If you’ve registered a trade mark or you’re thinking about applying for one, you might be surprised to learn that owning a registered mark isn’t the end of the story, it’s just the beginning. The real value of a trade mark lies in its use. And not just any kind of “use” but use in a very specific legal sense.
What Does It Mean to Use a Trade Mark?
Under section 17 of the Trade Marks Act 1995 (Cth), a trade mark is a sign used, or intended to be “used”, to distinguish your goods or services from those of others. So naturally, using a trade mark means using it to do just that, i.e. to act as a badge of origin.
But the law breaks this idea down further. This is because, for your trade mark use to be legally recognized, it must be-
- As a trade mark (i.e. as a badge of origin)
- In the course of trade
- In Australia
- In relation to the goods or services listed in your registration
- By you (the owner), a predecessor, or an authorized user
“Use” as a Trade Mark
Not all use of a sign or word is considered “use as a trade mark”. Courts look at the context to decide whether your sign is doing the job of distinguishing your goods or services.
For example, simply describing a product like calling a moisturizer an “instant Botox alternative”, is not use as a trade mark. Eye-catching phrases don’t cut it unless they signal your brand, i.e. they won’t be legally protected.
On the other hand, even descriptive terms can be trade marks if they’re used prominently and consistently. The key is whether consumers would view the sign as indicating trade origin, not just product features.
Brand owners thus should assess whether their use counts, particularly when they’re dealing with composite marks (word + logo) or borderline descriptive names.
“Use” in the Course of Trade
This one’s broader than it sounds. You don’t have to actually sell goods to be using a trade mark in the course of trade. Offering goods for sale, running ads with your mark, distributing brochures, or even just preparing to sell (with a clear intention to do so) can all count.
For example-
- A prototype sale to test the market? That’s valid use.
- Distributing samples along with a price list? Likely okay.
- Just designing a logo or registering a business name? That’s not enough on its own.
What matters is the objective commitment to trading. If you’re taking steps to commercially launch your goods or services under the mark, that often qualifies.
“Use” in Australia
You must use the mark in Australia to secure and maintain protection. But that doesn’t mean every activity has to happen onshore.
Let’s say your product is made overseas but marketed and sold to Australian consumers online. That could count as use in Australia, i.e. especially if your website targets Aussies with pricing in AUD or shipping details. Without sales or marketing aimed at Australian buyers, your trade mark stands on shaky ground.
The brand owners here should focus on their marketing and documentation to make sure there’s a strong Australian use trail, particularly when intending to launch globally as well.
“Use” in relation to the goods or services
Use your trade mark in direct relation to your registered goods or services to maintain protection. Thus, this includes-
- On the product itself or its packaging
- On websites, brochures, and ads
- On invoices, receipts, or signage
- As part of a domain name or social media handle, where it identifies the business
It’s not enough to use the mark in isolation, i.e. you must link it to the actual trade in the listed goods or services. For example, using your mark in a press release about a product you haven’t launched yet won’t cut it unless you can show the product is already available or about to be.
“Use” by the right person
Trade mark use must be by the registered owner, or someone legally linked to them. This could be-
- A predecessor in title (like a company you acquired)
- An authorized user (like a licensee or a related entity)
That said, if a third party is using your trade mark but you have no control over how they use it, that use won’t count in your favor. Control can be direct (like quality checks) or indirect (through shared management in a corporate group), but it needs to be real.
Setting up and documenting licensing arrangements to make sure authorized use is clear, defensible, and won’t jeopardize your rights.\ is the right way to go about it.
When “use” becomes a problem (or your best defense)
Understanding trade mark use isn’t just a regular checkpoint. It becomes crucial when-
- If you haven’t used your trade mark in three years, anyone can apply to have it removed. You’ll need to prove qualifying use, or risk losing your registration.
- Showing prior or concurrent use can be your best defense in a legal dispute.
- You may still secure registration, even in the face of a conflict by proving honest concurrent use.
- Whether you’re negotiating licensing, selling a brand, or asserting your rights, a clear usage record strengthens your position.
Common mistakes (and how to avoid them)
Mistakes that could put your trade mark rights at risk are as follows-
- Using a different version of your mark– Adding or changing words, logos, or formatting might mean you’re no longer using the registered version. Make sure you’re not drifting too far from what’s on the Register.
- Assuming business name or domain is enough– These can support your case, but only if they show actual use in trade, i.e. like on a live website offering goods or services for sale.
- Letting a related entity using the mark without clear control– Even within the same group of companies, you need to be able to show control over the trade mark usage.
We work with our clients to keep trade mark portfolios strong and defensible. That includes reviewing brand usage across platforms, setting up licensing agreements, and helping document use when it matters most.
Need Help? We’re Here
We guide you, whether you’re unsure about your current usage, responding to a non-use application, or just getting started. At our firm, we combine sharp legal insight with a practical understanding of branding, marketing, and the real-world use of trade marks.
Get in touch if you’d like us to review your trade mark usage or make sure your registration is as strong and protected as it should be.
Contact us to learn more about how LexGeneris can assist you with all your intellectual property needs. You can also schedule a no-cost consultation with our team of expert IP Attorneys Australia, IP Attorneys India, and IP Attorneys New Zealand.
