5. Rectification by a person other than the trade mark owner

Regulation 86 of the Regulations sets out the necessary formalities for an application to rectify a registered trade mark pursuant to section 76 of the Act. An application to rectify a registered trade mark by a person other than the owner of the registered trade mark must be in writing, ²¹ signed by the applicant, ²² and contain the following information:²³

1. The applicant’s name and address for service;
2. If the applicant has an agent, the agent’s name;
3. A description or representation of the trade mark to which the application relates;
4. The number of the registration of the trade mark to which the application for rectification relates;
5. The class or classes to which the application relates;
6. The extent to which rectification is sought;
7. The grounds for rectification; and
8. A statement of the basis on which the application claims to be a person who has an interest for the purposes of section 76(1) of the Act.

Where the application for rectification is made by a person other than the owner of the registered trade mark the Commissioner will, as soon as practicable, send a copy of the application for rectification to the owner of the registered trade mark.²⁴

The owner may then oppose the application for rectification by filing a counter-statement with the Commissioner within 2 months after receiving a copy of the application.²⁵

If the owner does not file a counter-statement within 2 months, the Commissioner must determine the application on the documents filed by the applicant.²⁶

If the owner does file a counter-statement the counter-statement must include the following information²⁷ and be signed by the owner:²⁸

• The owner’s name and address for service;
• If the owner has an agent, the agent’s name;
• A response to the applicant’s grounds for rectification, by admitting, denying or claiming lack of knowledge of, each assertion made in the grounds for rectification; and
• A brief statement of the facts on which the owner relies in support of the registration.

On receipt of the counter-statement the Commissioner must, as soon as practicable, send a copy of the counter-statement to the applicant.²⁹

After receiving the counter-statement the applicant for rectification must, within 2 months:³⁰

• File evidence in support of the application for rectification;
• Notify the Commissioner that they do not intend to file evidence; or
• Notify the Commissioner that they are withdrawing the application for rectification

The Commissioner must notify the owner as soon as practicable after the applicant has taken one of the steps above.³¹ The application for rectification is discontinued if:³²

• The applicant does not, within the applicable deadline, file evidence or notify the Commissioner that they do not intend to file evidence; or
• The applicant notifies the Commissioner that they are withdrawing the application.

On receipt of the applicant’s evidence or the applicant’s notice that they do not intend to file evidence, the owner has 2 months within which they may file their evidence.³³

The applicant may then file evidence in reply to the owner’s evidence, within one month of receiving a copy of the owner’s evidence.³⁴

Once the evidence is completed, the case will be decided by an Assistant Commissioner of Trade Marks specifically appointed by the Commissioner to adjudicate and decide cases.

Footnotes

²¹Regulation 86(1)(a) of the Trade Marks Regulations 2003.

²² Regulation 86(1)(c) of the Trade Marks Regulations 2003.

²³ Regulations 86(1)(b) and 87 of the Trade Marks Regulations 2003.

²⁴ Regulation 86(2) of the Trade Marks Regulations 2003.

²⁵ Regulation 88(1) of the Trade Marks Regulations 2003.

²⁶ Regulation 88(2) of the Trade Marks Regulations 2003.

²⁷ Regulation 89(1) of the Trade Marks Regulations 2003.

²⁸ Regulation 89(2) of the Trade Marks Regulations 2003.

²⁹ Regulation 89(3) of the Trade Marks Regulations 2003.

³⁰ Regulation 90(1) of the Trade Marks Regulations 2003.

³¹ Regulation 90(2) of the Trade Marks Regulations 2003.

³² Regulation 91 of the Trade Marks Regulations 2003.

³³ Regulation 92 of the Trade Marks Regulations 2003.

³⁴ Regulation 93 of the Trade Marks Regulations 2003.