D-I-Y TRADE MARKING vs GETTING IN THE PROFESSIONALS Why engage a trade mark attorney? N owadays, the trade mark application process is just a bit of online form filling and Determining where to build and what to avoid – trade mark clearance searching and avoiding generic trade marks
registration, and for all of the goods and services claimed. Failure to use your trade marks in the manner covered by the trade mark registration may make them vulnerable to removal for non-use cancellation. An IP professional does not only monitor renewal deadlines, but can advise you on these broader issues and what to look out for and update along the way as your business and brand develops. If your portfolio is no longer achieving its optimal purpose – for example, if you need to extend protection due a brand “refresh”, or to new marks and product offerings, or to new overseas markets – an attorney can advise you on the most practical and cost-effective way to do this, having regard to your existing portfolio. Protecting your asset Like your family home, you may need to take pro-active steps to safeguard your trade mark assets from pests and predators who might seek to encroach on your patch of land from time to time. A trade mark attorney can put in place watches and strategies for monitoring the market place – such as by implementing regular watches for use of similar marks on the trade marks register, domain names register and social media platforms – and taking preventative or remedial action where necessary. It might be necessary take more assertive action to protect the value of your asset. An IP professional can assist you with preparing cease and desist letters, filing IP complaints on social media platforms, filing complaints to obtain cancellation or transfer of bad faith domain name registrations, filing trade mark opposition or removal proceedings, and, if necessary, taking Court action against trade mark infringers. Moving on – selling an appreciating asset Whilst intangible, rather than “real” property like a house, a brand or trade mark may nevertheless end up being your business’ most valuable long term asset. Provided the foundations have been set-up right and proper maintenance steps taken, when it is time to move on, you will hopefully have a valuable asset to sell.
balance along the scale of unregistrable (generic/descriptive/ laudatory) to registrable (allusive/distinctive) marks to secure the right mark for your long term business needs. Building a solid foundation – getting the mark(s) and specification right It can be tempting to D-I-Y file a trade mark application, particularly when budget is an issue. However, too often, we see clients who have self-filed and either failed to achieve registration, or obtained registration for a trade mark which does not provide appropriate coverage because: –– The mark covered by the trade mark registration is too complex, claiming all features of the brand within one application, providing very narrow coverage for the key individual elements of the brand, including the core brand name or tagline –– The incorrect goods or services have been claimed, or key goods or services omitted. This can make future enforcement extremely difficult, providing only limited value. An attorney who takes the time to understand your brand and business at its early stages should be open to giving you a practical and honest assessment of what protection is required and achievable within your budget. They can help to prioritise which aspects of your brand to protect (eg, logo, brand name, tagline) and the correct goods and services to be covered to meet both your long term needs, as well as avoid potential obstacles (eg, objections from the Trade Marks Office or prior existing marks). In this way, an attorney can help set the foundations for the most solid trade mark protection, having regard to your budget. Maintaining your trade mark portfolio Once your trade mark protection is in place, it is important to take the proper steps to maintain it. This includes ensuring that your mark is used in your marketing as an indicator of brand origin and does not become generic, applying the appropriate TM or ® symbols to notify third parties of your rights, monitoring renewal deadlines, as well as dealing with correspondence that may be received from IP Australia or third parties in connection with your trade mark registration (eg, requests for consent, notices of acceptance of similar marks, etc). To maintain the integrity of your trade mark registrations, it is also important to make sure that you continue to use your trade marks in the form covered by the trade mark
In an increasingly crowded field of brands and trade marks, finding a mark which is both available and able to convey the identity and message that you want to associate with your business is becoming increasingly difficult. In this uncertain environment, it is worthwhile engaging a professional who is familiar with traversing the local trade mark landscape to guide you towards stable ground. Even if you are an overseas trade mark attorney or you already have trade mark rights secured in another market, it can help to engage someone local for this purpose, as trade mark practices vary from country to country. There is nothing worse than launching a new brand, only to find out that you can’t protect it in the marketplace or, worse, that you are actually infringing someone else’s trade mark. A trade mark attorney can assist you with a targeted trade mark clearance strategy, analyse the search results, and provide you with practical and frank advice on the availability and risks of adopting your chosen brand, as well as the long term practicalities of enforcing it. For example, many businesses choose a brand name that tells customers exactly what their business does (eg, “Aussie Home Builders” for building services – not a good foundation for a strong trade mark), only to find out that the prospects of enforcing it are low because other competitors are equally allowed to describe their own businesses using the same words. A trade mark attorney can help ensure that your trade mark is available for both use and registration prior to committing resources to launching a new brand, and navigate the right
the click of a few buttons, right? So why engage a trade mark professional unless you get into trouble? Well, you wouldn’t start building your own home and then wait for cracks to appear before engaging a builder, so why risk one of your business’ most valuable assets starting off with shaky foundations? I was recently copied into a social media thread discussing whether engaging a trade mark attorney is a cost or an investment. Pleasingly, an overwhelming number of responders saw value in engaging a professional trade mark attorney to do the job right first up; however, perhaps unsurprisingly, the majority of responders were IP professionals themselves! Among the supporting empirical evidence referred to was the overall higher success rate of attorney filed trade marks versus self-filed trade marks proceeding to registration, as well as the generally broader coverage of attorney filed trade marks. 1 However, apart from registration success rate, the discussion got me thinking about how attorneys can convey value as creators of long term (sometimes perpetual) IP assets, in an environment where self-filing is becoming increasingly “easy” through online processes. Here are the ways in which a trade marks professional can assist and add value.
MARIE WONG Principal
1 Based on an informal analysis of trade mark filing data in Australia and the UK over the past approximately 12 months, looking at the attorney vs. DIY percentage of filed trade marks achieving registration, as well as the average number of classes covered per registration.