Part II of the Trade Marks Act (Chapter 385) creates the office that administers the whole scheme.
Section 3 — the Office of Registrar
(1) The Minister (a) shall appoint a Registrar of Trade Marks; and (b) may appoint such Deputy Registrars and other officers as he considers necessary.
(2) A Deputy Registrar may, subject to the directions of the Registrar, exercise any power or carry out any function of the Registrar.
(3) The appointment of a Deputy Registrar does not affect the exercise of a power or the performance of a function by the Registrar.
So a Deputy may do anything the Registrar may do. A decision taken by a Deputy is a decision of the office, and is appealable in the same way.
Section 4 — the seal and judicial notice
The Registrar shall have and use a seal of office in the form the Minister determines, and may affix a facsimile of his signature, which shall be deemed to be the signature of the Registrar.
All courts, Judges and persons acting judicially shall take judicial notice of the signature of any person who holds or has held the office of Registrar or Deputy Registrar, of the fact that they hold or held it, and of the seal.
Judicial notice removes the need to prove the office or the signature. Read with sections 9 and 10 — under which a certified copy or extract is admissible without further proof or production of the original, and a certificate of the Registrar is evidence of the statements in it — it makes a certified extract self-proving in court.
Section 5(1) — the powers of a tribunal
(a) summon witnesses;
(b) receive evidence on oath, whether orally or otherwise;
(c) require the production of documents or articles; and
(d) award costs against a party to proceedings before him.
Under section 87, disobedience to a summons or requirement of the Registrar is to be treated as contempt of court. And under section 5(1)(d) the Registrar may award costs — which matters most in opposition proceedings, where sections 42 and 101 also allow security for costs to be required.
Section 95 deals with the costs of the Registrar, and section 88 with the recovery of costs.
Proceedings before the Registrar — oppositions, applications to rectify, applications for removal for non-use, registered user applications — are conducted on evidence, and the principles of natural justice under section 59 of the Constitution apply to them.
Section 5(2) and (3) — amendment
(a) permit the amendment of an application, a notice of opposition or other document lodged at his office — whether to correct a clerical error or obvious mistake or otherwise; or
(b) amend an entry in the Register for the purpose of correcting a clerical error or an obvious mistake.
An amendment of an application shall not be permitted if it would substantially affect the identity of the trade mark as specified in the application before amendment.
That is a hard line. A misspelt applicant name or an error in the goods can be corrected; the mark itself cannot be changed into a different mark. If the mark needs to change materially, a fresh application is required — with a fresh priority date.
Compare section 12, which allows a registered mark to be altered only in ways that do not substantially affect its identity.
Section 5(4) — refusing to receive a document
(a) contains any matter contrary to law; or
(b) by reason of any omission or misdescription has not been duly completed; or
(c) does not comply with the requirements of this Act; or
(d) contains any error, alteration or erasure,
he may refuse to receive or register the document and request that it be amended, completed, re-submitted, or replaced by a fresh document.
A refused document is not lodged. For an application that can mean losing the priority date — because under section 45 the date of registration is ordinarily the date of the application. For a notice of opposition, the time limit does not stop running while a defective notice is being corrected.
The Registrar’s other functions
| Section | Function |
|---|---|
| 6 | Establishes and maintains the Register, in Part A and Part B |
| 9, 10 | Issues certified copies, extracts and certificates, which are evidence |
| 11, 12 | Alters the Register and a registered mark |
| 33 | Accepts or refuses an application, absolutely or subject to conditions, amendments, modifications or limitations |
| 37 | Advertises an accepted application |
| 40, 41 | Hears oppositions, or refers them to the Court |
| 44 | Registers the mark |
| 60–62 | Renewal, expiry and restoration |
| 64–68 | Registered users — registration, variation and cancellation |
| 74 | Registration of an assignment |
| 83 | Intervention in Court proceedings |
| 94 | Extension of time |
| 100 | Adaptation of the classification of goods |
Appealing a decision of the Registrar
Part XII gives the Court wide powers on appeal. Under section 82 the Court may exercise the Registrar’s powers, and under section 83 the Registrar may intervene in proceedings. Section 84 provides for special cases to be stated. See appealing a trade marks decision.
Where a decision is affected by legal error, judicial review is also available in the National Court under Order 16 of the National Court Rules and section 155(4) of the Constitution.
Sources
- Trade Marks Act (Chapter 385) — ss 3–12, 33, 37, 40–45, 60–62, 64–68, 74, 82–84, 87, 88, 94, 95, 100, 101
- Constitution — ss 59, 155(4)
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.