3 Reasons Why You Should Work With A Lawyer When Applying For A Trade Mark
George Raptis
Applying for a trade mark can seem like a daunting task at first glance. From all the requirements in your application to considering the needs of your business, there is a lot that goes into the application process. To help you when applying for a trade mark, it is a good idea to consider working with an expert lawyer or a specialised trade mark attorney.
A Lawyer or A Trade Mark Attorney?
In television and cinema (especially from the USA), it is common to find that the words ‘lawyer’ and ‘attorney’ are interchangeably used. However, in Australia, they take on different meanings. For this reason, you must understand their different roles before you seek out their advice.
A lawyer is qualified to give general legal advice after completing a law degree and supervised practical training. The term lawyer can refer to either a solicitor or a barrister. More specifically, a trade mark attorney is a lawyer who is specifically qualified to advise you on trade mark law. A trade mark attorney can also act on your behalf to apply for a trade mark.
There are various components involved in filing an application for a registered trade mark. Given the costs and time involved in applying for a registered trade mark, you want to ensure you get your application right the first time to minimise the risk of IP Australia rejecting your application.
1. Choosing the Correct Trade Mark Class
In your application, you must specify which of your business’ goods and services your trade mark will operate to protect. You must specify which of the 45 classes your business’ goods and services fall under. Your trade mark will only be capable of protecting the class of goods and services IP Australia approves in your application. For example, suppose your business sells car parts and provides car repair services, but you only register a trade mark in connection with the car parts. Unfortunately, your trade mark would only be able to protect the goods offered by your business. You should also note that you cannot amend your application by including additional classes that you may have forgotten to initially include once you submit your application.
A trademark attorney can alert you to all the classes relevant to your business to avoid these issues. They can help you refine your class options to ensure that you pick the most appropriate classes for your business. This way, you can ensure you are conveying the protection you seek for your business in your application.
2. Identifying Potential Issues In Your Application
A trade mark attorney will have greater foresight into the risks involved in your application, particularly the grounds upon which people can oppose your application. Once IP Australia advertises your trade mark application as approved, it is vulnerable to third-party opposition on several different grounds. To minimise the risk of having your application opposed, a trade mark attorney can provide the relevant guidance when first applying.
One of the most common grounds upon which third parties choose to oppose trade marks involve trade marks that are similar or identical to their own mark. This is because trade marks that are too similar or identical are likely to deceive and confuse consumers in the market. To avoid applying for a trade mark that another person has already registered, a trade mark attorney can help you conduct a comprehensive search of the Australian Trade Mark Registry to identify any potential trade marks which might conflict with your application.
3. Developing Your Intellectual Property Strategy
When you are applying for a trade mark, it would be easy to focus on the short-term implications of your IP protection. However, a trade mark is only as effective as its IP strategy and selective enforcement. A trade mark attorney can advise you on the different considerations you should make once you obtain a trade mark. An IP strategy can include:
- methods for monitoring the marketplace for potential infringements;
- a selective enforcement strategy to enforce if potential infringements are identified; and
- budgets for trade mark enforcement and renewal.
Since an IP strategy is critical to enhancing the breadth of your trade mark protection, knowing what strategy you will put in place when applying for a trade mark can influence some of the choices you make in your application. Without an experienced trade mark attorney, these considerations may remain overlooked.
Key Takeaways
A trade mark attorney can help you:
- choose the relevant trade mark classes in your application;
- identify any potential issues in your application; and
- develop your long-term IP strategy.
If you need help with applying for a trade mark, our experienced IP lawyers can assist. Call us on 1300 657 423.
Frequently Asked Questions
Trade mark infringement occurs if someone uses an identical or similar trade mark to your own concerning similar goods or services. For example, a manufacturer who brandishes their footwear with a tick may infringe on Nike’s exclusive rights.
A registered trade mark with IP Australia will only grant you national protection within Australia’s borders. Whilst the trademark registration process is different overseas, a trade mark attorney can help you with an international application.