Notwithstanding that a trade mark owner may have registered a mark in Australia, registration on its own is not sufficient to ensure the mark remains the exclusive property of that owner.
When an application to register a mark in Australia is lodged there is a presumption at the time of application that the applicant will act in good faith with the intention that the mark (once registered) will be used in Australia by that applicant in relation to the class of goods/services associated with the mark.
Under section 92 of the Trade Marks Act 1995 (Cth), a person may apply to the Registrar to have a registered trade mark removed from the Register. The grounds upon which a person could seek to have a registered mark removed include, for example:
- when the application for the registration of the mark was filed, the applicant had no intention in good faith of actually using the trade mark in Australia; or
- the trade mark has remained registered for a continuous period of 3 years and, at no time during that period, did the person who was then the registered owner use the mark in Australia.
A situation could arise where a competitor wants to register a trade mark that is substantially identical/deceptively similar to a trade mark that is already on the register in relation to the same goods and/or services of the competitor.
That competitor could file an “Application for removal or cessation of protection of a trade mark for non-use” with IP Australia alleging one of the grounds for non use. If the ground alleged relates to the continuous 3 year requirement, there is a further obligation on the competitor that at least 5 years must have passed since the filing date of the registered trade mark.
The registered trade mark owner (as the opponent) would then be obliged to rebut such an allegation in order to avoid having their mark removed for non-use.
In summary, if you are the registered owner of a mark in Australia and you either never intended to use the mark when you applied for it or you have not continuously used the mark for a 3 year period in relation to the goods/services associated with the mark, then you risk losing the right to the mark on the basis of non use.
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The material provided in this document is for general information only and is not to be relied upon as advice. No responsibility is accepted for any loss, damage or injury, financial or otherwise, suffered by any person or organisation acting or relying on this information or anything omitted from it.
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