October 2019

Trade Mark Monitoring

A Business Essential

You are currently building your reputation in the marketplace and your brand is becoming a
valuable economic asset for your company. To ensure you a monopoly on your sign, you
have registered your trade mark and your trade mark is protected for 10 years renewable
from now.

However, you must be aware that registering a trade mark is only the first step to protect
efficiently a trade mark over the time. Indeed, once registered, the trade mark owner has
the responsibility to use and maintain his trade mark! This means that you have to keep an
eye on your trade mark and defend it if necessary.

First of all, in order to inform your competitors that your trade mark is now registered, you

must start to display it with the ® (R) symbol next to it whenever it is used. Moreover, you
must remember to pay the appropriate renewal fee and make changes to your registration
details if and when it is required.

On the other hand, there are a number of things to consider when it comes to using and
maintaining a trade mark in the marketplace, including trade mark opposition, removal for
non-use and trade mark infringement. In this regard, trade mark monitoring is an efficient
and affordable solution to keep your trade mark safe.


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As a trade mark owner, you must be aware that if your trade mark
becomes a generic name for the goods and services covered in your trade
mark registration, a third party could have your registration cancelled
through courts.

Ø Ensure that the trade mark remains

The Trade Mark Monitoring will enable you to: distinctive over the time

Ø Oppose an identical or similar trade mark As a trade mark owner, you must be aware that if
registration your trade mark becomes a generic name for the
goods and services covered in your trade mark
As a trade mark owner, you must check the new registration, a third party could have your
and existing trade marks being used in your registration cancelled through courts.
industry and oppose the acceptance of any trade
mark application, potentially infringing your trade Here are examples of registered trade marks that
mark. lost their protection as trade marks by becoming
the common name of the good or service claimed
Ø Avoid a removal for non-use in the registration: Aspirin, Cellophane, Escalator,
Kleenex, Velcro, Linoleum, trampoline and
As a trade mark owner, you must be aware that if Thermos.
your registered trade mark is unused for three
years, it can be removed from the Trade Marks Ø Defend the trade mark against trade
Register. To avoid the removal of your trade mark infringement
mark, you have to make sure that you are using it
in the marketplace for all the goods and services As a trade mark owner, you must vigorously
claimed in the trade mark registration. Otherwise, defend your trade mark against potential
you could lose your trade mark. infringers. Allowing other traders operating in the
same market area to use an identical or similar
sign can cause severe confusions in the
marketplace and significantly decrease your
brand value.

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One IP International Pty Ltd
Our Trade Mark Monitoring Service

We specialize in Trade Mark matters and we can help you keep your trade mark
safe.

In order to ensure an all round protection, we have established a sophisticated
Trade Mark Monitoring Service. What our Trade Mark Monitoring Service can do for
you?
- Identify and analyse all new and existing trade mark applications, potentially
infringing your trade mark(s) in Australia and worldwide;

- Provide you a monthly report with proper advice on your trade mark;

- Advise and assist you in relation to a trade mark opposition procedure;

- Advise you in relation to the market trends, competitors’ trade marks and
the opportunities in your industry.

Our Monitoring Service can be tailored to each client’s specific requirements.
Therefore, please do not hesitate to provide us with your trade mark details and we
will assist and advise you accurately.

OLAF KRETZSCHMAR JADE GALLATO

COMPANY DIRECTOR / IP CONSULTANT PARALEGAL

One IP International Pty Ltd

IP Consultants
Registered Foreign Lawyers Australia

Level 32, 200 George Street
SYDNEY NSW 2000 Australia

Phone +61 (0)2/ 8277 4114
Facsimile +61 (0)2/ 8277 4100

office@one-ip.com.au
www.one-ip.com.au

Copyright © 2019 One IP International Pty Ltd