A COMPARISON OF TRADE MARK USE REQUIREMENTS BETWEEN AUSTRALIA AND THE UNITED STATES
It is fair to say that a trade mark is a powerful form of intellectual property. The value of a trade mark to an owner was embodied by the Full Bench of the Federal Court of Australia in Coca-Cola Co v All-Fect Distributors Ltd  FCA 1721 at 19:
"Use 'as a trade mark' is use of the mark as a 'badge of origin' in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods ... a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else." Please see this post for some guidance on the requirement of distinctiveness.
As such, at the core of a trade mark as a strong intellectual property right is use of the mark during the course of trade. Absence of use of a registered trade mark in respect of the claimed goods and/or services for commercial purposes places the mark at risk of cancellation. The requirements for trade mark use in each jurisdiction generally differ, and failure to meet these requirements may lead to irrevocable loss of a registered trade mark. This article will outline the contrasting approaches to trade mark use requirements in the United States and Australia.
At the time of filing a trade mark application in the United States (“U.S.”), the Applicant must include at least one legal basis for filing the application. Filing a U.S. trade mark application may either be based on:
use in commerce;
a bona fide intention to use the mark in the near future in connection with the claimed goods and/or services;
a foreign application for the same mark;
a foreign registration for the same mark; and/or
an international registration for the same mark. An application can be filed on multiple bases.
For an application filed on a use in commerce basis, the mark must be used in commerce in the U.S. on all the goods and/or services claimed in the application. Use in commerce is established at the time of filing by providing the date of first use of the mark anywhere and the date of first use of the mark in commerce in the U.S. and submitting an acceptable specimen demonstrating how the mark is used in commerce.
Prior to registration of an application filed under an “intent to use” basis, the owner of the mark must file a Statement of Use (“SOU”) for the application to proceed to registration. In particular, the owner of the mark must file an SOU in respect of the all of the goods and/or services listed in the Notice of Allowance issued by the USPTO. If use in commerce cannot be demonstrated across the entire scope of the goods and/or services recited in the Notice of Allowance, a request for extension of time should be filed. The SOU or extension of time must be filed within six (6) months of the issuance date of the Notice of Allowance. Extension requests are granted in 6 month increments and a total of 5 extension requests may be filed.
A verified specimen of use accompanies the SOU. An Examiner will review and examine the SOU and specimen. It is crucial that the specimen show use as a trade mark during commerce in the U.S. Examples of acceptable specimens are product packaging tags/labels for goods, and advertisements for services. The Examiner may issue an Office Action citing deficiencies in the SOU, for example the submitted specimen/s do not show use across all the goods and/or services claimed. The applicant may file one extension request with the SOU to provide more time to overcome deficiencies in the SOU.
Regardless of which basis is claimed at filing, between the 5th and 6th year post-registration, the owner must file a Declaration of Use and/or Excusable Non-use under Section 8. Failure to file a Section 8 declaration will result in cancellation of the mark. When filing a declaration in support of use, a specimen showing the mark as used in commerce in the U.S. must be included, as well as a statement confirming that the mark has been in continuous use on all the claimed goods and/or services. If this is not the case, the classes, or goods and/or services within a class for which use cannot be demonstrated, should be deleted from the registration.
Furthermore, in order to maintain the registered mark, between the 9th and 10th anniversary of the registration date, the owner must file a Combined Declaration of Use or Excusable Non-use/Application for Renewal under Sections 8 and 9.
A word of warning. Failure to modify the claimed goods and/or services to reflect actual use of the mark in the U.S. can lead to cancellation of the entire registration, or cancellation in an entire class, on the grounds of fraud.
There are very limited circumstances upon which absence of use of the mark will not lead to cancellation of the registration. The trade mark owner must be able to show that the non-use of the mark for a period of time was due to special circumstances beyond the owner’s control and thus satisfies the excusable non-use standard. This is a significant threshold to overcome and should only be relied upon in extraordinary situations.
If a mark has been in continuous use in commerce for a period of 5 years after the date of the U.S. registration and there is no adverse decision(s) or pending proceeding(s) involving rights in the mark, the owner may file a Declaration of Incontestability. An allowed Declaration of Incontestability does not confer any additional rights per se to the registration but an incontestable registration enhances the legal presumption of registrability of the U.S. registration.
Although the ongoing post-registration use requirements for a U.S registered trade mark are onerous to a trade mark owner, this system is advantageous to the public as it serves to clear the USPTO register of marks that are not in use.
Under Australian trade mark law, there is no statutory requirement to include a basis of use in a trade mark application. There is a presumption that the mark is in either in use, or will be used during the course of trade to distinguish the claimed goods and/or services from those of other traders. Moreover, there is no obligation that the owner of the mark demonstrates use of the mark as a condition of registration, or for maintenance of the mark on the trade mark register. Therefore, a mark can remain on the Australian trade mark register indefinitely without actual demonstration of use on the claimed goods and/or services during the course of trade. Under s92 of the Trade Marks Act 1995, a person may apply to the Registrar to have a trade mark removed from the register on the grounds that the mark has not been used in respect of some, or all, of the claimed goods and/or services. The owner of the registration then bears the onus to show use, or satisfying the Registrar of the circumstances that have prevented use, and thus should remain on the register.
There are two (2) grounds for removal/cessation of protection for non-use:
The trade mark applicant had no intention in good faith to use the mark in Australia, assign the mark to another party for use in Australia, or authorise use of the mark in Australia, as at the date of application for registration. Under this ground, the non-use applicant will ultimately bear the burden of showing that the registered owner had no intention to use the mark at the filing date. This is not an insignificant task.
For a continuous period of three years ending one month before the day on which the non-use application is filed, and at no time during that period, has the registered owner used the mark in Australia or used the trade mark in good faith in Australia. Under this ground, the registered owner has a grace period of five (5) years from the filing date of the application before which the mark is vulnerable to removal. For the owner to succeed in showing use during the relevant period, the evidence of use in good faith need not be for the entire period, or be widespread across Australia. It is also worth mentioning that the registered owner may rely upon defences to non-use such as, but not limited to, regulatory approval prior to release of a product.
A non-use action can be useful for removal of a competitor’s mark from the Australian trade mark register, or removal of a registration that has been cited against the registrability of an application.
Our firm has Australian and U.S. registered trade mark attorneys that can assist you with filing and maintaining a trade mark application in Australia and the U.S.
Written by Dr. Hedie Meka - firstname.lastname@example.org