Briefing Note - Using Trade Marks - Practical Tips

1. The first user of a trade mark acquires the right to register it. However, an entity concurrently using the mark may claim rights as a concurrent user, so be sure to seek registration as soon as possible.
2. Be sure to seek trade mark and legal clearances of a new trade mark, investigating in stationary, graphic design and advertising expenditure.
3. As trade mark registrations are territorial by country, register the trade mark in the countries in which the goods or services are to be sold or expected, keeping in mind the larger territories.
4. Use trade marks uniformly and in the manner that they appear on the Register of Trade Marks.
5. Ensure trade mark use in the market complies with branding strategies.
6. Invisibly embed the trade mark by using digital rights management and watermarking techniques.
7. Monitor competitors’ use of the trade mark, taking action immediately if there is any breach. This is especially important with a branded product that is first to the market, as there may be an assertion that it has become generic through ubiquitous use and the trade mark will be lost as a consequence.
8. Give constructive notice to others as to your rights and use the TM or ® symbol, © symbol if applicable, and ensure licensees do the same.
9. Do not make threats that trade mark rights have been infringed. Unjustified threats of infringement give rise to a claim to damages by the defendant where a court does not find that the mark is infringed at law.