A registered trade mark is a valuable asset that strengthens your business’ brand and goodwill. Registration gives the owner the exclusive right to use the mark in relation to a particular class of goods or services.
After registration, the trade mark owner is not only responsible for protecting the mark against unauthorised use, but also pursuing opportunities to licence and commercialise the mark if they wish. This article assists trade mark owners to navigate effective uses of their mark and monetise their intellectual property.
Let People Know Your Trade Mark is Registered
Although the Trade Marks Register is public, few people check to see if another business owns a trade mark before they start using an identical (or similar) symbol. It is your responsibility to inform the public that your trade mark is registered. You can do this by using the ® sign next to your mark. In Australia, this indicates a registered mark and can act as a deterrent to potential infringers or competitors.
The Trade Marks Act 1995 (Cth) (the Act) specifies what amounts to ‘use as a trade mark’. If your actions do not fall within the circumstances set out in the Act, then your trade mark may be vulnerable to being removed for non-use.
Trade marks are registered under classes relating to particular goods or services. IP Australia can remove your mark if you are not using it for the goods and services under the class you identified in your registration.
The Act also defines ‘use’ as having the authority to use the mark. A trade mark owner has exclusive rights to use the mark or to licence to another party to use (exclusively or non-exclusively).
Businesses often choose to set up a separate company to protect their assets (also known as an IP holding company) from the entity that is engaging in the day-to-day operations (the operating company). If this is the case, the trade mark owner must licence the IP to show that it has granted permission and authority to the operating company to use the mark. This should be documented by the management team (even where the entities are related).
Monitor Your Trade Mark
Even though it has taken 7.5 months to register your trade mark, you can’t rest yet. Monitoring for infringement is an important part of owning a trade mark. You should conduct regular searches including on Facebook, Twitter, LinkedIn and Google for other businesses using an identical mark.
Importantly, IP Australia will not notify you if someone is applying for a similar mark and it’s your responsibility to monitor the Trade Marks Register. It’s also worth noting that IP Australia does not examine applications from an infringement perspective – they are only assessing registrability. This means that IP Australia may approve a trade mark application for a mark that you consider too similar to your own.
The application process provides you with an opportunity during the opposition period to raise concerns if you believe another mark is too similar to your own. Some businesses put in place a policy to monitor potential infringements while others engage a law firm to provide them with a monthly report and update on their mark.
Commercialising Your Trade Mark
Your trade mark represents your brand. As your business grows, so too will the value of your trade mark. You may register your mark when your business is in its infancy, and few people are aware of its existence. The reputation you have built is the ‘goodwill’ that attaches to your trade mark.
Depending on the nature of your business or your business model, you could consider licensing your trade mark. This will increase your consumer base and growth. You will need to evaluate the appropriate fees or royalties for giving someone permission to use your mark in relation to their business. Distribution, reselling and agency arrangements are various forms of licensing.
It’s difficult, however, to ensure people are using your mark in a way that benefits your brand. A business can compromise your reputation if they provide services that are below your standards. For this reason, business owners contemplate setting up a franchise model instead. In a franchise, the franchisor (and owner of the trade marks) exercises control over the franchisees by setting a standard for how the business is to operate. This ensures that sub-standard licensees do not damage the brand that the trade mark represents.
Registering your trade mark is not the final step to protecting your IP. A trade mark is only valuable if you are enforcing your rights. It’s your responsibility to monitor for infringement, and consider ways to leverage your trade mark to grow your business.