Important Pitfalls to be Aware of Prior to Filing Trade

Mark Applications
A recent article in the Sydney Morning Herald (‘Paws out in Nudie v Playboy
Battle’ by Andrew McUtchen dated 1 April 2010) led me to think about certain
vitally important actions which should be taken prior to filing a trade mark
application.

Although the article in the SMH rightly stressed the importance of trade mark
registration to businesses of all sizes, I felt that more could be said about the
pitfalls of filing trade marks without adequate advice, which many businesses
may not be aware of. Those various pitfalls are set out below:

1. Before filing, have you conducted a search of the Trade Marks

Register and of the marketplace?

A search of the Trade Marks Register and of the marketplace should reveal any
earlier trade mark applications or registrations, or any ‘common law’ trade
marks, which may represent an obstacle to the use/registration of your proposed
trade mark. If a search is not conducted before you use or apply to register a
trade mark you may be faced with a suit for infringement, passing off and/or
objections from a Trade Marks Examiner or opposition to registration of your
trade mark by a third party. This can become very costly and may mean that you
will have to cease use of your trade mark and abandon your trade mark
application.

2. Is your trade mark registrable?

In order for a trade mark to be registered, it must be considered to be distinctive

in respect of the goods/services it covers. This is because registration of a trade
mark provides the trade mark owner with potentially indefinite monopoly rights
in that mark. Descriptive words or the generic name for a product or service will
generally not be registrable. If the Trade Marks Examiner does not consider your
trade mark to be inherently registrable, the Examiner will raise an objection to
the registration of that mark. This will incur further costs in order to overcome
the objection, and in the worst case scenario you may have to abandon your
application. This will mean that you will lose the fees paid to file the trade mark
application and will have to re-file a new (more distinctive) trade mark (paying
more filing fees).

3. Have you filed for the right trade mark?

Businesses often have various different ways in which they represent the same
trade mark. Or they may have various different marks that they use, and are not
sure which mark should be registered. If the wrong mark is filed, the business
may not be provided with the broadest and most strategic trade mark protection
that it needs. In some cases, a new mark will need to be filed incurring further
costs, since the original mark does not provide correct, or sufficient, trade mark
protection.
 4. Does your trade mark application cover the correct
goods/services?

It is important to make sure your application covers all of the goods and services
in respect of which the trade mark is used, as well as those goods/services the
trade mark is likely to be used for. Therefore, the specification of goods/services
should be drafted as broadly as possible to ensure the broadest coverage and
protection against infringement by third parties. However, it is important to note
that if your trade mark covers goods/services in respect of which the mark is not
used, the registration may become vulnerable to removal on the basis of non-use
5 years after filing the mark, in respect of those particular goods/services. Filing
a trade mark application which does not cover a broad enough specification will
often mean a second application will need to be filed, which means...Yet more
costs are incurred.

5. Have you filed your trade mark in the correct company name?

Use of a trade mark must be carried out by the registered owner of that trade
mark, or be authorised by that registered owner (s 100 Trade Marks Act 1995). If
the registered trade marks are not being used in Australia by the registrant
company, and that use has not been authorised by the registered owner, the
trade mark registrations may be vulnerable to removal from the Register on the
basis of non-use. Again, this may mean that a new application will need to be
filed and new fees at filing and registration will have to be paid.

If a trade mark has been applied for in the name of the wrong company within a
group, that mark may be vulnerable to cancellation if the owner name is
subsequently amended. However, if a company has merely changed its name
but has retained its corporate identity, it should be possible for a valid
amendment to be made to the trade mark owner’s name.

6. And finally...

It is really important to note that a trade mark application cannot be amended

after filing in any significant way – ie to expand the scope of the specification of
goods or services, or to amend the trade mark in any manner which affects the
identity of the trade mark. If you make a significant mistake at filing in respect of
the coverage of the specification or the trade mark in question, you will need to
re-file, and re-pay the filing fees. So there is great value in getting it right the
first time around!

7. Last Word!

Most importantly, the filing date is of huge significance when applying to register
a trade mark (particularly if you have not used the mark prior to filing). This is
the date from which your statutory rights in that mark commence. If you need to
re-file your trade mark later (after having made errors in the original application)
you may discover that a third party with an identical or similar mark has
obtained an earlier filing date. This may make it difficult for you to progress your
application through to registration. Ultimately (in the worst case scenario) it may
also mean that you have to choose a new trade mark. Therefore, you may not
have to consider just the additional cost of re-filing the trade mark, you may also
be burdened with the additional cost of completely re-branding your business.