Is a DIY trade mark worth the cost?

 

These days, there are plenty of cut-price options available to people who wish to file a DIY trade mark. Trade Marks Offices offer assisted filing services, and more online filing portals are popping up every day.   While the question of cost is high on any business owner’s decision-making list, it shouldn’t be overruled by the question of value.

There’s not much to trade marks, right?

Many people assume that trade mark registration simply involves submitting a form and receiving a Certificate of Registration.  The truth is that the trade mark procedure is not so simple.  In fact, a trade mark registration may prove useless if not given proper consideration at the filing stage.

It’s easy for self-filers to file ineffective trade marks, simply because they don’t know the right questions to ask themselves.  DIY trade mark applicants often make the mistake of filing a mark that includes a lot of unnecessary material.

Filing an entire business name might not be the best approach – often times, the actual trade mark forms only a small portion of the entire name.  Likewise, registering your name in a very distinctive font or in combination with a logo may severely limit your protection. It’s hard to take action against ‘infringing use’ if it differs from the way a trade mark is registered.

Self-filing risks

Other risks involved with self-filing trade marks are:

  • Specifications do not cover the goods and services appropriately, making it difficult to enforce against competitors or copycats.  You must file your trade mark in the correct classes of goods and services to obtain adequate protection;
  • The trade mark applicant is not the true legal owner of the mark, making the registration unenforceable. Implications around ownership mean that mistakes cannot be rectified at a later stage in the proceedings;
  • Objections arise through the trade mark prosecution process; a Trade Marks Attorney can guide you through the possibilities of overcoming objections. Many applicants who file themselves abandon the process when objections arise, which may not be necessary; and
  • The trade mark is quite descriptive or generic in the relevant industry.  The resulting registration will be difficult to enforce and will hold little value.

There are also many complexities around the issue of “use” which may be necessary to overcome some objections.  For example, what is deemed to be the use of a trade mark? How much use do you need to overcome distinctiveness objections? In what form should evidence of use be presented to the Examiner, if required?

Feeling overwhelmed yet?

Even if you manage to address objections raised by the trade marks office,  the true cost of these issues may only become apparent when you attempt to enforce your trade mark against a third party.  It could be several years down that track that you find your registration is unenforceable.

Engaging a registered Trade Marks Attorney at the time of filing your trade mark can help you avoid these costly errors!

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