American burger chain In-N-Out has been making headlines with pop-up shops. So what does that have to do with Australian trade mark law? Trade marks have ‘use’ requirements, which means that, if you register a trade mark, you must actually use it. If you don’t use the trade mark, a third party may apply to remove it on the basis of non-use.

Which brings us back to In-N-Out’s pop-ups. While the brand’s Australian presence is a great marketing idea, there are other theories about In-N-Out’s strategy. Some speculate that the pop-ups are to ensure its Australian trade marks avoid a non-use application. And it’s not just here. In-N-Out have run similar pop-ups worldwide, in places where the burger chain doesn’t have a permanent restaurant presence. This article explores what makes your trade marks vulnerable to non-use claims and how to prevent this.

Australian Trade Marks

Once your Australian trade mark successfully passes through all stages of the application process, it is registered for 10 years from the filing date of the application, with an option to renew for another 10 years.

During this 10 year period, it is important to not forget about your trade mark registration. Just because your trade mark is registered in Australia, doesn’t mean that it will stay that way without you using it.  

Without using your trade mark for three consecutive years, your trade mark may be subject to a non-use claim. The purpose of non-use claims is to prevent a cluttered trade marks register by allowing third parties to remove marks that are no longer used.

It’s not just aggrieved parties who make non-use applications. The party may be motivated to file a claim if an unused trade mark has obstructed their own trade mark application from achieving registration.

How Can You Ensure Your Trade Mark is Safe?

During a three year period, you need to genuinely use the trade mark at least once to defend a non-use application.

If you have a reason for needing your trade mark registration in the future, it would be a good idea to take a leaf out of In-N-Out’s book and use your trade mark, even if for a brief time period.

The United Kingdom (UK) and European Union (EU)

A UK and EU trade mark can be subject to a non-use application:

  • within five years of being registered; or
  • if it has not been used for five years.  

Much like in Australia, in order to overcome a non-use application, you must genuinely use the mark in commerce and not just token use.  

The United States of America (USA)

Unlike in Australia and the UK, in the USA, you need to prove use in three instances:

  1. when you file an application directly to the USA and make the application on an ‘intention to use’ basis, you will need to prove use before the mark proceeds to acceptance;
  2. if you file a USA mark via the Madrid Protocol, you need to prove trade mark use in commerce between the fifth and sixth year of registration. If you don’t follow this step, you will have abandoned your trade mark, which cancels it; and
  3. when you go to renew the mark.

There is no non-use application equivalent in the USA. However, if you abandon the mark, a third party can file a petition to cancel it. This is similar to a non-use application. The onus is then on you to file an answer. If you do not file an answer, your registration will be cancelled.

What Can You Do?

Firstly, ask yourself: Are you using the mark? If your brand and trade mark are important to your business but you haven’t been able to use it, you should draw on In-N-Out as inspiration and use it as soon as possible.  

Crucially, you must also ensure you use your mark in the class of goods or services you registered it in to ward off a non-use claim.

Key Takeaways

Registering a trade mark is an essential part of any brand protection strategy. Securing a trade mark is important, but so is using it. Therefore, when registering a trade mark, select the markets that are key to your business and brand. In order to avoid any non-use claims for your Australian trade mark, you need to use it every three years.

The UK, EU and USA have different requirements. So if you have registered trade marks in those markets, be aware of these. If you need assistance ensuring your marks remain active, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

Sophie Glover
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