A low bar for 'intention to use' 6 min read
The Australian Trade Marks Office recently decided two related actions for removal for non-use against registered marks owned by Mae Watson: the first, 'Whiplash', and the second 'WHIPLASHED', both for beauty salon and beauty-related services including lash extensions.
The decisions shed light on whether an applicant can limit a removal action under section 92 of the Trade Marks Act 1995 (Cth) (TMA) to particular states in Australia and the threshold question of the 'intention to use' under s92(4)(a).
In this Insight, we outline the details of each decision and what trade mark owners can do to avoid the risk of removal actions being brought.
Key takeaways
- If, after filing a s92 TMA removal action (which requires an applicant to be satisfied, on its enquiries into use, that the owner has not used the relevant mark in Australia), it becomes clear throughout the evidentiary process or at hearing that there is some use, but only in a specific geographical location, the applicant may, in certain circumstances seek that the Registrar invoke the s102 TMA discretion, and request that the mark remain on the register but be subject to a geographical limitation.
- 'Intention to use' in a s92(4)(a) TMA removal action is a low bar. The act of filing the trade mark application combined with a positive statement by the owner confirming an intention can be enough to shift the onus to the removal applicant to show a lack of intention.
Delegate declines two related non-use removal actions
Beauty salon, Whiplash'd Pty Ltd (the Removal Applicant), brought two related removal actions against Mae Watson (the Owner)'s registered marks 'Whiplash' and 'WHIPLASHED':
- an application for complete removal (excluding WA) of 'Whiplash', brought on the basis of non-use for a period of three years in all states except WA (s92(4)(b)); and
- an application for complete removal of WHIPLASHED brought on the basis of a lack of intention to use in good faith and non-use in the relevant period (s92(4)(a)).
Action for removal of 'Whiplash'
The Owner argued that she had used Whiplash in all states in Australia, predominately in WA, in connection with lash extension services throughout the relevant three-year period, and further that the COVID pandemic was an impediment to broader use of the mark in Australia.
The Removal Applicant sought to qualify the removal action to removal except for the state of WA. The Delegate, however, considered that there is no provision in s92 for a removal application to be qualified in that manner. Section 92(4) requires that a removal applicant seek removal for all or any of the goods and/or services in respect of which the trade mark is registered in Australia (and not a part of Australia).
Section 102 provides the Registrar with a discretion to impose a territorial restriction on the registration of a trade mark where there has been no use of the mark in a particular place in Australia for a three-year period, where certain conditions are met. These include that the applicant for such an action is either the registered owner of a trade mark that is:
- substantially identical with or deceptively similar to the challenged mark,
- registered in respect of the same goods and/or services specified in the application, and
- 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.
The quirk of s102 is that it can only be invoked if an applicant has a removal action (s92(4)(b)) on foot for all of Australia. In this case, as the Removal Applicant had not invoked s102, the Delegate considered the removal action as if it applied to all of Australia. The Owner exhibited evidence of use of the mark in respect of beauty salon services in the relevant period in (at least) WA. Given that the Delegate was satisfied there was use in WA, it was unnecessary to consider whether the mark had been used outside of WA. Further, even if that Applicant had invoked s102, it had not made any arguments that it would satisfy the criteria outlined above. Ultimately, the Delegate found the 'Whiplash' trade mark had been used in the three-year period in Australia, and so, could remain on the register unamended.
Action for removal of 'WHIPLASHED'
To succeed in opposing the action against WHIPLASHED, the Owner had to rebut the allegation that, at the time of filing, she had no intention in good faith to use the mark, or show that the trade mark was used in good faith in the relevant period.
The Delegate noted that the burden on the Owner of establishing the requisite intention is not high and that the filing of a trade mark is prima facie evidence of an intention to use the mark in respect of all the services claimed. The act of filing, combined with a positive statement by the Owner (such as 'when I registered WHIPLASHED I was committed to using it' or 'I had an intention to provide services under the WHIPLASHED brand throughout Australia') was sufficient to shift the onus to the Removal Applicant to prove a lack of intention. The Removal Applicant did not cast any doubt on the genuineness or reliability of the Owner's evidence of intention to use, so the Delegate was satisfied that the intention was made out.
In terms of demonstrating actual use, the Owner provided evidence of use in the relevant period in relation to beauty services and the Removal Applicant failed to cast doubt on this evidence. The Owner also provided evidence of use of 'Whiplash' in relation to beauty salon services, and the Delegate accepted that use of 'Whiplash' constituted use of WHIPLASHED under s100(2)(a), as it was use with 'alterations not substantially affecting the identity' of the mark.
In the result, the Owner had established both an intention to use as at the filing date, and use of the mark during the relevant period, and the mark remained on the register.
Actions you can take now
- Companies seeking to limit a competitor's registered trade mark to exclude the state in which they operate should consider if they meet the criteria to invoke s102 (for instance, whether they own a similar mark on the register that is itself subject to a geographical limitation). Removal applicants face somewhat of a conundrum, in that, the initial non-use removal application would have to be framed to claim that there is no use in Australia, and the subsequent invoking of s102 could then seek to limit the registration to a particular geographical location.
- Once a company settles on branding, it should register any relevant marks it intends to use as soon as possible to avoid competing marks being entered onto the register and gaining priority.
- If a competing mark has priority on the register, a company can nevertheless consider investigating whether the competing mark is being used in all the geographical locations, and in respect to all the goods and/or services for which it is registered, to inform whether to bring a non-use action.
- Companies intending to operate Australia-wide should ensure that all relevant registered marks are being used as trade marks in all relevant jurisdictions—particularly where there are competing marks on the register subject to geographical limitations—to avoid the risk of a removal action being brought that invokes s102.