Many individuals and businesses file trade mark applications themselves each year. In fact, it is pretty straight forward to file the application yourself online at IP Australia – click a few boxes and put in your credit card details and you are away…there is even a “Head Start” process where a trade mark officer will give you “advice” over the phone.
So you may be thinking – why would a trade mark attorney be telling me this? The simple fact is that while it may be simple to tick a few boxes to “file” your application, you still need to know which boxes to tick, how this affects your business, what trade mark you should actually file, what goods and services to specify and what classes you need to register. You also need to understand common law trade mark rights and the interplay between business names (also known as trading names), domain names and trade marks.
In most cases, for a relatively small fee, we are able to discuss your business with you to clearly understand your business and advise on the correct and most cost effective path forward for seeking trade mark registration. We can assist to unify your branding by creating synergies between your trade mark, your business name and your domain name.
We can also assist with overseas trade mark filing and contentious issues such as trade mark infringement. We have seen a number of businesses with “self” filed trade marks having difficulty progressing the marks through the trade marks office and/or enforcing the marks once the trade mark is registered. We have also reviewed trade marks held by one small business to find that the entire portfolio was invalid due to an error at the filing stage. In this case, thousands of dollars were paid to the trade marks office which were non-refundable.
Remember, the trade marks office will not review your trade mark or application details to ensure that the trade mark is appropriate for your business and provides broad enforceable rights.