A registered trade mark is an invaluable commercial asset. The owner of a registered trade mark is granted the exclusive right to use the mark, the exclusive right to assign/sell the mark and the discretion to determine how others can use it. However, successfully registering a trade mark does not ensure that the mark will retain the benefits of registration indefinitely.

A key pre-requisite to obtaining and maintaining registered status is that the trade mark is used in the course of trade. A trader who does not use their trade mark is liable to have it deregistered on the basis of non-use.

In particular sections 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth) set out two circumstances under which a non-use application can be filed, namely:

  1. When the trade mark owner had no intention in good faith to use the mark at the date of filing and has not since used the mark; and
  2. When a trade mark has been registered for three or more years and has not been used for at least three years.

The primary distinction between the two heads of objection is that the former allows a non-use application to be filed in circumstances where a trade mark has not yet been registered or has been registered for fewer than three years. The latter only applies to trade marks that have been registered for at least three years.

Notice of Intention to Oppose

To respond to a non-use application, you must file a Notice of Intention to Oppose. The notice must be filed within two months of the non-use application being advertised in the Australian Official Journal of Trade Marks. It is important to wait until the non-use application has been advertised as filing before this date will result in the notice being refused.

A Notice of Intention to Oppose is filed with IP Australia in the approved form and accompanied with the relevant fee. Once the notice has been filed, it will be checked by an IP Australia Registrar, and if it is in the correct form, a copy will be returned to the trade mark owner. If the notice is not in the proper form, the trade mark owner will be advised and given an opportunity to amend the discrepancies.

Statement of Grounds and Particulars

Along with the Notice of Intention to Oppose, the defending trade mark owner must also file a Statement of Grounds and Particulars. The statement must be filed within one month of filing the Notice of Intention to Oppose. As with the Notice of Intention to Oppose, the Statement of Grounds and Particulars must be in the approved form, however, there is no fee to be paid.

In drafting a Statement of Grounds and Particulars the trade mark owner must ensure that it is adequate. A statement will be deemed adequate if it addresses/rebuts all of the grounds of opposition raised by the non-use applicant. This will usually entail the trade mark owner making assertions of use. A poorly drafted statement may result in the opposition being dismissed and the trade mark being deregistered.

Amending a Notice of Intention to Oppose/Statement of Grounds and Particulars
A Notice of Intention to Oppose may be amended to correct a clerical error, an obvious mistake or to record the name of another party.

Similarly, a Statement of Grounds and Particulars may be amended to correct an error, correct an omission and amend or add facts or circumstances. Before allowing amendments to be made, the Registrar must give the non-use applicant an opportunity to comment on the amendments.

Conclusion

If you are a trade mark owner and would like to know more about the process of defending a non-use application, why not contact our friendly team of LegalVision trade mark lawyers to see how we can help? We would be happy to assist and answer any queries that you may have. Call our Client Care team on 1300 544 755.

Vanja Simic

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