Part 36.3 Should the trade mark have been accepted, registered, or become protected?

In considering whether a trade mark should have been accepted, registered or protected, the Registrar is not limited in what may be considered and must take account of all the circumstances that existed when the application was accepted, registered or became protected. This includes information that may not have been available to the Registrar at the time the trade mark was accepted, registered or protected.

Although the Registrar is not limited in what circumstances they are allowed to take into account, the circumstances which the Registrar is obliged to take into account in considering revocation of registration (pursuant to s 84A(2)) include:

• any error (including an error of judgment) or omission that led directly or indirectly to the trade mark being registered.

• any special circumstances making it appropriate (as the case may be):

  • to not register the trade mark, or register the trade mark only if registration were subject to conditions or limitations to which the registration was not actually subject, or

  • that the trade mark not be protected for some or all of the goods, or the protection of the trade mark be subject to a condition or limitation or additional condition or limitation.

• The circumstances which the Registrar is obliged to take into account in ceasing or limiting protection of a PITM (pursuant to reg 17A.42A(3)) mirror those above. 

While the above factors have been identified as specific circumstances that must be taken into account when the Registrar considers revocation of registration under s 84A or amendment or cessation of protection under reg 17A.42A, the Registrar is obliged to take account of all the circumstances that existed when the trade mark became registered / protected, and not just those listed above.

No specific circumstances are prescribed as mandatory circumstances that the Registrar must take into account when considering revocation of acceptance under s 38 or reg 17A.27. However, the above-listed circumstances may be particularly relevant when considering the exercise of this power, though the Registrar is similarly obliged to take account of all the circumstances that existed when the application was accepted.

These broad categories of relevant circumstances are set out further below.

36.3.1 Errors, including errors of judgment

The Registrar can take into account any error that may have occurred when examining a trade mark application. The error does not need to be on the part of the examiner, nor is it necessary that the Registrar knew of the existence of the circumstances at the time the application was accepted. Errors typically include:

• if an examiner has overlooked or discounted information that would lead to grounds for rejection being raised; or

• if an IT or administrative issue has led to particulars of an application being recorded incorrectly, and those particulars are material; or

• instances where an error of judgment has occurred and the decision is incorrect.

In regard to errors of judgment, the Full Court in the NCF appeal (at [76] to [91]) confirmed that the degree or obviousness of error by the earlier decision-maker is not relevant to the question of whether a trade mark should have been registered.

This should be distinguished from the separate question of whether it is reasonable to revoke registration under section 84A(1)(b). As discussed below at 36.4.1.1, the Full Court confirmed that the nature of the error and whether the issue was finely balanced may be relevant to whether it is reasonable to revoke registration (NCF appeal at [96]).

The NCF appeal was concerned with whether the mark should not have been registered on the basis of deceptive similarity under s 44 of the Act. There is only one legally correct answer to the question of whether a mark is deceptively similar to another. If the Registrar is satisfied that the marks are deceptively similar, even where reasonable minds may differ, the Registrar may be satisfied that the trade mark should not have been registered. The degree to which a mark is deceptively similar to another therefore cannot be taken into account for the purposes of the analysis under s 84A(1)(a).

An example of a circumstance of which the Registrar may not have been aware, but could have been aware, is the existence of a conflicting mark. This is a circumstance that would be relevant when considering whether to revoke acceptance or registration or cease or amend protection.

36.3.1.1 Issues resulting in an error contributing to a trade mark being accepted, registered or protected

There are several hearing decisions which have considered the issue of whether a trade mark should have been accepted, registered or protected. The following issues have been considered sufficient to determine a trade mark should not have been accepted:

• Overlooked conflicting trade marks under s 44 of the Trade Marks Act 1995 (Cth) (see Re The Innovation Company Ltd [2016] ATMO 28);

• Incorrectly determining that an accepted trade mark was sufficiently different from a registered trade mark under section 44(2) and insufficient evidence to establish honest concurrent use under section 44(3) (see Re Aqua Smiles Dental Pty Ltd [2019] ATMO 37);

• Overlooking a ground for rejection under s 41, due to inadequate research being undertaken (see Re Bellevue Consultancy Services Pty Ltd [2016] ATMO 33); and

• Overlooking a ground for rejection under s 42(b), due to use of a trade mark being contrary to law (see Re Community First Credit Union [2015] ATMO 108).

Please consult the cases listed above and on the landing page which have considered different circumstances and whether a trade mark should have been accepted or registered.

36.3.2 Obligations of Australia under international treaties

This will typically occur where there is an international application for a conflicting trade mark that has an earlier priority date, that had not yet been filed in Australia but is subsequently filed, either directly or via the Madrid Protocol, by the time of acceptance.

Note: The Explanatory Memorandum to the Intellectual Property Laws Amendment Bill 2006 at paragraph 15 supports revocation being available where: “an international application for a conflicting mark having an earlier priority date had not yet been filed in Australia.”

36.3.3 Special circumstances

The phrase ‘special circumstances’ has not been judicially considered in the context of revocation of registration or cessation or amendment of protection.  However, the phrase special circumstances is commonly used to describe something out of the ordinary, that creates unusual or compelling factors that would have made it appropriate not to accept, register, or extend protection to a trade mark, or only do so subject to conditions or limitations.

36.3.4 Additional factors to consider for whether a trade mark should not have been registered or protected

In determining whether registration should be revoked, or protection amended or ceased, the Registrar must address the issues relevant to acceptance. The Registrar may also have regard to additional grounds that were not available at the time of acceptance, including grounds that may arise in opposition.

The Registrar may also take into account whether legal proceedings had been commenced before the trade mark was registered or protected, and whether awareness of those proceedings now would make it appropriate to revoke the registration or protection.