4 Mistakes to Avoid During Your Trade Mark Application Process

Angus

• 4 June 2021
• 28 June 2021
• 4 min read

If you are a business owner about to begin a trade mark application, you should be wary of making mistakes. Ensuring you correctly manage and deliver your trade mark application can:

• save you time and money; and 
• help to avoid lengthy legal disputes. 

Receiving your trade mark will help you to better protect your brand and focus on developing your business so you can deliver for your customers, so it is important to take the correct steps. This article will cover four common mistakes to avoid during your trade mark application process. 

1. Picking the Wrong Classification

A common mistake when filing a trade mark application is to choose the wrong goods or services classification. There are 45 good and service categories to choose from. Classes one through 34 cover goods and classes 35 through 45 cover services. 

For example, if you run a cafe that sells breakfast in the morning and beer in the afternoons, you would likely need to lodge a trade mark application under class 43 which covers, among other things, cafe services, bar services and services for providing food and drink. If you lodged under class 32, which covers beers and mineral drinks, you would have used the wrong class. This is because you do not produce beer or drinks for sale, but merely hold them as stock to sell. It may seem like a small distinction, but it matters. 

2. Not Using the Pick List

Another common mistake when filing an application is not using the IP Australia pick list. The pick list:

• allows you to search for your trade mark; and 
• gives examples that you can use to determine whether your good or service meets the relevant criteria of the class. 

Using the pick list not only makes it easier for you to choose the right class and for the examiner to make a quicker decision, but also allows you to save on filing fees. This is because applications filed using the pick list attract lower filing fees. This frees up more money for you to expand your business faster.

3. Not Lodging a Trade Mark Application For All Countries You Operate In

Lodging a trade mark application in all the countries you operate in is an important task. 

Australia is a member of the Madrid Protocol. This means that you can use your Australian application as a basis to have your trade mark recognised in other Madrid Protocol countries. Filing an international application is a complex process, and we recommend that you obtain legal advice before doing so to ensure that you have the best opportunity to protect your business.

4. Not Responding To Adverse Examination Reports Appropriately

After you lodge your trade mark application, an examiner at IP Australia will examine it. The examiner will look to see whether: 

• your trade mark is registrable; 
• you have chosen the right classification; and 
• another person or company already holds a trade mark that is too similar to yours.

If they determine that your trade mark cannot be granted based on the evidence they currently have, the examiner will issue an ‘adverse examination report’. The adverse examination report will set out the matters you need to respond to and the time frame for doing so. If you do not respond to all the matters set out in the report or you do not respond in time, then your application will be delayed or may not be granted at all. 

Key Takeaways

Before deciding to file a trade mark application, you should consider:

• what class your good or service falls into;
• how to use the pick list to reduce filing fees;
• whether you need to lodge an application for more than one country; and
• what evidence you will need to respond to an adverse examiners report. 

If you have any questions about mistakes you might be making during your trade mark application process, contact our experienced trade mark lawyers on 1300 657 423 or fill out the form on this page.

Frequently Asked Questions