Trade mark registrations provide significant commercial value to any business, allowing for a monopoly that can be exploited for financial gain. The trade-off to acquiring such a monopoly is that your business is expected to make genuine use of any such trade mark(s) in commerce. The Trade Marks Act 1995 (Cth) (the “Act”) safeguards this balance, providing the ability for third parties to seek removal of a trade mark for non-use[1].
Removal for Non-Use
The Act allows any third party to seek removal of a trade mark from the Register for non-use on either or both of the following bases:
- On the day of filing the application, the applicant had no intention in good faith to use or authorise the use of the trade mark in Australia in relation to the claimed goods and/or services, and has not done so at any time before one month from the date of any removal application.[2]
- The trade mark has been registered for a continuous period of three years, ending one month before the date of any non-use application, and at no time during those three years had the owner of the trade mark used or authorised the use of the trade mark in Australia in relation to the claimed goods and/or services.[3]
Burden of Proof
The burden is placed on the party opposing the removal of any trade mark registration (usually the owner) to demonstrate that “the trade mark or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services”[4] during the relevant non-use period. It is also possible for a trade mark registrant to successfully defend a removal action claiming no use in the previous three years, even where it has not used the trade mark, “because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.”[5]
Although the burden is on the party opposing the removal of a trade mark registration (usually the trade mark owner) to prove use of the trade mark by the registrant in relation to the claimed goods and/or services in Australia during the relevant non-use period, the bar for satisfying this requirement is not high. In fact, very small amounts of use have been found to be sufficient to allow a trade mark to remain registered. Additionally, any use of the trade mark includes any use by a third party that has been authorised by the owner of the trade mark[6].
Use in Australia
In seeking to oppose the removal of any trade mark registration, use of the trade mark must be shown as being in Australia. In most cases, this requirement is easily satisfied. However, what constitutes use in Australia has evolved over time. For more information on this point, you can read our recent article on this topic here.
Registrar’s Discretion
In any removal application, the Registrar of Trade Marks has complete discretion on whether to remove the trade mark for non-use, in part or in full, or not at all[7]. Despite this broad discretion, it is common practice for a trade mark to be removed for any goods and/or services for which the owner of the trade mark has not evidenced:
- use of the trade mark in commerce in Australia; or
- extraordinary circumstances that prevented use of the trade mark,
during the relevant non-use period.
Jack Goldberg v Nike Innovate CV
The recent Trade Marks Office decision in Jack Goldberg v Nike Innovate CV[8] highlights that although the level of use required to defeat any non-use removal action can be quite small, there is a minimum threshold that such evidence should be provided.
On 24 November 2021, Nike Innovate C.V. sought to remove registration of trade mark 1315480 BRS BLISTER REDUCTION SOCKS in relation to all claimed goods in Classes 10 and 25 (being a variety of socks and associated goods) for non-use. In defence of his registration, the owner of the trade mark put forward evidence of use by way of a Declaration. However, it did not include any documentation or examples of actual use of the trade mark. The owner of the trade mark also raised slow investment, lack of funding opportunities, ill-health and the Covid-19 pandemic as obstacles to use of the trade mark. The Hearing Officer found that there was no actual evidence of use of the trade mark, nor did the evidence demonstrate or provide sufficient detail on, for example, how the pandemic posed an obstacle to the use of the trade mark. Consequently, the Hearing Officer also refused to exercise discretion that would have allowed the registration to be maintained, and ordered that the trade mark be removed from the Register in full.
Take Aways
If you wish to retain your registered trade mark rights:
- ensure that you are continuously using your trade mark(s) or at least any trade mark(s) with additions or alterations not substantially affecting the identity of your registered trade mark(s).
- ensure the above use is in relation to all of the goods and/or services for which your trade mark(s) is/are registered.
- keep periodic samples of dated evidence of such use of your trade mark(s) or document any obstacle(s) preventing your use of your trade mark(s).
- periodically review your trade mark portfolio to consider whether you are able to defend any non-use removal attacks against your registration(s).
Do you have questions about trade mark use, removal actions, or trade marks in general? Contact us at MBIP to be put in touch with a trade marks attorney. We will be happy to assist with your trade mark matter(s).
[1] Part 9 of the Act.
[2] Section 92(4)(a) of the Act.
[3] Section 92(4)(b) of the Act.
[4] Sections 100(2)(a) and (3)(a) of the Act.
[5] Section 100(3)(c) of the Act.
[6] Section 7(3) and 8 of the Act.
[7] Section 7(3) of the Act.
[8] [2025] ATMO 32
