Thursday, September 28

6 Things you Need to Know About your Trademark

If you’ve already got a trademark registration for your product or brand, it, unfortunately, doesn’t mean you forget can get on with work and forget about them. Trademark attorneys have the knowledge and experience to advise you on what you need to know about your existing trademark.

They will even assist you by contacting you to remind you when specific changes or legalities need to be addressed based on timing or modifications to the law.

Here are some of the things that business owners may not know about their existing trademark. Did you know the following?

A trademark needs to be renewed

Australian trademark registrations only last for ten years. After this, you have the option to renew it, but you can’t expect this to happen automatically, and you are also liable for renewal fees. At the time of a renewal, it’s wise to relook what the trademark relates to (ie, which specific goods or services it is registered for).

By reviewing it, you need to check what you are/or not protected for. Plenty can change with your business in a decade, and you need to check that your registration reflects this. Review it every three years to five years to check your registration covers all the goods and services you are currently providing. 

A trademark needs to be used

Perhaps you’ve registered a trademark, but for various reasons, haven’t got around to using it? This makes it vulnerable to removal from the register. If you haven’t used it within three years of the registration, a third party can attack it for ‘non-use’. Use it, or potentially lose it. Or you may want to review the scope of goods/services of the trademark and remove ‘non-used’ goods or services. 

New goods or services require a new trademark application

While you can delete goods or services if they aren’t being used or sold under your trademark anymore, and you have no intention to sell them again under that trademark, you can’t add new ones to existing trademark registration. So, if you’ve added a new product or service,  you’ll need to look into covering those.

It won’t be added to your existing trademark but will be filed as a new one covering the new goods or services. It will even have a new filing date and new trademark number.

Copyright and trademarks are different

Here’s how they differ. Copyright protects original works of authorship, such as musical, art, or literary works. Copyright cannot be registered in Australia, it automatically arises. Trademarks are an entirely different form of legal protection for intellectual property. They protect signs, such as logos, that distinguish goods or services from others. Why does this matter to you? Because sometimes, the two overlap, and you want to avoid confusion.

For example, a logo can be considered artwork and is therefore covered by copyright. But if you’re going to protect it in the business world, it needs to be protected as a trademark too.

You have limited time to oppose a trademark

When another business applies to register a new trademark, you only have a two-month window to oppose it. You can seek an extension of time to oppose, but it’s challenging to obtain, and there are no guarantees it will be granted. Your only other option is to challenge the trademark in court.

The only way you will pick it up in time is if you or your trademark attorney monitor the trademarks database for potential infringements. The register is searchable and available to the public, so you can search yourself to see if another party has filed a trademark application similar to yours.

It’s preferable to have a trademark attorney provide this service for you, so you can continue with operating your business without worrying about your trademark. Creating a general ‘watch’, or one focussed on your competitors, means you’ll pick up the infringements within the window allowed for oppositions.

It’s also recommended you try and negotiate with the other party before you file an opposition because the opposition process is lengthy. It could take you over two years to get through the stages of evidence being examined and the hearing to be conducted. If you can come to an agreement with the other party, you will save yourself the time and worry.

Having the same name doesn’t always mean it’s an infringement

It is possible to have identical trademarks that are registered on the Australian trademarks database. That’s because trademarks are registered in classes that define where and how the goods and or services are used.

So one owner may use the name for their car sale business while the other uses exactly the same name for their fitness center. They both have the right to own their trademarks, and there is no case for infringement.

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