Use it or lose it. This is one of the most misunderstood points of trademark law and if you’re not aware of it, you could be putting your brands at high risk. You likely know it’s recommended you register your trademark to protect it, but many think once they’ve done this, no further thought or action is needed. This is not always the case. This is the bottom line: if you stop using the trademark for any or all of the goods/services claimed, it may be removed for non-use. This will put you, or the brand or company you’ve worked hard to grow, in a vulnerable position.
What does the law say?
In Australia a trademark is vulnerable to a third party seeking to remove the trademark for non use, when there’s not been use for at least 3 years. This can be for some or all of the goods/services covered by the trademark.
A trademark becomes vulnerable when:
- Five years have passed from the filing date of the application for registration where the registered trademark was filed before 24 February 2019; or
- Three years have passed from the date the particulars of the trademark were entered into the Register where it was filed on or after 24 February 2019.
In Australia, it is also possible to seek removal of a trademark at any time after filing on the basis that the applicant had no intention to use the trademark in good faith for the goods/services claimed and subsequently has not made any use in good faith. These types of removal attacks are less common and it is often more difficult for a removal applicant to prove lack of good faith intention concerning the proposed use of a trademark.
What does this mean for you?
Your trademark needs to be monitored, and you need to make sure it is being used correctly, or you may risk facing trademark cancellation. You need to ensure the following:
- You use the mark that you have registered or one that does not alter the identity of the registered mark. If you change your trademark (e.g. you might develop a new logo, or add words to the original brand) you should register separately).
- You use the mark in relation to the goods or services covered in your trademark. If, after a few years it seems you use your trademark only for some goods/services it may – subject to advice – be worth voluntarily abandoning any non-used goods/services
- If your business changes in any way, file for a new applications to include any new products or services you offer.
- If you have a change in the company (for example, from sole trader to a company), it means you may need to update the ownership of the company. Use by a company will not always support use of the trademark by the prior sole trader
What other ‘rights’ do you need to know?
You should be aware of other legalities, so you don’t inadvertently fall foul of trademark laws and commit an offence. For example, you can only use the registered trademark symbol (®) with a mark that is fully registered and when using it on the goods or services you claimed in your trademark registration.
Keeping on top of your trademark registrations can be tedious and complicated. You might consider engaging a trademark attorney to conduct a periodic audit of your trademark rights/registrations and marketplace use to ensure you are using your trademarks as registered and to ensure any new brands are also protected.
If you face a removal attack, note you can’t just start using the mark again once you’re informed that someone has filed a non-use removal. You have to have evidence of your prior usage during the stipulated three-year period.
Another way to avoid being faced with non-use applications is to reconsider during the annual audit if you actually want to hold onto to all your registrations. It’s probably worthwhile getting rid of a mark (or the unused part of it) if you no longer need it.
Has your business moved, or your contact details changed? It may be the last thing on your mind as your business changes and grows, but you need to keep your contact information and details up to date with IP Australia. If you don’t, you won’t necessarily know that anyone has applied to have your trademark removed, as you may not receive the notification so you may miss the opportunity to defend it. If you have already appointed a trademarks attorney, notice will go to them in order to provide you with the details.
What if I own the trademark but my company is now the user?
Finally, there’s the issue of control over the licensee’s use of the trademark. A licensee – including your own company – cannot assume they automatically have the right to use a mark. While they may have a license agreement in place, the owner of the trademark owner must be able to prove they have certain controls over the use of the trademark and its goods or services, or again they will be vulnerable to losing a trademark due to non-use.
A licensee – including your own company – will only be considered an authorised user (and therefore, used by the company or licensee counts as used by the trademark owner) when such use is under the control of the trademark owner.
What does a ‘non-use’ application look like?
It will have the following information on it:
- the number of the trademark and the grounds for removal.
- the name, address and contact details of the party applying for the removal.
- details of which parts of the trademark will be removed.
What are the next steps?
If someone files a request to remove your trademark on the basis of non-use, you can oppose the removal application by filing notice that you intend to oppose the removal, followed by a statement of grounds and particulars. Your statement needs to outline when and how you have used the mark (and during the relevant three years. The removal applicant can defend your opposition – this is referred to as an opposition proceeding. It can be a complicated process to navigate, and a trademark attorney will be best to assist and help to retain your mark.
On the flip side, you can get also engage a trademark attorney to assist and represent you in filing a ‘non-use’ application against another entity’s trademark.
