Articles for October 2022

By Jennifer Song / Senior Associate

Unlike some other jurisdictions like the United States, in Australia, there are no use requirements in order to maintain a trade mark registration. 

However, once three years has passed from the date of filing, it is possible for any third party to request that a trade mark is removed from the Australian Trade Marks Register for non-use.

In Australia, it is also possible for any third party to request that a trade mark is partially removed for non-use. This happens when a third party wishes to remove some (and not all) of the goods/services for which a trade mark is registered. 

Accordingly, if you wish to keep your trade mark on the Register for all of the goods/services for which it is registered, you must ensure that the registered trade mark is continuously being used for all of the goods/services for which it is registered. 

The Australian trade marks system is different from some other jurisdictions like the United States which has a maintenance requirement – namely, between 5 and 6 years after registration, the owner of a US  trade mark must declare that the US  trade mark is being used in respect of all of the goods/services for which it is registered in the US. Evidence of this use must also be provided to the US Trade Marks Office. Therefore, any goods/services that are not being used under/by reference to the trade mark registered in the US must be deleted.

By Jennifer Song / Senior Associate

It is important to file a trade mark in the name of the correct entity. A legal entity in Australia is typically a person or a company. The applicant of the trade mark must be the entity that intends to use (or is already using) the trade mark.

So if you are a sole trader, then the trade mark will be filed in your personal name. However if there is a company, then make sure you file the trade mark in the name of the company. 

If you are unsure who the applicant should be, look at the receipts of your business  – If the receipts are issued in the name of the company (and/or ACN), then the trade mark ought to be filed in the company’s name. On the other hand, if the receipts state the business name (and/or ABN) or your personal name, then the trade mark ought to be filed in your personal name. Never file the trade mark in your personal name if it is your company that is using the trade mark – even if you are a director of the company.

Be warned that if a trade mark filed in the incorrect entity’s name, then this is not possible to fix this error at any later stage. A new trade mark will need to be filed in the name of the correct entity. This is because a trade mark can be struck off the Australian Trade Marks Register if a third party can show that the applicant/owner of a trade mark had no intention to use the trade mark at the time of filing.