Trade mark owners take note - other individuals or businesses can apply to cancel your Australian trade mark registration if it is not being used.

In Australia, once a trade mark has been registered for a certain number of years*, anyone else can file an application to request the cancellation of that registration on the basis of non-use. This is called a "non-use removal application".

Your trade mark registration won't automatically be cancelled if someone else files a non-use removal application. You will always have the opportunity to defend your registration if you wish to do so.

How do you defend a non-use removal application?

To stop your registration from being cancelled, you will need to show either (a) that you have used the trade mark during a defined three-year period for the particular products or services your registration covers, or (b) argue that there are reasons for maintaining your registration even though the mark is not being used. This requires preparing and filing a formal declaration(s) with supporting exhibits. Unfortunately, this process can involve considerable time and expense. For more information on the process involved, see our information sheet.

Why does the system allow this?

In Australia, unlike some other countries, you do not need to provide evidence that you are using a particular trade mark in order to register that mark or, at a later date, renew the registration. This means that older Australian registrations that are not being used can sometimes remain on the Register and then block new applications. Filing a removal application provides new applicants with the opportunity to 'clear the way' for their own trade marks to be registered.

Key takeaway: Keep good records showing how you use your registered trade marks so that you are in the best possible position to defend a removal application should you need to do so.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.