3 Tips To Protect Your Trade Mark In The First Six Months After Registration
Emily Young
Your business’ intellectual property (IP) is perhaps its most important asset. Although many businesses will remember to protect their business’ tangible assets, such as their machinery and devices, many forget to protect their intangible assets, including elements of their brand. This might include your business logo, song or even brand colours. One such way to protect these assets is to register a trade mark, which will give you the exclusive rights to the use of your trade mark.
However, registering your trade mark is only the first step in the life of your trade mark registration. Once your trade mark is registered, there are several important steps you will need to take to maintain your trade mark protection, particularly in the first six months after registration. This article will walk you through three tips to protect your trade mark in the first six months after registration.
1. Use the Correct Trade Mark Symbol
Before registering your trade mark, you were likely using the “™” symbol next to it. This symbol indicates that you are claiming trade mark rights in your brand, but that it may not necessarily be a registered trade mark yet.
However, you should start using the ® symbol next to your trade mark once you receive registration. This symbol, known as the registered trade mark symbol, indicates that your trade mark has been registered. This symbol is usually in superscript style, which is set slightly above the baseline of an image or word.
Using this symbol serves as a deterrent to competitors by outwardly showing that you registered your trade mark. This symbol also attests to the legitimacy of your brand to potential consumers, which might encourage further business. Therefore, you should aim to use the registered trade mark symbol as soon as possible following your trade mark registration.
2. Implement Your Trade Marks
In the first six months following your trade mark registration, you must ensure you implement your trade marks in your business activities. You must use your trade mark for the goods and services you have registered for, or you risk losing your registration later down the line. Because of this, you should ensure you are using your trade mark appropriately to get the most out of your trade mark protection.
If you later find that you do not use your trade mark in your registered trade mark categories, you might wish to narrow the scope of your trade mark protection by removing trade mark classes. This will help you avoid paying any unnecessary trade mark renewal fees concerning classes no longer of interest to you.
For example, consider you have a business selling orange juice. In that case, you have likely registered your trade mark under class 32, which includes fruit beverages and fruit juices. However, you might intend to later make merchandise for your brand, so you have registered your trade mark under trade mark class 25, which includes most types of clothing. However, if you find that you are not using your trade mark under trade mark class 32, your trade mark might later be removed from the trade mark register for non-use by a third party. Further, you will be paying renewal fees every ten years for a trade mark you are not using.
3. Enforce Your Trade Marks
Once you have a trade mark, you should ensure you are getting the most out of your registration. This includes keeping up to date with new filings and enforcing your trade mark rights.
In the first six months following your trade mark registration, you should set up appropriate ways to effectively monitor for trade mark infringement. For example, you might set up Google alerts, so you are notified when businesses use a trade mark that is similar to yours. Alternatively, you might hire a professional to monitor your trade mark filings or purchase trade mark monitoring software that will help you do this.
If you find infringement against your trade mark, you will need to take action. For example, you will need to either send a cease and desist letter to the business infringing on your trade mark or even take the matter to court if the infringement persists. Further, if you identify a new filing that you consider infringes on your trade mark. In that case, you may need to oppose the relevant trade mark application to prevent it from progressing through to registration.
Key Takeaways
Once you register your trade mark, there are several important steps you will need to take to protect your trade marks, particularly in the first six months after registration. This includes:
- using the correct trade mark symbol;
- implementing your trade marks; and
- enforcing your trade marks.
If you need assistance protecting or monitoring your trade mark, our experienced trade mark lawyers can help. You can get in touch with them on 1300 657 423.
Frequently Asked Questions
Trade mark registration is the process of formally protecting your trade mark on a trade mark register. When your trade mark is registered, you have enforcement rights over your trade mark, meaning you can take legal action against those who use your trade mark without your consent.
Trade mark registration is the first step in the life cycle of your trade mark. In the months following your trade mark registration, you will need to ensure you start using the registered trade mark symbol, use your trade marks in the correct trade mark classes and enforce your trade mark registration.