5 Common Trade Mark Pitfalls and How to Avoid Them

Emily Young

• 26 August 2021
• 26 August 2021
• 5 min read

Your intellectual property (IP) is a crucial element to the success of your business. This includes your trade marks. Not only do your trade marks serve as an excellent marketing tool and help you distinguish your goods or services from others, but they also provide legal protection by giving you exclusive rights to your trade mark.

To help you get the most out of your trade marks, it is important to avoid making errors throughout the life cycle of your trade marks. To help you navigate this process, this article will take you through five common trade mark pitfalls and how you can avoid them.

1. Not Registering your Trade Mark

One common trade mark mistake is failure to register your trade mark. Although it is not essential to register your trade mark and you will be afforded some protection with an unregistered trade mark, registration has a range of benefits.

The primary purpose of a trade mark is to give you exclusive ownership of your trade mark and prevent others from using your trade mark without your consent. With trade mark registration, the process of enforcing your trade mark is that much easier. A registered trade mark also serves as a deterrent to other businesses, notifying them of the existence of your trade mark and preventing any accidental trade mark infringement. 

2. Failure to Conduct a Search

Another common trade mark pitfall is failure to conduct a thorough trade mark search before registration. A trade mark search serves several functions that will ensure the success of your trade mark application. Firstly, a trade mark search will help you to determine if your proposed trade mark is available for use. Not only will this prevent potential trade mark infringements, it will help you minimise the chance that your trade mark application is rejected. 

A trade mark search can be conducted for free using IP Australia’s ATMOSS search tool. However, it is important to consider that conducting a trade mark search is not a simple process, and it can be difficult to know what to look for. If you need assistance conducting a trade mark search, you should seek the help of an IP professional.

3. Choosing a Weak Trade Mark

The trade mark process starts with choosing your trade mark itself. You must choose a strong trade mark that will avoid any potential trade mark infringement disputes in the future. This includes avoiding trade marks that are either too generic, too descriptive or overall too common. The more unique your trade mark is, the easier it will be to register and enforce your rights.

4. Registration in the Wrong Class

Another common trade mark error is registering your trade mark in the wrong class. When applying to register a trade mark, you will be required to nominate the categories of goods or services that you wish to use your trade mark in. You must select the most appropriate trade mark classes because they will define the scope of your trade mark protection. Once you have made your trade mark application, it is impossible to add another class to your application, making it critical you understand trade mark classes as early as possible. 

To avoid selecting the wrong trade mark classes, you should aim to understand trade mark classes as much as possible. You should also look to competitor businesses’ trade marks and the trade mark classes they have selected to help you better understand the trade mark classes applicable to you, as well as consider seeking the advice of a professional. 

5. Ignoring Your Enforcement Rights

A common mistake relating to trade mark management is neglecting your trade mark after registering it. A trade mark is designed to give you exclusive rights to the use of your trade mark. These rights include your enforcement rights to prevent others from using your trade mark. This makes it essential that you monitor any attempts to register a similar trade mark to yours or anyone in the market which is stealing your trade mark. 

Failure to ignore these rights means your trade mark registration was effectively for nothing. However, trade mark infringement can reflect poorly on your business’ reputation and impact the overall value of your business, so it is important that you do not ignore your rights to enforce your trade mark.

Key Takeaways

Understanding trade marks can help you avoid making common errors that impact the effectiveness of your trade marks. Some of the most common trade mark pitfalls to avoid include:

• not registering your trade mark;
• failure to conduct a trade mark search;
• choosing a weak trade mark;
• registering your trade mark in the wrong trade mark class; and
• ignoring your trade mark enforcement rights.

If you need professional assistance to ensure you avoid any common trade mark pitfalls, our experienced trade mark lawyers can help. You can contact them on 1300 657 423 or by filling out the form on this page.

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