Although there are a few exceptions, the US Patent and Trademark Office (USPTO) generally requires that a trade mark applicant provides evidence that the mark has actually been used in the USA before the certificate of registration can actually issue.  Another country that has a similar requirement is Canada.  In addition to providing evidence of use before registration, some countries also require that evidence of use be provided at some stage after registration, usually before the registration can be renewed.

You’ll be interested to learn that in Australia there’s no requirement that an applicant must show evidence of actual use, either before registration or renewal of an Australian trade  mark.

Although there’s no requirement to show evidence of use there is a mechanism for third parties to apply for removal of a trade mark registration if they believe that the owner of the trade mark, or its authorized user, hasn’t been using the trade mark.  The baseline requirements for a non-use removal application are that the registration in question must have been in force for at least five years and that it hasn’t been used as a trademark in the preceding three years.

Before the current 1995 Trade Marks Act came into force the onus of proof was on the person requesting the removal.  Proving that the trademark owner hadn’t used the mark in the preceding years was very difficult to do and so many removal applications were unsuccessful.  That led to marks remaining on the register that should probably have been removed.

RemovedTmRegoUnder the current 1995 Trade Marks Act the onus is on the person that owns the trade mark to demonstrate that the mark in question has been used in the course of trade in the preceding three years.

The most common reason you would want to apply to have a trade mark removed from the register is to remove it as a barrier to acceptance of your own trade mark application.

For example, if you have a trade mark application and an examination report issues citing an earlier mark as being in conflict then you may, after making investigations, decide that there is a good chance of having the cited trade mark registration removed for non-use.

After the non-use removal application has been lodged, IP Australia will send a copy to the owner of the trademark registration.  The trademark owner will then have two months to lodge an opposition to the removal application.

There are alternatives to lodging a non-use removal application, for example, it may be possible to negotiate with the owner of the trade mark and obtain a letter of consent from them. A successful outcome is more likely if there is some reason why they would be inclined to provide a letter of consent.  For example, if they haven’t been using the trade mark for over three years and so are concerned that you could successfully apply for non-use removal of their registration then they may well agree.  Alternatively, it can sometimes be the case that an exchange of letters of consent will allow both parties applications to proceed to allowance.

In any case, before lodging a non-use removal application as much investigation as possible should be done to gauge whether or not the trade mark in question has or hasn’t been used in the preceding three years.  Either requesting a letter of consent or lodging a non-use removal application will place the  owner of the trade mark registration on notice that their registration is a concern to you. Therefore caution needs to be exercised.  For example, if it turns out that you are using a trademark that falls within the scope of their registration and ultimately you are unsuccessful in having their registration removed then they could turn around and take action for trade mark infringement.