Before filing a trade mark, it is important to establish whether
it has previously been used in the market in which you intend to
trade. In other circumstances, a client may wish to establish that
a mark has not been in continuous use in the past three years in
order to support a non-use action. Alternatively, a client may need
evidence of actual use in the marketplace in legal proceedings.
"Application for removal of trade mark from
(2) The application:
(a) must be in accordance with the regulations; and
(b) may be made in respect of any or all of the goods and/or
services in respect of which the trade mark may be, or is,
Establishing such use is usually easy if one is attempting to
show current use, however historical use can be problematic. When
investigating the historical use of a mark, the first port of call
is often with the client, the owner of the trade mark. Many clients
keep accurate historical records of use of their marks, however
mergers, changes of ownership and indeed changes of staff within an
organisation, can make obtaining that evidence problematic.
Similarly, when considering use by a third party, it is often not
possible to access their historical records to show the nature and
extent of previous use of a mark.
Investigators will take a multi-pronged approach to establishing
historical use. This may include:
(a) Consulting the company records
(b) Conducting general and specific internet searches
(c) Looking at trade journals and newspaper articles
(d) Reviewing historical company annual reports
(e) Accessing market research data
(f) Interviewing market users and suppliers
(g) Accessing historical shopping research databases (e.g.
Food and beverages are one of the most common type of products
that require this type of investigation. The often rapid turn-over
of product marks in this space makes it difficult to know when,
where and how a mark may have been used. Typically this
(a) How the mark was used
(b) The type of packaging, including images
(c) When the use commenced and when the use ceased
(d) Where the product was purchased and where the product was
(e) Sales figures on the sale of the product
(f) Cost of the product when on sale.
Research will often generate leads, and depending on the nature
of the product of interest, specific resources can be used to
obtain this information.
While this approach is ideal for examining the historical use of
registered trade marks, it can also be a valuable approach in
examining the historical use of what is known as 'common
law' marks. That is, marks that have been in use in the
marketplace, but formal registration with the Australian Trade
Marks Office (IP Australia) has never occurred. We often see
'common law' marks in food, beverage and fashion goods,
which is often due to their short marketing life span.
We utilise in-house registered private agents to track down
relevant information, which clients can use in legal proceedings.
Our considerable expertise in this area means that clients can
rest-assured that if there is information to be found about use of
trade marks, we will find it.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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