'How Do I Enforce and Manage My Trade Marks?' by Akshaya Sivakumar, LegalVision
As a trade mark owner, you may be wondering the next steps for actively protecting your trade mark. Upon registering your trade mark, a crucial maintenance aspect is to enforce your trade mark in the marketplace. By enforcing your trade mark, you maintain the reputation and value of the trade mark while navigating any infringement issues. This article will briefly outline ways to enforce and manage your trade marks after registering it.
What is Trade Mark Enforcement?
A registered Australian trade mark grants you exclusive rights to use, licence and sell the trade mark in Australia. A trade mark registered overseas is enforceable separately from your domestic trade mark, so it is important to note the difference.
If you notice a third party using your registered trade mark without your permission, actions are available to stop this infringement. A registered trade mark will confer you with a strong position to take appropriate action against the infringing third party. An unregistered trade mark may not confer a strong position.
Trade mark enforcement (and taking the appropriate steps to stop any infringement) is the trade mark owner’s responsibility. Although IP Australia largely regulates trade marks, you will be responsible for enforcing your trade mark. IP Australia will not take any action on trade mark owners’ behalf. Still, they may issue decisions concerning matters brought before them (such as an opposition to registering a trade mark).
Actions You Can Take to Enforce Your Trade Mark
An effective enforcement strategy could involve the following:
- actively use your trade mark as filed;
- develop a plan of action with a lawyer or trade mark attorney. Discuss various options for commencing formal legal proceedings or resolving any issues outside of legal proceedings;
- instruct a lawyer or trade mark attorney to monitor the marketplace and check periodically for any potential infringement issues on your behalf;
- keep records of all the trade marks you have registered;
- be aware of where you have licensed your trade mark and how this has been managed by you or by a third party;
- use the ‘R’ symbol next to your registered trade mark to notify others that you have a registered trade mark; and
- keep an eye on any major competitors to your business, and monitor their actions.
While considering your own rights, it is also necessary to consider other owners of registered trade marks. If you are trading without a registered trade mark, it is important to ensure that you are not infringing on a registered trade mark. If you are unclear about whether you are infringing on a trade mark, seeking legal advice would be prudent.
Renewing Your Trade Mark
Another vital aspect of managing trade marks is the trade mark renewal process. You may renew a trade mark every ten years if it is still being used concerning the goods/services as filed. There is no limit to the number of times you may renew a trade mark registration in each ten-year increment.
Renewing your registered trade mark ensures ongoing protection and grounds to pursue enforcement actions. If you find that the scope of your use of the trade mark has reduced, and not all the classes of protection claimed in the trade mark application are relevant, you may delete the classes that are no longer relevant. If you intend to delete classes of goods/services from your registration, you must request this with IP Australia or your legal representative at least three weeks before the due date for renewal.
It is important to maintain your trade mark in classes of protection that you are actively continuing to trade. If you are not using the trade mark as filed, a third party may apply to remove your trade mark from the register based on non-use. For further information about using your trade mark effectively, contact a lawyer or trade mark attorney.
If you encounter any delays with renewing your trade mark registration, a six month grace period will apply after the expiry date. During this grace period, you may still renew your trade mark registration for a further ten years by paying the renewal fee plus any applicable extension fees. If the grace period has passed without the renewal fees being paid, your trade mark will formally lapse. Then, you will no longer have a registered trade mark.
Enforcing your registered trade mark is the necessary, active step to take once you have a registered trade mark. There are several ways of doing so, as detailed above. First and foremost is using your trade mark as filed. If you notice any infringement of your trade mark occurring in the marketplace, speak to a lawyer or trade mark attorney about your options.
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Original blog by Akshaya Sivakumar, LegalVision.