Use it or lose it: Proposed changes to shorten the Intention to Use Period for trade marks in Australia

At present a trade mark owner has five years from the date of filing a trade mark application to commence use of the trade mark, and during which the trade mark cannot be removed on the basis of non-use (Intention to Use Period).

In response to recommendations proposed by the Productivity Commission on intellectual property laws, the Federal Government recently released the draft Intellectual Property Laws Amendment (Productivity Commission response Part 1 and other measures) Bill (Draft Bill), to amend the non-use use provisions of the Trade Marks Act 1995 (Cth). It is likely these changes will come into force.

The proposed change aims to reduce the Intention to Use Period from five years to only three. The acceptance of this provision will mean businesses will need to take real steps towards implementing use of the trade mark within three years (instead of five).

Non-use actions can result in your trade mark being removed from the register if your mark hasn’t been used in Australia within a three year period ending one month prior to the filing of the removal action.

Practical considerations

If the Draft Bill is passed by parliament, which is likely, there will be a period prior to the legislation coming into force during which the old Intention to Use Period will still apply.

Accordingly, we recommend any businesses considering launching a new product or service into Australia within the next five years, strongly consider filing a trade mark application for the trade mark prior to these provisions coming into effect.

Trade Mark applications filed prior to the commencement of the legislation will receive the current five year Intention to Use Period whereas trade mark applications filed after the amendment commences will receive only three years.

Benefits of filing before the new law commences:

  • you receive an extra two years protection from non-use actions. This is particularly advantageous if you do not intend to use the mark in the first few years of it being registered or if you want to secure your rights while establishing distributorships in Australia;
  • the extra two years will provide more flexibility to expand your business at your own pace so you don’t have to use the trade mark before your business is ready; and
  • it may reduce costs associated with non-use actions (e.g. legal fees and document filing fees): it’s more likely a five year grace period will give you ample opportunity to commence use of your trade mark and therefore not be engaging in non-use proceedings.

If you have further queries about the proposed amendment and how it may affect your business, please contact Mark Metzeling or our Intellectual Property team.

This article was written by Mark Metzeling, Special Counsel – Commercial and Yanery Ventura, Law Clerk – Commercial.