Guide For Handling a Request to Use Your Trade Mark
While it is unusual for a trade mark owner to receive a request for their trade mark to be used by someone else, it does happen. This article offers some advice on what you should and shouldn’t do if you’re approached by a third party.
Let’s first take a step back and examine what it means to own a registered trade mark.
What Rights Do You Have With a Registered Trade Mark?
Registering a trade mark gives you exclusive rights to use, license the use and sell the mark for the particular goods and/or services for which it has been registered.
Unless certain exceptions apply, no one else can use your trade mark commercially for the same goods or services without your express permission. If they do, and no defence applies, you can take action against them for trade mark infringement.
A registered trade mark is a tradeable asset and it can ultimately be of significant value.
What to Do if Someone Approaches You to Use Your Trade Mark?
If you’re approached by a third party requesting the use of your trade mark, it is important to ascertain all the facts before granting them permission. Consent would need to be way of a carefully structured agreement, signed by both parties.
Your trade mark is a valuable asset and you don’t want to discover that you have unwittingly compromised your IP, so it is always recommended that you get specialist advice from a trade marks attorney before taking any action.
Circumstances when permission is not required to use another person’s trade mark
In the world of trade mark law, if someone ‘uses’ another person’s trade mark (or something substantially the same or deceptively similar to a registered trade mark) for the same or related types of products or services without the trade mark owner’s consent, it means the trade mark owner’s rights are likely being infringed and they are likely entitled to commence legal action.
Key is that the alleged infringer must be using the sign as a trade mark in the marketing, promotion or sales of those goods/services. There may be circumstances where permission to use a particular name or other trade mark ‘sign’ is not required or defences available to argue there is no infringement. A trade marks attorney can advise on the best course of action if you suspect your rights have been infringed.
What Action Needs to Be Taken if You Give Someone Permission to Use Your Trade Mark?
If you get a request from someone to use your trade mark, the advice from all trade mark professionals would be to tread carefully. Even a small error or inadvertent omission in an agreement can be costly.
The very first thing to do if you’re approached by a third party who requests use of your trademark is get specialist advice.
Generally, the person seeking the permission will need to pay a licensing fee to the trade mark owner and sign a licensing agreement. This agreement would contain the specific terms of the trade mark usage to ensure appropriate quality over the goods/services promoted under the trade mark is maintained and that the brand’s reputation is not at risk of being diluted.
In Summary
At face value, a request to use your trade mark may seem totally reasonable, but it is simply not worth taking any action without first discussing the circumstances in detail with a trade marks attorney. Trade mark law is a complex field and your registered trade mark is a valuable asset. It is therefore crucial that you remove any risk of compromising its equity or its earning potential before making any binding decisions.
