Rethinking the Presumption of Registrability in Trade Mark Law
Monash University Law Review, Vol. 38, p. 148, 2012
32 Pages Posted: 6 Feb 2013 Last revised: 17 Feb 2013
Date Written: January 17, 2013
The Trade Marks Act 1995 (Cth) brought with it a number of important innovations. One such innovation was the introduction of a ‘presumption of registrability’. Quite what the presumption of registrability was intended to achieve and how it was intended to operate are two of the principal questions that this article seeks to explore. Despite the importance of the presumption to those operating the trade mark system and despite the apparent support it enjoys amongst trade mark practitioners, the nature and operation of the presumption have received little sustained attention from academics. In many respects this lack of scholarly attention is unsurprising — at first glance the presumption of registrability appears to be a device that, whilst no doubt important to the practical operation of the trade mark system, is not the locus of any controversial issue of principle or of any particular difficulty of statutory construction or judicial interpretation. In this article, however, we want to suggest that there are a number of aspects of the presumption that warrant further attention. More specifically, we argue that the historical materials that are available suggest that significant uncertainty surrounds the question of what the presumption was intended to achieve. We also argue that the legislative basis of the presumption is much less secure than is generally assumed. Having questioned the foundations of the presumption, we turn to suggest that it has the capacity to obscure important issues relating to the standard of proof both at the examination stage and during opposition proceedings. From this analysis we conclude that the operation of the presumption needs to be rethought. In the final section of the paper we therefore turn to sketch out what a more satisfactory presumption of registrability might look like.
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