There are many approaches that our Trademark Attorney firm uses to register overseas trademarks. Choosing the wrong pathway can allow a rival advantages over you in owning a trademark. This can lead them to eventually winning the overseas trademark rights for the same or a similar brand or logo.
Did you know?
Contrary to belief, in some jurisdictions, registering a trademark is not the only method to argue that you own a Trademark. And ownership of a Registered Trademark can be challenged, and removed with the right legal case.
Australia is one of the countries where a Trademark Registration can be removed many years after it is paid for.
See for example the Clipsal Federal Court case where a judge ordered IP Australia to cancel (remove) multiple trademark registrations listed on the Trademark Register.
What are the steps to identify if a Trademark Registration could be revoked?
Step 1: You Search, Your Trademark Attorney Searches and IP Australia does their search.
Comprehensive searches for conflicts and infringing trademarks are a must, especially when it comes to the extra cost and logistical difficulty in defending for trademark infringement overseas.
Logistically it is very difficult and costly to handle an overseas infringement – look at for example the expensive compensation claim against an Australian company exported Ugg boots into the United States – UGG Boot Court case we reported.
The real question most businesses want to know is, has the right trademark database been searched and how do I know if a trademark hasn’t been missed?
There is no easy way here. Your Trademark Attorney should guide and navigate this difficult landscape of overseas trademark searching for you. In fact whilst most trademarking companies do a quick 5 minute search of the Australian Trademark Register. Our Attorneys spend 1-2 weeks researching for similar names and on 8 databases to provide a premium trademark searching service that cannot be matched.
For overseas searches you could miss or be searching the wrong database. For example if you want an Italian trademark registration, were you aware that there are three (3) independent Trademark Registers that need to be searched before you trade in Italy?
Step 2: Prepare and Lodge a Trademark Application
Quality content makes the difference whether you have a decent trademark case.
Quality will also determine if your Trademark Registration could be cancelled due to faulty details, or may fail to enforce due to ownership or other faults.
Sadly many companies don’t have a decent trademark case because the content of their trademark application (registration) is missing vital trademark detail that we need to win their case. If you are concerned about this, you can request a quote for a Trademark Attorney audit today.
Step 3: Trademark Application Assessment by the Trademark Office.
In Australia a trademark application is assessed 7 months after filing. Assessment can vary and is generally 3-12 months in most overseas countries.
In Australia, the trademark application may be objected to on the basis that it doesn’t meet the criteria required by the Trademark Act 1995 (Cth). It is important to understand the risks and implications of any trademark objections.
A Trademark Attorney can advise you and prepare legal submissions that increase your chance of success.
Step 4: Acceptance of the Trademark Application
If your Trademark Application is accepted by the Trademark Office, then there is a freeze “2 months” in Australia (or 3 months in most overseas countries) period by which others can oppose Registration.
During the Opposition phase, rivals can put a case forward to have IP Australia reconsider whether the Trademark should be accepted.
Trademark Oppositions are rare but if they occur they are stressful and can take 12 months to resolve. Depending on the strength of your trademark position, you may lose your brand and endure substantial cost. So make sure you are not too invested in your brand until the Opposition period is over.
A comprehensive Trademark Attorney search is recommended so your Trademark Attorney can possibly spot Opposition potential in advance, before you even lodge a trademark application.
Step 5: Registration for 10 years
Once the Trademark opposition period is finished, the trademark is registered, and a Trademark Registration Certificate issues.
Then it’s up to you to comply with Trademark laws and rules in order to prevent removal of the trademark rights, or file new applications as the business changes, and as required.
Your Trademark Attorney can assist you ensure you meet the trading requirements.
