If you are looking at exporting to a few countries you can certainly consider filing your trade mark application in countries of interest yourself, but you need to be mindful that doing it yourself increases the risk of making a mistake and either not achieving registration or gaining a weak or inappropriate registration.
To minimise the risk of making a significant or avoidable mistake, there are a few things you can do that won’t cost you any money.
You should firstly understand what you are getting yourself into. This means becoming familiar with the requirements, process and costs involved when seeking protection in your selected countries. The more familiar you are with the process in each country, the less likely your trade mark will fail a simple administrative test. By understanding the process you’ll also get an idea of when things like fees or other items are due.
When preparing your application it’s also helpful to understand one of the key tests used to assess a trade mark for acceptance. That is, will this trade mark cause confusion amongst consumers because it is too similar to another mark that has already been filed for similar goods and services.
The key message here is to search each country’s trade marks database. This search will indicate if there are any similar trade marks already registered which cover comparable products or services as yours. Such existing registrations may block the registration of your trade mark. If you think there are similar registrations but you really want to proceed with market entry using your existing mark, then you may need to consult a trade mark professional for advice on how best to proceed.
It’s also a good idea to check that other traders are not already using your trade mark, or something similar, as their own eg they’re using the mark but haven’t sought registration. Phone directories and internet search tools can help in identifying existing use by others.
Your actual application will contain three significant pieces of information: your particulars as the owner; the mark itself; and a specification of the goods and services for which the mark is intended to be used. If you get these things right, the application should encounter fewer issues.
Some countries (incl. Australia, New Zealand, Hong Kong and the UK) are making it easier for businesses by offering a service that provides you with an assessment of your proposed trade mark before you file it. These services can be invaluable for their fast turn-around and relatively low cost. IP Australia’s TM Headstart service can help you assess the registrability of your proposed trade mark in Australia. For more information visit our TM Headstart page.
Many trade mark applications will progress without any obstacles, however should you face objections during examination or opposition to registration, you may want to involve an IP professional. They can provide valuable advice on whether they think the opposition has merit or if the objection can be overcome. Once again it comes down to how much you want that trade mark!
The final decision rests with you: if you think your future success in a particular country relies upon a strong and dependable trade mark, then you should probably use a trade mark attorney, but if your business will suffer from the financial implications of involving professional advisors then doing it yourself may be the better option.
Visit IP Australia’s doing business overseas page for more information on protecting your trade mark in foreign markets.
Jessica Huntley, Marketing and Customer Engagement-IP Australia
No comments:
Post a Comment