QLD What Happens to a Trademark When Company is Deregistered?

[Roundabout]

We have applied to register our company name as a trademark, but have received an initial response that it is in conflict with an existing trademark, although it is in a different but related class (11 vs 37).

IP Australia are advising that people searching for the 'product/goods' might be confused by our 'service' or consider them related. When we originally lodged the TM, we thought we would get it through with the different class.

However, we were also aware that the other Company which owns the existing Trademark, was deregistered on 30 Jun 2013.

I intend to dispute the original decision using section 44(3)(b) to request that the application be accepted on the grounds that it is proper to do so in circumstances where the other trade mark is no longer being used by another person.

Questions:

1. How can the IP still exist if the Company doesn't?

2. How do I prove the other party is not using the trademark (isn't there a 3-year rule on this)?

Adding to our pain, the existing trademark expires in January 2018. Maybe I should just wait and reapply then?

I'd be grateful for any assistance.

 

[Leonard Mancini]

You can apply to remove the cited registration via non-proceedings. They would not be opposed and that would have the effect of clearing the path for your acceptance.

Which non-use provision you avail yourself of will depend on when the cited trade mark was registered.

Also, as a side note, any IP owned by deregistered companies is owned by ASIC on behalf of the government.

 

[Roundabout]

Thanks - that was quick! The Trademark was registered 23 Jan 2008.

So I would have to pay an application fee of $250 to have a registered trade mark removed from the register for non-use?

Thanks for clarifying the ownership issue.

 

[Leonard Mancini]

Thanks - that was quick! The Trademark was registered 23 Jan 2008.

So I would have to pay an application fee of $250 to have a registered trade mark removed from the register for non-use?

Thanks for clarifying the ownership issue.

Hi,

If registered in 2008, you can use s92(4)(b) non - use procedure so long as it wasn't used in the past three years.

Not sure what the fee is but that sounds about right. As the owner is deregistered there should not be any opposition and the registration should be removed. It sounds like yours is already waiting in the wings. Depending on how long you have until a final decision is made on yours, you might want to defer your application until it has been removed.

 

[Kim Walters]

Although the existing trade mark expires in January 2018, there will be a grace period of about 6 months for the registrant to renew it.

If relevant to your circumstances, the Trade Marks Act entitles an applicant to acceptance of a trade mark if it establishes that it has prior use rights.

Generally, the first to apply for a trade mark has a stronger claim to it unless you can prove to the Trade Marks office that you had "prior use" of the mark.