Saturday, 24 February 2024, marks a milestone for Australian trade mark registrations.
Amendment to s.93(2) of the Trade Marks Act provided that applications for cancellation of a trade mark registration for non-use under s. 92(4)(b) may only be filed after three years from the date the particulars of the trade mark were ‘entered into the Register.’
Prior to the amendment, s.93(2) provided that a non-use application could not be made before five years from ‘the date of registration.’ Note that the ‘date of registration’, from which rights in the mark under the Act begin, is taken to be the filing date of the registration, which could be seven months or more earlier than the date the mark is entered into the Register.
So why is Saturday a milestone? The amended three-year period only applies to applications filed on or after 24 February 2019.
Registrations from applications filed earlier than this still have the ‘five years from registration’ limit applying. As of Saturday, the five years will be up, and the last of those marks will become potentially vulnerable to non-use cancellation.
This applies even to the few applications filed prior to 24 February 2019 that are still pending because of opposition or other reasons. Once registered, they will immediately be vulnerable to non-use actions because their registration date (filing date) was more than five years ago.
Neither the three or five-year time limits apply to non-use applications filed under s.92(4)(a); these can be filed immediately the mark is registered.
However, in those cases, the non-use applicant must allege not only that the mark has not been used, but also allege that the trade mark owner had no intention in good faith to use the mark at the time of filing. If the owner simply asserts that they did intend to use, it is difficult for a non-use applicant to refute this.
Is there a take-home message from all of this? Of course!
If you are a trade mark owner, you need to use your mark for the goods and services for which it is registered, and you should keep records of that use so that you can, if necessary, produce evidence of use during the last three years. If you do this, you will be in a good position to oppose non-use removal, regardless of when your application was filed.
