Obtaining trade mark registration is not the end of the story: the risk of non-use

The risks associated with the non-use of a registered trade mark are highlighted in a recent decision of the Full Court of the Federal Court of Australia in Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC8.

The statutory framework

In Australia, following a period of five years from the filing date, a trade mark can be cancelled on grounds of non-use if it is not being used and has not been used in the preceding three year period ending one month prior to an application for removal for non-use being filed. If a non-use application is filed, the registered owner will generally need to demonstrate relevant use of the mark in Australia in order to maintain the registration. However, in circumstances where the registered owner is unable to demonstrate relevant use of the mark or that the non-use was due to obstacles which prevented use of the mark, the Registrar (or a Court on referral or appeal) may exercise the discretion not to remove the mark...