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Trade Marks: What is a Non-Use Removal Action?

5 October 2018

A registered trade mark provides exclusive legal rights. But these rights also come with the responsibility to use the trade mark.

‘Use It or lose It’

The adage “Use It or Lose It” can apply to registered trade marks.

Trade mark owners are not required to actively prove use of their trade mark in Australia. (An active requirement exists in some jurisdictions, such as the United States).

But trade marks are not “set and forget“! A trade mark that is not in use can be at risk of removal from the register, under what is known as a Non-Use Removal Action.

What are Non-Use Removal Actions?

A person can apply for removal of a registered trade mark on the ground of alleged non-use. Non-use Removal Actions are often brought by:

  • trade competitors of the trade mark owner;
  • an applicant for a trade mark that has been blocked by the existing trade mark - as a strategic means of ‘clearing the path’ for their own application;
  • a person whom the trade mark owner has threatened with infringement proceedings.

Any trade mark registered for longer than 3 years* may be vulnerable to removal for non-use. (*Note: the grace period is 5 years for trade marks lodged before 24 August 2018).

In a Non-Use Removal Action, the owner of the trade mark must defend the action and prove use of the trade mark. This normally requires the trade mark owner to provide evidence of their use of the trade mark. Use must have occurred within the 3 years prior to the Non-Use Removal Application.

If the owner fails to successfully defend the Action, the trade mark is removed from the register. This means the trade mark will no longer be protected.

How can trade mark owners protect themselves against Non-Use Removal Actions?

There are some steps a trade mark owner can take to reduce the risk of removal of their trade mark.

✅ Consider the Trade Mark Scope

Before lodging a trade mark application, trade mark owners should carefully consider its intended use. The broader the claimed goods or services, the more difficult it may be to establish use for those goods or services.

✅ Use the Trade Mark

Once registered, the trade mark owner should ensure that they use the trade mark for all the goods or services claimed.

Evidence of that use should be kept in case needed. (Examples of use might include advertising materials, product photographs or website copy).

If there are reasons why a trade mark cannot be used for a period, documentation should be kept to explain the circumstances.

Remember, in a Non-Use Removal Action, the onus is on the trade mark owner to prove use.

✅ Keep Your Records Updated

Maintaining up-to-date contact details is critical.

If a Non-Use Removal Action is lodged, IP Australia will send a notice to the address for service.

If you receive an IP Australia notice, it is important to act quickly. Strict time limits apply to responses, so inability to contact the trade mark owner, or failure to respond, can be fatal to the trade mark.

✅ Licensing and Franchising

Careful attention should be paid when licensing or franchising a trade mark. It's a good idea to formally document the relationship.

Improper documentation can mean the licensee or franchisee's use of the trade mark isn't recognised in a Non-Use Removal Action.

✅ Beware when threatening Infringement

Some trade mark owners try to save money by sending their own infringement demands.

This can be a risky strategy because the threatened person may decide to apply for removal of the trade mark. (“The best form of defence is attack” after all!)

It is well worth taking legal advice before confronting an alleged infringement of your trade mark.

Can we help?

Xuveo Legal provides advice and assistance both to seek removal of trade marks for non-use and to defend a non-use action. Contact us for more information.

This post is intended for general information only and is not intended to constitute legal or other advice. You should obtain appropriate advice for your circumstances.

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