Case Study – Don’t apply for a trademark without first knowing your biggest litigation risk

What if applying for a trademark that you’ve used in trading resulted in your being summoned to Federal Court for infringement? 

Recently we had a new client in this situation approach our firm for help. 

This business owner had submitted a trademark application to the Trademark Office without thinking he first needed the advice of a Trademark Lawyer  to research the trademark’s status quo to ascertain any risks.

Some seven years later,  Trademark Lawyers representing a similar trademark owned by a large corporate company issued him a “cease and desist” letter and Court summons. Our new client was quite surprised and came to our firm for representation and legal defence.

Shouldn’t the Trademark Office help me?

The Trademark Office only provides general information and no advice. It is also easy to misinterpret this information without specialist advice, and under-appreciate litigation risks.

In this case, the general information received from the Trademark Office made it appear as though it was okay to continue trading from the perspective of most business owners. 

However, advice from a Trademark Lawyer should always be sought so that practical risks can be worked out and the owner can be advised on which steps are the best to take.

How was the rival even aware of the trademark application?

What is not commonly known is that when application is made, the Trademark Office will publish your full details, including your name, address, the trademark, goods and/or services on the public Register for all to see.

The Trademark Office also provides a sophisticated searching system making it very easy for a trained professional to find any infringements.

Conclusion

The Trademark Office publishes in detail every trademark application  lodged on the public Trademark Register. It is very easy for a trained professional representing their client to find deceptively similar trademark applications and to then issue Court summons or a “cease and desist” letter. Searching the Register is an appropriate method by which the Trademark Lawyers at our firm identify infringements of our clients’ trademarks.

Before adopting a trading name or applying for trademark registration, we recommend engaging a Trademark Attorney to conduct a comprehensive trademark investigation and search. Using our services, your risks may be comfortably identified before the process of trading or application for a trademark even begins.

Please contact our Trademark Lawyers today for assistance with your trademark.