Brand managers need to monitor the use of their trademarks. It is very common for trademark owners to let their guard down when it comes to protecting their trademarks from applications that are confusingly similar or just too close for comfort. Vigilance is important for any trademark owner whose aim is brand protection. Speak with an IP solicitor or trademark attorney about the process and benefits of trademark registration.

Many hands make light work

The ‘fingers-crossed’ approach to protecting your trademark is naive and ineffective and does nothing to protect your brand. Like most successful business practices, brand protection requires time and effort, and sometimes the advice of an IP lawyer. Instead of trusting that other businesses will not infringe your trademark (because they very well may), implement a strategy in the workplace that encourages employees to be on the lookout for suspiciously similar business logos/names, and reward those who snuff out the copycats.

Changes in the law of Trademarks

In 2012 Australia introduced the Intellectual Property (Raising the Bar) Act (Cth). The following year the Intellectual Property Legislation Amendment (Raising the Bar) Regulations were introduced, forcing trademark owners to be more vigilant in lodging oppositions to controversial and conflicting trademark applications. The time frame for challenging these applications was reduced from three months to two months for applications lodged after 15 April 2013. These changes to Australia’s Intellectual Property laws reveal the importance of proactive brand security. Have your IP lawyer keep you informed about any changes to the law of trademarks.

How do you oppose a trademark application?

In Australia, to have a trademark application approved, you must pass the first stage of examination. Once IP Australia has approved your application it will be made public so that other trademark owners can oppose the application. Provided your challenge to an application is based on reasonable grounds that you can support with evidence, you may prevent the application from being approved and maintain the originality of your trademark.

An application can be challenged on several important grounds. These include:

  • Resemblance to a prior approved application or a prior application awaiting approval;
  • The likelihood of confusion to arise between one business and another;
  • The applicant not truly owning the mark (i.e. stealing it from another person or business); or
  • The mark, for some reason or another, being contrary to the law.

Raising the Bar Amendments

The “Raising the Bar” legislative amendments have not only limited the opportunity for challenging a trademark application; they have also limited the grounds for applying to extend the two-month period of time when you fail to oppose.

‘Error’ or ‘omissions’ are now the only bases for which a time-extension to lodge a Notice of Opposition will be granted. This must be in circumstances outside the control of the person challenging the application. The same rule applies if the error or omission is caused by the Trade Marks Registrar, or, alternatively, an agent or employee of the person challenging the trademark application. As a result of these changes, the burden on brand managers to stay up to date with similar, pending trademark applications is now more onerous. This means that businesses and other trademark owners should have in place certain practices to enable effective monitoring of up-and-coming trademarks.

Some useful tips

Some companies allocate part of their budget to protecting their brand by using a law firm that specialises in monitoring the trademarks of a business. LegalVision offers a service that is both affordable and highly efficient, and goes towards strengthening your brand management objectives. Not only will a good trademark lawyer save you time in the long run, but you’ll also be in an ideal position for regulating the use of your valuable trademarks.

Remember, brand managers and trademark owners alike have to constantly police the use of their trademarks. Unfortunately for trademark owners in Australia, they are not alerted when an application for a similar trademark is made. If you’re serious about protecting your brand, you should consider speaking with an IP lawyer that specialises in monitoring your business’ trademarks. LegalVision has a team of trademark specialists with a wealth of experience dealing with small and large businesses.

Unless you think you can monitor every trademark application that is similar to yours, and respond to any applications you feel infringe on your brand’s integrity, using a law firm like LegalVision – that offers trademark protection services – places your business in an advantageous and informed position regarding the security of your brand identity.

Conclusion

If you, or someone you know, have come across a trademark, pending or otherwise, that you believe infringes on your exclusive IP rights, contact LegalVision on 1300 544 755 and speak to one of our IP lawyers to gain a better understanding of your rights and options.

Lachlan McKnight

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