Commonwealth; and

may be recovered by an action taken in a court of competent jurisdiction.

goods that may be seized under this Part are imported into Australia; and

the Comptroller-General of Customs, relying on information received, is satisfied on reasonable grounds that the use of a trade mark applied to or in relation to those goods is fraudulent;

the Comptroller-General of Customs may ask the importer of the goods or an agent of the importer:

to produce any document in his or her possession relating to the goods; and

to give information about:

the name and address of the person by whom the goods were consigned to Australia; and

the name and address of the person in Australia to whom the goods were consigned.

a registered trade mark has been applied to goods, or in relation to goods or services; and

the goods or services are being, or are to be, dealt with or provided in the course of trade; and

the person:

alters or defaces the trade mark; or

makes any addition to the trade mark; or

wholly or partly removes, erases or obliterates the trade mark; and

the person does so without:

the permission of the registered owner, or an authorised user, of the trade mark; or

being required or authorised to do so by this Act, a direction of the Registrar or an order of a court.

Summary offence

a registered trade mark has been applied to goods, or in relation to goods or services; and

the goods or services are being, or are to be, dealt with or provided in the course of trade; and

the person:

alters or defaces the trade mark; or

makes any addition to the trade mark; or

wholly or partly removes, erases or obliterates the trade mark; and

the person does so without:

the permission of the registered owner, or an authorised user, of the trade mark; or

being required or authorised to do so by this Act, a direction of the Registrar or an order of a court.

the person applies a mark or sign to goods, or in relation to goods or services; and

the goods or services are being, or are to be, dealt with or provided in the course of trade; and

the mark or sign is, or is substantially identical to, the registered trade mark; and

the person applies the mark or sign without:

the permission of the registered owner, or an authorised user, of the trade mark; or

being required or authorised to do so by this Act, a direction of the Registrar or an order of a court.

Summary offence

the person applies a mark or sign to goods, or in relation to goods or services; and

the goods or services are being, or are to be, dealt with or provided in the course of trade; and

the mark or sign is, or is substantially identical to, the registered trade mark; and

the person applies the mark or sign without:

the permission of the registered owner, or an authorised user, of the trade mark; or

being required or authorised to do so by this Act, a direction of the Registrar or an order of a court.

the person makes a die, block, machine or instrument; and

the die, block, machine or instrument is likely to be used for, or in the course of, committing an offence; and

the offence is an offence against section 145 or 146.

the person makes a die, block, machine or instrument; and

the die, block, machine or instrument is likely to be used for, or in the course of, committing an offence; and

the offence is an offence against section 145 or 146.

the person draws, or programs a computer or other device to draw, a registered trade mark or part of a registered trade mark; and

the registered trade mark or part of the registered trade mark is likely to be used for, or in the course of, an offence; and

the offence is an offence against section 145 or 146.

the person draws, or programs a computer or other device to draw, a registered trade mark or part of a registered trade mark; and

the registered trade mark or part of the registered trade mark is likely to be used for, or in the course of, an offence; and

the offence is an offence against section 145 or 146.

the person possesses or disposes of:

a die, block, machine or instrument; or

a computer, or other device, programmed to draw a registered trade mark or part of a registered trade mark; or

a representation of a registered trade mark or of part of a registered trade mark; and

the die, block, machine, instrument, computer, device or representation is likely to be used for, or in the course of, an offence; and

the offence is an offence against section 145 or 146.

the person possesses or disposes of:

a die, block, machine or instrument; or

a computer, or other device, programmed to draw a registered trade mark or part of a registered trade mark; or

a representation of a registered trade mark or of part of a registered trade mark; and

the die, block, machine, instrument, computer, device or representation is likely to be used for, or in the course of, an offence; and

the offence is an offence against section 145 or 146.

the person:

sells goods; or

exposes goods for sale; or

possesses goods for the purpose of trade or manufacture; or

imports goods into Australia for the purpose of trade or manufacture; and

any of the following applies:

there is a registered trade mark on the goods;

there is a mark or sign on the goods that is substantially identical to a registered trade mark;

a registered trade mark on the goods has been altered, defaced, added to, wholly or partly removed, erased or obliterated; and

the registered trade mark, or mark or sign, was applied, altered, defaced, added to, wholly or partly removed, erased or obliterated, as the case requires, without: