Trade marks

Trade Mark Removal & Deregistration

Trade Marks unlike other forms of intellectual property have an unlimited life provided that registration fees are paid on a routine basis (every ten years) and no removal actions are commenced.

Ensuring continuous use of your trade mark as a trade mark is the best way to ensure it remains protected under the regime that registration affords however sometimes there are periods for which a trade mark is not used due to commercial situations that leave trade marks vulnerable to removal.

I received a letter threatening proceedings to remove my trade mark from the register, what should I do?

If you have received such a demand it is important not to provide any concessions or information or evidence to the aggrieved party which may be used against you. If you are unable to work out an amicable resolution you should seek the assistance of a qualified trade marks attorney or solicitor with IP experience.

 

Under what circumstances may a trade mark be removed from the register without the action of the owner?

There are essentially three grounds for removal of a trade mark from the register outside of the inaction of the trade marks holder in failing to pay their renewal fees:

  1. Removal under s 92(4)(a) of the Trade Marks Act 1994 (Cth) where a trade mark was registered and on the day the application was filed the applicant had no intention in good faith to use the trade mark (which includes licencing the mark or assigning the mark).
  2. Removal under s 92(4)(b) of the Trade Marks Act 1994 (Cth) where a trade mark was registered but has not been used for a continuous period of three years ending one month before the day on which the non-use application is filed. The mark must have existed on the register for at least five years under s 93.
  3. Rectification of the register which occurs in limited situations where the trade mark should not have been registered in the first place due to certain reasons specified under s 88 of the act.

 

What constitutes ‘use of a trade mark’?

The definition of ‘use’ in relation to goods or services is broadly defined in s 7 of the Trade Marks Act 1995 (Cth) s 7 to mean the use of the mark in a physical ‘or other relation’ to the goods or services.

Strictly speaking the business must have used the trade mark in connection with goods or services on a commercial basis where members of the public would ordinarily be exposed to the mark in the course of trade.

Different industries have different thresholds for use due to the nature of products of services provided – for instance it is unlikely the broad population will have heard of a specialist engineering firm practicing in hydraulics however it would be expected that many people may be exposed to the name of a radio station by comparison.

It is necessary to consult with an IP Professional to determine what constitutes use for the purposes of a removal action before IP Australia.

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