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

Categories: Consumer law