Reduce minimum period for taking non-use action

Issue summary

The Productivity Commission (PC) review of Australia's IP arrangements in 2016 found that the trade marks register is 'cluttered' with trade marks that are not being used; thus, potentially reducing the scope for legitimate users who want to use similar marks.

To overcome cluttering of the trade marks register, the PC recommend (Rec 12.1) reducing the 'grace period' for which trade marks can't be challenged on the basis for non-use. Removal of a trade mark for non-use isn't automatic. It requires a party to seek removal of a mark from the register through IP Australia, with a hearing if the non-use action is contested. The government accepted the recommendation.

The proposed amendment will reduce the minimum period for allowing a non-use action from five years to three years beginning from the date the particulars of the trade mark were entered into the Register.

Comments

This item is included in the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 which received Royal Assent on 24 August.