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Intellectual Property Laws Amendment Bill 2006

Schedule 1 Revoking registration of trade marks etc.

   

Trade Marks Act 1995

1  Subsection 38(1)

Repeal the subsection, substitute:

             (1)  Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:

                     (a)  the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

                     (b)  it is reasonable to revoke the acceptance, taking account of all the circumstances.

2  Application of amendment of section 38

The amendment of section 38 of the Trade Marks Act 1995 made by this Schedule applies in relation to the acceptance of an application for registration of the trade mark whether the acceptance occurred before, on or after the commencement of the amendment.

3  At the end of section 73

Add:

Note:          Section 84C explains the effect of revocation of the registration of a trade mark, applying some provisions as if the registration had ceased at a particular time (but for most purposes treating the registration as if it had never occurred).

4  Part 8 (heading)

Repeal the heading, substitute:

Part 8 Amendment, cancellation and revocation of registration

5  Before section 81

Insert:

Subdivision A Amending Register

6  Before section 84

Insert:

Subdivision B Cancelling registration

7  At the end of Division 1 of Part 8

Add:

Subdivision C Revoking registration

84A   Registration may be revoked

Power to revoke

             (1)  The Registrar may revoke the registration of a trade mark if he or she is satisfied that:

                     (a)  the trade mark should not have been registered, taking account of all the circumstances that existed when the trade mark became registered (whether or not the Registrar knew then of their existence); and

                     (b)  it is reasonable to revoke the registration, taking account of all the circumstances.

             (2)  The circumstances to be taken into account under paragraph (1)(a) include the following:

                     (a)  any errors (including errors of judgment) or omissions that led directly or indirectly to the registration;

                     (b)  any relevant obligations of Australia under an international agreement;

                     (c)  any special circumstances making it appropriate:

                              (i)  not to register the trade mark; or

                             (ii)  to register the trade mark only if the registration were subject to conditions or limitations to which the registration was not actually subject.

             (3)  The circumstances to be taken into account under paragraph (1)(b) include the following:

                     (a)  any use that has been made of the trade mark;

                     (b)  any past, current or proposed legal proceedings relating to the trade mark as a registered trade mark or to the registration of the trade mark;

                     (c)  other action taken in relation to the trade mark as a registered trade mark;

                     (d)  any special circumstances making it appropriate:

                              (i)  to revoke the registration; or

                             (ii)  not to revoke the registration.

Note:          For use of a trade mark see section 6.

Prerequisites to revocation decision

             (4)  The Registrar may revoke the registration of the trade mark only if the Registrar gives notice of the proposed revocation to each of the following persons in accordance with the regulations within 12 months of registering the trade mark:

                     (a)  the registered owner of the trade mark;

                     (b)  any person recorded under Part 11 as claiming a right in respect of, or an interest in, the trade mark.

Note:          For registered owner see section 6.

             (5)  The Registrar must not revoke the registration of the trade mark without giving each of the following persons the opportunity to be heard:

                     (a)  the registered owner of the trade mark;

                     (b)  any person recorded under Part 11 as claiming a right in respect of, or an interest in, the trade mark.

Note:          For registered owner see section 6.

No duty to consider whether to revoke

             (6)  The Registrar does not have a duty to consider whether to revoke the registration under this section, whether or not the Registrar is requested to do so.

84B   Registration must be revoked if opposition was ignored in registration process

                   The Registrar must revoke the registration of a trade mark if:

                     (a)  either:

                              (i)  a notice of opposition to the registration was filed in accordance with subsection 52(2); or

                             (ii)  before the registration, a person applied in accordance with the regulations for an extension of the period for filing a notice of opposition to the registration; and

                     (b)  the Registrar failed to take account of the opposition or application in deciding to register the trade mark; and

                     (c)  the Registrar becomes aware of the failure within 1 month after the notice was filed or the application was made.

The revocation must be done within that month.

Note:          If the Registrar becomes aware of the failure later, he or she may be able to revoke the registration under section 84A.

84C   Effect of revocation of registration

             (1)  This section applies if the Registrar revokes the registration of a trade mark under section 84A or 84B.

             (2)  This Act generally applies as if the registration had never occurred, but:

                     (a)  subsection 129(4) applies as if the trade mark had ceased to be registered at the time of the revocation; and

                     (b)  if the Customs CEO, purporting to act under Part 13, seizes goods in respect of which the trade mark was registered before the revocation, the Commonwealth is not liable for any loss or damage suffered because of the seizure, unless:

                              (i)  the Registrar gives the Customs CEO written notice of the revocation; and

                             (ii)  the seizure occurs after the notice is given to the Customs CEO; and

                     (c)  Part 14 applies as if the trade mark had ceased to be registered at the time of the revocation; and

                     (d)  subsection 230(2) applies in relation to a defendant who was the registered owner of the trade mark before the revocation as if the trade mark had ceased to be registered at the time of the revocation; and

                     (e)  subsection 230(2) applies in relation to a defendant who was an authorised user of the trade mark before the revocation as if the trade mark had ceased to be registered at the time the defendant became aware of the revocation.

Note:          For registered owner see section 6.

             (3)  To avoid doubt, paragraph (2)(b) does not, by itself, make the Commonwealth liable if the circumstances described in subparagraphs (2)(b)(i) and (ii) exist.

             (4)  This Act applies as if, just after the revocation:

                     (a)  the application for registration of the trade mark reflected the particulars in the Register for the trade mark just before the revocation; and

                     (b)  the applicant for registration of the trade mark were the person in whose name the trade mark was registered just before the revocation.

             (5)  This subsection has effect if the Registrar revokes the acceptance of the application for registration of the trade mark after revoking the registration. The Registrar may, but need not, examine the application again under section 31 before rejecting the application. This has effect despite paragraph 38(2)(b).

84D   Appeal from revocation of registration

                   An appeal lies to the Federal Court from a decision of the Registrar to revoke the registration of a trade mark under section 84A.

8  After subsection 224(3)

Insert:

          (3A)  If the Registrar has revoked the registration of a trade mark, he or she may extend the time for doing a relevant act that is required by this Act to be done within a certain time in connection with the application for registration of the trade mark.

9  Application of amendments of Part 8 and section 224

The amendments of Part 8 and section 224 of the Trade Marks Act 1995 made by this Schedule apply in relation to trade marks that became registered on or after the commencement of this Schedule.