Removal for non-use

Section 92 of the TMA provides that a person may apply to have a trade mark removed from the Register on the grounds that:

(a) the registered owner did not, at the time of applying for the mark, have any intention to use the mark in Australia (or to authorise others to do so etc) and has not used the mark in good faith in Australia; or

(b) that the trade mark has remained registered for a continuous period of 3 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 has used the mark in good faith in Australia.

Proving lack of intention to use (sub-section (a)) is tricky.  So most applications for removal for non-use rely on sub-section (b) of s 92.

There are a couple of things to look out for:

1. The relevant non-use period is three years starting three years and one month before the removal application is filed and ending one month before the removal application is filed.  So, if you are the registered owner, you cannot overcome a non-use application by using the mark after the removal application date – or even in the month before the application.
2. The onus is on the registered owner to show that it has used the mark in the relevant time.
3. The use must be of the mark as registered.  Uses of other similar marks will not suffice.
4. The use must be in relation to the registered goods and services.  If the mark has only been used in relation to some of the registered goods and services it is liable to be removed in respect of the others.
5. The use must be “as a trade mark”.  Descriptive uses or uses that are not “in the course of trade” may not be sufficient.
6. The use must be in Australia.
7. The use must be use by the registered owner or authorised use by a third party.  Authorised use requires control by the registered owner.
8. The delegate has discretion to not remove the mark from the Register even if the owner is unable to show any use in the relevant period.

Note that in Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939, Katzmann J considered the meaning of the concept of trade mark use in the context of s 92(4) TMA. Her Honour noted that:

• the question must be determined objectively;
• use of a trade mark in relation to goods means use of the trade mark “upon, or in physical or other relation to, the goods”: s 7(4) TMA;
• use includes authorised use: s 7(3) TMA;
• a single bona fide use of the mark in the relevant period may be sufficient to avoid a finding of non-use: Dick Smith Investments at [109]-[110].
• it is not necessary for any actual sales of the product to take place in order to avoid a finding of non-use: Dick Smith Investments at [128]-[132].
• steps taken before any sale of the goods in question can be sufficient to amount to trade mark use: Dick Smith Investments at [138]; and
• “what matters is whether the mark was being used as a trade mark to distinguish the prospective product from the products of others”: Dick Smith Investments at [157].