Anyone who has ever had to brand something knows how hard it is to come up with a name. Establishing recognition for your brand can be even harder. And most difficult – making sure it isn’t forgotten.
Registering a trade mark is a vital step in setting up a business or launching a product. Trade marks can make up a significant portion of the goodwill of a business, and ensure others cannot use that name (for the corresponding goods / services).
Yet, it is also critical to maintain registrations. You may have spent a great deal of money and effort in obtaining registration, but this will amount to nothing if you lose it after only a few short years.
Non use as a basis for the removal of a registered mark is a common trait to many trade mark protection systems around the world. The primary difference between jurisdictions is the period of time that applies before a registration is vulnerable to removal.
In Australia, a registered mark may be vulnerable to removal where the mark has not been used by the registered owner for 3 continuous years in relation to all or some of the goods and services claimed by the registration. The Trade Mark Office provides a grace period of 5 years from the filing date before a trade mark registration may become vulnerable to a removal action on the basis of non use.
The Australian Government has recently indicated that this grace period may soon be reduced from 5 to 3 years. This will place a greater burden on businesses to make actual use of their registered mark ‘shortly’ after registration – a difficult burden for fledgling businesses given all other aspects of setting up a business.
A strict view on what constitutes ‘actual use’ is applied to objections to the removal of a mark for non use. Using your mark does not simply mean referring to the mark in passing or in negotiations. It is insufficient to argue that ‘use’ is triggered simply by registering the mark. At a minimum, what needs to be shown is a material commitment to future use. For example, this may include:
Protecting a registered trade mark from removal means use of a more substantial nature than that of mere mention, and this applies to each class of goods or services of the trade mark.
Fighting removal applications for non use can be stressful, costly and time consuming. The best approach is always to ensure the mark will be used in a meaningful way upon registration, and continued to be used in that way. Ensure that you have a thorough plan to develop and use your mark and if in doubt, get help to make sure your trade mark won’t be forgotten.
Posted on: 16 November 2017