Cancellation of a Trade Mark Registration

Trade marks indeed play a crucial role in protecting your brand identity. But what happens if you no longer need yours, or if there’s a legal dispute over it? In some cases, cancelling a trade mark registration might be the right move. Whether it’s a strategic decision or a legal necessity, understanding how cancellation works and getting it done correctly can save you time, money, and headaches.

Why would someone cancel a trade mark registration?

Trade mark cancellation is not always about legal trouble. In fact, it’s often a voluntary step taken for a range of practical reasons, such as-

• The brand is no longer in use– Maybe your business has moved on, rebranded, or shut down.
• The trade mark is blocking another application– Your mark might be standing in the way of registering a new, more relevant mark.
• Avoiding a costly legal battle– If there’s a looming threat of a non-use challenge or rectification action, cancelling the registration voluntarily can help you sidestep a legal dispute.
• You no longer hold rights in the mark– If ownership has changed or the original interest no longer exists, cancellation may be required.

Voluntary cancellation can be a clean, proactive way to handle things, i.e. so long as it’s done correctly.

Who can request a cancellation?

Only the registered owner of a trade mark (or their authorized representative) can request to cancel a registration. This isn’t something a third party can do, i.e. unless a court is involved. A prescribed court can also order cancellation in certain circumstances, particularly where rectification is being pursued (for example, under Part 42 of the Trade Marks Regulations 1995).

Our firm can represent registered owners in submitting cancellation requests and help third parties seek court-ordered cancellation where appropriate.

The Process of Cancelling a Trade Mark Registration

The cancellation process typically looks like this under Section 84 of the Trade Marks Act 1995:

Step 1: File a Written Request

The owner (or their IP attorney) must file a signed request in writing with IP Australia. The request should:

• Be made in the correct name (matching the Register)
• Clearly state the desire to cancel the trade mark
• Include all registered owners’ signatures (if co-owned)
• Mention the authorized signatory’s position, in case of a company

We handle all aspects of preparing and filing this request for you, ensuring that no details are missed.

Step 2: Preliminary Checks by IP Australia

Before anything is cancelled, IP Australia checks-

• Whether the trade mark is in the correct status (i.e., currently registered or renewal due)
• If there are any claimed interests or pending assignments attached to the mark
• If the request matches the registered owner’s details

If anything doesn’t line up, say, your company changed names or transferred ownership, we help you file supporting documents (like name change declarations or assignment deeds) to get everything up to date before the cancellation proceeds.

Step 3: Notification to Interested Parties

If there are any claimed interests (e.g., licensees or potential assignees), IP Australia notifies them. These parties then have two months to object by seeking a court order to stop the cancellation. During this time, IP Australia will hold off on processing the cancellation. If all parties agree to the cancellation, or if there’s no objection within two months, the Registrar moves forward. We assist not only in notifying these parties but also in managing their responses and preparing any legal agreements or notices to ensure the cancellation can proceed smoothly.

Step 4: Finalizing the Cancellation

Once the waiting period is over and no court order has been received (or if all parties give written consent), IP Australia will cancel the registration. A public notice is then issued, and the mark is officially removed from the Register. If a court later orders that the mark be reinstated, the Registrar can restore it. We monitor the entire timeline, follow up with all stakeholders, and ensure nothing falls through the cracks.

How We Help You?

Cancelling a trade mark might seem straightforward, but even small administrative errors, i.e. wrong names, missing signatures, outdated records, can stall or derail the process. At our firm, we offer:

• Detailed trade mark reviews before cancellation to ensure it’s the right step
• Full preparation and filing of cancellation requests
• Management of all communications with IP Australia and interested parties
• Legal support in case objections arise or a court order is involved
• Advice on alternatives, like assignments or renewals, if you’re not fully sure about cancelling

Whether you’re tidying up your IP portfolio or navigating a complex trade mark dispute, cancelling a trade mark can be a smart move when done right. We’re here to guide you through every step, quickly, accurately, and with full transparency.

Thinking about cancelling a trade mark? Reach out to us today for a quick consultation, and let’s figure out the best way forward.