FOR IP PROFESSIONALS

Protecting your trade mark

Once you have successfully registered your trade mark, it is your responsibility to protect it from infringement or removal.

As the owner of a registered trade mark you have the exclusive right in Australia to control the use of your trade mark by identifying and promoting the goods and services for which it is registered only.  You can authorise or licence someone else to use it or you can take action against someone who copies your trade mark.  You can also apply to the Australian Customs Service to prevent importation of goods which would infringe your trade mark.

Display your rights

Show your customers and your competitors that you are a smart operator by using the ® symbol next to your trade mark whenever it is used.

Infringement

A trade mark is a personal property right which means it is your responsibility to take action to protect it. If someone uses your trade mark without your permission, they may be infringing your trade mark rights and you should seek legal advice as soon as possible. We cannot provide you with legal advice. We grant trade mark rights but do not police or enforce those rights.

Infringement of trade marks on the internet

When you trade over the internet, you are entering a global marketplace. There is no such thing as a 'world' trade mark. Registration of a trade mark in Australia does not give you any rights in relation to that trade mark overseas. If you offer goods or services for sale on the internet, you could be sued for infringement in a country where someone else owns the trade mark.

Australia is a member of the World Intellectual Property Organization (WIPO) which establishes guidelines to protect trade mark owners who trade over the internet.

Be aware of the potential risks you face when trading over the internet. You should seek legal advice on the best ways you can avoid or minimise those risks. Most importantly, you should seek legal advice if you receive notice from an overseas trade mark owner alleging that you are infringing their trade mark via the internet.

Trade mark owners contemplating trading over the internet should consider applying for international trade marks.

Monitor the market

You should make sure you are aware of new and existing trade marks being used in your industry. You can start by checking our freely available online database for new trade marks being lodged. There are also some 'watching services' offered by IP professionals who will scan the database and the market for you.

Be opposition savvy

Conflicts between trade marks are usually discovered by us during examination. You are entitled to oppose the acceptance of another trade mark that you think infringes upon yours. There is a two month period after the acceptance of a new trade mark application in which you can lodge official opposition action. For more information see Opposing a trade mark Accepted for Registration.

Generic use

Once registered, you need to ensure that your trade mark continues to be regarded as a trade mark. If your trade mark becomes known as the generic name for your goods or services and ceases to be recognised as a trade mark, an application to the courts to have the registration cancelled may be successful.

Many words have started out as trade marks and passed into common language, for example the word 'windsurfer' describes a type of water craft.

Use it or lose it

If a registered trade mark is unused for three years it can be removed from the Register. This will mean you could lose your right to that trade mark.

Removal of trade mark from the register for non-use

A person can apply to have your trade mark removed from the register. Such applications can be made if you have not used your trade mark for a period of three years or if you have not used your trade mark and you had no intention of using the trade mark when the application was filed. The person applying for removal is often a trade mark applicant whose registration is being hindered by your registered trade mark. If you do not oppose the removal action, your trade mark will be removed. For more information see non-use of a trade mark.

Court action

Another person can apply directly to a court for a court order to remove or cancel your trade mark registration. It is your responsibility to defend and protect your trade mark.

Objecting to importation of goods

You can object to the importation of goods that infringe your registered trade mark by giving notice to the Australian Customs Service.

Make sure you renew

Provided your trade mark is in active use, your registration may continue indefinitely as long as you renew it every ten years.

Keep us informed

It is important that you keep us up to date with any changes to your address or other details otherwise you may not receive further correspondence from us - such as your renewal reminder notice.

Warning - unofficial register/services

Be aware of unofficial registers or services. For more information see unsolicited IP services.

As a trade mark owner you may receive correspondence from companies that offer, for a fee, to register your trade mark information for the implied purpose of protecting trade mark rights. These companies are not associated with us and have no official or governmental authority. The service they offer does not provide official trade mark registration or trade mark rights in Australia or any other country.

These companies send documents resembling invoices to trade mark owners that offer 'entry' of trade mark details in an annual publication. They are usually sent after the trade mark details have been advertised in the Australian Official Journal. 

Reports or letters originating from us will feature the Commonwealth Coat of Arms and/or IP Australia's letterhead.

Therefore before paying a fee for any IP related service, please be sure to check the bona fides of the service provider and what, if any, protection or value the service will provide.

Some of these companies identify themselves as:

  • Globus Edition SL, Palma de Mallorca, Spain
  • Company for Economic Publications Ltd, Vienna, Austria
  • IT & TAG, Switzerland
  • Company for Publications and Information Anstalt, Liechtenstein
  • INFOCOM, Schaan, Switzerland
  • Edition The Marks KFT
  • International Bureau for Federated Trademark & Patent Register
  • Gaia Almanach LTD
  • Commercial Centre for Industry and Trade, Switzerland
  • European Institute for Economy and Commerce EIEC, Belgium
  • Institute of Commerce, Trade and Commerce, Switzerland
  • TM Collection, Hungary
  • ZDR - Daten register GmbH, Germany
  • Register of International Patents and Trademarks (RIPT)

Assignment of trade marks

Ownership of an application or registered trade mark can be transferred by assignment. If a trade mark is assigned, then the person registered as the owner, or the person to whom the trade mark has been assigned, applies to the registrar for the assignment to be recorded on the register.

The assignment is effective whether or not it is filed. The Act does not deal with the effect of failing to record an assignment. Therefore there is no recourse if you try to register a trade mark and find it is in use. Register your trade mark before you start trading and using it as a business name so you can ensure your interests are covered.

When an assignment of a trade mark is lodged with us, the details of that assignment are deemed to be in the register and the assignee becomes the owner of the trade mark from the day it is filed.

If an assignment takes place, you are required to notify us. Either the assignor or assignee (old owner or new owner) can submit the assignment. An assignment of a trade mark application is deemed recorded once it has been filed with us, even if it is not yet registered.

More information 

Last Updated: 19/12/2013

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