Before filing a trade mark application it is important to carefully think through a number of issues in order to obtain strong and valid trade mark protection. Madderns can provide you with more specific advice and assistance tailored to your circumstances but here are our top 5 general tips to consider:
- Decide on the best format for your trade mark. Registering a word mark in standard capital letters will generally provide the broadest protection. For additional or alternative protection, consider registering a composite mark (a word(s) together with design elements) and/or a logo alone. Registrable trade marks can include trading names, product names and even aspects of packaging such as colours and shapes.
- Carefully select the goods and/or services to be covered by the application as it is not possible to add items after you have filed your application. When choosing items, think about the nature of your business and the products and/or services that you provide. Also consider your plans for the future and select items accordingly.
- Ensure that you nominate the correct applicant name as making a mistake can invalidate a registration. If the trade mark is already in use, the applicant should be the owner of the rights to the mark and either be using or authorising the use of the trade mark. If a trade mark has not yet been used, the applicant should be the business entity intending to use/authorise the use of the mark in the future.
- Conduct some pre-filing searches to check whether anyone else has already registered or is using a similar mark. It is important to search the Australian Trade Marks Register and to also conduct some general searches of the internet and company/business name registrations etc.
- Look at protection for export markets. Whilst it is not possible to register a “worldwide” trade mark per se, it is possible to file an International “Madrid Protocol” Application to cover a number of different countries at the same time. If we file an International Application within 6 months of filing an Australia application, we can claim the Australian filing date as the effective “priority” date for the relevant overseas countries.
- advising on the registrability of proposed trade marks;
- preparing trade mark applications including drafting statements of goods and services designed to properly protect the interests of the relevant business;
- filing trade mark applications in Australia and also overseas (including through the international “Madrid Protocol” system); and
- prosecuting trade mark applications and assisting with overcoming any objections raised during the course of examination.