Advantages of Registering Trademarks
There are a number of distinct advantages associated with registering your trademark rather than simply relying on common law or unregistered rights.
Registering your trademark is the quickest and most cost-effective way to ensure legal exclusivity for the use of your name or logo etc. Registering a trademark for your business or product name is similar to obtaining a certificate of title in relation to land.
Registering your trademark significantly reduces the risk of being prevented from using your name or logo by other traders. One of the most emotionally draining and expensive things that can happen to anyone who owns a brand is receiving a ‘cease and desist’ letter from a lawyer which requires you to stop using the name which you thought you owned.
Registering your trademark usually gives you nation-wide protection instead of rights that are restricted to the specific areas or regions in which you trade. Further, if you want to expand overseas, this gives you a good platform to obtain rights in other countries – even before you commence trading in those countries.
Deterring and preventing others
Trademark registration deters other traders from using trademarks that are similar or identical to yours in relation to goods and services like yours (referred to here as ‘conflicting trademarks’). This benefit manifests itself in a number of ways:
1. Before other traders choose their brand names
Being able to use the ® symbol puts others on notice of your rights, and being registered means that others can find your trademark when searching the official register before choosing to commence using a particular name. This makes it much less likely that they’ll choose to use a conflicting mark in the first place.
2. When other traders seek to register their brand names as trademarks
Having your trademark on the register makes it likely that trademark examiners will refuse to register conflicting marks. If (despite this) another trader is able to convince a trademark examiner to accept the mark for registration, having a prior registered mark gives you a strong right to oppose the registration before it’s officially entered on the register.
3. When you discover another trader using a conflicting mark in the market place
Having a registered trademark makes it much easier, quicker and cheaper for you to prevent other traders from using conflicting trademarks. Often one or two ‘cease and desist’ letters from your lawyer will be sufficient, but if it is not, the process of taking someone to court under the Trade Marks Act 1995 is much less expensive than the options for owners of unregistered trademarks (click here for more details).
Protecting yourself from infringement claims
If Jo Bloggs is using her registered trademark, the Trade Marks Act 1995 gives her a complete defence should a second person (e.g. John Doe) sue her for infringing his registered trademark. In other words, as long as she is using her registered trade mark, she knows that she is not infringing the rights of any other traders.
Controlling the use of your brand by others
Registering your trademark makes it a lot safer and easier to licence the use of your trademark to others (e.g. manufacturers, distributors, franchisees etc).
Capturing the value of what you create
Holding a registered trademark significantly increases the value of your brand to potential purchasers, and hence any purchaser of your business is likely to pay much more for the goodwill that you build up.
Securing the co-operation of third parties
Registered trademark owners are much more likely to secure the co-operation of third parties in the protection of their rights.
1. Other traders
For example, Google will act to prevent traders from bidding on ‘key words’ that contain your registered trademark. Facebook may remove or reclaim user names that infringe your registered trademark. eBay will act to take down listings which infringe your trademark.
2. Australian Customs Service
Once you register a trademark , the Australian Department of Immigration and Border Protection (formerly the Australian Customs Service) will allow you to file a ‘Notice of Objection’ to the importation of goods which infringe your registered rights. You’ll be notified of any unauthorised shipments of goods containing your trademarks which are being imported into Australia, and those goods can be held in port while you decide what you want to do.
Interested in trademark registration?
In order to take advantage of the benefits of registering a trademark, we recommend engaging an experienced professional to help you. Epiphany Law is a firm of intellectual property lawyers who offer a variety of trademark registration services. We’d be happy to discuss your trademark application with you today, so please contact us.