Some brand-owners who defend non-use removal actions in Australia appear to be successfully preventing the removal of their marks on discretionary grounds. However, brand-owners should not be complacent.
In an earlier Need to Know: Trade Marks, we reported on a decision of the Australian Trade Marks Office to refuse to remove the well-known EVIAN mark for non-use for non-beverage goods, even though the mark had not in fact been used for such non-beverage goods (The Power of Discretion). The importance of the Registrar’s discretion not to remove a mark for non-use, even where the owner is unable to demonstrate use during the relevant period, was again demonstrated in a recent Australian Trade Marks Office (ATMO) decision concerning the NATURE VALLEY mark General Mills, Inc v Maria & Nikitas Christofis  ATMO 18 (14 March 2013).
In that case, the Registered Owner was the owner of the NATURE VALLEY mark for “all goods in class 30”. The Removal Applicants sought to remove the mark for non-use, alleging no use of the mark in the previous 3 years. The Registered Owner was able to prove significant international and Australian sales of NATURE VALLEY snack bars (such as muesli bars and nut clusters). However, the Registered Owner appealed to the Registrar’s discretion not to remove the other goods from its registration, despite no evidence of use or plans to use the mark for such other goods (eg. tea, coffee, rice, bread, pastry, confectionery, sugar, ices, sauces, spices etc).
After reviewing a number of recent decisions in this area, the Registrar exercised the discretion and refused to limit the registration. Particular weight was given to:
- use of the mark for goods similar to other goods;
- the likelihood of confusion or deception for consumers if the mark were used for the other goods;
- the Removal Applicants had not participated at the hearing;
- the Removal Applicants had not formally evidenced their interests or how the retention of the mark for the other goods would be confusing or prejudicial.
The lesson from these recent cases is that brand-owners who own registrations covering a very broad range of goods (but only use the marks for a narrow class of goods) may be able to successfully defend non-use removal actions in Australia (for the broad class of goods), even where there has been no use of the mark for the broader goods. However, brand-owners should not be complacent, as all decisions which rely on the Registrar’s discretion not to remove a mark for non-use are strictly limited to their facts. The decisions in the EVIAN and NATURE VALLEY cases could well have been very different if the party attacking the registrations put in its own evidence showing how its own interests, or the interests of the public, were being adversely affected by the continued registration of the marks for the broader goods.