WHAT YOU NEED TO KNOW: Commonly asked International Trade Mark Questions

WHAT YOU NEED TO KNOW: Commonly asked International Trade Mark Questions

Vitally important actions to be taken prior to filing a trade mark application.

1. Before filing, have you conducted the relevant Trade Mark searches? A search of the Trade Marks Register and general google searches should reveal any earlier trade mark applications or registrations, or any ‘common law’ trade marks, which may represent an obstacle to the use/registration of your proposed trade mark. If a search is not conducted prior to applying to register a trade mark you, may be faced with a suit for infringement, passing off and/or objections from a Trade Marks Examiner or opposition to registration of your trade mark by a third party. This can become quite costly and may mean that you will have to cease use of your trade mark and abandon your trade mark application. You should also consider transliterations of any words used in your trade mark and the acceptability of your mark in the desired foreign marketplace.

2. Is your trade mark registrable? For a trade mark to be registered, it must be considered to be distinctive in respect of the goods/services it covers. This is because registration of a trade mark provides the trade mark owner with potentially indefinite monopoly rights in that mark. Descriptive words or the generic name for a product or service will generally not be registrable. Just because you may have your trade mark registered in Australia, it does not automatically grant you with rights in any other foreign jurisdiction, unless you seek registration in these jurisdictions.

3. Have you filed for the right trade mark? Businesses often have various ways in which they represent the same trade mark. Alternatively, they may have multiple marks that they use, and are not sure which mark should be registered. If the wrong mark is filed, the business may not be provided with the broadest and most strategic trade mark protection that it needs. In some cases, you will need to consider a variation of your original mark to suit the new marketplace.

4. Does your trade mark application cover the correct goods/services? It is important to make sure your application covers all of the goods and services of which the trade mark is used, as well as those goods/services the trade mark is likely to be used for. Therefore, the specification of goods/services should be drafted as broadly as possible to ensure the broadest coverage and protection against infringement by third parties. However, it is important to note that if your trade mark covers goods/services in which the mark is not used, the registration may become vulnerable to removal on the basis of non-use 5 years after filing the mark, in respect of those particular goods/services.

5. Have you filed your trade mark in the correct company name? Use of a trade mark must be carried out by the registered owner of that trade mark, or be authorised by that registered owner. In many cases a company’s trade mark is its most valued asset. Ensuring that you adequately protect it from risk of any claims is critical. When using the mark internationally, thought needs to be given to who ultimately has control and at what risk is that company of potential conflict.

6. And finally…It is really important to note that a trade mark application cannot be amended after filing in any significant way – ie to expand the scope of the specification of goods or services, or to amend the trade mark in any manner which affects the identity of the trade mark. If you make a significant mistake at filing in respect of the coverage of the specification or the trade mark in question, you will need to re-file, and re-pay the filing fees. So there is great value in getting it right the first time around!

7. Last Word! Most importantly, the filing date is a vital element when applying to register a trade mark (particularly if you have not used the mark prior to filing). This is the date from which your statutory rights in that mark commence. If you need to re-file your trade mark later (after having made errors in the original application) you may discover that a third party with an identical or similar mark has obtained an earlier filing date. This may make it difficult for you to progress your application through to registration. Ultimately (in the worst-case scenario) it may also mean that you have to choose a new trade mark.

For more information about international trade marks, please contact our expert team at Baybridge Lawyers.

Rita Khodeir

Articles you might also like