Information to help businesses self-file trade mark applications

Many businesses are filing their own trade mark applications, which can save costs as opposed to using an attorney firm who can provide a full service throughout the process.  However, there are areas in the application process where professional help is a real advantage. 

I am an experienced trade marks attorney and my services are an alternative to either going it alone or engaging a full-service trade marks attorney firm.  You keep control of your application, filing and monitoring it yourself, but you can seek my expert advice at any stage of the process.  I charge on a fee-for-service basis, providing advice when you actually need it, avoiding the high fees that can be associated with large firms. 

Trade marks
A trade mark is something that is used by a business to distinguish its goods or services from those of other traders eg words, a name, a logo or even a shape, colour, sound or scent – although these last ones are more difficult to register than words and logos.  That means that if a mark is completely descriptive of the goods or services or is a term of praise for the goods or services, eg AWESOME ELECTRONICS, the trade mark can be very difficult to register without adding more distinctive material to the mark or filing evidence of use.

Trade marks are effectively in a queue on the Trade Marks Register.  Earlier marks have priority over later marks.  This is one reason to file for trade mark registration sooner rather than later.

Choosing a trade mark, checking whether it is available to be used (and does not infringe another’s rights) and selecting the goods and services for which registration is to be sought are complex issues and professional advice is recommended.  Making a mistake in any of these areas can harm the rights of the business.  I can advise on all of these issues.

eServices
Once you have decided on the trade mark and the goods and/or services that you wish to cover, for a business to file a trade mark application itself, you will need to register for eServices, the Trade Marks Office’s (“TMO”) online lodgement service.  Then you can lodge your trade mark application online and the TMO corresponds with you online via eServices.  The TMO is part of IP Australia, which also registers designs, patents and plant breeder’s rights.

The TMO provides a lot of helpful information about filing trade marks at https://www.ipaustralia.gov.au/trade-marks.  Information about eServices can be found at: https://www.ipaustralia.gov.au/eservices-registration-overview.

Images
You can type in a word mark or upload an image, eg a logo, onto eServices.  A word mark gives wider protection because you can use the word in a variety of fonts and styles, but an image can sometimes be easier to register.  You can upload the image in black and white or colour, but, even if the image is in colour, the trade mark will normally be registered in all colours.  This is the widest protection because, if someone uses a similar mark to yours for similar goods or services, it may still infringe your registration even if their mark is in a different colour.  It is possible to limit the mark to a certain colour or colours, in an endorsement, but this will narrow the protection of your registration

Two ways to file a trade mark
There are two ways to file a trade mark application:

  1. a standard application; and
  2. a Headstart application.

The TMO compares the two types of application at: https://www.ipaustralia.gov.au/trade-marks/applying-for-a-trade-mark/how-to-apply-for-a-trade-mark.

Main differences between a standard and a Headstart application
The main difference between a standard application and a Headstart application is that a Headstart application receives a pre-assessment by a Trade Marks Examiner.  You will receive a report which tells you if the Examiner has found any other similar marks on the Trade Marks Register for similar goods or services.  These might block your application (although there can sometimes be ways of overcoming a citation of a prior mark). 

Any similar mark revealed by the Headstart pre-assessment could also alert you to the possibility that your proposed mark might infringe a third party’s rights.  It is important to know this before you commit to using the mark and investing heavily in it, because you could receive a letter from the other trade mark owner requiring you to stop sales.  An alternative way of finding out whether your proposed mark is likely to infringe someone else’s rights is to have a professional trade mark search conducted.  I can arrange for this to be done.

The Examiner may also raise other problems with the application, such as whether your chosen mark is too descriptive to be registered. It is possible to amend the application at this stage in light of the Examiner’s comments before it is officially filed. 

One disadvantage of a Headstart application is that you must choose your goods and services from the “Picklist” (see below), whereas a standard application gives you the option of using the Picklist or allowing you to use your own description of your goods and/or services.  

A Headstart application costs slightly more than a standard application where the Picklist is used (because of the pre-assessment), but is very useful for self-filers.  It can include telephone assistance from the pre-assessment Examiner.  If you wish to use your own description for your goods and/or services in the standard application, there is an additional cost per class.  A Headstart application may also be processed more quickly than a standard application.     

