Responding to a trade mark non-use removal application and the IP Australia process

Someone has filed a non-use removal application against your registered trade mark. That application, lodged with IP Australia, asks the Registrar to strike your mark off the Register because it has not been used for the goods or services it covers. It can be a genuine threat to a brand you have built over years, or it can be a strategic move by a competitor clearing space for their own mark. Either way, the process runs on fixed deadlines, and the first one can arrive sooner than you expect.

If you respond correctly, the process ends with a decision from a delegate of the Registrar that either keeps your registration intact, keeps it for the goods or services you can prove you use, or removes it. What many owners assume is that "defending" the mark starts with filing a notice of intention to defend. It does not. In a removal proceeding the owner's first filing is a notice of intention to oppose, and the two-month window to file it starts from publication of the removal application, not from any letter you receive. Missing that step is the fastest way to lose the registration without your evidence ever being seen.

What you need before you start

Before you lodge anything, gather the following:

• The removal application itself: the application number, the date it was filed, the grounds it relies on, and which goods or services it targets. The application can be made against any or all of the goods or services in your registration, so check the specification carefully (s 92 of the Trade Marks Act 1995 (Cth)).
• Your registration details: the mark exactly as registered, the full specification, the filing date, and the date the particulars were entered on the Register. A removal application based on three years of non-use can only be made once three years have passed from that entry date (s 93 of the Trade Marks Act 1995 (Cth)).
• Records of use in Australia: dated invoices, sales reports, packaging, advertising, website analytics and similar materials showing the mark in use during the relevant period. These are the raw material for your evidence.
• Control documentation: if a licensee, franchisee or related company used the mark, any licence, brand guidelines or quality control records that show the use happened under your control.
• A budget and a decision about the mark's value: fees apply at each step and the Registrar can award costs against a party on a fixed scale, so it is worth deciding early how much the registration is worth to you.

The item that trips people up most is the first one. The removal application is published in a database maintained by the Trade Marks Office, and the two-month clock for the owner's first step runs from that publication (reg 9.8 of the Trade Marks Regulations 1995 (Cth)). Do not assume IP Australia's notice will give you extra time. Treat publication as day one.

The process step by step

Confirm the application and work out the period under attack

The first step is to read the removal application and identify which of the two statutory grounds it relies on (s 92(4) of the Trade Marks Act 1995 (Cth)):

• No intention to use at filing: the applicant claims that when the mark was filed, the original applicant had no intention in good faith to use it in Australia, and that it has not been used since.
• Three years of non-use: the mark has remained registered for a continuous period of three years ending one month before the removal application was filed, and was not used in Australia during that period.

A non-use application may rely on either ground or both, and on no others. Work out the exact three-year window that applies, because everything you do from here targets that window. "Use" for this purpose means genuine use of the mark in Australia in the course of trade, as a badge of origin for the goods or services in question, in good faith. The High Court confirmed in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15 that goods bearing the mark which are offered for sale and sold in Australia can count as use of the mark in Australia, even where the registered owner did not knowingly project them into the Australian market.

File your notice of intention to oppose within two months

This is the critical deadline. Under reg 9.8 of the Trade Marks Regulations 1995 (Cth), the period for filing a notice of intention to oppose is two months from the day the removal application is published. The notice is in an approved form and is a short, low-cost document; it does not require you to marshal your evidence first. Lodge it early, then prepare your case.

If you do not file the notice, the removal application proceeds unopposed. Section 97 of the Trade Marks Act 1995 (Cth) requires the Registrar to remove the mark from the Register in respect of the goods or services specified in the application. No evidence, no hearing, no discretion. The registration is gone for the items under attack.

File a statement of grounds and particulars

Within one month of filing your notice of intention to oppose, you must file a statement of grounds and particulars (reg 9.9 of the Trade Marks Regulations 1995 (Cth)). This document tells the Registrar and the applicant which grounds you intend to rebut and the facts you rely on. It must be in an approved form and must be adequate: the Registrar will assess it, and an inadequate statement can be dismissed (reg 9.10 of the Trade Marks Regulations 1995 (Cth); s 99A of the Trade Marks Act 1995 (Cth)).

This is where the statutory framing of the defence matters. Section 100 of the Trade Marks Act 1995 (Cth) puts the burden on you, the opponent, to rebut the allegations of non-use. In practical terms you must be ready to establish one of the following:

• the mark was used in good faith in Australia during the relevant period (s 100(3)(a));
• the mark was used with additions or alterations that do not substantially affect its identity (s 100(3)(a)), which is how a logo used in a slightly different form than registered can still count;
• the mark was not used because of circumstances that were an obstacle to use during the period (s 100(3)(c)), such as a legal or regulatory restriction, which is sometimes described as special circumstances and is narrowly applied; or
• use by an authorised user counts as use by you, if that use was under your control (s 8 and s 7(3) of the Trade Marks Act 1995 (Cth)).

Extensions of time for filing the notice of intention to oppose or the statement are available only in limited circumstances, such as an error or omission or circumstances beyond your control, and they require a supporting declaration (reg 9.11 of the Trade Marks Regulations 1995 (Cth)). Do not plan around one.

Prepare your evidence in support

After you file your statement, the applicant gets an opportunity to defend the removal application by filing a notice of intention to defend within two months (reg 9.15 of the Trade Marks Regulations 1995 (Cth)). If the applicant does not file it, the opposition is taken to have succeeded and the mark stays registered.

If the applicant does defend, you then have three months from being given a copy of the notice of intention to defend to file your evidence in support (reg 9.16(3) of the Trade Marks Regulations 1995 (Cth)). Your evidence is the heart of the case. It usually takes the form of statutory declarations with exhibits, and it needs to show:

• Who used the mark: if it was not you, the control you exercised over the user;
• What was used: ideally a form matching the mark as registered or one that does not substantially alter its identity;
• Where: use in Australia, supported by Australian sales, invoices, shipping documents, advertising or website analytics;
• When: dated materials that fall inside the three-year window; and
• How: use as a badge of origin for the goods or services in the registration, not merely descriptively or internally.

