Using a Trademark: Use it or Lose it

Using a Trademark: Use it or Lose it

On January 18, 2017, Posted by , In Trademark Registration, With No Comments

Using a trademark. If you don’t use it you may lose it

Did you know that if you stop using your trademark it could be vulnerable to removal for non-use?

Registering your trademark to identify your unique service or product is only the first step. While it is common business practice to register a trademark to identify a service or product so they are distinguished from other traders, it is not so well known that you must use it.

How to correctly use your registered trademark

If the trademark you have registered has been registered for five years or more but has not been used for three continuous years, you may be vulnerable to a non-use trademark application.

This means that another person or business can ask IP Australia to remove your trademark registration. It is a case of “use it or lose it!”

Using a trademark: use it or lose it

Keep these things in mind if you use your registered trademark

  1. Over time your trademark may change slightly. If this happens, you will need to file a new application for a trademark.
  2. You may increase the number of services and products over time that are not covered under the original trademark registration. If this has happened, you will need to file a new trademark application to cover these.
  3. Make sure you use your trademark correctly once it is registered. Your trademark is an adjective not a verb or noun. Your trademark should be used to modify the generic noun that follows.For example: Correct: 123® Beauty Therapist / Incorrect: 123®. It is also important to note that you cannot represent a trademark to be registered, including through use of the ® symbol, when it is not.

Doing so is a punishable offense. If you need help understanding what is registered and how to use your registered trademarks, contact us here.

Use your trademark or it could be removed for non-use

Trademarks are subject to non-use matters. Your trademark could be vulnerable to removal if it:

  1. Remains on the register for five years, but has not been used for all or some of the goods/services for three continuous years (ending one month before a person seeks to remove it).This means, if you become aware that another person is considering seeking removal of your trademark then making a sudden use of your trademark may not be enough to prevent the removal, as your sudden use may be in the month immediate before the request to remove is filed; and/or:
  2. Was first filed without the required good faith intentions to use it for the relevant goods/services and has not been used in good faith since.This means that you must use your trademark in the course of your business. Not using your trademark leaves you open to having it removed on the grounds of non-use. It also means you must have genuine intentions to use the mark in good-faith when you file an application, and must subsequently use it in good faith.

Applying for removal of a trademark due to non-use

To discourage people or businesses from registering a lot of trademarks simply to prevent other people or businesses using them, IP Australia allows anyone to apply for the removal of a trademark due to non-use.

You can find IP Australia’s application form here.

The freedom for people to apply for removal of trademarks due to non-use means it is important to keep your information and details up to date, otherwise you may not receive notification that another party is seeking the removal of your trademark before it is too late

A person who receives notice that an application to remove their trademark has been filed will have an opportunity to oppose that removal application. The removal applicant may then choose to defend that opposition. In these circumstances, the matter may then be considered an opposition proceeding, which can be a complicated process.

Non-use applications need to contain the following:

  • The number of the trade mark which is to be removed
    The name and address of the person applying for removal
    That applicant’s address for service in Australia
    The ground(s) for removal
    Whether the trade mark is to be removed for some or all of the goods/services
    Whether the applicant is aware of any court action pending in relation to the trade mark

More information about Application for removal or cessation of protection of a trademark for non-use can be found here.

Why trademark owners need to exercise control over marks that are licensed

In 2016 the Full Court of the Federal Court of Australia handed down a unanimous appeal judgment. This judgment has signalled the importance of trademark owners having control over the use of trademarks by licensees. If control is not exercised over a trademark, there is a risk of removal of the trademark due to non-use; that the Trade Marks Office may in fact find that the mark has not been used by the trademark owner or an authorised user of the trademark.

Trademark owners are commonly not the actual users of their trademarks. Licensees and distributors may be appointed the power to use a trademark or parties within the same business may have different uses of the trademark.

Prior to this judgement, the trademark owner’s theoretical control over the licensee’s use of the trademark was seen as adequate enough to establish “authorised use” of the mark by licensee’s. Merely showing there is a license in place is not sufficient to show that the trademark owner is in fact using their registered trademark. The owner must be exercising control over the use, or be able to demonstrate that they have financial and operational control where the use of the trademark is concerned in order for use by a third party to be considered authorised use.

What to do if someone applies for non-use removal of your trademark

If an owner of the trademark wants to stay registered and protected they can contest and oppose the removal application. An opposition to a removal application is usually based on claims that the mark has been appropriately used during the prescribed three year time period. The onus will be on the person opposing the removal application to prove their case and therefore that it is appropriate for the trademark to remain registered. Quick Off the Mark® can assist you.

Cooling off periods

Opposition may be temporarily suspended when both parties agree to a cooling off period. A cooling off period is usually requested so negotiations can take place.

“A cooling-off period may be requested at any time after a statement of grounds and particulars has been filed but before:

  • We have made a decision on the opposition; or
    The opposition has been dismissed.”

More information about cooling off periods can be found here.

How to minimise the risk of removal of trademark due to non-use

Quick Off the Mark® suggests that trademark owners review their registered trademarks on an annual basis. It is important to record and collect examples of evidence of the marks in use.

If a trademark is no longer needed in relation to the goods and services covered by the trademark registration, it is wise to assess whether it would be proper to abandon the mark, or at least the un-used part of it.

Not paying attention to your trademark use or non-use could result in a trademark owner having to respond to a removal of trademark application.

If you want some clarity on your rights for using registered trademarks, call us on 1800 35 25 75.

DISCLAIMER:

The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs.

BIO:

Quick Off the Mark is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.

In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.

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