Trade Marks Act: A guide to registration and defence in Australia

Navigating the complexities of trade mark law can be a daunting task for businesses and individuals alike. This Legal Kitz blog aims to demystify key aspects of trade mark law in Australia, focusing on how to register a trade mark, understanding the Trade Marks Act 1995 (Cth), and how to defend against an infringement claim. We’ll also touch upon trade mark penalties, how to protect a brand, and intellectual property rights in Australia.

How to register a trademark

Preliminary steps: How to protect a brand

Before you can register a trade mark, it’s crucial to conduct a thorough search to ensure that your desired mark is unique and does not infringe upon existing registered marks. Websites like the Australian Trade Marks Online Search System (ATMOSS) can be invaluable resources for this. Protecting your brand starts with this crucial step.

Application process

  1. Filing the Application: The application can be filed online through IP Australia.
  2. Examination: IP Australia will examine the application to ensure it meets all legal requirements.
  3. Publication and Opposition: If approved, the application is published, and third parties have two months to oppose it.
  4. Registration: If there are no successful oppositions, the trade mark is registered.
trade marks act

Costs and duration: Trade mark renewal fees

The cost of registering a trade mark varies depending on various factors, including the number of classes under which you’re registering. Additionally, be aware of trade mark renewal fees, which will be applicable later to maintain your registration. The process can take anywhere from 7 to 13 months if there are no complications.

Understanding the Trade Marks Act 1995 (Cth)


The Trade Marks Act 1995 (Cth) is the cornerstone of trade mark law in Australia. It provides the legal framework for the registration, protection, and enforcement of trade marks.

Key provisions and trade mark penalties

  • Section 17: Defines what a trade mark is.
  • Section 44: Deals with identical and deceptively similar marks.
  • Section 120: Outlines what constitutes infringement and associated trade mark penalties.

Recent amendments

It’s crucial to stay updated with amendments to the Act. For instance, the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 made significant changes to the Trade Marks Act.

How to defend an infringment claim

Immediate steps

If you receive a cease and desist letter, it’s crucial to seek legal advice immediately. Ignoring the letter is not advisable.

Legal defences

  1. Non-Infringing Use: Argue that the use of the mark is not infringing as per Section 120 of the Act.
  2. Prior Use: If you have been using the mark before the registered owner, you may have a defense under Section 122.
  3. Honest Concurrent Use: This defense applies if you have been using the mark honestly and concurrently with the registered owner.

Settlement and litigation

Many infringement claims are settled out of court. However, if a settlement isn’t possible, the matter may proceed to litigation, which can be both time-consuming and costly.

Understanding the intricacies of trade mark law in Australia is essential for anyone looking to protect their brand or defend against infringement claims. By familiarizing yourself with the registration process, the Trade Marks Act 1995, and potential defenses, you’ll be better equipped to navigate the legal landscape.

Further reading and conclusion

Understanding the complexities of the Trade Marks Act and intellectual property rights in Australia is crucial for anyone looking to protect their brand or defend against infringement claims. This blog has aimed to provide you with a comprehensive guide to navigating these complexities, from the registration process to defending against infringement claims and understanding associated penalties.

For those interested in diving deeper into this subject, the following resources are highly recommended:

By staying informed and proactive, you can better navigate the legal landscape surrounding trade marks in Australia. Thank you for reading, and feel free to share this guide with anyone who might find it useful.

Legal advice

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