It is important that you use your trade mark after registration. Registered trade marks that are not used for a period of three years in relation to all the goods/services for which they are registered are vulnerable to removal. The Trade Marks Act defines what constitutes using a trade mark and it’s important to comply with this section. This article lists some of the key points to consider when assessing whether there has been a use of a registered trade mark.

Has the Mark Been Used as Registered?

A trade mark will be considered to be in use if it has been used as it is registered, with only minor additions or alterations that do not substantially affect the trade mark’s identity. Whether or not additions or alterations ‘substantially’ affect the trade mark’s identity will be considered on a case-by-case basis, but in general alterations or additions that give consumers a different overall impression will be regarded as substantial. For example, use of the trade mark FUNJET was found to be use of the trade mark FUNJET SERVICE (QH Tours Ltd v Mark Travel Corp (1999) 45 IPR 553). In another case, the addition of an illustrative device next to a word mark was found to be use of the mark, as the illustration was an obvious ‘illustration of the word’ (E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15).

Has There Been Properly Authorised Use by Another Person?

Under the Trade Marks Act 1995, to constitute use the owner, or authorised user needs to have used the trade mark. For the use to be authorised, the trade mark owner needs to exert either:

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

This means that for a trade mark owner to properly authorise another person to use their trade mark, the owner must either impose quality control regulations over the goods/services provided, or have financial control over the authorised user. This is an important aspect to consider in any licence to use a trade mark. If the owner isn’t exerting quality control over the goods or services, or financial control over the user, use of the trade mark may not satisfy 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. For example, if two business partners jointly own a trade mark, they would not be entitled to use the trade mark separately. The goods/services provided in connection with the trade mark must be provided as a partnership.

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

A trade mark that is only partially used may still be vulnerable to removal for non-use. This is another reason it’s important to ensure that the specification of goods/services pertains to the goods/services that the owner intends to provide.

In Short

Answering the above questions may assist you to determine whether a trade mark is vulnerable to removal due to non-use. Even so, it’s important to bear in mind that a trade mark must have been registered for five years, and not-used for three years ending one month before lodgement of the non-use application. Business owners are best advised to seek professional help when assessing whether their trade mark is vulnerable to removal, or whether they may be able to have another party’s trade mark removed.

Questions? Let our trade mark lawyers know on 1300 544 755. 

Daniel Smith
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