How to use and maintain your registered trade mark?

Applying to register a trade mark is one of the first steps towards protecting your brand in Australia and overseas, but it’s by no means the last. You should use and maintain your registered trade mark in the relevant marketplace, or else that protection under the Trade Marks Act may be lost.  

If you have any questions or require any assistance with maintaining a trade mark, our approachable and practical lawyers are happy to help protect you and your valuable business.

Use your trade mark prominently and consistently

You need to use your trade mark or you may risk losing it. “If you don’t use it, you can lose it”. If a registered trade mark isn’t used properly, it may be removed from the Australian trade mark register, forfeiting all rights in the trade mark.  

If you don’t use it (or even use it for a period of time), a competitor can apply to IP Australia for it to be removed from the Australian Trade Mark Register for non-use. For a trade mark to be removed for non-use, it must be demonstrated that the registered trademark has not been used in the past 3 years. It used to be 5 years, but has now been reduced to 3. To mitigate this risk, ensure your trade mark is used prominently and consistently in relation to the relevant goods and/or services. If your trade mark is a logo, then it needs to be that exact logo you use. If you change your logo in any way, then you should apply for the protection of that new logo.   

Examples of use that can prevent your trade mark from being removed include use in relation to marketing material, websites, and client materials such as invoices, letters and packaging, all featuring the trade mark. Your business’s advertising expenditure and turnover can also support trade mark use in the marketplace, if it’s ever challenged. 

Use trade mark symbols  

Once your trade mark is registered, you are then allowed to display the ® (R) symbol next to it whenever it is used. This tells other traders that you have a registered trade mark, and you intend to defend your intellectual property rights.  

It’s important to know that you can only legally use the (R) symbol on your trade mark for the form it’s registered. For example, if you have a registered logo, you can only use the (R) symbol on the exact same logo.  

This symbol is different to the TM symbol, which can be used for any trade mark, even if it has not been registered. Be certain of your registration status first, as it is illegal to use the ® (R) symbol if your trade mark is unregistered. You should use the TM symbol on the trade mark until the registration finally comes through and then at that point, you can then use the (R) symbol.  

Stay up to date with renewal fees and notifications

Once you’ve received notice of registration of your trade mark, you will need to pay renewal fees every 10 years to maintain your registered trade mark, or else it will be removed from the register. To ensure these fees are not missed, make sure to keep your address details are up to date so that you can be notified when it is time to renew your trade mark.  

The best way to keep up-to-date with renewals is to engage an expert trade mark lawyer and represent you as the address for service. Contact us here for more information.  

We don’t charge for this service and our electronic mailbox is checked daily, so you know that you’re not going to miss any important correspondence from IP Australia or any other 3rd party. We see this very often as businesses will constantly change addresses, accountants, mail get lost etc and it’s almost impossible to rectify those situations if it’s too late to do anything about it and the trade marks can be lost forever, along with all the legal rights.  

Monitor for trade mark infringement

It’s important to monitor the register regularly for the acceptance of other trade marks that infringe upon your intellectual property. By keeping on top of new and existing trade marks being used in your industry, you can ensure that your rights are properly policed and protected. You are entitled to oppose the acceptance of another trade mark you think infringes upon yours. There is only a 2 month window to oppose a trade mark prior to registration however, so you need to be vigilant.  

An experienced trade mark lawyer can monitor the trade marks register for you. Our price for standard monitoring of your trade mark is $90 + GST per month. 

Register trademarks in other countries

If you plan to expand your brand internationally, it is also vital to register trade marks in those countries as well at the appropriate time to avoid someone else coming along and registering underneath you. One option is go through WIPO to register trade mark internationally. 

This assists to make sure your brand isn’t being illegally used in overseas marketing, while also demonstrating use of your trade mark. Progressive Legal specialises in Australian and overseas trade marks.  

More than happy to have a chat if you want to reach out at any stage.  

Key Takeaways

As more trade mark applications are filed in Australia every day, the risk of a new trade mark infringing your brand is greater than ever before. Registering your trademark is only half the battle, and trade mark owners must be aware of newcomers in the marketplace and maintain their own use of the trade mark to keep and enforce their intellectual property protection.  

Progressive Legal provides advice in relation to the defence and maintenance of registered Trade Marks, to give your business the proper legal protection, together with any commercial legal documents, terms and conditions, waiver/disclaimers, privacy policies, employment contracts or independent contractors agreements. We specialise in helping growing Australian businesses. Contact us here for more information or call 1800 820 083.  

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