Trade Marks

A common question that we are asked is "why should I not register my own trade mark?".

If you have decided to do your own trade mark, read the following first.

Ready, fire, aim DIY trade marks

Just as in horror movies when the hero decides to enter the spooky room at end of the hall, there are plenty of people advising against Do it Yourself (DIY) trademarks. In fact there is a whole industry of lawyers and trade mark agents advising against it.

The fun of trade marks is that it stops your competitors copying the unique way you do something. In the case of Coca Cola this is quite understandable. In the case of the New Zealand ice cream seller, who by registering a musical trade mark stopped their competitors playing Green Sleeves it is a service to humanity. Who could not support Harley Davidson wishing to trade mark the Harley Davidson engine rumble? This could keep so many of those aging imitators off our streets.

When someone is considering whether or not to instruct a lawyer to register a trade mark on their behalf they will probably take note of the government web site which is so invitingly user friendly (always a dangerous sign). It offers a procedure which is a simple three step program:

Step 1.Complete a simple application form to the trade marks office and pay a fee.

Step 2.An examiner:

• searches to find out if there is another mark which is deceptively similar being used for similar products and services.
• decides if your mark is capable of distinguishing your goods or services.

Step 3.The mark is advertised and if there is no opposition then it is registered three months later. Generally it's yours forever provided that you pay the registration fee every few years and continue to use it.

It is hardly surprising that this approach has attracted, a little like accountancy, a lot of strange people. There are all sorts of applications for instance the:

• the bark of a dog-clearly for the dog who has everything, or
• the smell of beer on dart feathers-proving so very popular with Nuns. 

In this climate what red blooded business owner would not wish to apply for a trade a mark to protect their point of difference. Even smells can be the subject of a trade mark. So there is something for everybody.

So why not apply for a trade mark on a DIY basis?

Well, here are three points about the application process:

• Expect your examiner to be a person who would like to give you the trade mark ("the Mark") but for reasons which are a little bit difficult to follow cannot do so. It is often more than their job is worth to allow you a monopoly over a word. For instance if they gave you the mark Money Grabbing for use in the Banking industry what would all the other bankers do?
• Examiners may reject your application outright or turn the knife by raising an arcane, impossibly difficult requisition (question). You will find yourself warming to their talk of not distinctive enough, capable of distinguishing and no direct reference to the character and qualityonly to realize later that you don't know what they are on about. It might be more helpful to look on the trade mark fraternity as a secret society with the examiners as Worshipful Masters.
• The last 100 meter lap of the process is the three month advertising period. This can cause people using similar names to come out of the woodwork encouraged by lawyers who scan the advertisements to locate potential opponents. You may end up with a fight on your hands.

Here are just three of the potential issues you may face once you have registered the Mark:

• You have registered the mark in the wrong class or missed a class that covers a particular (usually profitable) activity. There are 45 classes being lists of words describing goods and services. It is a little bit like reading a huge packing list.
• Trade marks usually apply to one country so if you have not registered it in other countries, it may be too late as someone else has registered the mark.
• You don't use the Mark properly for say three years and it is taken off you. A competitor will often helpfully start this procedure.

The way to avoid these problems is to get legal advice before you apply. You will be advised to have a pre-application search-do it. This will save you from applying for a mark which has no chance of success as it is so similar to a mark being used by another. Once you explain your business plans you will be told in which classes to register. You can discuss in which countries to register and how.

There are business people who manage to register DIY trade marks, run their businesses unsuccessfully and no one ever tries to steal their mark. However, if a name is central to your business and it draws customers, DIY trade marks are not ideal.

© paul.brennan@brennanlaw.com.au 2006 all rights reserved. First published in My Business Magazine where Paul Brennan is the legal columnist.

To speak to a trade mark lawyer or a lawyer dealing with franchising or other IP agreements or disputes call Laura Pound on (61) 7 5438 8199 or email her on laura.pound@brennanlaw.com.au.