3. Factors to be taken into account before deciding whether revocation of registration is reasonable

Date Published

Subsection 84A(3) sets out the kind of circumstances that the Registrar must take into account under paragraph 84A(3)(b). Circumstances on which a registered owner can rely on in order to convince the Registrar that he or she should not revoke registration are discussed further in Method & Logo 2009 ATMO 89. Examples of these circumstances include, but are not limited to, the following:

  • Any use which has been made of the trade mark (Paragraph 84A(3)(a)). Therefore, if the use that the registered owner has made of the registered mark would overcome a ground for rejection or refusal which the Registrar is satisfied has been made out, then the Registrar may conclude that revocation of registration would not be reasonable.
  • Any court actions or legal proceedings involving the registered trade mark (Paragraph 84A(3)(b)). For example, the Registrar may conclude that it is not reasonable to revoke registration if the registered owner is relying or intends to rely on the registered trade mark in an infringement proceeding.
  • Any other actions taken in relation to the trade mark as a registered mark (Paragraph 84A(3)(c)) For example, administrative actions which rely on the registered trade mark, such as opposing geographical indications under the Australian Wine and Brandy Corporation Act 1980.  
  • Any special circumstances (Paragraph 84A(3)(d)).