One Federal Court decision clarifies what is considered as “authorised use” of a trade mark wherein the trade mark user is not the trade mark owner but a subsidiary of the owner’s company.
Maintaining, amending and renewing your trade mark
Maintaining a trade mark
Being able to readily enforce rights in a brand against an infringing competitor is one of the major benefits of registering a trade mark. A registered trade mark can also act as a deterrent to competitors considering copying your trade mark and so, benefiting from the reputation in your trade mark. However, this benefit can only be maximised if the trade mark owner exercises proper trade mark maintenance.
You can conduct several activities to properly maintain your trade mark as outlined below:
- Monitor new trade mark applications lodged with IP Australia to identify new marks that appear similar to your trade mark. Contact an attorney to potentially file an opposition to the registration of an accepted trade mark that you are concerned about.
- 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.
- Conduct monitoring searches to identify if any third party in the market may be infringing upon or diluting your trade mark. IP Australia is not responsible for monitoring infringing activity; the trade mark owner is. Know the movement of your competitors and beware of counterfeiters and competitor action that may dilute or tarnish the value of your trade mark. Understand the types of relief available to trade mark owners against these parties, for example seizure of goods upon arrival in Australia or other injunctive relief.
- Have your trade mark amended to exclude classes for which the trade mark is not used. New classes of goods and services cannot be added after the trade mark has been registered. 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.
- 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 in any jurisdiction other than Australia, and there are no provisions for a universal trade mark registration. The 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.
- Maintain the trade mark and be aware of important dates. Trade mark registration is virtually interminable, provided that renewal fees are paid every 10 years and the trade mark continues to be 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 renewal date.
Amending a trade mark
A trade mark owner can request to have several details of their trade mark amended at any point after filing the trade mark application. Trade marks can be amended before or after registration, but only under certain conditions. Amendments that can be rectified over a phone call includes minor spelling errors, revisions of convention application numbers with respect to a priority claim and clerical errors in the address for service. Other more complicated revisions have to be done in writing through the online services section of IP Australia. Examples of these revisions include changes in the owner’s names and details, changes in the representation of the trade mark, deletion of classes of goods and services, addition or changing endorsements, as well as non-english and non-Roman translation endorsements.
Amendment of trade mark application prior to registration
Changes can be made to the application as long as the amendment would not bestow extended rights and coverage if granted. It is possible for the particulars of an application to be amended before the application is published, but these are extremely limited and may apply only very specific situations.
Once the mark has been published, changes that can be made include:
- changes to the name and address of the applicant;
- changes to the address for service;
- changes to the representation of the mark;
- one or more trade marks from the application may be removed (in the case of a “series” application);
- classes of goods and services may be corrected; and/or
- adding or changing endorsements.
Amendments after registration
Once a mark has been registered, the Trade Marks office will allow amendments of the following nature only:
- correcting an office error;
- revisions in the registered mark (as long as the identity of the trade mark as published is unchanged);
- changes in the trade mark owner’s details; and/or
- changes in the address for service
In general, amendments need to be considered by the Registrar and will be granted if the Registrar considers the request is fair and reasonable and does not affect other people’s rights. Thus, classes of goods and services cannot be added, as this would grant the trade mark applicant extended rights. In addition, certain amendments may have to be advertised in the Australian Official Journal of Trade marks so that any third party can oppose the amendment in case the proposed revisions to the trade mark are in conflict with their own intellectual property rights.
Amendments prior to renewal
Prior to renewal, the trade mark registration can be amended. For example, the name(s) and/or address(es) of the applicant may change. Appropriate assignments of rights must be in place. You may also decide to reduce the number of classes of goods and services in the registration in order to avoid non-use disputes. Reducing the number of classes will also decrease trade mark renewal costs, which depend on the number of classes specified on the registration. Your trade mark attorney can file any permissible amendments through IP Australia.
Renewing a trade mark
After registration, a registered trade mark is in force for 10 years. At the 10 year mark, the trade mark owner can then opt to keep the trade mark active by paying the appropriate renewal fees. The trade mark renewal can be done every 10 years from the date of filing, indefinitely so long as the trade mark continues to be used as a trade mark.
When can the registration be renewed?
Renewal of trade mark registration can be conducted as early as 12 months before the renewal due date. You can still renew up to six months past the trade mark renewal date in Australia. However, additional fees for extension will be added to the renewal fees. Your trade mark attorney can help prevent any additional fees being incurred or lapsing of the registration by sending you timely reminders before a renewal is due.
After payment of the appropriate renewal fees, your trade mark attorney will notify you that the trade mark registration has been successfully renewed.
Consequences of non-renewal
Failure to renew a trade mark by the expiry date means that the trade mark will lose any rights and will be labeled lapsed. However, registration can be renewed within a six-month period after the renewal date. When this period has elapsed, the trade mark will be deleted from the Australian Trade Marks Register. Unless you can successfully get an extension of time, you may need to lodge a new application for the trade mark. Your trade mark attorney can advise you of your options should you miss a renewal deadline.
If your business has been actively gaining goodwill associated with the trade mark, a lapsed trade mark opens up a window for opportunistic trade mark filings by any competitors for a similar or identical trade mark in respect of the same goods and classes. Therefore, it is in your best interest to stay informed of the important dates in your trade mark’s timeline and to keep your registration up to date. The trade mark attorneys at Baxter IP will be able to help you manage your trade mark registration.