Making the most of your registered trade mark

Registration of a trade mark provides optimal protection for a business brand or name, and gives rights in a trade mark that can only be enjoyed by registered trade mark holders.

If you are the owner of a registered trade mark, you have the exclusive right to use that trade mark in Australia for the goods and services for which it is registered, and can take action against anyone infringing that right.

It is important to note that a trade mark is a personal property right and it is your responsibility to protect it. Therefore, to receive the maximum benefits from your trade mark registration, you should be aware of the following:

  • You must use your trade mark upon registration. A trade mark will be at risk of removal from the Register after three years if it has not been in use for that period of time and will lose all rights and protections associated with that registration.
  • Use the ® symbol to display your rights. If you have trade marked a logo or name that is displayed publicly, you should use the ® symbol next to your trade mark to allow others to know that you have protected your rights in that mark.
  • Your trade mark registration is valid in Australia only. Each country has its own system of trade mark registration and protection, meaning an Australian trade mark registration will not give you global protection. If you require protection in other countries, we can assist you with the filing of multiple or single country applications.
  • You should monitor new and existing trade marks in your industry. IP Australia conducts conflict checks between trade marks during the examination process of new trade marks; however we recommend that you undertake your own monitoring of any new or existing trade marks that may potentially conflict with your own. You can do this by checking IP Australia’s free online database, or we can for arrange for a ‘watching service’ to be set up on your behalf.
  • You can take action against owners of trade marks infringing your rights. If you believe that a new trade mark is infringing upon your rights, you can lodge an opposition action with IP Australia within three months of the ‘infringing’ trade mark’s application being accepted by IP Australia. We can assist you with the preparation and lodging of the necessary documents.
  • Your trade mark registration requires renewal every ten years. Trade mark owners have the option of renewing their trade mark every ten years if their trade mark is in active use. IP Australia will send out a reminder notice regarding renewal however it is your responsibility to ensure that renewal occurs.
  • Be wary of unsolicited correspondence. As a registered trade mark owner, you may receive unsolicited correspondence from companies offering to renew your trade mark or oppose conflicting marks. Please read your mail carefully and contact us if you have any concerns about correspondence relating to your trade mark.
  • Keep your contact details up to date. IP Australia will issue various information and updates to you regarding your trade mark during the life of its registration. It is important that you inform us of any changes to your contact details so that your information is kept up to date on the IP Australia Register.

For more information on maintaining and protecting your trade mark registration, contact Certus Legal Group.