1. An exclusive right to use your mark.

A trade mark registration gives you an exclusive right to use your mark in the country in which protection is granted.  If other parties use your trade mark you may sue for trade mark infringement. In Australia registered trade marks must be renewed every 10 years.

2. Freedom to operate.

Registration is a defence to trade mark infringement. This means you will avoid a letter of demand requiring you to stop using your name. You may become involved in costly litigation and have to pay an account of profits or damages to the trade mark owner.

3. Rights are no longer invisible.

As soon as an application is filed it is available for public searching in the trademark office records so that other traders who may be considering using a “deceptively similar” trade mark can identify and avoid conflict with your rights.

Rights can be obtained that are directed to “intention” in terms of your business plan even though you may not ultimately use the mark for all goods and services in your plan

After a trade mark application is filed “the date of registration” is the filing date so the rights are retrospective to the filing date. Even maintaining an application in the search records can be enough to deter others from using your brand. This also means you can take defensive measures to cover a wide range of goods and services trade mark for at the time of filing.  As long as you document in your business plan where you think the business might go in the right circumstances you can secure a much wider cover than you would otherwise be entitled to at common law.

4. A Separate asset.

A registered trade mark is separate from the goodwill in the business whereas an unregistered trade mark must be locked in with the goodwill and must be sold as part of the business.  A registered trademark can be separated and held in another entity thereby protecting the brand from the ordinary risks of carrying on business and it can be sold or licensed separately from the business. This has the advantage that upon selling a business the former owner can maintain a royalty stream or the brand can be extended to other traders for certain uses.

A trade mark registration is for the whole of  Australia even though you may not be trading in a particular area at the present time.   An unregistered trade mark only gives you geographical rights where you have and hold a particular reputation and can prove it.

5. Rights are superior to common law rights.

Common law rights in an unregistered trademark require an existing reputation where the offence occurs  and a deliberate misrepresentation to be enforceable. At common law another trader can use a deceptively similar brand but as long as they do not make a deliberate misrepresentation they can continue. There is no requirement for reputation or a deliberate misrepresentation for trademark infringement. It is simply an objective comparison with the certificate of registration.

Leave a Comment

Your email address will not be published. Required fields are marked *

Scroll to Top