Protecting Your Trade Mark

Registering your brand as a trade mark is the safest and most comprehensive way to protect your valuable intellectual property. 

With the growth in global online trading, many business owners now register their trade marks in multiple countries to cast the net wider and ensure their assets are comprehensively protected by legally enforceable rights.

Key points about how to protect your trade mark

1. Monitoring

Once a trade mark has been successfully registered, it is incumbent on the trade mark owner to monitor the competitive landscape for trade mark infringement and to take action to enforce their rights if transgressions are noticed.

There are several ways that a trade mark owner can monitor for infringements, and these can either be done in-house or outsourced to a third party such as a trade mark attorney who offers monitoring services.  If a transgression is noticed or suspected, action can then be taken timeously.

You can subscribe to various monitoring services for this purpose, including:

• A trade mark watching service (either by country, region or globally) whereby the trade mark owner is notified if an application is filed or accepted for an identical or similar trade mark
• A domain name watching service which provides a regular report on all new domains of interest
• A web watch service which identifies online use of a trade mark in relation to actual products or services

You can also use Google Alerts as a cost-effective way of keeping tabs on your trade mark.  Once you’ve set it up, Google will then email you an alert once your selected search term/s appears in the Google search results.

There is however, no panacea for ensuring total brand protection.  Trade mark owners need to take a multi-pronged approach, be vigilant and be prepared to devote sufficient time and resources to protect their business’s intellectual property.

If an infringement is suspected, it is advisable to seek professional advice from a trade marks attorney or lawyer as enforcing your rights and proving infringement can be complicated. Further, in some countries (including Australia) making an allegation of infringement that lacks merit can have legal ramifications.

2. Strong brand guidelines

Brand guidelines that are applied consistently and diligently across a business are an essential part of sustaining brand protection.  A comprehensive brand manual which includes clear guidelines on the use of the registered trade mark/s is vital to maintaining a strong brand identity, and it should be distributed to your marketing team, affiliates, distributors and any licensees.  This will help broaden ‘eyes on the street’ with regards to potential infringements.

If you sell branded goods, it is prudent to have a way that consumers can identify your genuine products from fakes or imitations. 

3. Register your trade mark with relevant online marketplaces

Many online marketplaces such as Amazon, eBay and AliExpress have systems that allow owners of intellectual property rights to report listings that may infringe on those rights.  These systems help with enforcement of the trade mark owners’ rights.

4. Check the Australian Securities Investment Commission (ASIC)

ASIC offers a publicly accessible database service where you can search all company names and registered business names in Australia.  Because ASIC manages and administers the registration as well as renewals of all business names, you can use this online tool to see whether any other businesses are using your trade mark in their name. Note, however, the mere registration of a business name does not mean they are infringing your registered trade mark but it is useful to see who might be in breach.

5. Don’t let your trade mark become vulnerable through non-use

Some trade mark owners don’t realise that registered trade marks can be removed from the trade marks register if they have not been used in a relevant three (consecutive) year period.  Someone else can apply to have a trade mark removed on the basis of ‘non-use’.

It’s a case of ‘use it or lose it’ and the application for removal can be against all or some of the goods and services for which a trade mark has been registered.

Key takeaways

As the trade mark owner, it is your responsibility to protect and enforce your intellectual property rights.  That’s why business owners need to pay close attention to how and where their registered trade marks are being used, why ongoing monitoring of trade mark use is so important and why a strong and consistent brand identity is vital.