Part 9REMOVAL OF TRADE MARK FROM REGISTER FOR NON-USE

PART 9—REMOVAL OF TRADE MARK FROM REGISTER FOR NON-USE 91. This Part makes provision for; (a) removing a registered trade mark from the Register; or (b) not restoring to the Register a trade mark that has been removed because of a failure to renew the registration; if the registered owner of the trade mark has not used the trade mark in good faith. Application for removal of trade mark from Register etc. 92.(1) A person aggrieved by the fact that: (a) a trade mark is or may be registered; or (b) a trade mark removed from the Register for non-renewal of its registration may be restored to the Register; may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from, or not to be restored to, the Register. (2) The application: (a) must be in accordance with the regulations; and (b) may be made in respect of any or all of the goods or services in respect of which the trade mark may be, is, or was, registered. (3) An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person aggrieved may apply to the court for an order directing the Registrar to remove the trade mark from the Register or not to restore it to the Register. (4) An application under subsection (1) or (3) (“non-use application”) may be made on either or both of the following grounds, and on no other grounds: (a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith: (i) to use the trade mark in Australia; or (ii) to authorise the use of the trade mark in Australia; or (iii) to assign the trade mark to a body corporate for use by the body corporate in Australia; in relation to the goods or services to which the non-use application relates and that the registered owner has not used the trade mark in good faith in Australia in relation to those goods or services at any time before the period of one month ending on the day on which the non-use application is filed; (b) that the trade mark has remained registered, or (if it were restored to the Register) would have remained registered, for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner used the trade mark in good faith in Australia in relation to the goods or services to which the application relates. Time for making application 93.(1) Subject to subsection (2), an application for the removal of a trade mark from the Register, may be made at any time after the filing date in respect of the registration of the trade mark. (2) An application on the ground referred to in paragraph 92(4)(b) may not be made before a period of 5 years has passed from the filing date in respect of the registration of the trade mark. Referral to court 94\. If: (a) an application has been made to the Registrar under subsection 92(1); and (b) the Registrar is of the opinion that the matter should be decided by a prescribed court; the Registrar may refer the matter to that court and the court may hear and determine the matter as if an application had been made to it under subsection 92(3). Notification of application 95.(1) If an application has been made to the Registrar under section 92, the Registrar must give notice of the application, in accordance with the regulations. (2) The Registrar must also advertise the application in the Official Journal. Notice of opposition 96.(1) Any person may oppose an application under section 92 by filing a notice of opposition with the Registrar or the court, as the case requires. (2) The notice of opposition: (a) must be in a form approved by the Registrar or by the court; and (b) must be filed in accordance with the regulations or the rules of court (as the case may be). Removal of trade mark from the Register etc. if application unopposed 97.(1) If there is no opposition to an application to the Registrar under subsection 92(1), the Registrar must remove the trade mark from the Register, or refrain from restoring the trade mark to the Register, in respect of the goods or services specified in the application. (2) If there is no opposition to an application to a court under subsection 92(3), the court must order the Registrar to remove the trade mark from the Register, or refrain from restoring the trade mark to the Register, in respect of the goods or services specified in the application. Trade mark restored to Register if notice of opposition filed within extended time 98. If: (a) the Registrar has removed a trade mark from the Register under subsection 97(1) because no notice of opposition was filed within the period provided under the regulations; and (b) the Registrar subsequently extends the period within which the notice may be filed; and (c) a notice of opposition is filed within the extended period; the Registrar must restore the trade mark to the Register. Also, the trade mark is taken not to have been removed from the Register. Proceedings before Registrar 99. If an application to the Registrar is opposed, the Registrar must deal with the matter in accordance with the regulations. Burden on opponent to establish use of trade mark etc. 100.(1) In any proceedings relating to an opposed application, it is for the opponent to rebut: (a) any allegation (made under paragraph 92(4)(a)) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith: (i) to use the trade mark in Australia; or (ii) to authorise the use of the trade mark in Australia; or (iii) to assign the trade mark to a body corporate for use by the body corporate in Australia; in relation to the goods or services to which the opposed application relates; or (b) any allegation (made under paragraph 92(4)(a) or (b)) that a trade mark has not, at any time before or during a specified period (as the case may be), been used in good faith by its registered owner in relation to the goods or services to which the opposed application relates (“relevant goods or services”). (2) For the purposes of subsection (1), (except if subsection (5) applies) the opponent is taken to have rebutted the allegation that a trade mark has not been used in good faith by its registered owner in relation to the relevant goods or services if the opponent has established: (a) that the trade mark has been used by its registered owner in relation to the relevant goods or services; or (b) that the trade mark has been used by its registered owner in relation to goods or services in respect of which the trade mark is registered (“registered goods or services”) that are goods of the same description as, or closely related to, the relevant goods or services; or (c) that the trade mark with additions or alterations not substantially affecting its identity has been used by its registered owner in relation to: (i) the relevant goods or services; or (ii) registered goods or services that are of the same description as, or closely related to, the relevant goods or services; or (d) the trade mark was not used by its registered owner