The Perils of Non-Use: Is your trade mark at risk?

If you are the registered owner of a trade mark you should take care to ensure that you are using the trade mark within the meaning of the Trade Marks Act 1995 (Cth). Otherwise, your trade mark may be at risk of being removed from the register if someone succeeds in bringing a non-use application against you. Before initiating disputes or issuing letters of demand on the basis of your trade mark rights, you should ensure that you are not exposed to this risk, lest you quickly find yourself on the back foot, defending a non-use application brought by the recipient of your letter of demand!

Domain Names at Risk for Both Franchisors and Offshore Entities

By Devin Elliott, Law Graduate 1 – The New Rules Impacting Offshore Entities Under the old rules, offshore entities with no Australian connection could register any domain name in the and name spaces, provided they held or applied for an Australian trade mark registration. For example, the owner of the registered trade mark…

Trade Marks: Even the Big can Fall

By Louise Wolf, Senior Associate In a David versus Goliath type battle, McDonalds lost its rights to the registered trade mark for Big Mac.  After being registered since 1996, the registration for Big Mac was revoked in January 2019 by the European Union Trade Mark Office.  What went so wrong?  What does this mean for…

Don’t Bank Your Reputation On Generic Terms: “COMMUNITY BANK” Removed From Trade Mark Register

The Federal Court has ordered that two “Community Bank” trade marks of Bendigo and Adelaide Bank be removed from the register due to a lack of distinctiveness and a lack of evidence of use prior to filing almost 20 years ago. This case highlights that even long registered trade marks consisting of common terms may be at risk if they were not sufficiently distinguishable from the goods and services of other traders at the time they were filed.