The Picklist and selecting your goods and/or services
The Picklist is an electronic list of over 60,000 types of goods and services which will cover most goods and services that businesses wish to sell.  However, sometimes it is better to give a more specific description to particular goods or services.  In this case, you will need to file a standard application.

The list of goods and services which form the Picklist is found on the page headed Trade Marks Classification Search: http://xeno.ipaustralia.gov.au/tmgns/facelets/tmgoods.xhtml. A link to this page can also be found at the bottom of the trade mark search page: https://search.ipaustralia.gov.au/trademarks/search/quick under the link “Goods and Services”.  

There are 34 classes of goods and 11 classes of services.   These classes do not necessarily group like goods or services together.  What you are interested in may cover more than one class.  TMO filing fees depend on the number of classes that you apply for – ie the larger the number of classes, the higher the cost.  If this cost is an issue, you may need to decide which class or classes are the most important to your business immediately.  If your application is granted, you may file another application for additional classes at a later time.

It is possible to search the Picklist for the goods and/or services that you are interested in.  However, there may be different ways to describe the same thing, so that, if your search shows in a nil result, try a different term.  

The tabs “Classes of Goods” and “Classes of Services” set out what are called the “class headings”.  They are a brief summary of what is contained in each class but they will give you an indication of which classes are likely to be of interest to you.  If you click on a particular class number from these class headings, you will see the whole list of goods or services in that particular class.

Selecting the goods and/or services to be covered in your application is not as easy as it looks, even if you use the Picklist.  For example, “promotional marketing” in class 35 does not refer to the promotional marketing that you do for your own goods or services.  Rather, it refers to where you are providing promotional marketing services to others, as would a marketing consultant.  There is no need to include “promotional marketing” in your application if you do not provide this service to your customers. 

Creating your own description of your goods and/or services, instead of using the Picklist, can also be difficult and you may accidentally combine goods and/or services from more than one class.  After discussing what your business does in detail, I can advise on the most appropriate goods and services to be covered by your application and how they should be described. 

Examination
Regardless of what type of application you file, your trade mark application will be examined by a Trade Marks Examiner to see if it is registrable and meets formal requirements.  If there are no problems with your application, the TMO will advise you that your application is accepted, via eServices.

Not all trade applications are accepted straight away or at all, even if they have gone through the Headstart process (although this reduces the risk of rejection).  If there are problems with your application, the Examiner will send you an “Adverse Report” setting out what the problems are.  This does not mean that the application will never be accepted but that you need to address the Examiner’s concerns. 

Sometimes it is necessary to file evidence of the use that you have made of your trade mark to show that the mark is capable of distinguishing your goods/services from those of other traders.  Sometimes the Examiner may cite a prior registered trade mark or pending trade mark application, and it may be possible for you to persuade the Examiner that the other mark and/or its goods/services are sufficiently different to your mark or take other actions to overcome the concern.

This is where professional advice can be very important.  The Examiner may suggest one way to fix the problem, but a professional may suggest an alternative that better suits the interests of your business.  I have the experience to provide this advice.

Extensions of time
You have 15 months from the date of the Examiner’s First Report to get you application ready for acceptance.  If you have not been able to do this by this deadline, it is possible to extend the deadline for a maximum of a further six months, at a cost of $100 a month in TMO fees.  There is no need to provide any reason for these extension applications.  Thus, you have a total of 21 months to achieve acceptance of your application.  It is essential that you comply with any TMO deadline or your application will lapse.

There may be other circumstances where you need an extension of time on specific grounds.  If this becomes necessary, professional advice should be sought

Oppositions
Once an application is accepted, it will be advertised in the Trade Marks Journal, to give anyone else who has concerns about the application time to file a Notice of Intention to Oppose.  This person is called the opponent.  The opponent should follow this Notice within a month by a Statement of Grounds and Particulars, setting out the reasons why they oppose your trade mark application. 

Within one month of you being given the Statement of Grounds and Particulars via eServices, you must file a Notice of Intention to Defend the opposition to your application, unless you are prepared to abandon the application.  Your application will lapse if you do not file this Notice.

If the opposition is successful, your application will be refused in part or whole, although it is possible to appeal the refusal to a court.  If the opposition fails, your trade mark will be registered, unless the opponent appeals the TMO decision.

Trade mark oppositions are complex and it is best to seek professional help.  I am experienced in conducting trade mark oppositions and can provide you with advice on the best way forward.

Registration
If your application is accepted, there is no further TMO charge for registration of the trade mark. 

