Experienced Trade Mark owners and practitioners will be well aware of the need to use a trade mark, as registered. Otherwise, registered trade marks can become vulnerable for cancellation on grounds of non-use.
A recent change to the Trade Marks Act 1995 (Cth) (the Act) has reduced the time period before which a registered trade mark can be challenged for non-use.
A person (typically a competitor) can apply to have a registered trade mark removed from the Register if the trade mark has not been used for a continuous period of three years ending one month* before the date of the removal application. Until recently, a trade mark needed to have been registered for five years before it would be vulnerable to a non-use action. This period has now been reduced to three years.
However, for the purpose of calculating the three year period the clock starts ticking from the date the trade mark is actually entered on the Register as having obtained registration (i.e. not the filing date which is the deemed registration date).
When does this change come into effect?
This change applies to trade mark applications filed on or after 24 February 2019. The changes are not retrospective. Thus, a non-use application can only be made for trade marks filed on or before 23 February 2019 once 5-years has passed.
The value of non-use actions
A cancellation action for non-use is a highly effective strategy for overcoming problems presented by a competitor’s trade mark – e.g. to remove an infringement risk or to remove a conflicting trade mark that is preventing the registration of your same or similar trade mark.
For example, when presented with an Adverse Report from IP Australia citing an earlier trade mark that conflicts with our client’s applied for mark, we will investigate when that conflicting mark was registered and whether it is in use. If the facts permit, an application for removal on grounds of non-use will often serve as effective leverage to secure consent from the owner of that conflicting mark to the client’s registration.
Timely reminder for trade mark owners
This change to the timing of non-use applications serves as a timely reminder for trade mark owners to ensure their trade marks do not become vulnerable for removal on grounds of non-use. Owners of new trade marks should be mindful of the three year ‘deadline’ and align any commercial and legal strategies regarding the anticipated use^ of the trade mark and always keep records of such use.
*The one month window is designed to give the non-use applicant a short period, before filing an application, to contact and negotiate with the registered owner without fear that the registered owner will use the mark to defeat any subsequent non-use action.
^When assessing ‘use’ of a mark, the trade mark can be used by the actual trade mark owner or an authorised user, such as a licensee. We’ve previously written here about important requirements to establish the existence of an authorised user for these purposes.
This article is provided by way of general information only and is not legal advice. Always obtain your own independent legal advice tailored to your business’ particular circumstances before making decisions relating to the legal issues referred to above. In this regard, we’re here to help.