Episode #40
Who’s Using Your Trade Mark? How to Monitor and Protect Your Brand - Ep 38
Who’s Using Your Trade Mark? How to Monitor and Protect Your Brand - Ep 38 Registering a trade mark is an important step—but it does not mean IP Australia will monitor the market or automatically stop other businesses from adopting a similar brand. Following on from the BROWN NOSE DAY case, this episode looks at what happens after registration. The Full Federal Court confirmed in Registrar of Trade Marks v National Cancer Foundation Limited [2026] FCAFC 95 that the Registrar’s post-registration revocation power is exceptional. It is not a substitute for opposing a trade mark during the proper opposition period. The practical lesson is simple: if you want to protect your brand, you need a system for detecting potentially conflicting applications and real-world use before the problem becomes harder—and more expensive—to resolve. In this episode, Elise explains how businesses can monitor their trade marks, how the IP Australia opposition process works and what options may be available when a possible infringement is discovered. In this episode Why registering a trade mark does not create an automatic monitoring service The difference between monitoring the Trade Marks Register and monitoring the marketplace What to watch for beyond exact copies of your brand How to search for similar names, misspellings, logos and related goods or services Using trade mark watching services, search alerts, social media, domain records and online marketplaces Why ASIC business name registration does not give the same rights as trade mark registration The key stages in an IP Australia trade mark opposition and the two-month window for filing a Notice of Intention to Oppose The difference between opposing an application and pursuing trade mark infringement What evidence to preserve when you discover possible infringement Options including an informal approach, a letter of demand, negotiated undertakings, platform complaints, domain name proceedings, Australian Border Force notices and court action Why not every similar mark requires a legal fight How to create a practical, proportionate monitoring plan for your business The IP Australia opposition process Once a trade mark application is accepted, it is advertised so third parties have an opportunity to oppose it. A person wishing to challenge the application generally needs to file a Notice of Intention to Oppose within two months after acceptance is advertised. The opponent must then file a Statement of Grounds and Particulars identifying the legal grounds relied upon and the facts supporting them. If the applicant defends the application, the matter may proceed through evidence and a hearing before an IP Australia hearing officer. Some disputes are resolved commercially—for example, by narrowing the goods or services, changing the proposed brand or negotiating an appropriate coexistence arrangement. An opposition determines whether the application should be registered. If the applicant is already using the mark, a separate enforcement strategy may also be required. A practical monitoring plan A useful system does not need to involve watching every corner of the internet every day. It should reflect the value of the brand and where infringement is most likely to occur. Start by: Identifying your core business names, product names, logos, taglines and distinctive packaging. Recording what is registered, who owns it, the relevant goods and services, countries and renewal dates. Selecting the registers, search engines, domains, social platforms and marketplaces that matter to your business. Giving one person responsibility for reviewing alerts and recording deadlines. Creating a response process so evidence is preserved and each issue is assessed consistently. Registration gives you the legal right. Monitoring gives you the opportunity to protect it at the right time. Case discussed Registrar of Trade Marks v National Cancer Foundation Limited [2026] FCAFC 95—the BROWN NOSE DAY trade mark case. View the Federal Court online case file Useful resources Search Australian trade marks IP Australia: How to challenge someone else’s IP IP Australia trade mark opposition flow chart Australian Border Force: Notices of Objection Check your own IP risks Not sure whether your important brands and other intellectual property are properly identified, owned and protected? Complete the free IP Risk and Ownership Audit to identify potential gaps in your business. For further information or to book an IP Strategy Call, visit www.elisesteegstra.com . Disclaimer: This podcast is intended for general educational purposes only and does not constitute legal advice. You should obtain advice tailored to your circumstances before acting on any information discussed in this episode.
