Trade Mark Pre-filing Considerations

Before filing a trade mark application, you need to consider the following questions:

What types of trade marks of your business are you applying for?

Trade marks can be in the form of the following brand elements

• business names
• brand names
• product names
• logos
• characters
• colour of products
• the shape of the product
• packaging and event scent or movement can be protected as a trade mark

A trade mark attorney can assist in identifying potential types of trade mark that your business can own and use. They can also offer advice adn guidance in determining whether a trade mark is sufficiently distinctive.

What classes of goods and services do you want to protect with your trade mark?

When filing a trade mark application, applicants need to nominate classes of goods and services to be claimed in an application. The World Intellectual Property Organisation (WIPO) divides all goods and services into 45 classes. Your products and services are categorised into one or more classes.

A list of your products and/or services is helpful for your attorney to identify correct classes for your application and define a suitable scope of protection for each class.

Who is the applicant?

Usually, the author of the trade mark or the person who has first used the trade mark on relevant goods and services is entitled to apply for a registration of the trade mark. The applicant should meet certain eligibility requirements to be able to own a registered trade mark. The applicant of an application is the owner of the trade mark when it is registered.

A trade mark registration obligates the owner to continuously use the trade mark in the course of trade. Accordingly, the owner of a trade mark registration determines the legislative user of the trade mark after registration.

However, it is common that the author or the first user of the trade mark is not going to be the ultimate user of the trade mark in trading. Your trade mark attorney can advise how each party should exercise its rights legitimately. In some cases, an assignment or a license may be needed.

Who can own trade marks in Australia?

In Australia, any individual, company, incorporated association or a combination can own a trade mark. The applicant needs an Australia or New Zealand address for service. For International Registrations Designating Australia (IRDAs), which are submitted by foreign entities through the Madrid Protocol, the address of service is that of the agent acting on behalf of the applicant, that is, a trade mark attorney or solicitor.

In addition, the applicant must not be a trade or business name, and the name should be that of the person as reflected in the business registration. A trust can own a trade mark, but the applicant should indicate the name of the trustee and not the trust name. For trade marks owned by corporations, the applicant should be the corporation name and not the directors or shareholders.

Are there any conflicting registrations or applications?

Conflicting registrations and applications are one of the most common barriers which prevent an application from progressing to registration. Pre-filing trade mark searches can effectively identify conflicts and your trade mark attorney will be able to advise you around strategies on avoiding or addressing the conflicts.

What is a pre-filing search?

A trade mark search may be conducted by the applicant without any further expenditure. However, performing a trade mark search without any knowledge of the available resources and the specialised knowledge required in performing an accurate search of similar trade marks that might exist on the register can result in the applicant having a false sense of security. These risks can be avoided by engaging a registered trade mark attorney to perform a trade mark search.

How much will the trade mark registration cost?

The cost of registering a trade mark will depend largely on the number of goods and/or service classes that the trade mark is to be registered under. The cost increases proportionally with the number of classes that the trade mark is filed under. The benefit of including additional classes is that the trade mark will cover a wider range of goods and/or services which may be important if the trade mark is to be used in association with a wide range of goods and/or services.

TM Headstart

The TM Headstart is a pre-application service that includes pre-assessment of a trade mark application (conducted by trade mark examiners at IP Australia) before proceeding to a standard filing, with the permission of the applicant. While additional cost is incurred, this service provides the applicant with registrability information within 5 working days, reducing the uncertainty involved when filing the trade mark application.

Alternatively, a different cost structure applies when the application proceeds immediately to filing according to the applicant's choice or in cases where the TM Headstart is not applicable, such as when filing special trade marks like collective, certification and defensive trade marks, series trade marks and divisional applications.

Once these pre-filing considerations have been addressed, your attorney can file your trade mark application.