In a previous article, we emphasized the significance of correctly utilizing trademarks to prevent non-use removal actions in Australia. However, we'd like to provide an update on this matter by underscoring the jurisdictional nature of trademark use. To maintain a registered trademark, owners must ensure that their trademarks are actively used within Australia to avoid potential removal.
This aspect was prominently highlighted in a recent decision by the Australian Trade Mark Office, notably in the case of The Coca-Cola Company v Garth Stanley [2023] ATMO 3 (referred to as the "Coca-Cola case").
One circumstance that can render an Australian trademark registration susceptible to non-use removal is when the mark remains unused within Australia by the registered owner for an uninterrupted period of three years (concluding one month before the removal application is submitted, known as the "relevant period").
In the Coca-Cola case, Mr. Stanley sought to invalidate Coca-Cola's trademark registration (the trademark) for non-use, specifically concerning "non-alcoholic beverages."
Coca-Cola responded by presenting evidence demonstrating the promotion of the trademark in the United States and Canada. However, upon scrutiny of the evidence, the Delegate of the Registrar determined that it was unclear whether the promotional efforts were directed at Australian consumers. Additionally, Coca-Cola was unable to provide supporting evidence, such as invoices, to establish that the goods covered by the trademark were imported into or sold in Australia during the relevant period. Consequently, it was established that the trademark had not, in fact, been used in Australia during the relevant period.
Despite Coca-Cola arguing that it maintained an ongoing interest in the trademark and had intentions to sell goods under the trademark in Australia in the future, the Delegate of the Registrar maintained that such intentions alone were insufficient to justify her discretion in allowing the trademark to remain on the Register. Consequently, the trademark was removed due to non-use.
Key Takeaway
Trademark owners who have registered trademarks and wish to counter non-use applications in Australia should ensure that their evidence specifically pertains to usage within Australia. In cases where usage evidence cannot be provided, any claims regarding future intentions to use the trademark should be substantiated with as much information as possible. This approach aims to persuade the Delegate of the Registrar to exercise discretion in retaining the trademark, thereby averting its removal.