From TM to R (Part 2)

Road Bumps and Roadblocks in the Journey from TM to R

Our last article introduced the steps in the trade mark application process and recommended some tips to protect your brand while your application goes through the requirements for registration. We mentioned that the trade mark application to registration process takes at the very least, 7.5 months. The assumption here is that the application process goes smoothly with zero hiccups along the way.

However, we often receive enquiries and assist clients who have applied for registration of their trade mark only to receive some negative feedback from IP Australia about their application. This bad news can come at 2 different stages of the registration process.

The first stage is at the examination stage. This is where your trade mark application is assessed by an IP Australia examiner. What the examiner is looking for at this stage is whether firstly, your application contains all the correct information needed for registration and secondly, whether your application meets all the legal requirements. This could range from simple mistakes that while costly, can be quite easily fixed, for example, you may have listed your trade mark application under the wrong class and the solution would be to amend your application under the correct class. However, you may receive an adverse report from IP Australia that says your application cannot move forward because it is too similar to an already registered trade mark. Now this is a much more complicated and costly situation to be in.

The second stage where your trade mark could hit a roadblock is during the opposition period. The opposition period happens after your trade mark has passed the examination stage and is the final test before registration. During the opposition period, other parties such as registered trade mark holders and unregistered trade mark holders can oppose your registration. These other parties will often oppose registration of a trade mark because they consider it too similar to their trade mark. An opposition is far from ideal and can result opposition proceedings which are costly both in terms of finance and time.

We understand that a lot of time and effort is already invested in coming up with the perfect brand and it’s disappointing and frustrating when this carefully crafted brand does not successfully pass the trade mark registration process. That is why many of our clients come to us for an independent review of their intended trade mark application so they can make sure this process goes as smoothly and as cost effectively as possible. So, before lodging your trade mark application with IP Australia, be sure to get in touch so we can help you navigate any potential road bumps and road blocks in your trade mark application.

Trade Mark Enquiry

For more information on our trade mark services and quotes on our professional fees, please contact us or visit our quoting page. Our experienced trade mark lawyers will contact you to explore how we can improve your business and add to your balance sheet by realising the value in your intellectual property through trade mark registration.

Carina Yap

Carina Yap
Trade Mark Lawyer

Carina Yap is a solicitor with Phang Legal, an incorporated legal practice based in Parramatta CBD providing professional legal services in trade mark advice, representation and trade mark registration to businesses across Sydney and Australia.