What to do After You Apply for a Trade Mark
Once you register your trade mark, you might think that you can sit back and relax, assured that your goods or services are adequately protected. However, it is your responsibility as a trade mark owner to protect your trade mark. This article provides a general overview of what you should do after you apply for your trade mark.
Using the Proper Symbol
If you are in the process of having your registered trade mark approved, you can protect your trade marked goods or services with the symbol ‘™’. When you use this symbol, you indicate to potential infringers that you intend the phrase or logo with the ‘™’ symbol to serve as a unique identifier of your business’ goods or services.
Only once your trade mark application has been approved can you then use the ‘®’ symbol. If you use the ‘®’ symbol for a trade mark that you have not registered, you are likely committing an offence, which is punishable by a fine.
Monitoring the Market for Infringement
A trade mark provides owners with the exclusive right to use, licence and sell their mark. If another person uses your trade mark without your permission, they may be infringing on your intellectual property rights. However, it is your duty as a trade mark owner to monitor the market for any potential infringements. IP Australia does not monitor or police the marketplace for potential trade mark infringements.
In the instance where you suspect someone has infringed your trade mark, it is best to seek the advice of a lawyer who can advise you on the strength of your claim and determine what steps you should take to enforce your rights.
Licensing Your Trade Mark
Besides using your registered trade mark to sell your goods or services, trade mark owners can also commercialise their trade mark by licensing it. Licensing is where a trade mark owner (a licensor) agrees to let another person (a licensee) use and exploit their trade mark over a specified period of time for an agreed price.
For example, a franchisee of a shoe repair shop would likely have a licence to use the franchisor’s logo.
Whilst the licensor cannot use the trade mark within the period specified in the licensing agreement, they regain ownership over the trade mark once the licensing period is over.
Assigning Your Trade Mark
Assignment refers to the process of transferring ownership of a trade mark from its original owner (the assignor) to another person (the assignee). A full assignment of a trade mark transfers all the intellectual property rights of the trade mark. In this sense, if you assign your trade mark in full, you no longer own the trade mark.
On the other hand, you can partially assign a trade mark. This means that you can transfer your trade mark to an assignee only concerning some part of the good or service that the trade mark protects. This means that you still retain exclusive ownership of the trade marked goods that you have not assigned.
For example, if you own a trade mark for lampshades and candle holders, you can partially assign the ownership for the candle holders but still retain your exclusive rights for the lampshades.
Both licensing and assignment of your registered trade mark can provide commercial benefits for your business. However, you must know the legal consequences of licencing and assigning your trade mark as this will determine how you can then use your trade mark.
Removal for Non-Use
Another surprising mistake made by trade mark owners is losing their trade mark due to non-use. A third party can apply to remove your trade mark from the registry three years from its filing date if your trade mark has not been used during this period. This prevents people from merely registering trade marks to prevent others from using them without intending to use the trade mark themselves.
If you have received a notice of removal, you can respond within two months by filing a ‘notice of intention to oppose’. This requires you to submit a completed application and pay the $250 fee. Once you have filed this notice, the next step requires you to file a ‘statement of grounds and particulars’ within one month of submitting your notice of opposition. Whilst a statement of grounds and particulars requires no further fee, it does require more information on your behalf, including your:
- intention to use the trade mark;
- actual use of the trade mark; and
- circumstances which may have prevented you from using your trade mark.
You can find both forms for opposing the notice of removal here.
Registering your trade mark with IP Australia will only grant protection within Australia. If you seek further protection in other countries, it is possible to register your trade mark:
- in the particular country, through their specific process of registration; or
- with the World Intellectual Property Organisation (WIPO) to protect your trade mark in countries that are members of the Madrid Protocol.
Registering your trade mark both in Australia and overseas can be particularly useful if you intend to run your business across different countries.
Once you register your trade mark, it is your duty as a trade mark owner to seek out any potential infringements of your trade mark. Your exclusive rights to a registered trade mark also allow you to gain a commercial benefit for your business by licensing or assigning your trade mark. It is important, however, that you use your trade mark to avoid removal for non-use. If you need 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
Australian IP law protects a registered trade mark for 10 years from its filing date. You have the option to renew your trade mark 12 months before the trade mark’s expiry date.
You must register an assignment of a trade mark with IP Australia. The registration process will require you to provide a number of documents, including an assignment request form and evidence of assignment.
Just like a third party can apply to remove your trade mark for non-use, you can apply to remove another person’s trade mark for non-use via IP Australia. You must show that the trade mark owner did not intend to use the trade mark, the owner did not use the trade mark in good faith or that the trade mark has not been used in three years from its filing date.