In Short
- Registering a trade mark gives you exclusive rights to use your brand for specific goods and services.
- You can license or sell your registered trade mark, creating new revenue opportunities or adding value to your business.
- Registration makes it easier to stop others from misusing your brand and protects your reputation.
Tips for Businesses
When registering a trade mark, carefully select the right classes to cover both your current and future business activities. Remember that protection only applies in the regions where you register, so consider international filings if you trade overseas. Keep your trade mark active by renewing every 10 years and monitoring for infringements.
A trade mark is a type of intellectual property (IP) that can provide excellent protection over your business’s brand. Branding is the key to success for many businesses, helping others find and identify your goods or services. In addition to the marketing benefits that trade marks provide, you should also consider the various legal advantages. This article will take you through three legal reasons to register a trade mark under your brand.
Your business’ brand represents your values, identity and reputation. Learn how to create a successful brand and protect it.
What is a Trade Mark?
A trade mark acts as your badge of origin in the marketplace, allowing consumers to identify your goods and services with ease.
Trade marks may take several forms, such as:
- word (e.g. your business name);
- phrase (e.g. your business slogan);
- image (e.g. your business logo); or
- a combination of the above.
If your trade mark meets the legislative requirements of a trade mark, it will be eligible for registration.
Understanding Trade Mark Classes
Prior to registering your trade mark, it is important to understand that trade mark protection operates within specific classes of goods and services. Goods and services are divided into 45 classes, and your trade mark registration will only protect your mark within the classes and goods/services you select and pay for at the time of registration. For example, registering your mark in class 9 for software would not prevent another business from using it in class 3 for cosmetic products. This class system means you need to carefully consider which classes are relevant not only to your current business activities but also to your future plans for your business.
Continue reading this article below the formLegal Reasons to Register a Trade Mark
Exclusive Use
Registering a trade mark gives you the exclusive right to use that mark for specific goods and services. This means you have the right to take legal action against anyone using your trade mark without your consent.
So, consider someone using your business logo for their goods or services. This may mislead your customers into thinking that what they are purchasing is yours. This may have negative impacts on your reputation if they are providing goods or services of an inferior quality, and it can be highly frustrating. Therefore, if you do not register your trade mark, it can be challenging to protect your brand from unauthorised use.
However, if you register your trade mark, you gain the right to initiate a claim or proceedings against competitors infringing your trade mark. The outcome might mean that you stop this unauthorised use. In some instances, you can claim money for any damage your business incurs from misusing your trade mark.
Important Limitations or Exclusions
While registration may provide significant advantages, it is crucial to understand that exclusive rights are not absolute. In Australia, trade mark rights are based on a “first-to-use” system, meaning someone who used a similar mark before your registration may have prior rights.
Additionally, your exclusive rights are geographically limited to Australia, unless you file internationally. To successfully safeguard your trade mark, you will need to register it in each country or region where you supply your goods and services.
Authorising Use
Another legal advantage of registering a trade mark is that you will be able to license your trade mark. A licence allows you to charge others for the use of your mark. This is a great way to add another revenue stream and allow others to increase awareness of your mark. Therefore, a registered trade mark is an essential first step to creating licensing arrangements.
The agreement between the licensor and licensee is a licensing agreement. This written contract often includes details as to:
- the licensing agreement;
- the length of the agreement;
- geographical restrictions;
- what constitutes a breach of contract; and
- the scope of the agreement (e.g. rights to manufacture and sell products).
Selling Your Trade Mark
Registering your trade mark gives you the right to sell your trade mark to another person or business. When selling your trade mark, you transfer all of your rights to the buyer.
Under Australian trade mark law, selling a registered trade mark requires an assignment. An assignment involves recording the trade mark’s ownership change with IP Australia.
It is also essential to consider the value of a business’ goodwill when selling a trade mark, as this can largely determine the sale price of the mark. The value of a trade mark may also depend on the market value of other trade marks and future income-based projections. The value of trade marks can increase the sale price of your business overall. While you can sell unregistered trade marks as part of a business, registered trade marks can be much more valuable.
Other Reasons to Register a Trade Mark
In addition to the legal reasons to register a trade mark, several other reasons make the process worthwhile. For instance, a registered trade mark can be an excellent marketing tool and bring value to your business.
Ongoing Obligations and Considerations
Once registered, your trade mark requires active maintenance. You must renew your trade mark every 10 years and continue using the mark in commerce. Non-use for 3 consecutive years may lead to your mark being vulnerable to an action for removal from the register by third parties. You should also actively monitor the marketplace for potential infringement and be prepared to enforce your rights, as failure to protect your mark can weaken your position in future disputes.
Key Takeaways
Further to the marketing benefits of a trade mark, it is important to consider the many legal advantages. This includes that it provides you with exclusive rights to:
- use your trade mark;
- license your trade mark; and
- sell your trade mark.
If you require assistance registering a trade mark, our experienced intellectual property lawyers can assist as part of our LegalVision membership. You will have unlimited access to lawyers to answer your questions and draft and review your documents for a low monthly fee. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
A trade mark is a type of intellectual property that allows you to distinguish your brand from others. It acts as a badge of origin in the marketplace, allowing consumers to easily identify your goods and services. Registering your trade mark provides broader legal protection, giving you exclusive rights to your trade mark.
Some of the legal reasons to register a trade mark include that it provides you with exclusive rights to use your mark within the classes of goods and services you select. It also provides you with the right to license and sell your mark.
Trade mark registration lasts for 10 years from the filing date and can be renewed indefinitely for successive 10-year periods, provided you continue to use the mark in commerce and pay renewal fees.
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