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Revocation of trade mark:

INTRODUCTION:
Revocation is the legal procedure that allows anyone to try and remove a registered trade mark
from our register. You may apply to remove the entire registration, or only some of the goods or
services it covers.
If you start revocation proceedings, you become the 'applicant in the case.

REVOCATION FOR REASONS OF NON-USE


If you think a registered trade mark has not been used in the UK on the goods or services for
which it is registered, either by the proprietor or by someone else with the proprietors
agreement:

in the five years since the trade mark was registered; or

for any uninterrupted period of five years after registration;

and there are no proper reasons why the trade mark has not been used.

then you can apply to revoke or partly revoke it.


REVOCATION FOR REASONS OTHER THAN NON-USE
You may want to revoke, or partly revoke, the registration of a trade mark, for other reasons than
non-use. Either:

the trade mark has become 'generic which means the it as become the common name in
the trade for goods or services for which it is registered, or

because use of the trade mark is likely to mislead the public, particularly as to the nature,
quality or geographical origin of the goods or services on which it has been used.

DO YOU WISH TO START REVOCATION PROCEEDINGS?


Send us:

either a form TM26(N) 'Application to revoke a registration or a protected international


trade mark (UK) for reasons of non-use and statement of grounds or

a form TM26(O) 'Application to revoke a registration or a protected international trade


mark (UK) for reasons other than non-use' and statement of grounds by fax or post; and

a fee of 200 (and FS2 fee sheet)It will be easier for the Registrar to remove a trade mark
from the Register, or to have a trade mark removed for non-use. But there are still some
problems in opposing trade marks.
Trade marks law is undergoing something of a shake-up with two new pieces of legislation.
The Intellectual Property Laws Amendments Act 2006 ("IPLA") has, amongst other things, made
some important changes to the Trade Marks Act 1995 regarding the powers of the Registrar to
revoke the acceptance of a trade mark application prior to registration, and even after registration
to revoke the registration. At the same time, the Trade Marks Amendment Act 2006 ("TMAA")
makes further significant changes to the Act, in respect of oppositions.

In this article well look at some of the more significant reforms.


EXPANDING THE REGISTRARS POWER TO REVOKE ACCEPTANCE
Section 38 of the 1995 Act permitted the Registrar to revoke acceptance of an application on the
grounds of "an error or omission in the course of examination" or "special circumstances of the
case", grounds which have been very narrowly applied in some cases, virtually limiting their
application to cases where, by virtue of some procedural or other mistake of the examiner, the
examiner did not have all the relevant materials before him or her at the time of making the
decision to accept the application. They would not apply, for example, if the examiner had all the
relevant information but misunderstood or failed to correctly apply the law.
The IPLA will replace section 38 altogether with another provision greatly expanding the
Registrars power to revoke acceptance, on the basis that it should not have been accepted taking
into account circumstances which prevailed at the date of acceptance, or it is otherwise
reasonable to do so.
REVOKING THE GRANT OF A TRADE MARK
At present, upon registration of a trade mark, there are very limited circumstances in which the
registration may be cancelled and all, with the exception of removal at the request of the
registered owner, may only be invoked before the prescribed court. The IPLA introduces new
powers and obligations on the Registrar in sections 84A D. Under section 84A, the Registrar
will be entitled to revoke the registration of a trade mark, at any time within 12 months after
registration (section 84A(4)), if the Registrar believes "the trade mark should not have been
registered" and it is reasonable to do so.
The Registrar can do this on any ground whatsoever, although section 84A(2) provides some
possible grounds. In effect, the Registrar has greater powers than the Court, and there are at
present no guidelines at all as to how this power will be exercised. If the Registrar decides to
revoke, she must give notice to the registered owner and follow a prescribed procedure allowing
an opportunity to make submissions.
ADDITIONAL PROCESSES?
It is plain from the legislation that there is no right of review in respect of either of these
changes, and the Registrar has indicated that it is not intended to provide for any formal
processes in addition to the opposition process. However, it is equally clear that the Registrar
will have to take into account any correspondence received, and this may trigger the
administrative action.
Are these changes a good thing? It is hard to say whether these additional problems may alleviate
or exacerbate the current problems in the Office of occasionally unjustifiable, even inexplicable,
decisions. Furthermore, it is argued that this merely gives a further advantage to interested
parties who have competent legal advice, over those who are unrepresented, as represented
parties will be aware of the additional opportunities presented by these powers.
OPPOSING A TRADE MARK: FIRST USE OF THE MARK
Under the TMAA, a number of changes are made to the rights to oppose an application for
registration of a trade mark. Some of the more significant in practice are:
A new section 58A: at present, an applicant may overcome a prior registered mark if the applicant
can show that it has in fact used the mark the subject of the application from a date which

