5 Things To Consider Before Renewing Your Trade Mark
A trade mark is one of a company’s most cost-effective assets. A registered trade mark’s renewable term is nearly always 10 years. When you average the cost of renewing your trade mark over that time, it can amount to less than a couple of hundred dollars each year. Therefore, when you consider the importance of a trade mark in brand positioning and the protection of a product, service, or even a company’s whole reputation, this is excellent value for money.
A careful owner of an intellectual asset, will only spend money on it if the expense can be justified by the demands of the firm in which it is being used. Should a trade mark, for example, be renewed if it is not being used? It is true that if a trade mark has not been used for a while, it may be removed from the Australian Trade Marks Register (provided that five years has passed since its date of registration). However, this is one thing to consider when deciding whether or not to renew a trade mark.
This article will explore five of the key considerations to think about before renewing your trade mark.
1. Why Is The Trade Mark Still Registered?
Is the trade mark still used on any products or services? If not, it is still possible that you remain dedicated to the product or service. Further, real sales or service delivery under the trade mark may not be taking place due to other business considerations, such as the current economic climate. Therefore, before dropping or relocating the product or service, you must make a decision whether you can reposition the trade mark. In addition, the contributing factors may change.
2. Is It Worth Renewing?
If it was a success the first time, it could leverage the trade mark to generate additional revenue streams. However, there may be circumstances where it is not worth renewing your trade mark.
3. Is The Trade Mark Valuable to Someone Else?
This is an especially appropriate issue if the trade mark has a wider market reputation (despite non-use). Or, if a significant financial expenditure was necessary to get registration or to establish the brand in the market from the outset. Before removing an intellectual asset from the books, consider whether divestiture may realise a final return on investment rather than abandonment.
4. Is There Anything in the Trade Mark Similar to Other Marks?
If that is the case, keeping it alive might be a defence against competitors deliberately placing their own trade marks closer to those already in use (working assets). In other words, a trade mark may assist a company in maintaining a visual and audible barrier between itself and its rivals.
To remove it, a rival must take proactive measures. While the trade mark stays on the Register, it gives rivals the impression that there is a barrier to entry. Therefore, your company does not want to have to justify why a competitor’s usage is deceptive where it still wants to claim that reputation and realises too late that it is intimately connected to the trade mark.
5. Remember the Purpose of a Trademark
A business or product’s name or logo can be registered as a trade mark for easy long-term protection. The Trade Marks Act grants you the exclusive right to use a trade mark for nominated products or services when registered in Australia.
You will get a Certificate of Registration after your trade mark has been registered. Additionally, it will be entered in the Trade Marks Register maintained by IP Australia for the use of your trade mark for an unlimited duration. The trade mark can only be used when the renewal costs have been paid every ten years. If you do not pay the renewal costs, your trade mark registration will lapse. This means IP Australia will withdraw it from the Register.
Further, a registered trade mark acts as a safeguard against infringement of your rights. If someone does infringe on your trade mark, the court may issue an injunction to stop the infringing behaviour. Alternatively, they may award damages to the owner of infringed trade mark.
Both small and large companies benefit from the fundamentals of excellent intellectual asset management. The advantages of investing in renewing your trade mark can be enormous. However, the drawbacks of not paying the fees are, in some circumstances, quite large.
When deciding how to re-register a trade mark, you should consider:
- what the steps are;
- whether you have a good or service that you need to protect; and
- how long you can wait to apply.
Frequently Asked Questions
A trade mark lasts for ten years from the date that it is registered.
IP Australia usually sends you a notice to pay a year before the renewal payment is due. If you miss the date, you have six months after the expiration date to pay.
Yes, you can sell your trade mark to someone else, but you need to make sure you have an active trade mark.