My Trade Mark Is Registered in Australia. What Rights Do I Now Have?
Once you successfully register a trade mark with IP Australia, you gain the exclusive rights to use, licence and sell your trade mark. In other words, no other business can use your trade mark in relation to the same goods and services that your trade mark protects. To help explain these rights in further detail, this article outlines how you can benefit from using, licensing and selling your registered trade mark.
Using Your Trade Mark
When you register your trade mark, IP Australia requires you to select the class or classes of goods and services that your trade mark will protect. For example, if your business sells paints and varnishes, you would likely register your trade mark under class 2, which includes painting goods. This means that your trade mark can only protect the goods you have selected in your trade mark application.
If IP Australia approves your application, you can use your trade mark to market your goods and services for 10 years from the date of application. You are entitled to use your trade mark when advertising your goods and services or to create custom packaging for your products.
Since no one else can use your trade mark when selling similar goods and services, this can help your business achieve a competitive advantage in the market. After all, registered trade marks protect the features of your business that distinguish it from many others. By using a distinctive trade mark, your particular product can stand out in the market and help build your business’ goodwill.
Licensing Your Trade Mark
Licensing your registered trade mark can be particularly useful if you are franchising your business or wish to open up an additional stream of income for your business.
Put simply, trade mark licensing is an agreement made between you (the licensor) and another person or business (the licensee). This agreement allows the licensee to use your registered trade mark under certain conditions, including the:
- duration of the licensing period;
- ways that the licensee can use your trade mark, for example, concerning a particular product only;
- geographic limits that apply to the use of the trade mark; and
- royalties which constitute ‘licensing fees.’
Generally, there are three main categories of licensing rights, explained in the table below.
|Rights||Explanation||Advantages / Disadvantages|
|Non-exclusive||Multiple parties can use your trade mark at any given time.||Non-exclusive rights can open up different streams of royalty income from multiple parties. However, the licensee must share trade mark use with others.|
|Exclusive||Only one party can use your trade mark at any given time.||You, as the licensor, cannot use your trade mark during the licensing period. However, the licensee gains the full right to use it.|
|Sole||Both you and another party can use your trade mark at any given time.||As the licensor, you can still use your trade mark whilst reaping the benefits of its commercialisation. However, the licensee must share trade mark use with you.|
Once you have decided what rights you wish to grant a licensee, trade mark owners typically put the licensing agreement into writing. Since there is a wide range of terms that you can include in a licensing agreement to protect your trade mark, it would be wise to seek the advice of a trade mark lawyer to ensure your agreement suits your commercial arrangement.
Selling Your Trade Mark
When you are selling your business, it is likely that you will also sell its intellectual property. The value of a registered trade mark is usually indicative of your business’ goodwill. Your registered trade mark will likely be worth more if your business has a good reputation and a loyal customer base.
When you sell a trade mark, you are essentially changing who owns the rights to your intellectual property. This process of changing ownership is called an assignment.
Assignment is the process of transferring ownership of a registered trade mark from its original owner (the assignor) to another person (the assignee).
Once you assign your registered trade mark in full, you no longer have the exclusive rights to use your trade mark. There is also the option to partially assign a registered trade mark, meaning you can retain some ownership of the trade mark. In any event, selling your trade mark can provide you with many commercial benefits upon selling your business.
Once you successfully register a trade mark with IP Australia, you gain the exclusive right to:
- use your trade mark when marketing the goods and services covered in your trade mark application;
- license your trade mark to third parties; and
- sell your trade mark.
Frequently Asked Questions
The cost of trade mark registration depends on the type of trade mark you wish to apply for, how many classes of goods and services you want your trade mark to protect and any legal fees associated with your trade mark application.
A trade mark licensing agreement typically outlines the conditions upon which a third party (the licensee) can use your trade mark. A trade mark licensing agreement typically includes the duration of the licensing period and any royalties that the licensee might owe to the licensor.