Many start-ups or small businesses understandably try to bootstrap their businesses where possible with little or no venture capital. If this is the case, you want to use your resources wisely and save on expenses wherever you can. So when it comes to registering a trade mark, you need to decide whether you want to go the D.I.Y. route or hire a trade mark lawyer to help.
IP Australia, the Government agency that administers Australia’s trade mark registration system, offers lots of helpful advice and guidance on applying to register your own trade mark. However, things don’t always go as planned when you apply for your own trade mark registration without a really good understanding of trade mark rights. Here are some of the common pitfalls of D.I.Y. trade mark applications.
3 Common Pitfalls
Getting the classes wrong
When you apply for a trade mark, you need to describe the goods and services you want your trade mark to cover. IP Australia categorises these goods and services into various “classes”. It is essential that you get the description of your goods and services correct and file your trade mark in the right classes.
Some businesses successfully file their trade mark applications on their own, only to find out years later down the track that their trade mark registrations do not accurately or adequately cover the goods or services their businesses actually provide. These businesses end up not having the trade mark protection they wanted and needed.
For example, say that an Australian business that provides vehicle inspection services and sells third parties’ motor parts as part of that service files its trade mark application for vehicles and motor parts. The business may not be able to easily enforce its registered trade mark rights in relation to the inspection services it offers or to get the necessary protection through its registered mark. It also means that it may have trouble defending the registered mark. This can happen if a third party applies to have the registered mark removed because the business is not using the mark in relation to vehicles, engine parts, and motor parts but rather in relation to vehicle inspection services.
Choosing the wrong trade mark
Many businesses fall in love with a name for their new venture and are delighted to see when they do a simple search of the IP Australia database that it appears to be available. But the fact that an identical trade mark hasn’t been registered doesn’t mean that you will be successful in getting it across the line or that the trade mark is the best choice from a brand strategy perspective.
For example, suppose you try to register a mark or name that consists of words or phrases describing your goods or services, such as WOODEN, for furniture. In that case, you are likely to face registrability issues from IP Australia. You may also have difficulty enforcing your trade mark as you are unlikely to be able to stop another trader from using the word WOODEN when describing their furniture. Putting a good brand strategy together before you adopt a trade mark can help to avoid this pitfall.
Not conducting a proper search
Trade mark searches can be complex. You need to do more than just run a simple search for identical trade marks on IP Australia’s website. Before you start investing in building your brand, you want to make sure that there are no other businesses with registered or unregistered trade marks that are deceptively similar to your trade mark in the same or related classes. This includes names that may sound or look very similar to your trademark or may consist of other words but still have a similar “key element”.
Suppose you apply for a trade mark without adequate searches. In that case, you may invest in the brand and then be faced down the line with either a formal opposition to your trade mark application or, worse, a cease and desist letter demanding possible damages and a rebrand.
How Level Up Legal Can Help
Our lawyers at Level Up Legal can assist you with full availability trade mark searches, trade mark applications and registrations, trade mark maintenance, and management of portfolios. We also advise on whether your trade mark application is likely to be successful. We work on affordable, fixed fees for these matters.
Contact us for an initial free chat and to get a fixed fee quote.