Ingenuity Systems Inc.

This matter concerned an application by Ingenuity Systems Inc. (the Applicant) for a trade mark, which was initially accepted under section 44(4) of the *Trade Marks Act 1995* (Cth) (the Act). Subsequently, the Institute of Professional Accountants (the Institute) filed a notice of intention to oppose the registration, citing grounds under sections 44, 58A, and 60 of the Act. The Applicant filed a notice of intention to defend. In parallel, the Institute requested the revocation of the trade mark's acceptance under section 38 of the Act, arguing it should have been rejected under section 44. A delegate of the Registrar of Trade Marks was appointed to hear and decide on the proposed revocation of acceptance, with the opposition proceedings suspended pending this decision.

The primary legal issue before the delegate was whether to revoke the acceptance of the Applicant's trade mark under section 38 of the Act. This required determining if the two limbs of section 38(1) were satisfied: first, whether any circumstance existed at the time of acceptance that should have prevented it, and second, whether revoking acceptance was reasonable in all the circumstances. The delegate also considered the proper application of section 38, including the discretionary nature of the power to revoke and the guidance provided in the Trade Marks Office Manual of Practice and Procedure regarding when revocation might be considered reasonable.

The delegate noted that the application of section 38 is discretionary and requires both limbs of section 38(1) to be satisfied. The delegate observed that the letter of intention to revoke only explicitly referenced the first limb and did not mention the ongoing opposition proceedings. The delegate referred to the Explanatory Memorandum for the 2006 amendments to section 38, which clarified that the Registrar could consider circumstances that existed at the time of acceptance, even if unknown to the examiner then, and that the reasonableness of the revocation, considering all circumstances, was paramount. The delegate also highlighted guidance from the Manual of Practice and Procedure, suggesting revocation may be reasonable if the acceptance decision was "manifestly wrong," "clearly not just a difference of opinion," and "obviously disregards established authorities." The delegate further emphasised that the case for revocation should stand on its own merits.

The delegate determined that the requirements of section 38(1) had not been fully satisfied, particularly concerning the second limb requiring the reasonableness of revocation in all circumstances. The delegate found that the letter of intention to revoke did not adequately address all relevant circumstances, including the existence of opposition proceedings. Consequently, the delegate decided not to revoke the acceptance of the trade mark.