First-to-File and First-to-Use elements in each recognized groups of APAA

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1 First-to-File and First-to-Use elements in each recognized groups of APAA Background for discussion While each country has developed its own trademark systems based on either first-to-file principle or first-to-use principle, we note that there is a growing tendency in many countries to complement the weakness of one system by borrowing the introducing the elements of the other. We note that this tendency can be witnessed in many recognized groups of the APAA. In Korea, for example, there is a tendency to lean towards the first-to-use principle under certain circumstances, for example by confirming intent to use when applying for the trademark. Some countries, although small in number, require the evidence of actual use upon filing of a trademark application, while other countries do not. We believe that most APAA recognized groups increasingly tend to supplement the element of the first-to-use, in addition to the traditional principle of the first-to-file. Thus, we would like to check how the first-to-file doctrine and the first-to-use doctrine supplement each other in various APAA recognized groups. 1. Trademark Act, Basic Principle First of all, we would like to review which of the two doctrines, namely, first-to-file and the first-to-use, your jurisdiction has adopted, and how it is currently evaluated. (1) The-first-to-file and the first-to-use Which of the first-to-file and the first-to-use is adopted by your Trademark Act, in relation to the occurrence of a trademark right? (This is Chart Question No. 1(1). Please mark F if you are a first-to-file jurisdiction and U if you are a first-to-use jurisdiction in the appropriate section of the Special Topics Chart.) Australia has adopted a first-to-use doctrine derived from English Common Law. The Trade Marks Act 1995 does allow for applicants to register trade marks without prior use, provided that there is an intention to use the mark. When applications for the registration of trademarks similar or identical to each other compete, which of the first-to-file and the first-to-use is adopted by your Trademark Act? During the examination of competing applications for substantially identical or deceptively similar trade marks, the first filed application will prevail and will be raised as a citation objection against the second filed application. 1/7

2 (2) Actual evaluation on the first-to-register and the first-to-use How does your trademark industry generally evaluate your country s system of the Trademark Act? Is it positive or negative? What is the ground or reason for such evaluation? (This is Chart Question No. 1(2). Please mark Y if positive, and N if negative in the appropriate section of the Special Topics Chart.). The trade mark industry in Australia evaluates our trade mark system positively. A trade mark registration has high value since there are strong enforcement provisions in Australia. If the evaluation on the system of your Trademark Act is negative, what efforts have your country made to remedy such a negative assessment?. 2. Confirm on the Use of a Trademark Regardless of whether your Trademark Act adopts the first-to-file or the first-to-use basically, some countries confirm whether an applied-for/registered trademark is used or not. Thus, we would like to discuss how each country confirms whether an applied-for/registered trademark is used. (1) Principle used in confirming the use of a trademark Does your jurisdiction adopt any system of checking the use states of a trademark? If so, what is your checking system from the following examples. (a) Submission of use evidence (b) Checking the intent to use (c) Both (This is Chart Question 2(1). Please mark Y if you have any checking system and N if you do not. For Y jurisdictions, please additionally mark how the checking system operates by additionally indicating (a), (b) or (c) from the above examples. Therefore, the marking for Y jurisdictions should look like Y(a) or Y(c) in the appropriate section of the Special Topics Chart.) There is no requirement to submit evidence of use/intent to use in Australia. Based on what provision, and how, is such principle provided for in the Trademark Act or the Trademark Examination Guideline? 2/7

