Trademarking a brand is not as easy as it appears on IP Australia because there are lots of hidden traps and knowledge of the Trademark Act requirements is essential. There are a variety of issues including the lack of an ability to enforce.
Brands usually include graphics to include visual appeal. Your brand may also include an image, logo, words, phrases and slogans. Even aspects of packaging might be part of your brand presence. Once you have your concept, it would be prudent to consult with a trademark lawyer on the best way forward for your brand. Usually your Trademark Attorney’s advice will include identification of conflicts or infringements so you don’t get off to the wrong start. Being sued in the Australian Federal Court, is a long and expensive process, one that any start up should seek to avoid. Trademarking a name or logo is tricky, and applying for the wrong format can prevent you succeeding in an enforcement case. There are also many facets to the process and its important you cover every base before submitting your application.
A trademark lawyer will ensure you cover each and every base, and submit an application with less likelihood of being rejected, and with substantial scope for capturing copycats. You don’t want to lodge an application, only to find out later that an important legal detail is missing, preventing you from enforcing.
Its good business practice to put in place measures to protect your brand, your business, your livelihood. Trademarking your brand is the best way to do that. Your Trademark Attorney can also regularly check to see if others lodge close trademarks and detail any incursions to you each month. Although complex, with the right advice, everyone can protect their business and brand with a trademark, provided it meets eligibility criteria as required by the Trademark Act. The skill lies in walking the fine line between too narrow protection, and a broad statement of the goods or services as provided by your business. If too narrow, then you risk having parts of your business not covered. Too broad and you face other businesses who are already registered causing refusal of your trademark application.
The complex trademark registration process may be marred by potholes and can be easy fall afoul. We have also had new businesses quickly becoming a client after having unsuccessfully tried to register their brand by lodging multiple trademark applications which failed. Typically 2 trademark applications can take 3-4 years of waiting also, only to find that you never get anywhere. When reviewing their business goods and services, we found even the applied for goods and services wasn’t very protective. For example one client had applied for “gelati”. Does this include sorbet, and dairy based ice-cream, and what about vegan ice-cream? These are all considerations that an experienced Trademark Lawyer will consider and include in your trademark application.
Once a trademark application is completed correctly, the process becomes smooth and if there are any refusals by the Trademark Office, your Trademark Lawyer will often easily address them. Preparing the application involves a fair amount of research and background decision. As a business owner you, or your executive team need to make decisions on what your business does. This is a simpler for an established business that has been in business for a number of years, as established businesses have already grown and understand the industry and what isn’t provided.
Once you have specified in your Trademark Application what goods and services are covered, you cannot edit or go back and amend this later. It is prohibited by the Trademark Act, so this can cause problems if something important is left out.
An established brand is worth protecting and as such you should be able to construct paragraphs detailing the goods and services your business provides. An experienced trademark lawyer is a wise investment to represent your interests and lodge a trademark application for you.
Method for Trademark Applications
The range of options to make is considerable, and this can complicate the process. Conduct your trademark searches, draft your trademark application and have your representation conduct a thorough check of all databases, before a trademark application is lodged. It can be worth a great deal to have someone not completely familiar with your business read over the application to make sure you have covered everything.
Complete your searches through IP Australia, complete Google searches about your industry and brand, review competitor logos, their branding and avoid everything they have done. It is dangerous to deploy a new brand without proper legal checks being done. So it is best to engage a lawyer to conduct research before any concepts are signed off.
Once you have decided on your business and brand concepts, and satisfied there are no infringements, it is time to write out an explanation as to the inner workings of your business. Be broad in your descriptions but not so broad as to be vague. Start with the core functions of the business and then fan out from there. Match these with the different classes provided by IP Australia. The core functions of your business will usually sit within one of the 45 classes. You then have a decision to make about how many Classes are important to you. Your core business functions must be covered, but you have the option to add extra classes.
Government fees apply per class, and vary depending on the type of trademark application being lodged. So, bear this in mind if budget for the application is constrained. This is one place a lot of self-completed applications are incomplete or inaccurate. Take the opportunity to speak with a trademark lawyer about your options and seek advice on the Classes that best suit your business. If you’ve been a mistake and have been channelled down the wrong pathway to the wrong class, or to miss a class, they should pick this up.
Once you have locked down your brand explanation, your graphics or visuals, and selected your classes, you are ready to lodge your application.
Trademark Office Rejections
Some of the most common rejection reasons are the simplest things to miss. Therefore, advice from a trademark specialist lawyer is particularly advantageous before submitting your application. A trademark lawyer will pick up any issues with your application, this could save you the cost of one or multiple rejected applications. It could also save an expensive conflict with a rival.
The most common rejection reason is being substantially identical or deceptively similar to another registered trademark, or pending trademark application. The good news is, an experienced Trademark Attorney will be able to independently review the rejection(s) and work out if it is a valid objection, or if it can be argued.
There is an opportunity to respond to any rejections or refusals, usually 15 months, followed by a paid extra extension period of 6 months.
Examination of Trademark Applications
Once submitted, a trademark application for your brand will be assessed by an examiner at IP Australia. This usually takes 7 months for a standard application at the time of writing this article. The examiner will run a number of checks and balances before hopefully accepting the brand trademark.
If an objection issues, then you can submit a legal submission, which will usually be considered in 6 weeks.
Trademark Acceptance of your brand
If your trademark application is accepted, it will be advertised for an official 2 month opposition process. If no opposition is lodged by a rival, then the trademark becomes Officially Registered for 10 years, and a certificate is issued. You cannot make changes to the graphics for your brand or the classes, goods and services covered. This is why it is crucial your application covers everything, not just for your current business plans, but also your future plans.
To have a Trademark Lawyer represent you, contact us today.
