Many businesses register their trademarks and then tick that
task off the 'to do' list and forget about it. However, a
recent Court decision illustrates the potential dangers of not
using your registered marks enough, or using them incorrectly.
In this particular case, Optical 88 Ltd v Optical 88 Pty Ltd
and Others, the issue at hand concerned the use of the name
OPTICAL 88 in Australia (and related trade indicia) with respect to
the retail supply of optical goods and accessories, and of
Optical 88 Ltd is a Hong Kong based company which operated a
chain of stores in the Asia-Pacific region under the brand name
'Optical 88'. Optical 88 Ltd was also the owner of
registered trade marks in Australia – including the logo,
the name "Optical 88" in Chinese characters and the name
Optical 88 Pty Ltd is an Australian company that carries on an
optometry practice and business under the name "OPTICAL
The Details of the Case
Optical 88 Ltd commenced proceedings against Optical 88 Pty Ltd
for trade mark infringement. Optical 88 Pty Ltd not only defended
the proceedings, but also filed a cross-claim seeking the removal
of Optical 88 Ltd's registered marks based on non-use.
The judge dismissed Optical 88 Ltd's claim for Trade Mark
infringement and found two of Optical 88 Ltd's registered marks
should be removed from the Register on the basis of non-use.
Optical 88 Pty Ltd successfully defended the claim for trade
mark infringement on the basis that it's use of the name
OPTICAL 88 as a trade mark was a use in good faith of its name
(notwithstanding the absence of the corporate designation, i.e. Pty
Limited). In this connection use in "good faith" was
taken to mean "honest" use. The judge found it made no
difference that Optical 88 Pty Ltd has used its name in association
with additional matter or other indicia because the infringement
only arose by use of the name OPTICAL 88.
It was also found that two of Optical 88 Ltd's registered
marks had not been used in good faith in relation to the goods in
respect of which each mark was registered. Optical 88 Ltd had no
stores in Australia, but did send goods bearing the marks of third
party brands to customers in Australia and other overseas
destinations. The judge held that sending coupons with the goods
amounted to use in the course of trade in Australia –
they were part of its promotional activity, aiming to encourage
customers to use their services, and the trademark was on coupons
as a distinguishing factor. While the use was only a limited number
of times (eight) it was still enough to satisfy the use issue.
However, the issue here was that the mark was only registered for
optical goods while the relevant use in this case was for Optical
88 Ltd's retail services. The goods sold were not branded with
the mark, but rather third party brands, and therefore Optical 88
Ltd's trade mark was not being used in relation to those goods
and so the application for removal succeeded.
Further, it was held that on the day it filed the application
for registration, Optical 88 Ltd's intention was no more than
an uncertain or indeterminate possibility that it might open stores
in Australia – the evidence suggested nothing more than
Optical 88 Ltd lodged an appeal against the original findings,
however, after reviewing the facts and the original decision, it
was held there was no error in the Primary Judge's finding on
Important Lessons to Learn
· Do not become complacent with your trademark
registrations. Always audit your marks to ensure that you are using
them as registered, and in respect of the registered goods or
services. If your use has changed, you need to obtain additional
· Failure to use your mark will expose you to a removal
application. A small amount of promotional conduct in Australia may
save your registered trademark, IF that use is in relation to the
actual goods or services for which the trademark is registered.
· Think twice before commencing proceedings against
another company. In the case above, not only did Optical 88 Ltd
fail in its application, it also lost two registered trademarks and
was ordered to pay Optical 88 Pty Ltd's legal costs.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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The rumour is interesting after Australia's long held position of rejecting such a clause in bilateral trade agreements.
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