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The biggest mistakes made by businesses lodging their own trade mark applications

By August 17, 2016Application process
biggest mistakes trade mark applications

Jump into any business Facebook group and you’ll find heaps of people who’ll tell you that it’s easy to do your own trade mark application. What they don’t tell you is that it’s also easy to muck it up (and they don’t tell you that because they don’t know the difference between an effective trade mark and a useless one).

Below is a list of the biggest mistakes I see from people who do their own trade mark applications. I hope this helps you to avoid making these mistakes too!

Mistake 1: Get your legal advice on Facebook

Facebook is full of wonderful, supportive business communities where business owners love to lend each other a hand. The down side of this environment is that many people share and give their opinions, even when they don’t have the expertise to do so. A Facebook post is a place where complex issues tend to get vastly oversimplified. Deriving your trade mark advice from business owners on Facebook is akin to diagnosing your medical condition with Dr Google, dangerous and probably more expensive in the long run. The trade mark application process is simple but trade mark law is not and good legal advice is always dependant on the fact situation of each case.

Mistake 2: Assume that it’s going to be easy

I’m contacted weekly by people who’ve lodged a trade mark application but have been unable to get it approved. In most cases their application never stood a chance of success because their trade mark doesn’t meet the legal requirements.

Getting a trade mark is a legal process, not an administrative one. There are legal tests that must be met before your trade mark application will be approved. You can find those legal tests in section 39 to 44 of the Trade Marks Act 1995 (Cth) and understanding how they operate can save you time and money in the long run.

Mistake 3: Think that IP Australia staff can give you legal advice or advice on how to best protect you business

IP Australia staff are not lawyers and they are not allowed to give you legal advice. They can explain the trade marking process but they can’t advise you on how to draft your application for greatest legal protection.

Mistake 4: Don’t consider which trade mark (or trade marks) are the best ones to protect

Most businesses are using multiple trade marks as part of their brand but can’t afford to get more than one or two protected by a registered trade mark. This means making a decision about which marks are most valuable and need protecting. Choosing the right trade mark to protect means considering the scope of protection that can be provided for each of your trade marks as well as many other factors.

Mistake 5: Think that the trade mark classes are important when it comes to legal protection

The cost of your trade mark will depend on how many classes are included in your application. Trade mark classes are also extremely helpful when it comes to doing a thorough search of trade mark databases. But trade mark classes are NOT important when it comes to determining the scope of legal protection provided by a trade mark.

Mistake 6: Give up when your application is rejected in the first instance

Lots of trade mark applications are not accepted in the first instance because the trade mark examiner is concerned that they don’t meet the legal requirements for registration. This does not mark the end of the application process. You can provide evidence to the examiner to overcome the legal issues and, if successful, your trade mark can still be registered.

Mistake 7: Assume that all trade marks are created equal

Sadly, this is the mistake that’s most likely to come back to haunt the people who do their own trade mark applications. All trade marks are not created equal and it’s definitely possible to have a trade mark that’s useless when it comes to actually protecting your brand.

Doing your own trade mark application is like drafting your own will. Years can go by with you thinking that everything’s fine but by the time you find out that you’ve mucked it up it’s far to late to do anything about it.

Trade Marks Attorneys have specialist qualifications in the area of trade mark law and they can make sure that you don’t make any of these mistakes.

Find out more about What Trade Marks Attorneys do over here.

Lisa Win

About Lisa Win

Lisa Win is a registered Trade Marks Attorney in Australia who helps business owners get the best possible legal protection for their brand.

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