Navigating the Trade Mark Road Bumps and Roadblocks

Trade Mark Registration Considerations

Picking right up where we last left off, I talked about the 2 stages in the trade mark registration process that can cause a hiccup in your master plan – the examination stage and the opposition stage. While no one (including the powers that be at IP Australia) can guarantee your trade mark safe passage to registration, here are a few tricks of the trade that can ensure that your application is given the best chance at registration.

1. Are you eligible
Before even doing anything else, decide who the trade mark owner is. An applicant for a trade mark can be an individual, a company or an incorporated association. A business name is not an eligible trade mark holder. Your application is off to a less than ideal start if it is not even eligible to begin the process.

2. Do your due diligence
One of the main reasons trade mark registrations fail is that it is too similar to an existing trade mark. IP Australia can issue an adverse report at the examination stage if they find that the trade mark you intend on registering is in conflict with an already registered trade mark. Further, even if you pass IP Australia’s internal examination, your trade mark is later open to public scrutiny at the opposition stage which allows other traders to oppose registration of your trade mark. So, the bottom line is to do your due diligence before lodging your trade mark application.

3. Know your trade mark
What does your trade mark consist of?

Is it a phrase that describes your business? Does it describe its geographical origin? Is it a phrase commonly used within your industry? Is it named after its founder? Does it contain a commonly used letter/number combination? These are all questions you should ask yourself before filing an application to register your trade mark. If you find yourself saying yes to most of these questions, this is potentially a red flag and you should get in touch with us before proceeding.

These are just some key points to help get you started on your journey. The other addition to consider on your journey is a travel companion who is familiar with the route, the road bumps, roadblocks and shortcuts to your destination. That’s where we come in. Our team can provide you with valuable assistance to get your trade mark from application to registration so be sure get in touch so we can help guide you along the way.

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.