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VIC Trademark Notification of Removal Application for Non-use

Discussion in 'Intellectual Property Law Forum' started by Ed19, 11 May 2015.

  1. Ed19

    Ed19 Member

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    I have a trademark that was registered in Australia in 2005. This trademark is used as part of the brand identity for a sole trader business registered in Australia with an Australian Business Number ( ABN) which I also own.

    Recently I received a "Notification of removal application for non-use” from IP Australia filed by an applicant company from the USA who is attempting to remove or limit the trade mark under both sections 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995.

    The applicant company is also attempting to register a similar sounding trademark in the same class of goods and services (class 9) in which my trade mark is currently registered.

    I am intending to file a "Notice of Intention to Oppose" removal of the trademark and then file a "Statement of Grounds and Particulars” shortly thereafter.

    I have prepared a draft "Statement of Grounds and Particulars” (“SGP”) listing facts of how the trademark has been used since it was registered and how I intend to use the trade mark into the future, addressing sections 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995.

    I have questions relating to sections 92(4)(a) and 92(4)(b) of the Trademarks Act 1995:

    - what is the meaning of "authorise the use of the trademark in Australia” (92(4)(a)(ii)) ?

    - what is the meaning of "assign the trademark to a body corporate for use by the body corporate in Australia” 92(4)(a)(iii)) ?

    - could a body corporate in Australia be a sole trader registered business with an ABN?

    - is there a standard format for a Statement of Grounds and Particulars, or is it enough to prepare a simple numbered list of facts on the use and future use of the trademark?

    - in a Statement of Grounds and Particulars, should an item also be listed to highlight the similar sounding trademark which the removal applicant is attempting to register while also attempting to remove my registered trademark?

    Thank you in advance.
     
  2. John R

    John R Well-Known Member

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  3. Ed19

    Ed19 Member

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    Thanks, John. I read through the section of the Act, but not this manual entirely. I can see a couple of questions I've asked seem to be answered there, however it doesn't seem to describe the format for a Statement of Grounds and Particulars. Would I for instance prepare a simple numbered list of particulars or use each section of the Act as the grounds and put the particulars listed under each ground for example below?

    Ground 92(4)(a)
    that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
    (i) to use the trade mark in Australia; or
    (ii) to authorise the use of the trade mark in Australia; or
    (iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;
    in relation to the goods and/or services to which the non-use application relates and that the registered owner:
    (iv) has not used the trade mark in Australia; or
    (v) has not used the trade mark in good faith in Australia;

    Particulars
    1. ...
    2. ...
    3. ...
    4. ...
    5. ...

    Ground 92(4)(b)
    that the trade mark has remained registered for a continuous period of three years ... ... ...

    Particulars
    1. ...
    2. ...
    3. ...
    4. ...
    5. ...
     

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