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Trade Marks Buyer
Beware
Trade mark registrations and renewals - what sort of help are you likely to need, and do you know what you are getting?
Before you apply - when seeking assistance
If you want to apply to register your trade mark you might be thinking about seeking professional assistance.
There are a number of different types of trade mark professionals, such as patent and trade marks attorneys, intellectual property (IP) lawyers and search firms. The services they provide vary from professional searches of trade mark databases, to advice on the most appropriate protection strategy for your trade mark.
To find out more, visit their web sites, or search under trade marks in the Yellow Pages Directory. For more information on patent and trade marks attorneys, visit the Professional Standards Board website.
Find out what qualifications and experience the business operator has. IP assistance can be provided by skilled and experienced trade mark operators, but people without qualifications or experience might also offer you these services.
You can save yourself time and money if you can be clear about what service you are seeking. Do you need:
To protect yourself, check:
- that the business or company is registered;
- that you know who is operating the business;
- where it is physically located; and
- that you can easily speak to the operator by telephone or in person.
How to avoid problems
Trade mark applicants and owners can avoid problems associated with unsolicited letters by becoming familiar with the trade mark registration and renewal process, and setting in place some simple administrative practices:
Do not assume that any renewal notice, invoice or official looking correspondence is from IP Australia. You may receive many such offers from operators competing for your business or even from scammers - be particularly wary of invoices or offers from overseas companies.
If you have applied for trade mark registration in other countries, whether direct or through the Madrid Protocol, keep a record of the countries and the application particulars. Also, ensure that correspondence is from the appropriate source before paying any fees.
Trade marks registered through the Madrid Protocol are recorded publicly on the Madrid Express Database which is accessible from the World Intellectual Property Organisation (WIPO) at: http://www.wipo.int/madrid/en/services/madrid_express.htm
If you have applied direct to another country, your Attorney or IP Professional should be able to provide you with all particulars of the status of any foreign applications or registrations.
Any correspondence in relation to an overseas registration should be from the International Bureau at WIPO, the government organisation responsible for IP in that country, or from the Attorney or IP Professional selected by you.
Keep a good record of your trade mark application or registration details-including all deadlines and renewal dates. Australian trade mark registration fees are only paid once, to the government agency IP Australia. At present, an Australian registration lasts for ten years and is renewable at the end of the ten year period.
Check all details on any invoice or letter before assuming it is from IP Australia.
Unsolicited letters might be offering you a service, for a fee, which is available from IP Australia without charge. Or a service for which you have already paid in full.
Unsolicited contact - if you are contacted once you've lodged an application
Do not assume that official looking correspondence is from IP Australia. You may receive offers of assistance from operators competing for your business. These operators obtain your details from our public database and in some cases may not be bona fide operators.
Commonly you may receive an approach when you receive your Notice of Filing from IP Australia or just after you receive a 'report'. Before assuming any correspondence is from IP Australia, please ensure it contains the identifying details detailed in 'How to avoid problems' above.
You may decide to use professional help to assist you in achieving registration - you might either seek this help yourself or accept an offer made in unsolicited correspondence to you. There are many choices available to you if you do want professional assistance but you should take care to protect yourself and know who you are dealing with. See when seeking assistance and how to protect yourself.
Unsolicited contact - if you are contacted once your application has been accepted
Do not assume that any renewal notice or invoice is from IP Australia. You may receive many such offers from operators competing for your business or even from scammers. Again, be particularly wary of invoices or offers from overseas companies.
IP Australia is continuing to receive complaints from trade mark owners about unsolicited documents they are receiving from companies which offer, for a fee, to register trade mark information for the implied purpose of protecting trade mark rights.
These companies are not associated with IP Australia and have no official or government authority. The service they offer does not affect official trade mark registration or trade mark rights in Australia or, to the best of our knowledge, any other country.
These organisations send documents resembling invoices to trade mark owners which offer 'entry' of trade mark details, presumably in some sort of publication. They are usually sent after the trade mark details have been advertised accepted in the Australian Official Journal of Trade Marks.
Before paying a fee for any IP related service, please be sure to check the bona fides of the service provider to avoid being deceived.
For additional information, including a list of known operators please refer
to our fact
sheet on unsolicited IP services.
Who are you dealing with? - how to protect yourself
Here are some questions you should be asking yourself before using or accepting IP professional services. They may help you avoid risks but are not a substitute for legal advice.
To protect yourself always check:
- if contact details are available for the trader, including a physical address. These can be verified by checking in the phone book and by contacting the trader directly.
- that the business or company is registered.
- that refund and warranty policies are on the website. If in doubt, ask the business about its practices. This can be done via email or phone.
- if there is a complaints handling process.
- if you are dealing with an overseas trader.
Where to go if there are problems
If you feel that you have been misled contact the Office of Fair Trading in your State or Territory or the ACCC Infocentre on 1300 302 502
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