WNA Blog

 

Tue 28 Jan 2020

Trade Mark Tips – How to use it so you don’t lose it!


Legal Services
So you’ve registered a trade mark – great! Now all you need to do is make sure you use your trade mark correctly, so you don’t lose it!

Why is Correct Use of a Trade Mark Important?

There are two main reasons it is important to correctly use your registered trade mark in material presented to the public:

  • Firstly, if a trade mark has not been used as a registered trade mark for a continuous period of three years, it will become vulnerable to removal from the Register, i.e. a competitor could apply to have the trade mark de-registered; and
  • Secondly, in the event of trade mark infringement, enforcement will be more straightforward and financial compensation will be maximized if the registered owner can show good evidence of commercial use of the mark.

Correct Grammatical Use of Trade Marks

The first principle for correct trade mark use is to use it as a special adjective. For example: “I love wearing FRANKIE4 shoes” is an example of correct usage of the trade mark FRANKIE4 trade mark. Alternatively: “You should buy some FRANKIE4s” or “You’ll look great in FRANKIE4s” are incorrect uses of the trade mark FRANKIE4 because those phrases refer to the trade mark as if it were a generic shoe, not as if it is a special adjective that is used to specifically identify a certain shoe that is provided by a specific trade source.

Owners should present their trade marks in a way that is different to the surrounding normal text. For example, a trade mark owner may use the trade mark in all capitals or italics to highlight the fact that it is a special adjective.

In addition to using the trade mark grammatically to show that it is a special adjective it is also possible, though not mandatory, to use the ® symbol or the TM symbol as suffixes to the trade mark.

Removal for Non-Use

A registered trade mark will be vulnerable to a non-use removal action if it has not been used during a continuous period of three years. If a removal action is initiated by a third party, the onus will fall on the owner of the trade mark to demonstrate that there has been commercial use of the trade mark during the previous three years.

GOOD TRADE MARK HABITS

Keep Evidence of Use

  • Keep copies of invoices, business cards, stationary, packaging and advertising material showing trade mark use in relation to as many goods and services as possible, in as many states of Australia as possible.
  • Keep details of advertising and promotional costs relating to trade marks; and
  • Indicate that a trade mark is registered by using the ® symbol wherever the trade mark appears.

Enforce the Trade Mark

  • Monitor trade mark use by competitors and advise third parties of trade mark rights if unauthorized use occurs;
  • Search the Trade Marks Register frequently (or engage an Attorney to do so);
  • Oppose the registration of similar trade marks for similar goods or services, to avoid trade mark dilution; and
  • Use the trade mark as registered*, or register the new trade mark.

*Trade mark owners should consider engaging an Attorney to review use of trade marks, to ensure such use remains in line with corresponding trade mark registrations, and to identify any fragilities in protection. 


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