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Trade Mark Series

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Brand Control, Part 10: “The Brand Lives On” — Trade Marks in Exit, Investment, and Succession

Your brand might be your single most valuable asset. But when serious money is on the table — whether in an investment round, a business sale, or passing the business to the next generation — the question isn’t just what your brand is worth. It’s whether it can stand up to scrutiny.

💰 IP in Due Diligence

Investors, acquirers, and their lawyers will dig deep. Expect questions like:

  • Does the entity actually own the trade mark registrations?

  • Are they registered — and in the right markets?

  • Are there pending disputes, opposition proceedings, or known copycats?

If the answers aren’t clear, expect your deal timetable (and possibly your deal value) to suffer.

🔗 Assignment and Licensing Clean-Up

A surprising number of brands have messy ownership histories. Fix them now, not during due diligence:

  • Ensure every assignment is documented — especially transfers from founders or prior owners.

  • Identify and resolve any co-ownership or “grey” IP where a contractor or third party may have rights.

  • Review licensing arrangements, particularly where related entities use the brand, to ensure they’re properly authorised.

An untidy chain of title can turn into a deal-breaker.

🧓 Succession Planning

For personal brands and family-run businesses, registered trade marks make succession far smoother. A registered right can be assigned or licensed in a clean, documented transfer — helping preserve not just the name, but the goodwill behind it.

💡 IP Mojo Tip
Your brand won’t retire when you do. If you want it to survive a sale, investment, or handover, protect it like an asset — not a slogan. A clean title today can be worth millions tomorrow.

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Brand Control, Part 9: “From Garage to Global” — Building an International Brand Protection Strategy

Your brand might be born in a garage, a studio, or a co-working hub — but if your business has international ambitions, your trade mark strategy needs to grow up fast.

Exporting? Licensing? Franchising? Operating online with overseas customers? You’ll need more than an Australian trade mark certificate. You’ll need an international brand protection plan.

🌍 Start Local, Think Global

The journey starts at home. To secure international protection, you’ll almost always need to file in your “home” country first. For Australian businesses, that usually means filing with IP Australia before looking abroad.

From there, you have options:

1. The Madrid Protocol
This is the global trade mark filing system administered by WIPO. It lets you extend protection to 130+ member countries through a single application, based on your Australian filing. It’s cost-effective, streamlined, and a good first step into international protection.

2. National Filings
Some jurisdictions don’t play well with the Madrid system. Others may be technically covered by Madrid but are better handled directly due to practical issues or local procedural hurdles. In those cases, it’s worth filing directly through local counsel.

📆 Timing Is Critical

Trade mark rights are territorial — and in some jurisdictions, the “first to file” gets the prize, regardless of who used it first.

Fortunately, the international system gives you a 6-month priority period from the date of your first (Australian) application. If you file overseas within that time, your foreign applications are treated as having the same filing date as your original Australian one.

Miss the window? You risk losing rights to local trade mark squatters — especially in high-risk jurisdictions like China or parts of South America.

✋ Local Sensitivities and Brand Bloopers

Global trade mark strategy isn’t just about paperwork. It’s also about cultural nuance, language, and local business practices.

Brand names that work in English might fall flat — or worse — elsewhere.
The Mitsubishi Pajero famously ran into trouble in Spanish-speaking markets because “pajero” has an unfortunate slang meaning. Even benign names can run into problems if they’re hard to pronounce, culturally insensitive, or already associated with local businesses.

And in China, don’t delay. It’s a strict “first to file” jurisdiction, and trade mark squatting is endemic. If your brand has potential in China, file early — even if you’re not trading there yet.

✅ Practical Tips for Expanding Globally

  • File early: Don’t wait until you enter a market. File when you’re even considering it.

  • Use the Madrid Protocol — but wisely: It’s efficient, but not always the best fit for every country.

  • Check for conflicts: Do clearance searches in each target market to avoid headaches later.

  • Localise carefully: Think about transliteration, local language versions, and regional variants of your mark.

  • Work with local counsel: Especially in high-risk or high-value jurisdictions.

💡 IP Mojo Tip:

Your brand can travel — but it needs a passport.

Registering internationally isn’t just a legal formality. It’s your defence against copycats, squatters, and lost market opportunities.

