There is an exception to the limited costs allowed in Australian opposition proceedings we discussed in our earlier opinion piece/blog article where an opponent to non-use proceedings has furnished the removal applicant with a ‘certificate of use of a trade mark’ at or before filing the notice of intention to oppose.
In these circumstances, should the removal applicant press on with the removal and be unsuccessful, the removal opponent may be awarded costs in full, rather than an amount limited in accordance with Schedule 8.
Section 105 of the Trade Marks Act 1995 (Cth) provides that:
(1) If in any proceedings relating to an opposed application the Registrar or the court has found that:
(a) a trade mark has been used in good faith during a particular period; or
(b) a trade mark has not been used during a particular period solely because of circumstances that were an obstacle to its use;
the Registrar or the court must, if so requested by the registered owner of the trade mark, give to the registered owner a certificate of those findings.
The resulting certificate may be used to notify a later non-use removal applicant that use has been established.
While certificates of use of a trade mark are intended to deter vexatious non-use applications, such certificates reduce in value over time. This is because the certificate identifies use during a limited period – and the further away from that period the next removal application is filed, the less likely that the certificate will be relevant.
If you have successfully defended repeated attempts to remove a registered trade mark, it may be worth obtaining a certificate of use of a trade mark.
For assistance with matters relating to trade mark non-use proceedings, contact Geraldine Rimmer geraldine@mbip.com.au