48.2. Application for removal/cessation of protection for non-use

A non-use application needs to be in an approved form (reg 9.5).

• Part 49 Non Use Procedures

2.1  Non-use application may proceed in the name of another person

Subsection 92(5) provides that, under certain circumstances, a non-use application may proceed in the name of a person other than the person who filed the application. This may happen provided that the right or interest, upon which the person who filed the application for removal relied, has passed to the other person, and the Registrar or the court has been notified in writing of this fact.

• Part 49 Non Use Procedures

2.2  Timing

A non-use application may be made at any time after the subject application for registration has been filed, except on the ground contained in paragraph 92(4)(b) of alleged non-use for three years. An application relying on paragraph 92(4)(b) cannot be made until:

• Five years have passed from the filing date of the application for registration where the registered trade mark was filed before 24 February 2019; or
• Three years have passed from the date the particulars of the trade mark were entered into the Register under s69 where the registered trade mark was filed on or after 24 February 2019.

See subsection 93(2).

2.3  Where to file an application

An application may be made to the Registrar unless an action concerning the trade mark is pending in a prescribed court.

2.4  Referral to a court

If the Registrar considers it appropriate, an application made to her may be referred to a prescribed court and the court may then hear and determine the matter. In general terms, this may be done if a matter concerning the trade mark registration is commenced in a prescribed court and the applicant (and an opponent, if any) request(s) that the non-use application should be referred to the court. A non-use application may also be referred if it has been opposed and either the applicant or the opponent unilaterally requests referral. In the latter case the Registrar will consider the arguments of the parties before deciding on such a course.