Part 8AMENDMENT AND CANCELLATION OF REGISTRATION

PART 8—AMENDMENT AND CANCELLATION OF REGISTRATION Division 1—Action by Registrar Correction of Register 82. The Registrar may, on his or her own initiative, correct any error or omission made in entering in the Register any particular in respect of the registration of a trade mark. Adaptation of classification 83. The Registrar may, in accordance with the regulations, amend the Register (whether by making, removing or altering entries) for the purpose of adapting the designation of the goods or services in respect of which trade marks are registered to reflect any change that has occurred in the classification of goods or services for the purposes of this Act. Note; For the classification of goods and services see subsection 18(3). Amendment of particulars of trade mark entered in Register 84.(1) Subject to Parts 11 and 12 the Registrar may, at the request of the registered owner of a registered trade mark: (a) amend the representation of the trade mark as entered in the Register if the amendment does not substantially affect the identity of the trade mark as at the time when the details of the trade mark were published under section 28; or (b) amend particulars of the goods or services in respect of which the trade mark is registered If the amendment does not have the effect of extending the rights that (apart from the amendment) the owner has under the registration; or (c) amend, or enter in the Register, any other particular in respect of the trade mark if the amendment or entry does not have the effect of extending the rights that (apart from the amendment or entry) the owner has under the registration. (2) An appeal lies to the Federal Court from a decision of the Registrar under subsection (1). Cancellation of registration 85. The Registrar must cancel the registration of a trade mark: (a) if the registered owner asks in writing that the registration be cancelled; or (b) if: (i) the application for registration stated that the applicant intended to assign the trade mark to a body corporate about to be constituted; and (ii) the body corporate has not, within the prescribed period, applied for a record of the assignment to be entered in the Register. Division 2—Action by court Amendment to correct error or omission 86. A prescribed court may, on the application of an aggrieved person, order that the Register be rectified by: (a) entering in the Register particulars that were wrongly omitted from it; or (b) correcting any error in an entry in the Register. Amendment or cancellation on ground of contravention of condition etc. 87. 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 any entry in the Register relating to the trade mark; on the ground that a condition or limitation entered in the Register in relation to the trade mark has been contravened. Amendment or cancellation—loss of exclusive rights to use trade mark 88.(1) If section 23 or 24 applies in relation to a registered trade mark, a prescribed court may, on the application of an aggrieved person, but subject to subsection (2), order that the Register be rectified as necessary, either by: (a) cancelling the registration of the trade mark; or (b) removing or amending any entry in the Register relating to the trade mark; having regard to the effect of section 23 or 24 (as the case may be) on the rights of the registered owner of the trade mark to use the trade mark, or any sign that is part of the trade mark, in relation to particular goods or services. (2) If section 23 or 24 applies in relation to the trade mark because the trade mark contains a sign that: (a) has become well known, or accepted generally, as the sign that describes or is the name of an article, substance or service; or (b) describes or is the name of: (i) an article or substance that was formerly exploited under a patent; or (ii) a service that was formerly provided as a patented process; the court may decide not to make an order under subsection (1) and allow the trade mark to remain on the Register in respect of: (c) the article or substance or goods of the same description; or (d) the service or services of the same description; subject to any condition or limitation that the court may impose. 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. Duties and powers of Registrar 90.(1) A person applying to a prescribed court under this Division must give notice of the application to the Registrar. (2) On receiving the notice, the Registrar must appear if directed by the court to do so. Otherwise, the Registrar may appear before the court and be heard at his or her discretion. (3) The applicant must give to the Registrar a copy of any order made by the court under this Division and the Registrar must comply with the order.