Can I Still Use an Expired Business Trade Mark?
IP Australia trade mark registrations provide its owners with a number of benefits, including countrywide rights to the registered trade mark. IP Australia will revoke your registration after a six-month grace period if you do not complete the requisite post-registration filings and pay the mandatory maintenance costs. If this occurs, you will need to submit a fresh application to get a registration. Are you wondering whether you can still use an expired business trade mark? This article will explore some of the key considerations to help you avoid making a mistake.
Cancelled Trade Marks
A cancelled trade mark registration does not imply that the trade mark owner has lost all rights to the trade mark. Unregistered trade marks, also known as common law trade marks in Australia, derive their rights from the use of the trade mark in commerce. If a trade mark with a cancelled registration has been used both before and after IP Australia’s action, the owner has rights in the mark in the geographic territories where it sells goods and services. Further, they can prevent other businesses from using confusingly similar marks, assuming the owner’s use predates the infringer’s.
When you revoke a registration, the extra rights that a federal registration provides, such as nationwide trade mark rights, access to federal courts, and the right to statutory damages in certain instances, are all lost.
When Can I Renew My Registration?
You can renew a trade mark registration up to 12 months before the expiration date. Additionally, in Australia, you may renew your trade mark up to six months after the expiration date. However, extension payments will be added to the renewal fees.
Your trade mark attorney will provide you with early notifications before renewal is due to assist you in avoiding any additional expenses and preventing the registration from expiring. Additionally, you should keep an eye out for notices to your nominated notice address.
Look for the Reason the Trade Mark Expired
Many brands expire due to not being maintained when a company goes out of business or pivots. It is crucial to record how it died since there might be a hidden explanation that will harm you in the long term.
If the mark dies due to inadequate submission, common law rights may nevertheless allow you to use it in commerce.
Another potential concern is genericity. This is when a trade mark becomes well-known among the general public and substitutes the product’s real name. For example, the term ‘esky’ was formerly a trade marked product. It now refers to all comparable items rather than a single company’s offering. If that is the case, you will not be able to register the mark without running afoul of the law. Again, even if the trade mark dies due to bad management, the registrant may still have the intention to use it, so it is better to be cautious.
Failure to renew a trade mark before the expiration date results in the loss of all rights to the mark, which will be designated as lapsed. However, within six months after the renewal date, you can renew registrations.
Removal of the trade mark from the Australian Trade Marks Register will occur when this time period has passed. Therefore, you may need to file a fresh trade mark application, unless you can successfully get a time extension.
A lapsed trade mark opens the door for opportunistic trade mark applications by any rivals for a similar or identical trade mark. Competitors may attempt to register a trade mark in respect of the same items and classes if your firm has been actively building goodwill connected with the trade mark.
As a result, it is in your best interests to keep track of key dates in your trade mark’s chronology and keep your registration current.
What Is the Trade Mark Worth to You?
Finally, you must evaluate how much the trade mark is worth to you. Is it absolutely necessary to utilise that specific trade mark, or is there another option around which you may build your marketing strategy? Unless you are seeking risk, the advantage must outweigh the possible loss.
For example, are you willing to go to court if you miss something throughout your search? If you use a dead trade mark, you risk trade mark infringement, losing money, and possibly losing your business.
Before deciding whether you can still use an expired business trade mark you should consider:
- what the trade mark is worth to you;
- what the consequences of not renewing the trade mark are;
- consider why the trade mark expired; and
- the time frame for renewing your trade mark.
If you have any questions about whether you can still use an expired business trade mark or would like trade mark legal assistance, contact our trade mark lawyers on 1300 657 423 or fill out the form on this page.
Frequently Asked Questions
In Australia, you can renew a trade mark registration up to 12 months before the expiration date and up to six months after the expiration date.
It will result in the loss of all rights to the mark. Removal of the trade mark from the Australian Trade Marks Register will occur six months after the expiration date.