So, Intellectual Property (IP) Australia approved your application for a trade mark. Congratulations! It is not always the case that an application will be successful, so you are well on your way to preventing your competitors from using your design. There are, however, a few steps you should remember to ensure that your trade mark remains protected. After all, as the trade mark’s owner, you have the responsibility to protect your intellectual property from infringement.

Let People Know You Own the Trade Mark

A registered trade mark authorises you with the right to use the ® symbol in all of your material. You are more likely to prevent competitors copying or imitating your business name or logo by showing that you are its owner. Legal documents, although uncommonly used, can help in highlighting your ownership. For example, if you trade online, it is quite common to have a Website Terms of Use that outlines your ownership of intellectual property, including a trade mark. You may also want to include details of your ownership of a trade mark in e-mail disclaimers or client contracts.

Stay Up-to-Date with Registrations

As you may already know, IP Australia publicises proposed trade marks. Once a trade mark applicant receives approval, it will appear in the Australian Official Journal of Trade Marks. You can take advantage of this Journal by regularly checking the proposed designs. By keeping yourself informed, you will be able to lodge formal objections when you believe an application may infringe your rights.

Use It

A trade mark may be in jeopardy if it is unused for a period of three or more years. Non-use is a possible cause for another party to request for IP Australia to remove your mark. If another party makes an application to remove yours based on non-use, you will need to oppose the application to prevent removal.

Renew It

The rights you have received for your initial application are valid for a period of 10 years. What this means is that for you to maintain your registration, you need to be aware of when it will expire and to subsequently renew your application in a timely manner.

Update It

If your business activity changes or if you expand your business activity to other areas, you may consider whether or not your registration will still provide you with sufficient protection. For example, you may decide to manufacture another range of goods that falls outside of the original class of goods that you registered for. It is sensible to consider then expanding the classes for which you receive protection.

Conclusion

Although you have been successful in your application, it is your responsibility to ensure that your trade mark remains active and to prevent infringement. If you have maintained these steps and do still find that another party is using your trade mark, contact one of our specialist trade mark lawyers on 1300 544 755. We would be pleased to help and talk you through what options are available to you to protect and enforce your rights.

Kristine Biason

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