Can I simply set and forget my Trademarks?

Trademarks are generally protected for 10 years from registration.  However Trademarks are regulated by the Trademarks Act 1995 (Cth) (Act).  Under the Act, if a trademark has been registered for at least 5 years but has not been used 'in good faith' for a continuous period of 3 years, then any person may apply to IP Australia to have the Trademark removed from the Trademark Register. 

The following 2 recent cases are important in the development of the non-use provisions of the Act, E & J Gallo Winery v Lion Nathan (Gallo v Lion Nathan) and Myerton Australia Pty Ltd v Foreign Supplement Trademark Pty Ltd.  (Myerton v Foreign Supplement Trademark) 

In Gallo v Lion Nathan, the Federal Court considered whether local beer brewer, Lion Nathan, could have American mega-winemaker, E & J Gallo Winery's (Gallo) trademark over the name 'BAREFOOT' removed from the Trademarks Register for 'non-use'.   

The action started when Lion Nathan launched a new, lemon-lime flavoured, carbon-neutral beer, known as 'Barefoot Radler' and sought to trademark the name. It found that Gallo had already registered BAREFOOT as a trademark.  However, Gallo had not used that trademark in Australia for over three years. Lion Nathan applied to have the trademark removed for non-use.  The Federal Court agreed that Gallo had not used the BAREFOOT trademark for over three years and approved the removal of Gallo's trademark. 

The reason for the decision was that while Gallo's BAREFOOT wines had sold in Australia, Gallo had not been involved in or controlled the sale of that wine in Australia.  The wine was sold by someone not authorised to use Gallo's trademark.  So despite Gallo registering a trademark over the name 'BAREFOOT' in Australia, the company had not used the trademark in Australia in over three years. Therefore Lion Nathan was successful in arguing that Gallo's trademark should be removed. 

In Myerton v Foreign Supplement Trademark, an IP Australia Hearing Officer looked at whether Myerton had been using its trademark EVERSLIM in Australia and whether the registration of the trademark could be removed for non-use. Myerton had not sold goods in Australia under the EVERSLIM trademark for seven years. It had merely produced promotional material and approached several retailers about stocking Myerton goods. The Hearing Officer decided that production of promotional material and preparation for use of the trademark was not 'use' of the trademark.  Therefore the trademark had not been used in Australia and could be removed from the Trademark Register. 

So what can we take from these cases?  Well it is the age old adage of "use it or lose it": To summarise:

• Keep your trade mark current. Unused trademarks will not be protected in Australia forever.
• The Act allows any person to apply to have another person's trademark removed under the non-use provisions, if the trademark has been registered for at least five years and has not been used in good faith for a period of three years.
• Be vigilant - review your trademark portfolio or get your trade mark attorney or lawyer to. Are your trademarks being maintained through use? Develop with your lawyer or trade mark attorney strategies to ensure your trademarked goods and services are used in Australia.  This will minimise the risk of removal for non-use.
• If you want to preserve your trademark registration for your global brand in Australia you need to use the trademark in Australia. Global brands should ensure they have control over authorised users of their trademarks in Australia.

For further information or advice on this topic, please contact Russell Morley, Senior Lawyer, by email at rmorley@talbotolivier.com.au.