Trade Mark Strategy in a First-to-Use Jurisdiction

Australia’s first-to-use trade mark system creates both opportunities and traps. A coherent portfolio strategy is essential for growing businesses.

Australia is one of a small number of common law jurisdictions where trade mark rights can be established through use, independently of registration. This creates a more forgiving environment for early-stage brand owners — but also a riskier one for those expanding internationally.

For businesses planning international expansion, the strategy shifts. In civil law jurisdictions and in the United States, registration is critical to establishing priority. Delayed filings can result in squatting, opposition and costly rebranding exercises.

Section 62A of the Trade Marks Act 1995 (Cth) provides a ground of opposition where applications are made in bad faith — a valuable tool where a third party has filed in an attempt to capture an existing brand. We have acted in a number of successful section 62A matters in recent years.

Our trade marks practice advises on clearance, filing, opposition and enforcement across Australian and international portfolios, integrated with broader commercial and corporate advice.

This publication provides general information only and does not constitute legal, tax or financial advice. Readers should obtain specific advice before acting on any information contained in this article.