preceded the priority date (usually the date of application) of the earlier registered mark (section
44(4)). Under this amendment, an opponent who owns that earlier registered mark will be
entitled to oppose registration to the extent relying on section 44(4) by establishing that its use of
its earlier registered mark commenced before that of the applicant. This removes a vexing
anomaly in the drafting of the legislation.
"SUBSTANTIAL IDENTITY OR DECEPTIVE SIMILARITY"
A new section 60(a): this amendment removes the requirement in an opposition based on a prior
mark that has "acquired a reputation in Australia" that the mark opposed be "substantially
identical with, or deceptively similar to" the prior well-known mark. It is argued that even an
opposed mark not meeting this test may be likely to deceive in use such as a mark with
substantial other verbal or graphical material as well as the element complained of. However, this
ground of opposition still requires the opposed application to be in respect of the same goods or
services as those on which the prior well-known mark has acquired reputation. The amendment
does not provide a ground for opposition based on a "famous" mark, in respect of which it could
be argued that use on any goods or services would be deceptive such as "PENTIUM" the
subject of an application for motor oils and lubricants.
"BAD FAITH" APPLICATIONS
A new section 62A: A registered trade mark may be removed on the grounds that there was never
any intention in good faith on the part of the owner to use it (or license or assign it). This new
section will be added making for a slightly wider ground of opposition, namely that "the
application was made in bad faith". Examples are given in the explanatory memorandum as to
what is meant by this, including registration by a local trader of a mark copied from a successful
foreign business. No doubt this is a ground which will be often asserted, but rarely argued, due to
the difficulties of the burden of proof being on the opponent, even (especially when!) when the
opposition is undefended.
REMOVING AN UNUSED TRADE MARK
At present, in order to apply for removal of a registered trade mark, it is necessary to show that
the applicant is an "aggrieved person". This requirement has led to some arcane judicial exegesis,
and has sometimes led to somewhat artificial arrangements to ensure an applicant is "aggrieved".
The TMAA removes this requirement so that anyone can make this application in future.
Currently, if an application for removal on the grounds of non-use is made, the registered owner
can only defeat it by showing use of the trade mark on the goods or services in respect of which
the mark is registered. Occasionally, this can lead to a somewhat unfair outcome, for example if
a trade mark owner has used the mark on soap or toothpaste, when it is registered only for
perfumes and essential oils (although the court usually exercised its discretion to save the trade
mark). The TMAAs changes mean that the Registrar may now take into account use on similar
or closely related goods or services.
Of course, this may present a converse problem. Imagine a registered owner of a mark in respect
of organising musical performances who argues that creating an internet website featuring music
should be taken into account in defence of a registration. In that case, the Registrar will have to
consider exercising a discretion not to take this into account, which is rather more difficult to do
that to exercise a discretion to permit a registration to remain!
PROCEDURAL CHANGES

There are other changes a change in respect of divisional applications which does nothing to
fix the current vice that divisional applications are created solely to extend otherwise
indefensible applications indefinitely, and a change which shortens the period during which a
lapsed registration will remain on the Register from 12 months to six months.
However, when reviewing these changes and the reasons for them it becomes evident that the
majority of problems which have been encountered are not problems with the legislation so
much as very variable practices within IP Australia in dealing with contentious trade mark
applications and registrations. With a view to addressing some of these and other issues, the
Registrar has proposed the introduction of more sophisticated case management procedures in
respect of disputes being conducted in the Office. Some of these have already been discussed in
IPAustralias Review Paper 3, such as:

possible limitation of the right to extensions, both as to grounds and in number and
duration;

a requirement that an opposition be lodged with a more detailed statement of the facts,
matters and circumstances supporting the opposition (although there would need to be an
opportunity to amend and add grounds and evidence at a later stage);

a requirement that an applicant lodge a statement of intention as to his, her or its intention
to defend (in the absence of which the opposition could proceed to a default decision
based on the statement of the facts, matters and circumstances filed by the opponent);

the appointment of a case manager to ensure the proper and timely running of the
opposition procedures

An inherent difficulty in some of these proposals in that the Registrar has very limited powers as
to orders as to costs in the event of misuse of the procedures or non-compliance, and the present
scales of costs involved are so small as not to be any deterrent.
In addition, there was mentioned a possible change to the process for removal for non-use

dispensing with the requirement for an applicant for removal to file evidence of searches
undertaken

the right for the registered owner to seek an interlocutory determination by the Registrar
in order to determine whether it will be necessary to defend the non-use application
(appropriate where the registered owner can file very clearly evidence of use which will
plainly result in the application being abandoned).

Overall, these amendments are expected to bring about significant changes to the practice of
trade mark prosecution in Australia over coming years.

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