Sometimes trademarks are registered but the business or individual that owns the trademark is not actually using the trademark. There are situations where a third party can apply for a trademark to be removed because it has not been used. This is called an application for removal for non-use.

Grounds for removal

The Trade Marks Act 1995 provides for two circumstances where you can get a trademark removed for non-use.

  1. Where the trademark applicant had no intention in good faith to use the trademark in Australia in relation to the goods and services to which the application relates; and
  2. Where the trademark has been registered but has not been used for a continuous period of 3 years.

When you submit an application for removal for non-use, you can choose one of the two grounds, or both.

Preparing and filing the application

In preparing an application for removal for non-use, there is certain information that you must provide:

  • Trade mark number
  • Your name and address (as the applicant for removal)
  • The address for service of the non-use applicant
  • The grounds for removal
  • Whether the trademark is to be completely removed or partially removed
  • Whether there is any court action pending in relation to the trade mark

You will also need to pay the application fee, which is currently $250. Your application will need to meet the requirements under the Trade Marks Act and need to be submitted in the proper form, or it will not be filed.

Full or partial removal

You can apply for the trade mark to either be fully removed or partially removed. Full removal means that the trade mark will no longer be registered in any classes of goods or services. Partial removal can happen in situations where the trade mark is removed in certain classes, but remains in others. For example, someone registers their business logo in two classes because they claim to be selling clothing and handbags. However, it is found that they do not actually manufacture or sell any handbags. It is possible that the trade mark is removed from the class relating to handbags.

If you are applying for partial removal, make sure that you identify which goods or services (or classes) need to be removed.

After filing the application

The Registrar will need to notify the interested parties of the application for removal for non-use. This includes the owners of the trade mark and any other persons with a claimed interest.

Notice will also need to be given by advertising in the Official Journal if the trade mark is registered. If no one opposes the application for removal within the specified time, and the Registrar is satisfied that the non-use application meets the requirements, then the trade mark will be removed.

Conclusion

The legislation sets out the requirements for the grounds for removal for non-use. It is important that your application satisfies these requirements and is prepared correctly. It is best to get assistance from a trade mark lawyer who is familiar with IP Australia and the factors that are considered.

Dhanu Eliezer

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