A business owner came to our Trademark Attorneys for help with their Trademark problem.
What happened when lodging a Trademark Application without representation
The business owner was caught out by self-lodging a Trademark Application, without representation. Why? Because we research the trademark comprehensively to identify if there really are trademark conflicts, whereas the Government only look at some types of trademarks, and don’t warranty they haven’t missed an important trademark. Our Trademark Lawyers usually find all trademark threats, and we evaluate and provide a risk profile against all trademarks.
In this case, the business owner thought everything was going smoothly as it was Accepted by the Trade Marks Office, IP Australia (https://www.ipaustralia.gov.au/).
However, unfortunately a competitor lodged opposition to Registration once Accepted by the Trademark Office, some 7 months after they lodged the Application. The Trademark Opposition phase is a 2 month stage (in Australia), and can be 3 months in many overseas countries. The opposition period only comes AFTER the Government have assessed (and accepted) a trademark application.
Unfortunately, the business owner had little chance because they were up against a legally represented company. Unfortunately the business came to our firm for help when it was too late.
They had already infringed, and the trademark was opposed, and withdrawn.
On a good point, our Trademark Attorney managed to argue and persuade for a reduction in the damages claim. However infringement still cost them around $30,000 in compensation claims, plus more (still adding up) to defend the opposition.
Costs are deeper though, the business lost the trademark which they were under the impression was theirs. They also lost 8 months waiting for a trademark application. Their business came to a complete halt because they had to find a new brand, and had substantial cash-flow issues which nearly sent them to bankruptcy.
The moral of the story is … Do not lodge a Trademark Application unless you are confident that there is little risk of Trademark Infringement. You may be entering into a costly legal infringement nightmare. Even if there’s no opposition and you register a trademark, the registration can be reversed through the Courts if you weren’t entitled to the Trademark Registration.
We can work out, within 5-7 working days, if there is likely to be a problem or not with our premium searches.