19A.1. Use of a trade mark generally

Trade mark law concerns the trading of goods or services in commerce.  A trade mark is a sign ‘used, or intended to be used’ to distinguish goods or services dealt with or provided in the course of trade (section 17). As such, ‘use’ is a concept fundamental to trade mark law.

Whether a trade mark has been used is relevant to a number of questions, including:

• whether a trade mark is, or will become, capable of distinguishing

• whether there has been honest concurrent or prior use of a trade mark

• who is the owner of a trade mark

• whether a trade mark should be removed from the Register for non-use

• whether a trade mark has been infringed

• whether a defensive trade mark should be registered

Provisions relating to use of a trade mark are contained in sections 6, 7, 8, 17, 27 and 228 of the Act. Importantly, a significant body of principle has also been developed in case law and decisions of the Registrar that assists in determining when a trade mark has been used.

The act of filing an application implies that the trade mark is used or intended to be used (Aston v Harlee Manufacturing Co, (1960), 103 CLR 391). However, in answering any of the questions listed above, it is necessary to determine whether in fact there has been actual use of the trade mark. In brief, for the purposes of the Act, use must be:

i. as a trade mark;

ii. in the course of trade;

iii. Australian use;

iv. upon or in relation to the goods and/or services; and

v. by the trade mark owner, predecessor in title or an authorised user

Each of these criteria is considered below.