Tuesday, 08 March 2011 06:39
Samantha Waldon & Noric Dilanchian
Anyone can apply to register a trade mark. To obtain the strongest protection usually requires working with lawyers and other professionals with up-to-date knowledge, resources and experience.
The hurdles and risks of do-it-yourself trade mark filing are many. If minimising costs is your aim then you can do it yourself. If the aim is to build higher quality monopoly legal rights, held by an appropriate owner, and growing as a long-term investment then engage professionals.
Here's seven ways these benefits arise in working with experienced professionals.
- Professionals recognise there is elegance in simplicity. They help clients in what we call the "legal design" of their trade marks. Too often, people plaster their mark identity (eg name or logo) with multiple design elements. They add descriptors, tag lines, extra symbols, colours and lots more visual “noise”. This produces a confused message which obstructs both the legal and business purposes of a trade mark. A legal purpose is to secure a statutory legal monopoly right to a mark. A business purpose is to use a mark as a focus point for an ecosystem of relationships with customers and others. In a sentence, the challenge is to come up with a mark that has the simplicity, clarity and unique character of a fingerprint.
- Professionals can make a trade mark business-like. In the legal arena, a name or other type of trade mark should create a connection to the provider, or “origin” of certain products or services. It is next to useless to pick a trade mark that merely describes offered products or services. For example, in 2010 Apple dropped the word "computer" from its company name and thereby avoids being bound to one descriptor, eg computer.
- Professionals can carry out a range of name availability searches. This extends beyond Google. It extends to searches of trade mark registers here and overseas, domain names, telephone directories and industry product directories. As lawyers specialising in trade mark registration, we provide advice on the likelihood of any confusion or competition and, where feasible, ways to develop work-arounds. By avoiding the cost of an extensive and professionally-conducted trade mark search you are more open to a surprise attack and claims of infringement by others. Our files are littered with legal cases in which investment has been made blindly for a mark in a field crowded with similar marks, or worse still, a prior user with greater legal rights or economic power.
- Professionals can help you obtain a higher quality of monopoly rights to a name or other identifier. We spend a lot of time focusing on the brand architecture of a business, asking questions such as how are the products or services being marketed, to who, and using what marketing material. The answers shape our advice on such matters as what to register as a trade mark and how to use a mark. This avoids common problems discussed in 1 above, eg a business with a confused identity because it has different and unaligned - company name, trading name, domain name and product or service names. So you end up with Mary Jane Pty Ltd, trading as MJ Wholesalers, at www.mjw.com.au. Both Google and professionals hate this situation.
- Professionals can help identify who should be the owner of the proposed trade mark. That might be you, or the business needs might be better served by making a business entity the registered owner. The ownership of a trade mark (a type of intellectual property asset) should be aligned with the ownership and structure of a related business and its assets. This includes alignment with the ownership of a related or similar domain name, trading name, business name, company name or other identifier. If this is not done then in the event of legal action innocent people (eg employees or a spouse) may be exposed and liable to the stress of court action and damages. Lawyers commence action against the parties whose names appear on registers even if the registers are incorrect.
- Professionals can focus your business and legal strategy. One of the reasons for consulting a professional is to obtain frank and impartial advice. For trade marks the advice should assess the relative strengths and weaknesses of various options for a name, logo, symbol, descriptor or combination of identifiers. File yourself and you might miss all this additional and useful thinking.
- Professionals can refer you to necessary specialists. These include logo designers, graphic designers, package designers and web developers who can work with your evolved branding on marketing collateral such as electronic or print brochures, stationery, and presence in social media and elsewhere on the web.
Simply stated, do-it-yourself trade mark applicants can register a trade mark. If they engage lawyers and other professionals they also get a marketing communications strategy for a legal fingerprint capable of building monopoly value over the long term.