In brief

It’s not enough to rest on your trademark laurels: if you do not actively use your trademark in the course of trade, it can be removed on the grounds of non-use.

Well-known Australian shoe and clothing retailer and manufacturer, Aquila, recently successfully defended an attempt by a competitor swimwear retailer, Auqua Swimwear to limit Aquila’s trademark registration rights in relation to swimwear.

What you need to know

  • A trademark registration lasts for ten years from its filing date.
  • You must actively use your trademark in the course of trade. If you do not, it can be removed on the grounds of non-use.
  • Companies need to ensure that their trademark covers the specific goods and services of their business and monitor its proper use in Australia
  • Trademark owners should review their portfolio regularly to make sure that their trademarks are being used properly and should collect and record examples of evidence of their trademark in use.

Background

Madgwicks recently acted on behalf of Aquila (Opponent), the owner of the distinctive [AQUILA] trademark in relation to its belts, footwear and clothing line. On 21 April 2015, Auqua Swimwear Pty Ltd (Auqua) applied under section 92 of the Trade Marks Act 1995 (Cth) (the Act) to have Aquila’s trademark removed from its swimwear range.

Aquila was successful in convincing the IP Hearing Officer (the Officer) for the case to resist the application on the basis of her discretional powers. This decision is a timely reminder for companies to review their portfolios and ensure that their trademarks are being suitably maintained in relation to the goods and services for which they are registered in Australia.

In the case, Auqua argued that Aquila had failed to use its trademark with respect to swimwear during the three years prior to its removal application. Aquila filed a notice of intention to oppose Auqua’s removal application, arguing that it had continually used its trademark with respect to “clothing”, and that “swimwear” fell within the “clothing” category. Aquila further argued that the similarity of its trademark and Auqua’s trademark would lead to confusion in the clothing and swimwear markets, and therefore it was in the public interest to deny the removal application.

The Decision

The Officer was of the opinion that “swimwear” and “clothing” constituted two discrete categories of goods. While Aquila had adduced significant evidence to demonstrate that Aquila clothing was typically related to swimwear and that its clothes were sold in close proximity to swimwear retailers, the Officer stated that Aquila had not used its trademark with respect to swimwear.

Nonetheless, the Officer considered the following:

“That the many examples of advertising and level of detail the Opponent has provided in its evidence is impressive.”

Therefore, citing Aquila’s substantial and long-standing reputation in casual wear, in conjunction with the striking similarities between the two trademarks, the Officer opined that, given that Aquila sold its clothing in close conjunction with swimwear, the removal of Aquila’s trademark would potentially introduce trademark confusion in the Australian swimwear market. The Officer therefore considered it appropriate to exercise her discretion and not remove the challenged trademark under section 101(3) of the Trade Marks Act 1995 (Cth), even if the non-use application had been established.

Conclusion

It is critical that companies actively use their trademark in the course of trade. If this isn’t done, the trademark can be removed on the grounds of non-use.

The Officer’s decision provides strong incentive for trademark holders to consider opposing non-use applications, even in circumstances where they may not have actual use but where removal could introduce confusion into the marketplace.

If you wish to start any non-use proceeding against trademarks of others, or if your own trademarks have had non-use proceedings brought against them by third parties, contact us for assistance.

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