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| Here are 42 basic tips to help you avoid 90% of common problems and pitfalls in
trade mark registration, use and management. |
If you Google
“the answer to life, the universe, and everything” (without the quotes), the
Google calculator produces the answer “42”. It’s a cheeky reference
to Douglas Adams’ Hitchhiker’s Guide to
the Galaxy series.
In light of this, 42 is a particularly good
number for a list of hints to secure a great trade mark monopoly. As with such general
rules and guidelines, they are not necessarily universal in their application
to every situation. So whilst the list might not be the answer to “life,
the universe and everything”, following the tips will help you avoid 90%
of common problems and pitfalls in trade mark registration, use and management.
Trade Mark Selection
| 1. |
Be original. Make your trade mark distinctive of your products or services.
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| 2. |
Be original! Intellectual property law rewards originality and it is no
different for trade marks.
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| 3. |
Know and understand the trade
mark system and process involved as best as possible. As a starting point read articles and case studies on our site or browse IP Australia’s resources .
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| 4. |
If you are starting from
scratch, seek legal advice early on during brainstorming and identity
development. You can save time, money and legal hurdles by obtaining
legal and design advice before you settle on what your mark is to be.
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| 5. |
Try to avoid descriptive words
or concepts in your mark, eg "Digital Studio" for an IT services company.
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| 6. |
Register what you actually use or
intend to use as a trade mark.
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| 7. |
Avoid using common surnames.
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| 8. |
Don’t include geographical
names in your mark (eg Cairns Shoes), unless they are extremely obscure or you already have a relevant reputation.
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| 9. |
Slogans are sometimes difficult
to register, and unless they distinguish your products and services they are
best avoided.
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| 10. |
Stay away from “prohibited
signs ”, such as the emblem of the Australian Army.
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| 11. |
Generally the shorter the mark,
the better.
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| 12. |
Get it right the first time. Amending your application is difficult and substantial changes are not
allowed.
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| 13. |
Don’t delay: the key date from when your monopoly statutory rights begin is the date you file your application.
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Trade Mark Applications
| 14. |
Don’t include “the”, “a” and
other immaterial matter. See hint 11.
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| 15. |
Remove unnecessary elements (eg
logos or taglines) and focus the registration to that which you most want to
protect. Too often the core essence of a mark is hidden amongst unnecessary clutter.
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| 16. |
Make sure your descriptions of
goods are sufficiently detailed.
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| 17. |
Further to 16, don’t have
descriptions of goods and services that are too narrow.
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| 18. |
Be a futurist. What goods
and/or services will the mark be applied to in the future?
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| 19. |
Logo vs word? Think carefully about
which to register, or if appropriate register both.
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| 20. |
Series mark vs multiple
registrations? Weigh up the pros and cons of each option.
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| 21. |
Collective mark vs licence
arrangement?
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| 22 |
Conduct a thorough trade mark register
search to identify potential problems, and use "legal design" to avoid them.
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| 23. |
Extend your availability
searching beyond registered trade marks. Conducting a search and
interpreting results requires experience. Those who lack experience can
even overlook the obvious and it is best to commission a search by
professionals.
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| 24. |
Who should be the registered
owner of the mark? There are growth and protection considerations here.
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| 25. |
Where time is a critical factor, apply to
expedite your application.
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| 26. |
Think ahead towards an
effective international registration strategy. For example, if done correctly an
application in Australia
can be used to build international rights in Madrid Protocol member countries.
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Trade Mark Examination
| 27. |
An adverse report from a trade
mark examiner is not the end of the universe. If available, collate and gather
appropriate evidence and lodge submissions for IP Australia to review.
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| 28. |
If relevant, consider using
disclaimers to get your mark over the line.
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| 29. |
If appropriate use the six
month period after lodging an Australian application to claim “convention” priority in
other countries, meaning the Australian date of filing will apply in those
countries.
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| 30. |
If you are confronted with
trade mark opposition, get advice and weigh up the benefits of
registration against the likely costs of contesting
the opposition.
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Trade Mark Use
| 31. |
Always be consistent in
how you use your trade mark. This will help preserve and focus your legal monopoly.
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| 32. |
Use the mark “as a trade mark”
(ie not as a descriptor) in relation to your relevant products or services.
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| 33. |
Display clear and prominent
trade mark notices.
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| 34. |
Understand the ® symbol can
only be used for registered trade marks, and ™ can be used for registered or unregistered
trade marks. Do not misrepresent unregistered marks as registered. Although it may seem trivial, this is a
criminal offence!
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35.
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Be aware that the Trade
Marks Act 1995 provides for
several criminal offences relating to altering or removing trade marks, making
equipment which can help in falsifying or removing a trade mark or selling,
distributing or importing a good knowing that the trade mark has been falsified
or removed. Some of these carry sentences of up to two years in jail and/or fines of up to $55,000.
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Trade Mark Management and Licensing
| 36. |
Maintain watching briefs over new applications and marks being
used in your market that may conflict with your trade marks.
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| 37. |
Take firm and decisive action
to protect your registered trade marks. Inaction or sluggishness in pursuing infringement allows
competitors to develop their own legal rights and makes enforcement more
difficult.
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| 38. |
Manage your portfolio of trade marks in an
intellectual property register or other database containing the key information
relating to your registration. Contact us for advice.
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| 39. |
Don’t be taken in by bogus
databases and other international registers which may spam you upon acceptance
of your mark.
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| 40. |
If the trade mark is owned by a
holding company, put in place proper licensing contracts with licensees or the trading company
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| 41. |
If you transfer, assign or buy a
trade mark, ensure all documentation is
completed to properly effect the transfer. This may be crucial when attempting
to prove use or reputation.
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| 42. |
Obtain advice. Although the
trade marks process may seem relatively straightforward compared to other legal
processes, extracting real value and avoiding issues can involve very subtle
differences in detail. Select experienced trade mark law advisers to represent you, establish your process or guide you.
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If
you have questions, please don't hesitate to contact us for a
complimentary conversation on your trade mark. Our trade mark services
are flexible and can be tailored to your needs.
Author: Profile | Contact | Trade Mark Registration Brochure
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