This is about the "use it or lose it" rule, as
recently reinforced by the Federal Court to the dismay of a Hong
Kong company. If a trademark has not been used at any time during
the previous three year period, it can be removed from the
Use of trade marks
Optical 88 runs a chain of optical stores in Hong Kong. It owns
a number of registered trade marks in Australia which contain the
name "Optical 88" in Chinese characters and in English.
Here's one of them:
This is how Optical 88 had used its trade marks in
It sent bonus cash coupons and receipts containing its trade
marks to customers in Australia a few times;
Its logo and the words Optical 88 were arranged in a different
combination on a cleaning cloth.
Not surprisingly, the Court said that Hong Kong company
didn't really use the trade marks in Australia at all. The few
examples of use at which it could point were really incidental and
didn't add up to genuine use. So, they lost their
How to avoid losing your trade mark
This case doesn't just apply to international companies.
It's relevant to anyone holding a registered trade mark.
Here's what you need to do.
When registering a trade mark, ensure the descriptions of goods
or services you use are sufficiently specific. If you go too
general, proving use will be much harder.
At the time that you apply for the trade mark, it's a good
idea to document how, when and why you intend to use it. This
should be in addition to the trade mark application itself.
Impress! If you are using the trade mark in a modified way, it
won't create an impression of identity and it may not be
considered a use of the trade mark. Use the trade mark regularly
and consistently and try not to use it in a modified way.
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