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ARTICLE · 24 MAY 2019

Trade mark licensing – common questions and mistakes

These recent cases highlight the importance of ensuring that your trade mark arrangements are in place and effective.

AustraliaIntellectual Property

Trade marks are core assets of many businesses, but in our experience they are often overlooked. A few recent cases have highlighted just how important it is to make sure your trade mark arrangements are in place and effective. Registering a trade mark is not the end of the process; there have been many cases of businesses 'setting and forgetting' their marks only to have their registrations challenged.

Here are a few questions we often get:

Once my trade mark is registered, do I have to use it?

Yes. Trade mark registrations are granted on a use it or lose it basis.

Do I have to use the trade mark personally?

No, you can allow someone else to use it. This is usually done through a written licence agreement, in which the trade mark owner grants another party the right to use the trade mark on certain conditions.

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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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