A global brand strategy doesn’t mean filing everywhere. It means filing smart — in the markets that matter to your business, at the right time, in the right way.

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Brand Control, Part 8: “Don’t Touch That Dial” — Monitoring and Enforcing Your Brand Rights

Registering a trade mark isn’t the end of your brand protection journey — it’s the start of your enforcement strategy.

Your registration gives you the legal tools to stop others from using your brand — but your competitors are not going to put their hand up from time to time and say “Hey, I just starting using a trade mark just like yours – hope you don’t mind!”.

Enforcement is not someone else’s job – it’s yours. If you don’t police misuse, you may not just miss an opportunity to stop infringement — you could also weaken your rights over time.

So what does effective brand monitoring and enforcement look like in practice?

👀 Watching the Watch List

If a competitor (or clueless newcomer) adopts a brand that’s similar to yours, you’ll only know about it if you’re actively watching. Here’s how to stay alert:

  • Trade Mark Monitoring: Keep an eye on the IP Australia register. You can use the official ATMOSS search tool, subscribe to their watch notices, use automated platforms like Markify or CompuMark for more comprehensive coverage, or hire an expert IP lawyer to watch for you (click here for details of one expert IP lawyer you should get to know).

  • Google Alerts: Set up alerts for your brand name — and for phonetically or visually similar names too. It’s free and easy, and can alert you to online content that references the brand.

  • Domain and Social Media Monitoring: Watch for new domain registrations, especially .com.au and .com variants. Do the same for social handles — brand impersonation or opportunistic registrations are common, particularly with new or growing businesses.

🛡️ Enforcement Options

Once you detect a potential issue, you’ve got several tools at your disposal. The right approach depends on the facts — and your appetite for escalation.

  • Letter of Demand: Often your first step. It should be firm but not aggressive — and proportionate to the conduct. Overreaching can backfire, both legally and reputationally.

  • Opposition Proceedings: If someone tries to register a trade mark that conflicts with yours, you can oppose the application within the allowed timeframe. Don’t let similar marks slip onto the register unchallenged.

  • Infringement Action: For more serious or persistent issues, you may need to bring proceedings in court. You’ll need to prove use of your registered mark and that the other party’s mark is either substantially identical or deceptively similar.

  • Misleading or Deceptive Conduct: If a competitor’s conduct is causing confusion — even if it doesn’t meet the threshold for trade mark infringement — you may have a claim under the Australian Consumer Law.

  • Passing Off: This common law action protects the goodwill associated with your brand. If a competitor is misrepresenting their goods or services as being connected with yours — for example, by copying your get-up, name, or branding in a way that misleads consumers — you may be able to bring a passing off claim. You’ll need to show that you have a reputation in the mark, that the conduct is likely to cause deception, and that you’ve suffered or are likely to suffer damage. It’s often run alongside an ACL claim, but can also stand alone — especially if your mark isn’t registered.

  • Take-Down Mechanisms: Major platforms (Amazon, Meta, Google, domain registrars) have processes for removing infringing content, counterfeit listings, or cybersquatted domains. These are often faster and cheaper than court action, and can be effective — if you have the paperwork and rights to back it up.

💡 IP Mojo Tip

Silence equals permission. If you don’t act against brand misuse, courts and platforms may assume you’re okay with it. That can hurt your position if you later try to enforce your rights — and it can embolden others to test your boundaries.

Staying vigilant is part of staying strong. A trade mark isn’t just a certificate on a register — it’s a tool to be used. Know when and how to use it, and your brand will thank you later.

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Brand Control, Part 7: “Beyond the Logo” — Trade Marking Product Shapes, Sounds, and Scents

When most people think of trade marks, they picture logos or brand names — the usual suspects. But in the eyes of the law, a trade mark is any “sign” capable of distinguishing your goods or services. That opens the door to a broader, bolder set of brand assets.

Welcome to the world of non-traditional trade marks — where shapes, sounds, colours, and even scents can be legally protected.

🧴 What Can You Register?

Some of the most iconic brand cues aren’t names or logos — they’re sensory experiences. And if consumers link that experience to your business, it might just qualify for registration.

