How Can I Use My Registered Trade Mark?
Registered trade marks are becoming useful and valuable assets for many businesses. A registered trade mark can not only protect your brand from being misused by competitors, but the exclusive rights associated with trade marks can also allow your business to commercialise its trade marks. This article outlines three ways in which you can use your registered trade mark.
What Is a Trade Mark?
Trade marks protect the features of a business’ brand, including but not limited to a business’ trade name, its logo and its slogan. A registered trade mark provides its owner with the exclusive right to use, license and sell their trade mark. Since registered trade mark owners have the exclusive rights to use their trade mark, this can:
- help differentiate their good or service from others in the market;
- allow them to prevent others from using their trade mark; and
- allow them to pursue legal action against anyone who infringes on their intellectual property rights.
You may have also come across different types of trade marks, being registered and unregistered or common law trade marks. The fundamental difference between the two is in their name. Registered trade marks are registered with IP Australia, whereas unregistered trade marks are protected by the common law. As a result, there are greater difficulties you would face when enforcing your rights concerning an unregistered trade mark. For this reason, registering a trade mark can provide more adequate security when protecting your intellectual property.
1. Protecting Your Goods or Services
Since you must register a trade mark concerning a particular class of goods or services, an approved trade mark protects that particular good or service. This means that you can use your trade mark to promote or sell your goods or services without someone else using a similar trade mark to promote their similar goods or services.
For example, if you use your registered trade mark logo to promote the musical instruments that your business sells, another person cannot use a similar mark to promote their own instruments.
In the instance where someone uses a similar trade mark to promote goods or services similar to your own, the person is likely committing trade mark infringement. A person commits trade mark infringement if they use:
- a substantially identical or a deceptively similar trade mark to your own registered trade mark; and
- it concerning the same goods or services that your trade mark protects.
For example, if someone developed a search engine named ‘Gogle’, they would likely infringe on the trade mark rights held by Google LLC. As a trade mark owner, you can stop other people from infringing on your trade mark rights. In the instance where they fail to stop infringing on your trade mark and your business suffers a loss as a direct result of the infringing conduct, you may have the option of seeking legal remedies and damages for the loss suffered.
2. Licensing Your Trade Mark
As mentioned above, trade mark owners also have the exclusive right to licence their trade mark. Licensing refers to the agreement between a trade mark owner (the licensor) and another person (the licensee) to use their trade mark over a specific period of time for a fee. Whilst licensing your trade mark does not mean that you lose ownership over are your trade mark, the licensing agreement will affect how you can use your trade mark during the licensing period.
For example, if you license the sale of your product to a retailer, you may both agree that only the retailer can use the trade mark during the sale period.
How you can use your trade mark during the licensing period ultimately depends on the licensing agreement. Since you and the licensee will negotiate this agreement, it is important that you clearly state how you want them to use your trade mark.
3. Assigning Your Trade Mark
Another way that you can commercialise your trade mark is by selling it. If you are selling your business or undergoing a major rebrand, trade marks are a valuable asset that you should include in the sale price. Whilst there is no single method used by IP valuers to determine the value of your trade mark, a registered trade mark usually represents the goodwill of a business. Consequently, the greater the reputation and goodwill your business has attained, the greater the likelihood that your trade mark is high in value.
The process of selling a trade mark involves the process of assignment. Assignment refers to the act of registering a change in ownership of a trade mark. You must register a full assignment of a trade mark with IP Australia. The registration process will require you to fill out several documents, including:
- an assignment request form; and
- evidence of assignment.
Once you assign your trade mark to another person (the assignee), the trade mark becomes the assignee’s property, who can then use, license or sell the trade mark.
Given the variety of instances in which you can use trade marks, registering a trade mark can be a worthwhile investment for your business. Registered trade marks give you the ability to prevent others from using your trade mark. Additionally, registered trade marks can provide commercial opportunities for your business to either licence or sell its trade marks. If you need help with applying for a registered trade mark, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
The reserved symbol ‘®’ is exclusively used for registered trade marks only, whereas ‘™’ symbols can protect unregistered trade marks or trade marks that are in the process of being registered.
Under the Trade Marks Act, IP Australia protects trade marks for 10 years from their filing date.