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 trade mark is registered.
If it is not used for a continuous period of three years, a third party may apply to have the trade mark’s registration cancelled for non-use. Where a trade 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 the goods or services for which use can be shown.
For applications to register a trade mark that were filed before 24 February 2019, a non-use action cannot usually be filed less than five years from the date the application to register the trade mark was filed.
For applications to register a trade mark filed on or after 24 February 2019, a non-use action cannot usually be filed less than three years from the date the trade mark was entered into the Australian Register of Trade Marks.
This means that, depending on when an application to register a trade mark was filed, a trade mark owner has either five years from filing the application, or three years from the trade mark being recorded on the Australian Register of Trade Marks, in which to commence using the trade mark. However, after the relevant period has passed, 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 non-use 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 voluntarily 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 in order to defeat a non-use action – use within that month does not fall within the relevant three-year period.
An exception to these periods is where the non-use action also alleges that the owner of the trade mark did not have a genuine intention to use the trade mark in good faith when they filed the application to register the trade mark. Also, the owner has not used the trade mark in good faith since the trade mark was registered. In such cases, a non-use action may be filed at any time after the trade mark registration application has been filed.
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 of Trade Marks 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.