Use It or Lose It: Managing Your Trademark in Australia & NZ

A trademark registration is not just a fancy certificate to passively celebrate your brand—it’s a powerful tool that requires active use to stay alive. In both Australia and New Zealand, registering a trademark is only the first step. To truly protect your brand and keep your exclusive rights intact, you need to actively use the trademark in business. The “use it or lose it” principle means that if you don’t use your trademark for a continuous three-year period, it becomes vulnerable to removal from the register.

Recent cases involving major international brands, such as Popeyes and In-N-Out in New Zealand, and Wendy’s in Australia, show how vital it is to not only register but also maintain and actively use your trademark.

The Popeyes and In-N-Out Cases in New Zealand

The case of Popeyes in New Zealand serves as a prime example of how the non-use of a trademark can put a brand at risk. Popeyes, a US-based fast-food chain, registered its trademark in New Zealand back in 1976 but did not open a restaurant there for decades. During this time, the trademark was dormant, and any competitor could have applied to remove it from the register due to non-use. Fortunately for Popeyes, no such application was made, and when the company finally launched its first New Zealand location, they secured their rights to the name and branding.

Similarly, In-N-Out Burger has taken a more proactive approach in New Zealand. Despite not having a permanent presence in the country, the company maintains its trademark rights by opening pop-up restaurants every few years. These brief pop-up events—lasting just a few hours—are enough to demonstrate genuine use of the trademark, ensuring their rights remain intact and preventing other businesses from using the name. For instance, In-N-Out hosted a six-hour pop-up event in Auckland in 2023 and similar events in previous years, showing that even minimal use can protect a trademark.

These cases underscore the importance of regular use, no matter how limited, to maintain your trademark rights and prevent legal challenges or potential removal from the register.

Wendy’s Coming to Australia in 2025

In Australia, Wendy’s, the American fast-food chain, is planning to open its first restaurants in 2025. However, Quality Is Our Recipe, LLC, the company behind Wendy’s, has protected its trademark in Australia since 1978—long before any physical presence in the country. Despite not operating restaurants in Australia for decades, Wendy’s has maintained its trademark registrations, ensuring that the brand is ready for future expansion.

This strategy demonstrates that even without active trading in a region, companies can maintain their trademark rights by ensuring periodic use or by paying renewal fees to keep their registrations alive. In cases like Wendy’s, trademarks can be valuable assets for future expansion or for protecting brand identity across international markets, making it essential to manage them strategically.

How Responsible Trademark Management Protects Your Brand

The “use it or lose it” principle, applied in both Australia and New Zealand, highlights the need for businesses to take a proactive approach to trademark management. Without regular and genuine use, a business risks losing its exclusive rights. If you want to maintain your trademark registration in a specific country, it is essential to actively use your trademark in that country. This can be done through product launches, pop-up stores, or regular commercial activity that demonstrates genuine use.

Here are some key tips:

• Use in Commerce: Ensure your trademark is associated with actual sales or services in the country where it’s registered. This can be through online sales, advertising, or physical presence.
• Strategic Planning: If you’re planning to expand into a new market, consider how you will use your trademark in that region to maintain your registration. Even minimal use, such as pop-up events or promotional activities, can be enough to protect your rights.
• Long-Term Vision: If you intend to operate in a market eventually, maintaining minimal but genuine use can secure your rights for the future, as seen with In-N-Out Burger’s pop-ups in New Zealand and Wendy’s decades-long trademark protection in Australia.

By regularly using your trademark in the country where it is registered, you ensure that your brand remains protected and that you retain exclusive rights to your name and identity in that market.

What We Offer: Comprehensive Trademark Protection and Design Services

At Markport™, we specialise in trademark protection and design services that help small and medium-sized businesses in Australia, New Zealand, and beyond. Our services are designed to provide you with the legal and creative support needed to secure and manage your trademarks effectively.

We offer:

• Trademark Registration: We guide you through the trademark registration process, ensuring your brand is protected from the start.
• Trademark Design: Our creative team assists with designing unique trademarks that not only stand out but also comply with legal requirements for registration.

Maintaining active use of your trademark is the key to protecting your business from legal challenges and potential rebranding costs. For more information on how to register and manage your trademark, contact us today.