Responding To A Non-Use Removal Application Against Your Trade Mark

Your registered trade mark is a core asset. It protects your brand name, logo or tagline, and it helps you stand out in the market. But what happens if someone applies to remove your trade mark from the register because they say you haven’t been using it?

In Australia, a “non‑use” removal application is a formal process before IP Australia that can partially or entirely remove a registration if the owner hasn’t used the mark for a qualifying period. It’s serious - and it’s time‑sensitive - but it’s also manageable if you act quickly and strategically.

In this guide, we walk through what a non‑use application is, the deadlines that apply, practical options to defend (or resolve) the situation, what evidence you’ll need, and common pitfalls to avoid. Our goal is to help you protect your brand with confidence.

What Is A Non-Use Removal Application?

Under the Trade Marks Act 1995 (Cth), any person can apply to remove (or limit) a registered trade mark on non‑use grounds. There are two common grounds:

• No intention to use: At the time of filing, the owner had no intention to use the mark (and still hasn’t used it).
• Three years of non‑use: The mark wasn’t used in Australia for a continuous period of three years, ending one month before the non‑use application was filed.

“Use” means genuine commercial use of the mark as a badge of origin for the goods or services covered by your registration. Use by an authorised user (for example, a controlled licensee or related company) can count as your use if proper control is exercised.

Non‑use applications can target all or only some of the goods/services in your registration. So even if you use the mark for certain items, classes you don’t use may be at risk.

What Happens When Someone Files One Against Your Trade Mark?

IP Australia will serve you with a copy of the application. From there, the process has strict deadlines:

• Notice of intention to defend: You typically have two months to lodge a Notice of Intention to Defend. If you miss this deadline, your registration (or the affected goods/services) can be removed without further input from you.
• Evidence rounds: If you defend, the case moves into evidence:
  • Applicant’s Evidence in Support (usually three months).
  • Owner’s Evidence in Answer (usually three months).
  • Applicant’s Evidence in Reply (usually two months).
• Hearing or written decision: After evidence closes, the matter may proceed to a hearing (or be decided on the papers). The delegate of the Registrar decides whether to remove all, some, or none of the goods/services.

There’s some flexibility to seek extensions of time, but it’s not guaranteed. Cost orders can also be made on a scale, so there are financial consequences to consider when deciding your approach.

How To Respond: Practical Options And Strategy

Every situation is different, but the decision tree usually looks like this: act fast, decide whether to defend, gather your evidence, consider narrowing, and explore commercial resolutions alongside legal options.

1) Decide Whether To Defend (And For What)

Start by mapping your actual use against the goods/services listed in your registration. You might defend all goods/services, or only those that reflect your real trading. Defending everything isn’t always strategic - if there’s no realistic evidence of use for certain items, a targeted defence or partial concession can save costs and improve your credibility.

If you’re genuinely not using the mark (and don’t plan to), it may be more efficient to let the mark lapse in whole or in part and re‑focus on stronger brand protection (for example, filing a new application that fits what you actually do today). If timing is on your side and you’re still building use, you may also consider a fresh filing to secure a new filing date while you make decisions on the existing registration, such as whether to register your trade mark for updated or refined specifications.

2) File Your Notice Of Intention To Defend On Time

This is critical. If you miss the deadline, your mark can be removed without any chance to present your case. The Notice of Intention to Defend is short and straightforward - don’t wait to gather evidence before lodging it. Lodge first, then prepare your evidence.

3) Audit Your Use And Gather Your Evidence

Next, build your evidence file. Focus on clear, dated records that show the mark as registered, used in Australia, for the relevant goods/services, during the relevant three‑year period.

Helpful materials include invoices, sales reports, website captures (with Australian traffic data), social media posts, catalogues, product packaging photos, shipping documents, advertising spend, media features, and internal documents explaining product lines and release dates. Declarations from people with knowledge can tie this together.

If you’ve traded under the mark but primarily relied on common law rights, you may already have collated evidence of prior use for other IP purposes - this can be adapted to prove use in the non‑use window.

4) Consider Narrowing Your Specification (Partial Removal)

Many disputes resolve by narrowing the registration to match the mark’s actual use. If your current list of goods/services is broad, offering to delete unused items or entire classes can defuse the challenge while preserving core protection. This is often a sensible, cost‑effective outcome.

5) Rely On Authorised Use Or Special Circumstances

Use by controlled related entities or licensees can count as your use if you exercise control (quality control, financial control, or practical oversight). Ensure you can demonstrate the relationship and control - for example, intercompany agreements, brand guidelines, or oversight practices.

In limited situations, you might rely on “special circumstances” that explain non‑use (e.g., regulatory barriers, import restrictions, or natural disasters). These are fact‑specific and strictly interpreted. Be ready with detailed evidence if you rely on this path.

6) Explore Settlement And Coexistence

Non‑use actions often arise in broader brand conflicts. Consider whether a coexistence agreement, undertakings, or a specification carve‑out will satisfy both sides. If you do settle, it’s wise to document terms in a robust agreement or a deed, and in appropriate cases a deed of release and settlement can provide finality on the dispute.

7) Consider Re‑Filing, Assignment Or Brand Refresh

If your use started late in the non‑use period or after it, your evidence might be thin. One option is to file a new application for the same mark with a refined specification engineered around your current business model. Another is to assign the mark to the entity actually using it (with control), if that makes sense structurally - this may involve paperwork to transfer a trade mark, and, where broader rights are being transferred, a supporting document like a Deed of Assignment can be appropriate.

If the brand has evolved, you may decide a brand refresh and a new application best reflect your commercial reality. Don’t forget the basics like timely trade mark renewal for any registrations you retain.

