February 2019 marked the introduction of a new regime for the non-use grace periods in Australia under the Trade Marks Act 1995(Cth) (TMA).

These provisions apply to both national applications and International Registrations designating Australia.

Trade marks in Australia - filed pre- 24 February 2019 - 5 year grace period

Trade marks filed in Australia prior to 24 February have an initial grace period of five years immunity from attack under the principal non-use ground (section 92(4)(b) TMA - no use for a continuous period of three years ending one month before the date of the removal application).

The initial five year grace period is calculated from the date the trade mark application was filed.

Trade marks in Australia - filed on or after 24 February 2019 - 3 year grace period

As a result of the Intellectual Property Laws (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) trade marks filed in Australia prior on or after 24 February have an initial grace period of three years immunity from attack under the principal non-use ground (section 92(4)(b) TMA).

A significant change is that the initial grace period is now calculated as three years from the date the particulars of the registered trade mark are entered into the Register.

Non-use ground - No intention to use and no actual use - no grace period

In addition to the principal removal ground (no use in a three year period), the TMA has always provided an additional removal ground under section 92(4)(a) (No Intention to Use ground) if the following requirements are met:

1. As at the filing date of the application for registration, the non-use opponent or its predecessor in title had no good faith intention to use, authorise the use of or assign the trade mark to a body corporate for use in relation to the goods and / or services; and
2. From the date of 1 month before the application for removal was filed dating back to the rest of the life of the registration there has been no such good faith use of the trade mark in relation to the goods and / or services.

Both 1 and 2 are required for removal.  If a non-use opponent proves that only one of the requirements do not exist, removal will be refused.

There is no initial grace period in relation to the No Intention to Use ground and a non-use action under that ground can be initiated at any point.

However, as a practical matter, this No Intention to Use ground is much less common than the principal removal ground, because it is typically easy to demonstrate a genuine intention to use at the time of filing the trade mark application.

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