60.4.21 Opposition to Cessation of Protection because of Non-Use

​​​​​​​4.21.1  Relevant Legislation

Madrid Protocol

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

Article 6(3) Period of Validity of International Registration; Dependence and Independence of International Registration

Article 6(4) Period of Validity of International Registration; Dependence and Independence of International Registration

Madrid Protocol Regulations

Rule 19 Invalidations in Designated Contracting Parties

Rule 22(1)(a) Ceasing of Effect of the Basic Application, of the Registration Resulting Therefrom, or of the Basic Registration

Trade Marks Act 1995

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

Trade Mark Regulations 1995

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

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

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Trade Marks Office Manual of Practice and Procedure:

Part 48 Removal of a Trade Mark from the Register for Non-use

Part 49 Non-use Procedures

Part 51 General opposition proceedings

4.21.2  General Description

PLEASE NOTE: New provisions relating to a two- part notice of opposition (comprising a notice of intention to oppose and a statement of grounds and particulars) apply to oppositions filed on or after 15 April 2013. Full details of the new provisions are outlined in Parts 48, 49 and 51 of the Trade Marks Office Manual of Practice and Procedure.

Non-use actions can be filed against protected international trade marks under Section 92 of the Trade Marks Act 1995 and Part 17A Division 5 Subdivision D of the Trade Marks Regulations.  When a non use action is filed against a protected international trade mark, IP Australia will advise the holder.  The advice will include a copy of the request for cessation of protection for non use.

If the holder opposes the non use application, it  must provide an address for service in Australia or New Zealand.  If no such address is provided, the Registrar is not required to take any action in response to the Notice of Opposition (subreg 17A.48H).

Once the holder has filed a complete notice of opposition (notice of intention to defend plus statement of grounds and particulars, the removal applicant must (within one month from being given the notice by IP Australia) file a notice of intention to defend. If it does not do so, the Registrar may take the opposition to have succeeded and the IRDA will remain protected. The Registrar will notify the parties of this decision (reg 17A.48Q). The time period for filing a notice of intention to defend may be extended under subregulation 17A.48QA. The application to extend time must be made within three months from when the applicant is given a copy of the statement of grounds and particulars (subreg 17A.48QA(2)).

The IB must be notified of the final outcome of any non-use actions taken against protected international trade marks where the outcome is cessation or limitation of the protection extended to the international registration in Australia.  In the case of an opposition to a non-use action, this notification should not be made until the opposition is decided and the appeal period has expired.  Such notification to the IB is handled by the Hearings work group.