We know that trade mark infringement proceedings commonly include a cross-claim for revocation of the relevant mark. Attack is one of the best forms of defence. Prescribed courts are empowered to remove a trade mark from the register by ss 86-88 and 92 of the Trade Marks Act 1995. Aside from applications based on non-use, these provisions do not extend this power to the Registrar of Trade Marks. Once a mark is on the register, you have to go to court to get it off, right? Not quite.
The Intellectual Property Laws Amendment Act 2006 introduced a new provision to the TMA, s 84A, which permits revocation by the Registrar if the mark should not have been registered in the first place and revocation is reasonable in all the circumstances. A mark cannot be revoked under this provision, however, unless the Registrar gives the owner notice of her intention to revoke within 12 months of registering the mark. The owner has a right to be heard.
It appears that in nearly a decade of operation, the discretion conferred by s 84A has only been exercised once.
In FPInnovation Pty Ltd  ATMO 74, a delegate of the Registrar found that 13 registered trade marks ought not to have been registered because they carried misleading or confusion connotations and therefore “a ground under s 43 exists” (don’t get me started on s 43 – the confusion used to have to be inherent in the mark or its application to the relevant goods – apparently no longer). The delegate’s conclusion that revocation was reasonable in all the circumstances appears to have been primarily based on findings that the applicant had deliberately chosen the misleading marks.
In the recent case of Aleem Pty Ltd  ATMO 33, the facts were that a third-party wrote to the ATMO seeking revocation of the mark REFUELLING SOLUTIONS which had proceeded through to registration unopposed in several classes including “retail and wholesale provisions of and supply of fuels” and “refuelling services.” The examiner had considered that s 41 TMA presented an obstacle to registration and sought further evidence to support registration under s 41(5) TMA. That evidence was provided and the mark was registered with a s 41(5) endorsement. The third-party contended that the mark ought to have been rejected pursuant to s 41(6). A deputy registrar agreed and wrote to the owner indicating an intention to revoke the registration. The owner requested a hearing and successfully persuaded the hearing officer that the registration should not be revoked.
The following principles emerge from the decision:
- The power to revoke under s 84A must be exercised with “great caution”;
- A third-party does not have a right to have a competitor’s trade mark revoked even if the registration is as a result of the registrar’s error;
- “different delegates reviewing exactly the same material and applying the same law have a different opinion about the appropriate outcome” (wait, what?) and a “change of opinion as to the registrability of a mark did not constitute a basis for revocation of acceptance“.
The hearing officer accepted the holder’s contention that it could not be shown that “the trade mark should not have been registered” and so she did not need to consider the second part of s 84A, i.e. that it is reasonable to revoke the registration, taking account of all the circumstances.
The take home lesson is that s 84A TMA is a very poor alternative to an opposition proceeding. A third-party writing to the ATMO seeking revocation of a competitor’s wrongly registered mark has no right even to have their letter considered – there is no obligation on the Registrar to consider whether to revoke the registration:s 84A(4) – and no opportunity to be heard if revocation is considered. Further, the Registrar must be convinced that the mark should never have been registered in the first place (not just that she might have a different view) and that revocation is reasonable in all the circumstances.
It is no wonder the discretion appears to have been exercised only once.