The legal myth that we are busting today, is that once you register a trademark it’s like a diamond, it’s forever. Nope, nope, nope, sorry that is not right. Trademarks are not forever, sadly you have to renew them periodically. For most countries now it’s every 10 years, I had a client recently come to me saying, “somebody’s infringing my trademark, I had it registered ages ago, make them stop.” When I looked up the trademark, he was absolutely devastated to find that the 10 years had passed and he hadn’t paid the renewal fee. What had happened was he had moved addresses and he hadn’t let the intellectual property office know, so the renewal reminder went to his old address, and so he didn’t pay the renewal.
The other person was trading, my client didn’t have the trademark registered and in the meantime, the other guy had actually got it registered as well, so it was a complete mess. I was able to help him but it cost a fair amount of money, so unlike diamonds, trademarks are not forever. There is also an exception to the rule that they last for 10 years, the exception is if you haven’t used it in Australia it’s for the past three years, other countries have various time limits. For some countries it’s as much as five years. If you haven’t used it within that period that the law states in that particular country, your trademark can be removed from the trademarks register.
This is particularly dangerous in Australia, because in some other countries if somebody wants to remove your trademark by claiming you didn’t use it, they have to prove you didn’t use it. In Australia, they have decided, well how do you prove a negative? How do you prove somebody did not do something? It’s kind of tricky. So how it works here, is that all you have to do is have a pretty fair idea that it hasn’t been used. Then you file the legal documentation and the trademark owner has to prove that they did use it. So if somebody files a removal against your trademark, you have to prove that you did use it in Australia in the last three years, before that removal application was filed.
Not only that, but you have to prove that it was, what the courts call “genuine commercial use” So basically you used it as a trademark, you did what other people in your industry normally do with your trademark. Now if you know that somebody’s nosing around and you quickly want to start using it, sometimes that helps but it has to be genuine use.
There was this one case, the Nerit case which had to do with cigarettes. Nerit actually wanted to be called Merit but they couldn’t, which i’ll explain another time. So they registered Nerit, so that anybody else using Merit they could sue and then, to keep the Nerit trademark alive, they had to make sure they used it because that wasn’t actually their brand, their brand was Merit, then somebody applied for removal and they said, “we have used it, we sold 10 million cigarettes.” and the judge said when you take into consideration how many cigarettes normal cigarette companies sell,10 million is not a commercial sale. It’s just a sale to try and keep the trademark alive so you didn’t really use it properly and you can’t have it anymore.
So your take home is keep using your trademark, keep records of if you’ve won awards and they’ve mentioned your trademark, if you’ve done advertising campaigns, marketing, Facebook marketing, and anything that you’ve done in your business, invoices, old invoices that show your trademark, etc.With trademark use, old use is good, but also in the past few years is good so keep accurate records. Go and get yourself an external hard drive, keep everything, you never know when you’ll need it.
So in regards to the myth that trademarks are forever, they can be forever if you keep using them. My name is Cathryn Warburton, I am the legal lioness and it has been absolute fun busting legal myths with you to give your business the protection it deserves and to give you the lifestyle that you deserve. If you want to see more legal myths being busted, pop on to legallioness.com.