A trade mark is renewable every 10 years for a TMO renewal fee that depends on the number of classes.  If you are still using your trade mark after 10 years, it is very important to renew the registration or your business will lose a valuable right. Thus, you must make sure that your contact details are kept up to date on eServices.

This information sheet provides general information only, and is not intended as legal advice specific to your circumstances.  Please seek the advice of a trade marks professional if you have any particular questions.

Liability limited by a scheme approved under Professional Standards Legislation

© Margaret Ryan, Melbourne, Australia, 2019

Unity of purpose – new test for control of trade mark use

The Full Court of the Federal Court has overturned a finding that a trade mark owner did not control the use by its parent company of its marks: Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100 (20 June 2019).  This decision is significant because it provides a more flexible, less legalistic, approach to what amounts to control of trade marks within a corporate group.

The Facts
Trident Foods was the owner of two trade mark registrations for the word TRIDENT.  These marks were blocking Trident Seafoods’ application to register a logo mark including the word TRIDENT.  Trident Seafoods tried to remove the word mark registrations from the Trade Marks Register on the basis of non-use.

The TRIDENT marks were, in fact, being used by Trident Foods’ parent company, Manassen.  The companies had common directors, operated from the same business premises and were part of the same corporate group.  Manassen’s TRIDENT products were labelled “Registered trade mark of Trident Foods Pty Ltd”.

Non-use
It may come as a surprise to some trade mark owners that, if a registered trade mark is not used, it can become vulnerable to being removed from the Trade Marks Register for non-use.  The Trade Marks Act adopts a “use it or lose it” approach, wanting to declutter the Register of unused marks.

Control of trade mark use
If someone uses a trade mark under the “control” of the owner, that is called “authorised use” and this will protect the trade mark from being removed from the Register for non-use. A previous Full Court decision had held that “control” required actual control.  It was not sufficient to have a licence agreement which included provisions for control of the licensee’s use that were not, in fact, exercised. 

Trial judge’s findings
The trial judge in the Trident case held that, because Trident Foods was a wholly owned subsidiary of Manassen, it could not control its parent.  The fact that the two companies had common directors did not, on its own, allow Trident Foods to control its parent.  There were no examples of actual control by Trident Foods over Manassen’s use of the TRIDENT marks.  This meant that the trade marks were not used by Trident Foods during the non-use period and were vulnerable to be removed from the Register.

The Full Court’s findings
The Full Court overturned this finding and held that the question was not whether one company controlled the other but whether Trident Foods had control over Manassen’s use of the TRIDENT marks.  The fact that the two companies had the same directors was significant, given that the directors of Trident Foods had a duty to maintain the value of the trade marks (which had a book value of $10 million).  Trident Foods necessarily controlled Manassen’s use of the marks by reason of the fact that it owned the marks and its directors, who were also Manassen’s directors, must have had one common purpose – to maximise sales and to enhance the value of the brand.  The two companies therefore operated with a “unity of purpose” regarding the use of the trade marks. 

The lack of evidence of actual control exercised over Manassen’s use was unsurprising, in the Full Court’s opinion, given the relationship between the companies.  The Full Court also accepted one director’s evidence that it was unnecessary to give directions to Manassen, as supporting the finding of the unity of purpose of the two companies.

Significance of decision
The Full Court’s decision will be very welcome to many corporate trade mark owners where the registered owner is often not the holding company.  Several recent decisions, including that of the trial judge in the Trident case, seem to have taken a strict legal approach to corporate groups, finding sufficient control where the user is a wholly owned subsidiary of the trade mark owner, but finding a lack of control in other corporate structures.  The Full Court has taken a more realistic approach to corporate groups and has implemented a new “unity of purpose” test to determine whether owner and user are in lock step regarding the use of trade marks.

Arm’s length licences
Nonetheless, where a user is not related to the trade mark owner, as in an arm’s length licence agreement, care needs to be taken that actual control over the licensee’s use is exercised, and is recorded so that evidence can be produced if the owner needs to defend a non-use action.  I can provide advice on measures to protect a trade mark owner from the loss of valuable registered rights.

