Trade Marks Registrar has corrective powers curtailed

The power of the Registrar to correct errors appearing in the Trade Marks Register appears to have been curtailed by the recent decision of the Full Court in Vokes v Laminar Air Flow[1].

Vokes was the original owner of a series of trade marks however, an incorrectly filed change of name form (in circumstances where there was no change of name) and subsequent recordal of an assignment had resulted in Laminar appearing as the registered owner of the marks. Vokes notified the Trade Marks Office that the change of name was filed in error and requested correction of the register to substitute Vokes for Laminar as the registered owner. Laminar opposed the application, however the TMO determined that it should be allowed and that the Registrar had power under section 81 to make the requested correction.

Laminar’s appeal against the TMO decision was upheld and Vokes’ further appeal to the Full Court was rejected. Both Courts held that section 81 did not provide the Registrar with power to make such a correction. The section provides that:

The Registrar may, on his or her own initiative, correct any error or omission made in entering in the Register any particular in respect of the registration of a trade mark.

The Courts held that the words “made in entering in the Register” meant that section 81 was limited to correction of errors made by the Registrar in the act of recording a particular in the Register. Errors in the Register resulting, for example, from a mistake made by filing an incorrect form are not covered by the section, with such errors being amenable to correction by an order of a Court following an application under sections 85 or 88.

The TMO has routinely relied upon section 81 to correct errors including those arising from the actions of trade mark owners. Unless legislative change is sought to broaden section 81, parties will now need to make an application to the Federal Court to correct such errors.

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[1] Vokes Ltd v Laminar Air Flow Pty Ltd [2018] FCAFC 109

BEng(Civil)(Hons) LLB LLM FIPTA

Adrian is an intellectual property lawyer who combines legal expertise with deep technological knowledge to advise Australian and international businesses in the resolution of commercial IP disputes.