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.