Three Myths about Commercial Agreements

Having practised for 30 years, I know that there are certain misconceptions about drafting commercial agreements:

  1. All that a lawyer does to produce an agreement is just take a precedent off the shelf and insert the names and addresses of the parties.  In the area of intellectual property (“IP”) agreements, it couldn’t be further from the truth.  Apart from a few exceptions, most IP agreements eg licences, distribution agreements, software agreements etc, involve several hours of legal work.  They are bespoke agreements, specifically tailored to the client’s requirements.   Although a lawyer may base the agreement on existing agreements, the new agreement has to be drafted for the new situation.  This involves talking to the client to find out what they want in their agreement, conceptualising the new agreement, choosing from a range of clauses and amending them, free hand drafting new clauses and checking the final product.
  2. It doesn’t matter which side drafts the agreement – it is all the same agreement – and it will save costs to let the other side draft the agreement. This can be a dangerous assumption to make.  In every agreement there are two sides.  A lawyer will normally draft an agreement to benefit their side – slanting it in favour of their client.  Sometimes the first draft can be very one-sided and unfair to the other side, or the agreement may not be well-drafted and is unclear.  Not all lawyers are equally skilled at drafting agreements.  In cases such as these, it can easily cost as much to try and correct the agreement as it would to re-draft it from scratch.  My motto is always to “get hold of the drafting” if at all possible, so that I can draft for the benefit of my client.
  3. The parties are in agreement over the deal so that it will be OK and cost-effective for them to use the one lawyer.  This is also a dangerous assumption.  Lawyers have ethical duties to avoid conflicts of interest and acting for both sides of a transaction is a classic conflict of interests.  As set out in 2 above, there are two sides to every agreement, and an option that will benefit one side will usually be to the detriment of the other.  This is why, if the two sides come to a lawyer’s office, the lawyer will normally have to turn one party away to seek legal representation elsewhere.

Commercial agreements, such as IP agreements, are complex beasts.  They will govern the relationship between the parties in relation to valuable IP rights, perhaps for several years.  A well-drafted agreement will clearly set out the rights and responsibilities of each party and will hopefully avoid future disputes because everyone knows where they stand.  IP agreements need to be drafted with care by an experienced IP practitioner working solely in the interests of their client.

Do you give warranties against defects about your services?


Do you say eg “All repairs are guaranteed for 12 months”?  If so, are you ready for the change in the law that starts on 8 June 2019?  This requires you to give consumers a document about your warranty that sets out detailed information including:

  • How the warranty is to be claimed;
  • Who bears the expense of claiming on the warranty;
  • A statement about the consumer’s other rights;
  • Compulsory wording which differs depending on whether you supply services only or goods and services together.

One aim of the changes is to ensure that consumers of services understand that your warranty is in addition to the consumer’s other rights under the Australian Consumer Law.

A “warranty against defects” in services means a statement to a “consumer” around the time of supply that you will rectify services if they are defective or compensate the customer.

A “consumer” is not limited to consumers of household items.  A “consumer” also includes anyone who purchases goods and/or services worth less than $40,000 (with limited exceptions) including for commercial purposes.

If you do wish to offer warranties against defects either for services or for goods and services (eg repairs with replacement parts) after 8 June 2019, you will need to comply with the new law or risk fines of up to $50,000 for companies and $10,000 for individuals for each breach.

The new law is very detailed in its requirements and is only summarised here. I can review your warranty documentation and advise on how to comply with these new requirements.

Is copying another’s product legal?


This question was answered “no” in the case of Lumen Australia Pty Ltd v Frontline Australasia Pty Ltd [2018] FCA 1807but the answer may be different in other circumstances. 

The facts

Lumen supplied Frontline with electronic automotive components for inclusion in towbar kits that were supplied by Frontline to Mitsubishi and Mazda.  Frontline, for profit reasons, decided to replace these components with components made by Vision, without telling either Lumen or its customers or obtaining their approval. To facilitate this substitution, Frontline provided Vision with samples of the Lumen products (including the Engine Control Unit (ECU) which carried copyright markings) as well as Lumen engineering drawings and the Lumen installation instructions.  Vision created almost identical copies and these were supplied as part of the towbar kits by Frontline to Mitsubishi and Mazda.  When this substitution came to light Lumen sued Frontline and Vision.

