What Happens if I Don’t Use My Registered Trade Mark?
Emily Young
If you have gone through the trouble of registering a trade mark, you may want to maintain your registration even if you are not actively using the trade mark. To help you decide whether to keep your trade mark, even if you do not use it, this article will take you through trade mark usage requirements. It will then explain alternate ways to maintain your trade mark registration.
What Is a Trade Mark?
A trade mark is a tool that enables you to protect your intellectual property (IP) as a business owner. Specifically, trade marks protect your business’ brand by giving you exclusive rights to it. These exclusive rights include the right to use, commercialise and protect your trade mark. Trade marks serve as excellent commercial and legal protection. This is because they help you establish and protect your brand’s reputation in relation to the goods and services it provides.
Trade marks can take a variety of forms, such as your business’:
- name;
- slogan;
- logo; or
- song.
While you will have some rights to your trade mark without registration, it is generally recommended that you protect your trade mark on IP Australia’s trade mark register. This provides formal evidence of your registration and can make it easier for you to enforce your rights.
Do I Have to Use My Trade Mark?
A key element of trade mark registration is trade mark usage. If you have not used your registered trade mark for the last three years, and you have had it for over five years, it could be removed. Specifically, third parties can apply to have your trade mark removed from the trade mark register. Therefore, if you do not use your trade mark, you risk losing it. This system’s purpose is to deter people from hoarding trade marks that they do not use.
Should I Keep My Trade Mark If I Do Not Use It?
The requirement to use your trade mark means that it is not in your best interests to keep your trade mark if you have no use for it. A downside to trade mark protection is the renewal process, which requires you to renew your trade mark every ten years. This process also requires you to pay renewal fees. If you do not use your trade mark and therefore receive no commercial benefit from it, renewal fees will be an unnecessary expense.
What Counts As Trade Mark Usage?
Having control over the use of your trade mark constitutes trade mark usage. This means that even if you are not using your trade mark yourself, it is still possible to exercise control over it. This will enable you to maintain your trade mark even if you are not using it personally.
For example, as the owner of a trade mark, you have the right to commercialise it. This includes through a licensing agreement. Trade mark licensing refers to when a trade mark owner (the licensor) permits a third party (the licensee) to use their trade mark within certain parameters. This is a common system for franchises, with the franchisee paying a royalty fee for access to the franchisor’s IP.
A key benefit to licensing agreements is that you can maintain the rights to your trade mark without having to use it personally.
Licensing agreements also provide a passive stream of income, which is appealing for businesses.
Key Takeaways
When deciding if you want to keep your trade mark on the register if you do not use it, you should consider:
- the risk of your trade mark being removed from the trade mark register;
- potential costs from trade mark renewals; and
- whether your trade mark is being used in alternative ways, such as a licensing agreement.
If you need assistance deciding if you should keep your trade mark, our experienced trade mark lawyers can help. You can contact them on 1300 657 423.
Frequently Asked Questions
If you do not use your trade mark, you risk losing your rights to it. If your trade mark has been registered for more than five years and you have not used it for the past three years, others can apply to have your trade mark removed from the trade mark register.
Generally, you have to use your trade mark to be able to keep it. However, there are some alternative options. If you can prove you exercise control over your trade mark through an alternative means, such as a trade mark licensing agreement, you might want to consider keeping it.