Amendments to trade marks legislation relating to non-use removal applications.
As previously reported, the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (the “IP Laws Amendment Act 2018”) received assent on 24 August 2018.
While certain provisions, particularly those relating to parallel importation, came into force on 25 August 2018, the remaining provisions were to take effect from a later date of proclamation or, at the latest, 24 February 2019.
The non-use removal application amendments take effect from 24 February 2019.
There are two bases for removing a trade mark from the Register.
Under section 92(4)(a) a person may apply to have a trade mark that is or may be registered removed from the Register on the grounds that (i) the applicant for trade mark registration had no intention in good faith to use or authorise the use of the mark at the time of filing the trade mark application and (ii) has not used the mark in good faith in Australia in relation to the relevant goods/services at any time up to one month before the non-use application is filed.
Under s92(4)(b) a person may apply to have a registered trade mark removed from the Register on the ground that registered owner has not used the mark in good faith in Australia in relation to the relevant goods/services for a continuous period of three years up to one month before the non-use application is filed.
An application under s92(4)(a) may be made at any time after the filing date of the trade mark application but, prior to the amendments, an application under s92(4)(b) could only be made after a period of 5 years has passed from the filing date of the relevant trade mark.
Under the amendments, the period under s92(4)(b) for commencing a non-use removal application will be reduced from five years from the filing date of the trade mark to three years from the date the trade mark becomes registered. The three years period will be calculated from the date the particulars of the trade mark are entered into the Register.
This change will only apply to non‑use removal applications against trade mark registrations filed on or after 24 February 2019. Non-use removal applications against trade mark registrations with a filing date before 24 February 2019 will still be subject to the five years’ time frame under the existing provisions.