An applicant’s trade mark must be uniquely distinguishable in order to register with IP Australia. Successfully registering a trade mark does not, however, guarantee continued intellectual property protection.

A trade mark maintains protection against infringement when used in the course of trade. If you seek to register a trade mark, but see that it has already been registered, it is possible to have the owner’s trade mark removed from the register on the grounds of non-use.

Non-Use of a Trade Mark

There are two grounds under the Trade Marks Act 1995 (Cth) which set out when an applicant can submit a non-use application:

  1. When the trade mark’s owner filed the application, he or she had no intention to use the mark and have not used it.
  2. The trade mark’s owner registered the trade mark for a continuous period of at least three years and during this time, has not used the mark.

The primary distinction between the two grounds is that the first allows an applicant to oppose an unregistered trade mark, or that has been registered for less than three years. You can file a non-use application to remove the trade mark in its entirety or under specified classes of goods and services.

Form and Fees

You must submit a non-use application in the proper form and with the relevant fee. If you file a non-use application in an unprescribed form, IP Australia may reject it.

Notification and Advertising

The Registrar will notify the trade mark owner and any other person with an interest in the mark that someone has filed a non-use application. The Registrar will also advertise the non-use application in the Australian Official Journal of Trade Marks.

Opposing a Non-Use Application

A trade mark owner has two months to oppose a non-use application by filing a notice of intention to oppose along with a statement setting out the grounds for their opposition. Applying for an extension of time is possible.

Trade Mark Removal

If nobody opposes a non-use application within the relevant time or unsuccessfully opposes an application, IP Australia will remove the trade mark from the register in whole or in part.

Key Takeaways

Would you like to know more about the process of deregistering another owner’s trade mark or submitting a non-use application? Please get in touch on 1300 544 755. LegalVision’s experienced team of intellectual property lawyers would be delighted to assist and answer any of your questions.

Vanja Simic
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