If you register a trade mark in Australia, you must plan to use the trade mark. If you do not use your trade mark there are notable consequences. Namely, your trade mark can removed from the register for non-use. You, as the registered owner, may challenge this request. However, you must then prove that you have been using the trade mark. Alternatively, you must convince the registrar certain circumstances prevented you from using the trade mark. Essentially, you need to justify why your trade mark should still be on the register. This article will explain what trade mark non-use is and how trade marks are removed for non-use.
What Are the Grounds for Filing a Non-Use Removal Application?
Simply put, your registered trade mark can be removed for ‘non-use’ for either or both of the following reasons.
Absence of a Good Faith Intention
At the time you applied for registration of your trade mark, you had no genuine intention to use it in Australia. Likewise, this ground also applies if you never planned on authorising the use of your trade mark. This ground also applies if you never intended to transfer ownership of your trade mark to another person or entity for use.
Continue reading this article below the formContinuous Non-Use for Three Years
If your trade mark is registered for a continuous period of three years and you have not used the trade mark during this time, your trade may be removed from the register.
How Are Trade Marks Removed for Non-Use?
1. Applications to IP Australia
If a ‘person aggrieved’ wishes to remove a trade mark for non-use, they need to submit an application in an approved format to IP Australia. You then have a two-month window to contest the removal. If you wish to contest the removal, you need to file a ‘notice of intention to oppose’ within the prescribed timeframe. This will initiate the ‘trade mark opposition process’. If you do not contest the removal, IP Australia will remove the trade mark from the register.
2. Applications to the Court
The removal process changes if there’s an ongoing court action involving your trade mark. This typically occurs if your trade mark is the subject of a trade mark infringement lawsuit. In such instances, the accusing party would submit a ‘cross-claim’ to the court. The accusing party would most likely be seeking the removal of your trade mark from the register. If the court approves your accuser’s request, you are no longer liable for trade mark infringement.
How Do I Show I Have Used the Trade Mark in Good Faith?
As the trade mark owner, you have the opportunity to show that you have used the trade mark in good faith. You may argue that you have:
- used the trade mark on goods or in relation to services;
- transferred ownership of the mark to another party (in which case you must demonstrate that the recipient has been using the mark in good faith);
- given another party permission to use the trade mark; or
- provide a good explanation as to why you have not been using the mark for three years or five years.
If your defence is convincing, the court or the registrar may refuse the application for non-use. In this case, your trade mark will retain its registration.
How Can I Avoid a Non-Use Opposition?
Here are some straightforward ways to prevent challenges to your trade mark and potential removal due to non-use.
1. Use Your Trade Mark for Promotion
Possibly you could use your trade mark to advertise your business’s goods and services. Trade marks are often acquired to safeguard the offerings you provide to your customers and clients. Tangentially, exclusive trade mark rights allow you to promote or sell your products or services with peace of mind. These rights ensure none of your competitors could copy or misuse your brand and its products or services.
You also should ensure your trade mark is actively used across all your business’s touch points with your customers. For instance, you should display your trade mark on your business’s website, in advertisements, in your store and on your products’ packaging. Taking these steps will reduce the likelihood your trade mark will be opposed for non-use.
2. Licence Your Trade Mark
If you no longer plan to use your trade mark, consider licensing it to another party. Through a licensing agreement, you can permit someone else to use your trade mark. In exchange, you can be well compensated. Under this arrangement, you can specify for how long the other party can use the trade mark. You can also explicitly state how they can use your trade mark.
Importantly, if you sign an exclusive licence agreement with the other party for the duration of the agreement, you cannot use the trade mark. However, once the agreement ends, your exclusive rights are fully restored.
As such, licensing your trade mark is valuable for two reasons. Firstly, by permitting another party to use your trade mark, an argument for non-use is harder to establish. Secondly, your business receives an additional income for the duration of the licence agreement.
3. Sell Your Trade Mark
You may sell your trade mark if you no longer wish to retain exclusive rights to the trade mark. IP Australia facilitates an ownership transfer process. During this process, you submit a request form that states your intention to transfer ownership of your trade mark to another party. Additionally, you also supply IP Australia with evidence of the transfer of your trade mark. After the transfer, you relinquish the right to use, licence, or sell the trade mark. This can be a way to part with exclusive rights while potentially benefiting your business financially.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
Trade mark non-use is where you, the trade mark owner, have not used the trade mark for a duration of time for whatever reason. Persons or entities may apply to IP Australia, arguing your trade mark should be removed from the register for non-use. If you wish to contest the matter, you must file a ‘notice of intention to oppose’ within the designated timeframe. That being said, to avoid a trade mark non-use claim, you could do any of the following:
- use your trade mark to promote your business;
- licence your trade mark; or
- sell your trade mark.
If your trade mark is the subject of a non-use removal application or you would like to argue another party’s trade mark should be removed for non-use, contact our experienced trade mark lawyers as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
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