It is unknown to many individuals, small and medium-sized enterprises that they have trade mark rights generated through operating their own brand or business. This can be troublesome to them because when they find someone using a very similar sign, they find it difficult to establish a legal right to prevent others from using it. I had a client Mr. A (alias). He complained that he found a competitor using a sign that was similar to what he was using. He told me the other party was infringing his IP right because that sign was his business name. Unfortunately, he cannot do anything to protect the sign he used for about a year. Why? Today, Di Lizio & Associates will answer that question by sharing with you the necessity to file a trademark, the common procedure of filing, the unique system Australia has, and what we can do to help.
Why is filing a trademark application necessary?
A Preventing Others from Using a similar or identical Sign
In the above scenario, Mr. A could not use his business name as an IP right to stop others from using it. The reason is that a business name will not grant you any IP right. Other people are free to use the business name you have been using for years. Then what can you do to prevent others from using a sign that you think is similar to yours? The answer is an application of a trademark. It is true that if you have been using a trademark for a while, it might be possible to argue that you have a trade mark rights even without registration. But you need to have 5 years’ evidence of use and sent it to IP Australia for assessment before it is determined that you have a trade mark right. So the easiest way for you is to apply for a trademark.
B Franchising the trademark to generate monetary and/or brand awareness
If you have a registered trademark right, you can consider license other peoples to use it without losing your own right. Most businesses can generate certain monetary value from it. Most importance of all, more customers get to know their brands through licensing and franchising. We can draft and review franchising and licensing agreements for you to ensure protection of your IP right and exploration of your IP value at the same time.
What is the common procedure for filing a trademark application in Australia?
Generally, a trademark application will take 8-14 months until registration in Australia. When your trademark application is accepted, it will be published. During this period, any third party who wants to oppose your trademark can file a notice to oppose. If no one oppose your trademark, it will be registered for 10 years. You can renew the registration before it expires.
What is unique about Australia’s trademark application system?
An unique feature for trademark application in Australia is the trademark headstart service provided by IP Australia. The rationale behind the service is that examiners, who are government officers in IP Australia that examine your trademark applications, will provide opinion whether your trademark applications will encounter any barrier in your application. This can give you an indication whether your applications will be accepted. If the report from an examiner indicates that it is unlikely your application will be accepted, for instance, because your trademark is identical to a registered trademark, you may consider adding an another element in the trademark, contact the registered trademark owner to address the problem or other solution to address the potential barrier. Our lawyer can provide you with concrete advise based on your facts.
What Di Lizio can help you with?
We can pick the right goods or services for each applicant based on their needs. Before filing a trademark application, you need to decide what kinds of goods and services you want to register the trademark with. A trademark registration generally will not be granted on all goods and services. That means you need to pick up the goods and services your business wants to use or has been using.
We can solve the problem you encounter in an application. It is quite common for trade mark applications to encounter office actions, i.e. objection that your trademark should not be accepted. The reasons are various. For example, the examiner may consider that your trademark is similar or identical to a registered mark, or your trademark is not distinctive in nature, which means it should not be used as a trademark at all. Di Lizio can help you file a response; approach the registered trademark owner and obtain a consent letter; file evidence of use or amend goods and services. There are various ways to address an office action. All you need to do is contact us and we will provide you with the best solution for you.
As shown above, it is of crucial importance to have IP lawyer guide you for your trademark application. The better deal now is we only charge fixed fee for a trademark application. We will also give special discount for filing a response to an office action. Di Lizio fully understands the struggle of SME and individuals under the impact of Covid-19. It is our belief that we should do our best to support our local business. Our team has lawyers who speak fluent English, Indonesian, Italian, Mandarin and Cantonese. Feel to contact us anytime.