5th December 2018 - JACLYN-MAE FLORO

It is essential for every business to trade mark their brand name because a mark represents your product or service and distinguishes it from other products and services in the market. Registering your trade mark grants you the right to use an identifying sign exclusively, and a registered trade mark also comes along with legal certainty as to ownership of the brand.

Here are 6 steps that will assist you with filing a trade mark to protect the brand name of your business:

1. Assessing the Registrability of your Trademark

The function of a trade mark is to distinguish the goods and services of brand owners from their competitors.

Essentially, the purpose of a registered trade mark is to gain exclusive rights to a distinctive sign so that your products or services stand out and are recognised in a crowded market.

Be aware that generic or descriptive names such as “We Sell Burgers” are very difficult to register and are typically rejected by the Trade Marks Office because these give you a monopoly in a trade mark that other traders in your field legitimately want or need to use. Your trade mark must create a distinct visual impact.

It will also be difficult to register your trade mark if it is the same or similar to an earlier trade mark. This type of trade mark will likely be refused registration on the basis of “deceptive similarity” because customers may become confused or misled as to the origin of the products or services.

2. Classifying Trademarks

Under the trade mark classification search system, there are 45 classes of which 34 are classes of goods and 11 are classes of services.

In trade marking a brand name, you need to ensure that your mark is filed in the correct category to properly cover the goods or services that you supply.  A business often will have multiple classes in their trade mark applications to ensure protection is applied to all the categories of their supply. A qualified trade mark attorney will assist you to decide which classes are appropriate to your claim and ensure that the claim is drafted accurately.

If a trade mark specification is too narrow, you can give up valuable trade mark protection that you could otherwise obtain. We are known for drafting detailed trade mark specifications that provide an accurate and complete description of the goods/services that the mark is or will be used on or with!

3. Conducting a Trademark Name Search

A trade mark name search is often conducted to ensure that are no prior trade marks that are the same or similar to your trade mark. We see a multitude of trade marks filed, where there was an earlier trade mark on the register for same or similar trade mark. In these cases, the trade mark is rejected and you will often have to rebrand, and in some circumstances, it is a very expensive exercise to rebrand when your products or signage bears a name or trade mark that is owned by another person. Making sure that your business name is distinctive will lessen the likelihood of expensive legal and rebranding troubles.

4. Getting Help

Businesses engage IP professionals to assist with professionally file a trade mark. A search conducted by a trade mark attorney is likely to give you more complete results as to whether your trade mark is available. It is always best to ask assistance from an IP Attorney or  trade mark attorney to minimise your risk of legal and rebranding complications in the future.

5. Applying for your Trade Mark

Once you have conducted appropriate searches both on the Trade Marks Register and also on Google and the like, you are now ready to file your application. Make sure that you have all the necessary information about your product or service and other trade mark application details such as the owner’s name and address, the brand and correct classifications

6. Confirmation of Trade Mark Registration

It will take some time for the Trade Marks Office to respond to an application as the trade mark must undergo an examination and advertising period for oppositions if it is accepted. Registration takes 7 ½ months if everything goes smoothly. You will in due course receive a notice from the Trade Marks Office that your trade mark is now registered and you are eligible to enforce your trade mark rights.

Take Away Points

• Trade marking is essential to brand your business as the origin of supply to distinguish your supply from other traders in the market
• Assess your trade mark claim and see to it that the mark itself is not generic or descriptive.
• Is your trade mark the same or similar to an earlier trade mark?
• Conduct a trade mark search to make sure that the mark does not already exist in the Register to avoid legal complications in the future.
• Identify the correct categorization for your products and services.
• Consider the classes under which your products and services will fall. If you are not too sure, always seek legal advice from a trade mark attorney.
• Do it right and save on wasted costs, or expensive rebranding and legal fees in the future!

 

Jaclyn-Mae Floro, BCompSc

Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.au.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.