Trade mark registration is a prerequisite to brand protection. However, as essential as it may be, brand owners often mistakenly assume that trade mark registration is a panacea to all their branding problems. In practice, trade mark registration is but one vital part of an effective brand protection strategy.

In Australia, although IP Australia's examiners act as a first line of defence against third parties that seek to register substantially identical or deceptively similar trade marks, IP Australia does not always come to the decision that brand owners might expect.

This is why brand owners should ensure that appropriate measures are in place to monitor accepted trade mark applications. One such measure is a trade mark watch service. A watch service is typically tailored to the particular requirements and jurisdictions of interest to a brand owner and might involve tracking marks that incorporate a particular distinctive element, reviewing the status of specific trade mark applications, conducting regular proprietor searches for competitors' trade marks and scrutinising the Australian Journal of Trade Marks.

When a trade mark application is accepted, IP Australia publishes notice of that acceptance in the official Australian Journal of Trade Marks. Third parties then have two months from the date of publication to either:

  1. Persuade IP Australia to revoke acceptance, or
  2. Oppose registration by filing a Notice of Intention to Defend and, thereafter, a Statement of Grounds and Particulars.

Failure to take appropriate action within this timeframe can quickly transform a fairly standard and cost-efficient enforcement action into a more expensive revocation exercise before the courts.

As unauthorised third party use in the Australian marketplace falls outside of IP Australia's brief, it ultimately falls to brand owners to be alert to, and take appropriate action against, such use. While some brand owners rely on their sales, marketing or management teams to react to brand threats and unauthorised third party use, the opportunity to take decisive action may be lost if those tasked with this responsibility are not clear on the extent of their brief, or are operating without a reaction plan as part of their brand protection strategy.

In order to maximise the value of a trade mark registration, brand owners should:

  • Use their trade marks in respect of the goods and/or services for which registration has been obtained. Once a trade mark has been registered for five years in Australia, failure to use for a period of three years can mean a brand owner could lose their trade mark registration.
  • Check how their trade marks are being used. A brand owner should monitor their own use in order to address vulnerabilities and pre-empt potential infringers. Sometimes use of a trade mark evolves and it becomes necessary to seek additional protection.
  • Maintain control over the use of their trade marks. As trade marks can be licensed, it is essential that appropriate terms and arrangements are in place so that use by a licensee accrues to the brand owner.
  • Monitor accepted trade mark applications. Watch services and consistent review of official trade mark journals is vital to pre-empting and nullifying threats to trade mark rights.
  • Watch for unauthorised trade mark use in the marketplace. Keeping track of competitors and having a straightforward and effective plan ready to implement when unauthorised use is discovered is essential.
  • Be quick to take appropriate action to enforce their trade mark rights when threats arise. Action required may be as simple as the issuance of a letter of demand - but failure to respond to infringement is likely to dilute valuable trade mark rights.
  • Renew their trade mark registrations. In Australia, a trade mark registration needs to be renewed every ten years. Forgetting to renew will result in losing the compelling rights that come with registration.

Disciplined use, targeted monitoring, regular renewal and a willingness to take enforcement action to protect essential trade mark rights will allow a brand owner to maintain a perpetual and powerful monopoly over a trade mark for specific goods or services within a particular jurisdiction.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.