It is a cornerstone of trade mark law in Australia that the owner of a registered trade mark must use the mark as registered, in relation to the relevant goods and/or services the mark is registered for. That being said, it is too often the case that a brand will overlook reconsidering its Australian trade mark registrations when undergoing rebranding. As such, any trade mark registration for a logo which was obtained prior to a rebrand occurring may be vulnerable to a non-use removal application being made against it, especially in circumstances where the current trade mark is considered to be substantially different to that which was used by the brand previously.
As such, a similar situation was recently considered in Planet Plumbing SW Works Pty Ltd v Green Planet Maintenance Pty Ltd [2021] ATMO 32.
Planet Plumbing SW Works Pty Ltd (Planet Plumbing), an Australian national plumbing business, applied for the following two trademarks:
- The director of Planning Plumbing applied in his personal capacity for Trade Mark Registration No. 812026 on 29 October 1999 in relation to plumbing, hydraulic and mechanic servicespursuant to class 37
- The Planet Plumbing business then applied for Trade Mark Registration No. 1319175 on 7 September 2009 in relation to logo design services pursuant to class 42.
(collectively the ‘Marks’).
On 27 June 2019, Green Planet Maintenance Pty Ltd (Green Planet), sought removal of Planet Plumbing’s Marks, given they were abandoned by Planet Plumbing for almost a decade. Subsequently, an opposition hearing to the non-use removal applications took place on 15 February 2021.
Planet Plumbing submitted that it did not abandon its Marks but rather its Marks had undergone some minor changes to suit current advertising times, an element which it believed to be reflected by its updated trade mark, Trade Mark Registration no. 1373288 in relation to class 42 – logo design services (New Mark) which was filed on 28 July 2010.
Despite this, the Delegate found that Planet Plumbing failed to show evidence to prove Marks were in use for the same purpose for when they were applied for, and the New Mark did not cover the same goods/services as the Marks. Therefore, it was determined that the Marks should be struck off the Register.
Accordingly, this hearing highlights the importance of continually reviewing trade mark registrations, and ensuring that your brand is protected under, ideally, both word and logo registrations. It also highlights the importance of advising your trade marks attorney or lawyers when considering undertaking any rebranding in order to ensure that your trade mark registration/s are valid and enforceable, and won’t be subject to any non-use removal applications being made.
Should you require assistance in relation to registering or amending your current Trade Marks please feel free to contact Pointon Partners, Melbourne, Australia https://pointonpartners.com.au/
Authors:
David Mazzeo David.Mazzeo@pointonpartners.com.au
Felicity Cara-Carson fc@pointonpartners.com.au
Stefano Mazzeo smazzeo@pointonpartners.com.au
Arhita del Fierro arhita.delfierro@pointonpartners.com.au
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