60.4.20 Cessation of Protection because of Non-Use

Date Published

4.20.1 Relevant Legislation

Madrid Protocol

Article 5(6) Refusal and Invalidation of Effects of International Registration in Respect of Certain Contracting Parties

Madrid Protocol Regulations

Rule 19 Invalidations in Designated Contracting Parties

Trade Marks Act 1995

Part 9 Removal of trade mark from Register for non-use

Trade Mark Regulations

Part 9 Removal of trade mark from Register for non-use

Part 17A Division 5 Subdivision D - Cessation of protection for non-use

Trade Marks Office Manual of Practice and Procedure

Part 49 Non-use Procedures

4.20.2  General Description

There are no provisions in the Madrid Protocol for dealing directly with non-use actions against the international registration itself.  However, non-use actions can be filed against protected international trade marks and basic trade marks (during the 5 year dependency period) under Section 92 of the Trade Marks Act 1995.  

Under the Protocol a full removal is known as cessation of protection, and a partial removal is a limitation of protection.  

The IB must be notified where the final outcome of any non-use actions taken against protected international trade marks results in limitation or cessation of protection.  This notification should not be made until any appeal period has expired.

To record the filing of an application for removal for non-use, existing procedures should be followed (see Part 49 Non-use Procedures).

The non use application will be published in the Australian Official Journal of Trade Marks and the 2 month opposition period will commence.

Amended Reasons

Amended Reason Date Amended

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