Use it or Lose it: Trade Mark Lessons from Village Roadshow

ABSTRACT

In Village Roadshow IP Pty Ltd v VUR Village Trading No 1 Ltd [2025] FCA 428, the Federal Court of Australia addressed the removal of trade marks for non-use under the Trade Marks Act 1995 (Cth) (TMA), affirming the importance of maintaining the currency and integrity of the Register of Trade Marks (Register), while also endorsing the court’s discretion to allow trade marks to remain registered despite findings of non-use by the Registrar.

RELEVANT LEGAL FRAMEWORK

Under the Trade Marks Act 1995 (Cth), a registered trade mark may be removed from the Register on the basis of non-use.[1] A party may apply to the Registrar by filing a non-use removal application, relying on either of the following grounds:

1. Lack of good faith intention: at the time the application for registration was made, the applicant did not have a genuine intention in good faith to use the trade mark in Australia,[2] to authorise its use, or to assign it to a body corporate for use in connection with the relevant goods or services. Further, the registered owner must not have used the trade mark in Australia, or must not have used it in good faith, at any time before the one-month period immediately preceding the filing of the non-use application;[3] or
2. Non-use for three years or more: the trade mark has remained on the Register for a continuous period of three years, ending one month before the date the non-use application is made, and the registered owner has not used the mark in Australia, or has not used it in good faith, in relation to the relevant goods or services during that time.[4]

PROCESS OF REMOVAL FOR NON-USE

A non-use removal application may seek partial or full removal of the trade mark from the Register. The applicant must lodge the application with the Registrar and pay the prescribed fee.

However, where the relevant proceedings are already pending before a prescribed court, the applicant must instead apply directly to that court for an order directing the Registrar to remove the trade mark from the Register. If the application is lodged with the Registrar and they consider the matter should be resolved by a court, the Registrar may refer the application to the appropriate court, which will then assume jurisdiction.

This procedure ensures that where complex or contested issues arise, the appropriate judicial body determines whether the trade mark should be removed, maintaining the integrity of the Register and protecting the interests of the parties involved.

Any person may oppose a non-use removal application by filing a notice of opposition with the relevant judicial body;[5] however, the burden of proving use of the trade mark shifts to the party opposing the removal.[6]

If no opposition is filed within the prescribed period and the Registrar is satisfied that the non-use application complies with the relevant requirements, the trade mark must be removed to the extent sought in the application.[7]

Village Roadshow IP Pty Ltd v Vur Village Trading No 1 Ltd [2025] FCA 428

Facts

VUR Village applied to remove Village Roadshow’s marks under s 92(4)(b), alleging non-use over a statutory period (6 August 2016 to 6 August 2019) for goods/services in classes 9, 35 and 41. The Registrar’s delegate found the marks had not been used for various goods/services and ordered their partial removal. Village Roadshow appealed the decision to remove its trade marks; VUR Village cross-appealed aspects of the decision that retained registration.

Shortly before the trial, the parties reached a settlement and jointly sought consent orders to allow the appeal and dismiss the cross-appeal, with no objection from the Registrar.

Issue

Whether the Court should set aside the Registrar’s decision to remove the trade marks, despite no hearing on the merits, where the parties had settled and the Registrar did not object.

Decision

O’Callaghan J made the orders by consent, setting aside the delegate’s decision and allowing the trade marks to remain registered. His Honour accepted that, despite no hearing on the merits, it was appropriate to reverse the Registrar’s decision, provided:

• the integrity of the Register was not undermined; and
• the Registrar did not object to the orders.

His Honour adopted the approach of Burley J in Hungry Spirit Pty Ltd v Fit n Fast Australia Pty Ltd [2020] FCA 883 in reversing the decision of the delegate, while emphasising that although the appeal is de novo, the Court must be satisfied that the orders do not compromise the objective of a “pure” and accurate Register in the public interest, citing Health World Ltd v Shin-Sun Australia Pty Ltd (2010) 240 CLR 590 at [22].

The case emphasises the crucial role of non-use provisions in maintaining the integrity of the Register. The decision demonstrates the Federal Court’s willingness to set aside a delegate’s non-use determination by consent where both parties agree and the Registrar does not oppose the outcome, particularly in circumstances where new evidence may alter the original findings.

PRACTICAL TAKEAWAYS

• Use it or lose it: registered trade marks can be removed for non-use if not used in good faith for a continuous period of 3 years. Businesses must actively use their trade marks in Australia to maintain protection and avoid costly litigation; registration alone is not enough and it is critical that the use is within the relevant class of registration.
• Document trade mark use: keep clear records of when and how trade marks are used (e.g. marketing, sales, advertising, packaging). This evidence is crucial if a non-use application is later filed.
• Good faith use matters: it's not merely about using the mark; the use must be genuine and in good faith, not token or contrived merely to maintain registration.
• Non-use applications can be contested: if a business faces a non-use application, it can oppose the application or provide evidence of use. The burden of proof shifts, but it remains possible to retain the mark with proper evidence or through exercise of the court’s discretion.
• Settlement is possible, but scrutinised: even where parties settle non-use proceedings, courts will still consider the public interest in keeping the Register accurate and not cluttered with unused marks. Consent orders will only be made if they do not undermine that integrity.
• Registrations should be reviewed regularly: businesses should review their trade mark portfolios periodically to ensure all registrations are actually used and still relevant to their goods or services. Consider removing or consolidating unused marks proactively to avoid challenges.
• Pending proceedings affect jurisdiction: if a trade mark is already the subject of court proceedings, any non-use removal application must be made to the court, not the Registrar — a procedural point that can affect strategy and timing.
• Importantly, seek advice as early as possible!

For more specific information on any of the material contained in this article please contact Marissa Mackie on +61 8 8217 1361 or mmackie@normans.com.au

[1] Trade Marks Act 1995 s 92(1), 92(4) (‘TMA’).

[2] Regarding intention, Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 ; 88 ALR 217; 95 FLR 418; 12 IPR 417.

[3] TMA (n 1) s 92(4)(a).

[4] Ibid s 92(4)(b).

[5] Ibid s 96(1)-(5).

[6] Ibid s 100(1).

[7] TMA (n 1) s 97.