The Productivity Commission found in their 2016 review that the trade marks register is cluttered with trademarks that are not being used, which potentially reduces the scope for legitimate users who want to use similar marks. They recommended a reduction of the grace period for which trademarks cannot be challenged on the basis for non-use. The recommendation received Royal Assent last year and the Australia’s Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Amendment Act) implemented the recommendation earlier this year.

Trade Mark Non-use

‘Non-use’, following its literal meaning, means a trademark not being used after it is registered. Australian trademarks are vulnerable to removal from the register for non-use under the Trade Marks Act 1995 (Cth). If a trademark is not being used but remained registered for a continuous period of 3 years, a non-use application could be filed outside the grace period.

Grace period

Grace period means the period when a trademark cannot be challenged for non-use, which is reduced from 5 to 3 years in the amendment. It means that if a trademark is not used for 3 continuous years since it is registered, a non-use application could be filed straight after. Whereas previously an applicant will have to wait for at least extra 2 years.

The trademark owner will of course have the opportunity to defend, however if their defence is not successful, the trademark will be removed.

Implication

The grace period reduction only applies to the trademarks registered after the amendment taking effect. It means at least three years wait to witness any non-use applications made following the reduced grace period.

However, it is expected that this new amendment may help brand owners remove unused trademarks and establish their own, at the same time requiring faster response from existing trademark owners who can demonstrate clear business reasons for their lack of use.

Help is available with trademark issues

Bell Legal Group can assist you with any trademark issues. For information and assistance, please feel free to contact us on 07 5597 3366 or complete the ‘Contact Us’ form below.

Disclaimer

Please note that this article was prepared by Bell Legal Group for information purposes only. It is not legal advice and should not be relied upon as such.