3 (2) Submission of use evidence (for Y(a) country which selected submission of use evidence in Section (1)) In which stage of the following is use evidence requested to be submitted? (i) Filing, (ii) examination, (iii) registration, (iv) upon the lapse of certain period after registration, (v) renewal (This is Chart Question 2(2). Please mark F if use evidence is requested upon filing, E if requested during examination, R if requested upon registration, R+ if requested after lapse of certain period after registration and RR if requested upon renewal.) If use evidences are requested to be submitted in a specific stage, which evidences are submitted in general? How strictly are the evidences examined? Is use evidence required for all of the designated goods? If not, is it sufficient to submit use evidence for one product per class or code of similar goods? What sanctions are imposed on a failure to satisfy a request to submit use evidence? What sanctions are imposed on the submission of false use evidences? (3) Confirmation on intent to use (for Y(b) country which selected confirmation on intent to use in Section (1)) In which stage from application to registration is confirmation on intent to use requested? Is confirmation on intent to use requested in every case or in certain cases? Is use evidence requested to be submitted upon the lapse of certain period after the confirmation on intent to use is made? Or, is it sufficient to submit a declaration of use only? In addition, in case a declaration of use is submitted, is it required to submit supporting documents? Is the declaration of use required for all of the designated goods or is it sufficient to submit the declaration of use for one product per class or group/code of similar goods? (This is Chart Question 2(3). If the declaration is required for all designated goods, please mark Y, if not, please mark N in the appropriate section of the Special Topics Chart.) 3/7

4 What sanctions are imposed on a failure to satisfy a request to make confirmation on intent to use? Does it serve as a ground for refusal or invalidation of the trademark? When requested to make confirmation on intent to use, is there any alternative method other than the submission of declaration of use, such as divisional application? What sanctions are imposed on the submission of false declaration of use? 3. Protection of Non-Registered Trademarks in use Basically, a country which adopts the first-to-file does not grant protection to non-registered trademarks. However, in certain cases, such trademarks are also granted protection upon introducing the element of the first-to-use. Thus, we would like to discuss the protection of non-registered trademarks. (1) Protection of well-known trademarks If a non-registered trademark is widely used and goodwill is formed thereon, thereby becoming a well-known mark, does your trademark law allow enforcement of the nonregistered well-known mark, beyond merely preventing others from registering the same or similar mark? (This is Chart Question 3(1). Please mark Y for yes or N for no.) The Trade Marks Act does not provide a right of protection to unregistered trade marks no matter what reputation may reside in the mark. However, a party may oppose the registration of a trade mark application based on its reputation in Australia if as a result of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion. Are remedies available under the unfair competition laws or other laws, other than the Trademark Act? Yes, there are remedies available under the Competition and Consumer Act (2010) in relation to conduct that is or is likely to mislead or deceive consumers as well as under the common law tort of passing off. (2) Protection of unregistered trademark that is known only in foreign countries Under your trademark law, is there any mechanism to protect a trademark that is not registered in your country and known only in foreign countries? (This is Chart Question 3(2). Please mark either Y for yes and N for no.) There are no mechanisms for the protection of unregistered trade marks with a foreign reputation. 4/7

5 (3) Acquisition and loss of distinctiveness acquired through use Does your country have a system under which a trademark having no distinctiveness is granted registration, if it acquires distinctiveness(secondary meaning) as a result of being used extensively for a long time? (This is Chart Question 3(3). Please mark either Y for yes or N for no.) Australian trade mark law does have a system that allows prima facie non-distinctive trade marks to be registered. If a trade mark owner can show evidence that the trade mark has acquired a secondary meaning (through use of the trade mark in Australia), the Trade Marks Office will allow the trade mark to proceed to acceptance. On the contrary, if a trademark loses distinctiveness due to extensive use after being registered, how is it handled? It will depend on the circumstances. However for example, assuming that the trade mark has become descriptive for goods/services provided, the Trade Marks Act allows for a person to apply before the Court to remove a trade mark registration as a result of loss of secondary meaning. (4) Prior Use If your unregistered but prior-used trademark conflicts with another s registered trademark, will your country grant you a legal right to the continued use of your trademark? (This is Chart Question 3(4). Please mark either Y for yes or N for no.) Yes, a trade mark can be registered if the owner can demonstrate evidence of prior continuous use of the trade mark. What are the requirements for the acknowledgement of such a prior-use? The owner must establish that the use of their trade mark was prior to the registered mark. The owner must also show that the mark has been used continuously until the priority date of the application. 4. How Non-Used or Improperly-Used Trademarks are treated If the submission of use evidence is not requested even after a trademark is registered, there is a concern that the management of the trademark may be inadequate due to non-use or improper use. Thus, we would like to review what sanctions are imposed on a trademark not used or improperly used, despite registration, in each country. (1) Non-use cancellation action Does your country have provisions against a registered mark not used for a certain period? Yes in Australia, a third party can request a cancellation action against a trade mark based on non-use. 5/7

