1. What is revocation of acceptance?

Date Published

The acceptance of an application can be revoked if information is received after acceptance that indicates the trade mark should not have been accepted.


1.1

Paragraph 38(1)(a) states that the Registrar must be satisfied that the trade mark should not have been accepted. The Registrar is able to take account of any circumstance that existed which should have prevented acceptance. An error of judgement or omission on the part of the examiner is not required, nor is it necessary that the Registrar knew or was in a position to know of the existence of the circumstances at the time the application was accepted for this paragraph to apply. It is important to note that the Registrar is not limited in what he or she may consider.

Paragraph 38(1)(b) applies only if the Registrar has decided that the trade mark should not have been accepted under 38(1)(a). Pursuant to 38(1)(b) the decision to revoke must be reasonable. The Registrar must have regard to all the circumstances when deciding whether it is reasonable to revoke acceptance. For example, the Registrar may consider that it is not reasonable to revoke acceptance if the applicant agrees to amend the application so that certain conditions and limitations are placed upon the trade mark. This consideration is not limited to the circumstances as they existed when the trade mark was accepted. Further, the Registrar is not limited in what he or she may consider.

This provision allows the Registrar to revoke acceptance of a trade mark only when this course of action is reasonable, taking account of all of the circumstances. The intention of this provision is to focus attention on the reasonableness of the Registrar’s actions, and not on whether or not an ‘error or omission’ or a ‘special circumstance’ preceded the acceptance of the trade mark.

The concept of whether a decision to revoke acceptance is ‘reasonable’ does not include the merits of the original decision to accept a trade mark. Where this concept is considered is after a decision has already been made as to being satisfied that the original acceptance should not have occurred.


1.2

Once an application has been revoked it no longer carries the status “Accepted” and re-enters the examination stream with the status “Under Examination”. At this stage the owner will typically be granted a free 15 month extension of time within which to overcome objections.


1.3

The Examination team leader or Deputy Registrar must notify the applicant in writing of the proposed revocation setting out any conditions under which the application can remain accepted. The applicant is also given the opportunity to be heard in the matter.

The applicant has one month to respond to the notice of proposed revocation (holders/owners of International Registrations are given two months to respond).


1.4

If no response is received the acceptance of the application is revoked and the revocation is advertised in the Official Journal.