48.15. Certificate - Use of a trade mark

Date Published

As outlined in section 105, if the registered owner of a trade mark has established, during the course of non-use proceedings, that its trade mark was used in good faith during a particular period, or was not used because of legitimate circumstances which prevented its use, it may apply to the court or to the Registrar for a certificate attesting to this.

The registered owner may notify any future applicant for removal of their trade mark of the contents of the certificate, either at the time of filing a notice of opposition against the removal or before. If the matter proceeds further and is resolved in the opponent’s favour, then the opponent is entitled (unless otherwise directed by the court or the Registrar) to have their full costs, as distinct from costs under the scale, paid by the applicant.

The inclusion of section 105 in the Act appears to have been intended to discourage undue and vexatious applications for removal of legitimately registered trade marks. However, it should be noted that such a certificate may only specify that the trade mark was used during a specific period, or that there was a justifiable reason for its non-use for that period. Therefore, the certificate would be of reduced value in a subsequent removal action unless the alleged period of non-use and the period identified in the certificate overlapped. At best, the certificate could provide proof of legitimacy of the trade mark for part of the period of alleged non-use listed in a subsequent application and, as time progressed, its value to a registered owner of a trade mark would diminish.

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