28 January 2016

It may feel like you’re traversing a minefield in cross country skis when you go to register your trade mark but it really shouldn’t be a difficult process, says IP Australia examiner Alexandra Ashcroft, particularly if you complete your application properly the first time round.

Alexandra is one of 150 trade mark examiners responsible for processing the approximate 100,000 trade mark applications received by IP Australia every year.

She’s been an examiner since 2013 and has a degree in Arts/Law. IP Australia’s trade mark examiners come from diverse backgrounds, including lawyers, a former butcher, interior designers, a real estate agent, a chef and a golf coach among their’ ranks: ‘Anyone who has had exposure to the marketplace, is brand savvy and able to walk in consumers’ shoes.’

Alexandra and her colleagues can often evaluate, on average, up to six or more trade mark applications a day.

‘The good ones can take 20 minutes to approve. A bad one can take up to two days of researching before we might send out an Adverse Report [official notification of the problems that have arisen with your trade mark application],’ Alexandra explains.

Common mistakes

So what makes a ‘good’ or ‘bad’ trade mark application?

According to Alexandra, there are a handful of common mistakes people make when filing applications, usually without the help of an IP lawyer, which lead to applications being either cited, and/or, time-poor innovators ‘just giving up’ on the process.

‘One of the most common mistakes is with people not properly identifying ownership in their application. A trustee is not an identifiable legal personality,’ she says.

‘All applications have to be lodged under names that are traceable, legal identities. You need a legal personality to hold IP rights for example: an incorporated company or individual.

If you do lodge as a trustee, you need to tell us who that is; for example: Rebecca Martin as trustee for the Aaron Walters Trust would be acceptable, as we can identify who the trustee is.’

‘Another thing people do is that they don’t list their trade mark under the right class [the correct  goods or service type] on their application.

‘We have 45 classes to choose from. One through to 34 relates to different categories of goods. For example, Class 9 includes certain electronic devices and software related goods, whilst Class 25 includes clothing; 35-45 are services only,’ explains Alexandra.

‘When choosing the correct class, a common mistake relates to people selecting Class 1, either because they are unsure of what class their goods or service fall into, or they only have one class of goods or services that their trade mark applies to. It is important to note that this class relates to a variety of chemical goods.

People free type and seem to [incorrectly] pick Class 1 all the time,’ she said. – People do have the option of free typing or using the Picklist – both are encouraged.

If people are unsure of where their goods or services best fit, they can use the Picklist facility to browse the best class for them.

Another example is when people are not clear enough in the actual goods and services that they are claiming. This includes vague claims such as ‘luxury goods’, ‘accessories’ and ‘health foods’.

Another common problem applicants face is applying for words that are descriptive or common to the trade they are operating in.

For example, ‘organic’ in relation to food products, or ‘acid-wash’ for clothing. These are terms which describe a characteristic of the goods, rather than being an identifiable badge of origin. It is important to remember that a trade mark is used to distinguish the applicant’s goods or services from that of other traders in the marketplace, so applying for a distinctive trade mark, rather than it being descriptive, has a higher likelihood of success.’

The problem with making these simple mistakes is that the examiners are bound by legislation such as the Trade Mark Act 1995, and other rules, to query applications containing these errors.

It leads to costly delays because they’re required to inform you in writing, rather than just phoning, of their decision. This type of superfluous, back-and-forth communication often leads to frustration and confusion on the part of many applicants. It is important to remember that our examiners are not business/legal advisers.

They cannot give you advice about how to ‘improve’ your trade mark application or get it accepted.They are expected to remain professional and as objective as possible. That does not mean they are not empathetic in their approach to assessments.

Sometimes people incorrectly include their business mission statements as class descriptors. The examiners occasionally divine clues from this, as to under what class the applicants are trying to trade mark.

In such cases, the examiners use Google Search and other tools to help them verify the applicant’s business or history.

The examiners have to take the words on the application claimed on face value, so even if we find out what the applicant is doing, if what they have claimed is not clear or covered they may not receive protection in what they want. It is important to remember that once the application is published, the goods and services cannot be expanded. In this case, it may mean a new application is required, clearly detailing the goods and services.

Adverse reports sent to applicants may contain examples of similar products that the examiner has found, preventing your trade mark from being registered. It may also list clauses or other issues preventing the application from proceeding to acceptance.

Smart applicants will have done their research to avoid such problems. They will also save money because the fees cannot be refunded once the examiners have taken the time to examine the application and issue a formal decision.

Don’t give up

Alexandra explains that just because you were thwarted in your first attempt at registering a trade mark, you should not give up. It’s not always a black and white issue.

‘Examiners can reconsider a decision if additional information is provided by the applicant that we believe shows their history with a product is substantial’.

As a starting point, Alexandra recommends applicants search the Australian Trade Marks Online Search System (ATMOSS) for potentially similar marks already on the register for similar goods or services.

Searching for and getting a trade mark is different to applying for a business name. People get the two confused. There are no IP rights associated with a business name.

You need to make sure that if you’re applying for a trade mark that does not contain a unique graphic and only words or a phrase, then that combination needs to be capable of distinguishing your goods and services from other traders while also not being similar to another trade mark already on the register.