New Trade Mark Registration Use Requirements in Australia

2 May 2019
Posted by Tony Grujovski

If you have a registered trade mark, it’s important to be aware of the use requirements applying to your trade mark to ensure the validity of your registration is maintained. A registered trade mark must be put to use within a certain period of time in Australia, otherwise a third party could seek to cancel your registration for non-use. You can read more on non-use requirements for trade mark registrations in our earlier blog here.

Current requirements

Until recently, registered trade marks in Australia have been given a “grace period” of 5 years, commencing from the date the trade mark application was filed, before the registered owner is required to have commenced use of their trade mark in Australia. During the grace period, a registered trade mark cannot be removed by application of an interested third party for non-use.

Once the 5 year grace period for a trade mark registration has passed, a trade mark can be removed by application of an interested third party for non-use if it has not been used by the registered owner at any time within a continuous period of 3 years.

This approach, in having a grace period which is 2 years longer than the legal non-use period of 3 years for seeking cancellation of any trade mark registration, is fairly unique to Australia. Because of this, there was a push to change our trade mark non-use laws so that they are in line with other key trade mark jurisdictions.

What’s changing?

Due to recent reforms to the Trade Marks Act 1995, the grace period given for use of registered trade marks will be reduced from 5 years from the date of filing the trade mark application, to 3 years from the date of trade mark registration. This means that the clock for starting the grace period (from actual date of registration) will be later than was it under the old system (from filing date of application), but the grace period itself will be shorter.

For straightforward trade mark applications which are registered within 8 – 9 months of being filed (the quickest timeframe from application to grant of registration in Australia), this means that the grace period will end earlier than under the previous system. However, for trade mark applications that encounter objections and take longer to become registered (some objected applications can take between 1 – 2 years to reach registration from filing), the grace period may not be that much shorter than under the previous system in practice.

The changes to the duration of the grace period apply to trade mark applications filed on or after 24 February 2019. This means that the grace period for use of trade marks in applications filed prior to 24 February 2019 will remain 5 years from the filing date.

Still have questions?

At Studio Legal, we are experts in managing local and international trade mark registration portfolios. As part of our service offering, we advise our clients about any legal use requirements applying to their trade mark registrations, which differ from country to country. If you would like our assistance in managing your trade mark portfolio, protecting your brands in Australia or internationally, or any other related trade mark and IP matters, please contact us on 03 9521 2128, or email us at hello@studiolegal.com.au.

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.