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TRADE MARKS ACT 1994 No. 156 of 1994 - SECT 89 Amendment or cancellation-other specified reasons

TRADE MARKS ACT 1994 No. 156 of 1994 - SECT 89

Amendment or cancellation-other specified reasons
89.(1) Subject to subsection (2), a prescribed court may, on the application
of an aggrieved person, order that the Register be rectified by:

   (a)  cancelling the registration of a trade mark; or

   (b)  removing or amending an entry wrongly made or remaining on the
        Register; or

   (c)  entering any condition or limitation affecting the registration of a
        trade mark that ought to be entered.

(2) An application may be made only on the following grounds:

   (a)  any of the grounds on which the registration of the trade mark could
        have been opposed under Division 2 of Part 5;

   (b)  the entry was made, or has been previously amended, as a result of
        fraud, false suggestion or misrepresentation;

   (c)  an amendment of the application for the registration of the trade mark
        was obtained as a result of fraud, false suggestion or
        misrepresentation;

   (d)  the trade mark:

        (i)    is not inherently capable of distinguishing the goods or
               services; and

        (ii)   on the day on which the application for rectification was
               filed, had ceased to be used to a sufficient extent for it to
               be capable of distinguishing the goods or services of the
               registered owner from the goods or services of any other
               person;

   (e)  the following circumstances apply:

        (i)    on the filing date in relation to the application for its
               registration, the trade mark did not distinguish the goods or
               services of the registered owner from the goods or services of
               any other person; and

        (ii)   the application for rectification is made at least 10 years
               after that filing date; and

        (iii)  on the day on which the application for rectification is filed,
               the trade mark still does not so distinguish the goods or
               services of the registered owner.

(3) The court may decide not to grant an application for rectification made:

   (a)  under section 88; or

   (b)  on the ground that the trade mark is liable to deceive or confuse (a
        ground on which its registration could have been opposed, see
        paragraph (2)(a)); or

   (c)  on the ground referred to in paragraph 2(d); if the registered owner
        of the trade mark satisfies the court that the ground relied on by the
        applicant has not arisen through any act or fault of the
        registered owner.

(4) In making a decision under subsection (3), the court:

   (a)  must also take into account any matter that is prescribed; and

   (b)  may take into account any other matter that the court considers
        relevant.