The Registrar has various powers to revoke acceptance and/or registration, or amend or cease protection of a trade mark, under the Trade Marks Act 1995 and the Trade Mark Regulations 1995. These powers permit the Registrar to correct errors made in examination or registration, and to consider circumstances that were not known at the time of examination or registration.

The exercise of these powers should seek to improve the integrity of the Register while balancing the desirability for certainty in administrative decision making. The provisions must also be exercised consistently with principles of procedural fairness.

As revocation of registration and cessation of protection are significant actions resulting in loss of statutory rights, the power to revoke is exercised by Directors and Deputy Registrars, or hearings officers (when a matter is subject to a hearing).

Overarching principles

In exercising the powers discussed in this Manual part, the Registrar must be satisfied both that:

1. the trade mark should not have been accepted, registered, and/or protected (depending on the relevant power being exercised); and

2. it is reasonable, in all the circumstances, to exercise the relevant power.

36.2.1 Revocation of acceptance

36.2.1.1 Revoking acceptance of an application for the registration of the trade mark

Section 38 gives the Registrar the power to revoke the acceptance of an application for the registration of the trade mark before it is registered.

To revoke acceptance, the Registrar must be satisfied:

• that the trade mark should not have been accepted taking account of all the circumstances at the time of acceptance, whether or not the Registrar knew then of their existence (s 38(1)(a)); and

• it is reasonable to do so, taking account of all the circumstances (s 38(1)(b)).

If acceptance is revoked:

• the application is treated as never having been accepted (s 38(2)(a)); and

• the Registrar must then examine the application and provide a report as required (s 38(2)(b)); and

• sections 33 and 34 apply again to the application (s 38(2)(a)).

36.2.1.2 Revoking acceptance of an International Registration Designating Australia (‘IRDA’)

Regulation 17A.27 gives the Registrar the power to revoke the acceptance of an IRDA before it becomes protected.

The Registrar may exercise these powers if the following conditions are met:

• the IRDA has not yet become protected, and it is within 18 months of the International Bureau notifying the Registrar of the IRDA (sub-reg 17A.27(1)); and

• the Registrar is satisfied that the IRDA should not have been accepted, considering all circumstances at the time the IRDA was accepted (regardless of whether the Registrar knew of them) (sub-reg 17A.27(1)(a)); and

• the Registrar is satisfied it is reasonable to revoke acceptance taking account of all the circumstances (sub-reg 17A.27(1)(b)).

If acceptance is revoked:

• the IRDA is treated as though it was never accepted (sub-reg 17A.27(2)(a)); and

• the relevant procedures apply again to the application (sub-reg 17A.27(2)(b)).

36.2.2 Revocation of registration

36.2.2.1 Registration may be revoked

Under s 84A of the Trade Marks Act 1995, the Registrar has a discretionary power to revoke the registration of a trade mark, if satisfied that:

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

• it is reasonable to revoke the registration, taking account of all the circumstances.

The Registrar can only revoke registration if, within 12 months of registration, notification of the proposed revocation is given to the registered owner and any person recorded as having a relevant interest (s 84A(4)) and those persons are given an opportunity to be heard before the Registrar makes a decision (s 84A(5)).

The Registrar has no duty to consider whether to revoke a registration, even if requested to do so (s 84A(6)).

In National Cancer Foundation v Registrar of Trade Marks [2025] FCA 711 (NCF first instance), McEvoy J indicated (at [25]) that the power under s 84A should be exercised sparingly.

However, in Registrar of Trade Marks v National Cancer Foundation Limited [2026] FCAFC 95 (NCF appeal), the Full Court on appeal acknowledged at [59] that while:

…the legislative scheme as a whole evinces an intention to grant certainty in relation to the property rights conferred by the TM Act, it is also strongly concerned with the public interest in the purity or accuracy of the Register as a record of “marks which perform their statutory function (Foxtel at [36] (Burley J)).

