The risks and pitfalls of filing your own trade mark application

Considering doing your own trade mark application? There are risks and pitfalls in taking a DIY approach.

Taking the DIY route can be difficult, especially it you aren’t familiar with the ins and outs of this regulatory process – plus it explains why guidance from an experienced trade marks professional is almost always recommended.

Breaking into new markets, attracting and keeping customers and growing a business is tougher than ever.  A strong brand and reputation are essential to business success and trade mark registration is a failsafe way to ensure that your brand is properly protected.

While the trade mark application process in Australia is generally fairly straightforward, even the smallest mistake or inadvertent omission can have a substantial impact on the outcome.

Errors and inaccuracies can result in time delays, additional costs and even legal battles, and in some instances, these can be impossible to rectify.  This can have severe – sometimes even fatal – consequences for a business.

Doing a DIY trade mark application

Many people manage to register their trade marks without legal advice, but there are inherent risks in doing so.

If you intend going the DIY route, here are some of the key things to be aware of:

• Doing a thorough trade mark search upfront is crucial
• A trade mark that is too generic or descriptive is unlikely to be accepted
• Your choice of class or classes of goods and services (and the items you select within each class) needs to be extremely well-considered
• Even a small technical error can lead to delays and/or financial penalties
• Missing a deadline can have significant consequences
• Failure to register an international trade mark can hamper your business’s expansion plans

In my experience, these are the most common areas where people come unstuck when doing their own trade mark applications, but they aren’t the only issues that can arise.  In truth, the only way to get a trade mark application right the first time, is to engage the help of a trade marks attorney or lawyer that practices in the space.

6 problems with a DIY application

1. Failure to conduct a comprehensive search

If you don’t do a thorough trade mark search to ensure that your intended trade mark is available, you run the risk that it will be rejected or even opposed by a third party.  A search will reveal if a similar or identical trade mark already exists and also if an application is pending for a confusingly similar name.

Solution:  Trade mark searches can be done via the Australian Trademarks Online Search System (ATMOSS), but ideally, you should enlist the help of a trade marks expert. Some trade mark searches are free.

2. Trying to register a trade mark that is generic or descriptive

The purpose of trade mark registration is to enable the goods or services promoted under one brand to be distinguished from others in the same marketplace.  It prevents consumer confusion and it enables people to differentiate the origins and authenticity of a particular brand.

If you choose a mark that is too descriptive or generic (a trade mark can be a single word or a variety of other things including a logo, a slogan, a name, a number and a smell), it won’t be accepted for registration on the basis that it is non-distinctive.  For example, ‘Sally’s Shoes’ or  ‘Burgers Galore’ might not be considered as unique identifiers, as these names immediately tell us the nature of the product or service involved.

Solution:  An informed choice of trade mark will save you time, effort and money.

3. Failure to choose the appropriate class/classes of goods and services

There are 45 categories of goods and services for trade mark registration in Australia and once your application has been filed, your selection is largely final. Once filed, the scope of goods or services nominated may be limited but amendments that expand the scope will  be accepted (although it is possible to make a whole new application at extra cost).  This means that if you don’t cover the full scope of your intended protections at the outset, you could leave your brand vulnerable or incur additional costs that could have been avoided.

Solution:  An expert in the complex field of trade mark law will understand the subtle differences between similar classes of goods and services, and will therefore be able to help you make the right choices to ensure full coverage.

4. Mistakes and omissions

Technical errors such as spelling mistakes, filing the application using the incorrect owner’s name (remembering rightful ownership is a matter of fact, not personal choice) and using incorrect contact details (eg for communications from IP Australia) can lead to delays and/or financial consequences.

Also, are you aware that you may need to do a whole new application if you update or refresh your brand in any way?

Solution:  There are many different aspects to a trade mark application and the process demands accuracy, diligence and attention to detail.  If you aren’t au fait with trade mark law, your brand protection may be in jeopardy.  A trade marks profession knows all the nuances and potential pitfalls of the process and is able to navigate registration efficiently, seamlessly and cost-effectively.

5. Missed deadlines can have significant consequences

Did you know that a registered trade mark doesn’t last forever?  Or that it’s imperative to respond to directives from IP Australia timeously (such as an adverse examination report)?  Or that a trade mark has to be used in order for it to remain properly protected?

If you miss a deadline or aren’t aware of the timelines involved in trade mark registration, you could put your business at risk.

Solution:  Entrusting one of your business’s most valuable assets – its trade mark – to a professional firm is a smart move.  They will take responsibility for ensuring that all legal requirements of trade mark registration are met, including paying fees timeously, adhering to renewal dates, dealing with correspondence appropriately and meeting deadlines.

6. Failure to register an internationally

It’s vital to consider both your current – and future – areas of operation when filing a trade mark application.

If you expand your business beyond Australia’s borders, you need to make sure that you won’t be transgressing another trade mark owner’s rights.  Trade mark rights in Australia don’t automatically extend to other countries, so if you do decide to trade overseas without the appropriate protections, you could find that your business is vulnerable to costly litigation.

Solution: The cost of not casting your net wide enough in terms of protecting your brand internationally can be significant, so it’s in your interest to engage an expert in international trade marks.  They’ll provide qualified, practical advice on comprehensive brand protection in any jurisdiction in which you currently trade – or intend to trade.

Summing up the risks and pitfalls of filing an application yourself

Trade mark registration the best form of legal attack and defence when it comes to protect your valuable brand, but doing it yourself is not necessarily the best way to go.  There are many pitfalls to DIY trade mark registration as evidenced above – and professional advice can save you time and money in the long run.

Get in touch with trade mark attorney Jacqui Pryor  03 8288 1432 or submit an enquiry through our website.