Common pitfalls with DIY trade marks
We’ve seen an uptick in business owners filing their own trade mark applications in Australia. DIY can be tempting – why pay a trade mark professional to handle the application process if you can file yourself via IP Australia? We might come across a tad biased in saying “don’t DIY your trade marks”, but it really pays off in the long run to seek professional guidance when it comes to securing legal protection for something as valuable as your brand.
Here’s some of the common pitfalls with DIY trade marks that we’re coming across.
Not identifying the correct trade mark owner
When filing a trade mark application, the owner of the trade mark needs to be identified. This doesn’t mean you have free choice on who is going to own the trade mark.
Australian trade mark law operates under a “first to use” system, meaning that the owner of a trade mark is generally determined by whoever uses the mark first in the Australian marketplace in relation to certain goods and services. Not by who is first to file a trade mark application (unless there’s been no prior use).
For trade mark applicants applying to protect their brand already in use, there’s already a “correct” trade mark owner – typically the first user of the trade mark for the goods/services listed in the application. And if you don’t list the correct owner in the trade mark application at filing, the resulting registration can be invalidated.
IP Australia doesn’t check that the trade mark owner listed in an application is the correct legal owner, so they’ll issue the registration to whoever has been listed. It’s usually when enforcing the trade mark rights against third parties (eg. an infringer of your trade mark) that this issue materialises. This can be many years after registration, and it’s only then that you’ll learn that your trade mark registration might be not worth the paper it is printed on because you didn’t identify the correct owner on day one. And this issue can’t be fixed after filing your trade mark – your only option is to start all over again. Yikes!
Not covering all relevant classes / goods and services
Another common pitfall of the DIYer is not adequately covering the goods and services that their business offers in the application.
Trade marks are protected for the goods and services listed in the application, which are divided amongst 45 classes. IP Australia encourages applicants to use an accepted list of goods and services descriptions to define the coverage of their trade mark application. Once the trade mark is registered, it will be protected for use in relation to the listed goods and services.
DIYers often do not understand the nuances associated with defining the goods and services offered by a business under the 45-class system. They may too narrowly define their goods and services, or miss some essential coverage. The only way to plug the gap is to (you guessed it) file a new trade mark application. You can’t add goods and services to an existing trade mark application or registration.
The consequences of getting the coverage of your trade mark wrong can be significant. By the time the DIYer realises that their trade mark doesn’t have the coverage for all the goods and services they offer, someone else could have registered their trade mark for the missing goods and services, blocking the DIYer from being able to do this. This means facing complexity and legal costs to try get around the block, all of which could be avoided. Or if a third party starts using the DIYer’s trade mark in connection with the missing goods and services, the DIYer’s legal rights to prevent this conduct can be more limited.
Protecting the wrong trade mark
DIYers often file for feature-heavy trade marks including words and graphics, not realising that the more complex the trade mark which is registered, the less protection afforded to each individual element of a trade mark. This can dilute the legal protection which your trade mark provides for the individual elements in isolation, and by consequence, impacts your ability to rely on your registered trade mark to prevent third parties from using those individual elements.
A trade mark professional can advise on which trade marks to register for securing the most comprehensive protection possible for your branding.
Don’t DIY it!
Don’t take unnecessary risks with legally protecting your brand. Start off on the right foot by engaging a qualified trade mark professional (like us!) to manage the application process. The cost of using a professional is not as expensive as you might think, particularly when compared to the potential costs and consequences to your business through a DIY attempt gone wrong.