Burrell, Robert; Handler, Michael --- "Rethinking the Presumption of Registrability in Trade Mark Law" [2013] UNSWLRS 5

Last Updated: 8 February 2013

Rethinking the Presumption of Registrability in Trade Mark Law

Robert Burrell, University of Western Australia
Michael Handler, University of New South Wales

This paper is available for download at Available at
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2212041

Citation

This paper was published in 38 Monash Law Review 148. This paper may also be referenced as [2013] UNSWLRS 5.

Abstract

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. The article concludes with parallels between developments in Korean and European data protection.