A recent Australian trade mark case has highlighted the need for brand owners to use their trade marks in the course of trade, in order to avoid the risk of a third party attempting to cancel their registration for non-use.
In this case, Baxter IP was able to assist in preventing the client’s trade mark from being cancelled. We summarise the case below – but the key take away here is the importance of regularly reviewing and properly maintaining your trade mark portfolio.
Background
The case involved a specialist technology company called Braintree Communications Pty Ltd (Braintree). Braintree was the owner of the following trade mark:
Classes and specifications
Class 9: Transmission, receiving and storage equipment, apparatus and systems; including but not limited to computer software, computer hardware, macros, CD-ROMs, disks and modems; all associated parts, accessories and fittings
Class 38: Telecommunication services; telecommunication services namely short duration transaction systems used in relation to, but not limited to, payment server systems, alarm systems, security systems, surveillance systems, defence systems, lottery systems, gambling systems, telemetry systems, electronic funds transfer systems, point of sale systems, packet handling systems and transaction gateway systems
Class 42: Computer programming services; computer design services; services for maintenance and modification of computer software; computer program design consultancy services; providing access to and leasing access time to computer databases; on-line computer services
In October 2016, PayPal, Inc. (Paypal) applied for the removal of this trade mark from the Register of Trade Marks under section 92(4)(b) of the Trade Marks Act 1995.
The law
Section 92(4)(b) states that a third party can apply for a registered trade mark to be removed from the register if it has not been used in Australia during the preceding three year period.
It is important to note that the burden of proof lies with the brand owner – it is for them to provide evidence that the trade mark has been used in relation to the relevant goods and services.
Use of mark by Braintree
Thus it fell to Braintree to show that the mark had indeed been used during the preceding three years, for the goods and services listed in classes 9, 38 and 42 above.
Braintree submitted evidence of use of the trade mark on:
- a piece of technical equipment;
- its website;
- PowerPoint presentations to clients; and
- technical papers.
In certain cases, Braintree used a version of its trade mark that did not exactly match the registered device. For example, Braintree used the following variant on some technical papers:
In this case, the word “communications” had been added to the device.
The Hearing Officer found that these variations were descriptive elements and so did not affect the identity of Braintree’s trade mark.
The Hearing Officer therefore found that Braintree had used the trade mark during the preceding three years and so PayPal was not successful in having the trade mark cancelled. A great result for our client!
Narrowing of specifications
However, because Braintree’s evidence of use of the trade mark was narrower than the specification, the Hearing Officer directed that the specification be amended to read as follows:
- Class 9: Transmission, receiving and storage devices for short duration transaction networks (SDTNs).
- Class 42: Maintenance and modification of computer software, all in connection with transmission, receiving and storage devices for short duration transaction networks (SDTNs).
Conclusion
Registering a trade mark can be a first step to protecting your brand. During the three years following registration, it is important that you use the trade mark. Without use, your registration is vulnerable to removal for non use. To put simply: use it or lose it.
A few important points to consider:
- your use must be use ‘as a trade mark’;
- the use must be made by, or authorised by, the owner of the trade mark;
- the trade mark should be identical to the registered trade mark, with no additions or omissions that would affect the identity of the mark;
- ideally, you would maintain records of use so that you can evidence proper use if required;
- you should monitor your use to try to extend use across the full range of goods and services for which the trade mark is registered; and
- the requirements regarding use can vary if you are operating in territories outside of Australia.
As experts in the field of trade marks, we are able to review your portfolios in conjunction with your use and advise you on any potential risks your business might face. If there are risks, we can help you develop an appropriate strategy to remove or reduce those risks.
Non-use removal actions are a low-cost and effective strategy employed by parties to clear the way for registration / use of their own trade marks. These actions are not uncommon. Don’t think it won’t happen to you! Be pro-active and one step ahead of opportunistic third parties – these are your valuable IP assets!
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