You’ve developed your trademark, thought about the design, considered how your trademark can promote your business and finally received confirmation that your trademark is registered. It’s a great feeling!
Your trademark is valuable to your business. Customers recognise and connect your business with your trademark.
For this reason, protecting your trademark after it is registered is vital in preventing its value from diminishing.
The value of your trademark may diminish if a competitor’s trademark is substantially identical or deceptively similar to your trademark.
The use of similar trademarks by competitors may result in your trademark not being as easily distinguishable in the industry or in customers becoming confused about which company is associated with the trademark.
If this happens, you may lose your market edge and the promotion of your brand and business may suffer.
What Can You Do to Protect Your Trademark?
If a competitor applies to register a trademark that is substantially identical or deceptively similar to your trademark there is a limited window in which you can oppose the registration of the trademark.
The window starts with the advertisement of the trademark in the Australian Official Journal of Trade Marks and ends two months later.
To oppose the registration of the trademark, you will need to file a notice of opposition during this window.
As this window is short, it is important to check the Australian Official Journal of Trade Marks regularly.
If your trademark right is being infringed by the use of an unregistered trademark that is substantially identical or deceptively similar to your registered trademark, you may be able to commence an action for infringement.
Note: there are exceptions to commencing an action, for example, if the user of the similar trademark used the trademark prior to the registration of yourtrade mark. You may also have an action for passing off under the Competition and Consumer Law 2010 (Cth) which can also be used to protect unregistered trademarks in contrast to the Trade Marks Act 1995 (Cth).
Assert & Protect Your Trademark
Once your trademark is registered, it is prudent to use it in conjunction with the ® symbol.
Using ® with your trademark is a declaration that your trademark is registered and alerts others that it is protected.
Your use of the ® symbol may also benefit you by strengthening your position in a trademark dispute on the basis that you have alerted others to the registration of your trademark by using the ® symbol.
Caution using ® symbol for unregistered trademarks: you may only use the ® symbol once your trademark is registered and not from the commencement of your application to register your trademark. However, using the ™ symbol is not an offence and you can use this with your trademark during the trademark registration application process.
Another way to protect your trademark is to only use your trademark as registered and avoid varying it.
For example, if you have only registered your trademark has a main word with two small words directly underneath it, avoid moving those two small words to sit beside or above the large word. As this is not the trademark you registered and being inconsistent with the registered trademark may weaken your assertion that use of your trademark is protected.
Avoid Becoming Generic
Trademarks can become the word used by consumers as the generally accepted name for a product or service. This may diminish the value of your brand and, if also used this way by others in your industry, may result in an application to have your trademark de-registered.
Under the Trade Marks Act 1995 (Cth) if, within an industry, a trademark becomes generally accepted as the name of a product or service if a court determines the trademark owner no longer has the exclusive right to use that trademark.
If you notice your trademark being used as a generic word, assert the protection afforded to your trademark by using the ® symbol.
You can also consider using the actual generally accepted name of the product together with your trademark. This may assist the public to acknowledge that your trademark is not the generally accepted name of the product.
Don’t Lose Your Trademark – Use it!
You’ve registered yourtrade mark but you haven’t used it yet. If you don’t use your trademark in connection with trade in goods or services after the trademark is registered, a someone else may apply to have the trademark removed.
Timing is an important consideration in registering trademark, not only to prevent removal for non-use but also to support a trade mark application in the event a trademark examiner requests examples of trademark use to support your trademark application.
Balancing these considerations with commercial strategies for launching products or services is vital.
Administration: Simple and Necessary
It may seem simple but remember to update your address for service if it changes so that you receive notice of renewal fees and any other notices provided to you by IP Australia.
You have built the value of the trademark, you don’t want the value to diminish by missing the opportunity to maintain registration of your trademark for a further 10 years.
Registering your trademark is only the first step.
After registration, it is crucial to maintain the value of the trademark associated with your business by being vigilant to the use of similar trademarks and being consistent in your use of the trademark asserting the protection afforded to your trademark.
And don’t forget to update your address for service!