Avoid Costly Legal Issues by Seeking the Assistance of a Registered Trademark Attorney

For those looking at registering a trademark, it can seem overwhelming. These two questions commonly arise:

 

  • How do I register a trademark if my business is already established?
  • How can I protect and enforce my trademarks?

 

Unsure what to do, many businesses simply start trading, using a trademark, before they have begun the registration process with IP Australia. Others use the trademark while the application is being processed. The issue here is that if no application is filed or the application is pending, they are not necessarily protected by law in terms of stopping competitors or others from using similar branding. Others could copy or choose a similar mark accidentally, and often there is no legal recourse without a registered trademark.

 

You may also run the risk of using a mark that is the same or confusingly similar to the one registered by another. This can lead to you receiving a letter of demand when others feel their trademark has been infringed. This comes with an explanation of what you need to do to rectify it. They will likely order you to stop using it and detail the time frames you need to adhere to.

 

A trade marks attorney can be consulted to help you look at your options. Without your own defense or registration you may need to rebrand to prevent you from infringing further. This is why legal experts in this field will caution against using a trademark before the registration process is complete, or at the very least approval for registration granted.

 

On the flip side, once you have registered your trademark, you have the following rights:

  • You can display the ® symbol alongside your registered trademark
  • You can license it to another business
  • You can sell it
  • You can take steps against others that commence use of the same or confusingly similar brands for similar goods/services to those covered by your registration.

 

If you are currently considering registering a trademark, here are some tips.

 

  • Have a backup plan while you are sitting out the minimum 7.5 month registration time frame.
  • Before you formally file a trademark application, do a pre-filing assessment to check if your trademark is likely to be approved.
  • If viable, preferably only start using your trademark when it has been fully registered – or at the very least has received acceptance from IP Australia
  • Note that you should follow the same guidelines while you are registering a trademark in another country. Although, not all countries accept ‘prior use’ as a defense to infringing others’ rights like in Australia.

 

Let’s look at the benefits of conducting a trademark search. This should be done before you even register the name of your business, or begin producing your marketing materials and branding. Once you have already invested in marks like logos and domain names, you have started to put money behind the brand. This will be wasted if it transpires your use of that brand infringes on another person’s trademark. Conducting a trademark search is not compulsory, but it could save you stress and money.

 

Is a trademark registration legally required?

 

No, you don’t need to register a trademark but searching to see if the mark is already used is important because you want to ensure that the name can be used.

 

You should do this even if you don’t decide to formally register a trademark. Choosing to register your mark is an important step towards protecting your brand. It helps make sure that another trademark owner cannot then allege that by using your registered mark you are infringing their rights. So, while not compulsory, it does provide safety in use.

 

Here’s how it works:

 

  • A trade marks attorney can conduct various levels of searches for you. ATMOSS, a service offered by IP Australia, also has a database you can search for.
  • The attorney you hire will typically send you results within a couple of days.
  • Their results will outline their recommendations on whether or not you should proceed to apply for the mark or not.
  • They will suggest how you can move forward with your application.

 

It can be risky to conduct a trademark search without the advice of a trade marks attorney. It’s not always clear if similar marks are in the system already, or available. Sometimes a similar trademark registration or application can already be in place. Look out for trademarks that look or sound similar to prevent this if you search on ATMOSS. Search for trademarks that include the name of the brand you want to do, as well as marks that contain similar words or part words. You want to avoid applying for a mark that is similar and would create confusion in the marketplace unless you are in a position to address such an issue.

 

If the name appears available, you can take steps to file a trademark application. It will take at least 7.5 months from the date you file the application for the trademark to become fully registered. While it is a lengthy process and at times complicated, you must prioritise this to protect your business, brand and even the reputation of your work potentially.

 

For more information and advice regarding trademark, registrations contact Mark My Words Trademarks.

 

Author Bio:

Jacqui Pryor is a registered trademark attorney based in Australia who provides trademark registration services, searches and other matters regarding trademarking. For more information be sure to visit Mark My Words Trademarks