The Full Court went on to say (at [68]) that:

There is nothing in the text, context or purpose of the TM Act which causes us to consider that a different or higher threshold is intended by the use of the word “satisfied” in s 84A(1).  

The Full Court’s comments indicate that, in determining whether the Registrar is satisfied for the purposes of s 84A, no different or higher standard applies (i.e. the standard is the ordinary civil standard). The inquiry should take account of both the desirability of certainty in granted rights and the public interest in the purity and accuracy of the Register.

Ultimately, the Full Court dismissed the appeal, finding that the circumstances necessary to support the exercise of the power under section 84A had not been established.

36.2.2.2 Registration must be revoked if opposition was ignored in registration process

Section 84B of the Trade Marks Act 1995 states the Registrar must revoke registration of a trade mark if:

• either:

  • a component of a notice of opposition was filed in accordance with s 52(2) (s 84B(a)(i)); or

  • someone applied for an extension of the period for filing a component of a notice of opposition, before registration, in accordance with the regulations (s 84B(a)(ii)); and

• the Registrar failed to take account of the component or application when deciding to register the trade mark (s 84B(b)); and

• the Registrar becomes aware of this failure within 1 month after the notice was filed or the application was made (s 84B(c)).

If all these conditions are met, the Registrar must revoke the registration within that month.

36.2.2.3 Effect of revocation of registration

Section 84C of the Trade Marks Act 1995 specifies the consequences when the Registrar revokes the registration of a trade mark under sections 84A or 84B. Most relevantly, for the purposes of Trade Mark Office practice:

• the trade mark registration is regarded as void, as though it never existed (s 84C(2)).

• after revocation, the Act applies as if the application for registration of the trade mark reflected the particulars in the Register for the trade mark just before the revocation and the applicant for registration is taken to be the person who was the registered owner just prior to revocation (s 84C(4)).

• if the Registrar revokes acceptance of the application after revoking registration, they may (but are not required to) examine again the application under s 31 before rejecting the application, despite paragraph 38(2)(b) (s 84C(5)).

36.2.3 Cessation and amendment of protection

Under reg 17A.42A(1), the Registrar can declare that protection extended to a protected international trade mark (‘PITM’) is ceased, impose a condition or limitation on its protection, substitute or add conditions where they already exist, or remove or amend entries in the Record of International Registrations relating to the PITM.

The Registrar may exercise these powers only if the conditions in sub-reg 17A.42A(2) are satisfied. These conditions require that the Registrar:

• gave written notice to the holder and any person recorded as having a relevant interest within 12 months of protection being extended of the Registrar’s intention to exercise one or more powers (sub-reg 17A.42A(2)(a)); and

• provided the holder or anyone claiming an interest an opportunity to be heard before making a decision (sub-reg 17A.42A(2)(b)); and

• is satisfied that the trade mark should not have become protected for some or all goods or services, or its protection should have been subject to a condition or limitation, having regard to all the circumstances that existed when the trade mark became a protected international trade mark (whether or not the Registrar knew then of their existence) (sub-reg 17A.42A(2)(c)); and

• is satisfied that it is reasonable to exercise the power (sub-reg 17A.42A(2)(d)).

The Registrar does not have a duty to consider whether to exercise these powers, regardless of whether a request has been made (sub-reg 17A.42A(5)).

36.2.3.1 Effect of Cessation or Amendment of Protection

Regulation 17A.42D sets out the effect of the Registrar exercising a power under sub-regulation 17A.42A(1) in relation to a protected international trade mark.

• Any amendment or cessation of protection and any removal or amendment of an entry in the Record of International Registrations is taken to have effect from the original date on which protection was granted to the protected international trade mark, subject to specified exceptions not relevant to Trade Marks Office practice (reg 17A.42D(2)).  

• If protection of the international trade mark has been ceased or amended, the Registrar is required to notify the Comptroller General of Customs (reg 17A.42E).

• Where a protected international trade mark is ceased or amended, the entry in the Record of International Registrations is removed/amended accordingly, and the trade mark is not returned to examination (reg 17A.42D(2)(c)).