How to Remove a Competitor’s Trade Mark for Non-Use

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Table of Contents

• When Would Someone Apply For Non-Use?
• What are the Grounds for a Non-Use Application?
• Use of the Trade Mark and Use in ‘Good Faith’
• Key Takeaways

If the owner of an Australian trade mark does not use the mark, they may be at risk of losing it. Under the law, businesses can file for the removal of a competitor’s trade mark from the register for non-use. 

During the Australian trade mark application process, an applicant does not need to demonstrate that the trade mark is already in use or that they intend to use it. However, applicants are required to register and use trade marks in good faith. This means that applicants cannot register trade marks that they have no plans to use. If an applicant registers a trade mark and then fails to use it, competitors may be able to remove the trade mark for non-use. This article will explain how this process works.

When Would Someone Apply For Non-Use?

There are several situations where someone may need to apply to remove 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 remove the trade mark. 

Similarly, defendants in a trade mark infringement matter may be able to file a non-use application. If they are successful, the trade mark’s owner will be unable to 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 can apply if the owner of the trade mark:

• had no intention to use the trade mark and the owner has not used the mark in good faith in Australia; or
• has not used the trade mark in good faith for a continuous period of three years and at least five years have passed since the trade mark was entered on the register.

The trade mark owner has the opportunity to show that they have used the trade mark in good faith. They may argue that they have:

• assigned the mark to another party (in which case they must demonstrate that the assignee has been using the mark in good faith);
• given another party permission to use the trade mark;
• 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 may refuse the application for non-use. 

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

To oppose the non-use application, the trade mark owner must demonstrate use in ‘good faith’. Use of a trade mark means that the owner has used the mark: 

• to distinguish goods; 
• to indicate the origin of the goods; or
• in the course of trade. 

The trade mark owner will also need to convince the court or registrar that the use was in good faith. Although a single use of the mark is unlikely to be enough to do so, a small number of uses may be enough to constitute genuine use. 

Key Takeaways

Non-use applications are a way to remove trade marks that are not being used from the register. Businesses that are considering trade mark registration or facing an infringement claim may be able to pursue this strategy. If you need assistance with your application to remove a trade mark for non-use or have any questions about your trade mark strategy, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.