Maintaining your Trade Mark Application

Being able to readily enforce rights in a brand against an infringing competitor is one of the key benefits of owning a registered trade mark. A trade mark registration can also act as a deterrent to competitors considering copying your trade mark and benefiting from the reputation you have built under the mark. However, to ensure that this benefit can only be fully exercised the trade mark owner must ensure that they are engaging in proper trade mark maintenance.

Ways of ensuring trade mark rights and validity

1. Monitor new trade mark applications lodged with IP Australia to identify new marks that appear to be similar to your trade mark. Contact an attorney to consider filing an opposition to the registration of an accepted trade mark that you are concerned about.
2. Use the trade mark in relation to the classes of goods and services indicated in the registration. Failure to do so may open an avenue for another party to file for removal for non-use. A trade mark that has been registered for five years and which has not been used for a continuous period of three years is vulnerable to a non-use attack. Defensive trade marks are exempt from disputes due to non-use. Check in with your IP attorney to ensure that amendments or additions to your branding will not impact your valid use of your trade mark as filed.
3. Conduct monitoring searches to identify if any third party in the market may be infringing upon or diluting your trade mark. IP Australia is tasked with rejecting deceptively similar trade marks for the same or similar goods and services, they are not charged with the responsibility of monitoring brand usage for infringing activity. This is the responsibility of the trade mark owner. It is therefore important to keep an eye out for infringing activities such as unauthorized use of your trade mark and other branding. There are several ways to assert your trade mark rights to ensure against the dilution of your brand and the sale of counterfeit goods, in the latter case a registered mark can be used to prompt the seizure of goods arriving through Australian customs.
4. Have your trade mark amended to exclude classes for which the trade mark is not used. To avoid non-use actions in relation to goods and services that you are not using your trade mark for, but which were included in the trade mark upon registration, it is possible to reduce or limit your trade mark’s goods and services. While items can be removed or restricted, new classes or items of goods and services cannot be added to a trade mark once the application has been filed. In addition, update information in the case of changes in the name and address of the applicant, address in service, agent, and other contact details.
5. Apply for international protection if you intend for the business to expand to other countries such as, for example, through distribution, licensing or manufacture. An Australian registered trade mark does not provide protection outside of Australia, and there are no provisions for a universal trade mark registration covering all nations.

   A trade mark may be registered in foreign jurisdictions by filing individual applications in different countries or through the Madrid Protocol system which is a centralised filing system for foreign trade marks.

6. Maintain the trade mark and be aware of important dates. Theoretically, trade mark registration can last in perpetuity, provided that renewal fees are paid every 10 years and the trade mark continues to be distinctive and used commercially as a trade mark. Renewal fees can be paid from 12 months before the renewal deadline and up to 6 months after the renewal deadline in Australia. However, additional fees will be incurred when the renewal fee is paid after the set renewal date.