Trade Mark oppositions: IT error doesn’t stop the clock

Australian pay TV company Foxtel has lost its opportunity to oppose China Unicom’s trade mark application for “CUniQ” after its lawyers’ attempt to file a notice of intention to oppose the application with IP Australia failed.

Under Australian trade mark law, a person may file a notice of intention to oppose a trade mark within two months of the publication of the trade mark for acceptance in the Official Journal.

Foxtel’s lawyers had tried to file a notice of intention to oppose the “CUniQ” mark on the last day available to it for filing the notice.  However, the filing process was never completed, and this was not detected by Foxtel’s lawyers and so the “CUniQ” mark proceeded to registration.

Foxtel then requested that the Registrar of Trade Marks use her powers under the Trade Marks Act to revoke the registration under section 84A of the Trade Marks Act 1995 (Cth) (the Act).  However, the Registrar declined to exercise her powers.

Foxtel sought judicial review of the decision.

In considering the Registrar’s powers to revoke the “CUniQ” trade mark in the circumstances, Justice Burley found that section 84A leaves a broad scope for the Registrar to exercise her discretion.  He said that the decision of the Registrar to decline to revoke the trade mark in the circumstances fell within the decisional freedom provided by the terms of the Act and that the decision was not unreasonable in the circumstances.

This is in contrast to section 84B where the Registrar must revoke a trade mark registration in certain circumstances, including where a notice of opposition to a registration has been properly filed.

This is a timely reminder for persons considering filing an opposition to an Australian trade mark application to ensure that the strict timing requirements for the filing of an opposition are met. 

If would like more information about this article, or trade mark oppositions in Australia, please contact Lynne Lewis (Partner, Sydney) or Rebecca Currey (Associate, Sydney).

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