WNA Blog

Thu 2 Jun 2016

Registered Trademark – Use it or lose it !

Business Planning & Strategies

Unlike domain names, registered trademarks in Australia and overseas can be challenged on the grounds of non-use by an applicant of an exact mark or similar trademark.  Many people wrongly assume that trademarks are like domain names where you can purchase a domain name and not have the requirement to actively use that domain name for any period of time.

With trademarks, this not the case, you cannot reserve a trademark name without the intention to use the trademark within five years and the owner must prove three years of continuous use in that period.

When an applicant challenges the owner of a registered trademark, it is the responsibility of the owner of the trademark to show use of the trademark to defeat the challenger.

If the trademark owner can’t show extensive use of the trademark, then they will likely lose the trademark as it will be cancelled under the non-use clause.  Proof must be in the form of use within the country the trademark is registered in.

An example:

A company selling a beverage in Australia called “Volt” successfully registered the trademark in Australia and New Zealand in 2010.  They launched the beverage in Australia in 2012 and have been selling the product successfully in Australia ever since. They planned to launch the drink in New Zealand in 2016, however they still haven’t found a distributor to sell the product, but are hopeful of finding one by the end of the year.

This is an issue for this beverage company as their trademark “Volt” is exposed to being challenged for NON USE by another company or individual.  It has been six years since they registered the “Volt” trademark within the beverage class in New Zealand however they have not actively sold and marketed the product in that country. If they are lucky, no one will apply for the name, however if a New Zealand company is trademark IP savvy, they could technically steal this name for their own use and take advantage of the name recognition that already exists in Australia.

Trademark protection is defined within a protection class. In this case, Volt was a trademark under class 32, which is the class used to protect non-alcoholic beverage products. Volt is only protected for this class and thus can only be challenged for non-use in this class.

Sometimes, this can lead to a somewhat unfair outcome, for example if a trade mark owner were to be denied its trademark on a range of energy drinks, where it had previously only registered for protection as a fruit juice (although the court can usually exercise its discretion to save the trade mark). The Registrar may take into account use on similar or closely related goods or services in support of the trademark owner’s right of use.

Of course, the reverse of this scenario can also be the case.  Imagine a registered owner of a mark in respect of organising an outdoor market who argues that creating an internet website selling stallholder’s products should be taken into account in defence of a registration. The trademark Examiner will have to consider exercising its discretion as to whether it wants to take this into account in support of the right of online use of the trademark.  This defence could prove more difficult for the Examiner to uphold.

The key trademark message is, USE IT OR LOSE IT! Also make sure you use it within the class and class description that it was originally registered for. If you have expanded your range of products or services, it’s best to re-apply for a new trademark with the updated class descriptions. Don’t be caught out with the wrong protection.

I have assisted clients to successfully obtain trademark names by challenging current trademark owners for non-use of the name.  Call me if you have any questions or need assistance.

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