Steps to Take After Your Trade Mark Has Been Approved
Registering a trade mark can be a long and tedious process. Once IP Australia accepts your application, you might feel relief and think that there is nothing more to be done. However, as the owner of a registered trade mark, you should make sure that you use your trade mark. After IP Australia has approved your trade mark application, they will advertise it as ‘accepted’, and your trade mark will be open to opposition for two months. This means that a third party can oppose your trade mark application if they can demonstrate it is not in use or you are not using it in good faith. If the opposition is successful, IP Australia may remove your registered trade mark from the Trade Mark Register. This article outlines steps you can take after IP Australia has approved your application to ensure that your registered trade mark remains in use.
1. Commercialising Your Trade Mark
One of the key benefits of registering a trade mark is the commercial opportunities it provides for many businesses. Under the Trade Marks Act, a registered trade mark gives its owner the exclusive right to use, licence and sell their mark. As a result, trade mark owners can build their distinctive reputation within the market by using their brand to market their goods and services.
Selling Your Goods and Services
There are several ways you can use your trade mark, the most prominent being when selling your goods and services. For example, you can display your registered trade mark on the:
- packaging of your products;
- company uniforms; or
- any marketing materials used to sell your products or services.
Doing this will help build awareness of your brand and its associations with your mark.
When you use your mark to sell your goods and services, you should use the registered trade mark symbol ‘®’. Although there is no strict rule determining where you should place the symbol with respect to your trade mark, you must still display it prominently so that the public knows your distinctive markhas protection under trade mark law.
Licensing Your Trade Mark
Licensing arrangements commonly use trade marks. Licensing is where a trade mark owner agrees to let another person or business use their registered trade mark for a specific period.
Under a licensing agreement, you remain the owner of your trade mark. However, your right to use your trade mark during the licensing period will change depending on the type of rights you confer to the other person or business. These rights typically fall into the following three categories:
- exclusive rights, where only the other person or business can use your trade mark during the licensing period;
- non-exclusive rights, where multiple people or businesses can use your trade mark during the licensing period; and
- sole rights, which allows both you and the other person or business to use your trade mark during the licensing period.
You will typically write a licensing arrangement as a licensing agreement. The terms of this agreement depend entirely on what you, as the trade mark owner, agree to. For example, your trade mark licensing agreement can include:
- how you want your trade mark to be used, e.g. concerning a specific service the other person or business offers;
- the duration of the licensing agreement, e.g. over a 10 day period or 10 month period;
- which geographic regions can use your trade mark;
- royalty fees based on any products or services sold using your trade mark; and
- any quality control provisions to ensure that you have some say in how people use your trade mark.
By licensing your trade mark, you ensure that your trade mark remains useful as well as profitable, as it opens up further commercial opportunities for your business.
2. Enforce Your Exclusive Rights
Once IP Australia approves your trade mark for registration, it takes no responsibility to monitor the market if someone infringes your trade mark rights. Instead, it is your responsibility as a trade mark owner to enforce your own rights if someone infringes them.
Under the Trade Marks Act, trade mark infringement is where someone uses a similar or identical mark to your own in relation to similar goods and services. For example, a burger bar that uses the Golden Arches logo for marketing its business would likely be committing trade mark infringement against McDonalds.
However, there are some instances where unauthorised use of a trade mark is not considered trade mark infringement. For example, a registered trade mark may be used without the owner’s consent for comparative advertising or describing your own business’ goods and services. Therefore, you should seek legal advice to determine whether trade mark infringement can actually be made out in the circumstances. A trade mark lawyer can advise you on the strength of your case and which course of action you should take.
Once your trade mark has been registered, you should use it to market and sell your goods and services. Doing so will ensure you avoid having your registered trade mark removed for non-use. You should also monitor the marketplace for any potential infringement on your common law rights. If you need advice regarding how to use your trade mark after registration or suspect someone has infringed your trade mark rights, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
When it comes to trade mark registration, completing the appropriate forms takes little time. This is on the basis that you have thoroughly planned your application and made relevant business decisions. However, once you file your application, it takes at least seven months for IP Australia to approve it for trade mark registration.
The opposition period is a two-month window starting from the date IP Australia advertises your trade mark as accepted. During this time, any third party can challenge the registration of your mark on any of the grounds listed in the Trade Marks Act.