Commercial Litigation News

Trade Marks - Non-Use

 Application for removal of a trade mark for non-use - opposition process

An application for removal of a trade mark for non-use (“non-use application”) provides a mechanism for registered Australian trade marks to be removed from the Register of Trade Marks if they are not being used or the owner never had any intention in good faith to use, authorize use or assign the trade mark. A non-use application can be made in relation to the entire trade mark, or alternatively, a partial non-use application can be made just in relation to particular goods or services.

The usual reason that a non-use application is filed is because the person making the application (“applicant”) has already filed a trade mark application in Australia but another person’s earlier trade mark is considered too similar and is therefore blocking the registration. Typically the applicant will contact the owner of the earlier trade mark approximately one month prior to filing the non-use application to determine if the earlier mark’s owner will consent to the applicant’s trade mark application proceeding. If this consent is not forthcoming, a non-use application is the natural next step.

The burden is placed on the person opposing the non-use application (typically the trade mark owner, although third parties are entitled to oppose the application) (“opponent”) to establish that the application should be unsuccessful. In order to successfully oppose a non-use application, the opponent must show that the trade mark has, in fact, been used in good faith in Australia during the three year period ending one month before the non-use application was filed. If the application is ignored, the non-use application will automatically be successful and IP Australia will process the non-use application.

To oppose a non-use application, the opponent must file a notice of intention to oppose within two months of the advertisement of the non-use application. A filing fee of $150.00 is payable for each trade mark opposition. The objector must file a statement of grounds and particulars outlining the reasons they say the trade mark should not be removed within one month of filing the notice of intention to oppose. At that stage, the applicant is able to decide whether to proceed by filing a notice of intention to defend within one month.

If the opposition is defended, the opponent must then file evidence of use. The applicant will then be entitled to file any evidence in response, with the opponent also provided the opportunity to file any further evidence in reply. The application will then be determined by the Registrar, with the unsuccessful party typically ordered to pay the other party’s legal costs. If desired, a party may appeal the Registrar’s decision in the Federal Court.

The information contained in this article is general in nature only and should not be relied on. You should always seek legal advice about your individual circumstances.

Posted in: Commercial Litigation News at 03 June 16