Mistakes To Avoid When Registering a Motor Vehicle Trade Mark
Before you register a motor vehicle trade mark, it is important to keep in mind some common mistakes trade mark applicants make. Doing so will ensure that the trade mark registration process runs as smoothly as possible, allowing you to achieve your desired outcome. To help, this article outlines three mistakes to avoid when registering a motor vehicle trade mark.
1. Forgetting to Include a Relevant Class
Trade marks are registered in connection with a business’ goods and services. Therefore, you must specify your business’ goods and services and the class they fall under in your trade mark application. If you specify the wrong class or forget to include a relevant class in your application, this can render your trade mark obsolete.
For example, say your company sells cars and offers repair services, but your company only registers a trade mark in connection with class 12 (which includes land vehicles). In this case, your trade mark is only capable of protecting the class of goods specified in your application and not the repair services your business offers.
In the instance where you choose the wrong class or forget to include a class, you cannot easily amend your trade mark application once you have submitted it to IP Australia. Rather, it is likely that you will have to submit a new trade mark application at an additional expense.
To avoid this costly error, you should conduct a comprehensive search of the Trade Mark Classification Search before applying. Whilst the extensive class categories may seem overwhelming at first, you should simply search the keywords of your business’ goods and services. Whilst the search will provide you with the various classes which your goods and services fall under, you must eventually choose the class that most closely relates to your business in your trade mark application.
If you are registering a land vehicles trade mark, class 12 will likely be the most relevant to your business. The class lists several goods. Some key examples have been summarised in the table below.
|Land Vehicles Goods||Example|
|Component parts||Air bags|
Car seat covers
2. Using Generic Terms
Another mistake many trade mark applicants make is their attempt to protect a generic name or slogan using a trade mark. One of the signature features of a trade mark is that it must distinguish a business’ goods and services from other goods and services offered in the market.
Suppose you attempt to use a generic term or description as part of your land vehicles trade mark. In that case, it is likely that IP Australia will not accept your application on the basis that other businesses in the motor vehicle industry would also benefit from using a generic term. For example, IP Australia is unlikely to accept a trade mark application with the generic term ‘car dealership’.
However, this is not to say that you cannot include generic terms in your trade mark application altogether. Instead, you should couple a generic description with additional features that make your business unique. For example, you can accompany the term ‘car dealership’ with your business name like ‘Aaron’s Car Dealership’ or couple it with your business’ distinctive logo. Doing so will ensure that your trade mark is capable of distinguishing your business from others and is not merely a generic sign.
3. Failing to Conduct a Trade Mark Search
It may seem like an obvious mistake to avoid, but some trade mark applicants attempt to register a trade mark that is similar or even identical to a trade mark that has already been registered. This is likely to happen if you do not conduct a comprehensive search of the Trade Mark Registry and the thousands of different trade mark applications within it.
If you attempt to register a trade mark already in existence, IP Australia can reject your application on this basis. Even if they accept your application, you are likely to face third party opposition to your trade mark application on the same basis.
To avoid this, you should conduct a comprehensive search of the Trade Mark Registry. By entering the keywords or image of your intended trade mark in the search bar, you can identify whether your trade mark has or has not already been registered. Doing so will ensure that you are not applying for a trade mark that is already in existence.
Another benefit of conducting a trade mark search is identifying trade marks that other businesses use in your specific industry. By searching for a competitor’s trade marks, you can gain insight into what classes of goods and services you should include in your trade mark application.
When you are applying for a motor vehicle trade mark, you should ensure that you:
- include all relevant trade mark classes in your application;
- avoid generic terms or descriptions; and
- conduct a trade mark search to ensure that someone else has not already registered your intended trade mark.
Frequently Asked Questions
Some other trade mark classes you might want to consider include class six (common metals), class seven (machines) and class 37 (repairs and maintenance).
A TM Headstart application provides you with an expert pre-assessment of your application. This pre-assessment can help you identify any potential errors in your application and make amendments accordingly before trade mark registration formally occurs.