Non-Use Removal Application: Understanding the Process and Importance

Madrid System for International Registration of Trademarks

Author: Ian Aldridge, Progressive Legal

After obtaining a registered trade mark, it is essential to actively use it to maintain your rights. Failure to use your trade mark for a continuous period of three years can result in its removal on the grounds of non-use. In such cases, anyone can apply to IP Australia for the removal of a trade mark due to non-use.

On this page, we’ll delve into the concept of non-use removal applications, explaining the circumstances in which they may arise and the significance of seeking legal advice when faced with such situations.

The Requirement of Active Use for Registered Trade Marks

Once your trade mark is registered, it is crucial to engage in active usage to preserve its validity.

Non-use of a trade mark for a consecutive period of three years can render it susceptible to removal based on non-use grounds. This requirement ensures that registered trade marks reflect active commercial use, preventing the cluttering of the registry with dormant or unused marks.

Applying for Non-Use Removal

Removal Request by Third Parties

Any individual or entity can approach IP Australia to apply for the removal of a trade mark due to non-use.

This means that if you have failed to utilise your trade mark within the prescribed period, others may take action to have it removed. It highlights the importance of actively using your trade mark to maintain its legal protection and prevent potential challenges from arising.

Addressing Objections from IP Australia

An instance where a trade mark owner may face a removal request is when they receive an objection from IP Australia stating that their trade mark cannot proceed to registration due to a conflicting existing registration.

Find out more about Australian trade mark registration here.

In such cases, one way to overcome the objection is by filing a non-use removal application. However, extensive research and careful consideration should be undertaken before deciding to pursue this option. Seeking legal advice is crucial to navigate the complex procedures and make informed decisions.

Seeking Legal Advice in Response to a Removal Request

If you receive notification from IP Australia informing you that someone has requested the removal of your trade mark, it is advisable to seek legal advice before taking any action.

As legal professionals specialising in intellectual property, we can provide invaluable guidance, helping you understand the implications, explore potential defenses, and determine the best course of action to protect your trade mark rights effectively.

Non-Use Removal Application to Overcome Objections

Conversely, when IP Australia issues an objection stating that another registration is preventing the registration of your trade mark, a non-use removal application may serve as a viable solution.

By demonstrating that the conflicting registration has not been actively used within the specified period, you can potentially overcome the objection. However, due diligence is necessary to assess the viability and potential outcomes of filing a non-use removal application. Seeking legal advice is crucial to navigate this process and maximise your chances of success.

The Key Takeaway

Non-Use Removal Application Video

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