It is not an understatement to say that one of the major determining factors in a business’ success is how well it develops and nurtures its unique brand. After a business owner has thought of a name that perfectly captures their business’ essence, their next step is to secure the name through trademarking.  

A trade mark is a type of intellectual property a person holds in a name. It provides a trade mark owner with the right to stop others using the same name. Understandably, a business owner armed with his or her unique name and grandiose ambitions to create an in-demand brand would actively seek to protect this through trademarking.

A business owner can apply for a trade mark independently using services offered by IP Australia. However, there are compelling reasons to engage the services of a professional.

Which Classes and Why?

When applying for a trade mark, business owners must first determine which of the 45 classes of goods and services is most relevant to his or her business. For example, a software engineering firm shouldn’t apply for a trade mark in Class 25 for apparel. Unfortunately, it is not always this clear cut.

Engaging a trade mark lawyer can help you accurately determine the relevant classes for your business and identify which items in those classes will provide you with the most comprehensive protection.

Importantly, you cannot amend or change your application once it is submitted. It is then critical to choose correctly at the outset the class that is most descriptive of the goods or services. 

Arguably, attempting to cover yourself through a broad application may result in the removal of your trade mark because you have not used your trade mark in the specified classes. 

IP Australia’s ‘pick list‘ determines the scope of what your trade mark will cover. Engaging a legal professional can help you determine which items in the pick list best suit your business needs.

That Unique Name? It’s Already Trademarked

After long lists and endless conversations with your barista, you finally settle on a name that inexplicably captures your business’ core values and immediately submit a trademark application to secure your rights.

You will, however, be wasting your time and money another individual has already trademarked your name. It is then prudent to first check that your name is available through ATMOSS. ATMOSS is IP Australia’s search engine for any trademarks, registered or pending, that you can use to determine whether there is a conflict. 

If a registered trade mark is similar to your own and may confuse or deceive customers, then IP Australia may reject your application. A specialist trade mark lawyer can then advise you on your prospects for success and how to potentially challenge a rejected trade mark application.

Conclusion

Although it’s not quite the Wild West at IP Australia, it can be tricky to decipher and then apply for the relevant trade mark class. Searching on the, at times, uncooperative ATMOSS register for conflicting names can also feel like a continuous replay of Little Britain’s “Computer says no.” Engaging an intellectual property lawyer can help you navigate through IP Australia’s obstacle course.

Questions? Please get in touch! LegalVision’s experienced trade mark lawyers would be delighted to answer any of your questions or assist you with preparing your trade mark application.

Chloe Sevil

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