What Is An Abandoned Trade Mark?
There are instances where someone might register a trade mark but then choose not to use the trade mark. This could result from the owner no longer operating their business which the trade mark protected, or if the owner only registered the trade mark with the sole intention of excluding others from using it. These trade marks are considered abandoned if they have not been in use for three years since their registration date. This article outlines how to identify abandoned trade marks and how to deal with abandoned trade marks through the process of opposition.
Abandoned Trade Marks
Over the 10 year lifespan of a trade mark, trade marks must be in continuous use to retain their protection. This means that the trade mark could be used by its owner either in the course of business conduct, like selling the goods and services which the trade mark protects, or properly licenced to be used by others.
However, if the owner does not use a trade mark during its lifetime, this will render the trade mark abandoned. Any person can apply to remove an abandoned trade mark if the person who applied for the trade mark:
- had no intention in good faith to use, license or sell the trade mark in Australia; or
- did not use the trade mark in Australia for three years since its registration date.
The first basis would cover instances where an individual purposefully registered a trade mark intending to exclude others from using it without actually using it themselves. However, this first basis relies on good faith being absent on behalf of the trade mark owner. This claim can be difficult to prove.
On the other hand, the second basis does not require proof of an absence of good faith. Instead, the trade mark must have remained registered for a continuous period over the three years and be unused during that period. However, proving non-use can be difficult. For example, if the trade mark is used to sell at least one good or service or used in an advertisement that did not result in a sale, this could still mean that the trade mark was in use.
Removal for Non-Use
You can remove an abandoned trade mark for non-use by filing a removal application with IP Australia. You must file the removal application after the three year period beginning from the date at which IP Australia registered the trade mark. However, this does not immediately remove the trade mark, as the trade mark owner has the opportunity to oppose the removal.
Notice of Intention to Oppose
Any person can then oppose the removal application within two months of receiving notice of the removal application. The owner of the abandoned trade mark, also known as the opponent, would likely file this opposition. The opponent must prove use of the trade mark during the three year period.
Evidence to prove that the trade mark was in use can include:
- using the trade mark to sell goods and services;
- assigning the trade mark by filing a record with IP Australia;
- assigning the trade mark without filing a record of the assignment with IP Australia but establishing that the assignee reasonably used the trade mark; or
- failing to use the trade mark due to some obstacle affecting the use of the trade marks, either generally or particularly affecting the trade mark owner.
There is only a short period of time in which the opponent can file a notice of intention to oppose. However, IP Australia can approve an extension for this time period.
Suppose the opponent files an intention to oppose the removal with evidence in support. In that case, IP Australia can still decide remove the trade mark if satisfied that it was not used for three years. However, you should note that IP Australia can decide not to remove a trade mark application even if it was not in use over the three-year period if it would be unreasonable to remove the trade mark. Either party has the option to appeal IP Australia’s decision in the Federal Court. However, if the trade mark owner does not oppose the removal application within the time specified, IP Australia will likely proceed to remove the trade mark from the Registry.
An abandoned trade mark is one that is not in use during its 10 year lifespan. After three consecutive years of non-use, any person can apply to remove an abandoned trade mark. They can do this by filing a removal application with IP Australia. Any person can oppose this application (usually the trade mark owner) by filing a notice of intention to oppose. Otherwise referred to as the opponent, this person must prove they used their trade mark during the three-year period. If you require further legal assistance with abandoned trade marks, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
Filing a notice of intention to oppose the registration of a trade mark typically costs $250. You can find a full breakdown of opposition fees here.
Once IP Australia removes a trade mark from the registry, it is likely available for registration under different ownership.