Protect It but Don’t Forget It: When Trade Marks Get Removed in Australia

Introduction

One of the first things you will be told when starting a business is to protect your brand by registering your trade mark. However, while it is incredibly important to protect your brand by registering a trade mark, you should not register a trade mark simply for the sake of it.

While many think that once your trade mark is registered there is nothing further for you to do, this is not the case. Under the Trade Marks Act 1995 (Cth), trade marks can be removed from the trade mark register for several reasons, the main one being that the mark is not used.

This article will explore the reasons why a trade mark may be removed from the trade mark register after it has been registered.

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Removal for Non-Use

IP Australia allows anyone to apply for the removal of a trade mark on the grounds of non-use. There are two (2) main circumstances where a registered trade mark can be removed from the trade mark register as a result of ‘non-use’:

1. The registered trade has not been used during the previous three (3) years. There are specific guidelines around when this period applies depending on when the trade mark was registered; and
2. Where the trade mark owner did not have a genuine intention to use the trade mark in good faith when they applied to register it.

Non-Use

An application for removal due to non-use may be made where a registered trade mark has not been used by its owner for the past 3 years.

If an application is raised in relation to this, the trade mark owner will need to provide evidence to IP Australia demonstrating that the trade mark has been used in the past 3 years or provide reasons as to why the trade mark could not be used during that period. Legitimate barriers preventing use of a trade mark include government regulations or import restrictions, business interruptions due to restructuring or more recently as a result of delays or supply chain disruptions resulting from COVID-19.

It is important to note that even if you licence your trade mark to your subsidiaries and do not use it directly yourself, there are specific requirements that must be met to ensure that the trade mark is still classed as being “used” by the trade mark owner. We cover this topic in another article available here.

No Intention To Use

This application for removal is far less common, given that it is more difficult to prove. In these circumstances, a trade mark may be removed from the register if it can be shown that:

1. The trade mark owner did not have a genuine intention to use the trade mark in good faith when they applied to have it registered; and
2. The owner has not used the trade mark in good faith since its registration.

Unlike non-use applications, a removal application based on no intention to use may be filed at any time after the mark is registered.

Full or Partial Removal

An application for removal can specify either the removal of the trade mark in its entirety or partial removal.

A request for full removal would result in the trade mark being struck from the registry entirely.

However, a request for partial removal, would have certain subclasses for the trade mark removed. For example, if the trade mark was registered in relation to three (3) different subclasses, but was only used in relation to one (1) of them, the trade mark could remain on the register but only in relation to that 1 class.

Defending a Removal Application

When a removal application is made, the registered owner must file a Notice of Intention to Oppose the removal. After this is filed, the registered owner will need to also file a Statement of Grounds and Particulars that outlines the basis for defending the registration. If the person who made the application for removal files a Notice of Intention to Defend, then the trade mark owner will need to lodge their evidence in support of maintaining their trade mark registration.

Should the registered owner fail to provide a response, the registration of the trademark will be cancelled in accordance with the requested removal application (i.e. partial or full removal). Given this, it is incredibly important that your contact details on the trade mark register are always up to date to ensure that you do not miss a notification from IP Australia of a removal application.

Conclusion

Registering a trade mark is a crucial step in protecting your brand, but you should not “set and forget it”. In order for trade marks to remain on the trade mark register, you must actively use the mark.

Whether due to prolonged non-use or a lack of intention to use it at the time of registration, trade marks can be subject to removal if they are not properly managed.

To benefit from registering a trade mark, you should monitor your trade mark usage, keep accurate records and ensure your contact details with IP Australia are always up to date.

Should you receive notice of a removal application, timely action is critical to protect your registration and you should seek legal advice in this regard.

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