3 common trademark mistakes businesses make in Australia 2023

11 March, 2023

As a trademark attorney with years of experience working with clients in Australia and many countries, I have seen many mistakes made by individuals and businesses when registering their trademarks.

These mistakes can be costly and time-consuming, and in some cases, they can even result in the rejection of your trademark application.

In this article, I will discuss some of the most common mistakes made when registering a trademark in Australia and how you can avoid them.

1. Failing to conduct a thorough trademark search.

One of the most common mistakes made when registering a trademark is failing to conduct a thorough trademark search before filing your application.

This can result in your application being rejected if a similar or identical trademark for the same or related goods is already registered in Australia.

To avoid this, you should conduct a comprehensive trademark search to ensure that your trademark is distinctive and does not infringe on the rights of any existing trademarks.

A comprehensive trademark search is designed to identify existing trademarks that may be similar or identical to the trademark you are seeking to register. This includes not only trademarks that are already registered, but also trademarks that may be pending registration or unregistered but in use in Australia (Australia is a ‘first-to-use’ jurisdiction, if a trademark has been used but not registered domestically, the owner of the trademark will be the first user)

Conducting a thorough trademark search can help you avoid potential conflicts and ensure that your trademark application is successful. In Australia, you can conduct a trademark search by using this link of IP Australia.

2. Choosing a descriptive or generic trademark

Another mistake that many people make when registering a trademark is choosing a descriptive or generic name or phrase.

A descriptive or generic trademark is one that describes the goods or services that it represents or is made up of commonly used words or phrases. For example, “Sweet” for “Sugar’, “Fresh Cake” for a bakery or “Quality Laptop” for a laptop selling.

The problem with choosing a descriptive or generic trademark is that it lacks distinctiveness, and is not considered inherently capable of distinguishing your goods or services from those of other traders. A trademark is essentially a badge of origin, designed to distinguish the goods or services of one trader from those of another. A descriptive trademark, by definition, describes the nature or quality of the goods or services, and therefore does not serve as a clear indicator of the source of the goods or services.

In Australia, trademarks are registered under the Trade Marks Act 1995, which sets out the requirements for registering a trademark. One of the requirements is that a trademark must be distinctive in order to be registered. This means that it must be capable of distinguishing the goods or services of one trader from those of another.

A descriptive trademark is considered to be lacking in distinctiveness because it does not distinguish the goods or services of one trader from those of another. If a trademark is too descriptive, it is likely to be rejected by the Australian Trade Marks Office.

However, if a descriptive trademark has acquired distinctiveness through use, it may be able to be registered. This means that the trademark has become associated with the goods or services in the minds of consumers, and therefore serves as an indicator of the source of the goods or services.

Overall, it is important to choose a trademark that is distinctive and capable of distinguishing your goods or services from those of other traders. A qualified trademark attorney can assist you in choosing a strong trademark that is both distinctive and legally protectable and guide you through the trademark registration process to ensure that your trademark registration is successful.

3. Failing to properly classify your goods and services

When registering a trademark in Australia, you must specify the goods and services that your trademark will be used for. Failing to properly classify your goods and services can result in your trademark being rejected or being limited in scope.

The tools to choose a correct classification in Australia is to use Nice Classification system. The Nice Classification system is an international classification system that categorizes goods and services into different classes. There are 45 classes in total, with classes 1 to 34 for goods and classes 35 to 45 for services. Each class corresponds to a particular type of good or service.

In Australia, you can use the Pick list which contains a list of pre-approved goods/services by IP Australia to help you choose correct classification.

For custom classification, you should contact a qualified trademark attorney to assist you because you cannot find it from the pre-approved goods/services by IP Australia.

It is important to properly classify your goods and services when registering a trademark because the scope of protection provided by the trademark will be limited to the specific classes of goods and services for which it is registered. If a business fails to properly classify its goods and services, it may not be able to protect its trademark against infringement for goods or services that are not covered by the trademark registration.

For example, if a business registers its trademark for “rice” under class 30 but fails to register the trademark for “coffee” under class 30, then the business may not be able to prevent other businesses from using a similar trademark for coffee.

To avoid this mistake, businesses should take the time to properly identify and classify the goods and services for which they will be using their trademark. This will ensure that the trademark registration provides maximum protection for the goods and services covered by the registration.

In conclusion, registering a trademark in Australia can be a complex process, and it is important to avoid the common mistakes discussed in this article.

By conducting a thorough trademark search, choosing a distinctive trademark, and properly classifying your goods and services, you can have higher chance to successfully register trademark in Australia.

If you have any questions or need assistance with your trademark registration, it is important to consult with a qualified trademark attorney who can guide you through the process.

 

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