If you become aware of another person or business using your trade mark, you should consider taking action against them. Unauthorised use of a registered trade mark can confuse consumers and lead to you losing potential profits. However, if you are going to reach out to the infringing party, you should consider the risks of doing so. Trade mark disputes can be lengthy and costly, so ensure that you have considered all the possible risks involved. This article will explain the main risk associated with alleging trade mark infringement and what you can do to avoid it.
Unjustified Threats
You cannot allege trade mark infringement against a third party unless you have a formally registered trade mark. This applies even if you have been using the trade mark in the marketplace for a substantial amount of time.
If you allege infringement without a registered trade mark, you may have made an unjustified threat. This allows the other party to then take action against you.
How Do I Know If I Have a Registered Trade Mark?
Trade mark registration is a formal application process. There is a wide range of signs that you are able to trade mark, such as your business’s:
- logo;
- name;
- icon; or
- unique elements such as a sound or scent.
You must submit your application to register your trade mark with IP Australia, who will then assess whether your application is acceptable for registration. If IP Australia determines that there is a reason to object to your application, you will receive an adverse report and be given the opportunity to respond.
If your application receives an adverse report, it may still be possible to achieve registration. To do this, you should address IP Australia’s concerns with a substantial response. This can include:
- evidence of prior use;
- arguments against the examiner’s decision; or
- amendments to your application.
If you are able to achieve registration, then you will receive a certificate of registration as proof of your registered trade mark rights. These rights are valid for 10 years unless the registration is removed. To maintain your rights as a registered trade mark owner, you must renew your trade mark every 10 years.
Continue reading this article below the formWhat Are the Benefits of Registering a Trade Mark?
Beyond having the right to enforce your trade mark rights against third parties, there are several other advantages of registering a trade mark. We discuss these in more detail below.
The Right to Use the Trade Mark
As a business owner, you may have already registered your business or company name with the Australian Securities & Investments Commission (ASIC). However, this is not the same as a registered trade mark, and the two are completely different rights. A registered trade mark entitles you to be the sole user of a particular sign concerning certain goods and services included in the registration. Furthermore, it provides you with a defence against trade mark infringement if another party alleges that your trade mark is similar to their registered mark. Importantly, this is something to consider when starting a new business. You might want to time the registration of a business name with the filing of a trade mark so that you do not inadvertently find yourself infringing on another entity’s intellectual property (IP).
The Right to Authorise Use
As the owner of a registered trade mark, you can authorise other businesses or individuals to use it concerning the goods or services claimed. Generally, this is done through a licence, which authorises another entity or person to use your registered trade mark. This, however, does not mean you transfer ownership of your trade mark to them; you are simply giving them the right to use it within the bounds of your licensing agreement. The right to authorise use may be particularly crucial if you are a franchisor.
The Right to Take Action Against Alleged Infringement
Without a registered trade mark, you are limited in actions available to stop people from copying your sign or using marks very similar to your own. On the other hand, a registered trade mark gives you the legal right to prevent such confusing or deceptive conduct from occurring. Where infringement continues to occur, you will be able to take legal action against the other party.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
Your branding can be a highly valuable business asset, and thus, you should ensure it is properly protected through a trade mark. This includes alleging infringement and taking relevant steps if you believe that your trade mark is being copied or wrongfully emulated. However, you must ensure you are in a secure position to do so. Importantly, you can only allege trade mark infringement if you have a registered trade mark with IP Australia. Other benefits to registering include having the right to:
- use the mark freely;
- authorise others to use it through licensing; and
- take legal action against other parties infringing your trade mark.
If you would like assistance with alleging trade mark infringement, 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.
We appreciate your feedback – your submission has been successfully received.
