Strategies to Protect Your Trade Mark
George Raptis
Once you have registered your trade mark, it might be tempting to relax, knowing your brand is protected. However, it is your responsibility as a trade mark owner to enforce your exclusive rights to your trade mark where somebody infringes it. For this reason, it is important to take proactive measures to protect your trade mark. This article outlines various strategies you can adopt to protect your trade mark.
Be Proactive
Registered trade marks should bear the reserved symbol ‘®’. This notifies potential infringers that your trade marked name, logo or slogan is protected. Likewise, unregistered trade marks or a trade mark in the registration process can bear the ‘™’ symbol. This notifies others that you intend to protect the trade mark in the future. However, it is an offence to use the reserved symbol if you have not yet registered your trade mark. Using the correct symbol may not prevent all possible infringements. However, it is a small measure that you should take to prevent your trade mark from being misused by others.
Develop an Enforcement Strategy
As a trade mark owner, it would be wise to adopt an enforcement strategy. This will help in the instance where somebody has infringed your trade mark. An enforcement strategy can include a range of different measures to protect your trade mark. This includes monitoring the market to detect potential infringements, determining instances where you will enforce your strategy and settling on a budget.
Monitor the Marketplace
It is a common misconception that IP Australia monitors and police the marketplace to detect potential infringements. IP Australia will unlikely accept a trade mark that is too similar to an already existing trade mark application or registration. However, it is your responsibility as a trade mark owner to monitor the marketplace for potential infringements. For example, this could mean reviewing the products sold and advertised by your competitors or conducting regular searches on the internet to identify any misuses of your trade mark.
It would also be wise to search the Trade Mark Register. This is because you have a two-month window to oppose any new trade mark applications which you believe to be too similar to your registered trade mark.
Be Selective
Whilst you may detect multiple potential infringements, it is unlikely that you will enforce your rights in every instance. For example, suppose you have a registered trade mark protecting your business in the entertainment industry. In that case, it might not be worth pursuing legal action. This is because a similar mark from a business in a different industry is unlikely to confuse consumers.
On the other hand, if a competitor in the same industry has used your trade mark to promote their own business, it is much more likely that you would pursue legal action. Therefore, although a selective enforcement strategy would likely change depending on the circumstances of infringement, it would be wise to preempt instances where an infringement arises to enact your enforcement strategy.
Budget
Enforcing your trade mark can be a costly and time-consuming process. By setting a budget in your enforcement strategy, you can consider the value of your trade mark against the cost of enforcing your rights. This will help to consider the benefits gained by pursuing legal action.
Enforce Your Rights
In the instance where somebody has infringed your trade mark, and it is worth pursuing the claim, the best way to protect your trade mark is to enforce your trade mark rights. This usually begins with issuing a cease and desist letter to the infringer. This letter will request that they stop misusing your trade mark and respond accordingly within the time you requested. This will notify the infringer that you believe that they have infringed on your trade mark rights.
Issuing a cease and desist on an unfounded claim for trade mark infringement can lead to legal proceedings against you. Therefore, if you have identified a potential infringement, it would be wise to seek legal advice to assess the strength of your claim. In the instance where the infringer is not cooperative, and you have a strong case to support an infringement, you may consider court proceedings.
Key Takeaways
As a trade mark owner, it is your responsibility to protect your trade mark from potential infringement. You should take proactive steps such as using the correct symbols to prevent your trade mark from being misused and developing an enforcement strategy to deal with instances where an infringement arises in the future. If you have a strong case that somebody infringed your trade mark, you can take legal action to enforce your exclusive rights. If you require further legal assistance with protecting your trade mark, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
Although IP Australia can direct you to different resources and options to pursue in the instance of trade mark infringement, IP Australia will not provide you with legal advice.
Within two months of IP Australia registering a trade mark application, a third party can oppose the application by filing a notice of intention to oppose. There is a range of grounds on which you can oppose an application, including grounds to oppose on the basis that a similar trade mark already exists.