Reconciling Use-Based and Registration-Based Rights within the Trade Mark System: What the Problems with Section 58a of the Trade Marks Act Tell Us

(2014) 42 Federal Law Review 91-119

UNSW Law Research Paper No. 2014-29

34 Pages Posted: 29 Jun 2014

See all articles by Michael Handler

Michael Handler

University of New South Wales (UNSW) - Faculty of Law

Robert Burrell

University of Melbourne - Law School

Date Written: June 28, 2014

Abstract

Reconciling registration and use as mechanisms by which rights can be acquired in a trade mark is inherently difficult. The federal Australian registered trade mark system is built around a hybrid of a registration-based and a use-based model of protection. While it is perfectly possible to defend such a dual model, the two means of acquiring trade mark rights rest on very different logics. In the event of a conflict between a registered mark and a mark that has been used for some time the question of which should take precedence is not necessarily capable of being determined a priori. The relationship between registration and use is mediated by a number of provisions of the Trade Marks Act 1995. In this article we focus on one such provision, s 58A, a relatively recent addition to the legal landscape.

Through a close analysis of s 58A, focusing on court decisions and decisions of the Trade Marks Office that have applied this provision, we demonstrate that s 58A has the potential to operate in an entirely unsatisfactory manner. We then use problems with s 58A as a vehicle to explore the relationship between use-based and registration-based rights generally, suggesting a new conceptual framework that might serve to guide future discussion of how the relationship between registration and use ought to be mediated.

Suggested Citation

Handler, Michael and Burrell, Robert, Reconciling Use-Based and Registration-Based Rights within the Trade Mark System: What the Problems with Section 58a of the Trade Marks Act Tell Us (June 28, 2014). (2014) 42 Federal Law Review 91-119; UNSW Law Research Paper No. 2014-29. Available at SSRN: https://ssrn.com/abstract=2460190

Michael Handler (Contact Author)

University of New South Wales (UNSW) - Faculty of Law ( email )

Kensington, New South Wales 2052
Australia
+61 2 9385 2874 (Phone)

Robert Burrell

University of Melbourne - Law School ( email )

University Square
185 Pelham Street, Carlton
Victoria, Victoria 3010
Australia

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