49.1 Application for removal or cessation of protection of a trade mark for non-use

1.1 Form

Any person may file an application for removal or cessation of protection of a trade mark for non-use.

Please Note: Unless stated otherwise, all references in this manual part to the removal of a trade mark from the Register also apply to the cessation of protection of a protected international trade mark. See reg 17A.48D.

The non-use application should contain the following information:
 

• The number of the trade mark which is to be removed
• The name and address of the person applying for removal
• That applicant’s address for service in Australia or New Zealand
• The ground(s) for removal
• Whether the trade mark is to be removed for some or all of the goods/services
• Whether the applicant is aware of any court action pending in relation to the trade mark

An application form is on the IP Australia website.

1.2 Fee

The applicant must pay the fee for filing the non-use application (see Item 13 in Schedule 9 to the Trade Marks Regulations 1995.) The application will not be processed until the fee is paid.
 

• Part 4 Fees

1.3 Grounds

There are two grounds for removal as provided by s 92(4)(a) and s 92(4)(b) respectively.  

A non-use application based on the ground in s 92(4)(b) cannot be processed if the trade mark has not been registered. Furthermore, at least 5 years must have passed since the filing date of the registered trade mark, where the registered trade mark was filed before 24 February 2019, or at least 3 years must have passed since the particulars of the registered trade mark were entered into the Register where the registered trade mark was filed on or after 24 February 2019.

If those requirements are not met the non-use application will be deemed not filed and the filing fee refunded.

If the non-use application is based on both grounds but does not meet the requirements for s 92(4)(b), the Registrar may require the applicant to amend the application by deleting the s 92(4)(b) ground so that the non-use application may be processed in relation to the s 92(4)(a) ground.

1.4 Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018

Section 93 of the Trade Marks Act 1995 (Cth) was amended by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 (Cth).

Subsection 93(2) was amended to change the relevant period for filing a non-use application from 5 years from the filing of the trade mark application to three years from the date the particulars of the trade mark were entered into the Registrar under section 69.

This amendment came into effect on 24 February 2019. Accordingly, the new time period only applies to trade marks where the application for the registration of the trade mark has a filing date on or after 24 February 2019.

1.5 Full or partial removal

The non-use application may be for full removal of the trade mark or for partial removal.  Partial removal means the trade mark will remain on the Register for some goods/services.  If the application is for partial removal it must nominate the goods/services to be removed.  If the trade mark is registered for more than one class and all the goods/services in a particular class are to be removed, it is sufficient to nominate the class number.

1.6 Processing

The Registrar will check whether or not the non-use application is in the proper form. If it is not, the applicant will be advised.  If it is possible to bring it into the proper form the applicant will be given an opportunity to do so. If it is not possible, the application will be deemed not filed (reg 21.4) and returned to the applicant. The filing fee will be refunded.

1.7 Court action

If court action is pending in relation to the trade mark an application for its removal must not be made to the Registrar (s 92(3)) (such court action is generally in relation to trade mark infringement.)  However an application may be made to the court for an order directing the Registrar to remove the trade mark (s 92(3)).  

If an application has been made to the Registrar and the Registrar believes it should be decided by a court, the Registrar may refer the application to a prescribed court (s 94). (see s 190 for a list of prescribed courts).

1.8 Notification and advertisement

Each person who, in the opinion of the Registrar, needs to know the non-use application has been made will be notified.  That is usually the registered owner and any persons with a claimed interest.  Such persons must be notified within one month after the filing date of the application (regs 9.6, 17A.48E).  A copy of the application will be forwarded with the notification.

The Registrar must also give notice of the non-use application by advertisement in the Official Journal. If the trade mark to be removed is already registered, the non-use application will be advertised as soon as possible.  If the trade mark to be removed has not yet been registered, as may happen with a non-use application based on s 92(4)(a), the non-use application will not be advertised until the trade mark has been registered (s 95(3)).

1.9 Trade mark removed

If nobody opposes removal in the time allowed to do so and the Registrar is satisfied the non-use application is in order the trade mark will be removed to the extent specified in the application (s 97).