Can I Use a Lapsed Trade Mark?
Your trade mark application can lapse for several reasons. Namely, you may have failed to respond to an adverse report or pay the appropriate fees on time. In any event, a lapsed application means that your application is not valid. Therefore, IP Australia has not registered your application and entered it on the Trade Mark Register. Consequently, you might be wondering if you should avoid using a lapsed trade mark. This article explains whether you should use your lapsed trade mark.
What is a Lapsed Trade Mark Application?
A lapsed trade mark application is different from an application that IP Australia has ‘refused’ or ‘rejected’. If IP Australia refuses or rejects your application, your application did not pass the examination stage. In this instance, IP Australia formally concludes the matter and does not allow you to register the trade mark.
On the other hand, your trade mark application can lapse if you fail to:
- respond to an adverse report within fifteen months;
- pay the associated extension fees if you missed the fifteen-month period to respond.
If your application status is “Lapsed/Not protected”, you likely did not respond to an adverse report on time. Alternatively, if your application status is “Lapsed/Accepted,” you did not pay your registration fees on time.
If your application has lapsed, this means that IP Australia has not registered your trade mark. Consequently, you do not enjoy the protections under the Trade Marks Act, including the exclusive right to use, licence and sell your trade mark. Instead, your trade mark remains unregistered.
If you still wish to register your trade mark, but your application has lapsed, you will need to lodge a new trade mark application and pay the associated fees. If you have any questions about lodging a new trade mark application, feel free to contact one of our experienced trade mark lawyers.
Risks Associated With Using a Lapsed Trade Mark
If your application has lapsed, you might be wondering whether you need to hold off from using the trade mark. It depends on the reasons that your application was not accepted. If this was due to an identical trade mark registered by another party, you should proceed with caution.
Firstly, if your application is not registered, you do not enjoy the protections under the Trade Marks Act. Consequently, you cannot take legal action for trade mark infringement under the Act, and you may also lack a clear defence to trade mark infringement if a third party alleges that your use infringes their trade mark.
Trade mark infringement is where someone uses a trade mark that is identical or similar to a registered trade mark, in respect of the same or similar goods and services, without the authorisation of the registered owner.
Secondly, another person or business may have registered a similar trade mark after you let your application lapse. In this instance, if you continue to use your trade mark, you could potentially infringe on the rights of the owner, who has successfully registered the trade mark.
In saying this, trade mark infringement can become quite complicated, and there are potential defences available if you have been using your trade mark for several years. If you are concerned about the risk that you may be infringing a third party’s rights, feel free to get in touch with one of our experienced trade mark lawyers.
How to Prevent Your Application From Lapsing
You can do a few things to prevent your trademark application from lapsing.
1. Respond to Your Adverse Examination Report On Time
During the examination of your trade mark application, IP Australia may issue you with an adverse examination report. IP Australia will usually issue an adverse examination report because your application did not meet the legislative requirements for trade mark registration. Your report will outline:
- the reasons why your examiner is not yet prepared to accept your application; and
- options you could take to overcome the issues preventing acceptance.
If you receive an adverse examination report, you must respond to it within fifteen months to avoid your application lapsing.
2. Pay Your Extension of Time Fees On Time
In the instance where you miss the fifteen-month response period, you can apply for a time extension. However, you should note that IP Australia will not automatically accept requests for time extensions if you need more than six months’ extension. Instead, IP Australia will only accept your request if you missed the response period as a result of:
- you or your agent’s error or omission;
- circumstances beyond your control; or
- special circumstances.
You should also note that if you fail to pay the fees for a time extension on time, your application is at risk of lapsing.
Your trade mark application can lapse if you fail to:
- respond to an adverse report within fifteen months; or
- pay the appropriate time extension fees if you missed the response period.
If your application has lapsed, IP Australia has not registered your trade mark. Consequently, you should be aware of the risks of using a lapsed trade mark when it is not protected under the Trade Marks Act.
Frequently Asked Questions
If IP Australia rejected your application, this means that it did not pass the examination stage. If you would like to consider re-filing, it would be wise to get in touch with a trade mark lawyer before you invest further time and money in another trade mark application.
After you lodge your trade mark application, IP Australia will examine your application. If your trade mark application does not meet IP Australia’s requirements, IP Australia will issue you with an adverse examination report. You then have fifteen months from the date of issue of the report to address the examiner’s objections.