Previously we have posted an article on the importance of using the correct trade mark to avoid non-use removal actions in Australia but, by way of an update to this article, it is also important to remember that trade mark use is jurisdictional and in order to maintain a registered trade mark, trade mark owners must ensure that their trade marks are used within Australia to avoid removal.
This was highlighted in a recent Australian Trade Mark Office decision of The Coca-Cola Company v Garth Stanley [2023] ATMO 3 (Coca-Cola case).
One way in which an Australian trade mark registration will become vulnerable to removal for non-use, is where the mark has not been used in Australia by the registered owner for a continuous period of three years (ending one month before the application is filed) (the relevant period).
In the Coca- Cola case, Mr Stanley applied to remove Coca-Cola’s trade mark registration for 
(the trade mark) for non-use in respect of the goods “non-alcoholic beverages”.
Coca-Cola submitted evidence in response to the removal action showing promotion of the trade mark in the US and Canada. After considering the evidence, the Delegate of the Registrar determined that it was unclear whether the evidence was targeted at Australian consumers; Coca-Cola could not provide evidence such as invoices to prove the goods covered by the trade mark were imported into Australia and/or sold in Australia during the relevant period and as a result, determined that the trade mark was not in fact used in Australia during the relevant period.
As Coca-Cola had the onus of proving use of the trade mark in Australia during the relevant period and despite also arguing that it had an ongoing interest in the trade mark and that it intended to sell the goods under the trade mark in Australia in the future, the Delegate of the Registrar maintained that this intention was not sufficient to justify the exercise of her discretion to allow the trade mark to remain on the Register. The trade mark was therefore removed for non-use.
Take away
Registered owners of trade marks seeking to refute non-use applications in Australia should ensure that their evidence is specific to use in Australia or, where use cannot be provided, that any claim to a future intention to use the trade mark is supported with as much information as possible in order to persuade the Delegate of the Registrar to exercise their discretion not to remove a trade mark.