• Steve Davey

If I don't use my registered trade mark, will I lose it?


If you registered your trade mark over 5 years ago, but you haven't used it in the course of trade for 3 years, then a competitor could initiate a "non-use action" to remove your mark from the register.

So what constitutes "use in the course of trade"?

This was the subject of Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939.

Dick Smith registered his OZEMITE brand on 28 October 1999.

However, he didn't get his actual product to market until 2012.

In the meantime, a competitor called Roger Ramsay started selling a competing product called AUSSIEMITE in 2001. He registered his trade mark in 2006.

Roger initiated a non-use action against Dick's OZEMITE registration at the Trade Marks Office and won.

However, Dick appealed the Federal Court.

The Federal Court decided not to remove the mark from the register.

The Judge held that "use" did not require that any goods had actually been sold or offered for sale, but there must have been an "objective intention to use the mark in relation to the goods."

During the "non-use period", Dick appeared on the TV show "The Chaser" where he wore a t-shirt featuring the OZEMITE logo. He also told a radio show that he intended to launch the OZEMITE product soon.

The judge held that Dick intended to "revive, if not maintain, interest in the OZEMITE product" and so constituted an "expression of a genuine intent to use the mark for commercial purposes." This was sufficient to establish "use in the course of trade" requirements of the Trade Marks Act.

The Judge also took into account the fact that Roger Ramsey had attempted to trade off Dick Smith's reputation in the OZEMITE trade mark.

Ramsey has indicated he will appeal to the Full Federal Court.

Take home message

If you haven't actively advertised your goods or services under your registered mark, or you haven't made a single sale of your goods or services under the mark, then you risk a non-use action by your competitor, and revocation of the registration altogether. Use it or lose it.

#trademarks #litigation

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