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Trade mark owners can on occasion, find themselves barred from using their own marks due to circumstances beyond their control. 

Obstacles to trade mark use can include government regulations or legislation regarding the sale of certain goods, prohibitions on trade to (or from) a specific territory or the outbreak of war or global pandemic. Given the ongoing COVID-19 crisis, IP rights holders should pay close attention.

Being unable to use a trade mark (in entirety or to a significant extent), poses a number of risks to trade mark owners with respect of collecting ‘evidence of use’ for their marks. Evidence of use includes photographs depicting use of the mark in circulation, sales figures for goods and services offered under the mark or advertising expenditure in relation to the mark. Evidence of use for trade marks is critical to the following actions. 

Obtaining trade mark registration 

If the Trade Marks Office objects an application on the basis that the trade mark ‘lacks distinctiveness’, the applicant can overcome the objection by providing evidence of use of the trade mark. This includes demonstrating significant sales figures over a 2-3-year period; sufficient to show that the trade mark has become distinctive through use.

Opposing third party trade mark applications 

Some grounds of opposition require the opponent establish it has a reputation in the relevant trade mark. Supplying evidence of use is important for establishing this reputation.

Opposing non-use removal proceedings 

A trade mark registration can be removed if there has been no use of the trade mark for a period of three years. If trade mark owners cannot supply evidence of trade mark use during a continuous three-year period, the trade mark registration is at risk of removal for non-use.

Enforcing unregistered common law trade marks against third parties 

Trade mark infringement allegations can only be made in relation to registered trade marks. Rights in unregistered common law trade marks can however be enforced by way of actions for misleading and deceptive conduct in contravention of the Australian Consumer Law. Evidence of use and reputation in a trade mark can be relevant to these actions.

De-risking 'muted marks' 

The following tips relating to evidence collection will help minimise the above risks and may prove critical in the event you (or your business) are prevented from using a trade mark.

1. Evidence of the obstacles to trade mark use 

Businesses must keep an accurate record of any external issues which disrupt normal business operations and pose a threat to trade mark use. This evidence can be used to explain why there has been limited or no trade mark use; particularly relevant in non-use removal proceedings when relying on the decision maker’s discretion to not remove the registration (notwithstanding that no use of the trade mark can be provided). 

2. Evidence of intended trade mark use 

To overcome trade mark application objections or non-use removal proceedings, evidence of intended trade mark use is valuable. The evidence should establish the business’s commitment to using the mark, and its commercial plans for utilising the trade mark. The evidence could include business or product launch plans and/or figures for any costs in preparing to use the trade mark.

3. Evidence of any publication of the trade mark

Widespread publicity of an upcoming product has been found to constitute use of a trade mark for the purposes of opposing a non-use removal action. If possible, advertising and promotional activities should continue even if restrictions on the ability provide the goods or services exist.

For further information or questions regarding how Griffith Hack can help protect your trade marks please contact us at enquries@griffithhack.com 

Author: Nicholas Baker