Forthcoming in the Australian Intellectual Property Journal: Zombie Marks? Ceased Registrations, Failed Applications and Citation Objections under s 44 of the Trade Marks Act
By Michael Handler (University of New South Wales) and Robert Burrell (University of Western Australia)
An article will soon be publishing in the Australian Intellectual Property Journal examining the potential impact of a case currently working its way through the Federal Court, Chia Khim Lee Food Industries Pte Ltd v Red Bull GmbH (VID125/2012). One of the issues the Court is likely to have to confront is whether a mark that has been removed from the Register on the grounds of non-use nonetheless remains a “registered” mark for the purposes of s 44 of the Trade Marks Act 1995 (Cth) if that mark was on the Register at the applicant’s priority date. It appears that Red Bull will be seeking to argue that this question should be answered in the affirmative, based on a line of authority that suggests that the rights of trade mark applicants are always to be assessed as against the position at the priority date.
We argue that if Red Bull’s argument were to be accepted it would have dramatic and undesirable consequences for current trade mark practice and that these consequences would go well beyond concerns about the impact of unused marks on applicants for registration.
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