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Flaunt It If You Have It

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Flaunt It If You Have It

Section 46 of the Trade Marks Act 1976 stated that a trademark can be removed from the Register if:
1. It was registered without intention of good faith; and
2. The trademark was not in use in good faith one month before the application date and up to three years of the registration date.

This Section was discussed in the case of Oishi Group Public Company Ltd v Liwayway Marketing Corporation [2015] 2 CLJ 1121, whereby Oishi has produced evidence that Liwayway has not been using the trademark “OISHI”.

Unlike the lower courts’ decision where they accepted Oishi’s survey report as evidence, the Federal Court decision held that the survey report was not according to the Whitford guidelines for the standard on surveys for trade mark matters. The court referred to the case of Imperial Group Plc. v Philips Morris Ltd & Anor [1984] RPC 293 whereby it contained a very long list of criteria, among which is:

“The party relying on the survey must give the fullest possible disclosure of exactly how many surveys it has carried out, exactly how those surveys were conducted, and the totality of the number of persons involved, because otherwise it is impossible to draw any reliable inference from answers given by a few respondents”.

Hence, it can be seen from the case that despite the claim of non-use by Liwayway, the Court will follow a strict application of the rule to establish non-use.

Ultimately, trademark registration is extremely important. Registering your trademark from the beginning will mean that your rights are exclusive and exclude other parties who claim ownership on the mark that you have registered.


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