The Three-Year Non-Use Vulnerability Under Section 92

Australia has one of the shortest non-use vulnerability periods in the world for registered trade marks. Under Section 92 of the Trade Marks Act 1995, a registered mark can be removed from the Register if it has not been used for a continuous period of three years. This is notably shorter than the five-year standard applied in most other jurisdictions, including the European Union, the United Kingdom, China, Japan, and under the TRIPS Agreement’s minimum threshold. For brand owners who register marks defensively or delay their commercial launch in Australia, this creates a real and often underestimated risk.

The Two Grounds for Removal

Section 92(4) provides two distinct grounds for a non-use removal application:

Ground (a): No Good Faith Intention to Use

Under Section 92(4)(a), a mark may be removed if the applicant had no intention in good faith to use the mark (or authorise its use, or assign it for use) at the time the application was filed, and the mark has not in fact been used at any time before one month preceding the non-use application. This ground targets speculative or warehousing registrations — marks filed with no genuine commercial purpose. There is no initial grace period for this ground; a removal application can be filed at any time.

Ground (b): Three Years of Non-Use

Under Section 92(4)(b), a mark may be removed if it has remained registered for a continuous period of three years ending one month before the non-use application is filed, and during that period neither the owner nor an authorised user used the mark in Australia in relation to the relevant goods or services. This is the principal non-use ground and the one most commonly invoked.

The Grace Period

The timing rules for when a non-use application can be filed under Ground (b) depend on when the mark was filed:

• Marks filed before 24 February 2019: The initial grace period is five years from the filing date of the application. After that period, a non-use application can be brought based on three years of continuous non-use.
• Marks filed on or after 24 February 2019: The initial grace period is three years from the date the mark’s particulars were entered into the Register under Section 69 (i.e., the date of registration, not the filing date). This change, introduced by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018, significantly shortened the window of protection for newer registrations.

The practical effect is that for marks filed from February 2019 onward, a non-use removal action can be initiated roughly three years after registration, which itself typically follows twelve to eighteen months of examination and publication. This means a mark could face a non-use challenge as early as four to five years after the filing date.

The Burden of Proof

If no opposition is filed to a non-use application, the mark is automatically removed from the Register (Section 96). If the owner opposes the removal, the burden of proof shifts to the owner to demonstrate use of the mark in Australia during the relevant three-year period (Section 100). This is a critical feature: the person seeking removal does not need to prove non-use; the owner must prove use.

What Constitutes Use

To defeat a non-use application, the owner must demonstrate genuine use of the mark in Australia as a trade mark — that is, use as a badge of origin to distinguish goods or services. Evidence should demonstrate:

• Use in Australia: The mark must have been used within Australian territory, not merely in export markets or international advertising.
• Use as a trade mark: The mark must function as a source identifier, not merely as a decorative element, product description, or company name.
• Use for the registered goods or services: Use must relate to the specific goods or services for which the mark is registered. If the mark is registered for multiple categories, use must be shown for each category the owner wishes to retain.
• Use by the owner or an authorised user: Use by a licensee counts, provided the licence authorises use of the mark as a trade mark.

Obstacles to Use

Under Section 100(3)(c), the owner may also defeat a non-use application by demonstrating that the mark was not used because of circumstances that were an obstacle to use during the relevant period. These circumstances must be of serious weight — government intervention, import restrictions, regulatory barriers, or force majeure. Poor commercial conditions, lack of capital, or strategic decisions to delay a product launch are unlikely to qualify.

The Warehousing Risk

Australia’s three-year non-use period makes the country particularly hostile to warehousing — the practice of registering marks with no current intent to use them commercially, in order to block competitors or hold marks for future use. While warehousing can be a legitimate brand management strategy in jurisdictions with longer grace periods, in Australia it creates immediate vulnerability. A competitor or interested party can file a non-use removal application shortly after the grace period expires, and if the owner cannot demonstrate genuine use in Australia, the mark will be removed.

Strategic Recommendations

• Use your marks promptly: Begin genuine commercial use of registered marks in Australia as soon as possible after registration. Do not treat registration as the end of the process.
• Maintain use evidence: Keep organised records of sales, advertising, product photographs, distribution records, and invoices that demonstrate the mark in use on the registered goods or services in Australia.
• Audit your portfolio: Regularly review your Australian registrations for marks that are not in active use. Consider whether to invest in commercial use, licence the mark to a third party, or voluntarily cancel registrations that cannot be maintained.
• File strategically: Specify only the goods and services you genuinely intend to use or are currently using. Broad specifications create non-use vulnerabilities for categories where no use occurs.
• Use non-use removal offensively: If a blocking mark is preventing your registration and appears to be unused, an application under Section 92 can clear the path. The three-year period makes Australia one of the fastest jurisdictions for this strategy.

Key Takeaway

Australia’s three-year non-use vulnerability period is among the shortest in the world. For brand owners, this means that registering a mark is only the first step; genuine commercial use in Australia must follow promptly and be documented carefully. For applicants blocked by existing registrations, the short non-use period provides a powerful tool to clear the register of dormant marks. In either case, the message is the same: in Australia, you must use it or risk losing it — and the clock runs faster than almost anywhere else.