Registering an Abandoned Trade Mark

George Raptis

• 27 July 2021
• 23 August 2021
• 6 min read

If you come across a trade mark that is no longer in use, it may be considered an abandoned trade mark. Abandoned trade marks are available for registration upon removal from the Trade Mark Registry. This article explains:

• what abandoned trade marks are;
• key considerations to make before registering an abandoned trade mark; and
• the steps involved in registering an abandoned trade mark. 

Abandoned Trade Marks

As you may already know, the law protects trade marks for 10 years from their filing date. During this period, the trade mark must be in use, meaning the owner can: 

• sell the goods or services which the trade mark protects; or
• license their trade mark to other people. 

However, if a trade mark has not been continuously used for three years, the law considers the trade mark to have been abandoned. 

An abandoned trade mark is not automatically removed from the Registry once it has been in a state of non-use for a three year period. Rather, you must oppose the abandoned trade mark to remove it for non-use. As detailed below, only once the abandoned trade mark has been removed from the Registry can you apply to register the trade mark as its new owner. 

Key Considerations 

Before registering to apply for an abandoned trade mark, you should first consider whether you can prove that the owner has not used it. Proving that a trade mark that has been continuously registered for three years but has not been in use over this period can be difficult to prove. This is because IP Australia may deem a trade mark to have been in use if its owner: 

• sells at least one good or service bearing the trade mark; or
• advertises their business with the trade mark, even if it does not result in a sale. 

If you cannot prove that the trade mark is not in use, you cannot prove that the owner abandoned it. 

A second consideration you should keep in mind is why the owner no longer used the trade mark. For example, the trade mark owner may have decided not to use their trade mark for personal reasons particular to their business. However, the trade mark may also not be commercially viable if the owner registered it in the wrong class, or if it cannot protect a desired good or service. For this reason, you should consider the reasons why the trade mark was abandoned to determine whether the trade mark is capable of providing your business with adequate protection.

Then, consider whether to negotiate with the trade mark owner to assign you the trade mark. The assignment process refers to a transfer of trade mark ownership, which you must record with IP Australia. Whilst the assignment of an abandoned trade mark relies on the willingness of the trade mark owner to ‘hand over’ their mark, it can be a great way of owning a trade mark without having to reapply for the trade mark once you have successfully applied to remove it from the Registry. 

Steps to Register 

There are two main steps you should take when applying to register for an abandoned trade mark. 

1. Removal for Non-Use 

IP Australia must remove the abandoned trade mark from the Registry before you apply for it. You can apply to remove a trade mark after its three year period of non-use by filing a notice of intention to oppose with IP Australia. You must also support this notice of intention to oppose with a statement of grounds and particulars that details why you are opposing the application. In the instance of abandoned trade marks, the removal will be on the grounds of non-use. 

Your notice of intention to oppose will not immediately remove the abandoned trade mark. Rather, the trade mark owner has one month from the date they receive your opposition to defend your opposition. If the owner fails to respond, the trade mark application will likely be removed. However, suppose the owner defends the opposition. In that case, this will trigger a longer process of opposition which will require greater evidence on both your behalf (‘the opposer’) and the trade mark owner’s behalf (‘the defence’). 

2. Applying for a Trade Mark From Scratch 

Once IP Australia removes a trade mark from the Registry, it is likely available for registration by anyone. You must apply for a trade mark via IP Australia. Before applying for a trade mark, you should: 

• consider the type of mark you are applying for; 
• conduct a trade mark check to ensure similar or identical trade marks do not already exist; and
• choose the class or classes of goods or services that your trade mark will protect.

It is important that you closely follow the trade mark registration process as any amendments you need to make after you file your application with IP Australia will include further costs. 

Key Takeaways 

In Australia, a trade mark that has been registered for over three years but has not been in use is abandoned. Before registering an abandoned trade mark, you should consider whether:

• you have a strong case for removing the trade mark application through the process of opposition; 
• the trade mark is capable of providing you with the adequate protection you require; and
• you can negotiate with the trade mark owner to have their mark assigned to you. 

Upon removal of an abandoned trade mark, you can then apply to register it directly with IP Australia. If you need help with registering an abandoned trade mark, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page. 

Frequently Asked Questions