Sometimes a trade mark may go unused for a period of time or may not have been initially applied for with the intention that the applicant would actually use it in good faith. In such instances, action can be taken at the Trade Marks Office (instead of the Federal Court) to have a trade mark registration removed from the trade marks register. This is referred to as a Non-use Action.
A successful non-use action will result in the trade mark registration being struck from the trade marks register, possibly leaving the registered owner without any rights in the trade mark.
Non-use actions generally occur where a person has applied to register a trade mark and the Trade Marks Office has raised objection to its registration based on a similar, pre-existing trade mark registration. The owner of that trade mark application may then commence a non-use action to remove the pre-existing conflicting trade mark registration from the Trade Marks Register, which will permit the Trade Marks Office to then withdraw the objection.
To defend a non-use action, and prevent the removal of its trade mark registration from the register, the registered owner must show by submission of evidence that the trade mark (or a similar trade mark) to that which is registered has been used on the goods and/or services for which it is registered in the prescribed period. The prescribed period is five (5) years from date of application or three (3) years if the registered trade mark has been registered for more than five (5) years.
Often a registered owner will seek to defend a non-use action on the basis of evidence of use by others of its goods and/or services in relation to the trade mark. Such evidence will only be acceptable where the registered owner can show that it controlled the use by the other person. For this reason it is important to ensure that where another person is permitted to use a registered trade mark, the registered owner has a licence agreement in place to control that use and does in fact exercise control of the use of the registered trade mark.
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"Marshall Marks has recently filed a large number of trade mark applications for us and has a high level of success in terms of getting marks registered with the minimum of fuss and additional costs. They have well established processes that identify problems early on so that time and money is not wasted on problematic applications and deliver their services promptly in a courteous and professional manner. They have demonstrated a strong ability to handle a large and growing IP Portfolio in the very competitive drinks sector of the market. I would recommend them to any company that wants to get a grip on its IP."Read More >
"Marshall IP Group has been a supporter of the iAccelerate from its very beginnings. iAccelerate is a state of the art incubator for start-ups and early stage technology businesses located at the University of Wollongong’s Innovation Campus. Marshall IP Group’s CEO, Tim Marshall, has provided thorough, thoughtful and insightful contributions to iAccelerate providing informative seminars, workshops and advice for many of iAccelerate’s companies. Marshall IP Group demonstrates a commitment to the innovation agenda for Australia and the Illawarra region. "Read More >
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"Entering the world of trademarks and IP, as a means of protecting our brand both now and in the future, was met with an unclear understanding of where we could turn for assistance. Tim and his amazing team at Marshall IP Group have made the whole process a hassle free one and we confidently recommend their services to anyone wanting to add value to their brand and business. "Read More >
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