Can I Use My Trade Mark Whilst My Application Is Pending?

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Table of Contents

• Risks Involved
• Some Points to Consider
• Key Takeaways
• Frequently Asked Questions

The trade mark registration process can take several months, so you may wish to use your trade mark while your application is still pending. However, if you do so, trade mark protection will not be available to you during this time. Suppose someone uses a similar or identical trade mark concerning similar goods and services your business offers. In that case, you will not have the right to pursue action for trade mark infringement if your application is pending. Therefore, this article will explore the risks you can encounter if you use a trade mark with a pending application.

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Risks Involved

There are some risks you should be aware of when using your trade mark while your application is pending.

You Cannot Prevent Others From Using A Similar or Identical Trade Mark

The safest time to use your trade mark is when IP Australia has registered it. This is because once IP Australia accepts and registers your application, you can enjoy certain legal protections under the Trade Marks Act 1995. Namely, you can pursue legal action if someone commits trade mark infringement.

However, if your application is pending, you will be unable to prevent others from using a similar or identical trade mark during this time. Only if IP Australia eventually register your trade mark will you be able to begin the process of enforcing your rights. This is because trade mark protection usually begins from the date of registration, which can also be the filing date of your application.

You Could Be Committing Trade Mark Infringement

Before you register your trade mark, you are at a higher risk of committing trade mark infringement. This is partly because IP Australia has yet to determine whether your trade mark is substantially identical or deceptively similar to an existing trade mark on the register.

A trade mark owner that is diligent about protecting their intellectual property may send you a letter of demand if they believe your use of the trade mark constitutes infringement. This can place unnecessary stress and potential expenses you could avoid if you waited to use your trade mark until after IP Australia registered it.

Some Points to Consider

So, you can use your unregistered trade mark during trade. However, there are some points to keep in mind when doing so.

Use the ‘™’ symbol

If you use an unregistered trade mark for marketing your business’ product or service, you may want to use the ‘™’ symbol. The ‘™’ symbol notifies the public that you intend to protect your distinctive trade mark. While it may not be a full-proof method for preventing all uses of your trade mark, it can deter other businesses from copying or misusing your trade mark while your application is pending.

Registration is Not Guaranteed

Trade mark registration is not guaranteed once you apply. IP Australia must first examine your application and determine whether it meets the legislative requirements for a registered trade mark. You might receive an adverse examination report if your application does not meet these requirements.

IP Australia might issue you with an adverse examination report because:

• your trade mark is similar or identical to an existing trade mark;
• your trade mark merely describes your business’s goods and services;
• the wording of the goods or services within the classes you selected was incorrect, vague or too broad; or
• your ownership details were incorrect or poorly worded.

If you receive such a report, you must respond within 15 months from the date you receive the report to address any problems with your trade mark application. The evidence you should provide in response to an adverse examination report will depend on the examiner’s reasons. 

Key Takeaways

The safest time to use your trade mark is when IP Australia has registered it. You can use a trade mark when your application is pending. However, you will not be able to prevent others from using a similar or identical trade mark concerning similar products and services. If you decide to use your trade mark pending registration, you should:

• use the ™ symbol to deter others from copying or misusing your trade mark; and
• respond promptly to any adverse examination report IP Australia might send you.

If you have further questions about your trade mark application, our experienced trade mark lawyers can assist 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