This new legal information blog post shares the answers to 4 FAQs regarding Trademarks (based on Australian trademark law and general practice).
Trademark law can be complicated, which is why it’s advisable you consult a trademark attorney to help you navigate the registration process. If you’ve found yourself in a spot of trouble regarding your mark or that of another business or brand, you may have missed some crucial information along the way. Here are some common trademark concerns and how to solve them.
Help! I’ve received a cease and desist letter!
What to do: Don’t panic, don’t ignore it, and don’t reply to it immediately. A trademark attorney should be consulted first to investigate the case and give you advice on whether the letter has merit and if you should comply with it. The longer you put it off, the worse the outcome may be for you. If the claim has merit and you continue with your marketing, for example, the sending party may seek an injunction and damages. You want to act promptly and in good faith.
Possible scenario: The side contesting the use of your trademark could be in the wrong. For example, a third party may have a pending application but not a registration. Unless they have a registered trademark it won’t be an infringement. This may even be an opportunity for you to challenge their pending application now that you are aware of it. However, it may also be early notice to you that once their pending application registers your ongoing use may then be an infringement. A trademark attorney can advise you on your situation.
Need to know: Not all cease and desist letters have a clear outcome – they may be solved with compromises from both parties. What you don’t want to do is agree initially to responsibilities and obligations that you can’t later reverse. If you receive a letter from a trademark attorney or IP lawyer, the demands presented may be negotiated. If you receive a demand from a non-legal person, it often contains insufficient detail to properly determine if there is merit to their claim, and if the threat they make is groundless, you could take them to court. The Australian law says that if you make a threat of litigation for trademark infringement, it needs to be supported with evidence that justifies it and if it’s a groundless threat the receiver has the right to take action to prevent the continuation of such threats.
Help! Someone is trying to cancel my trademark
Possible scenario: Your trade mark may be vulnerable to removal because of the principle of ‘use it or lose it’. If you are not using your trademark on the goods or services covered by your registration, and haven’t done so within a certain period of time, it becomes vulnerable to being cancelled or removed. A third party may have filed an application to remove your trade mark from the register for non-use.
What to do: If you do not wish to lose your registration, you will need to oppose the removal of the trade mark. To do this successfully you need to be able to show that you have been using your trademark in relation to the goods or services claimed with the relevant three year period. So, if you can demonstrate that you have used your trademark, as a trademark, for the goods/services nominated in the removal application in the relevant period of time, you should be able to prevent the cancellation or removal of your trademark.
Need to know: The trademark office will let you know if a third party has filed a request to remove your trademark. It is crucial – if you do not have a trademark attorney on record – that you keep your contact information up to date with IP Australia. Otherwise, your trademark could be removed without you knowing.
Help! I’m worried my trademark will be infringed and I won’t know
What to do: There’s a simple solution to this to help you monitor and enforce your rights. Begin by monitoring the marketplace for potential infringement of your registered trademark rights by doing a regular Google search for the same or similar name to yours. Google Alert can be set to serve these hits to you automatically. You should also check the ATMOSS database to check if there have been any applications for similar trademarks. Ideally, these checks should be done monthly. The opposition window in Australia is for two months. Therefore, monitoring on a monthly basis will ensure you have time to seek advice and oppose if you learn of a similar mark being approved. You can also hire a trademark attorney to help you with a watch service. It’s an affordable and reliable solution to give you peace of mind. Note that you can also get assistance to watch globally. Remember, it isn’t possible to have a single trademark registration protecting your trademark worldwide, so you should take steps to secure your rights globally too if you use your trademark outside of Australia.
Need to know: It’s important to keep on top of any applications that may infringe your rights and oppose where necessary, because once a trademark is registered, it can be difficult and costly to cancel that trademark.
Help! I’ve been using my mark before it is registered. Is this ok?
Possible scenario: You’ve probably chosen this option because of the seven and a half month delay it takes to complete a new trademark registration. It’s not illegal to have used your mark without registration, but it is risky as you currently have no protection. You may inadvertently infringe another’s registered trademark, and, if another decides to copy you, there’s not much you can do to stop them. You can only enforce the trademark once it has been registered, not pending.
Need to know: Once your trademark is registered, you have the right to display the mark next to a registered trademark symbol. You can also license your trademark to other businesses or even can sell it.
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