TRADE MARKS REGULATIONS 1995 - REG 17A.42A Registrar's powers to amend or cease protection

TRADE MARKS REGULATIONS 1995 - REG 17A.42A

  (1)   If all the conditions in subregulation   (2) are met, the Registrar may do any of the following:

  (a)   declare that the protection extended to a protected international trade mark is ceased;

  (b)   impose a condition or limitation on the protection extended to a protected international trade mark;

  (c)   if a protected international trade mark is already subject to a condition or limitation--impose or substitute an additional or different condition or limitation on the protection extended to the protected international trade mark;

  (d)   remove or amend an entry in the Record of International Registrations relating to a protected international trade mark.

  (2)   For subregulation   (1) the conditions are as follows:

  (a)   within 12 months after the trade mark became a protected international trade mark the Registrar gave notice in writing of the Registrar's intention to exercise a power or powers mentioned in subregulation   (1), to:

  (i)   the holder of the protected international trade mark; and

  (ii)   any person recorded under regulation   17A.62 as claiming an interest or right in respect of the protected international trade mark;

  (b)   the Registrar gave the opportunity to be heard to each person mentioned in subparagraph   (a)(i) or (ii), in relation to the Registrar's intention to exercise a power mentioned in subregulation   (1);

  (c)   the Registrar is satisfied, having regard to all the circumstances that existed when the trade mark became a protected international trade mark (whether or not the Registrar knew then of their existence), and the grounds on which the extension of protection could have been opposed under regulation   17A.34, that:

  (i)   the trade mark should not have become protected for some or all of the goods or services in respect of which it is protected; or

  (ii)   the protection of the trade mark should have been subject to a condition or limitation, or an additional or different condition or limitation;

  (d)   the Registrar is satisfied that is it reasonable to exercise the power or powers mentioned in subregulation   (1).

  (3)   For paragraph   (2)(c), the circumstances to which the Registrar must have regard include the following:

  (a)   any error or omission (including an error or omission of judgment) that led directly or indirectly to the trade mark becoming protected for some or all of the goods or services in respect of which it is protected;

  (b)   any relevant obligation of Australia under an international agreement;

  (c)   any special circumstances making it appropriate, in the opinion of the Registrar, that:

  (i)   the trade mark not be protected for some or all of the goods or services in respect of which it is protected; or

  (ii)   the protection of the trade mark be subject to a condition or limitation, or an additional or different condition or limitation.

  (4)   For paragraph   (2)(d), in deciding whether or not it is reasonable to exercise a power or powers, the matters to which the Registrar must have regard include the following:

  (a)   any use that has been made of the trade mark;

  (b)   any past, current or proposed legal proceedings relating to the trade mark as a protected international trade mark or seeking amendment or cessation of its protection;

  (c)   any other action taken in relation to the trade mark as a protected international trade mark;

  (d)   any special circumstances making it appropriate for the Registrar to exercise or not to exercise a power or powers mentioned in subregulation   (1).

  (5)   The Registrar does not have a duty to consider whether or not to exercise a power under this Subdivision, whether or not the Registrar has been requested to do so.