As an IP attorney, I’ve helped many clients navigate the complexities of trade mark applications. But what happens when you no longer want to proceed with your trade mark? Maybe you’ve had a change in business direction, discovered a conflict with another brand, or simply no longer need protection. That’s where trade mark withdrawal comes in, and it’s a process that’s more common (and more strategic) than most people think.

What Exactly is Trade Mark Withdrawal?

Think of a trade mark application like a formal RSVP to the IP Office, you’re saying, “Hey, I want to register this name/logo/mark.” But sometimes plans change. Withdrawing a trade mark application is like politely letting the Registrar know that you’ve changed your mind and you’re doing it officially, in writing.

Under Section 214 of the Trade Marks Act in Australia, any person who has filed an application, notice or request can withdraw it at any time while it’s still being considered by the Registrar. Once you notify the Registrar in writing, the application can be removed from the system and published as “withdrawn” (as per regulation 21.10).

When and Why Would You Withdraw a Trade Mark Application?

Here’s when trade mark withdrawal can be considered-

  • You discover a potential infringement or similarity with an existing mark.
  • You’ve decided to rebrand or change your business model.
  • You filed prematurely and want to reassess your strategy.
  • There’s been a change in ownership or vested interest in the application.

Whatever the reason, the important thing is this- withdrawal should be intentional and clear. If you don’t specify that you’re withdrawing the application, the Registrar may need to clarify your intent, which delays the process.

Who Can Withdraw the Trade Mark Application?

You might assume only the original applicant can pull back the application, but there’s a bit more flexibility-

  • The original applicant can always withdraw.
  • If the application was filed jointly, all applicants need to sign the withdrawal notice.
  • A successor in title, meaning someone who now legally owns the rights to the mark (through assignment or other transfer), can also withdraw it, but they need to show proof that the rights have indeed vested in them.
  • An authorized representative of either of the above can withdraw on their behalf, again, with the right authorization documents.

What Does Trade Mark Withdrawal process involve?

Here’s what the step-by-step process usually involves-

  1. Draft a clear written notice of withdrawal– It must specify exactly what’s being withdrawn, whether it’s an application, notice, or request.
  2. Match the names– The withdrawal notice must match the name(s) on the original application. If a new party is making the request, supporting documents showing vested rights must be provided.
  3. Authorization check– If someone else is withdrawing on the applicant’s behalf, the authorization must be valid and traceable.
  4. Registrar review– The Registrar will check if the application has already been processed. If it has, withdrawal may not be accepted, unless there’s an office error or truly exceptional circumstances.
  5. Notification and publication– If everything’s in order, the Registrar updates the trade mark database, issues a standard notice, and publishes the withdrawal. Your application’s status will change to “withdrawn”, and the world will know you’ve officially stepped away.
  6. If it’s not in order– The Registrar will notify the applicant, explain what went wrong, and (if possible) suggest what to fix. No silent rejections here, it’s an open dialogue.

Trade Mark Withdrawal vs. Lapsing-A Common Confusion

One thing I always clarify with clients, i.e. Withdrawing an application is different from letting it lapse. A withdrawn application is terminated immediately on the date the notice is received. It’s a clean break. A lapsed application, on the other hand, sticks around for a while, sometimes months before being considered inactive. This can lead to lingering issues, like being cited against other applications, even when you no longer intend to pursue registration. So, if you’re sure about not moving forward, withdrawal is the cleaner and more definitive route.

A Few Final Takeaways

Having handled trade mark portfolios for businesses of all sizes, here’s my honest advice-

  • Think before you file but also don’t hesitate to withdraw if it no longer makes strategic sense.
  • Keep records of everything, i.e. authorization documents, title assignments, and all correspondence.
  • If you’re unsure, seek guidance. Withdrawing improperly could leave your application hanging in limbo, or worse, miscommunicate your intent.

Let’s Talk

At our IP firm, we don’t just file trade marks, we help you make smart decisions every step of the way. If you’re considering withdrawing a trade mark application, or just need clarity on your options, I’m here to help.

Contact us to learn more about how LexGeneris can assist you with all your intellectual property needs. You can also schedule a no-cost consultation with our team of expert IP Attorneys Australia, IP Attorneys India, and IP Attorneys New Zealand.

 

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