Trade Mark Use, Renewal & Maintenance

Registering a trade mark is a major milestone in building and protecting your brand. But the reality is this, i.e. securing registration is just the beginning. If you want to keep your rights enforceable, defend your brand, and get the most out of your investment, your trade mark needs consistent and deliberate maintenance over time.

Active and consistent use

Thus, the main part of trade mark maintenance is simple, i.e.  use it or risk losing it. In Australia, if a registered mark hasn’t been used for a continuous period of three years under Section 92 of the Trade Marks Act 1995, it becomes vulnerable to a non-use application. This means someone else could apply to have it removed if they want to register a similar mark and yours is in the way.

But not all use counts. Under Australian law, use must be “as a trade mark”, which means it must function as a badge of origin, i.e. signaling to consumers that the goods or services come from you and not someone else. As clarified by the courts in Self Care v Allergan and Coca-Cola v All-Fect, use is judged objectively, and the context matters, i.e. how the mark is displayed, how consumers perceive it, and whether it truly functions to distinguish your brand.

So, using your trade mark descriptively (like “fresh milk” for dairy) won’t cut it. But if even part of the sign’s use helps consumers connect it with your goods or services, it may still qualify.

Monitor the market

Once your mark is registered, you’re responsible for defending it. IP Australia doesn’t proactively stop others from using similar marks.

Two things to keep an eye on-

• Competitor Use– Watch out for businesses using names, logos, or slogans that look or sound too much like yours in the same industry.
• New Applications– Regularly check the IP Australia database for new filings that might conflict with yours.

If you spot something risky, you can object during the application process through a notice of opposition or send a cease-and-desist letter if the infringement is already live. Early action can save you a legal mess later.

Keep your registration details updated

If your business name, address, or ownership changes, your trade mark record needs to reflect that. Otherwise, enforcement or renewal becomes a lot harder.

Update your registration if-

• Ownership transfers or the business is sold
• You restructure (e.g. from sole trader to company)
• Your business or service address changes
• You change your trade mark attorney or representative

Small admin gaps can lead to big enforcement problems, don’t let them.

Review and trim the scope if needed

If you registered your trade mark broadly, i.e. covering more goods or services than you actually sell, consider narrowing it. Why? Because covering unused classes makes your registration vulnerable to partial non-use removal. While you can’t add to a registration after filing, you can remove or reduce the scope to match your current commercial activity. Keeping it lean and relevant helps avoid legal challenges and makes your rights easier to defend.

Renew your trade mark on time

A registered trade mark in Australia lasts for 10 years from the filing date and can be renewed indefinitely. But if you miss a deadline, your rights can lapse, and regaining them isn’t always easy. Here’s what one should know-

• You can renew up to 12 months before the expiry date.
• There’s a 6-month grace period after expiry with extra fees.
• After that, the registration is gone, and someone else might jump in.

We recommend maintaining a centralized renewal calendar and working with an IP professional to track these deadlines. Missing a renewal can undo years of brand-building.

Understand What “Use” Really Means

Trade mark use is broader than just slapping your logo on packaging. The law recognizes many forms of use, i.e. as long as it still functions to distinguish your goods or services.

This includes-

• Aural use: If your brand name is spoken during sales or marketing (like over the phone), that counts.
• Domain names and social handles: If they help consumers connect your brand to specific products or services, it may be valid trade mark use.
• Metadata, sponsored ads, and SEO terms: These can be murky. Courts have found that hidden metatag use often doesn’t qualify unless it’s visible or clearly linked to branding.
• Use on websites or social media: If your website targets Australian consumers and displays the trade mark prominently, that can establish local use.
• Physical and digital packaging: Even product displays (like capsules visible through packaging) can function as branding.

Thus, if your mark is being used to signal “this is us” in the eyes of the customer, that helps keep it valid.

Plan for global maintenance

If you’ve registered your trade mark internationally, through the Madrid Protocol or directly in foreign countries, don’t assume each system works like Australia’s. You’ll need to understand and know-

• Different renewal cycles
• Varying use requirements
• Local representation rules in each country

Failing to maintain a foreign registration could mean losing protection in key markets, even if your brand is thriving there. An international IP advisor can help you map and manage all these variables.

Business names and trade mark use

Just because you’re operating under a name doesn’t mean you’re using it as a trade mark. Business name registration with ASIC doesn’t grant exclusive rights or automatically show trade mark use. To be considered genuine trade mark use, the name must function as a badge of origin. That means using it in a way that sets your goods or services apart from others, i.e. not just in business paperwork.

Thus, Trade mark registration gives you a powerful edge, but only if you keep it sharp. That means-

• Using your mark the right way
• Staying vigilant about enforcement
• Updating records and trimming where needed
• Renewing on time
• Being smart about your international portfolio

At our firm, we help clients protect their trade marks at every stage, i.e. from registration to long-term enforcement and maintenance, both locally and globally. If you need help reviewing your current marks, setting up a monitoring strategy, or managing international renewals, we’re here to support you every step of the way.

Let your trade mark do what it’s meant to, i.e. protect your brand and grow your business.