Shapes
Examples:

  • The triangular prism of a Toblerone bar

  • The unmistakable contour of a Coca-Cola bottle

But be warned: shape marks face serious scrutiny. If the shape is dictated by function or gives a competitive advantage (like a handle or grip), it likely won’t qualify. The Mayne Industries decision is a key example of this strict approach.

Sounds
Think:

  • The MGM lion’s roar

  • The McDonald’s “I’m lovin’ it” jingle

To register, the sound must be distinctive and consistently used as a badge of origin — not just part of an ad.

Scents
Rare, but not impossible. One of the few global successes? A floral fragrance registered in the U.S. for sewing thread. Australia is stricter — but if you can prove that your scent is uniquely linked to your brand (and not functional), it may stand a chance.

Fun fact: As at the date of publishing this blog post, there are only two registered scent marks in Australia – one being for a eucalyptus scent applied to golf tees, and the other for a cinnamon scent applied to non-wood based furniture.

How oddly specific …

Colours
Cadbury’s battle to protect its signature purple (Pantone 2685C) is the most high-profile example in Australia. Colour marks are hard to secure — especially for common colours or combinations — but can be powerful if consumers identify them with your business.

🎢 The Legal Hurdles

These marks face a higher bar than standard word or logo marks. Here’s why:

  • Inherent distinctiveness is rare. Most non-traditional marks only succeed if they’ve acquired distinctiveness through long-term, exclusive use.

  • Functionality kills applications. If a shape or sound serves a practical or aesthetic purpose, it’s unlikely to pass.

  • You’ll need evidence. Think sales volumes, advertising spend, market surveys, and media references that link the feature to your brand.

This isn’t checkbox territory — it’s prove-your-case territory.

💡 IP Mojo Tip

Your brand isn’t limited to what you can type or sketch. If your product’s shape, jingle, colour, or even fragrance makes people think of you — and no one else — you may be sitting on a powerful trade mark.

Just remember: non-traditional doesn’t mean non-challenging. You’ll need to back it up with serious evidence. But for brands that break the mould, the legal protection is well worth the effort.

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Brand Control, Part 6: “Use It or Lose It” — Genuine Use and Trade Mark Non-Use Risks

Registering a trade mark is a powerful step in protecting your brand — but it’s not a “set and forget” exercise. A trade mark registration gives you exclusive rights, but only as long as you’re actually using the mark. If not, those rights can be challenged — and even removed.

Welcome to the world of non-use risk.

⏳ The Non-Use Sword of Damocles

Under section 92 of the Trade Marks Act 1995 (Cth), a registered trade mark can be removed from the register — in whole or in part — if it hasn’t been genuinely used in Australia for a continuous period of three years.

It’s not enough to just own the registration. If someone applies to remove your mark, and you haven’t been using it properly, the burden shifts to you (under section 100) to prove genuine use.

You get a couple of years’ grace when you first apply to register a mark – no-one is allowed to strike it out for non-use within its first five years.  However, after that period, if you haven’t got evidence of use of the mark as a trade mark within the last three years, practically anyone can apply to IP Australia to strike the registration out for non-use.

It’s also important to note that minimal or token use — or use for goods/services that fall outside your registered classes — might not be enough to save the mark.

✅ What Counts as “Genuine Use”?

Genuine use means real commercial use — not legal window-dressing.

Examples include:

  • Selling goods or services under the mark in Australia

  • Use of the mark on product packaging, websites, online listings, advertisements, invoices or other customer-facing materials

  • Promotional campaigns that demonstrate actual market exposure

Crucially, the use must occur in Australia, or in the jurisdiction where the mark is registered. International use won’t save an Australian registration.

❌ What Doesn’t Count?

Some activities may feel like “use”, but the law may see them differently — especially if challenged:

  • Trade mark squatting — registering marks with no intent to use them, just to block others or hold for ransom

  • Keeping a dormant website with no actual trading activity

  • Intra-group transfers or token licensing that generate no public exposure or commercial sales

Courts are good at sniffing out contrived “use” made only to defend against a removal action.

💡 IP Mojo Tip

Use it like you mean it.

A registered trade mark is only as strong as the use that backs it.  You should:

✔️ Keep good records of sales, ads, online listings and brand use.

