You’ve developed your trade mark, thought about the design, considered how your trade mark can promote your business and finally received confirmation that your trade mark is registered. It’s a great feeling!
Your trade mark is valuable to your business. Customers recognise and connect your business with your trade mark. For this reason, protecting your trademark after it is registered is vital in preventing its value from diminishing.
Similar Trade Marks
The value of your trade mark may diminish if a competitor’s trade mark is substantially identical or deceptively similar to your trade mark. The use of similar trade marks by competitors may result in your trade mark not being as easily distinguishable in the industry, or in customers becoming confused about which company is associated with which trade mark. If this occurs you may lose your market edge and the promotion of your brand and business may not be as effective.
What can be done?
If a competitor applies to register a trade mark that is substantially identical or deceptively similar to your trade mark there is a limited window in which you can oppose the registration of the trade mark. The window commences on the advertisement of the trade mark in the Australian Official Journal of Trade Marks and ends two months later. To oppose the registration of the trade mark you will need to file a notice of opposition during this window. As this window is small it is important to check the Australian Official Journal of Trade Marks regularly.
If your trade mark right is being infringed by the use of an unregistered trade mark that is substantially identical or deceptively similar to your registered trade mark you may be able to commence an action for infringement. Note though that there are exceptions to commencing an action, including, if the user of the similar trade mark used the trade mark prior to the registration of your trade 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 trade marks in contrast to the Trade Marks Act 1995 (Cth).
Assert & Protect your Trade Mark
Once your trade mark is registered it is prudent to use it in conjunction with the ® symbol. Using ® with your trade mark is a declaration that your trade mark is registered and alerts others that it is protected. Your use of the ® symbol may also benefit you by strengthening your position in a trade mark dispute, on the basis that you have alerted others to the registration of your trade mark by using the ® symbol.
Caution ® symbol for unregistered trade marks. Consequently, you may only use the ® symbol once your trade mark is registered and not from the commencement of your application to register your trade mark. However, using the ™ symbol is not an offence and you can use this with your trade mark during the trade mark registration application process.
Another way to protect your trade mark is to only use your trade mark as registered and avoid varying it. For example, if you have only registered your trade mark 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 trade mark you registered and being inconsistent with the registered trade mark may weaken your assertion that use of your trade mark is protected.
Avoid becoming Generic
Trade marks 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 trade mark deregistered. Under the Trade Marks Act 1995 (Cth) if, within an industry, a trade mark becomes generally accepted as the name of a product or service a court may determine that the trade mark owner no longer has the exclusive right to use that trade mark.
If you notice your trade mark being used as a generic word assert the protection afforded to your trade mark by using the ® symbol. You can also consider using the actual generally accepted name of the product together with your trade mark. This may assist the public to realise or note that your trade mark is not the generally accepted name of the product and discourage such use.
Don’t Lose your Trade Mark, Use it!
You’ve registered your trade mark but you haven’t used it yet. If you don’t use your trade mark in connection with trade in goods or services after the trade mark is registered a person may apply to have the trade mark removed. Timing is an important consideration in registering trade mark, not only to prevent removal for non-use but also to support a trade mark application in the event a trade mark examiner requests examples of trade mark use to support your trade mark 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 trade mark, you don’t want the value to diminish by missing the opportunity to maintain registration of your trade mark for a further 10 years.
Registering your trade mark is only the first step. After registration it is crucial to maintain the value of the trade mark associated with your business by being vigilant to the use of similar trade marks, being consistent in your use of the trade mark and asserting the protection afforded to your trade mark, and don’t forget to update your address for service!