Should I file a trade mark if I have been using it for years?

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Trade marks are everywhere in our world and any business needs to understand how to protect their intellectual property just as much locally as globally. It has often been said that a trade mark can be your most important and valuable tool to market your business, your goods or services.

Trade marks can be misunderstood. The perception it is just “a logo” could not be further from the truth. Trade marks are not just ‘a logo’. It can be a letter, number, word, phrase, sound, smell, shape, logo, picture, movement, aspect of packaging, or a combination of any or all of these.

Business owners must also remember that different rules can apply in different countries to determine ownership and associated rights.

In Australia, the “use” of a trade mark play a significant part in determining such things as:

  • Ownership;
  • Distinctiveness;
  • Removal for non-use;
  • Any infringement.

In Australia we give priority to people who are “first to use” and can demonstrate evidence of that use, even if another party has applied to register that mark as a trade mark in Australia first. The Full Court of the Federal Court considered this matter in the case of Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6 (2 February 2018).

Other countries have a “first to file” system. This system gives rights to the party who first filed a trade mark application in that country for such mark, even if another party has used that trade mark in that country prior to the filed application.

Protecting your trade mark and intellectual property should not be taken lightly. You can be drawn into lengthy and costly disputes if you don’t get the right advice. At FC Lawyers our team has handled many successful registrations in Australia and throughout the world to protect our clients intellectual property.

Contact our team today to discuss your intellectual property legal needs.

The information provided in this article is for general information and educative purposes in summary form on legal topics which is current at the time it is published. The content does not constitute legal advice or recommendations and should not be relied upon as such. Whilst every care has been taken in the preparation of this article, FC Lawyers cannot accept responsibility for any errors, including those caused by negligence, in the material. We make no representations, statements or warranties about the accuracy or completeness of the information and you should not rely on it. You are advised to make your own independent inquiries regarding the accuracy of any information provided on this website. FC Lawyers does not guarantee, and accepts no legal responsibility whatsoever arising from or in connection to the accuracy, reliability, currency, correctness or completeness of any material contained in this article. Links to third party websites or articles does not constitute any endorsement or approval of those sites or the owners of those sites. Nothing in this article should be construed as granting any licence or right for you to use that content. You should consult the third party’s terms and conditions of use in relation to any third-party content. FC Lawyers disclaims all responsibility and all liability (including liability for negligence) for all expenses, losses, damages and costs you might incur as a result of the information being inaccurate or incomplete in any way. Appropriate legal advice should always be obtained in actual situations.


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