News / Warning on trademarks /
Warning on trademarks
28 February 2013
In recent times clients have told us that they have received an increasing number of unsolicited approaches, touting for payment in relation to their IP rights and in particular their Australian registered trademarks. There are a number of ways in which these approaches are presented.
In one example, the approach is set out in the form of an invoice and headed "Registration of Trademark Selection". They are commonly sent to people who have applied to register a trademark, when their contact details have been made publically available (as trademark applicants must include contact details as part of their application).
Although the heading may be confusing, the approach shows the importance of reading the fine print, which states "This is a solicitation. You are under no obligation to pay the amount stated on this letter unless you accept this offer". The offer is said to be for "registration in our exclusive catalogue which provides notice to others that [your] trademark/service mark is already taken". Of course, that benefit is already available to parties who have registered their trademarks through IP Australia.
When you register a trademark in Australia, you obtain the exclusive rights to use that mark within Australia. There is no "international registration" and generally no need for you to register the mark overseas unless you are going to use the mark offshore. In that case, it is necessary to choose the specific countries in which you wish to register. In many cases you can use your local registration as the basis for an application in another country. However, you will need to apply specifically to register the mark in each country where you require protection. You have no obligation to register your mark in another country if you do not wish to do so and no obligation to pay any registration fees to an entity in another country in order to protect your trademark, if your mark is only registered in Australia.
We have also seen a rise in correspondence from Network Service Companies offering to protect your domain name, e.g. "ABC.com" or "ABC.com.au" in China by registering another top level domain (containing a country suffix), for example "ABC.cn". Alternatively, the approach may say that another party wishes to register your company name as their domain in China. These offers claim that the service company can protect your domain name and to stop others from using it. Similar to the position in relation to Trademarks, there is no need to protect the domain name "ABC.cn" (unless you specifically wish to have a Chinese domain) where your predominant domain "ABC.com.au" and/or "ABC.com" is already registered.
If you require further information in relation to unsolicited approaches, the ACCC maintains an internet page known as scamwatch which can be accessed at www.scamwatch.gov.au. Alternatively, please feel free to contact us should you have any queries in relation to your marks or domain names, and in particular if you receive correspondence (from offshore) in relation to your name, marks or domain.
For more information contact:
Andrew Nicholson | Partner
t +61 7 3224 0261
f +61 7 3224 0333