Registration will endure for ten years after the filing date of the initial application. S72(3) Trademark protection is indefinite as long as the fee is paid for renewal every 10 years  S77 prior to it’s expiry.  Although non-payment of renewal fees can result in removal of the mark from the Register under S78, pursuant to S79 of the Act,  it is open to a person to seek restoration of the mark,  providing the relevant request is made to the Registrar within six months of the expiry of the registration.

A trade mark owner will not necessarily retain the right to exclusive use of the mark indefinitely if the conditions for the registration of the mark cease to be  fulfilled.

A person may at any time challenge the validity of a trademark registration on the register under various grounds.  A trademark may be removed under S92 of the Act for non-use,  or during infringement proceedings a defendant will often  seek the expungement of a mark by questioning it’s validity.  A person who meets the definition of an ‘aggrieved person’ may make application for rectification of the Register to a Court under S85. There are also other grounds for revocation of a trade mark pursuant to S84A

If a condition or limitation imposed on a registration is contravened this may also lead to rectification pursuant to  S86 or where marks have become generic;  S24.  Rectification may be sought where an entry was wrongly made S88, one example of which would be where the entry was procured by fraud or false representations.  S88 is of broad application,  insofar as any of the grounds which could have been made in opposition proceedings can be raised to seek rectification.

Removal for non-use pursuant to can be sought where a trademark isn’t in use or intended to be used,  as the use or intended use of the trade mark in trade or commerce is one of the essential elements of the definition of a trademark under  S17 of the Act.

The requirement to establish that an Applicant seeking to have a trade mark removed from the register for non-use is a ‘person aggrieved’ has been removed.

To successfully establish non-use it must be proven that there was no intention to use the mark for a period of up to a month prior to the application,  no good faith commercial intention to use the mark when applied for, or no use of the mark for a period of three years up to one month prior to the application.  However in the latter situation an application can only be made after a period of five years has elapsed from the filing date of the registration of the trade mark.

In the recent decision of the Full Court of the Federal Court in E & J Gallo Winery v Lion Nathan Australia Pty Limited the Court heard an application for removal of a registered trade mark from the register on the grounds of non-use, even though the goods had been available within Australia during the relevant period non-use was alleged.  The Court ruled that there hadn’t been use of the trade mark within the meaning of the legislation because sales of the goods to which the trade mark related hadn’t been made with the knowledge of the trade mark owner. The only evidence of trade had been with a wholesale company in Germany.

One single sale of a product suffices to establish an intention to use a mark. It is open to the owner to show ‘authorised user’ which may be established by showing use by an unregistered assignee. The owner contesting an application for removal may attempt to show some circumstance which would excuse the non-use of the mark.

If a competitor commences using your trademark there may also be other causes of action, eg passing off and misleading and deceptive conduct. A dispute may also arise because a domain name registrant has registered a domain name. Implementing an appropriate strategy in response to one of these events is part of the trademark management strategy.

Trademark management doesn’t just refer to  preventative and active measures to protect the goodwill in trademarks under threat of infringement, removal for genericism or non-use, but also to ensure that the benefits of trade mark ownership are being fully exploited.

This may include licensing which may be a desirable strategy to enable the proprietor to exploit the mark as part of their commercial and marketing strategy.  This may involve manufacturing goods through a licensee, appointed authorised distributors and franchising.  Under the Act, a trade mark owner may choose to assign their trademark, either wholly or partially, so that the assignment will apply on in respect of some of the goods or services in relation to which the registration exists. Alternatively, the assignment may be limited geographically. S106

Online trade mark management assists in detecting counterfeit merchandise and gray market distribution of your goods/services on the web, lost revenues on account of the hijacking of website traffic, infringing domain names and a whole host of other online threats. It is important to have a good online brand management program in place to combat brand abuse on the internet.

Ensure you don’t neglect your online brand management and implement a strategy to monitor the use of your brand and associated keywords on the internet.

There is an erroneous assumption that brand management online only involves monitoring your company and trade mark/s.  When  monitoring your trade mark reputation online,  don’t confine your online watch services to detecting only uses of  your company or trade mark.

It is useful to check for other main relevant keyword phrases you regularly use.  By doing so you are likely to detect more damaging listings.  Once a page on the web has been identified containing defamatory material using keywords used by your business,  it is helpful to check the title tag of the offending page to ascertain if the page contains other search terms relevant for your site.  Having identified all keywords of interest perform a Google search to see whether they appear prominently within Google search results.

It has been well established that sending aggressive cease and desist letters as a first line strategy can have catastrophic consequences,  even where material is clearly libellous or defamatory.

There are alternatives to legal action and issuing threatening cease and desist letters which can aggravate the problem.  You could turn the offender into a martyr and result in a public relations disaster.

One of the unintended and unforeseen consequences of reflexively sending off cease and desist letters requesting information be taken down is that you could push a negative comment or post to the top of Google.   It has been known to provoke a proliferation of posts by free speech advocates accusing you of using bullying to stifle free speech.

A non-legal approach is therefore worth considering prior to contemplating your legal options.  You could contact domain owner, providing contact details are available.  It is quite possible that the domain name owner isn’t even aware of the defamatory material until notified particularly if they operate a blog or forum containing user generated comments.  Once the infringing content is brought to the owner’s attention, they may be receptive to requests to take the material down.

When contacting a domain name owner it is recommended that you  provide them with the foundation for your belief that the content is unlawful, including any evidence to demonstrate the commentary is false or rises to the level of defamation.

If  efforts to persuade the domain owner to remove the libellous content fail, there are some practical SEO techniques you can employ to displace the prominency of the page in Google search results.   You may employ one or a variety of these strategies yourself or hire an Internet reputation management company to use SEO techniques to achieve the desired effect.

Your objective is to push up your existing webpages,  create fresh content and syndicated articles. Another strategy is to add new sub-domains,  sister domains and top level domains.  Whilst Google sees sub-domains as separate sites, they carry the authority and trust of the root domain.  The relative gains achieved however will depend on the richness of the content created.  Create a few pages ensuring that they delivery fresh dynamic content so you aren’t penalised for duplicate content.   Multilingual domains count as separate pages as do .info sites, and can attain a high page rank if optimised well and used appropriately.

Your aim should be to have enough positive or neutral pages appearing within the top ten listings of google to push the page with libellous content to the second page.  Focus on the listings below the negative review and try to push them up in search through promotion or building backlinks. Use authority pages and social media avenues,  acquire a Twitter account with the keyword in the user name.

Identify who is linking to the offending page  using the  Google links operator.  Politely ask them to remove at least their link text,  although be cautious as to how you frame such approaches.

Avoid using black hat SEO techniques to downgrade the offending page.

Some website operators post rebuttals to negative commentary however this can be a high risk strategy particularly if it leads to a flaming war.