Non-use Grace Period Reduced


A number of changes to Australia’s IP legislation come into effect on 24 February 2019 as a result of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Amendment Act).

The key change to Australia’s trade mark legislation is a reduction in the time period before which a trade mark registration can be challenged for non-use.

At present, the Trade Marks Act 1995 (Cth) (TMA) provides that a non-use application cannot be made before a 5-year period has passed from the filing date of the trade mark application. In contrast, the Amendment Act provides that a non-use application cannot be made before a 3-year period has passed from the date the particulars of the registered trade mark are entered into the Register.

The changes under the Amendment Act apply to trade mark applications filed on orafter 24 February 2019. Accordingly, as the changes do not apply retrospectively, a non-use application can only be made for trade marks filed on or before 23 February 2019 once the 5-year period set out above has passed.

The above is timely reminder for trade mark owners to review their trade mark portfolio against their commercial objectives and activities, and to ensure that all valuable brands are used (with appropriate records evidencing such use) to avoid any attack on the basis of non-use, whether under the old or amended provision.

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