Who Can Apply for Trade Mark Registration?
Emily Young
A trade mark is one form of intellectual property (IP) that makes up a large part of your business’ value. Trade marks help distinguish your brand from others, ensuring your goods and services stand out from your competitors. In addition, registering a trade mark over your brand assets brings with it a multitude of marketing and legal benefits. Whether you have a business or are a sole trader, you might be wondering if you are eligible for trade mark registration. This article will take you through:
- who can register a trade mark;
- the requirement to use your trade mark; and
- the importance of ensuring you register your trade mark under the correct name.
Who Can Register a Trade Mark?
To be eligible to register a trade mark, you must be:
- an individual;
- a company;
- an incorporated association;
- an unincorporated association (collective trade marks only); or
- a charity (or other body existing under legislation).
If you belong to one of the above categories, you will be able to register a trade mark. You will also need an address in either Australia or New Zealand.
As long you meet these requirements, you will be eligible to apply for trade mark registration.
Using Your Trade Mark
When applying for trade mark registration, you must use or intend to use your trade mark in the selected classes of goods or services. If you do not use your trade mark, you risk IP Australia removing it from the register for non-use. This can occur five years after your trade mark has been on the register. If you have not used your trade mark for three out of these five years, a third party can apply for its removal.
It is important to note that the registered owner should use the trade mark. Use of a trade mark by a non-owner, even if it is an associated entity, will need to be done with caution.
Holding Companies
An IP holding company is one way that corporate structures manage their IP, including trade marks. An IP holding company has the primary purpose of holding and managing IP assets. This has several benefits, including separating a company’s IP from the company itself if the company is part of any legal proceedings.
However, registering a trade mark using a holding company becomes tricky when you are using your trade mark and demonstrating use. When an IP holding company owns a trade mark, it should be the one using the trade mark. However, you can overcome this by demonstrating that the holding company exercises control over its use, such as by using a licencing agreement.
Licencing Agreements
A trade mark licencing agreement is one way to transfer the rights to a trade mark without giving up rights to the trade mark. For example, a licencing agreement enables the owner of a trade mark (such as a holding company) to delegate its rights to another party (known as the licensee).
These licencing agreements usually outline the terms of use of the trade mark. For example, the licence might provide that licensees can only use the trade mark in certain geographical regions.
To avoid any confusion between the owner and the user of a trade mark that may result in issues of non-use, you should immediately put a trade mark licence in place between the IP holding company and the business itself. This licencing agreement should be written in such a way that the IP holding company can demonstrate that it exercises control over the trading company, making the company an authorised user of the trade mark.
Key Takeaways
Most people and businesses are eligible for trade mark registration. However, this is not as straightforward if you are part of a large corporate structure. In addition to being eligible for trade mark registration, you will need to consider the requirement to use your trade mark, and the importance of ensuring your trade mark is registered under the right name. If you want to register a trade mark, you will need to be:
- a person;
- a company; or
- an incorporated association.
If you need help registering a trade mark or deciding if you are eligible to register a trade mark, our experienced trade mark lawyers can help on 1300 657 423.
Frequently Asked Questions
Trade mark registration is the process of protecting it on the trade marks register. Trade mark registration makes it easier to demonstrate your exclusive rights to your trade mark. This can make enforcing your rights easier.
To be eligible for trade mark registration, you will need to be either a person, a company or an incorporated association. You will also need to have an address for service in either Australia or New Zealand.