6 What is the minimum years of non-use in order to successfully cancel a registered trademark? (This is Chart Question 4(1). Please mark the minimum years in number (e.g., 3 if you require 3 years of non-use and 5 if you require five years of non-use in the appropriate section of the Special Topics Chart.) The minimum period of non-use is 3 years. The cancellation action can only be made from 5 years after the registration date. In a non-use cancellation action, does the trademark owner bear the burden of proving use of the registered mark? (This is Chart Question 4(2). Please mark Y for yes and N for no in the appropriate section of the Special Topics Chart.) For N countries where the petitioner, rather than the trademark owner, bears the burden of proving non-use of the mark, please briefly comment on how such non-use can be effectively proven in your jurisdiction. The trade mark owner does have the burden to demonstrate that use has in fact occurred in Australia during the period in question. In addition, following the filing of the cancellation action, the trade mark owner would have to officially oppose the cancellation action if it wishes to maintain its registration. In terms of the evidence required, the owner has to demonstrate that the mark is used in Australia (by any party in Australia) in relation to the goods/services under the registration. If the owner can only provide evidence for some goods/services, then the goods/services not used could be removed from the scope of the registration. Further, in the event that the trade mark owner has not used the mark in Australia, they may still successfully overcome the cancellation action if they can provide exceptional reasons for not using the mark. Is the validity of the use evidence of a registered trademark limited to the exact identical form of the registered trademark that was used? (e.g., in case of a trademark consisting of a device and word, or a combination of local and foreign letters, only a part of the trademark is used) A trade mark owner is protected for identical use or use that does not substantially affect the identity of the trade mark as registered. (3) Improper-use cancellation action Does your country have provisions that prevent the improper use of a trademark, such as using a changed/modified version of a registered trademark after its registration? (This is Chart Question 4(3). Please mark Y for yes and N for no in the appropriate section of the Special Topics Chart.) We do not have any specific provisions preventing changed or modified use. If so, what are the requirements for and effects of such request for cancellation? 6/7

7 (4) Exercise of a trademark right of non-use trademark Please indicate if your trademark law provides remedy for injunction ( I ), compensation of damages ( D ) or criminal action ( C ), based on a registered trademark that was actually not used. (This is a question under Chart Question 4(4). Please list the abbreviation of all available remedies. For example, if your jurisdiction provides all three remedies for injunction, damages and criminal action, indicate I,D,C. If only damages claim is allowed, indicate D in the appropriate section of the Special Topics Chart.) The owner of registered but unused trade mark can take an action for trade mark infringement. However, if the mark has not been used for a continuous period of 3 years or more and provided 5 years has passed since the date of registration, the defendant may file a counterclaim for cancellation of the mark for non-use. If the infringement action is successful, the registered owner may obtain an injunction but is unlikely to be able to obtain damages due to the non-use of the registered mark. A criminal action for falsifying a trade mark is also available to the registered owner but such actions are rare. Is it legal in your jurisdiction for a person to exercise a trademark right that was acquired based on bad faith and, without a genuine intent to use? If not, is it restricted, on the ground that there is a ground for invalidation? There are grounds on which a trade mark can be revoked if there wasn t genuine intent to use the mark or if the registration was made on bad faith. What are other disadvantages in exercising a trademark right, based upon a trademark that has not been used? The other main disadvantage in not using a registered trade mark is that the owner cannot rely on their reputation of the trade mark when opposing a trade mark application that is substantially identical to or deceptively similar with the mark. 5. Others What elements of the first-to-use practice are adopted by your Trademark Act to supplement the first-to-file system? Whilst providing evidence of use of the trade mark is not required when filing a trade mark in Australia, it may be required if there is a need to demonstrate a secondary meaning of the trade mark or to show that the applied for trade mark was used before an earlier similar trade mark on the Register in order to obtain registration on the basis of either honest concurrent use or prior continuous use. What elements of the first-to-use practice are being discussed to be introduced to your Trademark Act? 7/7