What Evidence Do You Need To Prove Use In Australia?

The strength of your defence usually comes down to your evidence. Here’s what typically helps:

• Specimens of use: Photos of products, labels, packaging or screenshots showing the mark exactly (or substantially) as registered.
• Sales and distribution records: Dated invoices, purchase orders, shipping dockets and sales summaries showing supply to Australian customers.
• Marketing materials: Brochures, catalogues, EDMs, Google Ads, social ads, and campaign reports that display the mark and target Australian consumers.
• Web and social analytics: Website analytics (e.g., GA reports) showing Australian traffic, plus posts and engagement metrics during the relevant period.
• Media and PR: Editorial coverage, influencer posts, trade show participation and sponsorships that feature the mark.
• Licensee or related entity use: Evidence of control (agreements, brand guidelines, QC processes) to establish authorised use counts as your use.
• Explaining the timeline: A witness declaration that ties the documents together - when lines launched, what the mark appears on, and how the business operates.

Quality beats quantity. A well‑organised, concise set of documents that directly address the who, what, where and when will usually be more persuasive than a large, unfocused dump.

Practical tip: save dated “snapshots” of your brand activity as a matter of course. Routine evidence‑keeping makes defending against non‑use far easier down the track.

Key Legal Tests And How Decision‑Makers Assess Use

When IP Australia assesses a non‑use case, they typically consider:

• Was there genuine commercial use of the mark in Australia during the relevant period?
• Was the mark used “as a trade mark” (i.e., to distinguish your goods/services), not just descriptively?
• Does the use line up with the goods/services claimed in the registration?
• If relying on authorised use, did the owner exercise control over the user?
• If non‑use is established, should discretion be exercised to retain the mark (wholly or partly)?

“Token” use designed solely to preserve registration won’t carry much weight. The focus is on real‑world trading activity. If your brand appears in a composite form (e.g., your logo combined with another word or device), that can still qualify if the essence of the registered mark is preserved. However, if what you use is materially different, it may not count - so align branding with registrations where possible.

Costs, Timelines And Commercial Considerations

Defending a non‑use application involves time and cost. Beyond internal effort to collate evidence, you’ll navigate rounds of declarations and exhibits, with potential hearings. Even if you succeed, some costs may not be recoverable. If your registration is broad and you only use a subset, a pragmatic discussion about narrowing or co‑existence can often save time and expense.

Keep the bigger picture in mind: What is the commercial value of the registration? Does it support your core products, licensing, distributor relationships, or investment plans? Those answers can guide whether you defend hard, concede in part, or settle early.

If your portfolio has multiple marks (word and logo marks; different variants), consider a portfolio‑wide strategy to ensure your strongest marks are protected. If your brand has shifted, it may be the right time to file updated applications with accurate specifications and current evidence of use. Working with an intellectual property lawyer can help you evaluate risk, shape your defence, and plan the next steps across your brand suite.

Common Pitfalls To Avoid

We regularly see the same issues undermine otherwise good brands. Avoid these traps:

• Missing the defend deadline: Failing to lodge the Notice of Intention to Defend within two months can be fatal to your registration.
• Defending everything without a plan: If you can’t show use for certain goods/services, consider narrowing early to preserve what matters.
• Weak or irrelevant evidence: Submitting materials outside the relevant period or that don’t show use “as a trade mark” won’t help.
• Overlooking authorised use: If a related entity or licensee used the mark, document control and include that story - it can save your case.
• Using the mark in a different form: If the mark on your products is materially different from your registration, it may not count.
• Letting structure get in the way: If the entity using the mark is different to the owner, ensure you can show control, or consider formal steps to transfer a trade mark so ownership aligns with use.
• Skipping the commercial conversation: Sometimes a coexistence agreement or carefully crafted undertakings (recorded in a binding document like a deed) is the best outcome for both sides.

FAQ: Quick Answers To Common Questions

Can I show use for just some goods/services?

Yes. If you can prove use for some items, IP Australia may retain the registration for those and remove the rest. Partial removal is common and often strategic.

What if I only used a logo, not the word, or vice versa?

Use of a mark in a form that doesn’t alter its distinctive character can be enough. But if your used form is materially different from the registered form, it may not count. Consider aligning branding or filing new applications to cover the form actually used.

Does online use count?

Yes, provided it targets Australian consumers. Back it up with analytics showing Australian traffic, sales, and campaigns during the relevant period.

What if my supplier or distributor used the mark?

Use by an authorised user can count if you exercise control. Show the contractual or practical control you had and how it worked in practice.

Should I settle?

Often, yes - especially if a manageable carve‑out or narrowing will resolve the concern. If you settle, make sure the terms are recorded properly (for example, with a deed and clear undertakings), and consider whether a Deed of Assignment is needed where rights are changing hands.

Key Takeaways

• Act fast: lodge your Notice of Intention to Defend within the deadline or risk losing your registration by default.
• Be strategic: defend what you can prove, and consider narrowing your specification to match real‑world use.
• Build strong evidence: focus on clear, dated Australian use that shows the mark used “as a trade mark” for the relevant goods/services.
• Don’t forget authorised use: use by a licensee or related company can count if you exercised control - document it.
• Consider commercial solutions: coexistence, undertakings, partial removal, or assignment can deliver practical outcomes and save cost.
• Think portfolio‑wide: re‑file refined applications or shore up your core brands to align with current trading and growth plans.

If you’d like help responding to a non‑use removal application or planning next steps for your brand, you can reach us at 1800 730 617 or team@sprintlaw.com.au for a free, no‑obligations chat.