Tuesday 16 June 2020

Change to non-use period for Australian trade mark registrations

For owners of Australian trade marks filed after 24 February 2019, you will now have a shorter timeframe to commence use of your registered trade marks before they become vulnerable to an application for non-use by third parties wanting to make use of the same or similar marks for the same or similar goods or services.

The law change was contained in the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (the Amendment Act), which came into force on 24 February 2019.

The Amendment Act reduced the time for making an application for revocation for non-use under the Australian Trade Marks Act 1995 from five years to three. This brings Australian law into alignment with New Zealand’s non-use timeframes.

Fortunately, there are transitional arrangements, and the old rules will still apply to trade mark registrations filed before 24 February 2019. For:

  • registrations filed before 24 February 2019, you will have a period of five years from the date on which you filed your application before it will become vulnerable to an application for non-use
  • registrations filed on or after 24 February 2019, you will have a period of three years from the date on which the mark is entered on the register before it will become vulnerable to an application for non-use.

If you have any questions or concerns about whether your trade mark(s) might be vulnerable to an application for non-use or you want to apply to revoke a trade mark to make way for your own ability to use, please contact us. We can advise you on your legal position and recommended options.