So, you have been using your trade mark for a while. A few months down the line, you decide it’s time to register your trade mark – but someone else has filed a trade mark application for it first! You have a registered business name but never thought to register a trade mark. What are your options?
Did you know that in Australia, we have a ‘first to use’ system of trade mark? This means that in the situation above, you may be able to oppose a trade mark application on the grounds that you were the first to use it in Australia by providing evidence of your use, which can be a costly and lengthy process. You may have registered a business name, although it can assist in evidence of use, it does not give you a monopoly right over the trade mark. A business name merely provides a right to trade under a name other than your personal or company name.
Rather than having to file evidence of use, it is always easier register your trade mark from day one! Build this process into your product development. You not only have the benefit of being able to enforce your trade mark against infringing marks, but you do not have to prove that you were the first to use the mark in order to do so.
Interestingly, China has a ‘first to file’ system of trade mark – meaning that if someone manages to register your trade mark in China before you, you have fewer options to oppose. You would have to either find some ground to oppose the mark, purchase the trade mark from them or re-brand in China. If you have ever considered expanding into China, we highly recommend registering your trade mark as early as possible.
I’ve worked with many businesses to register and manage their trade marks both in Australia and overseas. Gladwin Legal also offers trade mark watching services to ensure that you’re the first to know about any infringing marks, whether in Australia or overseas. If you need advice regarding your intellectual property, give me a call on 1300 033 934 or email me at for a no obligation chat.