The recent Federal Court of Appeal decision in Cosmetic
Warriors Limited v Riches, McKenzie & Herbert LLP 1 ("Cosmetic Warriors")
revisits what constitutes "use" of a trademark in the
normal course of trade.
Knowing what constitutes trademark use is essential to maintain
a trademark on the register. While it is often said that "the
gravamen of trademark entitlement is actual use", disputes may
arise as to what constitutes use.
The decision in Cosmetic Warriors is an appeal of an
earlier Federal Court decision. Our remarks regarding the
earlier Federal Court decision, and a summary of the facts of the
case, can be found here. The Federal Court concluded that selling
a t-shirt bearing a trademark, at cost, for promotional purposes to
employees was not use of the mark in the normal course of trade and
did not satisfy the "use" requirement under sub-s. 4(1)
of the Trade-marks Act2 (the "Act").
Because the trademark owner was unable to furnish satisfactory
evidence of
