Do’s and Don’ts When Preparing a Trade Mark Image for Submission
Preparing your trade mark application can be a stressful experience. However, knowing what IP Australia (as the agency that administers trade marks in Australia) expects from your application will make a world of difference. When it comes to protecting an image via a registered trade mark, you must ensure that you clearly represent your image in your application. By following the tips in this article, as well as avoiding some notable mistakes, you can ensure that the road to trade mark protection runs a lot smoother.
Benefits of Registered Trade Mark Protection for Your Image
Registered trade marks are capable of protecting the features of your brand that distinguishes it from others. As a trade mark owner, you enjoy the exclusive right to use, licence and sell your mark. This also means that when your image or logo receives trade mark protection, you can enforce your rights against those who infringe or copy it.
Clearly Represent the Image in Your Application
To protect an image or logo, you will have to represent it in your trade mark application. This will typically involve uploading a high-resolution image of your logo. When uploading your image, it is important that it:
- clearly depicts your business logo or image;
- contains different views of the logo or image, capturing the whole design;
- consistently depicts the same logo or image across these different views; and
- matches the additional written information you include in your trade mark application.
If you fail to submit a clear representation of your image, you run the risk of causing unwanted delays during trade mark registration. If you submit an image that does not truly represent the nature of your logo, IP Australia may still approve your trade mark application. However, this may mean that your application may not actually reflect your intended business logo. In this case, your trade mark protection might be insufficient for your business. For these reasons, you should ensure that your trade mark application is as accurate as possible so that your business can reap the most benefits from trade mark law.
Common Mistakes Made During Trade Mark Registration
There are some common mistakes that applicants make when including an image in their trade mark application. By keeping these in mind, you can make a conscious effort to avoid them during the trade mark registration.
1. Failing to Search for Similar Trade Marks
One of the most common mistakes applicants make is failing to consider whether an existing trade mark is on the trade mark register. Whilst your logo or image might be unique to your business, there is a chance that someone has registered an identical or similar trade mark. Since trade marks must be capable of distinguishing one business from another, IP Australia is unlikely to accept an application for similar trade marks.
To avoid applying for a similar mark, you should conduct a comprehensive search of the trade mark register. Since you are attempting to register an image or logo, you can upload the image into the register’s search bar by clicking on the button depicting a camera.
By conducting a trade mark search, you can identify whether your image is capable of trade mark protection. If you spot any issues, you can make adjustments to your application to avoid rejection.
2. Forgetting to Include a Relevant Trade Mark Class
Trade marks are used in connection with your business’ goods and services. Therefore, you must identify the relevant goods and services classes that apply to your business when registering your image or logo as a trade mark. Australia uses the Nice classification system to categorise the common goods and services for which trade mark owners seek protection.
You should be aware that your business’ goods and services will likely fall under more than one class. For example, if you run a fashion label, classes 24 (textiles) and 25 (clothing) might both be applicable.
If you realise that you have forgotten to include a trade mark class in your application after you have submitted it to IP Australia, you cannot amend your application to add more classes. Instead, you may have to withdraw your application and apply again at an additional cost. To avoid this, you should be clear about what goods and services your business provides. This will help you determine the relevant trade mark classes that best reflect these goods and services.
3. Failing to Seek Legal Advice Early
If you are ever in doubt during the trade mark registration process, you should seek the advice of a lawyer. Since a registered trade mark will be a valuable asset to your business, it is worth getting your application right from the outset. A lawyer can help you prepare your application, as well as alert you to any business considerations you should make before you submit your application.
Additionally, a lawyer can guide you through the application process. Depending on the outcome of your application, they can also help you draft an intellectual property strategy to ensure that your trade mark remains useful in the long term.
When submitting an image or logo for trade mark protection, it is important that you include a clear and accurate depiction of your image or logo in your application. Failing to do so can delay the application process. If an inaccurate depiction of your image or logo is accepted, this could leave you with a registered trade mark that is incapable of protecting your brand.
Frequently Asked Questions
You should make sure the image you want to register as a trade mark is clearly represented in your online application. Additionally, it is a good idea to check the trade mark register beforehand to ensure your image is not too similar to existing trade marks. Finally, check that you select all relevant trade mark classes in your application. When in doubt, seek legal advice.
It usually takes IP Australia around 3 to 4 months to review your trade mark application. You will be notified about the outcome via IP Australia’s online services platform.