How a trade mark removal for non-use application works in Australia

A right that depends on use

A registered trade mark gives its owner the exclusive right to use a brand in Australia and to stop other businesses trading under it. That right is conditional. The law expects a mark to earn its place on the Register by being put to genuine commercial use. When a mark sits registered but unused, it does not sit quietly. It blocks other businesses from registering a similar name, and it can be waved at competitors in infringement threats even though the owner has no real trading interest in the name.

The Trade Marks Act 1995 (Cth) gives competitors and would-be registrants a way to clear those dead marks out of the way: an application for removal for non-use (in short, a non-use application) to the Registrar of Trade Marks at IP Australia. This article explains how the scheme actually operates: the two grounds the Act recognises, who can bring the application, what the process looks like from filing to decision, and what happens when the registered owner fights back.

The people in the process

Four sets of actors are involved in a non-use application:

• The applicant: under s 92(1) of the Trade Marks Act 1995 (Cth), "a person may apply to the Registrar" to have a registered trade mark removed. In practice the applicant is usually a competitor who wants to use the mark itself, or a business whose own application for a similar mark was rejected because the unused mark already sits on the Register.
• The registered owner: the business or individual whose mark is under attack. Their only way to keep the registration is to show the mark was genuinely used in the relevant period, or that the non-use was excusable.
• The Registrar: IP Australia runs the process, publishes the application, and decides unopposed cases.
• The courts: if an action concerning the trade mark is already pending in a prescribed court, the non-use application must go to that court instead of the Registrar (s 92(3)).

The breadth of who can apply is deliberate. An applicant does not need to show it has been commercially harmed by the unused mark, and the application can be brought against a mark that "is or may be registered". This was not always so: the Act once limited applications to a "person aggrieved", and in Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13 the High Court held that even that requirement should be construed liberally, so that a rival trader with a real commercial interest, such as its own application for a similar mark, had standing. The current wording of s 92(1) is broader still: any person may apply.

The two grounds for removal

The Act recognises exactly two grounds for a non-use application, and s 92(4) says the application may be made on either or both, "and on no other grounds". You cannot argue that the owner is a poor trader, that the mark is confusing, or that the brand has a bad reputation. Non-use, and nothing else, is the ticket.

Ground one: no intention to use at filing

Under s 92(4)(a), the ground is made out where, on the day the application for registration was filed, the applicant for registration had no intention in good faith to use the trade mark in Australia, to authorise someone else to use it, or to assign it to a body corporate for use in Australia, in relation to the goods or services covered by the non-use application. The applicant must also show that the registered owner has not used the mark, or has not used it in good faith, at any time before the period of one month ending on the day the non-use application is filed.

This ground targets marks filed to squat on a name rather than to trade under it. Note the double requirement: a registration filed with a genuine intention to use, which simply never eventuated, is usually better attacked on ground two.

Ground two: three years of continuous non-use

Under s 92(4)(b), the ground is made out where the trade mark has remained registered for a continuous period of three years ending one month before the day the non-use application is filed, and at no time during that period did the then registered owner use the mark in Australia, or use it in good faith, in relation to the goods or services in question.

Two precision points matter here:

• The three-year clock ends one month before the application is filed, not on the day of filing. The Act gives the owner that one-month buffer, so an owner who resumes use just before an application lands may be able to defeat it.
• The test is use "in good faith". That means genuine commercial use, such as selling goods or offering services under the mark in the course of trade. Token or cosmetic use designed mainly to keep the registration alive does not count.

Making the application

The application goes to the Registrar on IP Australia's approved form, the "Application for removal/cessation of protection for non-use". It must be in accordance with the regulations (s 92(2)) and include the essentials: the trade mark number, the ground or grounds relied on, the goods or services the application covers, and the applicant's details for service. IP Australia charges a filing fee for the application. The amount is set out in IP Australia's published fee schedule and changes over time, so check the current figure before filing.

One choice shapes the whole application: full or partial removal. The application can cover "any or all of the goods and/or services" for which the mark is registered (s 92(2)). Full removal cancels the registration entirely. Partial removal targets only some goods or services. For example, a business registered its logo for both clothing and handbags but only ever sold clothing. If you trade in handbags, you could seek removal limited to the handbags class, leaving the clothing registration intact. Identify precisely which goods or services you want removed. If you specify too narrowly, you may leave the registration standing exactly where it matters to you.

What happens after the application is filed

The application is published in a database maintained by the Trade Marks Office, and the opposition period runs from that publication. The Act lets any person oppose the application by filing a notice of opposition (s 96). In practice that means the registered owner, who will usually be notified and will see the publication.

