Too late to challenge Popeyes trade mark for non-use
5 mins reading time
If you register a trade mark, whether in your own country or internationally, there’s generally an obligation to use it or risk losing it.
In Australia, if you have not used your trade mark for 3 years in relation to all goods and services for which it is registered, its registration can be challenged for non-use. There is an initial grace period: for marks filed before 24 February 2019, they cannot be challenged for the first 5 years after application; for marks filed on or after 24 February 2019 , they cannot be challenged until 3 years after registration is completed. The relevant 3 year period during which non-use must be alleged ends one month before the non-use removal application is filed.
The timelines work slightly differently in New Zealand. You still look at a 3 year period ending one month before the revocation action is filed. However, the 3 year period must start after the actual date of registration (by contrast, in Australia the 3 year period must end after the date of registration).
Keeping trade marks safe
This can present a challenge for businesses that secure their trade marks internationally, with a view to future cross-border expansion. Some internationals engage in sporadic international use to keep their trade marks safe. In-N-Out Burger has sporadically operated pop-up restaurants, including recently for one day in Brisbane. In-N-Out Burger has used similar pop-ups in New Zealand.
Getting rid of pesky “placeholder” marks
When filing trade marks in Australia or New Zealand, it is not uncommon to come across foreign-owned marks that have not been used as diligently as In-N-Out Burger does. A non-use removal action is frequently an easy option. Often, the foreign trade mark owner then seeks to strike a deal, offering consent to our client’s trade mark application in return for the non-use challenge to their registration being withdrawn. That can be a very effective and workable solution, especially if either the trade marks or the businesses are not too similar.
A recent case in New Zealand illustrates when things don’t go as smoothly. Popeyes Louisiana Kitchen is a US fast food chain. It registered its trade mark in New Zealand in 1976, 4 years after being founded in the US. But it didn’t open any New Zealand restaurants.
Chinese migrants Bill Cao and May Zhou purchased Popeye’s Takeways in Fielding, NZ in 2008. It had already been operating under that name when they bought it. Then in April 2024, they received a cease and desist letter on behalf of Popeyes Louisiana Kitchen, around the same time as Popeyes Louisiana Kitchen opened its first New Zealand restaurant.
The difficulty for Bill and May is that non-use removal vulnerability can be cured by the trade mark owner (re)starting trade mark use. You look at the 3 year period ending a month ago, not some arbitrary 3 year period. Even though the Popeyes Louisiana Kitchen trade mark was probably unused for most of the preceding 48 years, by not taking action before this most recent use commenced Bill and May missed the boat. (Note: while the Popeyes Louisiana Kitchen restaurant only opened less than a month ago, certain pre-opening activity can also count as trade mark use).
The lessons
If you are the owner of an unused trade mark, the best time to (re)start using the trade mark to keep it safe from non-use removal is right now.
Conversely, if you have or own a business, and are aware that there is a registered but unused trade mark looming over you, potentially threatening your business, the best time to seek its removal is right now. Especially with a foreign owner, you never know when the day will come when they want to start using their trade mark in Australia. The saying might be “Strike while the iron is hot”. In this case, it’s more like “strike while their trade mark is cold”.
The Macpherson Kelley IP team is experienced in both prosecuting and defending non-use removal applications against trade marks. If that’s an issue you’re facing, get in touch.
The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.
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Too late to challenge Popeyes trade mark for non-use
If you register a trade mark, whether in your own country or internationally, there’s generally an obligation to use it or risk losing it.
In Australia, if you have not used your trade mark for 3 years in relation to all goods and services for which it is registered, its registration can be challenged for non-use. There is an initial grace period: for marks filed before 24 February 2019, they cannot be challenged for the first 5 years after application; for marks filed on or after 24 February 2019 , they cannot be challenged until 3 years after registration is completed. The relevant 3 year period during which non-use must be alleged ends one month before the non-use removal application is filed.
The timelines work slightly differently in New Zealand. You still look at a 3 year period ending one month before the revocation action is filed. However, the 3 year period must start after the actual date of registration (by contrast, in Australia the 3 year period must end after the date of registration).
Keeping trade marks safe
This can present a challenge for businesses that secure their trade marks internationally, with a view to future cross-border expansion. Some internationals engage in sporadic international use to keep their trade marks safe. In-N-Out Burger has sporadically operated pop-up restaurants, including recently for one day in Brisbane. In-N-Out Burger has used similar pop-ups in New Zealand.
Getting rid of pesky “placeholder” marks
When filing trade marks in Australia or New Zealand, it is not uncommon to come across foreign-owned marks that have not been used as diligently as In-N-Out Burger does. A non-use removal action is frequently an easy option. Often, the foreign trade mark owner then seeks to strike a deal, offering consent to our client’s trade mark application in return for the non-use challenge to their registration being withdrawn. That can be a very effective and workable solution, especially if either the trade marks or the businesses are not too similar.
A recent case in New Zealand illustrates when things don’t go as smoothly. Popeyes Louisiana Kitchen is a US fast food chain. It registered its trade mark in New Zealand in 1976, 4 years after being founded in the US. But it didn’t open any New Zealand restaurants.
Chinese migrants Bill Cao and May Zhou purchased Popeye’s Takeways in Fielding, NZ in 2008. It had already been operating under that name when they bought it. Then in April 2024, they received a cease and desist letter on behalf of Popeyes Louisiana Kitchen, around the same time as Popeyes Louisiana Kitchen opened its first New Zealand restaurant.
The difficulty for Bill and May is that non-use removal vulnerability can be cured by the trade mark owner (re)starting trade mark use. You look at the 3 year period ending a month ago, not some arbitrary 3 year period. Even though the Popeyes Louisiana Kitchen trade mark was probably unused for most of the preceding 48 years, by not taking action before this most recent use commenced Bill and May missed the boat. (Note: while the Popeyes Louisiana Kitchen restaurant only opened less than a month ago, certain pre-opening activity can also count as trade mark use).
The lessons
If you are the owner of an unused trade mark, the best time to (re)start using the trade mark to keep it safe from non-use removal is right now.
Conversely, if you have or own a business, and are aware that there is a registered but unused trade mark looming over you, potentially threatening your business, the best time to seek its removal is right now. Especially with a foreign owner, you never know when the day will come when they want to start using their trade mark in Australia. The saying might be “Strike while the iron is hot”. In this case, it’s more like “strike while their trade mark is cold”.
The Macpherson Kelley IP team is experienced in both prosecuting and defending non-use removal applications against trade marks. If that’s an issue you’re facing, get in touch.