Use it or Lose it: How to Remove a Trademark for Non-Use

The framework for registering trademarks via the IP Australia platform does not require the applicant to be the true owner of the trademark. This can leave entrepreneurs and business owners in circumstances where their logo or business name is trademarked by a third party. The remedies available are limited in the event that the trademark is registered pursuant to the Trademarks Act 1995 (Cth).

What can you do? 

A shield that may be available to protect your IP asset is filing an application for ‘non-use’ pursuant to section 92 of the Trademarks Act.

In simple terms, registered trademarks can be removed for ‘non-use’ for either or both of the following two reasons:

• the absence of a good faith intention on the part of the trademark owner to use the trademark when applying to register it; and/or
• a failure by the registered owner to use the trademark during the previous three years.

Let’s break this down… 

Bad faith is not defined in the Trademarks Act. Rather, the concept is derived in case law originating from the United States and the United Kingdom respectively.

Justice Kenny in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 1) expanded on the concept of bad faith as including dishonesty and ‘some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular field being examined’. In particular, Justice Kennedy noted that:-

“Bad faith impugns the character of an individual or collective character of a business, as such it is a serious allegation. The more serious the allegation the more cogent must be the evidence to support it. However, the matter still has to be decided upon the balance of probabilities. The issue has to be considered as at the date of application for registration. An act of bad faith cannot be cured by an action after the date of application.“

As such, the tests by the courts have determined that bad faith is determined on the balance of probabilities and on the basis of whether the conduct of applying for the trade mark fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.

The second limb of section 92 pertains to non-use of the trademark for a minimum period of three years.

There are two (2) categories of non-use:

1. Classic Non-Use
2. Classic non-use refers to circumstances whereby trademarks simply fall into complete disuse. A single, genuine sale of the relevant goods or services in the course of trade during the relevant period is usually enough to keep the trademark safe. Hence, it is important to bear in mind that there is no requirement for the use to be continuous across the relevant period. An ‘offer to trade’, an advertisement that does not result in a sale, or undertaking preliminary steps prior to making an offer of sale can constitute use.
3. Partial Non-Use
4. Partial non-use refers to circumstances where a trademark is registered for multiple classes and sub-classes of goods, however the owner only uses the trademark in some of those classes. In this instance, a non-use application would remove the class or sub-class that satisfies the non-use criteria.

Next Steps

Have you gotten wind of another party filing a claim against your trademark for non-use? Are you the party seeking to file that application? Contact the Intellectual Property team at Antunes Lawyers on (02) 9964 0499 to discuss your options today.