National Cancer Foundation Limited

This matter concerned an application by the Registrant to be heard in relation to its trade mark registration, pursuant to section 84A(5) of the relevant Act. The hearing was conducted by a delegate of the Registrar of Trade Marks in Canberra on 5 December 2022, with the Registrant represented by counsel.

The core legal issue before the delegate was whether to revoke the registration of the Registrant's trade mark. This power of revocation, introduced by the Intellectual Property Laws Amendment Act 2006 (Cth), is intended to remove invalidly registered trade marks from the Register. Section 44(2) of the Act outlines the grounds for rejection of a trade mark application, which are relevant to the assessment of validity in revocation proceedings, specifically where an applicant's trade mark is substantially identical or deceptively similar to an earlier registered trade mark for similar services or closely related goods, and the priority date of the applicant's mark is not earlier than the priority date of the other trade mark.

The delegate noted that the power to revoke a trade mark registration is a serious matter and should be exercised with great caution. Previous decisions have characterised revocation as an extreme course, emphasising that trade mark owners can reasonably expect their registrations to be valid, particularly in the absence of bad faith. The delegate's reasoning indicated that the structure of section 84A, its context within the Act, the nature of the rights affected, and the consequences of revocation all necessitate a cautious approach. The Registrant had filed a declaration from its Chief Executive Officer and a summary of submissions for consideration.