Australia: Raising the bar - Changes to the Trade Marks Act 1995

Key Points:

The amendments to the Trade Marks Act 1995 should result in improvements in a number of areas of trade mark practice by streamlining processes, reducing delays and generally benefit trade mark owners.

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) makes significant changes to intellectual property law.

Amendments including those to the Trade Marks Act 1995 will come into effect on 15 April 2013.

The amendments aim to reduce delays in the trade mark process particularly in opposition proceedings. Other changes include clarifying the presumption of registrability, alterations to the customs seizure process, additional damages for infringement and increases in the penalties for misuse of trade marks.

We look at the main changes below.

Presumption of registrability

A new section 41 is intended to clarify that a presumption of registrability applies to a trade mark when it is being examined by the Registrar of Trade Marks. This means that the Registrar must accept a trade mark application unless there are grounds to reject it.

The intention is that if the Registrar is unsure whether a trade mark is capable of distinguishing, any doubt should be resolved in the Applicant's favour. This change will overcome some Federal Court decisions that held that the presumption in favour of the Applicant did not apply to all sections of the Act.

The new section should make it easier for Applicants to have their trade mark applications accepted.

Opposition process

Major changes to the opposition process aim to speed up the process and reduce opportunities for delay when someone opposes the registration of a trade mark after it has cleared the examination stage in the Trade Marks Office or when the trade mark owner opposes removal of its mark for alleged non-use. These changes include:

  • The opposition period shortened from three to two months following advertisement in the Official Journal of Trade Marks. This is a significant departure from long-established practice.
  • The "required form" of the Notice of Opposition will be simplified.
  • There is a new requirement for a Statement of Grounds and Particulars to be lodged within one month of filing the Notice of Opposition. The Statement must specify the exact grounds to be relied on in the opposition and include material facts in support of the grounds. It will be difficult to amend the Statement once it is filed.
  • The Opponent will no longer need to serve the Applicant with the Notice of Opposition. The Trade Marks Office will provide a copy to the Applicant.
  • To defend an opposition, the Applicant must file a Notice of Intention to Defend within one month of service of the Statement of Grounds and Particulars.
  • A new section 231(3) will allow for amendments to the Trade Mark Regulations to deal with Opposition matters including the filing and serving of documents and extensions of time. Tighter rules and regulations are expected to limit the number of allowable extensions for filing and serving evidence in oppositions.

Punitive damages for infringement

A new section 126(2) will allow a court to award additional (punitive) damages for trade mark infringement. Factors to be taken into account include, but are not limited to, the flagrancy of the infringement, the need to deter similar infringements of registered trade marks and the conduct of the infringer. A range of summary offences will be introduced for less serious matters.

Greater penalties for trade mark infringement

Penalties for indictable and summary trade mark offences will be increased. The offences include falsifying or removing registered trade marks, falsely applying a registered trade mark and possessing or disposing of goods bearing false trade marks. For indictable offences, the maximum penalties will increase to five years' imprisonment and fines of up to $60,500 for an individual and $302,500 for a corporation.

More matters to the Federal Magistrates Court

The Federal Magistrates Court will be given jurisdiction to deal with all trade mark matters including appeals from Registrar's decisions on acceptance, rejection, opposition, amendment, revocation and removal for non-use. Currently such appeals are handled by the Federal Court of Australia.

This will allow trade mark owners the option of a court where in some instances proceedings are resolved more quickly and more cheaply.

Customs seizures process simplified

The Act simplifies the customs seizure process.

When allegedly counterfeit goods are seized, the Australian Customs Service will have to give the trade mark owner details of the seized goods and may provide details of the owner of the seized goods or anyone involved in their importation.

The Customs Service will be able to release seized goods to trade mark owners to determine if the goods are counterfeit.

The onus will be on the importer to make a claim for the seized goods within a specified time and if no claim is made the goods will be forfeited and destroyed.

In making a claim for forfeited goods the importer will have to provide contact details making it easier for trade mark owners to enforce their rights.

These changes are likely to lead to a larger volume of counterfeit goods being seized and destroyed; and much more cost effectively than under present arrangements.

Privilege and foreign trade mark attorneys

Privilege will be extended to client communications between foreign trade mark attorneys who are not also lawyers. Currently privilege extends only to Australian non-lawyer trade mark attorneys.


The amendments to the Trade Marks Act 1995 should result in improvements in a number of areas of trade mark practice by streamlining processes, reducing delays and generally benefit trade mark owners.

You might also be interested in ...

Clayton Utz communications are intended to provide commentary and general information. They should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this bulletin. Persons listed may not be admitted in all states and territories.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.