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Trade Mark Tactics: The Key to Brand Protection
Imagine this: you’ve worked hard to build a brand that truly stands out in a crowded market.
Your trade mark—say, “EXCELLENCE REDEFINED”—is not just a catchy phrase; it’s a promise to your customers.
However, simply registering a trade mark isn’t quote enough. To protect your brand, you must use your trade mark properly. We are going to walk you through exactly how to do that, answer common questions, and explain why the “use it or lose it” principle and the three-year rule are so critical.
When you register a trade mark, you’re essentially getting exclusive rights to use that mark in connection with your goods or services.
But there some things you need to be aware of and one is that you need to actively use your trade mark – you cant just let it sit.
Otherwise it can amount to “non-use”, meaning that if you don’t use your mark for three consecutive years, someone else could potentially challenge it and even have it cancelled.
Let’s take our made-up example, “EXCELLENCE REDEFINED.” You can put this trade mark on your website, packaging and anywhere else but how do you do it correctly?
First, while your trade mark application is on foot, you should use the TM symbol (™) alongside your mark.
For example, on your website header, you might write:
Welcome to Our Store “EXCELLENCE REDEFINED™”
The TM symbol tells competitors and the public that you consider this phrase to be your trade mark.
Once your trademark is officially registered, you can do this:
Welcome to Our Store “EXCELLENCE REDEFINED®”
The ® symbol can only be used once the mark is registered and misusing it before registration is not only misleading but can also incur penalties.
Now for the “use it or lose it” principle and the three-year rule.
In Australia, if you fail to use your trademark for three consecutive years, it becomes vulnerable to a non-use cancellation action.
This means that even if your mark is registered, someone can petition to have it cancelled on the grounds that you have not been actively using it.
The three-year rule is in place to ensure that trade marks remain a true reflection of active commerce.
Imagine that you registered “EXCELLENCE REDEFINED” but then, for whatever reason, you stopped using it—perhaps you rebranded, or the product line changed. If you don’t resume use within three years, you could lose the exclusive rights to that mark.
Let’s answer some frequently asked questions about proper trade mark use:
FAQs on Proper Trade mark Use
Q: What does the TM symbol mean, and when should I use it?
A: The TM symbol indicates that you claim rights to your trade mark, even if it’s not yet registered.
Q: When can I start using the ® symbol?
A: You may only use the ® symbol once your trade mark is officially registered with IP Australia.
Q: What are the consequences of not using my trade mark?
A: Under the “use it or lose it” principle, if you do not use your trade mark for three consecutive years, it may be subject to a cancellation action for non-use.
Q: How do I ensure that my trade mark is used consistently?
A: Consistency is key. Always use the trademark exactly as registered.
Q: What happens if there is a change of ownership in my business?
A: If your business ownership changes, it is crucial to transfer the trade mark to the new owner.
Q: Can I use the trade mark in different contexts?
A: Yes, but avoid generic usage that could dilute the mark’s distinctiveness.
Q: Do I need to protect my trade mark internationally?
A: That depends on your business strategy. If you plan to expand beyond Australia, you may consider seeking trademark protection in other jurisdictions.
Tips for using your trade mark properly
Always Display the Correct Symbol
Use the TM symbol while your application is pending, and update to the ® symbol once registered.
Consistency Is Critical
Ensure that your trade mark is always presented in the same way across all platforms.
Update Ownership Details Promptly
If there is a change in the ownership of your business, make sure to update the trade mark registration accordingly.
Educate Your Team
Make sure that everyone in your business understands the importance of proper trade mark use.
Our motto, “turn your ideas into assets,” reflects our commitment to protecting your innovative concepts and ensuring that your brand stands out in the marketplace.
To sum up, here are our key recommendations for using your trademark properly:
- Use the TM symbol while your application is pending, and update to the ® symbol once your trade mark is registered.
- Maintain consistency in the presentation of your trade mark across all platforms.
- Actively use your trade mark in the marketplace to avoid non-use cancellation under the three-year rule.
- Ensure any change of business ownership is reflected in your trade mark records to prevent potential non-use claims.
- Educate your team on proper trade mark usage to safeguard your brand’s integrity.
This article is published on the DesignWise website, powered by Sharon Givoni Consulting. To read more about generic trademarks, click here.
Sharon Givoni Consulting takes pride in our ability to turn your ideas into assets, ensuring that your intellectual property is protected and that your brand’s identity remains strong.
To read more about using it or losing it go here: https://sharongivoni.com.au/use-it-or-lose-it-what-happens-if-you-do-not-use-your-trade-mark/
To read more about how to manage your IP and trade marks go to this government website: https://www.ipaustralia.gov.au/manage-my-ip
To read more about a case that talks about non-use in relation to the “7NOW’ trade mark go here: https://jade.io/j/?a=outline&id=1076585
Fun Facts About Generic Trade Marks:
- Aspirin was originally a trade mark of Bayer but lost its status after it was widely using in many countries after World War I.
- The word “escalator” to describe a moving staircase was once a trade mark of the Otis Elevator Company.
- Thermos remains a trade mark in some countries but became generic in the U.S. in 1963.
- Yo-Yo is still a trade mark in Canada but has become generic in many other countries.
- Linoleum was one of the first product names to become a generic term, losing its trademark status in 1878.
- In Australia, Esky, once a brand name, is now commonplace portable cooler.
- Frisbee is still technically a trade mark, but many people use it for any flying disc.
- Hoover is a brand for a vacuum cleaner but “to hoover” can be used as a verb in Australia.
- While Google fights to prevent it, many people use “to google” as a verb for any web search.
- Ugg boots have a complicated trade mark history, with the term being generic in Australia.
Please note the above article is general in nature and does not constitute legal advice.
Please email us info@iplegal.com.au if you need legal advice about your brand or another legal matter in this area generally.