Mistakes to Avoid When Registering a Trade Mark for a Phrase
Registering a trade mark with IP Australia is fairly straightforward for any person or business owner. However, it is easy to make mistakes during the trade mark registration process, which can lead to unwanted and additional costs. This article provides an outline of four common mistakes that you should avoid when registering a trade mark for a phrase.
1. Waiting Too Long to Apply
A common question asked by business owners is when is the right time to apply for a trade mark. Whilst there is no requirement that a business registers for a trade mark at a specific time, businesses should protect their idea as soon as possible.
A trade mark can protect the identifiable features of your business that distinguish it from other businesses in the market. Owners of registered trade marks enjoy the exclusive rights to use, licence and sell their trade mark. This means that in the instance where someone uses a mark that is similar or identical to your trade mark, you can pursue legal action against them for infringing on your exclusive rights.
If you wait too long to trade mark a phrase you intend to associate with your business, you run the risk of:
- someone else applying for a trade mark concerning the same phrase; or
- committing trade mark infringement if you use a phrase already registered by another person.
Consequently, it is best to apply for a trade mark in the early stages of your business’ operation to ensure that it is available for registration and to limit your chances of committing trade mark infringement.
2. Not Conducting a Trade Mark Search
You would be surprised with how many applicants fail to conduct a thorough search of the trade mark register before applying to IP Australia. You should conduct a trade mark search via the Australian Trade Marks Search in order to identify any registered trade marks that are similar or identical to the phrase you intend to register. Further, you can conduct a thorough search by using different search functions on the register, such as an advanced search to narrow down your options.
You should note that trade marks are registered concerning a certain class of goods or services. This means that the trade mark will protect that specific class. For example, you can register the title of an app under class 9, which covers computer software goods. When conducting a trade mark search, you should be wary of the classes that each trade mark has. This is because similar trade marks can coexist if the owners registered them concerning different goods or services in non-competing sectors.
3. Using Restricted Words
There are some restricted words you should avoid when applying for a registered trade mark. These words include:
- ordinary descriptions of the good or service, such as using the words ‘clean’ and ‘fresh’ in a phrase describing cleaning products;
- common surnames, such as ‘Smith’ and ‘Jones’;
- the names of places, such as referring to the Hunter Valley when selling wine;
- scandalous materials, such as profane or blasphemous words;
- financial and banking words prohibited by the general law; and
- abbreviations or names of international organisations prohibited by the Paris Agreement.
Using any of the following words above limits your chances of having your phrase approved for registration by IP Australia.
4. Registering Under the Wrong Class
As mentioned above, trade marks protect a certain class of goods or services. When applying for a registered trade mark, you must specify which class of goods or services you intend your trade mark to protect. Once you have filed your application, you can only remove classes from your application instead of adding additional classes. If you have forgotten to include a class in your initial application, you will likely have to reapply to IP Australia with a new trade mark application at an additional cost.
You should note that many goods and services fall under more than one class. For example, a ‘computer program’ falls under four different classes in the picklist of trade mark categories. For this reason, you should clearly identify which class of goods or services you intend your trade mark before you formally file your application. This will help you avoid the additional costs and burden of reapplying for a trade mark.
There are numerous mistakes you should avoid when registering a trade mark for a phrase. However, you can avoid these mistakes by:
- registering as soon as practicable;
- conducting a thorough search of the trade mark registry;
- not using restricted words in your phrase; and
- registering your trade mark concerning the correct classes of goods and services.
Frequently Asked Questions
A TM Headstart application involves a specialist assessing your application before filing with IP Australia. This means that the specialist can identify any potential deficiencies in your application and allow you to amend your application before filing. On the other hand, a standard application bypasses this pre-assessment and goes straight to review by IP Australia.
Under the Trade Marks Act, the reserved symbol ‘®’ is used exclusively for registered trade marks. On the other hand, you can use the trade mark symbol ‘™’ to protect unregistered trade marks and trade marks in the process of being registered. Both symbols act as a warning to the general public that your phrase acts as a unique identifier of your goods or services.