Thinking outside the box
Protecting registered software trade marks in Australia

Practitioners working in brand protection and trade mark law are very familiar with applications to remove trade mark registrations on the basis of a lack of intention to use or lack of use.

Removing disused registered trade marks from the register is in the public interest, according to Andrew Sykes, author of Australian Trade Mark Opposition Law , 2^nd ed, 2019.

The register should not be a graveyard of trade marks no longer living before the consumers eyes.  Instead, the integrity of the register should be maintained by accurately reflecting the current marketplaceⁱ, he argues.

Where there is a lack of intention to use or lack of use in a designated three-year period, trade mark registrations must be removed under s.92 of the Trade Marks Act 1995 (Cth).

Such removal applications also often serve a number of valuable private interests such as

• Clearing the register of registrations that may act as obstacles to pending applications for registration.
• Enhancing existing brand monopolies by clearing the register of old registrations that cover a similar space to a trade mark or trade marks held by the party filing the removal application (i.e. may be similar trade marks registered in relation to similar goods or services).
• Providing a limited defence to pecuniary relief in the circumstance where the registration that is the subject of the removal application is used as the basis of an infringement action.ⁱⁱ

Many such removal applications are brought under s.92(4)(b) of the Trade Marks Act 1995 (Cth) on the basis of their being no use of the trade mark in a designated 3 year period.

How does the Australian Trade Marks Act 1995 (Cth) apply to software developers operating in a global marketplace?  

When brought under such a section, the primary question to be asked before any discretionary considerations are taken into account, is ‘has the mark been used in Australia in relation to the goods or services in the relevant period?’.

The software market has developed a long way since software came on a disk or multiple disks in a box purchased from a store.  In fact, you may need to think hard to remember the last time you bought software in box.

It may be much easier to remember the last time you obtained software online.  And in so obtaining the software, you may have downloaded it onto your device or you may have been provided it ‘as a service’.

The later method of delivering software, known as SaaS (Software of a Service), has become commonplace as sufficiently fast internet connections amongst consumers has developed.

As a result of this progress the software market, and particular the SaaS market, can seem borderless or stateless in the eyes of the consumer.  This in turn has raised an interesting issue for software developers.

In order to avoid removal for non-use a trade mark must be used in Australia.

How can an Australian software developer protect its trade mark from an application for removal?

The first and most obvious answer is that the software developer should target Australian consumers, such as through utilisation of ‘.au’ domain names and make sales to consumers located in Australia (preferably in $AUD).ⁱⁱⁱ

However, what if the software developer’s business model is more globally focused? What if they essentially want to export their SaaS to the world?  How can their marks be protected from non-use in Australia?

The answer to this last question was highlighted in the decision of McNeil v. Fabric8 Technology Pty Ltd.  In that case a trade mark registrant defending against removal used its trade mark in relation to SaaS.  It provided such services from Australia and promoted them online.  However, one of the few pieces of evidence that it relied upon to defeat removal involved responding to a customer query from New Zealand.  The hearing officer held that the promotion to this customer in New Zealand qualified as export use under s.228 of the Trade Marks Act 1995 (Cth).^iv

S.228 of the Trade Marks Act 1995 (Cth) sets out circumstances in which the application of a trade mark in relation to goods or services in Australia for export outside Australia will be deemed to be trade mark use in Australia. Traditionally, this deeming section would appear to have most obvious use for goods labelled in Australia for export. However, this innovative application of the section to online services in McNeil could well be lifesaver to many software developers with an international market focus.

The message from McNeil v. Fabric8 Technology Pty Ltd

The take home message from McNeil v. Fabric8 Technology Pty Ltd is that the concept of trade mark use and the effective management of Australian registered trade marks must take into account the distinctive nature of the industry in which the trade mark is so used.   One should not be quick to assume that because use of the trade mark may appear unorthodox by traditional standards that no use has occurred.

Finding evidence of trade mark use for a party seeking to defeat an application for removal is often not a straight forward task.

And it is for this reason that the detailed check list of trade mark use in the form the Typical corroborative evidence guide was developed for Australian Trade Mark Opposition Law, 2^nd edition,^v which is available from the LexisNexis eStore.

ANDREW SYKES

Barrister & TM Attorney