Key Points
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Trade mark grace periods for non-use removal applications has been reduced to 3 years.
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Trade mark owners will now need to use its registered trade mark within 3 years from the date on which the trade mark is registered.
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These changes affect trade marks applied for on or after 24 February 2019
As a result of the Productivity Commission’s inquiry into Australia’s intellectual property arrangements, the initial grace period before someone can file a non-use application to remove a registered trade mark has been reduced from 5 years to 3 years.
What does it mean?
Anyone can now file a non-use application to remove a registered trade mark on the basis that the registered trade mark has not been used for 3 years from the date of registration. Previously, an application to remove a trade mark on the basis of “non-use” could only be filed 5 years after the date the trade mark application was filed.
It is important to note that the changes not only affect the length of the initial grace period, it also changes when the grace period clock starts –now being the date the trade mark is registered on the trade marks register. Previously, the initial grace period was calculated from the date the trade mark application was filed.
A trade mark owner will no longer be afforded a 5-year initial grace period to start using its registered trade mark(s). A trade mark owner will now need to ensure its registered trade mark(s) is used within 3 years from the date on which the trade mark is registered.
Changes to the initial grace period will only affect trade marks that were applied for on or after 24 February 2019. If you filed a trade mark application before 24 February 2019, and the trade mark is registered, you will still have the benefit of the initial 5-year grace period.
If you are unsure whether your business will be affected by these changes, please do not hesitate to contact us.
Post by Quincy Wong and Donna Lin