Top Five Factors to Consider Before Applying for a Trade Mark
Top Five Factors to Consider Before Applying for a Trade Mark
Wednesday 6 November 2019 / by Daniel Jepson posted in Intellectual Property Protection Trade Marks

As most people would likely be aware (and as Holman Webb has previously stated), trade marks are vital business assets - with dozens of trade mark applications being filed every day in Australia. With this in mind, if your application is not up to scratch, significant issues can arise down the track which may prove to be unresolvable.

Below, we outline five key factors to take into consideration prior to filing a trade mark application:

  1. Consider the form of your trade mark
    Is it simply a word, or will you use the word as part a logo? Will you use a shape, or even a sound to identify your products? These are questions that will need to be answered before filing. It may even be that your best course of action is to file multiple applications in order to cover the various ways that your trade mark will be used.
  2. Confirm ownership of the trade mark
    Holman Webb notes that Australian courts have become more strict on the issue of trade mark ownership in recent years. As such, it is crucial to ensure that the person or entity who actually owns the trade mark at the time of filing the application is the one listed. It is important to note that there can be serious consequences if the wrong person is listed, including the inability to transfer the trade mark in the future.
  3. Consider what you intend to do with the mark
    You will need to select the goods and services that are covered by the registration. If you miss something core to your business, your registration will not be as effective as it could be. Alternatively, if you include things that are irrelevant, you risk either overlapping with another trade mark, or losing at least part of your registration for 'non-use'. We suggest devising a plan which outlines exactly what you intend to do with the mark before filing the application.
  4. Search for similar marks
    Taking the time to search for similar trade marks is a critical step that people often overlook. Unsurprisingly, it is incredibly frustrating to discover that you've wasted both time and money on a mark that cannot be registered simply due to the fact that there is already something similar out there.

    Don't just search the trade mark register - look high and low for anything similar to your mark. In some cases, if a trade mark similar to yours is not registered but has been in constant use, your application may be refused, or the benefit of your registration can be watered down. Not only that, but you may find yourself on the wrong end of a claim for misleading and deceptive conduct.
  5. Check for prohibited items
    Some words, phrases and symbols cannot be registered as, or as part of, a trade mark (and not just the offensive ones that may spring to mind). For example, an application for the word 'BANKSIA' in class 36 would be provisionally refused, as it contains the word 'BANK'. This word and others like it cannot be registered in class 36 without consent from the Australian Prudential Regulation Authority.

As an added bonus, our final tip is that Holman Webb is here to assist you by providing expert advice on an extensive range of trade mark and intellectual property-related matters! There is a long list of factors that have the potential to catch an unsuspecting trade mark applicant out, and it may be too late if such factors are not considered prior to filing an application - meaning that speaking with an experienced intellectual property lawyer should be your first point of call when considering filing an application for a trade mark.

If you have a query relating to any of the suggestions in this five-step guide, or if you would like to speak with a member of Holman Webb's Intellectual Property team in relation to a matter of your own, please don't hesitate to get in touch today.

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