Whiplash’d - removing a trademark for non use

by Marie Khoury

An application for removal for non-use of a trademark under Section 92(4) of the Trade Marks Act 1995 (Cth) requires the applicant to demonstrate that the owner of a trademark either:

(a) has no intention in good faith (i) to use the trademark in Australia; (ii) to authorise the use of the trademark in Australia; (iii) to assign the trademark to a body corporate for use by the body corporate in Australia, and that the registered owner (iv) has not used the trademark in Australia; or (v) has not used the trademark in good faith in Australia; OR

(b) has not (i) used the trademark in Australia; or (ii) used the trademark in good faith in Australia for a continuous period of 3 years.

The Australian Trade Marks Office (ATMO) recently dismissed two related section 92 applications brought by a WA-based beauty salon, Whiplash'd Pty Ltd (the ‘Applicant’) against two registered marks owned by Mae Watson (‘the ‘Owner) – 'Whiplash' and 'WHIPLASHED’ – for beauty-related services including eyelash extensions.

The Applicant sought the following actions:

1) complete removal of 'Whiplash', brought on the basis of non-use for a period of three years in all Australian states, except WA (s92(4)(b)); and

2) complete removal of WHIPLASHED on the basis of a lack of intention to use the mark in good faith, as well as non-use in the relevant period (s92(4)(a)).

The ATMO made the following determinations, respectively:

1) a removal application under section 92 cannot be limited to specific states. However, for applications made under section 92(4)(b), a trade mark can be geographically restricted to a specified place in Australia under Section 102(1)(a)(i) if the applicant is the registered owner of a trade mark that is:

(i) substantially identical with, or deceptively similar to, the challenged trade mark;

(ii) registered in respect of the same goods and/or services specified in the application; and

(iii) subject to the condition that the use of the trade mark be restricted to a specific place in Australia,

or the Registrar is of the opinion that the trade mark may be registered by the applicant with that condition or limitation.

Section 102 can only be invoked if an applicant has a removal action (s92(4)(b)) on foot for all of Australia. Since the Applicant did not invoke section 102, the Delegate treated the removal action as if it applied to all of Australia. The Owner provided evidence that the mark was used for beauty salon services in Western Australia (WA) during the relevant period. As the Delegate found sufficient evidence of use in WA, it was unnecessary to consider use outside of WA. Even if section 102 had been invoked, the Applicant did not argue that they met the necessary criteria. Ultimately, the Delegate concluded that the 'Whiplash' trademark had been used in the 3-year period in Australia and could remain on the register unchanged.

The threshold for establishing an owner’s ‘intention to use’ a mark under section 92(4)(a) is very low. Generally, filing a trade mark application and making a positive statement of intent to use the mark are sufficient to demonstrate 'intention to use'. With respect to the 'WHIPLASHED' mark, the Delegate was satisfied that intention was made out.

Are you the owner of a registered trade mark? Consider the following to protect your mark:

• Register your mark early, to avoid competing marks gaining priority.

• Companies intending to operate Australia-wide should ensure their registered marks are actively in use across all jurisdictions (particularly where there are competing marks on the register) to prevent removal actions.

• Faced with a competing mark? Consider investigating whether the mark is being used across all jurisdictions, and in respect to all the goods and/or services for which it is registered, to inform whether an application can be made under section 94 or 102.