The importance of reviewing trade mark use

Trade mark legislation in both Australia and New Zealand allows for the removal of a registration if the subject trade mark has not been used within a continuous period of three years.

This article serves as a reminder to periodically review use of Australian and New Zealand trade marks, to ensure such use remains in accordance with trade mark registration.

Non-Use Timing

Whilst the relevant period of non-use in both Australia and New Zealand is three years, the commencement date for making an application for removal currently differs.

At the date of writing[1], Australian non-use applicants must wait until “5 years has passed from the filing date” of the application (s93(2),Trade Marks Act 1995), before filing a non-use removal application.  This requirement is due to change by no later than 24 February 2019, to bring the timing in line with New Zealand where the three-year non-use period commences “from a date after the actual date of registration” (ss66(1) and (1A), Trade Marks Act 2002).

In Australia, the Registrar has discretion to allow a registration to remain.  In New Zealand, such discretion is less clear.  Nevertheless, it is important to ensure that trade mark use remains in accordance with registration, to ensure continued protection.

Proving Use

 If a removal action is initiated by a third party, the onus will fall on the owner of the trade mark to demonstrate that there has been commercial use of the trade mark during the previous three years.

Evidence for the purposes of defending a non-use application might comprise items such as dated copies of invoices, packaging, and in some circumstances advertising material, showing the trade mark in use as registered, in the country of registration.

What should you do?

If you are a foreign applicant, or a foreign associate with a client, who:

  • filed an Australian trade mark application earlier than five years ago; or
  • obtained registration of a trade mark in New Zealand more than three years ago,

it may be time to check that use of the trade mark continues to be made in accordance with the relevant registration, and that records of such use are being kept.

If the words/logo of the trade mark or the goods and/or services for which the trade mark is used have changed, please contact Kellie or Geraldine to discuss whether the current trade mark registration is sufficient.

Likewise, please do not hesitate to contact our Trade Mark Attorneys if a fresh Australian or New Zealand application needs to be filed, or email [email protected].

 

[1] The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018, which received Royal Assent on 24 August 2018, amends the Trade Marks Act 1995 to change the period that must elapse before an application for non-use of trade mark can be filed.  The Act will come into force by no later than 24 February 2019, and will affect trade marks filed after the commencement date.



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