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Don't be cheeky, use your trade mark

Don't be cheeky, use your trade mark

12 Jun 2020

Don't be cheeky, use your trade mark
WRITTEN BY
Louise Blair
Louise Blair
Associate

Don't be cheeky, use your trade mark

12 Jun 2020

If you wish to register your trade mark and you find an existing trade mark presents a potential obstacle, remember to check if that trade mark is actually being used in Australia.

While some are wise enough to register their trade marks, many fail to use them, opening them up to a challenge to retain it.  For those who don’t use their trade mark, they should watch out, as it may be removed from the register for non-use.  It is possible, and often happens, that a trade mark is removed for non-use. A non-use action can be a sneaky weapon to enable registration of your potential registered trade mark. 

In a recent decision of the Australian Trade Marks Office (ATMO), removal was the result.   

There was a dispute between Cheeky Bits Pty Ltd v Cheeky Bits for Women Pty Ltd in relation to the CHEEKY BITS word trade mark for goods in class 25 being clothing, including swimwear, underwear, lingerie and intimate apparel, footwear, headgear and the similar logo trade mark (Trade Marks).

The burden was on the owner of the Trade Marks to establish “use”.

The owner’s Statement indicated that promotion of the brand had been prevented by some personal issues and the manufacturer of certain samples had closed its operation.

There is some leniency in the Trade Marks Act which enables the ATMO to accept that circumstances exist which are an obstacle to the use of the trade mark during the relevant period.

Several steps had been taken to build the business under the registered Trade Marks’ brand.  For example, patterns were made, fabrics purchased, garment labels and tags were designed, embellishments purchased and garment test samples were manufactured.  Unfortunately, none of this business building would amount to “use” of the Trade Marks on finished goods offered for sale in Australia during the relevant period.

An “excuse” for not using the Trade Marks would only exist when events arise that are capable of disrupting trade in the area of commercial activity in which goods bearing the registered owner’s Trade Marks were traded.  There must be a causal link shown between the relevant circumstances and the Trade Marks’ non-use.  Therefore, some personal issues are not a consideration.

Ultimately, the owner of the Trade Marks failed to prove “use” or a sufficient basis to find obstacles to “use” or for the Registrar to apply its discretion.  The Trade Marks were removed from the Australian Trade Marks Register.  This enabled the path to be cleared for the acceptance of the potential trade mark application.

Importantly, the term “relevant period” is mentioned on several occasions above.  A registered trade mark can only be removed if it has remained registered for a 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, has the registered owner:

  1. used the trade mark in Australia; or
  2. used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

Don’t allow complacency to creep in with the use of trade marks. Once your trade mark is registered, use, use, use.

If you have not yet registered your trade mark and you are using it, first you must apply for trade mark registration to enjoy the benefits associated with it being registered. 

The process can be complex and making sure you register it in all the appropriate “classes” can often be the downfall of some businesses. 

If you have trade marks requiring registration, or an issue around passing off, breach of copyright or trade mark infringement, contact us for a complimentary consultation on 1300 565 846 or view our fixed fee trade mark packages.  

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