because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during the specified period. (3) For the purposes of subsection (1), (except if subsection (5) applies) the opponent is also taken to have rebutted the allegation that the trade mark has not been used in good faith by its registered owner in relation to the relevant goods or services if the opponent has established: (a) that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, has been used by the registered owner in relation to goods or services (other than registered goods or services) that are of the same description as, or closely related to, the relevant goods or services (for example, the relevant goods may be silk ties and the unregistered goods nylon ties); or (b) that the registered owner of the trade mark has used an associated trade mark; and the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the registered owner as having used the trade mark in relation to the relevant goods or services. (4) For the purposes of subsection (1), (except if subsection (5) applies) the opponent is also taken to have rebutted the allegation that the trade mark has not been used in good faith by the registered owner in relation to the relevant goods or services if the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used by an unregistered assignee of the trade mark in relation to: (a) the relevant goods or services; or (b) goods or services (whether registered or not) that are of the same description as, or closely related to, the relevant goods or services; and the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the registered owner as having used the trade mark in relation to the relevant goods or services if: (c) the unregistered assignee subsequently becomes the registered owner of the trade mark: and (d) the use of the trade mark by the assignee is in accordance with the assignment. (5) The opponent to an application may not rely on paragraph (2)(b), subparagraph (2)(c)(ii) or paragraph (3)(a) or (b): (a) in the case of an application by the registered owner of a trade mark registered in respect of the relevant goods or services—if the applicant’s trade mark is substantially identical with, or deceptively similar to, the opponent’s trade mark and: (i) the applicant was granted registration of his or her trade mark on the ground that there had been honest concurrent use of the trade marks; or (ii) the applicant was a person in relation to whom subsection 44(4) applied; or (b) in any other case—if: (i) the applicant’s trade mark is substantially identical with, or deceptively similar to, the opponent’s trade mark; and (ii) the Registrar or the court is of the opinion that the applicant’s trade mark could properly be granted registration in respect of the relevant goods or services on the ground that there has been honest concurrent use of the trade marks or on the ground that subsection 44(4) would apply in relation to the applicant. Determination of opposed application—general 101.(1) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the Registrar is satisfied that the grounds on which the application was made have been established, the Registrar may decide to remove the trade mark from, or not to restore it to, the Register in respect of any or all of the goods or services to which the application relates. (2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from, or not to restore it to, the Register in respect of any or all of the goods or services to which the application relates. (3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from, or should be restored to, the Register even if the grounds on which the application was made have been established. Determination of opposed application—localised use of trade mark 102.(1) This section applies if an application is made on the ground referred to in paragraph 92(4)(b) and: (a) the applicant is the registered owner of a trade mark that is substantially identical with, or deceptively similar to, that of the opponent and is registered in respect of the goods or services specified in the application subject to the condition or limitation that the use of a trade mark is to be restricted to: (i) goods to be sold, or otherwise traded in, in a particular place (“specified place”) in Australia (otherwise than for export from Australia); or (ii) goods to be exported to a particular market (“specified market”); or (iii) services provided in a particular place in Australia (“specified place”); or (b) the Registrar or the court is of the opinion that such a trade mark may properly be registered in the name of the applicant with that condition or limitation. (2) If the Registrar or the court is satisfied: (a) that the opponent’s trade mark has remained registered for the period referred to in paragraph 92(4)(b); and (b) that during that period there has been no use in good faith of the opponent’s trade mark in relation to: (i) goods to be sold, or otherwise traded in, in the specified place; or (ii) goods to be exported to the specified market; or (iii) services provided in the specified place; the Registrar or the court may decide that the opponent’s trade mark should not be removed from, or should be restored to, the Register but that the registration of the trade mark should be subject to the conditions or limitations that the Registrar or the court considers necessary to ensure that the registration does not extend to the use of the trade mark in relation to: (c) goods to be sold, or otherwise traded in, in the specified place; or (d) goods to be exported to the specified market; or (e) services provided in the specified place. Registrar to comply with order of court 103. A court making an order under section 101 or 102 must cause a copy of the order to be served on the Registrar and the Registrar must comply with the order. 104. An appeal lies to the Federal Court from a decision of the Registrar under section 101 or 102. Certificate—use of trade mark 105.(1) If in any proceedings relating to an opposed application the Registrar or the court has found that: (a) the trade mark has been used during a particular period; or (b) a trade mark has not been used during a particular period solely because of circumstances that were an obstacle to its use; the Registrar or the court must, if so requested by the registered owner of the trade mark, give to the registered owner a certificate of those findings. (2) In any subsequent proceedings in which non-use of the trade mark is alleged: (a) the certificate is, on being produced, evidence of the facts stated in it; and (b) if the proceedings are determined in favour of the opponent and, on or before filing the notice of opposition, the opponent notified the applicant of the contents of the certificate—the opponent is entitled, unless the Registrar or the court otherwise directs, to have the opponent’s full costs paid by the applicant.