Use it or lose it: why registering your trade mark is only half the job
A registered trade mark is a powerful asset, but it is not a set-and-forget one. Under Australian law...
Trade Marks - Australia
Use it or lose it: why registering your trade mark is only half the job
By IP Wealth · 20 July 2026 · 5 min read
A registered trade mark is a powerful asset, but it is not a set-and-forget one. Under Australian law, a mark you are not genuinely using can be challenged and stripped back after three years, and even a global superstar is not immune.
This month a Sydney beachwear brand, Swim Shady, succeeded in having part of rap artist Eminem's SHADY trade marks removed in Australia for non-use. A delegate of the Registrar of Trade Marks found the marks had not been genuinely used as a trade mark on clothing, footwear, headwear, bags and leather goods here during the relevant period, and that most of the SHADY branding traded off the artist's persona and music rather than functioning as a product brand. From August 2026, those categories fall away.
It is a headline-grabbing result, but the principle behind it applies to every Australian business that owns a trade mark. Here is what non-use removal is, why it exists, and how to make sure your own registrations stay safe.
What is non-use removal?
When you register a trade mark in Australia, you get the exclusive right to use it for the goods and services listed in your registration. The trade-off is that the system expects you to actually use it. Registers are meant to reflect marks in real commercial use, not to let businesses warehouse names they never intend to trade under.
So the Trade Marks Act 1995 (Cth) lets a third party apply to remove all or part of a registration on the ground that the owner has not used the mark. Broadly, a mark can be exposed to a non-use application once it has been registered for a period and there has been a continuous stretch of three years with no genuine use for the goods or services in question.
The key point. A trade mark only protects the goods and services you actually use it on. Unused classes can be removed on application, which can shrink your protection right when you need it most, for example when you are trying to stop a competitor.
Why the Swim Shady result matters for ordinary businesses
The Eminem case is a useful teaching moment precisely because the owner is famous. Fame and reputation did not save the registration. What mattered was evidence of genuine use, as a trade mark, on the specific goods, in Australia, during the relevant window. On the record before the delegate, that evidence was thin for the clothing and accessories classes, so those classes were removed.
The same logic applies whether you are a household name or a local operator. If you registered broadly years ago, across classes you hoped to expand into but never did, those unused parts of your registration are vulnerable. And they often become a target at the worst possible time, when you raise an objection against someone else and they respond by attacking the classes you are not using.
Common ways businesses get caught out
- Registering in extra classes "just in case", then never trading in them.
- Rebranding, so the mark actually in use no longer matches the mark on the register.
- Pausing a product line or brand for several years without a protection strategy.
- Using a mark only overseas while assuming that protects the Australian registration.
- Keeping poor records, so genuine use cannot be proven when challenged.
How to keep your registration strong
The good news is that non-use risk is manageable with a little housekeeping.
- Audit your registrations. Check that the goods and services on the register still match what you actually sell, and flag classes you have never used.
- Keep evidence of use. Dated invoices, packaging, listings, advertising and website screenshots build the proof you may one day need.
- Mind the gaps. If a brand is going dormant, get advice before three years of non-use quietly accumulates.
- Align the mark to reality. After a rebrand, consider filing for the version of the mark you are actually using.
- Review before you enforce. Before you challenge someone else, make sure your own registration is not exposed to a counter-attack.
Frequently asked questions
How long can a trade mark go unused before it is at risk in Australia?
As a general guide, a registration can be exposed to a non-use removal application where there has been a continuous period of three years without genuine use for the relevant goods or services, once the mark has been registered for the required time. The specifics depend on the circumstances, so it is worth getting advice.
Does using my trade mark overseas protect my Australian registration?
Generally no. Australian registrations expect genuine use in Australia. Overseas use will not usually save an Australian registration from a non-use challenge.
Can only part of my registration be removed?
Yes. Non-use removal can be partial. A mark may stay registered for the goods and services you genuinely use, while unused classes are struck out, which is exactly what happened in the Eminem matter.
What counts as genuine use?
Broadly, real commercial use of the mark as a trade mark, to distinguish your goods or services in the ordinary course of trade, not token or purely internal use. Keeping good, dated records makes this far easier to prove.
Not sure your trade marks still cover what you sell?
We can review your registrations, spot the classes at risk, and help you keep your protection strong. Talk to the team at IP Wealth.
Book a trade mark reviewThis article is general information only and is not legal advice. It does not take account of your particular circumstances. For advice about your trade marks, please contact IP Wealth or a qualified trade mark professional. © 2026 IP Wealth Pty Ltd. All rights reserved.
