Part 36.5 Opportunity to be heard

A trade mark applicant or owner must be given the opportunity to be heard prior to revocation of acceptance, registration and/or cessation of protection.

The Registrar will write to owners to inform them of their intention to revoke acceptance or registration or amend or cease protection of a trade mark, including:

• the relevant statutory power;

• the alleged circumstances;

• any earlier rights or other material relied upon; and

• any reasonableness considerations.

The Registrar will provide the owner with an opportunity to respond in writing prior to the revocation taking place, or to request a hearing.

36.5.1 Amendments to specification in response to proposals to revoke acceptance or registration

In some cases, the basis for revocation of acceptance or registration of a particular trade mark may only apply to some of the goods or services.

Should the applicant agree to delete the relevant goods or services, the proposal to revoke acceptance or registration may be withdrawn.

Where the matter does not involve an IRDA or PITM, the amendment can be made under either s 65 (for pending applications) or s 83 (for registered trade marks).

Where the matter involves an IRDA or PITM, the Registrar has no analogous power to amend the specification of goods and services. It is instead necessary for the Holder to seek a limitation to the goods and services via the International Bureau. However, in the case of the PITM, this may not be necessary in cases where the proposal is not to cease protection entirely, but rather to amend protection to delete the problematic goods or services. In such cases, the Holder may wish to simply wait for protection to be amended in due course.

Where an applicant provides evidence that they have submitted a limitation request via the International Bureau, revocation or cessation processes should be paused to allow time for the limitation to be processed and notified to IP Australia.

36.5.2 Procedural fairness for cessation of protection

Due to the practical implications of Reg 17A.42D, there is a greater onus on the Registrar to ensure applicants receive procedural fairness for cessation of protection matters.

Regulation 17A.42C confers the power to hold hearings in relation to cessation of protection, and permits the Registrar to determine the procedure to be followed at such a hearing.

In matters involving one party, the Holder should be given a reasonable opportunity to file any necessary information and be heard, noting that cessation is final and cannot result in a trade mark being returned to examination.  

If a cessation of protection is proposed on the basis of an opposition by a third party, the Registrar may utilise these powers to set out a process for parties to be heard that may mirror the standard opposition process, and allow the parties to file evidence and be heard in person or by way of written submissions.

36.5.3 Third parties requesting revocation

In some cases, the Registrar may be required to provide third parties with the opportunity to be heard in relation to revocation and cessation matters.

In Foxtel Management Pty Limited v Registrar of Trade Marks [2019] FCA 605 at [40], Foxtel had intended to oppose the registration of a trade mark but failed to lodge its notice in time due to a mistaken belief by their agent that an electronic filing had succeeded. After Foxtel requested revocation, the Registrar proposed to revoke registration but ultimately determined that revocation was not reasonable based on submissions filed by the registered owner.

Burley J found that, once the Registrar had decided to consider exercising its power to revoke registration, Foxtel had an interest in the outcome and was entitled to procedural fairness. However, the failure to provide Foxtel with a copy of the registered owner’s submissions and an opportunity to respond, did not amount to a material breach of the requirements of procedural fairness. The court held that there was no doubt as to the relevant issue, and the registered owner’s submissions merely raised an aspect of statutory construction which reflected an opposing view to that of Foxtel. The court went on to say that even if there were a denial of procedural fairness, it would not have deprived Foxtel of a different outcome.

Guidance from Foxtel indicates that procedural fairness to a third party will usually be triggered by the Registrar deciding to consider exercising their power to consider revocation in response to a request by that third party but will be dependent on the circumstances. Once the Registrar has decided to consider revocation, a subsequent decision not to revoke may give rise to an obligation to afford procedural fairness to the requestor. This obligation is more likely to arise where new material (such as evidence) is filed in response to the proposal to revoke. The obligation is less likely to arise where the registered owner has merely filed legal submissions which were taken into account by the Registrar in reaching a decision.

The Registrar is not limited in the ways it can offer an affected party the opportunity to be heard, and it will usually be appropriate that the third party requestor make its submissions in writing.

36.5.4 Right of Appeal

A right of appeal applies to a decision by the Registrar or a delegate of the Registrar to revoke registration under s 84A and to a decision to exercise or not exercise a power to amend or cease protection under Regulation 17A.42A.An appeal may be made to the Federal Court of Australia or the Federal Circuit and Family Court of Australia (Division 2).

A right of appeal is not available from a decision to revoke acceptance. Further, as revocation of acceptance is not a determinative decision given the application reverts to examination after revocation, the courts have also declined to overturn such a decision in judicial review proceedings. Any challenges should instead be made to the subsequent decision to refuse an application or accept the application subject to a condition or limitation to a registration, rather than to an anterior decision to revoke acceptance (see 1-800-Flowers.Com, Inc v Registrar of Trade Marks [2012] FCA 209 at [67]).