Are thousands of removal actions actually invalid?

It has been an absolute pleasure this week to deep dive into the intersection between ss 92 (4) (b) and 93 (2) of the Trade Marks Act this week, with some of the best and brightest at IP Australia’s trade mark leadership team.

While the High Court case of Hunter Douglas Australia Pty Ltd v Perma Blinds [1970] HCA 63; (1970) 122 CLR 49 (3 July 1970) was unanimous and strongly implies that IP Australia’s current practice (in allowing removal for non-use where the relevant period commences before the mark is entered on the register, in cases where the removal action is filed less than 3 years and 1 month after the mark is entered into the register, as the relevant non-use period is backdated a month from the date the removal action is filed) is correct, it is interesting to explore whether that case is still determinative in light of the amendments to the wording of s 92 (4) (b) since then.

The current wording includes “remained registered”, which implies real time passing from the date the mark is entered into the register.

Moreover, the backdating of the effective date of a registration does not affect all sections of the Act. There is no question that where s 84 A (4) states that revocation of a registration can occur within 12 months of registering the trade mark, this is not 12 months from the filing date. This is 12 months from entering the mark into the register.

And because, under s 93 (2) an application for removal can only be filed 3 years after the date the mark is entered into the register, necessarily, the mark has been “registered” for 3 years by the time of the removal action. So, it would be redundant for s 92 (4) (b) to duplicate that requirement, and it follows that the “remained registered” element of s 92 (4) (b) is an important and independent element. One of the fundamental tenets of statutory interpretation is to interpret against redundancy.

All of this is mere theoretical discussion and will likely require new High Court or other superior court judgement before there is any change to IP Australia’s current practice. But even if nothing changes, or even needs to change, it is such a privilege and an absolute pleasure to talk trade marks with the people who know it and love it as much as I do, and to be able to work with them to shape the foundation of the Australian trade mark landscape.

At Tarr Law, we don’t just file a trade mark for you. We deeply understand the ins and outs of trade mark law. So, if you need help with trade mark matters, come talk to us. We are the real deal.