Protecting My Trade Mark with Third-Party Packaging Suppliers

In Short

• Register Your Trade Marks – Ensure your trade marks are registered to secure exclusive legal rights and make enforcement against misuse easier.
• Use Contracts to Protect Your Brand – Agreements with packaging suppliers should include licensing terms, quality control measures, approval processes, and confidentiality clauses.
• Implement Internal Procedures – Establish brand guidelines, review processes, and supplier audits to maintain consistency and prevent trade mark misuse.

Tips for Businesses
When outsourcing packaging, protect your trade mark with clear contracts and internal controls. Ensure suppliers follow brand guidelines, approve designs before production, and conduct regular audits to prevent misuse. Registering your trade mark strengthens your legal position and makes it easier to enforce your rights if issues arise.

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Table of Contents

• What Is a Trade Mark?
• Trade Mark Control
• Key Strategies
• Key Takeaways
• Frequently Asked Questions

Your trade mark is one of your most valuable business assets. It distinguishes your products from your competitors while building your brand’s reputation. However, when packaging production is outsourced to third-party suppliers, maintaining control over your trade mark can become challenging. This article explores strategies for protecting your trade mark when working with external packaging suppliers. 

Trade Mark Essentials

This guide explains the essentials of trade marks and the steps required to register a trade mark.

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What Is a Trade Mark?

A trade mark is a form of intellectual property that distinguishes your goods and services from your competitors. It can be a word, logo, slogan, sound, or colour that identifies your brand or product.

Trade marks are a badge of origin, allowing consumers to quickly recognise and associate any packaging displaying your marks with your brand. While trade marks can be unregistered, a registered trade mark gives you exclusive legal rights to use that mark with your goods and services. This prevents competitors from using the same or a deceptively similar mark that could mislead potential customers.

Trade Mark Control

Trade mark control refers to your ability to maintain the quality, consistency, and proper use of your trade mark. This includes when it is used by third parties. This control is crucial for preserving your brand’s integrity and protecting your legal rights as a trade mark owner.

For example, when third parties supply packaging bearing your trade marks, effective control measures will help to ensure correct and consistent use. This prevents damage to your brand’s reputation or consumer confusion.

Key Strategies

The key strategies for controlling your trade mark when third parties supply packaging are:

1. Register your trade marks.
2. Establish clear and effective contractual agreements.
3. Develop internal procedures.

Trade Mark Registration

The first step in effectively controlling your trade mark when working with third-party packaging suppliers is to ensure your trade marks are registered. In Australia, trade marks are registered through IP Australia, the government body responsible for administering intellectual property rights.

A registered trade mark gives you the exclusive legal right to use your mark on specific goods and services, preventing competitors from using identical or deceptively similar branding. Though trade marks can be used unregistered, defending an unregistered trade mark can be a lengthy and costly process.

Consider registering any branding that may appear on your packaging, such as your:

• business name;
• logo;
• slogan; and
• names of products of services.

Contractual Agreements

When engaging third party packaging suppliers, it is crucial to have robust contracts in place that protect the use of your trade marks.

Six key elements to include in your agreements are:

1. Licensing terms: Specify which trade marks the supplier can use and how they should be used when producing your packaging.
2. Quality control measures: Outline your requirements for the standards of the packaging produced to maintain brand consistency.
3. Approval processes: Establish a procedure for reviewing and approving packaging designs and use of the trade marks before production.
4. Confidentiality clauses: Protect your trade secrets and prevent any unauthorised disclosures of your brand elements.
5. Termination rights: Allow for contract termination if the supplier misuses your trade marks.
6. Ownership clauses: Ensure that you retain all rights to your trade marks and intellectual property.

Internal Procedures

Developing and implementing strong internal procedures can also be crucial for maintaining control over your trade marks when working with third-party packaging suppliers.

Three key elements of effective internal procedures include:

1. Brand guidelines: Develop guidelines detailing how your trade marks should be used on packaging.
2. Review process: Establish a system for regularly reviewing packaging samples to ensure compliance.
3. Supplier audits: Conduct periodic audits of your packaging suppliers to ensure your trade marks are being used appropriately.

Implementing these internal procedures can help you better control your trademarks and reduce the risk of misuse when working with third-party packaging suppliers. This will ensure consistency in your packaging and safeguard your brand’s reputation in the marketplace.

Key Takeaways

Controlling your trade marks when using third-party packaging suppliers is crucial for maintaining your brand’s integrity and protecting your intellectual property rights. By registering your trade marks, establishing clear contractual agreements with your suppliers, and developing robust internal procedures, you can effectively manage your trade marks and reduce the risk of misuse or infringement.

If you need assistance with registering your trade marks or drafting supplier agreements, our experienced IP lawyers can assist as part of our LegalVision membership. You will have unlimited access to lawyers to answer your questions and draft and review your documents for a low monthly fee. Call us today on 1300 544 755 or visit our membership page. 

Frequently Asked Questions

Do I need to register my trade mark before working with packaging suppliers?

While not mandatory, registering your trade mark provides the strongest protection and makes it easier to control its use by third parties. Registration gives you exclusive rights and simplifies enforcement if misuse occurs.

What should I do if I discover a packaging supplier is misusing my trade mark?

If you discover misuse by a third party, document all instances of misuse and seek legal advice on potential courses of action.