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 (s 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 governing the scope of use of a trade mark are contained in ss 6, 7, 8, 9, 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 joint judgment of the High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 at [23] (‘Self Care’) succinctly summarised the concept of ‘use of a trade mark’, citing the existing authorities: 

Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark. 

The act of filing an application implies that the trade mark is used or intended to be used (Aston v Harlee Manufacturing Co [1960] HCA 47). 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