Contents
If you’ve received notice that someone has filed a non-use removal application against your registered trade mark in Australia, it means they’re trying to cancel your mark on the grounds that it hasn’t been used.
This can be a serious threat to your business – especially if your trade mark is tied to your brand identity, goodwill or marketing. But here’s the good news: you can fight back.
Like any legal process, timing and evidence are key – so act fast and follow these steps.
Step 1: Lodge A Notice of Intention To Oppose (NIO)
What it is:
The Notice of Intention to Oppose (NIO) formally tells IP Australia and the applicant that you plan to defend your trade mark.
What to do:
- Lodge your NIO within one month of the application being advertised in the Australian Official Journal of Trade Marks.
- For example, if the application was advertised on 14 April 2025, your NIO must be lodged by 14 May 2025.
- You can file it online through IP Australia’s trade mark portal.
Why it matters:
If you miss this deadline, you forfeit the right to oppose and your mark may be removed from the Register without further input from you.
Step 2: Submit Your Statement of Grounds And Particulars (SGP)
What it is:
This document sets out the legal basis for your opposition. In other words, why your trade mark should stay registered.
Include the following:
- Evidence of use: Show the trade mark was used during the three-year period before the application was filed. For example, if the removal application was filed on 14 February 2025, your evidence should cover 14 February 2022 – 14 February 2025.
- Goods or services: Specify which of your registered goods or services the use applies to.
- Legal arguments: Refer to section 92 of the Trade Marks Act 1995 (Cth), which governs non-use removals.
Deadline:
Must be submitted within one month of filing the NIO.
Step 3: Gather & File Evidence Of Use
What it is:
You’ll need solid documentation to prove your trade mark has been actively used during the relevant time period.
Types of evidence to include:
- Sales invoices or transaction records using the mark
- Marketing material: brochures, social media posts, ads, or emails
- Website screenshots showing the trade mark in action
- Packaging photos, product labels, or signage
- Media coverage, including press releases or articles mentioning the brand
Tips for preparing your evidence:
- Organise everything chronologically and by class of goods or services
- Include both online and offline usage (e.g. ecommerce and in-store)
- Use dated screenshots, stamped invoices or PDFs wherever possible
Deadline:
File your evidence within three months of IP Australia processing your SGP.
Step 4: Monitor For Evidence Filed By The Applicant
While rare, the person who filed the removal application may submit their own evidence, typically trying to show that you haven’t genuinely used your trade mark.
If they do:
- Review it carefully
- Get advice from an IP lawyer if you’re unsure about the next steps
- Decide whether to file evidence in reply
Step 5: File Evidence In Reply (If Needed)
When is this required?
Only if the applicant submits evidence and you want to challenge it or strengthen your own case.
What to submit:
- Additional proof, like newer sales records or marketing campaigns
- Clarifications to rebut their claims
Tip:
If their evidence doesn’t raise serious issues, you might only need to respond with a short written submission instead of submitting more documents.
Step 6: Make Final Written Submissions & Pay The Government Fee
This is the final phase of the process.
What to do:
- Draft written submissions explaining why your mark should remain on the Register
- Respond to any claims made by the other side
- Pay the prescribed government fee to IP Australia for a decision
What to cover:
- Reference section 92 of the Trade Marks Act again – show that your use meets the legal threshold, or that you had proper reasons for non-use
- Emphasise the strength of your evidence
- Explain the commercial role of your trade mark in your broader business strategy
What Counts As “Proper Reasons For Non-Use”?
Even if you haven’t used your trade mark in the past three years, you may still be able to defend it – but only if you had legitimate barriers preventing use.
Examples of proper reasons:
- Government regulations or import restrictions
- Delays due to COVID-19 or supply chain disruptions
- Business hibernation during restructuring or funding rounds
These reasons must be genuine and supported by evidence.
Real Example: How One Business Saved Their Trade Mark
ABC Pty Ltd received a non-use removal notice and acted fast. They filed their NIO within two weeks, then submitted strong evidence: sales invoices, packaging photos, and screenshots of their active website. They even included photos from trade show booths. IP Australia found this was enough to show genuine use – and the removal application was dismissed.
Result? They retained exclusive rights to their brand.
Practical Tips To Stay Protected
- Act quickly: The timeline is tight and missing one step can put your mark at risk.
- Get legal help: Opposing a removal application can be complex — an intellectual property law expert can make all the difference.
- Keep your records organised: Save marketing materials, sales invoices, and product images regularly.
- Set up a watch service: Monitor the Australian Official Journal of Trade Marks so you’re alerted to any threats against your registrations.
Key Takeaways
Here’s a quick summary of the essential steps and tips to help you stay on top of a non-use removal application and protect your trade mark:
- A non-use application challenges your trade mark if it hasn’t been used in the last three years.
- You must lodge a Notice of Intention to Oppose within one month of the application being advertised.
- Your Statement of Grounds and Particulars explains why the trade mark should remain registered.
- Collect strong evidence of use during the relevant time period – including marketing, invoices and digital materials.
- Even if you haven’t used the mark, you may still defend it by showing proper reasons for non-use.
- You may need to reply to evidence from the applicant and make final written submissions.
- Ongoing record-keeping and early legal advice will make your defence stronger and smoother.
If you would like a consultation on what to do when a non-use removal application is filed against your trade mark, you can reach us at 1800 730 617 or team@sprintlaw.com.au for a free, no-obligations chat.
Meet some of our Intellectual Property Lawyers
Get in touch now!
We'll get back to you within 1 business day.
Top 3 Legal Mistakes
Book in a free consultation with us to discuss your legal needs.