Can You Sell an Item with a Trade Mark?
Emily Young
If you are a small business owner looking to add a new line of goods to your products, you may be considering selling already established goods. While this might seem like an easy way to draw in new customers and increase your sales, selling trade mark protected items without the consent of the trade mark owner can lead to infringement issues. To help you better understand the rights of trade mark owners, this article will take you through if and how you can sell an item with a trade mark.
What Is a Trade Mark?
A trade mark is just one type of protection you can obtain for your intellectual property (IP). A trade mark refers to protection over elements of your brand. Having a registered trade mark gives you exclusive rights to your trade mark, which prevents others from using your trade mark without your consent. In addition to the excellent legal protection a trade mark provides, they are also great marketing tools that can increase the value of your brand assets.
Trade marks may take a variety of forms. For example, a trade mark may be a:
- word;
- phrase (such as your business slogan);
- scent;
- image (such as a business logo);
- packaging shape; or
- any combination of the above.
The variety of forms a trade mark can take means it can be difficult to know:
- what to trade mark; and
- what may constitute a trade mark.
This makes it extra important to be diligent about ensuring you are not infringing on someone else’s mark.
Can You Sell an Item With a Trade Mark?
The very purpose of a trade mark is to distinguish your brand from others. Because of this, you cannot sell an item that is trade mark protected (with some exceptions). If you sell an item with an existing trade mark without the owner’s consent, you will be infringing on their exclusive rights.
If you are selling an item with a trade mark on a small scale, it might seem easy to get away with it. However, if you are found to be infringing on someone’s exclusive rights to a trade mark, they will likely take enforcement measures against you. This may result in the court granting an injunction against you to stop selling these goods or services. Alternatively, you may have to pay back the money you made from the trade mark to the trade mark owner. As well as the financial costs associated with trade mark infringement, you also risk damaging your reputation.
How to Sell an Item With a Trade Mark
If you want to sell an item with a trade mark, you will need to obtain permission. This will require a trade mark licence. One of the key benefits of being a trade mark owner is that you have the right to licence your goods.
A trade mark licence refers to the process of a trade mark owner giving someone permission to use their trade mark within certain parameters. This is done in exchange for payment and is negotiated into a contract commonly referred to as a licensing agreement.
However, it is important to consider that a trade mark licence can be expensive. Therefore, with a portion of your sales going towards paying the licensing fees, you must determine if it is worth selling a trade marked item.
Key Takeaways
While you cannot usually sell an item with a trade mark, you can if you obtain a trade mark licence. A trade mark licence refers to the process of a trade mark owner giving someone permission to use their trade mark. A trade mark licence is:
- usually done in exchange for payment;
- often has strict parameters surrounding the use of the trade mark; and
- negotiated into a licensing agreement.
If someone has infringed your trade mark or you need legal assistance obtaining a trade mark licence, our experienced trade mark lawyers can help. Contact 1300 657 423 or fill out the form on this page.
Frequently Asked Questions
Aside from exceptional circumstances, you cannot sell an item that has a trade mark over it. This is because the very purpose of a trade mark is to distinguish your brand from others. If you sell an item with a trade mark without the trade mark owner’s consent, you will be infringing on their trade mark and are at risk of being penalised.
If you want to sell an item with a trade mark, you will need to obtain permission to do so. This will require a trade mark licence. A trade mark licence refers to the process of a trade mark owner giving someone permission to use their trade mark within certain parameters. Usually, this is done in exchange for payment.