WNA Blog

Sun 5 May 2019

Is a DIY trade mark worth the cost?

Legal Services
You’ve likely come across plenty of cut-price services for people who wish to file their own trade mark.

The Australian Trade Marks Office offers an assisted filing service, and each day we’re seeing more and more online portals pop up. Of course, the cost of services is usually at the forefront of a business owner’s decision-making list, but it shouldn’t be overruled by value.

I’m sure I can figure it out myself!

People tend to assume that the process of registering a trade mark involves little more than lodging a form and receiving a Certificate of Registration. In reality, the trade mark procedure is not quite that simple. Did you know that a trade mark registration may prove unenforceable if not given proper consideration at the filing stage?

It’s easy for self-filers to file ineffective trade mark applications, simply because they’re unaware of the right questions to ask themselves. For example, DIY trade mark applicants often err by filing a mark that includes a lot of unnecessary material.

Filing an entire business name might not be the best approach – often, the actual trade mark forms only a small portion of a trader’s entire name. In the same vein, registering your name in a very distinctive font or in combination with a logo may severely limit your ability to stop others from using your core brand. It is very difficult to take appropriate action against ‘infringing use’ of a trade mark if it differs from the mark as registered.

The real cost of self-filing

The key question potential self-filers should ask themselves is whether they can afford to make the any of following mistakes:

  • Specifications that do not cover the goods and services appropriately. This makes it difficult to enforce against competitors or copycats. You must file your trade mark in the correct classes of goods and services to obtain adequate protection;
  • A trade mark applicant that is not the true legal owner of the mark. This mistake can make the registration unenforceable. Implications around ownership mean that mistakes cannot be rectified at a later stage in the proceedings;
  • Attracting objections through the trade mark prosecution process. A Trade Marks Attorney can guide you through the possibilities of overcoming objections, or how to avoid them altogether. Many applicants who file themselves abandon the process when objections arise, which may not be necessary; and
  • Seeking registration of a mark that is descriptive or generic in the relevant industry. You might manage to obtain a Certificate of Registration, but the resulting trade mark will be difficult to enforce and will hold little value.

There are also many complexities around the issue of “use” which may be necessary to overcome some objections. For example, what is deemed to be the use of a trade mark? How much use do you need to overcome distinctiveness objections? In what form should evidence of use be presented to the Examiner, if required?

Hrm, maybe I shouldn’t self-file…

Even if you manage to address objections raised by the trade marks office, the true cost of initial mistakes may only become apparent if you attempt to enforce your trade mark against a third party. It could be several years down that track that you find your registration is unenforceable.

Engaging a registered Trade Marks Attorney at the time of filing your trade mark can help you avoid these costly errors!

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