USE IT OR LOSE IT

By IP Team

Trademark registration is a fabulous start. Don’t risk removal of your trademark from the Australian Trade Marks Register for NON-USE!

This can happen to you. It happened to The Coca-Cola Company (yes the American conglomerate) in relation to their Australian trademark depicting a lemon with a cartoon winking face which is displayed on Coca-Cola's product Hubert's Lemonade in relation to non-alcoholic beverages.

Garth Stanley (not an American conglomerate) applied for a similar trademark and the Coca-Cola trademark was an obstacle to registration. He applied for the Coca-Cola trademark to be removed for non-use. If successful, this would remove the obstacle to registration of his trademark.

In Australia a trademark can be removed from the Register if it has not been used by the owner (or authorised user) for a continuous period of three years.

In order to retain its registration Coca-Cola provided evidence demonstrating that the Hubert’s Lemonade product was promoted in the US and Canada and it argued that Hubert's Lemonade was offered for sale by a convenience store in New South Wales, however, the evidence was undated or related to sales after the relevant period. Coca-Cola also argued that it intended to use its trademark in the future. It was open to the Australian TradeMarks Office to exercise its powers of discretion and allow the Coca-Cola trade mark to remain on the Register. The argument turned out to be a lemon.

Our lesson is to use your registered trademark or lose it. I always recommend trademark owners collect and retain evidence of use of their trademarks such as advertising material or receipts to defend against possible future non-use proceedings, if required.