You’ve designed a strong trademark, conducted thorough searches of all of the appropriate registries, and successfully applied for registration: it’s now up to you to protect your company’s trademark from infringement or removal. Where do you start? What steps do you take to maintain your trademark’s unique identity?
Protect your Trademark
Now that you’re the owner of registered trademarks, you are granted the right to regulate the use of that mark in ways such as identifying your product with that mark, and promoting the goods and services under that mark. You have the power to either authorise or licence another company to use your mark, or you can take legal action against another business that replicates your mark without permission. You may also appeal to the Australian Customs Service to stop the importation of goods or services that would cause infringement to your company’s mark.
There are a number of ways to protect your marks now that it is registered: an experienced trademark professional can assist you in the matter of trademark law, should you require further information. The following article provides you with an overview of the matters of trademark law that concern you.
Display your rights as a registered trademark owner by using the ® symbol beside your mark whenever you use it. Using the ® symbol besides your trademark in place of the ™ symbol displays to your competitors that you are in a strong, defensible position to protect your mark against infringement.
Your trademark is personal, intellectual property, which means that it is your responsibility, rather than another party’s job, to protect it against removal or infringement. If another company uses your mark without explicit permission, chances are that they are infringing on your rights as a registered mark owner. Should you be aware of a possible infringement, you should seek legal advice from a professional, such as a trademark professional, to remedy the situation.
In Australia, your registered mark grants you rights to protect it within a specific region. There are other, complex applications that you must undergo should you want to be granted rights on a global scale. Because of this, protecting your trademark online can be a tricky business. If you market your goods and services online, you are not necessarily protected against another international company using your trademark to sell their own goods and services. Similarly, a company overseas with a confusingly similar mark to your own may choose to sue you for infringement in their own country.
There are a number of guidelines provided by the World Intellectual Property Organisation (WIPO), of which Australia is a member. As a trademark owner operating an online business, you should be aware of these guidelines. In addition, you should seek advice from a professional trademark professional in order to understand ways to minimise your own risk of infringement. Talk to your professional about the possibility of applying for an international registration.
Now that you are the owner of your own trademark, you should continue to monitor the old and the new trademarks circulating within your market. A good starting point is the database kept by IP Australia to keep an eye on the new trademark applications being lodged. You could also consider hiring someone to scan the database and monitor the market for you.
Prevent Your Trademark from Becoming Generic
The irony of a truly successful trademark is that it can be picked up by consumers and transformed into a generic term for specific products or services. When your trademark is used as a generic term, it ceases to be a trademark at all. Take preventative steps to ensure that your trademark is not confused with the name of your goods and services. In the worst case scenario, you may apply to the courts to have your registration cancelled. Talk to your trademark professional for advice on preventing your trademark from generic use.
Avoid Trademark Removal
Under Australian trademark law, your trademark can be removed from the register if it is left unused for a term of three years. Once your trademark is removed from the register, you no longer have the right to protect that mark.
Generally, your mark will be removed from the register due to another company’s application. Another party’s application for the removal of your mark from the register will be successful if:
- Your mark has been un-used for a period of three years
- You have not used your mark, or you have no further intention of use of the mark, at the time of which the application was filed
Other companies will apply to have your mark removed because it is preventing them from having their own mark registered, due to confusing similarity. You have the right to oppose this application: however, if you do not, your mark will be removed from the register.
Similarly, another company can apply to the courts to grant them a court order to have your mark removed from the register. Should this occur, it is still up to you to defend your mark against removal or cancellation. If you find that another company has filed either of these applications, you should seek advice from a trademark professional before you take any action. An experienced professional will be able to advise you on the next steps to defend your trademark.
In Australia, your trademark registration is not indefinite. You can lose your rights to your mark due to un-use, or if you forget to re-register your mark. You must renew your trademark registration every ten years should you wish to continue to have the rights to that mark.
Protecting your trademark against infringement can be a difficult process. There are certain basic steps you can take to prevent other companies from attempting to remove your mark from the register, or from your mark becoming a generic term: in other cases, it’s best to have the advice of a professional. Should you require further information about trademark protection, or if you require legal advice to protect or defend your mark, speak to your local, professional trademark professional.