Commonwealth Consolidated Regulations

TRADE MARKS REGULATIONS 1995 - REG 17A.48

         (1)   Subject to subregulation (2), a person may apply to the Registrar for a trade mark that is, or may become, a protected international trade mark to cease to be protected.

         (2)   An application may not be made under subregulation (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to cease the protection.

         (3)   Part 9 of the Act and Part 9 of these Regulations apply in relation to an application mentioned in subregulation (1) or (2).

         (4)   For that application, a reference in those Parts:

                (a)    to a registered trade mark or a trade mark that is registered, or entered on the Register, is taken to be a reference to a protected international trade mark or a trade mark that is a protected international trade mark; and

               (b)    to removing a trade mark from the Register is taken to be a reference to ceasing protection of a trade mark as a protected international trade mark; and

                (c)    to an application for registration of a trade mark is taken to be a reference to an international registration designating Australia; and

               (d)    to an applicant for registration of a trade mark is taken to be a reference to the holder of an international registration designating Australia; and

                (e)    to a registered owner of a trade mark is taken to be a reference to the holder of a protected international trade mark; and

                (f)    to an application under section 92 is taken to be a reference to an application under subregulation (1); and

               (g)    to the date on which the application for registration of the trade mark was filed, or the filing date in respect of the application for registration of the trade mark, is taken to be a reference to:

                          (i)    if the request for extension of protection to Australia was made under Article 3 ^ter  (1) of the Protocol -- the date of international registration of the trade mark; or

                         (ii)    if the request for extension of protection to Australia was made under Article 3 ^ter  (2) of the Protocol -- the date of recording of the request.

Note    The expressions date of international registration and date of recording are defined in regulation 17A.2.

         (5)   Also for that application, the reference in subregulation 9.4 (1) to regulations 5.7 to 5.17 is taken to be a reference to those regulations modified as necessary for the purposes of an opposition to an application under subregulation (1).

         (6)   Despite subregulation (3), the Registrar is not required to take any action in response to a notice of opposition to an application under subregulation (1) unless the opponent has notified the Registrar, in writing, of the opponent's address for service in Australia.

      (6A)   Despite subregulation (3), a requirement to serve a document on an opponent, or to give the opponent an opportunity to make written representations or to be heard, does not apply if no address for service of the opponent is recorded in the Record of International Registrations.

         (7)   If the result of an action mentioned in subregulation (1) or (2) is that the Registrar decides, or is directed by a court:

                (a)    to cease protection of a protected international trade mark in respect of some or all of the goods or services covered by the protection; or

               (b)    that the trade mark should be protected subject to conditions or limitations;

the Registrar must, if no appeal has been made at the end of any relevant appeal period, notify the International Bureau of that decision or order.