In 2016, the Productivity Commission review of Australian intellectual property arrangements found a high volume of inactive trade marks. Consequently, the Commission concluded that inactive marks could be preventing legitimate users from using and registering the same or similar marks.
A recent law update in Australia has reduced the time limit in which an application for revocation for non-use can be made against registered trade marks. A trade mark registration may be revoked in Australia if the trade mark has not been used (or used in good faith) in Australia, in relation to the goods/services to which the application relates.
Before the commencement of the Intellectual Property Laws Amendment (Productivity Commissioner Response Part 1 and Other Measures) Act 2018, an application to revoke a trade mark registration for non-use could only be made five years from the date of filing of the trade mark registration, and once the mark hadn’t been in use for three years. As of 24 February 2019, an application for revocation for non-use may now be made after the trade mark has been registered for three years, calculated from the date the particulars of the trade mark registration are entered on the Register. The requirement to show three years of non-use has not changed.
It is important to note that the change will only apply to trade marks filed on or after 24 February 2019. Any trade mark filed before this date will continue to operate under the previous legislation, which requires a minimum of five years before an application for removal can be filed against a trade mark registration.
This brings Australian non-use law in line with the New Zealand non-use law, which has had a three year non-use grace period since the introduction of the Trade Marks Act 2002. The non-use grace period in New Zealand is calculated from the actual date of registration.
As has always been the case, removal of a trade mark for non-use is not automatic. It requires a party to file non-use proceedings at IP Australia. However, this change is important for owners of trade mark registrations that are filed on or after 24 February 2019 who will now need to ensure that their registered trade marks are used within three years of registration to avoid being vulnerable to removal for non-use by a third party.