Part 5OPPOSITION TO REGISTRATION

PART 5—OPPOSITION TO REGISTRATION Division 1—General Opposition 52.(1) If the Registrar has accepted an application for the registration of a trade mark, a person may oppose the registration by filing a notice of opposition. (2) The notice of opposition must be in an approved form and must be filed within the prescribed period. (3) The opponent must serve a copy of the notice on the applicant. (4) The registration of a trade mark may be opposed on any of the grounds specified in Division 2 and on no other grounds. Re-examination 53.(1) An opponent to the registration of a trade mark may, in accordance with the regulations, ask the Registrar to re-examine the application for the registration of the trade mark on the ground that there has been an error or omission in the course of the examination of the application. (2) The Registrar may not decide to re-examine the application without: (a) giving an opportunity to the applicant to make representations (either orally or in writing) on the matter; and (b) taking into account the representations (if any) made by the applicant. (3) If the Registrar decides to re-examine the application, the Registrar must revoke the acceptance of the application. (4) If the Registrar revokes the acceptance of the application: (a) the notice of opposition is taken to have been withdrawn; and (b) the Registrar must re-examine the application as necessary to take into account any matter that he or she failed to consider because of the error or omission; and (c) sections 32 and 33 again apply in relation to the application. (5) If the Registrar decides not to re-examine the application, the Registrar continues to deal with the opposition under this Division. Opposition proceedings 54.(1) The. Registrar must give to the opponent and to the applicant an opportunity of being heard on the opposition. (2) Subject to subsection (1), the proceedings for dealing with the opposition must be in accordance with the regulations. Decision 55. At the end of the proceedings, the Registrar must decide: (a) to refuse to register the trade mark; or (b) to register the trade mark with or without conditions and limitations in respect of the goods and services then specified in the application; having regard to the extent (if any) to which any ground on which the application was opposed has been established. 56. The applicant or the opponent may appeal to the Federal Court from a decision of the Registrar under section 55. Division 2—Grounds for opposing registration Registration may be opposed on same grounds as for rejection 57. The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under Division 2 of Part 4, except the ground that the trade mark cannot be represented in writing. Applicant not owner of trade mark 58.(1) Subject to subsection (2), the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. (2) The opposition fails if: (a) in order to establish that the applicant is not the owner of the trade mark, the opponent relies on the fact that another person used the trade mark at an earlier time than the applicant; and (b) the applicant establishes that: (i) the application was filed with the consent or approval of the other person; and (ii) as at the filing date in respect of the application, the other person had ceased to use the trade mark. Applicant not intending to use trade mark 59. The registration of a trade mark may be opposed on the ground that the applicant does not intend: (a) to use, or authorise the use of, the trade mark in Australia; or (b) to assign the trade mark to a body corporate for use by the body corporate in Australia; in relation to the goods or services specified in the application. Interference with right of opponent to use another trade mark 60. The registration of a trade mark may be opposed on the ground that its registration would prevent the opponent from continuing to use an unregistered trade mark: (a) that the opponent, or a predecessor in title of the opponent, had previously used; and (b) that had not been abandoned by either of them on the filing date in respect of the application for the registration of the trade mark. Trade mark similar to well-known trade mark 61. The registration of a trade mark may be opposed on the ground that: (a) it is substantially identical with, or deceptively similar to, a trade mark that, before the filing date in respect of the application for the registration of the first-mentioned trade mark, had acquired a reputation in Australia; and (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion. Trade mark in respect of wine etc. containing or consisting of a false geographical indication 62.(1) If the application is for the registration of a trade mark in respect of wine or spirits (“relevant wine or spirits”), the registration may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for wine or spirits (“designated wine or spirits”) originating in: (a) a country, or in a region or locality in a country, other than the country in which the relevant wine or spirits originated; or (b) a region or locality in the country in which the relevant wine or spirits originated other than the region or locality in which the relevant wine or spirits originated. Note: For “geographical indication” see section 5. (2) The opposition fails if the applicant establishes that: (a) the relevant wine or spirits originated in the country, region or locality identified by the geographical indication; or (b) the sign has ceased to be used as a geographical indication for the designated wine or spirits in the country in which the designated wine or spirits originated; or (c) the applicant, or a predecessor in title of the applicant, used the sign in respect of the relevant wine or spirits, or applied for the registration of the trade mark in respect of the relevant wine or spirits, before: (i) 1 January 1996; or (ii) the day on which the sign was recognised as a geographical indication for the designated wine or spirits in their country of origin; whichever is later; or (d) the sign is identical with the name that, on 1 January 1995, was, in the country in which the relevant wine or spirits originated, the customary name of a variety of grapes used in the production of the relevant wine or spirits. (3) The opposition also fails if the applicant establishes that: (a) although the sign is a geographical indication for the designated wine or spirits, it is also a geographical indication for the relevant wine or spirits; and (b) the applicant has not used, and does not intend to use, the trade mark in relation to the relevant wine or spirits in a way that is likely to deceive or confuse members of the public as to the origin of the relevant wine or spirits. Application etc. defective etc. 63. The registration of a trade mark may be opposed on any of the following grounds: (a) that the application, or a document filed with the application, was amended contrary to this Act; (b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.