Welcome to Part 2 on achieving trademark registration. Here we will look at the best way to conduct a search, as well as the importance of being specific, attentive and patient when choosing the most suitable trademark to apply to register.
How to Conduct a Search
When performing a search in the word/image line, you can only put one word in each vacant box and ensure the same search perimeters are chosen. It is best to perform the widest and most varied search, which can be done by:
- Performing part-word, phonetic-word and fuzzy-word searches; and
- If the trade mark consists of more than two words, complete a number of searches, using different combinations that form the trade mark.
It is important to have a search performed prior to filing your application so that it can be identified if there are any obvious potential conflicts that could affect your application, as another trader may have already applied to use this trade mark.
Now that you have your distinctive trade mark, we turn to the goods and services or the products and services that your trade mark is used in connection with.
The key to getting your trade mark registered is to make sure that the goods and services that you choose are specific to how you intend to use the trade mark for in your business. There can be a broad claim, for example clothing in class 25 or a narrow claim, for example, Apple-flavoured tea in class 30.
Always ensure that the goods and services claimed are specific to how you intend to use the trade mark in business, whether broadly or narrowly.
Do not unnecessarily claim for goods and services if you don’t intend to use the trade mark as a normal business function, as this could drive up the cost for your application. The cost to register a trade mark is charged per class for the application fee and the subsequent registration fee, once the application has been approved by IP Australia.
Throughout the trade mark process there will be due dates that an applicant will need to adhere to so that the trade mark application does not lapse.
If after the examination of your application, it is refused (sorry to hear), IP Australia will issue an adverse report and provide reasons why the application was refused. The applicant is then provided 15 months from the date of the adverse report to respond, which may seem like a long time but it will sneak up on you like relationship weight.
When responding to the adverse report the application must provide the examiner with minimum 3 weeks, or 4weeks if evidence is being submitted to respond to your exam response. It is always in your best interest to file the exam response as soon as possible, because the sooner that your application is accepted by IP Australia, the closer you are to being the proud owner of a registered trade mark.
The trade mark process takes a minimum 7.5 months from the time the application is filed to when a trade mark could be officially registered.
If you need assistance in registering your trade mark, get in touch with our trade mark registration team here at LegalVision on 1300 544 755. We have assisted many startups and small businesses with all of their trade marks needs, and look forward to providing a fixed-fee quote to you too.
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