Published on 05/14/2018 6:21 am
Why Your Business Needs a Trade Mark Lawyer

Your brand name, logo and slogan are some of your most valuable business assets. It is what existing customers remember, it draws new customers in and it distinguishes your business from competitors. Trade mark registration provides you with exclusive rights to your brand assets. The skills and expertise of a trade mark lawyer can assist you in protecting your brand. This article explains what a trade mark lawyer can do for your business.

Ensure You Can Register Your Trade Mark

IP Australia may object to your application to register a trade mark. Two of the most common reasons for objection are:

  1. the mark you want to register is identical or too similar to a trade mark already registered; or
  2. the name is too generic or descriptive to be capable of distinguishing your business from another business in the same industry.

Re-branding when you realise you cannot register the the brand name, logo or slogan you had your heart set on can be expensive and emotional. Therefore, before applying to register a trade mark, you should search IP Australia's database for existing trade marks that are the same or similar to yours.

 

A trade mark lawyer can help you determine whether your application is likely to be accepted by IP Australia in the initial stages. In addition, they can also determine whether you are likely to face opposition by third parties and suggest strategies to overcome these hurdles. Having access to such knowledge before applying to register a trade mark will save you time and money down the track by minimising the chance of a dispute arising.


Complete Your Trade Mark Application

It is important for you to focus on building your brand, securing revenue and growing your customer base. Dealing with the registration process alone only takes you away from your work. A trade mark lawyer can prepare your trade mark application for you, allowing you to focus on the day-to-day running of your business.

A trade mark is registered under 'classes', reflecting the goods and services of the associated trade mark. Selecting the appropriate class and description under the class, or writing a custom description, is a challenging process. There are a lot of classes and descriptions available and it is imperative to select the correct one to protect your brand. You cannot broaden the scope of your trade mark after registration. Therefore, if you change your mind or decide you need to add additional classes or descriptions, you cannot amend your existing trade mark. Instead, you have to apply for another trade mark.

 

A trade mark lawyer can offer extensive knowledge and expertise to ensure that the class selection and description best protects your brand now and into the future.


Deal with Objections

If you do receive an objection to your trade mark application from IP Australia, a trade mark lawyer can help you successfully overcome it.

 

An adverse examination report from IP Australia will set out the reason for the objection to your application. If IP Australia considers your trade mark identical or too similar to another on the register, your lawyer can advise you on the chances of overcoming such issues. Relevant factors to whether you can overcome the objection include:

  • how similar your mark is to the existing trade mark;
  • how similar the goods or services in your application are to those of the existing trade mark; and
  • how you have been using your trade mark.

 

If IP Australia objects to your trade mark because it is too generic or descriptive, your trade mark lawyer can assist you. Relevant factors include:

  • how long you have been using your trade mark;
  • how you have been using your trade mark; and
  • whether you can demonstrate the capability of the mark to distinguish your business.

Any third party can also oppose your trade mark application. If a competitor opposes your application, it can be a long and costly process to ensure your trade mark is successfully registered despite this opposition.

Your trade mark lawyer can assist you to compile relevant evidence to help you overcome an objection from IP Australia or a third party. They can also help you appropriately address all of the concerns raised by the objector. In doing so, they provide you with the best chances of overcoming an objection. Further, a lawyer can determine whether the cost of disputing the objection based on your chance of success outweighs the cost of submitting another application for another trade mark without any issues.


Register Your Trade Mark Internationally

Expanding your brand into foreign markets can be daunting, complicated and expensive. A trade mark lawyer can assist with your global branding strategy and identify the most cost-effective and appropriate method to ensure your brand is best protected. There are two ways you can register a trade mark overseas:

  1. through the Madrid Protocol; or
  2. through direct applications to specific countries.

If you decide on using direct trade mark applications, a trade mark lawyer will have overseas associates who can assist you in applying for a trade mark in the countries strategic to your international expansion.


Key Takeaways

Your brand assets, such as your brand name, logo and slogans are valuable to your business and it is important to protect them. A trade mark lawyer can assist in protecting your brand by:

  • ensuring you can register your brand assets as trade marks;
  • completing your trade mark application;
  • dealing with objections;
  • protecting your trade mark in disputes; and
  • registering your trade mark internationally.

If you need assistance with registering and protecting your brand, get in touch with LegalVision’s trade mark lawyers on 1300 544 755.

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