60.4.15 Revocation of Acceptance

Date Published

4.15.1  Relevant Legislation

Trade Marks Act 1995

Section 38

Section 241

Trade Mark Regulations

Regulation 17A.27 Revocation of acceptance

Trade Marks Office Manual of Practice and Procedure

Part 38. Revocation of Acceptance

4.15.2  General Description

The Madrid Protocol has no direct provisions for revocation of acceptance.  However it is possible to notify the IB of additional provisional refusals based on examination during the 18 months refusal period.

An IRDA is subject to the same requirements and provisions as a national trade mark application.  Acceptance of a national application may be revoked.  Therefore, the acceptance of an IRDA may also be revoked by IP Australia within the 18 month period unless protection has already been extended to it by Australia.  

The same requirements exist as for the revocation of a national application (see Part 38 Revocation of Acceptance).  There are however, additional time constraints:

  • Revocation of an IRDA can only occur if the IB is notified of the new objection within 18 months from the date the IB notified IP Australia of the IRDA.

  • A provisional refusal resulting from the revocation of acceptance must also be received by the IB within that 18 month period.

The holder is notified in writing of the proposed revocation and is offered the opportunity to be heard on the matter.  If the holder wishes to respond to the proposed revocation they must advise IP Australia of an address for service in Australia or New Zealand.  Two months are given for the holder to respond.

If the holder does not respond to the notice of intention to revoke acceptance of their IRDA within two months, and/or if they fail to provide an address for service in Australia or New Zealand, acceptance of the IRDA will be revoked and the IB will be notified of a new provisional refusal.

The provisional refusal following revocation of acceptance must contain:

  • All grounds for refusal; this would be the grounds for rejection, with copies of the legislation

  • Extracts of any cited trade marks

  • Statements about any conflicting goods and/or services

  • Advice that the holder must acquire an address for service within Australia or New Zealand if they wish to respond to the provisional refusal.

  • Information about the time limit for appeal

If IP Australia fails to notify the IB of the new grounds for provisional refusal within 18 months of notification of the IRDA, there can be no revocation.

If the holder does respond to the notice of intention to revoke acceptance of their IRDA through an Australian or New Zealand address for service, and the submissions in regards to the proposed revocation amends goods and services that have not been notified to the IB as refused, the holder will be required to submit an MM6 [Request for the recordal of a Limitation of the List of Goods and Services] form directly to the IB or through their "home" Office (i.e., the Office of the Contracting Party of the holder). The amendment cannot be applied to the trade mark until IP Australia are notified of the limitation by the IB.

Amended Reasons

Amended Reason Date Amended

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