An application for the removal of a trade mark from the register for non-use (a “non-use application”) can be made on the basis that:
- the application for registration was not made in good faith with the intention to use the trade mark, and that the trade mark has not been “used”, or used in good faith; or
- the trade mark has not be “used” in a three year period ending the month prior to the non-use application being filed (provided at least five years has passed following registration).
In addition, the non-use application will specify the whether full or partial removal of the mark is being requested – partial referring to the removal of only some of the goods and/or services for which the trade mark is registered.
Importantly, once a non-use application is made – the onus of proof of genuine use shifts to the registered owner.
Why have I Received a Non-Use Application
There could be many reasons why an Applicant has applied to have your trade mark removed. These may include:
- they have applied for the same or a similar mark to be registered in the same or similar classes of goods and/or services as your registered mark. In this case, an Examiner may have cited your mark as a barrier to the registration of their application. The Applicant may therefore want to remove your mark so that theirs can be registered.
- you have identified the Applicant as a potentially infringing your registered mark. In this instance, the non-use application may be an attempt to have your mark removed in order to stop enforcement of those registered rights.
The term “use” in this context particularly requires you, as the trade mark owner, to demonstrate that the use in the relevant period was:
- in good faith;
- as a trade mark;
- in the course of trade;
- in Australia;
- upon or in relation to the goods and/or services of the registration; and,
- by the trade mark owner, predecessor in title or an authorised user.
It is important to be able to provide evidence of the requisite use. Suitable evidence may include a combination of sales and marketing figures, advertising expenses, examples of orders, invoices, packaging, marketing and promotional materials (dated), websites (dated), and the like.
What Do I Do After Receiving a Notice of a Non-Use Application?
When you have received a Notice that someone has applied to remove your trade mark, the date on which the non-use application is advertised in the Official Journal starts the clock – you have two months from this date to file a Notice of Intention to Oppose the removal and pay the Official Fee of $250, as shown below.
In the following timeline, each subsequent action starts the clock for the next action. For example, the Statement of Grounds and Particulars must be filed within one month of filing the Notice of Intention to Oppose, the Notice of Intention to Defend must be received within one month of the Applicant receiving the Statement of Grounds and Particulars, and so forth.
Of course, there may be instances in which other courses of action may be more appropriate to your circumstances. For example, you may reach a commercial arrangement with the other party, decide to partially amend the registration, and/or decide you no longer wish to maintain the registration.
- You (Opponent): Notice of Intention to Oppose - Official Fee $250
- You: Statement of Grounds and Particulars
- Applicant: Notice of Intention to Defend
- You: Evidence in Support
- Applicant: Evidence in Answer
- You: Evidence in Reply
Either you or the Applicant may request an oral hearing to be heard by the Registrar of Trade Marks. The Official Fee for requesting an oral hearing is $600.
Once a decision is made, it will typically be issued in writing to both parties. It is possible for either party to appeal a decision to the Federal Court or Circuit Court.
IP Australia have published more information on the Trade Mark Opposition process, and this can be found here.
If you have received a Notice that a Non-Use Application has been filed in respect of one of your registered trade marks, we would highly recommend you seek professional advice. If you want more information – contact us today.