How Do I Complete a Trade Mark Audit?

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Table of Contents

• Defining a Trade Mark Audit
• 1. Review Your Registered Trade Marks
• 2. Check all the Goods and Services Listed in Your Trade Mark Registrations
• 3. Review Your Business’ Advertising and Marketing Materials 
• 4. Determine International Trade Mark Applications
• 5. Consider Trade Mark Portfolio Management
• Key Takeaways 

Trade marks are valuable business assets. They may be intangible property, but like other assets, they have a monetary value that contributes to how much your overall business is worth. Additionally, your business development and marketing pursuits can heavily affect your trade mark’s value. Just like you may already do with your business’ real estate or equipment, you should maintain up-to-date records of your trade marks and be aware of the state of your trade mark portfolio. This article will explain how you can do this through a trade mark audit. 

Defining a Trade Mark Audit

A trade mark audit is when you conduct an official inspection of your business to identify and catalogue your trade marks. This is important in ensuring that all your trade mark registrations are current and adequately cover all your business’ goods and services.

1. Review Your Registered Trade Marks

The first step is to tabulate of all your registered and pending trade marks. For each mark, the table should include: 

• trade mark registration numbers; 
• representation of the trade mark; 
• the classes and goods and services in which the trade marks are registered or applied for; and 
• the current status and renewal dates.

If any of your trade marks have expired, find out if there is a grace period and if you can still renew them. 

In Australia, you can renew a trade mark up to six months after its expiration by paying renewal and late fees. To avoid paying these fees, diarise the renewal due dates. Check the ownership details listed on your registrations. If these details, such as your business name or address, are not current, you should update them. This ensures that  IP Australia or your trade mark lawyer can contact you for any correspondence about your trade marks.

2. Check all the Goods and Services Listed in Your Trade Mark Registrations

Your trade mark only protects the branding for its registered types of goods or services, also known as classes. Thus, when conducting an audit, you should check that you are not providing any goods and services not covered in your registrations. If you are, consider applying for your business’ trade mark in respect of additional goods and services.

If you want to add more classes to your trade mark registration, you will need to file a new trade mark application. This will act as an entirely new trade mark, meaning it will have its own filing date and unique trade mark number. 

3. Review Your Business’ Advertising and Marketing Materials 

Go through your business’s advertising and marketing materials, such as the website, stationery, and your goods and services inventory. The review should cover all materials that use trade marks, such as packaging, websites, social media, and advertising. If you have since rebranded your business, consider obtaining trade mark registrations for your new and re-branded trade marks. A trade mark registration for an old logo may not adequately cover you for the re-branded version. Inconsistent mark use can weaken a brand and leave it open to challenge, so getting this right is essential.

Call-out box: Do you own or are you using any trade marks that you have not registered? Have you recently re-branded an old trade mark? 

4. Determine International Trade Mark Applications

Consider if you need to apply for your trade mark in other countries. You may or may not know that there is no such thing as an international trade mark registration. Trade mark rights are administered and enforced according to each country’s trade mark laws. A trade mark registration in Australia then only affords you trade mark protection in Australia. The most popular countries where Australian trade mark owners seek trade mark protection include New Zealand, the United States of America, China, the United Kingdom and a community trade mark for European Union countries.

5. Consider Trade Mark Portfolio Management

If you have more than five registered trade marks in more than one location, maintaining and enforcing them may be a complex process. As a result, it may be worthwhile engaging a trade mark professional to manage your trade mark portfolio. Doing so will ensure that your trade mark portfolio is always in order so you can focus on business development and day-to-day business operations.

Trade Mark Essentials

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

Download Now

Key Takeaways 

Conducting a trade mark audit is a chance to streamline your portfolio. It helps you ensure all of your trade marks are valid whilst allowing you to remove unused or irrelevant marks to avoid trade mark sprawl and unnecessary administration. In summary, the goals of a trade mark audit are to:

• ensure proper utilisation of trade marks by the business in all relevant classes and jurisdictions;
• adequately protect trade marks to mitigate risks of challenge, infringement, or cancellation;
• conduct thorough checks to identify and address any gaps that may expose you to unnecessary risks;
• verify records in the trade mark portfolio management system for accuracy and completeness;
• confirm that the information stored accurately reflects the actual assets of the business; and
• address any errors or omissions in the trade mark records to maintain integrity and reliability.

If you have questions about auditing your trade marks, 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.