Branding is often considered the cornerstone of success for many businesses. A good brand helps others find, remember and identify your goods or services. A trade mark is one form of intellectual property (IP) protection that you should consider for your business. If your business has been operating for quite some time, you might be wondering if you can backdate a trade mark application. This article will examine the extent to which you can backdate a trade mark application, as well as some relevant additional considerations.
What is a Trade Mark?
A trade mark is a form of IP that enables you to distinguish elements of your brand from your competitors. A trade mark is an excellent tool. It provides you with the exclusive rights to the use of your trade mark. Although not essential, you may choose to register your trade mark with IP Australia to gain an added layer of protection and formal registration.
Trade marks can take many forms, with the most appropriate registration option depending on your business needs. For example, you might choose to register a trade mark for your business:
- name;
- logo;
- slogan;
- colours;
- jingle; or
- combination of the above.
Noting the above examples of trade marks, a trade mark is a sign relating to the branding of your business, rather than describing the goods or services provided by the business. As such, any sign that can distinguish your trade mark from others will have a better chance of achieving registration.
Unregistered vs Registered Trade Marks
You have probably spent hours perfecting your goods or services before launching them to the public. Noting this effort, you should take measures to protect your hard work from harm.
Technically speaking, you do not need to register a trade mark to obtain the benefit of legal protection. This is because you may have a common law, unregistered trade mark. Unregistered trade marks exist where you have been using a particular sign or mark as a badge of origin. This sign needs to have acquired a reputation. In these circumstances, if you allege unauthorised use of this trade mark, you will need to demonstrate that you have built up a sufficient reputation in the mark, among other factors. By registering your trade mark, you can avoid any confusion and quickly demonstrate your rights to your mark.
Continue reading this article below the formHow Long Does Trade Mark Registration Last?
Once you have registered your trade mark, your rights will be effective for 10 years. At this 10-year mark, you will have the option of renewing your trade mark registration, which will incur renewal fees. Fortunately, there is no limit to how many times your registration can be renewed.
In certain cases, your trade mark may be removed from the register by a third party if you have not used your trade mark and someone else applies for its removal, or if your use of the trade mark has not been in good faith.
Can I Backdate a Trade Mark Application?
If you choose to register your trade mark, you might be wondering if you can backdate your application to the date you first used your trade mark.
Note that the law considers your registered trade mark rights effective from the date you filed your application rather than the date that your trade mark is officially registered by IP Australia.
However, this does not negate your common law trade mark rights. Your mark will be deemed a trade mark from the time you can demonstrate that it has been used in connection with your goods or services.
This issue is that providing sufficient evidence to demonstrate this can be difficult. As such, it is recommended that you apply to register your trade mark as soon as possible to rely on the date of application as the time your trade mark is registered.
This fact sheet outlines what records you need to keep when you run a trade promotion for each state and territory, and what documents you should keep.
Key Takeaways
If your business has been operating for quite some time, you might be wondering if you can backdate a trade mark application. Some important things to note about the timing of your trade mark application include that:
- trade mark rights are effective from the date you file your application;
- you cannot consider your trade mark registered until you receive your trade mark certificate of registration from IP Australia; and
- your business may have a common law (unregistered) trade mark earlier than the date of your trade mark application.
If you need assistance understanding your trade mark rights, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
A trade mark is one form of intellectual property (IP) protection that you should consider to protect your business. Trade marks may take a variety of forms, such as your business’ logo, name, colours, jingle or slogan. Ultimately, a trade mark registration gives you exclusive rights to the use and commercialisation of your brand assets.
Your registered trade mark rights will be deemed effective from the date you filed your application rather than the date that your trade mark is officially registered by IP Australia. However, your business may have a common law (unregistered) trade mark, which exists where you have been using a particular sign or mark as a badge of origin and you can demonstrate you have built up a sufficient reputation in the same.
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