Very little use of a trade mark is required to defeat a non-use application in Australia. In fact, a single, genuine sale of the relevant goods or services during the relevant period is usually enough to defend a non-use application. Furthermore, there’s no requirement for the use to be continuous across the relevant period. That said, even if you have significant use of your trade mark during the relevant period, you should ensure that any use of the mark is by the registered owner, or if used by a third party, that the third party is “authorised” to use the trade mark by the registered owner.
A common problem facing trade mark owners in proving use of their trade marks to defeat a non-use removal action is where the trade mark is used, but not directly by the registered owner. There may be circumstances where the registered owner has allowed another party to use the mark (for example under licence) and in such cases, the use by the other party may constitute use and the trade mark will not be removed for ‘non-use’ provided the owner can show that the other party is an ‘authorised user’. Under the Trade Marks Act 1995 (Act) use of a trademark by an ‘authorised user’ is taken to be a use by the registered owner provided the use is “under the control of the owner”. This is a complex issue and not discussed for the purposes of this article although the Act does provide that control can be “quality control over the goods and/or services” and/or “financial control over the other person’s trading activities”.
This issue was highlighted in the recent Australian Trade Mark Office case of Grocery Industries Australia Pty Ltd v Sharmas Kitchen Pty Ltd [2021] ATMO 100. In this case, the trade mark was used by a different entity (Dallas) during the relevant period however the evidence filed was inadequate to prove that the owner authorised such use. The evidence did not include any written licence, nor any other explanation for the relationship between the entities. As such, the Delegate exercised their discretion and removed the trade mark on the basis that the opponent had not established use of the trade mark during the relevant period.
Takeaway
At all times during the life of your trade mark registration, ensure that you are using the mark correctly. It is not only necessary to ensure you are using the mark as recorded on the Register and for all of the goods and/or services for which it is registered, but you should also ensure that any and all use of the trade mark can be attributed to the registered owner of the mark. Failure to do so could be fatal to your trade mark registration.