Here are 42 basic tips to help you avoid 90% of common problems and pitfalls in trade mark registration, use and management.
If you Google “the answer to life, the universe, and everything” (without the quotes), the Google calculator produces the answer “42”. It’s a cheeky reference to Douglas Adams’ Hitchhiker’s Guide to the Galaxy series.
In light of this, 42 is a particularly good number for a list of hints to secure a great trade mark monopoly. As with such general rules and guidelines, they are not necessarily universal in their application to every situation. So whilst the list might not be the answer to “life, the universe and everything”, following the tips will help you avoid 90% of common problems and pitfalls in trade mark registration, use and management.
Trade Mark Selection
Be original. Make your trade mark distinctive of your products or services.
Be original! Intellectual property law rewards originality and it is no different for trade marks.
Know and understand the trade mark system and process involved as best as possible.
If you are starting from scratch, seek legal advice early on during brainstorming and identity development. You can save time, money and legal hurdles by obtaining legal and design advice before you settle on what your mark is to be.
Try to avoid descriptive words or concepts in your mark, eg “Digital Studio” for an IT services company.
Register what you actually use or intend to use as a trade mark.
Avoid using common surnames.
Don’t include geographical names in your mark (eg Cairns Shoes), unless they are extremely obscure or you already have a relevant reputation.
Slogans are sometimes difficult to register, and unless they distinguish your products and services they are best avoided.
Stay away from “prohibited signs ”, such as the emblem of the Australian Army.
Generally the shorter the mark, the better.
Get it right the first time. Amending your application is difficult and substantial changes are not allowed.
Don’t delay: the key date from when your monopoly statutory rights begin is the date you file your application.
Trade Mark Applications
Don’t include “the”, “a” and other immaterial matter. See hint 11.
Remove unnecessary elements (eg logos or taglines) and focus the registration to that which you most want to protect. Too often the core essence of a mark is hidden amongst unnecessary clutter.
Make sure your descriptions of goods are sufficiently detailed.
Further to 16, don’t have descriptions of goods and services that are too narrow.
Be a futurist. What goods and/or services will the mark be applied to in the future?
Logo vs word? Think carefully about which to register, or if appropriate register both.
Series mark vs multiple registrations? Weigh up the pros and cons of each option.
Collective mark vs licence arrangement?
Conduct a thorough trade mark register search to identify potential problems, and use “legal design” to avoid them.
Extend your availability searching beyond registered trade marks. Conducting a search and interpreting results requires experience. Those who lack experience can even overlook the obvious and it is best to commission a search by professionals.
Who should be the registered owner of the mark? There are growth and protection considerations here.
Where time is a critical factor, apply to expedite your application.
Think ahead towards an effective international registration strategy. For example, if done correctly an application in Australia can be used to build international rights in Madrid Protocol member countries.
Trade Mark Examination
An adverse report from a trade mark examiner is not the end of the universe. If available, collate and gather appropriate evidence and lodge submissions for IP Australia to review.
If relevant, consider using disclaimers to get your mark over the line.
If appropriate use the six month period after lodging an Australian application to claim “convention” priority in other countries, meaning the Australian date of filing will apply in those countries.
If you are confronted with trade mark opposition, get advice and weigh up the benefits of registration against the likely costs of contesting the opposition.
Trade Mark Use
Always be consistent in how you use your trade mark. This will help preserve and focus your legal monopoly.
Use the mark “as a trade mark” (ie not as a descriptor) in relation to your relevant products or services.
Display clear and prominent trade mark notices.
Understand the ® symbol can only be used for registered trade marks, and ™ can be used for registered or unregistered trade marks. Do not misrepresent unregistered marks as registered. Although it may seem trivial, this is a criminal offence!
Be aware that the Trade Marks Act 1995 provides for several criminal offences relating to altering or removing trade marks, making equipment which can help in falsifying or removing a trade mark or selling, distributing or importing a good knowing that the trade mark has been falsified or removed. Some of these carry sentences of up to two years in jail and/or fines of up to $55,000.
Trade Mark Management and Licensing
Maintain watching briefs over new applications and marks being used in your market that may conflict with your trade marks.
Take firm and decisive action to protect your registered trade marks. Inaction or sluggishness in pursuing infringement allows competitors to develop their own legal rights and makes enforcement more difficult.
Manage your portfolio of trade marks in an intellectual property register or other database containing the key information relating to your registration. Contact us for advice.
Don’t be taken in by bogus databases and other international registers which may spam you upon acceptance of your mark.
If the trade mark is owned by a holding company, put in place proper licensing contracts with licensees or the trading company
If you transfer, assign or buy a trade mark, ensure all documentation is completed to properly effect the transfer. This may be crucial when attempting to prove use or reputation.
Obtain advice. Although the trade marks process may seem relatively straightforward compared to other legal processes, extracting real value and avoiding issues can involve very subtle differences in detail. Select experienced trade mark law advisers to represent you, establish your process or guide you.
If you have questions, please don’t hesitate to contact us for a complimentary conversation on your trade mark. Our trade mark services are flexible and can be tailored to your needs.
Noric Dilanchian is a lawyer, author and educator practising in areas of business law for almost four decades, with a focus on contract drafting and review, and the commercialisation of content, technology, digital assets and intellectual property. Linked In |YouTube