Is Australia's Trade Marks Register "Cluttered"?

In trade mark terms, “cluttering” is essentially a reference to overcrowding. The core issue is whether the Register and consumers are compromised by trade marks remaining registered when they have not been used for three years (and/or may never have been used).  In June 2019, the Office of the Chief Economist (the body charged with assisting IP Australia in relation to economic issues (specifically data and advice to facilitate IP policy decisions) released a research paper on this topic.

As a concept, “cluttering” has been bandied about for decades and this report is an interesting contemporary examination of the issue from the Australian perspective, following similar analyses conducted overseas, in the UK and EU in particular.

The OCE concluded that the relatively small numbers of unused marks which are an impediment to registration, coupled with the effective non-use cancellation procedures open to trade mark applicants faced with objections based on such marks, mean that cluttering is not a serious issue here. This is likely to discourage IP Australia from proposing changes which would see evidence of use requirements for maintaining trade marks more closely aligned to those in the U.S.

Here’s a link to the report:

https://www.ipaustralia.gov.au/sites/default/files/reports_publications/does_trade_mark_cluttering_exist_in_australia.pdf

For reflection...

In spite of the OCE data, in practice, encountering objections based on prior trade marks owned by others is common during the trade mark registration process. Clearly, the risks are proportionate to the numbers of third party registrations and applications. Applicants need strategic advice about the available options and exercising those options incurs expense, uncertainty and delay. Should there be more effective mechanisms for having objections reviewed during the official examination phase?

Should the “Statement of User” requirement under the pre-1995 legislation be reinstated?

Is a ten-year renewal period too long?

Could the administrative cost of introducing express “proof of use” provisions for maintaining trade marks through the 10 year period be less burdensome than envisaged by the OCE?

Should the legislative provisions concerning prior conflicting marks be interpreted less onerously in practice?

Would this see applicants facing fewer official objections and a greater onus on trade mark owners to monitor and safeguard their rights?