Registering your company’s trade marks is an important step in protecting your brand. However, your company needs to actually use those trade marks if they are to remain on the Trade Marks Register without becoming vulnerable to having their registration cancelled for “non-use”.
If your company does not use or authorise the use by another party of a registered trade mark, a third party can apply to have that trade mark removed from the Trade Marks Register on the ground of “non-use”. A trade mark registered for at least 5 years can be the subject of an application to remove for non-use, if your company has not used that mark in Australia during the immediately preceding 3 years.
Although it sounds unusual, it is quite a common for trade mark registrations to become vulnerable to cancellation for non-use. For example, the situation can arise where:
(a) your company registers a trade mark in respect of a range of goods or services, some of which it never proceeds to provide;
(b) your company registers a trade mark in respect of, for instance, “clothing, footwear and headgear” but after 5 years has not yet developed a range of headgear; or
(c) subtle changes to your company’s trade mark over time lead to non-use of the registered mark.
It is possible that your company will not be concerned by potential non-use if it is not using the trade mark and has no intention to do so. However, it will be a concern where your company:
(a) alleges trade mark infringement against a third party who can have your company’s trade mark removed from the Register as a complete defence to those allegations;
(b) is about to launch a product and a third party applies to remove the relevant trade mark registration in respect of that product for non-use; or
(c) wants to make allegations against a third party but is reluctant to do so due to the vulnerability of other registered trade marks in its portfolio that it wishes to retain.
Recently, Lion Nathan applied to remove E & J Gallo Winery’s registered trade mark for “Barefoot” in respect of wines on the ground of non-use because Lion Nathan wanted to use the trade mark “Barefoot Radler” in respect of beer. Gallo commenced proceedings against Lion Nathan for infringement of the “Barefoot” trade mark so Lion Nathan counter-attacked by its non-use. During the 3 year non-use period, Gallo had not exported its Barefoot wine to Australia but a Victorian wholesaler had sold a very small quantity of Barefoot wines in Australia, which it had acquired from a Germany company to whom Gallo had exported its wine. The case went all the way to the High Court, which decided that the small quantity of sales of Barefoot wine in Australia was sufficient use of the trade mark by Gallo, even though Gallo had not exported its goods directly to Australia and was not aware that the German company had done so. This decision is favourable to brand owners facing a non-use allegation, as even a small amount of use can overcome the allegation and the brand owner need not have been aware that the goods were being sold in Australia.
Nevertheless, non-use can still be a significant problem and it is important that brand owners are alive to this issue. We recommend conducting regular reviews of your trade mark portfolio to check whether any of your company’s registered trade marks are vulnerable for non-use. Your company should assess whether it intends to use any vulnerable marks in the future and, if so, take more than token steps to use the marks in Australia.
For further information about any issues raised in this article, please contact one of the below contacts at Corrs Chambers Westgarth (ASGA’s Preferred Legal Supplier), who can answer any further questions you may have about non-use of trade marks.
Stephen Stern
Melbourne
Partner
+61 3 9672 3148
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Jennifer Wrigley
Melbourne
Lawyer
+ 61 3 9672 3413
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Corrs Chambers Westgarth is ASGA’s preferred suppliers of legal services. ASGA Members receive discounted rates and can also use a 15 min free "helpline" service to access Corrs lawyers for initial telephone advice.
The Corrs ASGA "Helpline" can be accessed by dialing (03) 9672 3476. Ask for Stephen Stern and he will provide you with initial guidance or direct you towards experts who will be able to provide you with the advice you need.
