What to do before you apply for a trade mark

Lodging a trade mark application with IP Australia is a straight forward process and many people tackle this task themselves. Trade mark law is not straight forward, however, so unfortunately lots of people end up with registered trade marks that provide substandard protection or no protection at all. Many people run into problems that could have been avoided and their trade marks don’t get registered.

So, before you lodge your trade mark application there are a few questions you should answer:

What is your brand protection strategy?

If you intend to only get one trade mark registered you will need to decide which mark in your business needs the protection the most. Is it your business name, product name, service name, tag line, logo, colour combination, product shape? Which is most at risk of being copied? Which one earns you the most income? Which one is the most valuable asset? Which one are you using the most?

Before applying for a particular trade mark you should consider your business as a whole as well as your plans for your business over the next few years. Then you will be able to outline a strategy for how you can best protect your business going forward.

Is your thing (your brand, business name, logo, etc) a trade mark?

This seems like a pretty obvious question yet you’d be surprised at how many people lodge their trade mark application without first checking that the thing they want to register actually meets the legislative definition of a trade mark.

IP Australia don’t check this. It is possible for something to be registered as a trade mark with IP Australia BUT it’s not actually a trade mark. If this happens the registration will be unenforceable and will be effectively useless.

Do any of the grounds for rejecting your application apply?

If your application is at risk of being rejected because it triggers one of the grounds for rejection under sections 39 to 44 of the Trade Marks Act 1995 (Cth) then it’s better to know that BEFORE your application is lodged and you pay your fees.

This is the step where you’ll need to do a thorough search for similar trade marks already registered in Australia, as well as any unregistered trade marks that might be problematic. Keep in mind that the interpretation and application of the Trade Marks Act 1995 is shaped by decisions of the Trade Marks Office and the Federal Court of Australia so knowledge of these cases will assist you in determining how the various sections of the Act apply to your business.

Once you’ve considered your mark in relation to each of the grounds for rejection you can make an informed decision whether to proceed with your application or not. If potential issues are identified but you decide to go ahead with your application anyway, having this knowledge will help you to anticipate the issues that may be raised by the examiner or in an opposition proceeding and you’ll have extra time to gather the evidence or additional information the examiner or hearing officer may require.

Are you trading overseas or planning on trading in countries outside Australia?

If you plan on trading in any countries outside Australia then you will also want to check whether your mark will be infringing any registered or unregistered trade marks in that jurisdiction. Many businesses miss this step and get caught out, having to change their name or rebrand when they expand their business overseas.

What will happen if you skip these steps and go straight to lodging your application? Maybe nothing. But maybe you will get an adverse examination report from the IP Australia examiner. Maybe your application will be opposed by a competitor. Or maybe your trade mark will get registered but it doesn’t provide sufficient protection when you try to enforce it. Or maybe a competitor will challenge your trade mark and get it removed from the register. There’s no way we can look into the future, but if you’ve answered these questions you’ll be aware of possible issues and will be able to be proactive in addressing them.

That’s my mission:

To empower business owners to be proactive in the legal protection of their brand

Do you have the knowledge and information you need to protect your brand?

NOTE: Keep in mind that IP Australia can advise you on the application process but cannot provide you with legal advice on how to get the best protection for your business. To get that kind of advice you will need to speak to an intellectual property lawyer or trade marks attorney.