You’ve worked hard to build your brand and protect it. So now it’s time to enforce it.
Over the past few weeks, we’ve considered what it takes to create a strong brand and how to protect it at home and overseas. In the final part of this series we’ll look at some of the ways you can implement your brand protection strategy and enforce your trademark rights.
Methods of protection
As we’ve discussed, brand protection encompasses the measures taken to prevent someone from illegally making and selling a product, or offering services using a brand name owned by another company. A strong brand protection strategy will help to safeguard your most valuable asset, but you need to use it and enforce it decisively, or you will lose the protection and value in your brand, that you’ve worked so hard to build.
Fortunately, businesses can protect their brands by implementing various legal processes. We discuss some of these below.
Using the TM & ® symbols
As we discussed in part three, trademark registration is one of the most effective ways to protect your brand in the market. Once your trademark is registered you should consider using the ® trademark registration symbol on your branded material.
The trademark registration symbol ® can only be used for trademarks that registered in Australia. You can also use the trademark registration symbol in overseas markets, but your brand will need to be registered as a trademark in those countries and you need to ensure you are also are adhering to any local conventions. If you don’t have a registered trademark yet in Australia or in your overseas markets, then you can use the ™ symbol.
It is not compulsory to use the ® or the ™ symbol, but its inclusion will give your brand a sense of qualification and act as a deterrent for would be infringers.
Use it or lose it!
Once you register a trademark you must use it in the form it is registered and for the goods and service for which it is registered, to prevent your trademark registration from becoming vulnerable to removal from the register, for non-use.
Anyone can apply for the removal of a trademark for non-use. It is then up to you as the trademark owner, to oppose the removal action and provide valid reasons for why you believe your trademark should remain registered. You will also need to produce satisfactory evidence in support of your opposition to the application for removal.
Diligent trademark owners should keep records of their use on file as this can be very useful not just to defend non-use actions but also to rely on as evidence of your reputation in your trademark, your prior rights and your ownership.
If you are allowing others to use your trademark, then it is important that you control that use. The most common way to control authorised use of a trademark is with a trademark licence. A good trademark licence will include details of the trademark or trademarks that can be used, how they can be used, where, when, the fee for the use and for what purpose the licensee can use the trademark. If you don’t control the authorised use of your trademark then you risk waiving your rights in the trademark.
Common licensees include manufacturers, sponsors, distributors and retailers, franchisees, contractors and consultants.
Watching & monitoring
As a general rule, your brand protection strategy should include watching and monitoring.
Trademark monitoring involves systematically checking for newly filed trademark applications that are similar to your trademark registrations and may adversely affect the value of your brand, your business reputation and your trademark rights, should they be registered. Observing competitors in this way will allow to you to deal swiftly with any threats or infringements on your brand.
Trademark monitoring should also include inspection of business and company names, domain names, social media profiles, websites, directories and search engines, marketing and advertising material and published content such as blogs. Not only will online monitoring of your brand protect you from would be infringers of your trademarks, but can also mitigate your risk of infringing someone else’s. As well as protecting against online threats, monitoring your brand online can allow you to measure how your brand is performing and how effective your reach and impact is.
If you identify a particular brand or trademark that may be problematic for your business, then you should implement a trademark watching process that monitors a specific trademark application or brand.
Cease and desist letters
If you suspect an individual or business of infringing on your brand, you can send a “cease and desist” letter. Also known as an infringement letter or a demand letter, they contain a warning and deadline to cease specified conduct and actions. Cease and desist letters can be an effective way of resolving potential issues before they have a chance to develop.
Be aware that there are risks in sending out a cease and desist letter including action being taken against you for groundless threats or misleading or deceptive conduct (to name but a few!). If you do wish to send one out, we urge you to engage a lawyer who is experienced in brand protection to do it for you. That way you invest a little bit of money upfront to save a lot of potential costs and liability if you get it wrong.
Another important strategy you can use to enforce your trademark rights is to oppose new trademark applications that conflict with your brand or otherwise should not be registered. The benefit of this is two-fold. The first being that you are preventing others (usually competitors) from devaluing your trademark rights and diluting your market presence. Secondly, you are saving yourself a lot of heartache if you decide to lodge new trademark applications that incorporate the conflicting trademark. What does this mean? If you allow your competitors to register a trademark that is similar to yours, it is more likely than not that future trademark applications that you wish to lodge for your brand will be stopped by your competitors trademark. What’s more, you won’t be able to enforce your rights against this competitor in the future. They now have a defence and you may be viewed as having waived your rights to action against them. This highlights the importance of understanding the potential costs and ramifications of not taking action to protect your brand and why it might be more cost effective (and valuable!) to take action.
An opposition kicks off by lodging a notice of intention to oppose a trademark application with the Australian Trademarks Office, within a 2 month opposition period. You will then have one month to lodge your statement of particulars which sets out the grounds of your opposition. If the applicant of the trademark defends the opposition, then you will enter opposition proceedings, notwithstanding the option of a cooling off period where the proceedings are suspended so that the parties can negotiate a settlement.
Oppositions, like any legal proceeding, can be scary for small business owners but they needn’t be. In my experience, by adopting a smart, upfront strategy to oppose, these proceedings typically go into a cooling off period whereby the parties can negotiate a sensible, commercial solution that, if successful, puts an end to the proceedings.
If all else fails, business owners can start court proceedings against the parties believed to be infringing on their brand and trademark rights. Proceedings can cover aspects such as trademark infringement, misleading or deceptive conduct, copyright infringement and passing off. Court proceedings should be a last resort only where previous attempts to resolve the matter have been unsuccessful.
For more information on how to protect against trademark infringement, misleading or deceptive conduct or passing off, read part two of this blog series.
The next step
As we’ve demonstrated, creating a strong brand protection strategy is essential in protecting your brand and assets, but you need to be proactive and willing to enforce it. Here at Ethikate we pride ourselves on being brand protection specialists. We can work with you to (1) create and implement a strong, tailored brand protection strategy; and (2) enforce your brand and trademark rights for you. Click here to find out more!