4 Questions to Ask a Lawyer About Cancelling a Trade Mark

Emily Young

• 8 February 2022
• 2 August 2022
• 5 min read

Trade marks are an essential part of building and maintaining your brand, providing you with exclusive rights to the use and commercialisation of your brand assets. You should consider registering a trade mark for your business’ most important intangible assets.

However, you may decide that you no longer need your trade marks anymore at some stage. In such an instance, you might consider cancelling your trade mark registration. To help you make an informed decision, this article will take you through four questions to ask a lawyer about cancelled trade marks.

1. Should I Cancel My Trade Mark?

A court might order that trade mark registration be cancelled in certain circumstances. However, cancellation of a trade mark is usually a voluntary request completed in writing by the trade mark owner.

Before cancelling your trade mark, it is best to ask a trade mark lawyer about whether it is the best option for you. There are several reasons why someone might choose to cancel their trade mark.

For example, a trade mark might be cancelled where the owner no longer uses the trade mark.

This will avoid the expense of any actions against you (for example, fighting a removal application filed against your registration) and reduce the need to pay trade mark renewal fees for something you no longer use.

2. How Can I Cancel My Trade Mark?

To cancel your trade mark, you will need to complete and submit the appropriate form. Once complete, this form can either be submitted through IP Australia’s online services or by post.

Once IP Australia receives your cancellation request, they will perform several checks. This includes checking that the request:

• is in the correct name;
• is filed by the registered owner of the trade mark;
• provides reasons for the cancellation; and
• has an appropriate signature.

If IP Australia has any issues regarding the completion of the form, they will reach out to you to correct the discrepancy. Once your cancellation form has been finalised, IP Australia will advertise the cancellation as such in the Australian Official Journal of Trade Marks.

To avoid any delays with the cancellation of your trade mark, seeking advice from your lawyer and ensuring you complete the relevant form correctly might be helpful. 

3. Can I Renew My Cancelled Trade Mark?

You might also wish to ask a lawyer about the process of renewing your cancelled trade mark to ensure you are certain in your decision. Cancellation of a trade mark means that you cease all rights to the registration. After your trade mark has been cancelled, you no longer have the right to use or authorise the use of the trade mark. Further, cancelling your trade mark means you also abandon all enforcement rights to the trade mark.

This means that you will not be able to renew your cancelled trade mark. If you wish to reinstate your rights to your cancelled trade mark, you must complete the entire registration process again. 

You should remember that even if you reapply for trade mark registration, you are not guaranteed success. Conflicting trade mark applications may have been registered or applied for in the interim, creating a barrier to your new trade mark registration. 

4. Can Someone Else Use My Cancelled Trade Mark?

As mentioned above, cancellation of a trade mark means that you cease all rights to the registration. This includes all rights to use the registration as a tool for enforcing your trade mark. However, even unregistered trade marks have some trade mark rights. Despite this, enforcing unregistered trade mark rights is much more difficult than enforcing registered trade mark rights.

However, if you have completely abandoned your trade mark, a third party will be able to use your trade mark for their own use. Therefore, before cancelling your trade mark, you should bear this in mind and discuss the matter with your lawyer.

Key Takeaways 

Although trade marks remain an invaluable brand asset, it is possible that you will decide that you no longer need your trade marks anymore at some stage. In that case, you might consider cancelling your trade mark. Some key questions you should ask a lawyer about cancelling a trade mark include:

• should I cancel a trade mark;
• how can I cancel a trade mark; 
• can I renew a cancelled trade mark; and
• can someone else use my cancelled trade mark? 

If you need assistance cancelling a trade mark in Australia, our experienced IP lawyers can help. You can get in touch with them by calling 1300 657 423.

Frequently Asked Questions