How to Make Your Trade Marks Add Value to Your Business

Your trade marks are very important to your business. They are the face of your business to the world. Your trade marks are what your customers see and remember when they engage with you in the course of trade. For you it might be a word, a logo, colours, shapes, aspects of packaging, a sound or a smell or any combination of these. They represent the important values and quality goods and services of your business.

Because your trade marks are important assets of your business they need to be managed carefully and maintained in order to add value to your business. The cost of establishing goodwill in a brand is high. Here are some vital steps you can take to ensure your trade marks maintain their value and add value to your business.

1. Choose wisely
When choosing a trade mark, choose marks which are different, unique and distinctive. Popular names, phrases or logos cannot always give you the value you want because it is not easy to claim exclusive rights in popular marks and prevent others from using them.

2. Search
Always have searches conducted before spending money developing a brand or using your trade marks to guard against infringing the rights of others. You also need to ensure that you can register your mark and a search and advice at an early stage will assist in detecting any likely obstacles to registration.

3. Register
If you don’t register your trade marks, your ability to prevent other parties from using your marks will depend on whether your marks have a reputation. If they do, protection may only extend as far as your mark’s reputation. If your mark’s reputation is confined to a particular geographical area, so too will your protection. Trade mark registration gives you rights all over Australia without the need to build up a reputation Australia-wide. In the case of a new trade mark, you may not have used your mark sufficiently to prevent another party from using the same mark. Registration of a new mark will give you rights without the need to build up rights through use.

4. Search
Even when you have a trade mark registration you must stay vigilant. Conduct regular searches and watches to ensure your marks are not being infringed or that counterfeit goods bearing your trade marks are not being imported into Australia.

5. Use it or lose it
Trade mark registrations can be removed if they are not used under certain circumstances. Ensure your trade marks are constantly being used for the goods and services for which they are registered.

6. Update your portfolio
Businesses and brands change. If you change your branding completely or modify your existing marks, update your portfolio. You may need to file additional applications. Also, if the goods and services covered by your current registrations change, you may also may need to file new applications to register your marks in relation to those new goods and services. Your trade mark registrations can last forever if you continue to renew them and they are not challenged by a third party.

7. International
Trade mark rights usually exist on a country by country basis. Therefore if your business expands to other countries – for example, if you are manufacturing in Asia, do not assume that you have trade mark rights in those other countries. You will need to consider searching and filing trade mark applications overseas as well. The processes, procedures, requirements, time-frames and laws may be quite different in overseas countries so seek advice on registering trade marks overseas and the costs involved as early as possible.

If only…

  • If only company X had conducted a search before it commenced using its trade mark. Company Y took legal action to prevent company X from using its trade mark in the Queensland Supreme Court because it had been using the same mark in relation to geological services for 10 years in that state. The judge awarded an injunction which prevented company X from using that trade mark in Queensland (including in advertisements). However, because use of the mark on company X’s website extended to the whole of Australia (and beyond), company X could not use its mark at all in Australia. Company X had to pay the costs of company Y in the court proceedings.
  • If only company A had not invested $50,000 in having its new trade mark designed and printed on publications, its website and placed on vehicles before it conducted a search and filed an application. Its trade mark application has been blocked by the same mark for the same goods in the name of company B. Use of the mark by company A runs the risk of an allegation of trade mark infringement by company B. Changing the mark means a loss of the $50,000 initially invested and a further $50,000 to have a new trade mark designed and printed.
  • If only company Y, a well-known Australian manufacturer and retailer of shoes had registered its trade mark in China before it commenced manufacturing in China. Another party, company B has applied to register the flag-ship brand in China ahead of company Y’s trade mark application. The processes are slow in China and it can take around 2 years to receive a response from the China trade marks office. Company Y has opposed registration of company B’s trade mark but the process is likely to take 3 years and the evidentiary burden and associated costs are great. Company Y is not likely to succeed in the opposition. If company B’s mark progresses to registration, the manufacture of Company Y’s shoes in China and the application of its trade mark to those goods in China may be infringing Company B’s trade mark registration.
  • If only Mr C had known that registering a business name in itself does not give him the right to use that name. Mr C has only used his business name for a short time, and has received a letter from a company which has a registered trade mark for that name covering the goods Mr C sells. The company is demanding that Mr C deliver to it all printed material as well as all his stock featuring the trade mark. Mr C will have to comply or try to negotiate a settlement which is likely to be costly and change his business name.

For further details or assistance with Trade Mark matters, please contact Wendy Burnett, Special Counsel.

Author: Wendy Burnett

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