Is the use of variations of a trademark considered use of the trademark in Australia?

26 March, 2024

As a registered trademark owner in Australia, you might find yourself wanting to adapt your trademark for marketing purposes. This could involve modifications, additions, or combinations with other elements like colors or patterns. But can these variations still be considered use of your registered trademark?

This article explores this question and provides valuable insights for Australian trademark owners.

The Challenge of Trademark Variations

There’s a potential risk associated with using variations of your trademark. Other parties might file cancellation requests for non-use, arguing that the variations used don’t constitute actual use of the registered trademark.

A recent case, Aceto Balsamico del Duca di Adriano Grosoli S.R.L v P & T Basile Imports Pty Ltd, highlights this challenge. Balsamico requested cancellation of P&T’s “Squisito Orecchiette” trademark due to variations used, claiming non-use.

The Importance of Distinctive Elements

The good news is that the Aceto Balsamico case also offers valuable guidance. The IP Australia Trademark Office ruled that using variations can be permissible, as long as they don’t significantly alter the distinctive elements of the registered trademark.

In this case, “Squisito” was identified as the key factor in protecting the brand for the relevant goods. As long as variations retained “Squisito,” they were considered valid use of the trademark.

Key Takeaways for Australian Trademark Owners

Here are some key takeaways to keep in mind:

• Maintain the Core: Variations shouldn’t dilute your trademark’s core identity. The distinctive elements that make your brand recognizable should remain prominent.
• Double Down on Strong Words: Consider separate registration for strong word marks, even if used with a logo. This can broaden your protection in the future.
• Document Everything: Keep meticulous records of your trademark use, including variations. This will be crucial if you face a non-use challenge.

Remember: This information is for general guidance only and does not constitute legal advice. For specific situations and trademark-related queries, always seek professional legal counsel to ensure you comply with Australian trademark laws and protect your brand effectively.

Need assistance with your trademark registration? Whether you’re in Australia, New Zealand, or beyond, Maygust Trademark Attorneys are here to help. Don’t navigate the process alone – our qualified attorneys can guide you every step of the way.