Trade mark owners should review their portfolio on an
annual basis, and collect and record a sample of evidence of
the marks in use.
A recent case regarding an application for removal of a
trade mark is a timely reminder to companies to review their
trade mark portfolios and assess whether their marks are being
adequately maintained through "use". The case is also
a useful guide to prospective trade mark applicants who wish to
apply to remove or restrict cited marks that are not in
In Myerton Australia Pty Ltd v Foreign Supplement
Trademark Pty Ltd (2008) 74 IPR 563, Ian Thompson, a
Hearing Officer with IP Australia, considered whether the owner
of a registered mark had been using its mark and whether the
registration could continue. Myerton had not sold goods under
the mark for a number of years. It had taken steps to prepare
promotional material and approached supermarkets about a
potential relationship to produce and supply the goods, but the
production and supply of the goods was contingent on Myerton
finding a retailer who would agree to sell the goods. Mr
Thompson directed that the mark be removed from the Trade Marks
Register on the basis of non-use.
Removal applications like the one in Myerton are
becoming more common in Australia, given amendments to the
Trade Marks Act 1995 (Cth) in 2006 that allow third
parties to simply file a Removal application when they have
reason to believe a registered mark is not being used. The
owner of the registered mark then has the burden of proving
that the registration should be maintained.
The Myerton case is a prompt for businesses to
ensure their marks are being used on a regular basis in respect
of the goods and services for which they are registered. Use
involves applying the mark to goods, and offering the goods for
sale, or selling them, in Australia; or using the mark in
connection with services that are offered, or supplied, in
Removal for non-use
If a mark that has been registered for at least five years,
is not used at any time during a continuous period of three
years or more, it may be vulnerable to removal. A third party
could successfully remove a registered mark, or restrict the
scope of the registration, where that person files a Removal
application and the owner of the mark cannot show:
genuine use of the mark, in the course of trade, in the
three year period expiring one month before the date of the
Removal application ("Relevant Period"); or
preparations to use the mark and evidence of a clear and
definite intention to offer, or supply, the goods or services
under the mark, in the Relevant Period.
Preparatory steps or negotiations in relation to the supply
of the goods or services, on their own, are not likely to be
sufficient use in order to prevent the removal of a registered
trade mark. This will be the case even where significant
expense has been incurred.
Where the registered mark has been used extensively by the
owner before the Relevant Period, a residual reputation in the
mark could exist. In that context, the Registrar may exercise
discretion to maintain the registration of a mark, if he or she
finds that it is in the public interest to do so, in order to
prevent confusion in relation to the use of a new trade mark.
However, it would be precarious for a trade mark owner to rely
on this exception. It is more likely that, after considering
the circumstances of non-use, the Registrar will remove the
mark. In that event, a trade mark owner would need to consider
opposing any new trade mark application that was similar to the
To minimize the risk of removal proceedings occurring, trade
mark owners should review their portfolio on an annual basis,
and collect and record a sample of evidence of the marks in
use. Where a trade mark is no longer required in relation to
the goods and services covered by the registration, the owner
should assess whether it would be appropriate to abandon the
mark, or at least the un-used part of it. Otherwise, the trade
mark owner may find itself responding to a Removal
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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