FOR IP PROFESSIONALS

Mistakes and misconceptions

Common mistakes

Applying for the name of your goods or services, or a description of these

Names and descriptions are difficult to register as trade marks because other traders have a legitimate need to use these terms to indicate their similar goods or services.

Applying to register the same or similar sign as a trade mark that is already applied for or already registered and covers similar goods or services

Search the Australian Trade Mark Online Search System (ATMOSS) for trade marks similar to your own. You should look for similar, not just identical, trade marks covering similar goods or services to your own.

Changing your trade mark or wanting to add goods or services to your application after details of the application have been published

You can only make minor changes to a trade mark once an application has been filed and published. No goods or services may be added after publication.

Providing a business name or trading name as the owner of the trade mark

Your application will not be accepted at the initial examination stage if the name of the applicant is a business name. The application should be made in the name(s) of the person(s) who own the business name registration, or if the business is an incorporated entity, its company name.

Listing goods or services you do not actually trade in, or omitting the goods or services you do trade in

Trade mark registration is for the goods or services you actually trade in or intend to trade in. Once your application is filed and published, you cannot add any goods or services.

For example, if your business is to provide cleaning services, you should list cleaning services. Even though you might also display your trade mark on a letterhead, business cards or on the side of your vehicle, your 'trade' is in cleaning services only.

Listing 'retail services' is a common mistake. If you are simply selling a product, then your application should list the product (goods). Retailing is usually only applicable where a large variety of other traders' goods are gathered together in one place for sale to the public.

Common misconceptions

Thinking that filing an application (and seeing it appear on the database) means your trade mark is registered

Filing and publication are initial steps in the process and do not mean your trade mark has been accepted for registration.

Your application will not be registered until:

  • it has been examined
  • any problems identified during examination are resolved
  • it has been accepted
  • it has passed through the opposition period and
  • registration fees have been paid

Assuming that registering a business, company or domain name gives rights in that name

Registering a business, company or domain name does not give you any proprietary rights - only a trade mark can give you that kind of protection.

Thinking that registering your business, company or domain name gives you automatic trade mark registration

Requirements for trade mark registration are different to requirements for the registration of business, company or domain names and different tests will apply. Business, company and domain names are administered by a different body and serve a different purpose.

Thinking that acceptance or registration of your trade mark is the end of the story

Once your trade mark is advertised as accepted, anyone who believes that your trade mark should not be registered, has 2 months after the date of that advertisement, to oppose its registration. If your application is opposed it is your responsibility to defend this action.

Once your trade mark is registered it can no longer be opposed, however action can be taken to remove your trade mark from the register if you have not been using it and action can be taken in the courts to have your trade mark registration cancelled. Again it is your responsibility to defend either of these actions.

Thinking we will monitor use of your trade mark and enforce your rights

It is your responsibility to look after your trade mark, even once it has been registered. We do not monitor or police the marketplace, nor provide assistance in identifying or prosecuting infringement matters. It is up to you to be vigilant in identifying and prosecuting infringers.

Seek professional advice

We cannot provide legal or business advice for strategies to protect and use your trade mark. For specific assistance and advice you can contact an IP professional.

Last Updated: 14/4/2014

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