Trade mark strategy - Phillips Ormonde Fitzpatrick
Trade mark strategy |
| The first step in a good trade mark strategy involves selecting a suitable trade mark. A preferred method of proceeding might involve selecting a number of alternative trade marks and conducting searches to identify any conflicts with existing trade mark registrations or pending trade mark applications. More frequently than not, potentially conflicting trade marks are located by trade mark searches. Therefore, it is most important that trade mark searches be conducted before using a trade mark – whether or not the trade mark is of sufficient importance to apply for registration. Specialist skills are involved in formulating search strategies and it is therefore advisable to have searches conducted by a professional trade mark searcher. A trade mark must also be capable of distinguishing your goods from the similar goods being offered elsewhere. Thus, it can be difficult to register as a trade mark words which are descriptive of the goods/services being provided or a characteristic of those goods/services. It can also be difficult to register common surnames as a trade mark, or the names of places where the goods/services are known to originate. In selecting possible trade marks, well-known trade marks should be avoided, even if the reputation of those trade marks is confined to particular goods or services which are unrelated to your goods or services of interest. Trade marks which are known or likely to be used by other traders in relation to the goods or services of interest should also be avoided, even if nothing relevant is located in a trade mark search. If a trade mark appears to be available for use and registration following a search, it is advisable to apply for registration as soon as possible, because filing an application is usually the quickest way of establishing rights in the trade mark in Australia. The manner in which the trade mark is used (particularly if the trade mark is to be used by a licensee) should be controlled carefully so that it is consistent with the mark as represented in the registration and is being used as a trade mark ie as a badge of origin. |
What is a trade mark attorney? |
| A trade mark application may filed by the applicant directly, or on their behalf by a trade mark attorney, a lawyer or others. An experienced trade mark attorney will understand the trade mark law and conventions. They are registered by the Commonwealth government. While a number of trade mark attorneys are also lawyers, in Australia, this is not a requirement. Communications between trade mark attorneys and clients in relation to trade marks have the same privilege as between lawyers and their clients. Providers of trade marks filing services who are neither lawyers nor registered attorneys cannot offer this benefit. In addition to advising on and filing applications, trade mark attorneys represent your interests in prosecuting the application (dealing with examiners’ questions) and well as representing you before the Trade Marks Office. |
Company and business names |
| Some people assume that being the holder of a company name or registered business name automatically infers the right to use that name as a trade mark in the field of their choice. This is not the case. The Australian Securities and Investment Commission (ASIC) registers companies and state regulators register business names. The existence of a preexisting trade mark is not generally considered in assessing an application to register a company or business name. Similarly, a registered business or company name alone cannot be relied on to stop someone else from using the registered name as a trade mark. Some businesses have been forced to cease trading under their registered company or business name because they have infringed someone else’s trade mark rights. |
Copyright in trade marks |
| When a trade mark is a logo there may be copyright in the logo as an artistic work notwithstanding any trade mark rights. This copyright is automatic and lasts many years. Most businesses commission a consultant, such as a graphic designer, to create the logo. Unless there is a written copyright assignment, the graphic designer will ordinarily own the copyright in the work, not the commissioning business. We recommend addressing this issue by obtaining an assignment of the copyright in the logo at the time of commissioning. |
Domain names |
| At the same time as you conduct searches for prospective trade marks, or when filing your application, you should consider the availability of domain names associated with that trade mark and make application as early as practicable. It is not uncommon for opportunists to register a domain name and then seek to sell it to the owner of a business with a similar trade mark. In some circumstances it is possible to have the registration of a domain name forcibly revoked or transferred, but this is expensive and potentially avoidable by early registration yourself. Phillips Ormonde Fitzpatrick can assist clients with handling domain name issues including availability searching, registration and dispute resolution. |
