Removal of Trade Marks for Non-Use: Applying and Responding

Last Updated on 22/07/2026 by Damin Murdock

A trade mark can be removed from the Australian register if it has not been genuinely used in trade, and this article explains how to apply for removal and how to defend against it.

Trade Mark registration does not provide boundless and unconditional protection for its owner. An owner of a registered mark must use the mark to prevent it from losing its protection. The Trade Marks Act 1995 (Cth) (the “Act”) contains provisions that allow a party who wishes to register a similar mark to apply to have a registered mark removed for ‘non-use’.

What is a non-use removal of a trade mark?

That party can then file an Application for Removal of Trade Mark for Non-Use (“Application”) in accordance with the Trade Marks Regulations 1995 (the “Regulations”) on the grounds that;

1. on the day the Trade Mark was registered, the owner had no good faith intention to use, assign or authorise the use of the mark in Australia, and has not used the mark in Australia; or
2. where the trade mark has been continually registered for a period of 3 years, the owner has not used the trade mark;

in relation to the class of goods and/or services to which the Application relates.

How do you respond to a non-use removal application?

Any person may oppose an Application by filing a Notice of Opposition (“Response”) within two months of the Application being advertised in accordance with the Regulations.

Who has the burden of proof in a non-use application?

The party making the response has the burden of proof in rebutting the applicant’s claim by establishing use of the mark in good faith by the registered owner or an authorised user. It was stated in Electrolux Ltd v Electrix Ltd (1954) that said use of the trademark must be genuine and substantial in a commercial sense.

What counts as genuine use of a trade mark?

Use by an authorised user of the trade mark will be sufficient to show the use is genuine and substantial in a commercial sense. A person is an authorised user if he or she uses the mark in relation to goods or services under the control of the owner of the trade mark. Authorised use is taken to be a use by the owner of the trade mark.

Who decides a non-use application?

The matter can be decided by the Registrar after the Application, Response, and all evidence and further particulars have been lodged. In the alternative, the Registrar can refer the matter to a suitable Court (being a Federal or Supreme Court).

Why genuine use matters for enforcement

Maintaining genuine use is not only about surviving a non-use challenge; it also underpins your ability to enforce the mark against infringers. The Federal Court decision in Microsoft Corporation v Ezy Loans shows how far a court will go to protect an actively used trade mark, awarding substantial compensatory and additional damages for infringement of the owner’s registered marks.

Get help with a trade mark non-use application

Applying for or defending a non-use removal turns on evidence of genuine commercial use, and getting that evidence wrong can cost you a mark you have held for years. If you are protecting a brand or challenging a dormant registration, our technology and IP law team from Sydney can assess your position and handle the application or opposition.

Mr Damin Murdock of Leo Lawyers holds a Juris Doctor in International Trade Law and a Masters of Laws in International Business Transactions from The Netherlands. If you are looking for an international lawyer to represent you in drafting international contracts or representation in arbitrations, feel free to contact Mr. Damin Murdock on (02) 8201 0051 or at office@leolawyers.com.au.

DISCLAIMER: This article is not to be taken as legal advice and is general in nature. If you require specific advice, please contact us.