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Intellectual Property Law - Trade Mark Rights

Date: December 08, 2010

Authors: LAC Lawyers

Author: Allan woodley

Trade mark rights can be acquired in Australia by use and/or by registration. 

Where an unregistered trade mark has been continuously used in Australia prior to the filing date of a trade mark application for a competing mark, the earlier user will have established rights in the mark that may defeat the later registration or at least allow coexistence. 

Where two competing marks have coexisted in the marketplace and were honestly adopted, they may also be able to coexist on the trade marks register upon filing sufficient evidence of use, on the basis of “honest concurrent use”.   Five years coexistence would make a strong case for registration of a mark on the basis of “honest concurrent use”, but a lesser period such as two years may suffice if the levels of use are strong, indicating that the mark has established a reputation in the marketplace and has coexisted with the earlier mark.

It is important to keep evidence of trade mark use throughout the life of the mark. Evidence of the date of first use, samples of the mark in use upon goods, or services, invoices showing the mark, annual sales figures, evidence of advertisement and promotion including samples of advertisements and promotional goods from each year, levels of internet use, and other evidence of use should be maintained and updated so your ownership of the mark can be established. Such evidence may be called for in support of a trade mark application, or in various proceedings, such as oppositions, trade mark infringement, passing off and actions under Trade Practices/Australian Consumer Law. Where the mark is used internationally, such records should be kept for each territory of use. Trade mark right grow in value over time and in many cases have come to represent the main asset of the company. It is therefore very important to maintain records of trade mark use and manage trade mark portfolios correctly.

The TM symbol can be used with any trade mark, even without a trade mark application or registration, to indicate trade mark rights are claimed. Following registration the ® symbol can be used.

Trade mark ownership notices should also be used to clearly indicate the trade marks in which rights are claimed, whether words, logos, slogans, colours, shapes or sounds.

Where a trade mark is used by a licensee or authorised user the fact should be included in the trade mark notice. The interest of the user should also be recorded on the trade marks register. It is very important to maintain the connection of the trademark owner to the goods through the mark, rather than allowing the mark to become distinctive of a licensee or authorised user. Otherwise the registration could become vulnerable to cancellation.

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