Australian Trademark Law: Lessons from Ozemite
A trademark is defined in the Trade Marks Act 1995 (Cth) as ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.’ Trademarks often form a significant part of a brand, and frequently represent a significant investment. Protecting trademarks from appropriation or misuse by third parties is vital to their continued use. A recent case involving the ‘Ozemite’ trademark highlights the importance of trademark use, and provides guidance as to when a trademark can be removed from the Register for non-use.
When can a trademark be removed from the Register for non-use?
As with some other forms of intellectual property, protection of trademarks is achieved by registration with IP Australia. Once registered, the owner of the mark is entitled to restrain others from using a sign that is substantially identical with, or deceptively similar to, the registered mark in relation to classes of goods or services that the registered mark is used in connection with.
It is a necessity of registration that the sign must either be used or intended to be used to distinguish goods or services in the course of trade. But what happens when a previously registered trademark is no longer in use? If dormant, the sign has ceased to satisfy a basic condition of eligibility for registration as a trademark. Yet as long as the mark remains on the Register, the registered owner may restrain other parties from use of a similar sign.
To overcome potential conflicts, the Trade Marks Act makes provision for a person to apply to have a trademark removed from the Register when the mark has remained registered for a continuous period of three years, during which time the registered owner has not used the trademark in Australia. If such an application is made, and the registered owner wishes to oppose the removal, the owner must prove use of the trademark during the three-year period.
What is trademark use? – The Ozemite trademark battle
The concept of “use” of a trademark may be broader than it first seems. The recent Federal Court case of Dick Smith Investments Pty Ltd v Ramsey