Use it or Lose it – Maintaining Trade Mark Registrations

 

5 December 2017
Posted by Tony Grujovski

Have you gone to the trouble of registering a trade mark either in Australia or internationally? Firstly, well done! A great first step to protecting your brand.

The next important step is to maintain the validity of your trade mark during the period of registration in the countries where it is registered. In trade mark circles, we say ‘use it or lose it’!

I have a trade mark registration, so I have to use it now?

Yes, that’s correct! Because of this, it’s important you understand the time period that your trade mark must be ‘used’ in each relevant country.

Most countries have a ‘non-use’ period of 3 or 5 years from the filing date (“Non-Use Period”). You must ‘use’ your trade mark during the relevant Non-Use Period in respect of the protected goods and services under your registration, otherwise an interested third party can apply to the local IP agency or a court to cancel your trade mark registration for ‘non-use’. For example, trade marks protected in the Australia have a Non-Use Period of 3 years starting from 5 years after the “priority date” (usually the filing date) of the application, whereas trade marks in New Zealand have a Non-Use Period of 3 years from the priority date (with no 5 year buffer for starting use like Australia).

What counts as ‘use’ will differ between countries.  Some countries will allow sporadic or one-off use of a trade mark anytime during the Non-Use Period to defeat a removal application from a third party, whereas other countries may require more substantial use from the trade mark owner. Most countries require use to be ‘genuine’, so using your trade mark in a way which is clearly designed to avoid non-use removal, and does not demonstrate a genuine intention to trade using the trade mark in the relevant country, will not be accepted to defeat a non-use application.

For overseas restaurant chains, a common tactic to use their trade mark registrations in Australia is to run single day pop up stalls selling their food. You might have heard of In-N-Out Burger from the US doing this in Australian cities recently.

It is important to understand the Non-Use Period requirements applying to your trade mark registrations to ensure they are not removed for non-use. Your trade mark lawyer will be able to advise you on any Non-Use Period applying to your trade mark registrations, as well as the legal requirements for using your trade marks in each territory to avoid non-use removal. The last thing you would want after investing in protecting your trade mark in Australia and internationally, often the core IP asset of a business, is to have those rights revoked because of non-use.

If you are interested in protecting your trade mark in Australia or internationally, or would like any advice on maintaining valid trade mark registrations please email us at hello@studiolegal.com.au, or call us on 03 9521 2128.

DISCLAIMER

The information in this article is of a general nature. It does not constitute formal legal advice, and should not be relied on as such. Please see the full disclaimer in our website terms. Please contact Studio Legal if you are seeking advice about a specific legal matter.