Use It or Lose It: Using a Trade Mark

In Short

• Use it or lose it – A registered trade mark must be actively used within a three-year period to avoid removal.
• Proper authorisation matters – If someone else is using your trade mark, you must retain quality or financial control to maintain legal protection.
• Use must match registration – Ensure your trade mark is used as registered and for all listed goods or services to safeguard your rights.

Tips for Businesses

Regularly check that your trade mark is being used as registered and for all relevant goods or services. If licensing it to others, maintain control over quality or finances. Jointly owned trade marks must be used together. Keeping track of proper use now can prevent legal challenges later.

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Table of Contents

• Has the Mark Been Used as Registered?
• Has There Been Properly Authorised Use by Another Person?
• Has a Jointly Owned Trade Mark Been Used Correctly?
• Has the Mark Been Used For All the Goods and/or Services for Which it is Registered?
• Key Takeaways
• Frequently Asked Questions

Registering your trade mark is just the first step in protecting your brand. It is crucial to actively use your trade mark after registration to maintain your rights. Under the Trade Marks Act 1995, registered trade marks that are not used for a continuous period of three years become vulnerable to removal. This article explores the key considerations in assessing whether there has been use of a registered trade mark.

Trade Mark Essentials

This guide explains the essentials of trade marks and the steps required to register a trade mark.

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Has the Mark Been Used as Registered?

A trademark is considered in use if it has been used as registered within the last 3 years, with only minor additions or alterations that don’t change its identity. Whether changes substantially affect the trademark’s identity is assessed case-by-case based on whether they give consumers a different overall impression.

Has There Been Properly Authorised Use by Another Person?

Under the Trade Marks Act 1995, the owner or an authorised user must make valid use of a trade mark. For use to be considered authorised, the trade mark owner needs to exercise either:

1. control over the quality of goods or services provided; or
2. financial control over the authorised user’s trading activities.

This means that when a trade mark owner allows another person to use their mark, they must maintain oversight through quality control measures or financial control over the user’s relevant business operations. This is a crucial aspect to consider in any trade mark licensing agreement. If the owner fails to exert quality or financial control, the use of the trade mark may not meet the requirements of the Trade Marks Act 1995.

Has a Jointly Owned Trade Mark Been Used Correctly?

Where a trade mark is jointly owned, the trade mark’s owners must exercise their rights together. Use by only one owner of a jointly owned trade mark will not constitute use under the Trade Marks Act.

Has the Mark Been Used For All the Goods and/or Services for Which it is Registered?

A trademark partially used across its registered goods or services may be removed for non-use. This emphasises the need to ensure your trademark registration accurately reflects your intended use.

Key Takeaways

Consistent and correct use of your trade mark is essential for preserving your rights. Regularly assess your usage, ensure proper authorisation for others’ use, and keep your registrations aligned with your current business activities. Be mindful of the specific requirements for jointly owned trade marks and the importance of using your mark across all registered goods and services.

If you have any questions about maintaining your trade mark registration, our experienced IP lawyers can assist 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.

Frequently Asked Questions