Key Point
- 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 use.
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 Australia.
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 removed mark.
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 application.
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.
