Trademarks Act 2019 · Updated to 18 Mar 2022 · Part VII · Alteration, Correction, Cancellation, Revocation and Invalidity
47. Invalidation of registration by Court
Feedback & supportThe registration of trademark may be declared invalid by the Court upon the application by an aggrieved person on the ground that the trademark was registered in breach of section 23.
Notwithstanding subsection (1), where the trademark was registered in breach of paragraph 23(1)(b), (c) or (d), it shall not be declared invalid if, the registration of trademark has acquired a distinctive character after its registration in consequence of its use in relation to the goods or services for which it is registered.
distinctive character
“distinctive character” means the trademark shall be capable of distinguishing goods or services— (a) which the proprietor of the trademark is or may be connected to in the course of trade from goods or services; or (b) in the case of which no such connection subsists or where the trademark is registered or intended to be registered, subject to conditions, amendments, modifications or limitations, in relation to use within the extent of the registration;
The registration of trademark may be declared invalid by the
Court upon the application by an aggrieved person on the ground that—
there is an earlier trademark under subsection 24(1), (2)
or (3); or
there is an earlier right under subsection 24(4).
The registration of trademark may not be declared invalid under subsection (3) if the proprietor of that earlier trademark or earlier right has consented to the registration.
Where a trademark has been registered on the ground that there has been an honest concurrent use of the trademark and the earlier trademark or other earlier right, as provided for by section 25, the registration of trademark may not be declared invalid under subsection (3) unless the
Registrar or the Court is satisfied that in fact there had been no honest concurrent use of the trademark and the earlier trademark or other earlier right.
Registrar
“Registrar” means a person appointed as a Registrar of Trademarks under subsection 10(1);
The registration of trademark may be declared invalid by the
Court upon the application by an aggrieved person or the Registrar on the ground of fraud in the registration or that the registration was obtained by misrepresentation.
Where the ground of invalidity exists in respect of only some of the goods or services for which the trademark is registered, the trademark shall be declared invalid as regards those goods or services only.
Trademarks 53
Where the registration of trademark is declared invalid to any extent, the registration shall to that extent be deemed never to have been made, but this shall not affect transactions past and closed.