Australian trade mark dispute - CERTIFIRED

Overview:

The recent trade mark dispute between Plus Technologies Pty Ltd and Swart & Sons Pty Ltd centered around the use and registration of the trade mark "CERTIFIRED" by Plus Technologies. Swart & Sons sought to have this trade mark removed from the register, arguing that Plus Technologies did not use it in good faith.

Trade Mark Involved:

CERTIFIRED (Trade Mark No. 2040828) - Filed by Plus Technologies Pty Ltd on October 1, 2019.

Claims by Swart & Sons Pty Ltd:

Swart & Sons filed for the removal of the CERTIFIRED trade mark, arguing non-use and lack of good faith by Plus Technologies.

Findings of the Registrar:

The Registrar examined evidence from both parties, including website and social media use, marketing materials, and user data.

It was found that Plus Technologies used the CERTIFIRED trade mark in good faith for software related to fire protection and safety. However, there was insufficient evidence of use for other types of software.

Outcome:

The CERTIFIRED trade mark will remain registered for software related to fire protection and safety. The trade mark will be removed for other software categories due to lack of evidence of good faith use.

Implications for Clients:

This decision highlights the importance of using trade marks actively and in good faith for the specific goods and they are registered under. It also underscores the need to maintain thorough records of trade mark use to defend against non-use claims.

Conclusion:

Trade mark disputes can be complex and require detailed evidence of genuine commercial use. If you have not commercially used your trade mark, we recommend doing so as soon as possible to avoid cancellation based on non use.