3 Things to Consider When Your Composite Trade Mark Expires
Composite trade marks are made up of any combination of words, devices, forms, sounds, smells or colours. They must meet the criterion of being able to identify specified products or services in the marketplace when viewed as a whole. Combinations, on the other hand, are more likely to have a larger capacity for differentiation.
It is hard to keep a successful trade mark portfolio unless you keep track of all trade mark renewal dates. If you let your trade mark expire, you no longer have the exclusive, automatic right to use your asset in relation to your company, your brand, or your products. Therefore, you will not be able to stop your competitors from utilising it, either. If your item was valuable enough to warrant a trade mark in the first place, you will probably want to keep the legal protection it provides.
Are you are wondering what to do when your composite trade mark expires? This article will explore some of the key considerations to think about before you renew it.
1. Remember What a Composite Trade Mark Protects
A composite trade mark is made up of components such as:
- smells; or
Composite trade marks, like any other form of trade mark, must be distinct from others. It must also identify your goods or services from those of competitors, without deceiving or confusing them. However, composite marks are typically simpler to register than conventional trade marks, since they are seen as a whole.
Composite trade marks may be made up of a prominent feature that is not registrable in and of itself, such as a geographical name or a surname. This may occur if they are paired with additional elements that differentiate the mark. For example, if the trade mark contained simple embellishments like scrolls or a plain geometric device, that may not be distinct enough to qualify for acceptance as a composite trade mark.
A composite trade mark will not always be able to differentiate itself merely because it comprises of a registrable part or a previously registered trade mark. The relative proportions of the parts within the trade mark will impact the trade mark’s ability to identify the applicant’s products or services when viewed as a whole. Therefore, it is important to think about the trade mark’s entire influence on a possible buyer.
2. Think About Why You Want to Refile a Composite Trade Mark Application
Composite trade marks enable you to register a combination of elements that would otherwise be ineligible for registration. For example, some words are overly descriptive or generic. They can, however, be merged with another trade mark component to form a composite trade mark that is more easily recognisable and registerable as a whole.
Some companies prefer to trade mark a single phrase or picture rather than a stylised term or a mix of components. This is because changing individual components afterwards is easier. For example, if your company name (simply the words) is a trade mark, you may alter the logo, colour, typeface, and so on without losing your trade mark protection.
However, if you trade mark a company name as a composite trade mark with a certain picture, colour, typeface, or other feature, you will not be able to modify it while still keeping trade mark protection. You would need to file a new trade mark application with the updated design.
3. Remember the Duration of Protection
For the first 10 years, a trade mark is protected in all Australian states and territories. It can then be renewed at a charge every 10 years. You have:
- 12 months to renew your trade mark registration before it expires; or
- up to 6 months after it expires.
Note that you may be charged a late fee if you renew after the deadline.
If you do not renew your trade mark, you will lose all rights to it. Therefore, other people and companies can benefit from your hard work and investment as a result of this.
It is quite simple to let a trade mark renewal expire if you have a huge collection of them. However, if your trade mark portfolio includes foreign trade marks, things get much more difficult because various nations have distinct trade mark:
- renewal processes;
- methods; and
- time limits.
Before deciding to renew your composite trade mark when it expires, you should consider:
- revisiting why you registered a composite trade mark in the first place;
- making sure you renew within time; and
- reviewing your wider trade mark portfolio to ensure you are protecting it.
However, the sort of trade mark you should renew the registration for is determined by the trade mark’s intended function. If separate trade mark components are difficult to register and your company is confident in the mark’s long-term viability, a composite trade mark is an ideal solution, so do not forget to renew it when required. If you have any questions about composite trade marks or renewing a trade mark, contact our trade mark lawyers on 1300 657 423 or fill out the form on this page.
Frequently Asked Questions
It is made up of components such as words, pictures, forms, sounds, smells or colour. Composite trade marks, like any other form of trade mark, must be distinct from others.
Composite trade marks enable you to register a combination of elements that would otherwise be ineligible for registration.