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.