TRADE MARKS ACT 1995 - SECT 83A Amendment of registered trade mark--inconsistency with international agreements

TRADE MARKS ACT 1995 - SECT 83A

  (1)   This section applies to a registered trade mark if:

  (a)   using the trade mark in relation to any or all of the goods or services in respect of which the trade mark is registered would be inconsistent with any relevant obligation of Australia under an international agreement; and

  (b)   at the time when the particulars of registration of the trade mark were entered in the Register, the obligation did not exist.

  (2)   The registered owner of the registered trade mark may, in writing, request the Registrar to do either or both of the following:

  (a)   amend the representation of the trade mark as entered in the Register to remove or substitute part (but not the whole) of the representation;

  (b)   amend the particulars entered in the Register in respect of the trade mark to remove or substitute any or all of the particulars.

  (3)   The Registrar must advertise the request for the amendment in the Official Journal .

Note:   In certain circumstances the Registrar need not advertise a request under this subsection   (see subsection   (7)).

  (4)   A person may, as prescribed, oppose the granting of the request for the amendment on the ground that, if the amendment is made, the trade mark will be substantially identical with, or deceptively similar to:

  (a)   a trade mark registered in the name of the person in respect of similar or closely related goods or similar or closely related services; or

  (b)   a trade mark that is being used by the person in respect of similar or closely related goods or similar or closely related services.

Note:   In certain circumstances a person cannot oppose the granting of a request under this subsection   (see subsection   (7)).

  (5)   The Registrar may grant the request for the amendment if he or she is satisfied that the amendment is reasonable, having regard to:

  (a)   the extent to which the amendment relates to the inconsistency; and

  (b)   whether the amendment involves replacing a term (the existing term ) with another term that is recognised by the industry in which the trade mark is used as being a substitute for the existing term; and

  (c)   if a person has opposed the request for the amendment under subsection   (4)--the extent (if any) to which the ground on which the request was opposed has been established; and

  (d)   in any case--any other relevant circumstance.

  (6)   The Registrar may grant the request for the amendment even if the amendment would:

  (a)   substantially affect the identity of the trade mark; or

  (b)   extend the rights that the registered owner has under the registration.

  (7)   If the Registrar is satisfied that the request for the amendment would not be granted even in the absence of opposition under subsection   (4):

  (a)   the Registrar need not advertise the request in accordance with subsection   (3); and

  (b)   the request cannot be opposed, despite subsection   (4); and

  (c)   the Registrar must refuse to grant the request.

  (8)   The registered owner who made the request for amendment, or a person who opposes the request under subsection   (4), may appeal to the Federal Court or the Federal Circuit and Family Court of Australia (Division   2) from a decision of the Registrar under this section.