I Have a Trade Mark for My Business. What Should I Do Next?
Your intellectual property (IP) is the most valuable asset of your business. Registering a trade mark is an important milestone in a business, granting you protection and enforcement rights. However, registering your IP is only the first step in the life cycle of your IP. After registration, you need to manage your trade mark. This article will take you through five things you should think about after you have registered a trade mark for your business.
Use Your Trade Mark
Once you have obtained a trade mark, you must use it. If your trade mark is left unused, it is eligible to be removed from the trade mark register five years after the filing date. Competitors will have to prove that you have not used your trade mark for the past three years.
Once your trade mark is registered, you will be eligible to use the registered trade mark symbol ® next to it. While you can use the ™ symbol for unregistered marks, the ® symbol is reserved for registered trade marks only.
Manage Your Trade Mark
After registration, you should aim to manage your IP regularly. As a trade mark owner, some ideas for managing your IP include:
- creating an IP strategy;
- revising your IP use; and
- reporting on your IP management.
It is important to remember that registering your trade mark is just the first step in the trade mark management process, and on going management will be essential.
Renew Your Trade Mark
Once your trade mark is registered, you should keep track of the date to ensure you stay on top of your trade mark registration. Your trade mark will need to be renewed every 10 years and pay the applicable renewal fee. By keeping your business details up to date, IP Australia will notify you when it is time to renew your trade mark.
Oppose Similar Trade Marks
Once your trade mark is registered, you should monitor for competitor’s new trade mark applications. If you identify a trade mark similar to yours, you are entitled to oppose it formally. It is important to do this, so your own trade mark is not diluted.
You can search the Australian Trade Mark Online Search System (ATMOSS) for new trade mark applications. There is also trade mark monitoring software that you can purchase to help you identify conflicting trade mark registrations.
Commercialise Your Trade Mark
You can commercialise your trade mark once you have registered it. For example, you are entitled to assign your trade mark to others, license your trade mark, or franchise your trade mark. You can see the difference between these common commercialisation options in the table below:
|Assignment||An assignment is the sale of your IP, either in whole or in part. This legally assigns IP to the new owners|
|Licensing||Licensing refers to permitting another business to use your IP on agreed terms and conditions. For example, a business might pay you a percentage of their sales to use your trade mark|
|Franchising||Franchising your IP refers to granting other parties the rights to your trade mark as well as your business systems in exchange for a percentage of sales or a regular franchising fee|
While registering your trade mark is an important step in the IP process, it is not the final step. There are a number of things you should do once your trade mark is registered, including:
- making sure you use your trade mark;
- managing your trade mark;
- renewing your trade mark;
- opposing similar trade marks; and
- commercialising your trade mark.
Frequently Asked Questions
Trade mark registration refers to formally protecting your trade mark on a trade mark register. With trade mark registration, you have enforcement rights over your trade mark, meaning you can take legal action against anyone who uses your trade mark without your permission.
Registration is only the first step in your trade mark’s life cycle. After registering your trade mark, consider using your trade mark, implementing IP management systems, renewing your trade mark, actively opposing similar trade marks, and commercialising your trade mark.
IP management refers to the systems that identify, protect and monitor your business’ IP after registering it. Registering a trade mark is only the first step in the life cycle of your IP; everything that comes after is part of IP management.