Key Considerations

+ Why Own a Trade Mark?

A registered trade mark is the only legal way to own your brand. Owning a trade mark gives the owner a “monopoly” right to the use of that mark in relation to the goods and services for which it is registered.

+ Can I register my trade mark myself?

Yes, you can – the process of registering a trade mark is available to anyone. However there is more to the process than meets the eye. There is a definite art to preparing an application to ensure that it has a greater chance of success – numerous applications fail due the applicant failing to understand the process, incorrectly describing their claimed goods and services or failing to identify potentially conflicting trade marks. And it’s a one shot opportunity – government fees for failed applications are not refundable.

+ What happens if my trade mark is infringed?

As the owner of a registered trade mark you are able to take action to prevent the infringement continuing and in certain circumstances you can seek an award of damages if you have suffered loss as a result of the infringement or if the infringer has profited from the use of your brand. TMA can assist in these actions.

+ What is my trade mark worth to my business?

It’s hard to estimate the value of a trade mark – for global brands like Nike or Virgin their trade mark holdings are probably worth billions of dollars. At the other end of the scale the leader of TMA recently represented a small owner-operated business that sold it’s trade marks to another company for in excess of $150k.

Owning your brand is an important asset to any business, especially when the owner comes to sell that business. Trade mark ownership is always considered in the valuation of any business and a failure to own the necessary trade marks has caused many vendor companies to fail due diligence in a sale process.

+ Should I register my name or logo as a trade mark?

This is an area where many non-professionals make trade mark application mistakes. In order to make this decision TMA will examine your business, the nature of your name and logo and other similar brands in the market and on the trade mark database. This is the advantage of using TMA – not only do we understand trade mark law and the process of registering a trade mark but we also take a pro-active approach to understanding your business and the sector in which it operates.

+ What else can I register as a trade mark?

In addition to your brand name and logo you can consider some of your important sub-brands, such as key product or services offerings, catch phrases and slogans. In some cases colors, sounds and even smells can be registered as trade marks

+ What cannot be registered as a trade mark?

Globally similar rules apply that prevent trade marks from being registered if they are of the following types:

• Descriptive of the goods and services – a trade mark “Apple Juice” wont be registered for goods that are the juice of apples.
• Laudatory – a trade mark application for “Best Pies” wont be accepted.
• Geographically Referential – an application for “Tasmanian Salmon” wont be registered.
• Too Similar to a previously registered trade mark – this is where a professionally conducted trade mark search comes in (see below)

+ Should I do a trade mark search before applying for my trade mark?

It is always safer to do a trade mark search. But doing a trade mark search is a complex and detailed piece of legal research – many client’s believe they have conducted a search and found that the coast is clear only to discover through discussions with TMA that they need to modify their proposed application. Or worse that they might have walked into a situation where their application could have led them to be revealed as an infringer of someone else’s trade mark! TMA will give experienced advice about whether a trade mark search is necessary in your particular case.