Tips For Protecting Your App’s Trade Mark
If you have successfully registered a trade mark with IP Australia, you might be ready to sit back and relax, assured that your app is protected. However, it is your responsibility as a trade mark owner to take further measure. You need to ensure no one infringes on your trade mark rights. This article provides five tips on the best way to protect your app’s trade mark once you have registered it.
Using The Proper Symbol
When it comes to protecting your app after you have registered a trade mark, there are small things you can do as a trade mark owner to ensure your app is protected. Perhaps the easiest measure you can take is placing the reserved symbol ‘®’ near your trade mark.
By using the reserved symbol, you are essentially notifying the public that a trade mark protects your app’s name, logo or slogan. Importantly, you should note that it is an offence to use the reserved symbol if your trade mark is not registered with IP Australia. If your trade mark is in the registration process or you wish to keep it unregistered, you can instead use the trade mark symbol ‘™’. The ™ symbol is similar to the reserved symbol. It also notifies the public that you intend to protect your app’s name, logo or slogan as a trade mark.
Monitoring The Market For Infringement
Using the appropriate trade mark symbols on your app alone will not prevent infringers from misusing your intellectual property. For this reason, you must monitor the market for any potential infringements.
Many trade mark owners think that IP Australia polices the marketplace to detect trade mark infringements. This is a misconception. While IP Australia is unlikely to accept a trade mark that is similar to an already existing trade mark, it is your responsibility to monitor the marketplace if someone else is using a similar trade mark to your own.
Depending on your target market for your app, you might decide to deploy different monitoring techniques. For example, you might wish to conduct regular searches on the internet to identify any misuses of your trade mark. In the instance where you suspect someone has infringed your app’s trade mark, it would be wise to seek legal advice. A lawyer can advise you on the strength of your claim and determine what steps you should take to enforce your trade mark rights.
Additionally, suppose IP Australia accepts a trade mark application that you believe is substantially identical or deceptively similar to your own. In that case, you have a two-month window to oppose the application. Again, a lawyer can help you decide whether your app would benefit from undergoing opposition proceedings and the strength of your case.
Avoid Removal For Non-Use
Many trade mark owners are unaware that they can risk losing their trade mark for non-use. If you or any licensee has not used your registered trade mark for three years from its filing date, a third party can apply to remove your trade mark from the registry. Whilst it may seem unfair for IP Australia to remove a trade mark for non-use, removal for non-use prevents businesses from registering a trade mark with the underlying intention of monopolising the mark and thus preventing others from using it.
In saying that, non-use is quite difficult to prove under trade mark law. This is because even if you use your trade mark once throughout the entire three year period, this can still constitute a ‘use’ of the mark in the eyes of the law. Above all, it is important that when you register a trade mark, you actually intend to use it to protect your app.
Another way you can protect your app’s trade mark is by applying for trade mark registration in different countries. After all, registering your trade mark with IP Australia will only grant your app protection within Australian borders. Considering your app is likely to be downloaded in different countries, it would be worth considering how international trade mark protection might benefit your app.
If you wish to protect your trade mark in other countries, you might need to:
- follow the registration procedures in that particular country if any; or
- register your trade mark with the World Intellectual Property Organisation (WIPO), which will protect your app in over 120 countries that are signatories to the Madrid Protocol.
The process of international trade mark registration can be quite complex. Therefore, it would be wise to seek the help of a trade mark lawyer. An experienced trade mark lawyer can advise you on what registration procedures will provide your app with the best protection and subsequently guide you through the registration process.
Once you register a trade mark to protect your app, you should:
- use the reserved symbol ‘®’ to notify others that a trade mark protects your app’s name, logo or slogan;
- monitor the market for any potential trade mark infringements;
- ensure that you use your trade mark to avoid removal for non-use; and
- consider applying for trade mark protection overseas.
Frequently Asked Questions
Under the Madrid Protocol, you can file a single trade mark application for protection in a number of countries.
Currently, 125 countries are signatories to the Madrid Protocol. You can find a list of member countries here.