Using a Trademark Before You Register It

Most people have seen the TM and R symbols associated with business names and logos.  The process of actually registering your trademark however, is much more unfamiliar to new and sometimes, even established business owners. The details surrounding trademarks, the registration process and how to protect and enforce them, can be a complex process, not to mention any legal consequences arising can be intimidating.

Due to many factors: fear of the process, the expense and the general lack of education surrounding the process of trademark registration, a lot of business owners often use a trademark while their application is still being processed by IP Australia (the governing body of trademarks in Australia), and in many cases, traders will use a trademark before evening considering the registration process.

It’s likely traders are unaware of the risks involved in doing this, or that a trademark’s pending status offers no protection from being infringed upon.  Business owners are often very surprised to receive a letter of demand implicating them and outlining a series of steps they must adhere to as a result of using a pending trademark.  Should this occur, the smartest plan of action is to enlist the services of a registered trademarks attorney to help them determine their options. The last thing you want to do is react emotionally and respond personally, without professional advice.

Being unaware of your responsibilities or the risks involved with using a trademark before it has been successfully registered can take you down a very expensive road.  It’s stress that no business owner needs.  You should always seek advice before commencing use of an unregistered mark so that you can determine the level of risk associated with using the mark before you have completed the trademark registration process.

I’ve Started the Process of Registering My Business Name as a Trademark – Can I Use it?

In Australia, the process of registering a trademark takes at least seven and a half months.  For a new business owner, this may feel like a long time to be not be able to use their business name within the marketplace.  Trademark registration is not a legal requirement, so although it is possible to use your business name before you achieve full registration, there are factors to consider:

• Trademark protection will not be available to you during this time.  So, if you have begun using your trademark and any other party makes the decision to copy it, or accidently choses the same logo, name or any other determining mark as yours – it may be challenging to stop them while your application is still pending.  You cannot allege a person is guilty of trademark infringement until your trademark is indeed registered. You will however, with the help of a trademarks attorney, be able to begin the process of enforcing your rights once your trademark has been registered. Once you have your trademark registered, you will be able to display the mark alongside a registered trademark symbol, license your trademark to another business, or you can even sell it, just as you would with any of your assets.

• By using your unregistered trademark, you may be inadvertently infringing a registered trademark owned by someone else. This is one of the biggest risks in using a mark before you have obtained its registration. A trademark owner that is diligent about protecting their intellectual property may send you a letter of demand.  This letter will consist of a list of actions they wish you to take, to cease the infringement and relevant time frames they expect you to do so.  This is unnecessary stress and a potential expense on you as a business owner, when your time and money could be better spent elsewhere. Not to mention the cost to have to rebrand when you’ve just invested in your first brand.

Because of the potential risks involved, we strongly recommend caution to our clients when it comes to using a trademark before the registration process has been completed. At the absolute minimum, appropriate searches should be carried out before use commences to ensure, as much as is possible, use of the unregistered mark is reasonably risk free. If in doubt, your best course of action is to seek the advice of an industry expert to guide you on the best decisions to make.

Should I have a Backup Plan During the 7 Month Waiting Period?

It is always wise to have a backup plan while you’re waiting for your trademark to be finalised, in case things don’t work out the way you expect. We suggest that our clients take advantage of a pre-filing assessment available for any new names, before formally filing a trademark application.    It’s a great way to determine whether your application for trademark registration is likely to be approved, or whether IP Australia has objections to your proposed trademark such that it is not likely to be accepted.

This means that you will have a reasonably clear view of where you stand in relation to the validity of your application in just a few days. The full registration will take 7.5 months still, but, this is the quickest way to get an indication on the likely approval of your mark. (A standard application will not be looked at for 3-4 months).  This can save you money and time, especially if you do encounter objections such that you need to make changes to move forwards.

The Safest Time to Start Using the Trademark

Ideally, the safest time for you to use a trademark is when it has been fully registered with IP Australia. Of course, we understand this is not always viable.  The associated risks involved in using the trademark before your registration has been granted have been outlined above.  Additionally, there is always a small possibility your application might be opposed by another party even if you have been informed by IP Australia via the pre-filing assessment that your application will be accepted.

While it’s not an everyday occurrence, the possibility still exists.  Where possible, we encourage clients to minimise any costs associated with promotion of the trademark – such as radio and television advertising and online marketing, branding on products – until we have confirmation from IP Australia that their trademark has actually been registered.  As noted above, we do appreciate it is simply not viable for all businesses to hold off any promotion for seven months, which is why it’s particularly critical to conduct as much due diligence before formally selecting a brand for your business to ensure the risk of use without full registration in place is low.

Does This Apply to all Countries?

Our advice around using a trademark during the registration process in another country is the same as in Australia – you will face risks if you do so, and the safest time to start using the trademark in a particular jurisdiction will be once it has been registered in that country. Your registered trademark in Australia does not provide rights/protection in other countries.

Mark My Words are Trademark Experts

There is a lot involved when it comes to using a trademark and being fully educated as to the various risks associated with using it during the application process can save you a lot of time, stress and money – long-term.  If possible wait until your trademark becomes registered in order to use it, and then you know you are fully covered for legal protection for 10 years. If for some reason waiting is not a possibility, ensure you conduct as many searches and seek as much professional advice as possible.

Contact Mark My Words for independent, professional and friendly advice regarding any aspect of your trademark, from the application process, to risk minimising strategies, renewals, assistance with enforcing your rights and disputes with other parties.

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