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
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:
Persuade IP Australia to revoke acceptance, or
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
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
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
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
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.
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