As a business owner, you may have heard of using a ‘trade mark licence agreement’ and ‘trade mark registration’ to protect your brand, but were unsure of their meanings. Trade mark registration is a process where you apply for trade mark protection in Australia, and if successful, you obtain the exclusive right to use it. One of these exclusive rights is being able to license your trade mark. That is, you make an agreement with another party that lets them use your trade mark without you giving up ownership. This article will clarify the differences between registering and licensing a trade mark in further detail.
What Happens When You Register A Trade Mark?
A trade mark is a sign you use to distinguish your business’s goods and services from others in the market. In this sense, a trade mark can include a wide range of signs, including:
- your business name;
- logos;
- slogan; or
- more obscure signs, such as sounds or scents.
If you successfully register your trade mark, you obtain the exclusive right to use, license and sell your trade mark. In law, this is enforced under the Trade Marks Act 1995. This means that you become the sole user of a particular sign concerning certain goods and services included in your registration. If someone uses a similar or identical trade mark in relation to the same goods and services, you can pursue legal action for trade mark infringement.
Additionally, trade mark registration allows you to authorise other businesses or individuals to use it for the goods or services claimed. Generally, you would use a licencing agreement to authorise another entity or person to use your registered trade mark.
How To Register A Trade Mark
To register a trade mark for protection in Australia, you must file an application with IP Australia. Before you file your application, you should:
- Decide what brand asset you wish to protect.
- Conduct a trade mark search to ensure an identical or similar trade mark does not already exist on the Australian Trade Mark Search.
- Determine which classes of goods and services to apply for so that your trade mark is adequately protected.
After that, you can choose to file an application through a legal representative or file on your own. If you choose to file on your own, you can use a:
- standard application; or
- TM Headstart application.
For standard applications, you will receive a trade mark filing number once you have input the relevant details about your application and pay the applicable government fees. IP Australia will then examine your application for around four to five months. You will know the outcome of your application after this period.
Alternatively, when you apply for registration using a TM Headstart service, an examiner will conduct a preliminary assessment before formalising your application. This can give you further information on how to correct or improve certain parts of your application before you choose to continue with your trade mark application formally.
Continue reading this article below the formWhat Happens When You License Your Trade Mark?
If you allow another business or person to use your registered trade mark, you likely need to solidify the arrangement in a licensing agreement. In general terms, a licensing agreement is where two or more parties allow a business or individual to use someone else’s property.
When you authorise someone else to use your registered trade mark, you do not lose ownership. Instead, you may not be able to continue using your registered trade mark in the same way as before the licensing period.
The extent to which you can use your registered trade mark during the licencing period depends on the type of rights you confer to the other party. Overall, there are three main categories of rights. We explain these rights in the table below.
| Right | Explanation |
|---|---|
| Non-exclusive | Multiple parties can use your registered trade mark during the licensing period. |
| Exclusive | Only one party can use your registered trade mark during the licensing period. |
| Sole | Both you and another party can use your registered trade mark during the licensing period. |
How To License Your Trade Mark
Unlike trade mark registration, there is no rigid process for licensing a trade mark. Instead, you generally follow these steps:
- Negotiate with your licensee.
- Reach a mutual agreement about the licencing rights.
- Put the agreement into writing, making sure it covers important details such as the licensing period duration, what goods and services the licensee can use your trade mark for, any geographic limits, quality control clauses and licensing fees.
- Sign and exchange the agreement.
In most cases, it may be worth consulting a trade mark lawyer to help you with drafting the agreement. Since your trade mark is a valuable brand asset, it is important that you implement certain mechanisms to ensure the agreement runs as planned.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
Licensing is not the same as registering a trade mark. Trade mark registration is the process of applying for trade mark protection in Australia. If IP Australia accepts your trade mark application, you then obtain the exclusive right to use and authorise the use of your trade mark. Licensing refers to an agreement where you authorise another person or business to use your registered trade mark.
If you would like assistance with drafting a licensing agreement, contact our experienced trade mark lawyers 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
No. Trade mark registration is the process of applying for trade mark protection in Australia. On the other hand, licensing refers to an agreement where you authorise another person or business to use your registered trade mark.
To gain trade mark protection in Australia, you must apply to register your trade mark with IP Australia.
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