Responding to a Non-use Removal Application Against Your Trade Mark

Getting notice that someone wants your trade mark removed for non-use can feel like a direct threat to your brand. For many New Zealand businesses, the first reaction is either to ignore it, assume registration alone is enough, or scramble together weak evidence at the last minute. Those are common mistakes, and they can be expensive if your trade mark protects your trading name, product line, packaging, or the brand you have invested in before you print, launch online, or sign new supply deals.

A non-use removal application does not automatically mean you lose your rights. It does mean you need to respond carefully, understand what use counts, and gather evidence that actually matches the goods or services covered by your registration. This guide explains what a non-use removal application means in New Zealand, when it comes up, what practical steps to take, and where businesses often get caught out.

Overview

A non-use removal application asks the Intellectual Property Office of New Zealand to remove a registered trade mark, usually because the owner has not used it for the goods or services claimed. The key question is not whether you still like the brand or plan to use it later, but whether you can show genuine trade mark use in the relevant period, or another valid basis to keep the registration in place.

• Check the exact goods and services under attack, not just the trade mark as a whole.
• Work out the relevant non-use period and whether your evidence falls inside it.
• Collect proof of real commercial use, such as invoices, packaging, website captures, advertising, catalogues, and sales records.
• Make sure the mark used matches the registered mark closely enough.
• Consider whether partial removal is more realistic than defending every class or item.
• Do not assume internal plans, draft branding, or future launch intentions are enough.
• Get advice early if ownership, licensing, assignment, or group company use is unclear.

What Responding to a Non-use Removal Application Against Your Trade Mark Means For New Zealand Businesses

A response to non-use removal is really about proving your registration still reflects real business activity. If your brand is central to your sales, online presence, packaging, distributor arrangements, or investor materials, this process can affect much more than the IP register.

In New Zealand, trade mark registrations can be vulnerable if the mark has not been used for a continuous period in relation to the goods or services covered. The removal process is designed to stop the register being clogged with marks that are not actually in use. That matters for competitors trying to clear a path for their own branding, and it matters for existing owners who may have registered broadly but traded narrowly.

For a startup or SME, the main commercial issue is often scope. You might have registered your mark across a wide range of goods or services when you first invested in branding, but only launched part of the business. If someone applies for removal, you may be able to defend the registration for the areas where you have genuine use, but not necessarily for every item listed.

This is where founders often get caught. A business may think, “We have a website and a logo, so we are fine.” But the legal question is more specific than that. You usually need evidence showing the mark has been used as a badge of origin for the actual goods or services claimed, in ordinary trade, during the relevant period.

What counts as trade mark use?

Trade mark use generally means the sign is used to identify your goods or services as coming from your business. The context matters. Use on product packaging, labels, service proposals, invoices, websites offering the relevant goods or services, or marketing material tied to actual trading can all be relevant.

Not every appearance of a brand name will help. For example, use only as a company name, a social media handle, or a decorative design may not be enough if it does not function as a trade mark for the registered goods or services.

Use also needs to be commercial and real. Token use created only to preserve registration can be risky. If the evidence looks artificial, sparse, or disconnected from actual trading, it may carry less weight.

Does the mark have to match exactly?

No, not always. Small differences may still be acceptable if the mark used does not substantially affect the identity of the registered mark. But if the version in the market is materially different from the version registered, the gap can become a problem.

This often happens when businesses refresh their branding without checking their registrations. Before you invest in branding, register a domain or print packaging, it is worth making sure the mark you are actually using still lines up with the registered version you may later need to defend.

Why this matters beyond the register

Losing all or part of a registration can create practical problems across the business. It can affect:

• brand value during investment or sale discussions
• your ability to challenge competitors using similar branding
• licensing arrangements and distribution contracts
• expansion into new channels, including selling online
• confidence in packaging, labelling, and marketing claims

For some businesses, a non-use challenge is the first sign that their IP records, contracts, and actual trading activity are out of sync.

When This Issue Comes Up

Non-use removal issues usually come up when another business wants space to use a similar brand. The application is often less about your current dispute with that party, and more about whether your registration still deserves protection.

A competitor is trying to clear the way

A common scenario is that another trader wants to register or use a similar mark. They search the register, find your registration blocking their path, and file a non-use application to remove it. This often happens in crowded sectors such as food and beverage, ecommerce, software, health and beauty, fashion, and professional services.

If you have expanded slowly, pivoted, or narrowed your offer, parts of your registration may be vulnerable. A competitor may target the exact goods or services they need freed up.

Your business changed direction after registration

Many founders register broadly at the start, before they know what will actually sell. Later, the business may focus on one product category, move from physical goods to services, or stop trading under one line while keeping another. If the register still covers the old plan, non-use can become an issue.

This is especially common where a startup first planned to:

• sell goods and provide related services
• launch in multiple categories
• trade through retail, wholesale, and online channels
• license the brand through other entities in the group

Those plans may have changed, but the registration may not have been updated.

There is a gap between entities in the group

Another common problem is ownership and use by different entities. For example, the registered owner may be one company, while another company in the group actually sells the goods, signs customer terms, or issues invoices. If there is no clear licence or corporate relationship evidence, proving use can get harder.

This can also come up after a restructure, share sale, asset transfer, or rebrand. A trade mark assignment may not have been documented properly, or the old entity may still appear on the register even though the business now trades through a new company.

You are preparing for growth or due diligence

Sometimes the issue surfaces before a funding round, business sale, franchise rollout, or major distributor negotiation. The other side reviews your IP and asks whether the marks are actually in use for everything listed. If the answer is unclear, a formal challenge can follow.

