Do I Need to Be Using a Trade Mark When I First Register?

Angus

• 9 August 2021
• 12 August 2021
• 5 min read

The internet and social media have made it easier than ever to build your brand and business while also interacting with audiences throughout the world. To navigate this era of globalisation, company owners who trade under valuable brand names or use other forms of trade marks in their business must be aware that various regulations apply in different countries when determining trade mark ownership and rights. Are you wondering whether you need to be using a trade mark when you first register it? This article will explore some of the key considerations to think about before starting the registration process.

Two Different Roads to Register a Trade Mark 

The use of a trade mark in relation to your goods or services on a commercial level is important in Australian trade mark law. It can help determine things like: 

• trade mark ownership;
• trade mark distinctiveness;
• removal of a trade mark registration from the Australian trade marks register for non-use; and
• cancellation of a registered trade mark.

You may be accidentally infringing on someone else’s registered trade mark by utilising your unregistered trade mark. This is one of the most significant dangers of using a trade mark before you have registered it. A trade mark owner who is serious about safeguarding their intellectual property may send you a demand letter. It is a waste of business expenses having to rebrand after spending money on your original brand.

First to Use Countries

Australia is a first to use country. This means that priority is given to those who are the ‘first to use’ a particular trade mark in Australia ‘as a trade mark’ in relation to goods or services and can demonstrate such use. This applies, even if another party has applied first to register that trade mark in Australia. The United States and New Zealand are other countries that are first to use.

First to File Countries

Some nations, on the other hand, use a first to file trade mark system. This technique grants rights to the party that first filed a trade mark application in that nation for that mark, even if another party has previously used the mark in that country. China and Japan are among the countries that use a first to file method.

It is essential to register your trade mark in the markets where you operate, whether in Australia or elsewhere. However, trade mark owners should be especially cautious when supplying to, dealing with, manufacturing in, or operating in first to file nations. In such nations, filing your trade mark application as soon as possible can help you increase your chances of getting trade mark protection.

Using a Trade Mark in Australia Before Registration

Many business owners use a trade mark while IP Australia (Australia’s trade mark governing body) is still processing their application. In many cases, traders will use a trade mark before even considering the registration process due to a variety of factors, including: 

• fear of the process;
• expense; and
• a general lack of education surrounding the process of trade mark registration.

It is probable that merchants are not aware of the dangers of doing so or that a trade mark’s pending status provides no protection against infringement.

When a business owner receives a letter of demand accusing them of utilising a pending trade mark and describing a sequence of procedures they must follow, they are frequently taken aback. If this happens, the best course of action is to hire a registered trade mark attorney to assist them in figuring out their alternatives.

When it comes to trade marks, the best time to utilise one is when it has been completely registered with IP Australia. Of course, this is not always an option. The hazards of utilising your trade mark before your registration has been granted have already been discussed. Furthermore, even if IP Australia has notified you that your application will be accepted via the pre-filing assessment, there is still the potential that your application may be contested by another party. 

Key Takeaways

Before deciding whether you need to be using a trade mark when you first register it, you should consider:

1. what jurisdiction you are applying in; and
2. how best to protect your intellectual property.

If you have any questions about whether you need to be using a trade mark when you first register it, contact our trade mark lawyers on 1300 657 423 or fill out the form on this page.

Frequently Asked Questions