Declarations from people with direct knowledge, such as a director or sales manager, can tie the documents together and explain gaps, product release dates and how the business operates. Quality and organisation matter more than volume. A concise set of dated documents that directly address the period will persuade a delegate far more than an unfocused dump.

Alternatively, you can request a hearing within the period for filing evidence in support (reg 9.17 of the Trade Marks Regulations 1995 (Cth)). If you file no evidence and request no hearing, the opposition is taken to have ended, the application is treated as unopposed, and removal follows.

Answer the applicant's evidence and file in reply

If you file evidence in support, the applicant has three months to file evidence in answer (reg 9.16(4) of the Trade Marks Regulations 1995 (Cth)). The applicant will use this round to attack your evidence, for example by arguing that the use shown was token, internal, outside the period, or for different goods or services. You then have two months to file evidence in reply (reg 9.16(6) of the Trade Marks Regulations 1995 (Cth)), which is your chance to answer those attacks. Evidence that is purely responsive belongs in this round; material that should have been in your evidence in support is much harder to introduce later.

Attend the hearing and receive the decision

After the evidence closes, the matter proceeds to a hearing or is decided on the papers. A delegate of the Registrar then determines the application (s 101 of the Trade Marks Act 1995 (Cth)). The possible outcomes are:

• No removal: where you establish use or otherwise rebut the grounds;
• Partial removal: where the mark is removed only for the goods or services you cannot show use for, which is a common and often strategic outcome;
• Removal with conditions or limitations: where the Registrar instead restricts the registration rather than removing it (s 102 of the Trade Marks Act 1995 (Cth)); or
• Full removal: where the grounds are established and no discretion is exercised.

Even where the grounds are established, the Registrar has a discretion to keep the mark registered if it is reasonable to do so, and may take into account use of the mark for similar goods or closely related services (s 101(3) and s 101(4) of the Trade Marks Act 1995 (Cth)). This discretion is why a partial concession strategy can work: conceding the classes you genuinely do not use can preserve goodwill and credibility for the classes you do.

The Registrar can also award costs against a party on the fixed scale in Schedule 8 of the Trade Marks Regulations 1995 (Cth), which covers items such as the notice of intention to oppose, the statement of grounds and particulars, each round of evidence and attendance at the hearing. A decision to oppose therefore carries a genuine financial risk, and the same is true for the applicant, which shapes settlement discussions on both sides.

Where owners get held up

Owners lose these matters at a few predictable points:

• Missing the two-month notice of intention to oppose deadline: the clock starts on publication of the removal application, not on any letter or email from IP Australia. If you miss it, the mark is removed without your evidence being considered.
• Confusing the owner's notice of intention to oppose with the applicant's notice of intention to defend: the notice of intention to defend belongs to the party seeking removal. Filing the wrong document, or assuming the applicant must act first, can cost you the registration.
• Evidence that misses the window: materials dated before or after the three-year period, or that do not show use in Australia in the course of trade, will not rebut the allegations. Check every exhibit against the window before you file it.
• Undocumented use by a licensee or related company: use by an authorised user only counts as your use if it was under your control (s 8 of the Trade Marks Act 1995 (Cth)). Quality control over goods or services, or financial control over the user's trading activities, is taken to be control, but you need the records to prove it.
• Using the mark in a materially different form: use with additions or alterations will only count if it does not substantially affect the identity of the mark as registered. If your branding has drifted from the registration, that drift can undo an otherwise good defence.

When a trade marks lawyer or attorney earns their fee

This is a process where professional help is often the difference between a strong and a weak defence. A registered trade marks attorney or an intellectual property lawyer can:

• assess the grounds, calculate the exact three-year window, and give an early view on whether the use evidence is strong enough to defend or whether a negotiated outcome is wiser;
• prepare and lodge the notice of intention to oppose and the statement of grounds and particulars in the approved forms, and make sure the statement meets the adequacy standard rather than being dismissed;
• plan the evidence strategy, draft the declarations, and organise the exhibits so the delegate can quickly see the who, what, where, when and how of your use;
• manage extensions of time where a genuine ground exists, such as an error or omission or circumstances beyond your control;
• advise on partial concessions, narrowing the specification, coexistence agreements or settlement, and appear at any hearing before the delegate;
• advise on the costs exposure on the Schedule 8 scale, and on the options if the decision is adverse, including an appeal to the Federal Court.

An early professional review is usually cheap compared with the cost of lodging a defence that fails because the evidence does not match the period or the registered form of the mark. If the mark genuinely supports your business, a lawyer's first job is to tell you honestly whether it is worth fighting for.

The genuine-use evidence and the two-month deadline

The single factor that decides whether your registration survives is evidence of genuine use of the mark as registered, in Australia, in good faith, inside the exact three-year window, and filed in time to be considered. But none of that evidence counts for anything if you miss the two-month deadline to file your notice of intention to oppose from publication, because an unopposed application results in removal as of right. The deadline gets you into the game; the evidence decides the result.

Act in this order: confirm the application and the window, lodge the notice of intention to oppose immediately, file your statement of grounds and particulars, and then build the evidence file against the window. If the use evidence is genuinely thin, concede the classes you cannot support, negotiate a narrowing or coexistence, or let the registration lapse and file a fresh application that reflects what you actually trade in today. What you should not do is nothing, or assume that the applicant will go away. The process is time-sensitive, but it is manageable, and most registrations that are lost to non-use are lost to missed deadlines rather than to weak marks.