Thinking of Filing Your Own Trade Mark? Think Again

Should You Use a Trade Mark Lawyer

Registering a trade mark in Australia can look surprisingly simple.

You open the IP Australia website, enter the name of your business, choose some categories, pay the fee and press submit. The online form itself may only take a few minutes.

So why use a trade mark lawyer?

For some people, filing their own application may work. However, the real legal work is not typing information into the form. It is deciding what to file, who should own it, what it should cover and whether it is likely to be accepted or challenged.

Those decisions can affect the value of your brand for years.

A trade mark is more than a business name

A registered trade mark can give its owner valuable rights to use and protect a brand in connection with particular goods or services.

Section 17 of the Trade Marks Act 1995 (Cth) defines a trade mark as a sign used, or intended to be used, to distinguish one person’s goods or services from those of others. A sign may include a word, logo, name, letter, number, shape, colour, sound or combination of these elements.

However, registering a company name, business name or domain name does not automatically give you registered trade mark rights.

A business may therefore spend years building a name, only to discover that another party owns an earlier trade mark or that the chosen name is difficult to register.

Searching involves more than finding an exact match

Before filing, it is important to search for earlier trade marks.

This does not mean simply typing your exact name into a database. Under section 44 of the Trade Marks Act, an application may face an objection because of an earlier mark that is substantially identical or deceptively similar and covers the same, similar or closely related goods or services.

That means a different spelling, spacing, ending or logo may not necessarily avoid a problem.

A proper search considers how the marks look, sound and are likely to be remembered. It should also consider the goods and services covered by earlier registrations, not merely whether another business appears to be operating under the same name.

Trade mark disputes can turn on fine distinctions.

In Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, the High Court considered whether expressions involving BOTOX and PROTOX were being used “as a trade mark” and whether the marks were deceptively similar. The case illustrates that individual words, their context and the way they are presented can make a significant legal difference.

Choosing the correct owner

One of the easiest mistakes to make is filing in the wrong name.

Should the owner be you personally, your operating company, a holding company or the trustee of a trust? What happens if one company owns the brand but another company operates the business?

Section 27 of the Trade Marks Act provides that an applicant must claim to be the owner and must use, intend to use, or authorise another person to use the trade mark for the nominated goods or services.

IP Australia does not ordinarily determine whether that ownership claim is legally correct when the application is first filed. Its current practice manual expressly recognises that ownership can be a complex question and that ownership is generally not verified during examination.

In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, an individual filed an application even though the relevant company was the true owner. Transferring the application to the company later did not fix the original problem. The Full Federal Court found that ownership had to be correct at the filing date.

This is particularly important for family businesses, corporate groups, franchises and businesses that license their brands to related or independent operators.

What categories to file in?

Every application must identify the goods and services for which protection is sought.

There are 45 trade mark classes, but choosing a class number is only part of the exercise. The wording within each class determines the actual scope of protection.

For example, a pharmacy group may need to consider more than “pharmacy services”. Its brand may also be used for retail services, health information, educational services, loyalty programs, software, online platforms, business support or products sold under the brand.

Protection is limited to the goods and services selected. IP Australia also confirms that applicants generally cannot expand their specification by adding new goods, services or classes after filing. A further application may be required.

Choosing too little may leave gaps. Choosing everything can increase fees, create examination issues and expose unused parts of the registration to removal later.

The aim is not to select the largest possible list. It is to choose wording that reflects the business now and its realistic future plans.

Not every great name is registrable

Section 41 of the Trade Marks Act provides that an application must be rejected if the mark is not capable of distinguishing the applicant’s goods or services from those of other traders.

Names that directly describe a product, service, quality, purpose or location may be difficult to monopolise. For example, a business may love a name because it immediately tells customers what it does. Unfortunately, that may also be the reason other traders need to use the same words.

Sometimes evidence of use can help overcome an objection. However, the nature, length and extent of that use matter, and the evidence must connect the mark with the applicant and the relevant goods or services.

The trade mark has been accepted – now what?

Even if IP Australia accepts an application, it is advertised and may be opposed by another party. IP Australia explains that accepted applications are published for a two-month opposition period before registration proceeds.

A registration may also be challenged later when the owner tries to enforce it. Problems involving ownership, lack of intention to use, prior rights or the scope of the registration can become especially important during a dispute.

That is often the worst possible time to discover that the original application was not properly structured.

Getting the strategy right

Using a lawyer does not guarantee that every application will be accepted. Trade mark law involves judgment, and objections or oppositions can still arise.

The value of advice is in identifying risks before money is spent on applications, packaging, websites, signage and marketing.

At Sharon Givoni Consulting, we can assist with:

• clearance searches and risk advice;
• deciding whether to file a word mark, logo or both;
• identifying the correct owner;
• preparing an appropriate goods and services specification;
• advising on registrability;
• filing and managing the application;
• responding to examination reports;
• preparing or reviewing trade mark licences; and
• reviewing a group of trade marks as a commercial portfolio.

A trade mark application may appear to be a simple form. But small choices in that form can determine whether the resulting registration protects the business you actually operate.

Obtaining advice at the beginning is often far less expensive than filing again, responding to avoidable objections, rebranding or trying to repair an ownership problem later.

Cases

Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 (BOTOX/PROTOX)

High Court judgment:
https://www.hcourt.gov.au/cases/case-s41/2022

AustLII:
https://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/HCA/2023/8.html

Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83

AustLII:
https://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/FCAFC/2017/83.html

Federal Court:
https://www.fedcourt.gov.au/digital-law-library/judgments/fcafc/2017/2017fcafc00

Need help with your trade mark?

At Sharon Givoni Consulting, we understand the value of trade marks—we’ve protected our own, including Turning Legalese into Legal Ease® and Turn Your Ideas into Assets®. Whether you’re filing your first application or reviewing an existing trade mark portfolio, we can help you develop a practical strategy that protects your brand from the outset. Getting it right at the beginning is often far less expensive than fixing problems later. Contact us here info@iplegal.com.au

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Please note the above article is general in nature and does not constitute legal advice.

Please email us info@iplegal.com.au if you need legal advice about your brand or another legal matter in this area generally.