Validity of Australian registered trade marks hinges on suitable ownership
Usually, a trading entity—a company that actively uses a brand—should be the applicant and owner of a registered trademark application. When the structure is more exotic via holding companies, group structures, licensing companies, significant care must be exercised. The consequences are that when the brand is asserted, athird party may seek to remove the registrations for non-use, and in some cases may be successful.
Who owns a brand? Whoever controls its use, either by direct trade or licensing. Simple! But there can be catastrophic pitfalls if brand owners fail to consider brand ownership and use when applying for registered trade marks, and become casual with this simple concept.
Lessons for applicants: Ownership has to be connected to use, directly, or via rock solid documented licensing agreements. With a popular brand name, you can expect to be challenged via a non-use removal application, so anticipate this situation and adjust your posture accordingly.
Removal for non-use by third parties
Did you know that a third party can remove your registration if you have not been using the brand for three years or more? This is a procedural attack that is cheap and easy, and shifts the onus to you, the brand owner, to substantiate ownership and use within the relevant window or risk removal.
This is in fact a mechanism routinely used to 'get around' what would otherwise by blocking registrations, opening the path to registration for a similar brand owned by somebody else for similar goods or services. The more 'in-demand' and contested your branding name, the more likely you are to face such an attack. You may not consider your registration a target, but if your registration features a popular branding element, then it could be easily become a target, as it may be cited against a later application, sometimes one operating in a different (though probably adjacent) market.
Fundamentally, trade mark registration is contingent upon ongoing use, and becomes vulnerable to removal for 'non-use'. This serves the public interest by freeing up brands that are no longer in use.
Group corporate structures
This is a special case. When a related group of companies are assessed as possessing "unity of purpose" then you will be insulated against removal. The case here is Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100, which is likely to endure as authoritative precedent as it offers such a commonsense interpretation. It's essentially the concept of implied licence within a related group structure. Many applicants will not welcome the inconvenience of working around this vulnerabiilty.
