Trade Mark Non-Use Matters

Anyone can file a removal application, but it’s usually a competitor who is hoping to register a similar mark.

‘Use’ is defined as genuine commercial use of a trade mark in the course of trade, such as:

• Selling goods or services under the trade mark
• Advertising or promoting products using the mark
• Importing/exporting goods with the mark

Other factors that may be involved include:

• transferring ownership of the mark to another party after filing
• giving another party permission to use the trade mark through a licensing agreement such that the named owner can still prove it controls the use of the trade mark
• showing that circumstances beyond your control prevented you from using the mark for a continuous three or five-year period

To prevent challenges to your trade mark, you should:

• use your trade mark to promote your business
• be mindful of structure changes and consider whether trade marks registrations need to be transferred (e.g. moving from a sole trader to a company or considering deregister a company that owns trade marks)
• licence your trade mark to another party
• maintain accurate records as evidence of the use of your mark such as marketing materials, sales invoices, digital materials and product images
• sell your trade mark if you no longer wish to use it

If a non-use application against you is successful, you will lose your exclusive rights to the use of that mark and someone else may be able to register and use the same or a very similar mark. Additionally, if you do oppose the removal but are not successful, the successful party may be entitled to seek a certain amount of costs against you.

Yes.  If a trade mark has only been used for some of the goods or services claimed in the original application, it may remain registered in a narrower scope. It is also possible for a party to seek only a partial removal from the outset to ‘attack’ only non-used goods or services.

If your mark changes in any way – for example, you refresh aspects of your branding – you may need to file a new registration application to protect the new trade mark.  If, for example, you have a very old logo registration that is no longer in use, it could be vulnerable to removal if your new company logo does not resemble the old.

Similarly, if your business activities change (for example, you broaden your markets into new classes of goods and services), it is necessary to file a new application to ensure protection.

Trade mark disputes can be complex.  You can handle the matter yourself but many businesses choose to engage a trade marks attorney to protect their rights and ensure the whole process is handled accurately, timeously and cost-effectively.