That is why periodic trade mark housekeeping matters. It sits alongside other practical legal checks, such as business structure, contracts, privacy policy settings for customer data, and marketing compliance under the Fair Trading Act.

Practical Steps And Common Mistakes

The best response is organised, evidence-led, and commercially realistic. A rushed reply built around assumptions usually causes more trouble than the original application.

Step 1: Read the application closely

Start with the exact scope of the removal application. Check whether the applicant is attacking the whole registration or only particular goods or services. That distinction matters because a partial defence may be possible even if you cannot support every item.

Look carefully at:

• the registered owner named on the register
• the trade mark as registered
• the classes and specification wording
• the date of registration and the relevant alleged non-use period
• any procedural deadlines for filing your response and evidence

Missing a deadline can put you on the back foot very quickly.

Step 2: Build an evidence file that proves real use

Your strongest material will usually be business records created in the ordinary course of trade, not documents made after the dispute started. Think in terms of dated, credible, third-party facing records.

Useful evidence may include:

• sales invoices and purchase orders
• shipping records and customer statements
• product packaging, labels, and photographs of goods sold
• screenshots of webpages offering the relevant goods or services, with clear dates if available
• advertising campaigns, brochures, catalogues, and promotional emails
• service proposals, engagement letters, or signed customer contracts showing branded services
• distributor materials or retailer listings
• social media promotions, if they clearly connect to actual sales or service delivery

Match each item of evidence to the specific goods or services under challenge. A pile of brand material is less persuasive if it does not show use for the relevant specification items.

Step 3: Check whether the use was by the right entity

If the registered owner did not directly trade under the mark, you may need to show that use by another entity counts, for example through licensing or authorised use. This is where internal records matter.

Gather documents such as:

• licence terms or IP ownership agreements
• group structure records
• assignment documents if the mark changed hands
• evidence that the registered owner controlled or authorised the use

Founders often assume related company use will sort itself out. It may not, especially if the paperwork was never tidied up after a restructure.

Step 4: Be realistic about partial removal

Defending everything can be a mistake if the business has only genuinely used the mark for part of the specification. A narrower registration that reflects real trading can be far more valuable than losing credibility by overstretching.

For example, if your registration covers clothing, footwear, bags, and retail services, but your evidence only supports branded bags sold online, you may want to focus on retaining protection that matches that use.

Step 5: Prepare your declaration carefully

Responses often require evidence in a formal declaration. This is not the place for vague statements like “we have always intended to use the mark” or “the brand is well known to our team and customers”. The declaration should explain who is giving evidence, how they know the facts, what the business has done, and how the attached documents show relevant use.

Dates, product or service descriptions, sales channels, and the relationship between entities should all line up. If the story in the declaration does not match the documents, the weakness will show.

Common mistakes businesses make

The same problems appear again and again in non-use disputes. The most common include:

• waiting too long to get records together
• relying on undated screenshots or internal draft materials
• assuming company name use is the same as trade mark use
• producing evidence for the wrong goods or services
• ignoring changes between the registered mark and the version actually used
• forgetting that another group company, not the owner, made the sales
• trying to defend broad specifications with very limited trading evidence
• overlooking settlement or coexistence options where a commercial outcome may be better

What if you have not used the mark much?

You may still have options, but they depend on the facts. In some cases, there may be grounds to explain non-use. In others, the better commercial choice may be to accept partial removal, update your filing strategy, or refile for the areas that reflect your actual plans and current branding.

This is also a good moment to review related issues across the business. Check whether your business structure still matches ownership of your IP, whether your contracts correctly identify the trading entity, whether your privacy policy reflects how customer data is collected online, and whether your marketing statements are accurate under the Fair Trading Act.

A non-use challenge often exposes those gaps because it forces you to prove what the business is really doing, who is doing it, and under which brand.

FAQs

Can I keep my trade mark if I only used it for some of the goods or services?

Often yes, but only for the goods or services you can support with evidence. Partial removal is common where the registration is broader than actual use.

Does a website count as trade mark use?

It can, if the website shows the mark being used to offer the relevant goods or services in a real commercial way. A placeholder page or general brand page with no meaningful connection to trading may not be enough on its own.

What if another company in my group used the mark?

That may still help, but you need to show the relationship between the registered owner and the trading entity. Clear licence, assignment, or control evidence can be important.

Is a few sales enough to defeat a non-use application?

There is no single magic number. The question is whether the use was genuine trade mark use in the course of trade for the relevant goods or services, not whether sales volume hit a fixed threshold.

Should I just rebrand instead of fighting the application?

Sometimes rebranding or narrowing your protection is commercially sensible, but that depends on how valuable the mark is to your business, how strong your evidence is, and whether the dispute affects core products, services, packaging, or future expansion.

Key Takeaways

• A non-use removal application tests whether your registered trade mark reflects genuine commercial use in New Zealand.
• Your response should focus on the exact goods or services under attack, the relevant period, and evidence of real trade mark use.
• Strong evidence usually includes dated sales records, packaging, website material, advertising, and customer-facing documents.
• Use by the wrong entity, branding changes, and overbroad specifications are common weak points.
• Partial removal may be the best outcome if your actual trading is narrower than the registration.
• Reviewing ownership, licensing, contracts, and brand use early can make the response much stronger.

If your business is dealing with responding to a non-use removal application against your trade mark and wants help with trade mark evidence, IP ownership and licensing, branding reviews, and related commercial contracts, you can reach us on 0800 002 184 or team@sprintlaw.co.nz for a free, no-obligations chat.