Trademarks Act 2019 · Updated to 18 Mar 2022 · Part VIII · Effects of Registered Trademarks
50. Trademark consisting of sign that becomes accepted as sign describing article, etc.
Feedback & supportThis section applies if a registered trademark contains or consists of, a sign that, after the date of registration of trademark, becomes generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service.
registered trademark
“registered trademark” has the meaning assigned to it under section 16;
For the purposes of subsection (1), if the trademark consists of the sign, the registered proprietor—
sign
“sign” includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion or any combination thereof;
does not have any exclusive rights to use, or authorize other persons to use, the trademark in relation to—
the article or substance or other goods of the same description; or
the service or other services of the same description, and
is taken to have ceased to have those exclusive rights from and including the day determined by the Court under subsection (4).
For the purposes of subsection (1), if the trademark contains the sign, the registered proprietor—
registered proprietor
“registered proprietor” means the person for the time being entered in the Register as the registered proprietor of the trademarks;
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does not have any exclusive rights to use, or authorize other persons to use, the sign in relation to—
the article or substance or other goods of the same description; or
the service or other services of the same description;
and
is taken to have ceased to have those exclusive rights from the day determined by the Court under subsection (4).
For the purposes of subsections (2) and (3), the Court may determine the day on which a sign first became generally accepted within the relevant trade as the sign that describes or is the name of the article, substance or service.