Under Australian law there is no legal requirement to register a trade mark or brand name to use it, however there are many benefits of trade mark registration.
The valid registration of a trade mark in Australia gives the owner of that registered trade mark the exclusive right to use, license, franchise, sell or otherwise commercialise the trade mark in respect of the goods and services for which it is registered. These rights are subject to those of owners of common law trade marks that were in existence prior to the registration of the trade mark.
Australian trade mark registration is for a period of ten years and can be renewed indefinitely for further periods of ten years at a time upon payment of the renewal fees to IP Australia, within the required time. However, the trade mark must be used in Australia in respect of the goods or services for which it is registered. The non-use of a registered trade mark can result in an action for its removal from the Trade Mark Register for non-use.
The benefits of trade mark registrations include:
1. Monopoly rights in the trade mark in respect of the class of goods or services in which the trade mark is registered, subject to existing common law trade marks;
2. Provided you continue to use your registered trade mark, a simple and inexpensive way of maintaining those monopoly rights indefinitely by renewing your registration for consecutive ten year periods;
3. Providing you with a valuable business asset which can be sold, licensed, franchised or otherwise commercialized;
4. It provides a publicly available record of the registration which can be searched by a competing business and act as a deterrent to it from using the same or similar trade mark in relation to the same or similar goods or business activities to those in the class in which your trade mark is registered;
5. Provided you choose a distinctive mark or invented word as your trade mark (instead of descriptive commonly used words) then, when seeking to prevent others/competitors from infringing your trade mark or unfairly using a similar mark in respect of the same or similar goods or services as those for which you have registered your trade mark, you will have:-
– more certainty of a successful outcome than just relying on your rights under the Australian Competition and Consumer Law, 2010 (previously the Trade Practices Act 1974) or common law passing off; and
– greater likelihood of a fast and, therefore, more cost-effective resolution.
Katarina Klaric | Principal
STEPHENS Lawyers & Consultants | Suite 205, 546 Collins Street,
Melbourne VIC 3000 Australia
T + 61 3 8636 9100 | F + 61 3 8636 9199 | E firstname.lastname@example.org
P.O. Box 16010 Collins Street West VIC 8007 Australia
Stephens-Klaric Legal Pty Ltd (ACN 117 672 376) trading as Stephens Lawyers & Consultants
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© Stephens Lawyers & Consultants. October 2013. Authored by Katarina Klaric and Rochina Iannella.