Under the Trade Marks Regulations 1995 (Cth), the owner has two months from the day the application is published to file a notice of intention to oppose (reg 9.8). The owner must then file a statement of grounds and particulars setting out the basis of the opposition.

If no one opposes, or an opposition is dismissed, the Registrar must remove the mark in respect of the goods and services specified in the application (s 97). There is no discretion at that stage. An unopposed non-use application is effectively rubber-stamped once the Registrar is satisfied the application is in order.

When the owner fights back: the burden of proof

If the owner opposes, the burden of proof shifts. Section 100 places it squarely on the owner to rebut the allegation of non-use. The owner can win by showing:

• the mark was used in good faith during the relevant period, either in its registered form or with additions or alterations that do not substantially affect its identity (s 100(2) and s 100(3)(a));
• use by an authorised licensee or distributor counts as use by the owner (s 7(3));
• the mark was not used during the period because of circumstances, whether affecting traders generally or only the owner, that were an obstacle to its use (s 100(3)(c)).

That last limb is the special circumstances escape hatch. Import restrictions, protracted regulatory approval, or the owner's illness or insolvency can qualify, provided they genuinely stood in the way of trading under the mark. Commercial misjudgement, or simply deciding the mark was not worth using, does not.

If the owner successfully defends, it can ask the Registrar or the court for a certificate of use under s 105. The certificate is evidence of those findings in any later non-use proceedings, and if the owner notified the applicant of the certificate before opposing, the owner is entitled to its full costs unless the court orders otherwise. For an applicant, that is the costs risk of running a non-use application against a mark that is actually being used.

How the application is decided

Where the application is opposed, the Registrar, or the court if the matter started there, decides whether the ground is established. Even then, removal is not automatic. Section 101 gives the Registrar or court a discretion not to remove the mark even where non-use is made out, if it is reasonable to do so. That discretion might be exercised where the mark has been used in respect of similar goods or closely related services, so the owner has a genuine trading interest in the brand.

There is a middle path as well. If non-use is established only in a particular place or export market, the Registrar can impose conditions or limitations on the registration so that it does not extend to that place or market, instead of removing the mark outright (see the note to s 92(4)).

A successful applicant gets the mark removed for the goods or services specified. The path is then clear: a later application for a similar mark no longer faces a prior registration, and the owner can no longer stop the applicant from using the name in that area of trade.

What removal means, and where the traps sit

For the owner, removal means losing the registration and everything that went with it, including the ability to sue for infringement. For the applicant, the win is access to the market under the name. But the scheme has traps on both sides:

• Token use does not protect the owner: A single sale, or a website that never transacts, timed to defeat an application, is unlikely to amount to use in good faith.
• Partial use means partial protection: Using the mark for one product line while letting the rest of the registration sit idle leaves the unused classes exposed to removal.
• Defensive marks are protected: Part 9 does not apply to defensive trade marks (s 186), the special registrations available to well-known marks in classes where the owner does not trade. They cannot be removed for non-use.
• A pending court action changes the forum: If infringement or other proceedings concerning the mark are already on foot in a prescribed court, the non-use application must be made to that court, not the Registrar (s 92(3)).
• Non-use can be a defence to infringement: If the owner sues for infringement but has not used the mark, s 122(1)(f) provides a defence where the court is of the opinion that the defendant would obtain registration of the mark in its own name if it applied. A mark that is vulnerable to removal is hard to enforce.

When to get a trade mark lawyer involved

A non-use application looks administrative, but it is decided on evidence and procedure. A lawyer's value shows up at specific points:

• Before you file: assessing whether a ground is actually available, such as whether the three-year period has run or the mark's history reveals an intention to use, identifying the right goods or services to target, and framing the application so it survives an opposition.
• If you are the owner: gathering evidence of genuine use, marshalling evidence of authorised use by distributors and others acting with the owner's authority, and assessing whether the special circumstances limb is available. This is where most owners lose, because "we meant to use it" is not a defence.
• Costs strategy: understanding the certificate of use costs risk before running the application.

For an owner served with a non-use application, early advice matters most. The two-month window to file a notice of intention to oppose runs from publication, and missing it means the mark is removed without a hearing.

The evidence of genuine use

The strongest signal in this process is also the simplest: a trade mark registration is only as strong as the evidence of use behind it. For an owner, a non-use application forces the question of whether you can prove genuine use in the relevant period, and most owners who lose do so on evidence, not law. For an applicant, the same dynamic works in your favour: a mark that has sat unused for three years is a target, and clearing it early can save you from rebranding later. If either situation describes you, an initial conversation with a trade mark lawyer about the evidence position is a small cost compared with losing, or keeping, a brand.