A registered trade mark is an important business asset. It acts as a defence to an allegation of trade mark infringement, provides a basis for you to stop others from infringing on your rights, and allows you to licence and assign the trade mark separate to the business as a whole. What many business owners do not realise is that gaining the registration is not necessarily a permanent solution. The trade mark must also be maintained. This means it must be used, renewed and defended from attack by third parties. What sort of attack? Well, in some circumstances, a registered trade mark can be removed from the Australian Trade Marks Register.
The ability to achieve removal of a registered trade mark can create opportunities for businesses looking to register a similar brand, but it can also create challenges for trade mark owners who need to defend an existing registration.
If you need help with a trade mark removal application, understanding the process before taking action is one of the best investments you can make. Early legal advice can help you avoid unnecessary delays, prepare stronger evidence and develop a strategy that supports your commercial objectives.
What is a trade mark removal application?
A trade mark removal application is a formal request asking IP Australia to remove a registered trade mark from the Australian Trade Marks Register on the ground of non-use.
Under the Trade Marks Act 1995 (Cth), if a registered owner did not have a good faith intention to use the mark and has not used the mark in good faith; or if the mark has remained unused for a continuous period of 3 years, another party may apply to have the registration removed. (There are other mechanisms for having a trade mark taken off the register — such as revocation of a registration or rectification of the register — but the term “removal” refers specifically to a non-use action.)
In practice, removal applications often arise when a business wishes to register a new brand but discovers an older registration that appears to no longer be in active commercial use.
Whether you are seeking to remove another party’s trade mark or responding to an application against your own registration, the outcome will depend on the evidence and the surrounding circumstances.
When can a registered trade mark be removed?
Not every registration is vulnerable to removal.
IP Australia considers both the legal grounds relied upon and the evidence filed by each party before deciding whether a trade mark should remain registered.
Questions commonly considered include:
- Has the trade mark been used in good faith?
- Has it been used by the registered owner or an authorised user?
- Has the use occurred in connection with all of the registered goods or services?
- Has the use occurred Australia-wide?
- Are there circumstances that justify maintaining the registration?
What does use in good faith mean?
The concept of use in good faith is central to non-use removal applications which are filed prior to the registration being on the register for 3 years, or where the period of non-use is less than 3 years, and are thus based on the ground that the mark was not filed in good faith and has not been used in good faith.
The circumstances where there is no good faith are not finite.
An example of filing an application without a good faith intention to use the mark and no good faith use would be: where the applicant is a current or former distributor for the rightful owner, and thus knew that they were not the rightful owner, but filed the trade mark in their name anyway.
How much use is required?
A single token use of a trade mark may not always be enough. But there is no requirement that the use be extensive.
IP Australia looks at the overall commercial context. Evidence that may support use includes:
- invoices and sales records
- advertising campaigns
- website content
- catalogues and brochures
- product packaging
- social media activity
- licensing arrangements demonstrating authorised use.
What evidence should you gather?
Whether you are filing or defending a removal application, evidence plays a critical role.
If you are seeking removal, useful material may include searches showing an absence of commercial activity, market investigations and publicly available information suggesting the trade mark has not been used.
If you are defending your registration, you should gather documents demonstrating commercial use of the trade mark, including invoices, advertising, customer communications, product photographs and website records.
Statutory declarations are commonly used during removal proceedings and should be carefully prepared to accurately present the relevant facts.
Businesses that maintain organised records throughout the life of their trade mark are often in a much stronger position if a dispute arises.
How does the removal process work?
Although every matter is different, the process generally follows a similar path.
A trade mark removal application is lodged with IP Australia. The registered owner is then given an opportunity to respond and provide evidence explaining why the registration should remain on the register.
Each party may file statutory declarations and supporting documents before the Registrar of Trade Marks considers the material.
Some matters proceed to a hearing before a decision is made. Depending on the outcome, there may also be appeal rights, including to the Federal Court of Australia.
Removal proceedings can take many months, particularly where the matter is contested. Having a clear commercial strategy from the outset often helps avoid unnecessary delays and expense.
Can you defend a trade mark removal application?
Yes.
Receiving a removal application does not automatically mean your registration will be removed.
Many registered owners successfully defend non-use removal applications by demonstrating use in good faith.
Prompt action is important. Missing deadlines or failing to provide persuasive evidence can weaken an otherwise strong case.
If you have received a removal application, obtaining advice early allows you to assess your position before important procedural deadlines expire.
Why registration is still worthwhile
The possibility of removal should not discourage businesses from registering their trade marks.
A registered trade mark provides valuable legal protection and supports enforcement where another party uses your brand without permission.
Registration also provides greater certainty when enforcing your trade mark rights and may increase the value of your intellectual property portfolio.
If you have not yet registered your brand, our article explaining why you should register your trade mark outlines why registration remains one of the best ways to protect your business.
Common mistakes businesses make
Trade mark removal proceedings often involve technical legal issues that are easy to underestimate.
Some common mistakes include:
- assuming registration can never be challenged
- delaying a response after receiving an application
- failing to preserve evidence of use
- misunderstanding authorised use
- overlooking the commercial implications of the dispute
- pursuing or defending proceedings without obtaining legal advice.
A carefully considered strategy is usually more effective than reacting once the dispute has escalated.
When should you seek legal advice?
Some businesses only contact a trade mark lawyer after important deadlines have passed. Others invest considerable time preparing evidence without first confirming that it addresses the legal issues in dispute.
Seeking advice early can help you:
- understand your legal position
- identify the strongest evidence
- comply with IP Australia’s procedural requirements
- assess the prospects of success
- develop a practical commercial strategy.
Whether you are applying to remove another party’s registration or defending your own, early advice often leads to better outcomes and fewer surprises.
How Tarr Law can help
If you need help with a trade mark removal application, Tarr Law can assist at every stage of the process. We advise businesses on trade mark disputes, non-use removal applications and broader intellectual property matters.
Our team provides practical advice tailored to your commercial objectives, whether you are seeking to clear the way for a new brand or protect an existing registration from challenge.
To learn more about our trade mark services or discuss your circumstances, contact Tarr Law today.
