Benefits of Working With a Lawyer When You Need a Trade Mark
George Raptis
Although anyone can apply for a trade mark, it is a difficult area of the law to navigate on your own. Having expert advice from a lawyer when applying and managing your trade mark can make a noticeable difference and help ease what can be a lengthy process. This article outlines some trade mark basics and explains three benefits of working with a lawyer when you need a trade mark.
What Can Trade Marks Protect?
Trade marks are a form of intellectual property that can provide you with brand protection. Trade marks protect the features of a business that make it distinguishable. This includes a business’ name, its logo, its slogan and its specific product packaging.
A registered trade mark provides its owner with the exclusive right to use, licence and sell their trade mark. Consequently, if someone misused or adopted a trade mark identical to an already registered mark, the owner of this trade mark can enforce their exclusive rights. This means that the trade mark owner can prevent the misuser from further using their trade mark. They can also prevent any damage caused to their business’ reputation.
Specialist intellectual property lawyers are experienced in their field and work with trade marks daily. If you decide to apply for a trade mark, you should consider working with a lawyer. The following are benefits to working with a lawyer during the application process.
1. Applying Correctly
IP Australia is the national body responsible for accepting and registering Australian trade marks. IP Australia approves or rejects applications based on whether they meet certain criteria. The first is that the trade mark can distinguish your good or service from others in the market. An experienced lawyer can guide you through the registration process, as displayed below.
Conducting a Trade Mark Search
To avoid applying for a trade mark that somebody has already registered, you should conduct a search on the Australian Trade Mark Search to identify if any similar trade marks already exist. Whilst it may seem easy to search the registry, an experienced lawyer can conduct a thorough search of the registry to ensure that all bases are covered and that your intended trade mark is likely registrable. This will decrease your chances of having your application rejected, or opposed by other trade mark owners even if your application is accepted.
Selecting the Correct Class
Trade marks also protect certain classes of goods or services. From the outset of your application, you should include all the classes of goods or services you want your trade mark to protect. Goods and services can also fall under numerous classes. For example, a ‘computer program’ falls under four different classes in the Trade Mark Search. If you fail to include a class in your application, it is not possible to add these classes for protection unless you reapply at your own expense. Hence, an experienced lawyer can assist you in the registration process by ensuring that the classes you chose in your application reflect the protections you are seeking to apply for.
2. Developing Your IP Strategy
Once their trade mark application is accepted, many trade mark owners become focused on the short-term of their trade mark. However, it is important to develop a long-term IP strategy as well. This will preempt any issues you might encounter when managing and protecting your trade mark.
An IP strategy can include various measures. These range from monitoring the market for potential infringements to determining instances where you will enforce your exclusive rights.
It is a common misconception amongst trade mark owners that IP Australia monitors and polices the marketplace for trade mark infringements. In reality, it is the responsibility of individual trade mark owners to enforce their exclusive rights in the instance where someone has committed trade mark infringement. An experienced lawyer can advise you on measures you should take to monitor the marketplace. These methods include employing staff to review products that are sold and advertised by your competitors, or conducting regular searches on the internet and the trade mark registry to identify any misuses of your trade mark.
A lawyer can also help you decide on a selective enforcement strategy. Trade mark enforcement can be a lengthy process. Therefore, whether you enforce your rights in every instance will depend on the circumstances.
For example, if you have a registered trade mark protecting your business in the hospitality industry, it might not be worth pursuing legal action where a similar mark has been used in a different industry. If your competitor in the same industry uses your trade mark to promote their own business, it is much more likely that you would pursue legal action.
A lawyer can lay out the options you can take when dealing with potential infringements. Therefore, if these infringements arise, you have a clear course of action to rely on.
3. Responding to Opposition
Even if IP Australia accepts your trade mark application, it is nevertheless subject to opposition by a third party within two months of your trade mark approval. A third party can oppose your trade mark application on a number of grounds, the most common being that the third party has continuously used a similar trade mark concerning their own goods or services.
Suppose somebody opposes your trade mark application. In that case, an expert lawyer can determine the strength of your claim to defend the notice of opposition. A notice of intention to defend also requires you to bring forward evidence disproving the third party’s application to oppose. An expert lawyer can guide you through this process and help collate evidence to support your defence.
Key Takeaways
An experienced trade mark lawyer can provide you with sufficient advice to guide you through the process of applying for a trade mark. From assisting you with your application to dealing with any opposition to your application, a lawyer can assist you in the short-term management of your trade mark and your long-term management through developing an IP strategy. If you need help with applying for trade mark, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
To ensure that you are protecting your brand from the outset of its operation, you should apply for a trade mark as early as possible.
A standard trade mark application with IP Australia can cost between $250-$400. You can find the full list of IP Australia’s fees here.