How Can I Register a Trade Mark for the Future?
Emily Young
If you want to protect your brand assets, consider applying for trade mark registration. A trade mark is one form of intellectual property (IP) that makes up a large portion of your business’ value. Trade marks help distinguish your brand from others, ensuring your business stands out from your competitors. However, suppose you are a rapidly evolving business unsure about the future of your goods and services offerings. In that case, you might want to register a trade mark to use in the future. This article will discuss whether you can register a trade mark for the future and some key issues to look out for when doing so.
Can I Register a Trade Mark for the Future?
It is possible to register a trade mark for future use. When applying to register a trade mark in Australia, you do not need to provide evidence that you currently use your trade mark or intend to use it.
However, you must lodge trade mark applications in good faith. This means you should use your trade mark only to distinguish your goods and services during trade. As such, you should only register a trade mark you legitimately plan to use.
Can My Trade Mark Be Removed for Non-Use?
If you register a trade mark but later do not use it, you may risk losing your registration. This is because third parties can file for the removal of trade marks from the trade marks register for non-use.Â
There are many reasons why someone might apply for the removal of a trade mark for non-use. For example, a third party may want to register a trade mark, but yours is similar or identical to their proposed one. In that case, they may apply to have your trade mark removed so their trade mark application can be accepted and progress to the next stage.
To make an application for removal for non-use, you must meet a specific time frame. For example, you must file applications for non-use when:
- five years have passed since the filing date of your trade mark application (for trade marks filed before 24 February 2019); or
- three years have passed since the date the particulars of your trade mark were entered in the Register (for trade marks filed on or after 24 February 2019).
Responding to Claims of Non-Use
If you receive notice that a removal application has been filed against your mark, you will have the opportunity to oppose this removal application.
To respond, you must file your notice of intention to oppose, followed by a statement that sets out your claims that your mark has been appropriately used during the prescribed three-year time period.
For example, you may have used your trade mark on one product in the last three years. However, this one-time use may be enough to demonstrate use and allow you to maintain your trade mark protection.
Avoiding Removal for Non-Use
If you register a trade mark for the future and have concerns that it will be removed for non-use, you can do a few things to avoid this. Some of these steps include the following.
Using Your Trade Mark
Using your trade mark is the best option to avoid your trade mark being removed for non-use. For example, you should aim to use your trade mark on marketing materials or on the packaging of your goods.
Licensing Your Trade Mark
Consider licensing your trade mark through a licence agreement. This would allow a third party to use your trade mark under certain conditions and for a negotiated fee. Doing this is a great way to commercialise your trade mark without having to sell it. Furthermore, you can reduce the risk of it being removed from the trade mark register for non-use.
Key Takeaways
If you are unsure about the future of your goods and services offerings, you may wish to register a trade mark for future use. It is possible to register a trade mark for future use. However, it would help if you kept in mind that:
- you should only register a trade mark that you legitimately plan to use; and
- if you register a trade mark but do not use it, it is at risk of being removed from the trade mark register.
If you need assistance applying for a trade mark for your business, our experienced IP lawyers can help. Give them a call on 1300 657 423 or fill out the form on this page to get in touch.
Frequently Asked Questions
You can register a trade mark for future use. When applying to register a trade mark in Australia, you do not need to provide evidence that you currently use your trade mark or that you intend to use it. However, you must lodge your trade mark applications in good faith. As such, you should only register a trade mark you legitimately plan to use.
If you register a trade mark but later do not use it, you may risk losing your registration. This is because third parties can file for the removal of trade marks from the trade mark register for non-use. Applications for non-use may be filed when three years have passed since the date the particulars of your trade mark were entered in the Register (for trade marks filed on or after 24 February 2019).