The Unpredictability of Trademarks
In most cases, an experienced Trademark Attorney or IP Lawyer who’s had a chance to perform a proper trademark search will have a good idea as to whether the Examiner will raise objections. However, it’s impossible to know for sure, and the aim of this post is to give you a sense of why it’s hard to make black and white statements on how your trademark registrations will go.
Trademark Examination – What Happens
After your trademark application has been filed, it will automatically come up for examination by an IP Australia Trademark Examiner, usually within three to six months of filing. What happens next can be difficult to predict, but in this post, we’ll try to give you a sense of how things could go.
Professional Fees for Trademarks
All trademark applicants in Australia have to pay the official fees charged by IP Australia. In addition, those that decide to use trademark agents (trademark attorneys or trademark lawyers) to help them with the process, also have to pay professional fees. As professional fees can costs thousands of dollars, it’s important to understand how they’re usually charged.
Official Trademark Registration Fees
IP Australia charges fees for the filing and registration of trademarks. These are usually added to the professional fees of any lawyer or trademark attorney who acts on your behalf – and can even amount to more than half of your total trademark registration costs!
Don’t Ignore the Market Place
It’s fairly common to see trademark searches that are limited to enquiries of trademark registers, and which ignore the use of trademarks within the market generally. We’d like you to think twice before proceeding with a “register only” search for the reasons outlined in this post.
Search in the Right Places
When you’re looking for something, it seems obvious to say that you need to look in all the right places. The same is true of trademark searches, where you need to make sure that you (or whoever is doing a search on your behalf) is searching all the right databases.
“Exact Match” vs “Similar” Searches
Trademark law isn’t just concerned with names that are the same, it’s also concerned with names that are similar. Searches performed before you start using a trademark or before you lodge an application for registration should be wide enough to uncover trademarks that are “deceptively similar” as well as those that are “substantially identical”.
Trademark Search Results – Key Questions
It might sound obvious, but trademark searches aren’t worth anything to you unless you can use the results. One important thing to ask before you order a trademark search from anybody is this: “What will I be given when the search has been done?”
Use of the “TM” symbol
As an intellectual property lawyer I’m really familiar with symbols such as TM and (R), but there’s quite a bit of confusion amongst the general public and even the business community about what they actually mean and when they should be used. In particular, this post looks at whether or not you should use the TM symbol for unregistered trade marks.