The phrase ‘use it or lose it’ best reflects the principle regarding registered trade marks in Australia. Australian trade marks are vulnerable to removal from the register for non-use. Part 9 of the Trade Marks Act 1995 (the Act) sets out the process and circumstances under which a party can apply to remove a competitor’s trade mark from the register for non-use. 

The Australian trade mark application process is unique compared to many jurisdictions (including the US) as it does not require an applicant to demonstrate an intention to use the trade mark or that the trade mark has been used at the time of filing. In the US, for example, applicants must provide a Statement of Intended or Actual Use to support their trade mark application. In Australia, applicants do not need to provide any supporting evidence unless the examiner or another party raises an objection. Applicants for Australian trade marks are, however, required to register and use trade marks in good faith.

An individual who applies for, but doesn’t intend to use, a trade mark may succeed in their application. But they become a sitting duck if their registered mark hinders another party’s trade mark strategy.

When Would Someone Apply For Non-Use?

There are several situations where someone may need to apply for removal of a registered trade mark.

Most commonly, IP Australia has refused an application because a registered trade mark is substantially identical or deceptively similar to the applicant’s. If the applicant believes that the trade mark owner is not actually using the conflicting registered trade mark, they can file a non-use application to have the trade mark removed. Applicants here should take the opportunity to examine the conflicting mark as it can mean the difference between a rejected and a successful trade mark.

Similarly, defendants in a trade mark infringement matter may be able to file a non-use application so that the mark’s owner no longer has the registered mark and cannot enforce their infringement claim. As such, a non-use application can be both a crucial part of the trade mark strategy for registration and prosecution of trade mark matters.

What are the Grounds for a Non-Use Application?

Regardless of the circumstances of a non-use application, an applicant must satisfy one of two grounds:

  1. The applicant can file an application for non-use where the owner of the trade mark had, in good faith, no intention to use, assign to another party, or authorise the use the trade mark to someone else. The applicant must also be able to show that the owner hasn’t used the mark in good faith in Australia; or
  2. The applicant can apply for non-use if the owner has not used the trade mark in good faith for a continuous period of 3 years. This ground for non-use only applies 5 years from the filing date.

The trade mark owner is given an opportunity to respond and they bear the onus to show that they have in fact used the trade mark in good faith. If they have not used the trade mark because they have assigned the mark to another party, they must demonstrate that an assignment occurred that should have been recorded and the assignee has been using the mark in good faith. Alternatively, the trade mark owner can show that they have authorised use of the trade mark to another party or they can provide a good explanation as to why they have not been using the mark for three years. 

If the trade mark owner’s defence is convincing, the Court or the Registrar can exercise discretion and refuse the application for non-use. Conversely, if unsuccessful, the mark will be removed.

Use of the Trade Mark and Use in ‘Good Faith’

The onus is on the trade mark owner to oppose the non-use application by demonstrating not only use of the trade mark, but use in good faith. Under section 17 of the Act, ‘use’ is to be understood as distinguishing the goods and indicating the origin of the goods, and used in the course of trade (E&J Gallo Winery v Lion Nathan Australian Pty Ltd (2009) 175 FCR 386). 

The Court or Registrar will also need to be convinced that the use was in good faith. Although a single use of the mark is likely insufficient to show use, a small amount may be enough to be considered genuine use. 

Key Takeaways

Trade mark owners and applicants alike should not overlook the mechanism the Act offers to remove trade marks for non-use. It is a commonly used tool where IP Australia refuses an application because of a registered trade mark, but can also be used as a defence against an infringement claim.

Non-use applications are a way to make sure trade marks that are not registered or used in good faith can be removed from the register. Businesses who are considering trade mark registration or facing an infringement claim have this route open to them if the grounds are met. Without unnecessarily resorting to a non-use application, businesses should factor the mechanism into their trade mark strategy. 

If you need assistance with your application to remove a trade mark for non-use or have any questions about your strategy, get in touch with our IP lawyers on 1300 544 755.

Dhanu Eliezer

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