Infringement by Frontline

This was a clear case of infringement of Lumen’s rights by Frontline.  At the beginning of the trial, Frontline admitted copyright infringement in the ECU markings, engineering drawings and installation instructions, as well as breach of confidence and breach of contract with Lumen and passing off its towbar kits to its customers as still containing Lumen parts.  What is significant is:

  1. There was no claim of infringement in the copied parts themselves.  This was because there was no design registration for the Lumen parts.  In addition, the Copyright Act provides that there is no copyright infringement of design drawings or the parts themselves where there is no design registration and the design of the parts is industrially applied (generally where more than 50 items are produced).
  2. Despite this, Lumen was able to rely on incidental copyrights – in the ECU markings, in the installation instructions and in drawings that were copied plan to plan.
  3. Lumen was awarded about $140,000 against both Frontline and Vision for the lost sales of its parts.
  4. Lumen was also awarded $500,000 against Frontline only as “exemplary damages” for passing off (which would have been the same for “additional damages” for copyright infringement).  This is a very substantial amount which was intended to punish Frontline and deter it from similar conduct in future, especially because of its deliberate and involved planning of the infringement over a significant period of time. 

Frontline’s conduct was intentional, extremely serious, had safety implications and covered a period of roughly three years until the substitution of the Lumen parts was discovered.  $500,000 for exemplary/additional damages is at the high end for this type of damages. 

Copying another’s product

Copying another’s product can be fraught with danger, especially if, as in this case, the copier owes obligations in contract or confidence to other parties.  Assuming that there are no such obligations, it may be possible to copy a product, but this involves undertaking patent and design searches as well as considering precisely what is proposed to be copied to make sure that no incidental copyrights or trade marks are infringed.  I can assist businesses if they wish to pursue this course.

Is a descriptive trade mark the best for your business?

Businesses often choose a trade mark that exactly describes their business or product eg Smith & Co Plumbing, being the plumbing business run by Mr Smith.  There is nothing wrong with this.  The name is easy to remember and easily searchable.  If the business is likely to remain a small, family owned business that will never take legal action against anyone else with a similar name, it is a perfectly satisfactory name.

However, if the business has ambitions to grow and may wish to stake out its territory against similar businesses, a descriptive mark is perhaps not such a good idea.  This is because names that are descriptive (Plumbing) as well as names that include common surnames (Smith) are generally not registrable as trade marks before the Trade Marks Office.  Even if they do achieve registration (eg because of long and extensive use eg McDonalds) the registration may provide only limited protection against a business with a similar name because small differences may be sufficient to distinguish the two businesses.  The reason is that, as a matter of policy, trade marks law does not allow businesses to monopolise common names and words that other traders are likely to want to use as trade marks.

I acted in a trade mark opposition against an application for the logo mark: for non-alcoholic drinks.  Although the application was accepted by the Trade Marks Examiner, the decision was overturned because the word “ICY” was a synonym of the word “cold” and so descriptive of a cold drink.  The word could not work as a trade mark because other traders would want to use the mark or something similar for cold drinks.

Similar difficulties apply to descriptive words used as trade marks even if they are not registered.  The Sydney Building Information Centre Ltd tried to stop another company, Hornsby Building Information Centre Pty. Ltd., from using its name.  Customers were confused about whether the two were connected.  However, the High Court held that the problem arose not because of any misleading conduct by the Hornsby Centre, but because the Sydney Centre had chosen such a descriptive name in the first place.

The best trade mark is a mark that has an indirect reference to the business/goods or services but is sufficiently clever/vague that it does not directly describe them eg TUB HAPPY for washable clothes.

I can provide advice on the registrability of a proposed trade mark or the invalidity of a registered trade mark.

New penalties for misrepresentations

There has been a recent change in the law regarding penalties for making false or misleading statements about goods and services.  Maximum penalties have dramatically increased from $1.1 million for companies to a maximum of the greater of:
  • $10 million; or
  • 3 times the value of the benefit received by the company from the breach; or
  • if the value of the benefit cannot be determined, 10% of the company’s turnover for the previous 12 months.

The law covers a wide range of misrepresentations including false representations:

  • that goods or services have a particular standard, quality, value, grade or performance characteristics;
  • that goods are new or have a particular composition or place of origin;
  • regarding testimonials for goods or services;
  • regarding the availability of spare parts;
  • regarding the existence or effect of any warranty, guarantee or remedy;
  • regarding the sponsorship or approval of goods or services or of the supplier.

Thus it is more important than ever that claims on websites, contractual material and the packaging and advertising of products and services are correct.

I can provide advice on product and service claims before publication to assist clients in minimising the risks of liability for misleading statements.