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New Amendments to Australia’s IP Laws: Non-Use Applications

The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (the Act) is introducing new changes to Australia’s IP regime. This article will consider the changes to the grace period for non-use applications under the Trade Marks Act 1995 (Cth).

What is a non-use application?

A non-use application is an application under section 92 of the Trade Marks Act to have a trade mark removed from the trade marks register.

A non-use application may be made on one (or both) of the following grounds:

1. That on the day that the application was filed, the registered owner of the trade mark had not intention in good faith to use the trade mark in Australia (or authorise its use), and in relation to the goods or services to which the non-use application relates that the registered owner:

(a) has not used the trade mark in Australia; or
(b) has not used the trade mark in good faith in Australia.

2. That the trade mark has remained registered for a continuous period of three years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

(a) used the trade mark in Australia; or
(b) used the trade mark in good faith in Australia;

in relation to the goods or services to which the non-use application relates.

Example:

Tools ‘R’ Us Pty Ltd make an application to register the trade mark ‘Tools ‘R’ Cool’ in respect of power tools (class 7). The trade mark is subsequently accepted and registered. Tools ‘R’ Us Pty Ltd decide that they want to move away from power tools and focus on trade clothing and consequently do not use their registered trade mark for ‘Tools ‘R’ Cool’ for advertising their power tools. After a period of 3 years and one month of non-use of the trade mark, the trade mark becomes susceptible to a non-use application in respect of which the non-use application is made (e.g. class 7 for power tools).

Grace period for new trade marks

Under the Trade Marks Act, a non-use application made on the grounds referred to in s 92(4)(b) (and reproduced above in point 2), may not be made before a period of 5 years has passed since the filling date of the trade mark that is subject to the non-use application.

Taking the above example, this means that a non-use application could not be made for ‘Tools ‘R’ Cool’ until a period of 5 years had lapsed since the date the application for registration was made (unless the non-use application was made on the grounds of no good faith).

Changes to the Grace Period under the Act

The Act significantly reduces the grace period for non-use applications from five years to three years. This means that trade mark owners will need to be proactive about using their trade mark before the three years is up, otherwise they will be vulnerable to a non-use application. Fortunately for trade mark owners, use of a trade mark is not a substantial burden to prove, but must be ‘in the course of trade’.

Take-away points

  • Trade marks may be susceptible to a non-use application if they are not being used in the course of trade;
  • New changes to Australia’s IP laws means that non-use applications may be made after a period of 3 years has lapsed since the date of registration of a trade mark;
  • The new changes will apply to trade marks filed on or after 24 February 2018, unless an alternative date is fixed by proclamation.

    If you would like to know more about this article or non-use applications, please do not hesitate to get in contact with the team at W3IP Law on 1300 776 614 or 0451 951 528.

    Sam Gilbert, IP and Technology Consultant, B.A., LL.B  University of Technology, Sydney
    Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.

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