Foxtel Management Pty Limited v Registrar of TradeMarks [2019] FCA 605

Deadlines are a central and critical component of Patent and TradeMark Attorney work.  These deadlines include securing acceptance, responding to an office action, opposing a third party application and filing evidence in an opposition.

Despite all the best technology and systems in the world, deadlines can be missed.  Contrary to popular belief, TradeMark attorneys are human too.

Most TradeMark regimes allow for this to be corrected.  In Australia, section 224 of the Trade Marks Act 1995(Cth) (the Act) allows for an extension for:

1. an error or omission by the person concerned or by his or her agent; or
2. circumstances beyond the control of the person concerned.

The options for opposing a TradeMark change dramatically once a TradeMark has proceeded to registration after a missed opposition.

Once a TradeMark is registered, an extension is no longer possible and the only options for “opposing” a TradeMark are if registration is revoked by the Registrar of Trade Marks or to seek rectification.

Rectification enables an applicant to seek cancellation of a registration on any of the grounds on which the registration of the TradeMark could have been opposed.  Because rectification involves an application to the Federal Court it is considerably more expensive than opposition proceedings before the Trade Marks Office.

A recent decision of the Federal Court Foxtel Management Pty Limited v Registrar of Trade Marks [2019] FCA 605, considers the Registrar’s power to revoke. In this case, well known broadcaster Foxtel sought judicial review of a decision made by the Registrar of Trade Marks, declining to revoke TradeMark No. 1813459 registered in classes 9, 16, 35, 38, 41, 42 and 45 of the Trade Marks Register for the word TradeMark CUniQ, which is owned by China Unicom Global Limited, a Chinese state-owned telecommunications operator of China and one of the world’s largest mobile service providers.

Foxtel’s lawyers had attempted to file a notice of intention to oppose the “CUniQ” mark on the last day of the opposition period.  However, the filing process was never properly completed, and this omission was not detected by Foxtel’s lawyers.  Consequently, the “CUniQ” mark proceeded to registration.

Foxtel then requested that the Registrar of TradeMarks to revoke the registration under section 84A of the Act.  However, the Registrar declined to revoke registration.

Foxtel sought judicial review of the Registrar’s decision.

Burley J found that section 84A leaves a broad scope for the Registrar to exercise her discretion to revoke registration.  He said that the decision of the Registrar to decline to revoke the TradeMark in the circumstances fell within the decisional freedom provided by the Act and that the decision was not unreasonable in the circumstances.

Burley J discussed the Explanatory Memorandum in relation to section 84A and considered that it makes plain that the legislative intention underlying s 84A is not to provide a mechanism for parties to file de facto oppositions after a TradeMark has been registered.

The decision reinforces vigilance is required in monitoring deadlines and filing documents.

The decision is available here Foxtel Management Pty Limited v Registrar of Trade Marks

Gestalt Law represents the applicant China Unicom in relation to the Trade Mark CUniQ