Revocation of Trade Marks (84A & 84B)

Trade mark registration is not always final and can be subject to revocation under certain circumstances. Sections 84A and 84B of the Trade Marks Act 1995 outline the grounds, process, and obligations of the Registrar when considering revocation. These provisions ensure that trade mark registrations comply with legal requirements, international obligations, and fairness principles.

The Registrar’s Power to Revoke a Trade Mark Registration

Under Section 84A, the Registrar of Trade Marks has the authority to revoke a trade mark registration if it is determined that the trade mark should not have been registered in the first place. This revocation power exists to correct mistakes, address legal concerns, and ensure compliance with trade mark laws and international agreements.

Key Grounds for Revocation

The law acknowledges that mistakes or overlooked legal issues can lead to erroneous registrations, and this provision allows the Registrar to correct such errors when necessary. For a trade mark to be revoked, the Registrar must be satisfied that-

• The trade mark should not have been registered, considering all circumstances that existed at the time of registration, regardless of whether the Registrar was aware of them at the time.
• It is reasonable to revoke the trade mark, after taking into account all relevant factors.

Factors Considered by the Registrar

The Registrar must take into account several factors when deciding whether a trade mark should have been registered. These factors include:

• Mistakes in judgment, procedure, or documentation that led to registration, whether by the applicant, examiner, or Registrar.
• If the trade mark’s registration violates an international agreement that Australia is bound by, revocation may be required.
• Any situation where the trade mark should not have been registered at all or should have been registered with conditions that were not imposed at the time of registration.

Similarly, when determining whether it is reasonable to revoke the trade mark, the Registrar considers-

• Any actual use of the trade mark by the registered owner.
• Past, ongoing, or anticipated legal proceedings involving the trade mark.
• Other legal or commercial actions taken regarding the trade mark’s status.
• Any special circumstances that may either justify or weigh against revocation.

This ensures a fair balance between correcting errors and protecting legitimate trade mark owners who may have invested in and relied upon their trade mark rights.

Procedural Safeguards for Revocation

Before revoking a trade mark, the Registrar must follow strict procedural safeguards to protect the rights of the registered owner and interested third parties:

• The Registrar must notify both the registered trade mark owner and any other party who has an interest or claim in the trade mark (such as a licensee or co-owner). This notification must be given within 12 months of the trade mark’s registration.
• The Registrar cannot revoke a trade mark without first giving the affected parties an opportunity to present their case. This ensures due process and allows for the submission of arguments or evidence against revocation.

Registrar’s Discretion and Duty

An important aspect of Section 84A is that the Registrar is not obligated to review every trade mark for possible revocation, even if requested to do so. This means that unless specific issues come to the Registrar’s attention, there is no automatic duty to actively investigate past registrations.

Mandatory Revocation in Cases of Ignored Opposition

While Section 84A gives the Registrar discretion to revoke a trade mark based on various factors, Section 84B makes revocation mandatory when an opposition process was wrongly ignored during the trade mark’s registration. This ensures that procedural fairness is maintained when granting trade mark rights.

When Must a Trade Mark Be Revoked?

Under Section 84B, the Registrar is legally required to revoke a trade mark if:

• A formal opposition notice or an application to extend the opposition period was filed before the trade mark was registered.
• The Registrar failed to take that opposition into account when deciding to register the trade mark.
• The Registrar becomes aware of the failure within one month after the opposition notice was filed or the extension application was made.

Immediate Revocation Requirement

If the above conditions are met, the Registrar must revoke the trade mark registration within that one-month period. Unlike Section 84A, the Registrar does not have discretion in this case, i.e. revocation is a legal obligation.

What Happens if the Failure is Discovered Late?

If the Registrar only realizes the mistake after the one-month deadline, the trade mark may still be revoked under Section 84A, provided the relevant conditions are met. This ensures that errors in the opposition process do not permanently legitimize an improperly registered trade mark.

Key Takeaways

• Section 84A grants the Registrar the power to revoke a trade mark if it was improperly registered, even if the error was unknown at the time.
• The Registrar must consider all relevant factors, including errors, international agreements, special circumstances, and past use of the trade mark before revoking registration.
• Section 84B mandates revocation when the Registrar failed to consider an opposition notice filed before registration, provided the mistake is discovered within one month.

Trade mark registration isn’t set in stone. Sections 84A and 84B of the Trade Marks Act 1995 empower the Registrar to revoke registrations that don’t meet legal or procedural standards. If your mark faces scrutiny or risks revocation, our expert IP team can help you navigate the complexities and safeguard your rights.

Connect with us today to ensure your trade mark is protected for the long haul.