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Can a trade mark be cancelled if there is no intention to use it in good faith?

In short yes, it can. One of the key requirements when filing a trade mark application is that the applicant is the owner of the trade mark. In the case of a trade mark which is as yet unused at the time an application is filed, the ownership requirement can be met on a prima facie basis. Basically in the absence of evidence to the contrary, it’s assumed that the act of filing the application proves that the applicant has a genuine intention to put the trade mark to genuine commercial use. And typically that will be the case. In other words, usually when someone files a trade mark application, they do so with a genuine intention of using the trademark in the course of trade, in relation to the goods and services that they’ve claimed. However, unfortunately, sometimes trade mark applications are filed for different reasons and sometimes those reasons indicate that the applicant never actually intended to put the trade mark to commercial use.

There are some examples of these non-genuine filings. One example is where the applicant was actually unable to register the trade mark that they wanted to register and that they are actually going to use. So for instance, maybe their trade mark was deemed non distinctive or descriptive. In that case, they might try and skirt around that issue by filing an application for a similar trade mark. For example, changing the spelling a bit in the hope that that registration will then give them some protection to prevent other people from using the trade mark that they’re actually using, which is the descriptive one, which they’re not entitled to register. In this example, it’s clear the applicant did not have any intention (in good faith or otherwise) on the date of filing to actually use that varied spelling mark for their goods or services.

An example of that kind of non-genuine filing actually went to court and it was called the Nerit case. So the applicant used a trademark called Merit, M-E-R-I-T. However, they weren’t able to register that mark. The applicant then decided to file an application for the word N-E-R-I-T hoping that it would give them some scope to prevent other traders from using Merit, which is a non-distinctive mark, but they didn’t actually intend to use N-E-R-I-T at all, even though that’s what they registered. And the court found that that was not a genuine intention filing. And so the trade mark was cancelled.

Another example of a trade mark that may be cancelled due to having no intention, in good faith, to use the trade mark is when an applicant files their application and claims everything under the kitchen sink in terms of the goods/services claimed. Not because they actually have an intention to use the trade mark for all of those goods/services, but rather because they wish to achieve the broadest protection possible in a trade mark. This kitchen sink approach is ill-advised. It’s important when you file a trade mark that you know with some degree of certainty, what your business will actually be offering under trade mark. You don’t need to immediately be in a position to provide all of those goods and services, but you should have a realistic business plan and not just fanciful aspirations of expanding into every possible product and service.

Another scenario that points to a lack of good faith intention to use a mark is when an applicant files an application to register a trade mark, not for the purpose of protecting that trade mark for their own use, but for the purpose of preventing someone else from registering that trade mark. We’ve actually seen this happen when a party had their mark registered in relation to footwear and apparel. That party used their trade mark for those goods, which was totally okay. They took issue with our client using a similar mark in relation to watches, which are different goods, and the trade mark covering footwear and apparel didn’t extend to watches and didn’t enable them to prevent our client from using that similar mark for watches. And they weren’t happy about that.

What the other business did (the apparel business), before our client (who is an international company with trade in Australia), was file to register the trade mark in relation to watches. Which they had no intentions of selling, they just wanted to prevent our client from protecting their trade mark in Australia.

It’s also worth mentioning that approach is actually pointless because it doesn’t achieve the objectives that the apparel seller hoped to achieve with that strategy. This is because the watch seller, was actually the earliest user of the trade mark in relation to watches in Australia. In Australia, a prior user can go ahead and register their trade mark anyway despite a similar trade mark being filed by filing evidence to prove that they are the prior user.

In that case, whilst our client could (and has) register its trade mark for watches despite the apparel business registering the trade mark for watches it was important for our client to seek to remove the apparel company’s ‘watch’ trade mark to ensure they could not commence use of a competing watch brand in the future.

And in any event, when you file an application for a trade mark that you demonstrably don’t intend to put to genuine use, that can be the basis to have your trade mark removed or cancelled. Notably, unlike other removal grounds that are only available after 3 or 5 years (depending on when the trade mark was first lodged), an application filed on the basis the applicant had no intention on the filing date to use the mark in good faith can be filed at any time.  This proceeding that can be commenced before IP Australia. So it doesn’t necessarily have to go to the courts and it’s a relatively straightforward and an inexpensive proceeding compared to a court proceeding.

We do encourage people to reflect upon their intentions and their motivations when they’re filing a trade mark application and to seek advice from a trade marks attorney. We have seen many people file trade mark applications without understanding the consequences of filing for a trade mark that’s not truly theirs, or, without appreciating the need to have intention to use the mark in good faith. It’s important that it’s in the spirit of trade mark law and that what you’re actually seeking to do is protect a trade mark that’s either in genuine use by you or which you actually intend to put to use in the not so distant future. We also encourage anyone who’s concerned about a third party that might’ve registered a trade mark, which they never intended to use for whatever reason, or perhaps which they never intended use for the full breadth of the claim goods or services, to seek advice on their options from a trade marks attorney. You may have prospects to cancel a trade mark in those circumstances.

What if I am not sure of all the goods/services I will provide, should I just include everything in the application?

There should be some intention (greater than a ‘maybe one day…’ idea) that you will provide the claimed goods/services under your trade mark. Including far more than you will ever intend to provide is a common example of a trade mark that may find itself subject to at least a partial removal application. It’s clearly done innocently, perhaps naively, that applicants think that by covering more goods and services, they get broader protection, which on the face of it is true, but if you don’t intend to use it for goods, then there’s not much value in protecting those goods. If you have a business plan and it’s just going to take you time to get there, that’s all very well. That’s a genuine intention. It’s just about where you draw the line.

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