Dilanchian Lawyers & Consultants
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Trade-mark-self-filers

Letter of demand tips for names and trade marks

Can you file a trade mark application yourself in Australia, without a lawyer or trade mark attorney? Yes. Should you if you don't have substantive experience? No.

Do-it-yourself applications can be dangerous, inadequate, or full of holes for lawyers to drive trucks through.

Here's three reasons and hints on why you'll get value-for-money by outsourcing the job to professionals, at least until you gain experience.

1. Trade mark application holes

There's many weaknesses in applications which we've seen thousands of times, especially in self-filed applications. They leave the door open for competitors and infringers to get away with similar marks or, more craftily, to design around a trade mark registration.

Another problem creating holes in applications is that many self-filers have a love affair with their logo. A logo is often not the key or original element for which they should seek protection. Registration of a name for a product, service, business, or system can be more valuable. If a logo is original it will attract copyright protection anyway. See further "Records and documentation holes" below.

Focused as they are on their logo or name, self-filers overlook the danager of using generic trade mark goods and services descriptions. They do not realise the future ramifications of overlooking expanded descriptions of goods and services.

2. Licence agreement hole

Self-filers rest when they get their registration. They tend to not see the need to document links betweem the registered proprietor of a trade mark and those who are distributors or actual users under licence.

When it comes to preparing a letter of demand, many self-filers realise only then how valuable it would have been if they had put in place a written trade mark licence agreement in the early days. Without a licence agreement they simply have no clear evidence of use of a mark by them or for them. Many court cases have been lost or compromised due to the lack of a trade mark licence.

3. Record and documentation holes

After registration self-filers don't know what types of records to monitor, collate and keep. Self-filers tend to record and document very little. They rest on registration and overestimate the value of an "official" trade mark registration versus the value of having readily available facts (ah yes, records and documentation).

If appropriate records are kept (eg in an Intellectual Property Register), then in an urgent letter of demand a lawyer can prepare persuasive statements. Examples follow. They can nip a problem in the bud. For example we have hundreds of times ended a legal issue or dispute with just one letter of demand using statements such as those below.

  • "We have gross sales exceeding $120,000 a year since 2007 for goods and services associated with use of the mark."
  • "We have served over 900 customers for those goods and services since 2007."
  • "We have used the mark as the name of our website, as a domain name, as a product or service promoted in print brochures, and in broadcast email campaigns."
  • "The geographic area of sales relates to customers in Queensland and Northern NSW, and some in each of the other states."

4. Legal design perfection

Businesses of all sizes who register trade marks on their own rarely recognise there are three jobs involved - design work (engage a designer), legal protection work (engage a legal adviser), and branding and other activity in business communication work (engage competent business managers). In combination we call this legal design work.

Including non-essential content in a trade mark application (eg words, phrases or bits of design) can weaken it in the legal arena. Non-essential words might include a tag line or product descriptor. They can complicate a mark and weaken protection for key elements.

A great start for legal design work is to commission a thorough and professional mark or name availability search. Call for a quote.

A self-registered trade mark may look fine to you and even to IP Australia. Faults generally only become obvious years later. In many cases there's then weak or ineffective protective legal armour.

1. Trade mark application holes

There's many weaknesses in applications which we've seen thousands of times, especially in self-filed applications. They leave the door open for competitors and infringers to get away with similar marks or, more craftily, to design around a trade mark registration.

Another problem creating holes in applications is that many self-filers have a love affair with their logo. A logo is often not the key or original element for which they should seek protection. Registration of a name for a product, service, business, or system can be more valuable. If a logo is original it will attract copyright protection anyway. See further "Records and documentation holes" below.

Focused as they are on their logo or name, self-filers overlook the danager of using generic trade mark goods and services descriptions. They do not realise the future ramifications of overlooking expanded descriptions of goods and services.

2. Licence agreement hole

Self-filers rest when they get their registration. They tend to not see the need to document links betweem the registered proprietor of a trade mark and those who are distributors or actual users under licence.

When it comes to preparing a letter of demand, many self-filers realise only then how valuable it would have been if they had put in place a written trade mark licence agreement in the early days. Without a licence agreement they simply have no clear evidence of use of a mark by them or for them. Many court cases have been lost or compromised due to the lack of a trade mark licence.

3. Record and documentation holes

After registration self-filers don't know what types of records to monitor, collate and keep. Self-filers tend to record and document very little. They rest on registration and overestimate the value of an "official" trade mark registration versus the value of having readily available facts (ahh yes, records and documentation).

If appropriate records are kept (eg in an Intellectual Property Register), then in an urgent letter of demand a lawyer can prepare persuasive statements. Examples follow. They can nip a problem in the bud. For example we have hundreds of times ended a legal issue or dispute with just one letter of demand using statements such as those below.

  • "We have gross sales exceedign $120,000 a year since 2007 for goods and services associated with use of mark."
  • "We have served over 900 customers for those goods and services since 2007."
  • "We have used the mark as the name of our website, as a domain name, as a product or service promoted in print brochures, and in broadcast email campaigns."
  • "The geographic area of sales relates to customers in Queensland and Northern NSW, and some in each of the other states."

4. Legal design perfection

Businesses of all sizes who register trade marks on their own rarely recognise there are three jobs involved - design work (engage a designer), legal protection work (engage a legal adviser), and branding and other activity in business communication work (engage competent business managers). In combination we call this legal design work.

Including non-essential content in a trade mark application (eg words, phrases or bits of design) can weaken it in the legal arena. Non-essential words might include a tag line or product descripter. They can complicate a mark and weaken protection for key elements.

A great start for legal design work is to commission a thorough and professional mark or name availability search. Call for a quote.

 


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