Tips to Avoid Trade Mark Removal for Non-Use
Having gone to the effort of registering a trade mark, the last thing you want to face is an opposition for non-use. If someone successfully opposes your trade mark application for non-use, you run the risk of IP Australia entirely removing your trade mark from the Registry. To avoid this, this article explains the grounds for removing a trade mark on the basis of non-use and some tips to avoid removal for non-use.
Grounds for Removal
As soon as IP Australia advertises your trade mark application as accepted on the Registry, your application is vulnerable to third-party opposition. Opposition can result in the full removal of your application or the partial removal of some features in your application. For example, partial removal may involve IP Australia removing some of the classes noted in your trade mark application so that it has a more limited operation.
However, a third party cannot oppose your application simply because they feel like it. Rather, they must rely on certain grounds from the Trade Marks Act to start opposition dealings against you. The two most common reasons for trade mark non-use are where the opposing party must prove that:
- you had no intention in good faith to use your trade mark in Australia and have not used the trade mark; or
- for a period of three years, your trade mark has remained registered but you have not used it during that period.
Importantly, the three-year period of non-use only applies to trade marks where you made an application for registration on or after 24 February 2019. If you registered your trade marks before that date, an opposing party must prove that for a 5 year period, you have not used your trade mark.
Difficulties With Proving Non-Use
Despite these grounds available to an opposing party, non-use is quite difficult to prove under trade mark law. This is because even a single instance where a trade mark has been used can break the period of non-use. For example, if a business only uses their trade mark in one advertisement but does not use it for the majority of a three year period, this could still mean that the trade mark was in use.
For this reason, if you face opposition based on non-use, you should seek legal advice immediately. An expert trade mark lawyer can help you better identify what constitutes a use of your trade mark and assist with gathering evidence to support your case.
There are some simple ways to avoid someone opposing your trade mark application and removal for non-use.
1. Use Your Trade Mark to Market Your Goods or Services
One of the easiest ways you can avoid non-use is by using your trade mark to promote your business’ goods and services. After all, one of the main reasons why businesses obtain registered trade marks in the first place is to protect their goods and services.
Indeed, trade marks provide you with the exclusive right to use your mark. Hence, a registered trade mark allows you to promote and sell your goods or services without a fear that your brand will be susceptible to other businesses copying or misappropriating it.
Additionally, you could use your trade mark to market your materials:
- online, through your business website or paid advertisements;
- physically in your shopfront and marketing materials; and
- on the packaging of your particular products.
Doing any of the above actions can ensure your trade mark remains in use and will avoid the risk of opposition for removal.
2. Licensing Your Trade Mark
It may be the case that you no longer wish to use your trade mark. Perhaps your business model has changed or you no longer sell the products or services that you used to. To avoid leaving your trade mark unused, consider licensing your trade mark. As a trade mark owner, you can agree to let another party use your trade mark under certain conditions and for a negotiated fee. The conditions in a licensing agreement often include the:
- duration of the licensing period; and
If you agree for another person to have an exclusive licence to use your trade mark, you cannot use the trade mark during the licensing period. However, once the licence ends, your exclusive rights concerning the trade mark return to you in full. Ultimately, licensing your trade mark can help you avoid removal for non-use whilst also opening up an alternative stream of income for your business.
3. Sell Your Trade Mark
If you no longer want to own the exclusive rights associated with your trade mark, you should consider selling it to another person. Selling a trade mark involves the legal process of assignment. This is when you register a change in trade mark ownership through IP Australia. You must submit to IP Australia:
- an assignment request form; and
- evidence that you have assigned your trade mark.
Once you assign your trade mark to another person, you no longer have the right to use, licence or sell your trade mark.
A third party can apply to remove your trade mark application if your trade mark has been registered for a continuous period of three years but has not been in use during that period. To avoid facing removal for non-use, you should:
- use your trade mark to market your business;
- licence your trade mark; or
- assign your trade mark.
Frequently Asked Questions
Trade marks protect a range of intellectual property that your business owns, including its name, logo, catchphrase, distinctive product shapes and smells.
Under Australian trade mark law, your registered trade mark receives protection for 10 years from its filing date.