Common mistakes made in trade mark applications

Trade mark registration is an inexpensive way to protect your brand.

A registered trade mark grants its owner the exclusive right to use that mark in connection with specified goods and/or or services.

Although in some respects a trade mark application is relatively simple to prepare, mistakes are often made.
 
This article provides guidance on areas where mistakes are commonly made.

Ownership

When filing an application, you are required to state who is to be the registered owner of the trade mark.
 
Ownership is no mere formality; it is critical to the trade mark’s use and enforceability.
 
As a general rule, the entity that uses the mark should be the applicant.
 
For example, issues may arise where a director of a company files an application in his or her name, rather than the company’s.
 
The Australian trade mark system provides for “registration of ownership not ownership by registration”.1  Therefore, if the wrong entity applies for registration, then that registration may be defective.
 
It is also acceptable for an entity to apply for a trade mark in circumstances where it intends to authorise a third party to use the mark. This is a separate topic in of itself, that has been discussed further in our previous updates.

File the right mark

When filing an application, you must provide the exact trade mark you intend to use. In the case of a logo, this will require the submission of an image.
 
It is important that the image provided is the precise image the applicant uses or intends to use. If there are any differences, then the registration may be challenged on the basis of non-use.
 
Further, the image provided should be of high quality so there is no ambiguity as to the visual appearance of the mark.
 
If, in the future, you change your brand (even slightly), you will need to file new trade mark applications.

Specification

When filing an application, you must provide a list of the goods and/or services you require protection over.
 
Trade mark protection is limited only to those goods and services listed in the application. Therefore, you should ensure that the specification covers all relevant items and is as broad as possible. If you do not do this, then you may be unable to prevent a competitor from using your mark (or something similar) in connection with certain goods and/or services.
 
When preparing your specification, you may either rely on IP Australia’s picklist, or draft your own. Drafting your own will incur a higher filing fee and may cause issues at examination if the specification is vague or miscategorised.

Lavan comment

Once a mistake is made with respect to a trade mark filing, it can be very difficult to rectify. Often, the best solution is to file a new application (and incur the additional cost of doing so).
 
However, the worst mistakes are the ones that go unnoticed for many years. You may think you have a valid registration, but when the time comes to rely upon it, you discover a technical issue that jeopardises your protection.
 
If you require assistance in preparing trade mark applications or wish to check to see whether your current registrations are enforceable, do not hesitate to contact Iain Freeman or Andrew Sutton.

AUTHOR
Iain Freeman
Partner
AUTHOR
Andrew Sutton
Associate
SERVICES
Intellectual Property and Technology


FOOTNOTES

[1] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [19].