Use it or Lose It

USE IT OR LOSE IT – registering your trade mark is not enough, you also need to use it

In Australia, trade mark registration is a way to protect your brand’s identity and goodwill. However, if you do not use your registered trade mark for a continuous period of three years, it may be vulnerable to removal on the basis of non-use. This means that another party can apply to have your trade mark removed from the trade marks register if it has not been used in relation to the registered goods or services during the relevant period.

Credit: Unsplash – Malvestida

Non-use removal of trade marks is governed by the Trade Marks Act 1995 (Cth) (“the Act”) and is an important tool for ensuring that the trade marks register remains up-to-date and relevant. Here’s what the law says about non-use removals and what constitutes use when it comes to trade marks:

Grounds for non-use removal

Section 92 of the Act sets out the grounds for removing a trade mark from the register on the basis of non-use. It states that a trade mark may be removed from the register if:

• It has not been used in relation to the goods or services for which it is registered; and
• The non-use has been continuous for a period of three years or more immediately preceding the date of the application for removal.
• It is important to note that if the trade mark has been used in relation to some, but not all, of the goods or services for which it is registered, it may still be vulnerable to non-use removal in respect of those goods or services for which it has not been used.

Credit: Pexels – Polina Tankilevitch

What constitutes use?

Under the Act, use of a trade mark in relation to goods or services means use of the trade mark:

• In connection with the goods or services themselves; or
• In connection with the advertising or promotion of the goods or services.
• It is important to note that the use must be in relation to the goods or services for which the trade mark is registered. If the use is in relation to different goods or services, it may not be sufficient to avoid non-use removal.

Examples of use

In general, use of a trade mark does not need to be extensive in order to avoid non-use removal. However, it must be genuine and not merely token use. Here are some examples of use that may be sufficient to avoid non-use removal:

• Sale of a small number of goods or services under the trade mark, provided that the sale is genuine and not a one-off event.
• Advertising or promotion of the goods or services under the trade mark, provided that the advertising or promotion is directed at potential customers and is not merely for show.
• Use of the trade mark on product packaging or labels, provided that the goods are genuinely offered for sale.
• Use of the trade mark on a website, provided that the website is accessible to potential customers and the goods or services are genuinely offered for sale.

In contrast, the following types of use may not be sufficient to avoid non-use removal:

• Use of the trade mark solely on promotional materials or giveaways, without any accompanying sale of goods or services.
• Use of the trade mark in relation to a different range of goods or services to those for which it is registered.
• Use of the trade mark only in a different form or style to that in which it is registered.

Conclusion – use it or lose it

In Australia, trade marks can be vulnerable to removal on the basis of non-use if they have not been used in relation to the registered goods or services for a continuous period of three years. If you are concerned about the possibility of non-use removal, it is important to ensure that your trade mark is being used in a genuine way in connection with the relevant goods or services. Remember that use need not be extensive, but it must be genuine and not merely token.