Use It or Lose It – High Court Highlights Importance of Using Trade Marks

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When a business registers a trade mark, a sigh of relief occurs as you now have a Registration Certificate confirming that you own the trade mark and no one else can use it.

However, a 2023 High Court case reminds trade mark owners that if you do not use a trade mark in a continuous, relevant manner, an opponent can lodge an application to remove your trade mark.

Seven Network (Operations) Limited v 7-Eleven Inc [2023] FCA 608 [2] pitted two well-known brands against each other over the use of a ‘7NOW’ trade mark. Seven Network has stopped using their 7NOW logo in 2011 and shifted to use ‘7Plus’ on their websites and stations. Although a website still existed for 7NOW.com.au, this merely redirected a consumer to the 7Play website.

7-Eleven used this opportunity of non-use to their advantage and lodged an application to remove Seven Network’s trade mark. 7-Eleven uses a mark similar to ‘7NOW’ overseas and saw the opportunity to bring this to Australia.

Although appealed to the High Court, Seven Network was unable to convince the Judges that they had continued use of the ‘7NOW’ trade mark. The case highlighted the fact that single, isolated use of a trade mark in a domain name is unlikely to be sufficient evidence of use of a trade mark. Perhaps if a website was combined with other more prevalent usage that could overcome the issue. But a website domain alone, particularly one which redirects to another site, will likely be insufficient to protect a trade mark.

Unlike other countries, Australia does not require any proof to IP Australia that you are actively using your trade mark. For instance, the USA requires you to show actual use of your mark 5 years after registering, otherwise they will remove your mark from their register. But just because IP Australia does not remove your trade mark, this does not mean that other applicants cannot file to remove the trade mark themselves.

IP Australia allows an applicant to file an application for removal or cessation of protection of a trade mark for non-use. If the mark was registered before 24 February 2019, at least 5 years must have passed before the application can be made. If the mark was registered after 24 February 2019, then at least 3 years must have passed.

An applicant can file to remove the entire trade mark, or just partial removal. Partial removal would mean that just some of the nominated goods and services would be removed. This means that a company could maintain their trade mark over their main line of products, but if they have the trade mark over other items which they do not sell or are associated with, an application could be made to remove these items.

The best way to avoid losing your trade mark is to continuously and openly use the mark for all the products or services which you have it registered. If you have further questions or concerns about trade mark use, contact the FC Lawyers team today.

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