Why using your trade mark is critical

Use it or lose it! A trade marks can be a valuable item of intellectual property, however it is important that businesses only register trade marks which they intend to use.

Why must you use your trade mark?

Non-use of a trade mark is both a ground for opposing registration of a trade mark, and for removing a trade mark from the register. Section 59 of the Trade Marks Act 1995 (Cth) (Act), provides that the registration of a trade mark may be opposed on the ground that the applicant does not intend, in relation to the goods and/or services specified in the application:

to use, or authorise the use of, the trade mark in Australia; or
to assign the trade mark to a body corporate for use by the body corporate in Australia.

Sections 92(1)-(2) of the Act provide that, a person may apply to the Registrar to remove a trade mark in regards to any or all of the goods or services in respect of which it is registered. Under section 93(1) of the Act, a non-use application may be made at any time after the filing date of the application for registration, but may not be made if an action concerning the trade mark is pending in a prescribed court: section 92(3) of the Act. Under section 92(4) a non-use application may only be made on the following grounds:

on the day the application for registration was made, the applicant had no intention in good faith, in relation to the goods and/or services to which the non-use application relates:
- to use the trade mark in Australia; or
- to authorise the use of the trade mark in Australia; or
- to assign the trade mark to a body corporate for use by the body corporate in Australia; and

the registered owner, in the period of one (1) month before the non-use application is filed:

has not used the trade mark in Australia; or
has not used the trade mark in good faith in Australia;

in relation to those goods and/or services; or

the trade mark has remained registered for a 3 year period ending one (1) month before the non-use application is filed, and, at no time during that period, the registered owner, in relation to the goods and/or services to which the application relates:
- used the trade mark in Australia; or
- used the trade mark in good faith in Australia.

What is “using” your trade mark?

Sections 7(4)-(5) of the Act defines “use of a trade mark” as use of the trade mark in physical or other relation to the goods or services. Use includes use of the trade mark with insubstantial alterations and aural use: sections 7(1)-(2) of the Act. The IP Australia Trade Marks Office Manual of Practice & Procedure states that “use” may also include use in domain names, key words, metatags, business names, packaging, webpages, displays, advertising, or the product or service itself.

Takeaways

In order to obtain the benefit of registration, it is important to not only use the registered trade mark, but also to keep records of its use, for example, receipts for the purchase of products on which the trade mark is affixed and screenshots of webpages featuring the trade mark. So yes, it’s important to use your trade mark however it’s also important that you can prove that you’ve used it!

Links and further references

Legislation

Trade Marks Act 1995 (Cth)

Further information about trade marks and brand protection

If you need assistance with trade mark protection, please contact us for an obligation free and confidential discussion.

Malcolm Burrows B.Bus.,MBA.,LL.B.,LL.M.,MQLS.
Legal Practice Director
T: +61 7 3221 0013 (preferred)
M: +61 419 726 535
E: mburrows@dundaslawyers.com.au

Disclaimer

This article contains general commentary only. You should not rely on the commentary as legal advice. Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.