In Australia, unlike the United States, there is no requirement to file evidence of use of a registered trade mark at regular intervals.
As an Australian trade mark remains in force for 10 years from the filing date of the application and can be renewed indefinitely (as long as renewal fees are paid), there is a risk that trade mark owners will become complacent about the security of their IP asset.
It is important, however, that trade mark owners don’t drop the ball when it comes to ensuring the security of this asset, because a trade mark that is not being used may be vulnerable to an application for removal by any third party.
Removal Based on Non-Use
Section 92(4)(b) of the Trade Marks Act 1995 (Cth) permits a third party to apply for removal of a registered trade mark on the basis of its non-use. The length of time considered to be non-use is a continuous period of three years.
Primarily the purpose of this provision is to prevent the Trade Marks Register from becoming cluttered with unused registrations that other traders may legitimately wish to use.
But it seems like only yesterday that my trade mark was registered!
Fortunately, the Trade Mark Office provides a grace period of 5 years from the filing date of the registration before a trade mark registration may become vulnerable to removal action on the basis of non-use.
However, after the five year grace period, a trade mark registration may be removed on the basis that, during the period of three years ending one month before the removal application is filed, the owner of the registration did not use the trade mark in Australia in good faith in relation to all or some of the goods and services claimed by the registration.
Why 3 years plus 1 month?
The Act provides a one month window in which the prospective applicant for removal can contact the trade mark owner to request consent to register the trade mark, or invite the owner to limit or cancel the registration voluntarily.
Who can apply for removal?
An applicant for removal does not need to be an aggrieved party. Often removal applications are filed by parties that have had the registered trade mark cited against their own trade mark application and seek to remove this trade mark as an obstacle to their own trade mark registration.
How can I safeguard my trade mark from removal for non-use?
A single bona fide use of the trade mark in relation to the goods during the relevant 3 year period may be sufficient to rebut an application for removal.
However, it is important to note that this use must be ‘use in the course of trade’. The trade mark owner must establish that the trade mark in question was used as a ‘badge of origin’ for the goods and services for which the trade mark is registered.
Because of a trade mark owner’s right to register a trade mark for classes of goods or services, it will likely be sufficient, to oppose a removal action, for the trade mark owner to show at least use of the trade mark for some of the goods or services.
Authorised use of the trade mark by an authorised user is considered to be use of the trade mark and can be used as evidence to oppose a removal application.
Obstacles to use
Section 100(3)(c) of the Act provides a provision for trade mark owners who cannot show use of the trade mark in the relevant 3 year period.
Under this provision, if there were circumstances that acted as an obstacle to use of the trade mark, a trade mark owner may be able to successfully defend a removal application, even if the trade mark was not used in the relevant period.
The catch is that the trade mark owner must be able to establish a causal link between the relevant circumstances and the non-use of the trade mark. Furthermore, the obstacle needs to have arisen externally and cannot be of the trade mark owner’s making.
Registrar’s discretion
All applications for removal can be subject to the Registrar’s discretion. Provided the Registrar is satisfied it is reasonable to do so, he or she may decide that a trade mark should not be removed from the Register even if the removal grounds have been established.
The nature of the Registrar’s discretion is quite broad and may view, in a favourable light, situations:
- where the trade mark has a strong reputation,
- where substantial promotional activity has occurred, indicating that the trade mark has not been abandoned, or
- where the removal of the trade mark is likely to result in public confusion.
Ultimately, it is the integrity of the Register which is ostensibly the guiding principle behind any discretion exercised by the Registrar.
Considerations for trade mark owners
As the results of removal actions can be hard to predict, it behoves a trade mark owner to mitigate the risk of removal by ensuring that their essential trade marks are not vulnerable to removal actions by third parties.
Trade mark owners should conduct regular reviews of their trade mark portfolios in order to identify essential trade marks and ensure these marks are used in the course of trade in relation to the goods and services covered by the registration.
If you would like advice regarding the risk of removal for non-use for your trade marks, please speak to a Spruson & Ferguson Trade Mark Attorney.