✔️ Don’t register in broad classes “just in case” unless you can genuinely support that use.

✔️ If you’re not using part of your registration — and don’t plan to — consider cleaning it up proactively before someone else forces the issue.

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Brand Control, Part 5: “The Subtle Art of Brand Control” — Trade Mark Ownership and Assignment

Trade marks are valuable assets — but like any asset, their value depends on who owns them.

Too often, businesses assume that if they’re using a brand, they own it. But that assumption can fall apart quickly in the face of legal scrutiny, especially when an investor, acquirer or opposing lawyer starts asking questions.

Getting trade mark ownership wrong isn’t just a technical slip. It can torpedo a funding round, delay a sale, or even expose a business to infringement claims from within its own camp.

🔗 Common Ownership Traps

Let’s start with a few real-world scenarios where ownership can become dangerously unclear:

1. Employees vs Contractors
If an employee develops a brand name or logo in the course of their employment, the default position is that the employer owns it. But if you used a contractor — say, a freelance designer or marketing agency — then unless there’s a clear written agreement transferring IP, they may legally own the mark.

This is especially true if the contractor applied to register the trade mark themselves — and it happens more often than you’d think.

2. Founders and Side Projects
A founder might register the brand name in their own name early on, before the business is incorporated. That might seem harmless — until the business seeks capital, or goes to sell, and it turns out the company doesn’t actually own its own brand.

Investors will spot this immediately in due diligence. So will buyers. And neither of them will want to negotiate with a founder’s ego when they’re paying for a company asset.

3. Joint Ventures
When two businesses collaborate on a new offering, they often co-create a brand. But without an express agreement, who owns it? Half each? One party? Neither?

Ambiguity in a joint venture brand is a recipe for dispute — particularly if one party starts using the brand solo down the track.

📑 Assignments and Transfers: Cleaning Up the Chain of Title

The good news? Trade marks are assignable — they can be transferred from one entity to another like any other form of property.

But they need to be:

  • Documented in writing — via a deed or agreement; and

  • Formally recorded with IP Australia (if the mark is registered).

Some common triggers for assignment include:

  • Business restructures (e.g. transferring IP from founders to the company, or from one group company to another)

  • Sale of business or assets

  • Fixing past mistakes (e.g. if a mark was filed by one entity but you want the trade mark held by another entity)

You can’t just tell people a trade mark belongs to your company. If it was registered under someone else’s name — a founder, contractor, or prior owner — you need to assign it, and record the transfer.

🚫 Assignments Don’t Cure Invalidity

Be careful — an assignment won’t fix an invalid application.

If a trade mark application is filed in the name of a party who is not the true owner of the mark at the time of filing, the application is invalid. You can’t fix that simply by assigning it later to the correct entity. The application is fatally flawed from the start — and may be removed or opposed on that basis.

So how do you know who the “true owner” is?

Ask:

  • Who created the mark?

  • Was it created by an employee, contractor, or external agency?

  • Was it commissioned, and if so, under what terms?

  • Who controls the use of the mark in trade?

  • Who will actually use the mark in connection with goods or services in Australia?

In most cases, the true owner is the entity that first intends to use the mark, or controls its use in trade and commerce. If you’re registering for a company that doesn’t exist yet — wait until it’s incorporated. If you’re using a contractor, make sure IP is assigned before the application is lodged.

If you’ve already used the mark as a trade mark before getting your corporate structure sorted, then the person or entity that first used it is probably the true owner. In that case:

  • Either apply in that party’s name, or

  • Assign the trade mark to your intended applicant before filing.

In either case, get tax and accounting advice first — there could be capital gains tax or other structuring implications worth considering before assigning IP or applying under the wrong name.

💡 IP Mojo Tip

Own the brand before you build the brand.

  1. Identify the true owner on day one – the party that first creates and controls use of the mark.

  2. Put it in writing – deed of assignment or employment/contractor clauses that clearly vest IP.

  3. Record it – lodge the assignment (or the application) in the correct name with IP Australia straight away.

  4. Audit early, audit often – confirm ownership before every financing, restructure, or marketing push.

If you nail these four steps, you’ll avoid the “who-really-owns-it?” drama that derails deals and drains legal budgets.