Removal of Trade Marks for Non-Use: Applying and Responding

Trade Mark registration does not provide boundless and unconditional protection for its owner. An owner of a registered mark must use the mark to prevent it from losing its protection. The Trade Marks Act 1995 (Cth) (the “Act”) contains provisions that allows a party, who wishes to register a similar mark, to apply to have a registered mark removed for ‘non-use’.

That party can then file an Application for Removal of Trade Mark for Non-Use (“Application”) in accordance with the Trade Marks Regulations 1995 (the “Regulations”) on the grounds that;

1. on the day the Trade Mark was registered, the owner had no good faith intention to use, assign or authorise the use of the mark in Australia, and has not used the mark in Australia; or
2. where the trade mark has been continually registered for a period of 3 years, the owner has not used the trade mark;

in relation to the class of goods and/or services to which the Application relates.

Any person may oppose an Application by filing a Notice of Opposition (“Response”) within two months of the Application being advertised in accordance with the Regulations.

The party making the response has the burden of proof in rebutting the applicant’s claim by establishing use of the mark in good faith by the registered owner or an authorised user. It was stated in ElectroluxLtd v Electrix Ltd (1954) that said use of the trademark must be genuine and substantial in a commercial sense.

Use by an authorised user of the trade mark will be sufficient showing the use is genuine and substantial in a commercial sense. A person is an authorised user if he or she uses the mark in relation to goods or services under the control of the owner of the trade mark. Authorised use is taken to be a use by the owner of the trade mark.

The matter can be decided by the Registrar after the Application, Response, and all evidence and further particulars have been lodged. In the alternative, the Registrar can refer to matter to a suitable Court (being a Federal or Supreme Court).

Mr Murdock of our office holds a Juris Doctor in International Trade Law and a Masters of Laws in International Business Transactions from The Netherlands. If you are looking for an international lawyer to represent you in drafting international contracts or representation in arbitrations, feel free to contact us for a free consultation on (02) 9262 5495 or (03) 8899 7870; visit our Website; Like our Facebook Page; or join our Employment Law Mailing List.

This article is not legal advice and should not be relied upon as legal advice. All articles found on this website are intended to provide informative information, nevertheless, in many instances legislation and case law has been simplified and/or paraphrased. If you would like personal legal advice based on your current circumstances, you should contact MurdockCheng Legal Practice for a free consultation.