Trade marks are country-specific property rights. Your ability to use and register your trade mark remains to be assessed on a country-by-country basis. In Australia, registration of a trade mark in the presence of a competing mark may be possible, but you need to show prior continuous use of your mark compared to a prior similar registration in order to demonstrate a concurrent right to registration. So, how do you achieve that?
As we adjust to the need for physical distancing, businesses are more than ever turning to the online environment to promote sales and innovate new ways of reaching and connecting with customers. Despite the current physical distancing and travel restrictions, the world has perhaps never felt more connected. That said, trade marks remain country-specific property rights, and your ability to use and register your trade mark remains to be assessed on a country-by-country basis.
In Australia, entitlement to a trade mark is based on first use – either through the act of using your trade mark in connection with the goods and services in question or by filing a trade mark application. If seeking to extend protection for your trade mark in Australia, when will prior use be enough to overcome (or avoid infringement of) a similar mark that is already registered? What use is required to maintain a trade mark registration in Australia?
In a recent decision of the Australian trade marks office involving an application for the mark for coffee and tea, in the face of prior registrations for the marks for retail services, the Hearing Officer provided the following useful reminders to trade mark owners and applicants of what constitutes sufficient use in Australia:
- Use needs to have been both prior to, and continuous with, prior similar registration in order to demonstrate a concurrent right to registration. Evidence of an isolated sale or shipment in, say, 2013, and another sale in 4 years’ time, will not generally be enough to demonstrate continuous use, although this will depend on the goods in question (eg, fast-moving consumer goods which are sold regularly, versus large commissioned items)
- That said, an isolated sale or shipment to Australia of goods bearing the trade mark can be sufficient to demonstrate entitlement and ownership of a trade mark in Australia if no prior registration exists, or to maintain a trade mark registration in the face of a non-use removal action
- Use of a trade mark on an overseas website or through social media may be considered use in Australia. However, the mere presence of a website “directed to the world at large” is not enough, nor is the mere listing of Australia as one of many countries in a drop-down menu for deliveries. However, where the website or publication is clearly directed or targeted to persons in Australia (eg, by extolling the suitability of a particular product to the Australian environment), then there is no difficulty in accepting the trade mark has been used in Australia.
Despite the temporary break in usual business operations, business owners should take time to consider how and where they are using their trade marks, and what steps are required to maintain and protect them.