51.10 Revocation of Acceptance

Scanning new SGPs for potential revocation of acceptance

Background

Opposition to registration applications sometimes raise issues that can be dealt with by the examination sections through revocation of acceptance. This process has been implemented to allow O&H to escalate files to the revocation panel for consideration if it appears that the trade mark application should not have been accepted and that it appears reasonable to revoke acceptance in all of the circumstances.

Responsibilities of O&H

A Hearing Officer or an Assistant Hearing Officer with trade mark examination experience will be appointed to scan new statements of grounds and particulars to identify those that can be escalated to the revocation panel.

In line with the provisions of subsection 38(1), before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:

a. the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

b. it is reasonable to revoke the acceptance, taking account of all the circumstances.

Matters to consider for revocation of acceptance

When reviewing a trade mark to determine if acceptance should potentially be revoked please consider whether all substantive grounds for rejection have been examined correctly. These grounds are sections 39, 41, 42, 43, 44 of The Trade Marks Act 1995. This may involve conducting your own research or search of the trade marks register if you feel the examination was deficient in any of those areas.

If the trade mark was accepted based on the submission of evidence and/or an amendment, please consider whether the evidence and/or amendment were assessed correctly and that the acceptance of the trade mark was appropriate.

If you identify that a ground has been incorrectly assessed and that the trade mark potentially should not have been accepted, please consider all surrounding circumstances to determine if revocation of acceptance is reasonable before submitting the trade mark to the revocation panel.

Overview of the process:

The following is the sequence of steps that occurs if a matter is found in Oppositions and Hearings:

1. O&H to email the TM details/issue to MDB-TMRevocation@ipaustralia.gov.au, the relevant section Team Leaders, and Quality, Practice and Customers (QP&C).
2. Revocation of acceptance is considered by the Revocation Panel.
3. Panel communicates recommendation to QP&C.
4. If QP&C agrees with the panel recommendation the matter is progressed accordingly.
5. If QP&C does not agree with the panel recommendation the matter is escalated to the QP&C AGM and the section AGM who will make a joint final determination on the matter.
6. If the status of the TM shows that it is under opposition or if it has incoming correspondence on file relating to opposition proceedings, then the Team Leader must also email tmhearings@ipaustralia.gov.au informing them of any revocation of acceptance.