Trademarking a word, sign, logo or sign may seem like a relatively easy process. However, there are many traps and tricks which can lead to trade marks (TMs) applications being rejected by the Australian Trade Mark Office (IP Australia). Even worse, your business’s name, logo, or slogan may be infringing someone else’s rights and you may be subject to legal proceedings or award of damages against you.
1) Always Search
Before deciding to use a new TM, you should conduct searches of the Australian Business Name and Company Register in the ASIC website; Google searches; and trade mark register searches through IP Australia’s database. Please note that ASIC and IP Australia’s database only relate to TMs and names in Australia and you have to search overseas databases, if you are considering in seeking protection overseas.
Also searching logos, images, shapes, smells and sounds is a difficult task and you should discuss your TM searching needs with a qualified lawyer or trade mark attorney before deciding on a specific TM. If you do find a conflicting TM, you may want have a lawyer review the matter to check whether there are differences that you are unaware of.
2) Use a Distinctive TM
When choosing a TM, look for a TM that is distinctive when compared to the goods or services that you are applying it to. Distinctive TMs are easy to enforce and cheaper to prosecute through the Australian Trade Mark Office. Distinctive TMs have a better chance at being registered.
3) Know what you are applying to TM to?
You the scope of goods and services that you plan to use your TM for. The specification of goods and services included all TM applications limits the protection to the fields you specify in your application. You should broadly apply for goods and services that cover all of the items that your business produces now and is likely to produce in the future.
Maximise your TM protection by filing reasonable broad specifications of goods and services. Alder IP is happy to assist clients to develop a broad specification for their TM applications.
4) Generic Use Prevention
Don’t use your trade mark in a generic way. If your trade mark becomes the standard term for an item, the word is said to be generic. Once a trade mark becomes generic, other traders are allowed to use it just like any other ordinary word for an item.
There are lots of examples of famous trade marks that have become generic in Australia including:
Caplets for tablets;
Kleenex for tissues;
Escalators for passenger conveyors
You can avoid your TM becoming generic by labelling with the ™ logo or ® logo. Also you should avoid using your TM as a noun but rather as an abjective to describe your item.
5) Be Proactive
One of the main reasons, TM applications often lapse is because the person applying for the TM forgot a deadline or simply didn’t leave enough time to respond to the Trade Mark Office. If you are applying for a TM, make yourself aware of the deadlines and note these deadlines in your diary so you don’t forget or lose them. One of the advantages of using a law firm such as Alder IP to file and manage your trade marks is that we use a computer database to automatically monitor the deadlines of your trade marks.