A trade mark must be used in the course of trade in Australia in relation to all of the goods or services for which the mark is registered. If it is not used for a continuous period of three years, a third party may apply to have the registration cancelled for non-use. Or, where a mark has been used only in relation to some of the goods or services for which it is registered, a third party may apply to have the registration restricted to those goods or services for which use can be shown.
In most cases, a non-use action cannot be filed less than five years from when the application to register the trade mark was submitted, so a trade mark owner has an initial period of five years in which to commence use. However, after five years, the owner must be able to demonstrate that the trade mark has been used in the preceding three years, or provide reasons as to why the trade mark could not been used during that period. The relevant three-year period commences three years and one month before the filing date of the non-use action. This is to allow an interested party to contact the trade mark owner to ask them to voluntary cancel or restrict their trade mark within one month before filing a non-use action, without a risk that the trade mark owner may immediately commence use to defeat a non-use action – use within that month does not fall within the relevant three year period.
Where a trade mark owner cannot demonstrate use of the trade mark or show a reason why the trade mark could not be used in the relevant period, the registration may still be saved as the registrar has a discretion to not cancel or restrict a registration, even where use has not been shown. This is typically exercised more in relation to declining to restrict a registration with relatively broad scope even though use is only shown for some of the goods or services.