73 - Use it or lose it - trade mark non-use

Australia Trademark Non-Use Removal: Use It or Lose It (Trade Marks Act s92)

The episode explains that Australian trademark registration is conditional on genuine use and can be removed under the “use it or lose it” principle via a non-use removal application to IP Australia under s92 of the Trade Marks Act 1995. Any person can apply, three years after the filing date, and the decision assesses use in Australia during a three-year lookback window; even a single genuine use can be enough, but token or overseas use does not count, and the application can target all or some goods/services. Two grounds are covered: s92(4A) lack of genuine intention to use at filing, and s92(4B) actual non-use in the relevant period, with owners needing evidence to rebut non-use. Recent 2025 cases (Whiplash/Whiplash’d and Butterful & Creamorous) show removal can’t be limited by state, use anywhere in Australia can defeat removal, and the intention-to-use evidentiary bar is low, making s92(4B) more practical. The host advises documenting Australian use, ensuring authorized user arrangements are recorded, and targeting removal applications carefully by class. 00:00 Trademark Not Set-and-Forget

01:23 Podcast Intro and Disclaimer

02:30 Use It or Lose It Basics

03:37 Timing and Use Requirements

05:02 Two Grounds Under Section 92

06:18 Whiplash Case Lessons

10:24 Butterful Case on Intention

13:48 What Counts as Genuine Use

16:31 Protect Your Mark With Evidence

18:18 Challenging a Competitor Strategically

19:51 Key Takeaways and Wrap-Up

https://ipfirstresponse.ipaustralia.gov.au/options/trade-mark-non-use