There are many benefits of registering a trade mark for your business name. Registered trade marks comes with several rights regarding its use that you don’t get with an unregistered business name. These include:

  • The right to use your trade mark for the goods and/or services you nominated.
  • The right to authorise others to use the trade mark for those goods/services (for example, in a licensing arrangement).
  • The right to instigate infringement action if you discover someone is infringing your trade mark.
  • The right to claim your trade mark as registered, including by using the ® symbol alongside your trade mark. 

You do not necessarily have the right to use your business name if it’s not registered as a trade mark. In fact, your use of a business name could infringe someone else’s registered rights. 

Trade mark infringement is not always black and white: just because you see someone else using the same or similar name that you have registered does not automatically equal infringement. Advice should be sought to help determine this. I would always encourage that you speak with a trade mark professional before ever contacting another party and claiming they are infringing your registered trade mark. If you make a groundless threat against someone about trade mark infringement, they could end up take action against you! 

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Correct use of registered trade marks

Firstly, it’s important to remember that if you stop using your trade mark it may become vulnerable to removal for non-use. If your trade mark has been registered for five or more years and not been used for three continuous years, another person could ask the government office to remove your registration due to it not being in use – so, “use it or lose it!” 

If you are using your registered trade mark then there a few things to keep in mind as time goes by:

1. If your trade mark changes over time, you may need to file a new application for your new trade mark, even if it’s only a little bit different to your original registration.

2. You may add new products/services over time that are not claimed under your original trade mark registration and may need to file a new application to cover these additional product or service offerings.

3. A trade mark is an adjective, not a noun, so keep this in mind when you are referring to your trade mark, for example:

Correct: XYZ® Lawnmowers
Incorrect: XYZ® 

Correct: We import and distribute XYZ® Lawnmowers
Incorrect: We Import and distribute XYZs®

You also cannot represent a trade mark to be registered, through use of the ® symbol, when it is not. In fact, it is a punishable offense for doing this, so it’s crucial that you understand what is registered and use that registered trade mark in the correct way at all times.

Are you clear on your rights for using registered trade marks? 

“ If you stop using your trade mark it may become vulnerable to removal for non-use… so, use it or lose it! ”
 
Jacqui Pryor

Jacqui Pryor is the director of Mark My Words Trademark Services Pty Ltd and brings with her 13 years experience in dealing with Australian & International trademark matters - affordably and professionally.

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