Important steps to take before you register a trademark- Guest post

Many business owners launch their brand or product without considering the trademark registration process. You can save yourself a lot of time and effort (and money) by taking these simple steps before you hit the market. They will help you avoid potential issues that could delay your trademark registration process.

Registration search before registering a trademark

The first and most important step is to do a trademark registration search.

You will discover registered marks within Australia by doing a simple trademark search before your lodge an application to register a trademark. It will reveal if your mark is similar or identical to another company’s mark. If so, this could be a factor that leads to your application being denied. You’d need to make changes to your mark before you apply again to avoid infringing on the rights of an existing trademark holder. You’ll also be able to determine if your mark or logo is eligible for trademark protection.

It’s advisable to work with a trademark professional if you are doing an in-depth search. They will advise you of how to proceed, and many offer a service where they do a preliminary and comprehensive trademark search at a fixed cost rate.

If you want to get started, here are some free resources offered by IP Australia you can look into:

  • Australian trademarks Online Search System

ATMOSS gives the most important information about similar or identical trademarks to your own. It includes all of the currently registered trademarks and all pending applications and records of their progress.

  • Classification Search

You can use the classifications search to help you determine which class or classes you should file your goods or services under.

  • trademark Check

This will help reveal if your business name infringes on a registered mark that is identical to similar to your proposed mark. If the mark is confusingly similar to yours, yours will not be registered.

  • trademarks Image Viewer

You can use this tool to view trademarks that include images or typescripts.

  • Business Names Applicant Search.

You can use this tool to get details on business name availability. Use it before you attempt to register your business name with ASIC.

Determining what can be trademarked

Another area to explore before applying for a trademark is to look into what you can and can’t register. The trademarks Act 1995 defines a trademark as a ‘sign’ used to distinguish goods or services from those used by other similar traders. It’s pretty broad as it covers a range of ‘signs’ used alone or in combination. Ask yourself if any of the following are relevant to your service or product to determine if they might be available or not.

  • Is there a brand, heading, letter, word, or name used to distinguish my goods or services from others?
  • Is there a signature or numeral that is used that distinguishes my goods or services from others?
  • Is there a label, ticket, or form of packaging that is used that distinguishes my goods or services from others?
  • Is there a shape, colour, scent, or sound used to distinguish my goods or services from others?

Note that any mark that is considered to be too descriptive will receive an adverse report. Some marks that may be a little descriptive might still get approval based on evidence of use but some are simply too descriptive to ever be registered. For example, if you tried to register the word ‘smartphone concerning a ‘smartphone’, it wouldn’t be registered. Likewise, any mark that is against the law or is considered ‘scandalous’ will be rejected.

What happens if someone has a similar business name registered to my proposed trademark?

If your search reveals an individual has registered a business name that is similar to yours, there’s no need to panic. When you file your trademark application, IP Australia conducts a database search of pending and registered trademarks. If this rival company has not applied for or registered a trademark for their business name, IP Australia will not prevent you from registering that trademark.

The only risk with this is that once the trademark has been accepted for registration, you may find an opposition being filed against it by the other business. Any third party has a two-month time frame in which they can lodge an opposition to a trademark. If they feel they have a reason to lodge an opposition to your application in this window, they have the right to do so. Or, if the competitor has a strong reputation in the name, before you, they may have common law rights to act on even if you register the trademark first.

A trademark attorney is the best port of call if you find yourself facing opposition. Even better, they will warn you if you are at risk of this happening if you discover someone has a similar business name registered as a trademark and how you can defend your position.

nd your position.