The do’s and don’ts of filing a trade mark application

DO’s  

Do some prior research

One of the first steps you should consider is carrying out some thorough research – the more research, the better. It is crucial to ensure that your proposed mark will help you achieve your business goals whilst not infringing someone else’s mark. As such, you may wish to first research whether your proposed mark already exists. The best way to do this is to ask an expert or search the trade mark database of the jurisdiction you wish to register your mark in. Carrying out this search will likely save you time and finances in the future.

Choose the right mark

When considering which mark to register, ensure to choose the right one. You can do this by firstly avoiding applying for marks that are similar to pre-existing, well known trademarks such as Apple and Mercedes, etc. The more unique your proposed mark, the higher the likelihood of your application succeeding. As such, avoiding generic terms and opting for stand out names  could be considered a safer bet. 

Make your mark distinctive

A trade mark that is descriptive of its goods and/or services is highly likely to be refused. This is because under the Absolute Grounds for Refusal within the Trade marks act, a mark can not be registered if it is descriptive of its goods and/or services. Therefore, if the mark you are considering to register describes what your business does or the product you are selling, you may wish to reconsider. An example of this would include ‘Pizzaz’ for pizza or Fridge for refrigerators. Inventing a new name or opting for a distinctive mark will give you a much higher likelihood of succeeding in the application process.

Get some expert advice

Do gain the advice and guidance of an expert! Having an expert on hand may seem costly at a first instance, but having someone who specializes in trade marks could not only give you some much needed direction, but also reassurance of knowing that someone is taking you through it step by step aiding with any issues or clarifying any points of confusion. Trade marks and Intellectual Property in general is a complex area and can be very technical, therefore it is best left in the hands of the experts.

DON’TS

Do not copy another brand

Despite the temptations of using another brand to give yourself a boost for business attraction, using or imitating another brand will not only likely find your application refused, but also be subject to any action of infringement from the owner of the mark you are copying. This could jeopardize your business and have high financial costs involved.

Use offensive language

Using offensive language as part of your mark will more than likely see it refused. Previous attempts of registering offensive or inappropriate words, phrases and images  have been refused time after time. Moreover, it does not give the best impression to potential customers.  To save on time and expenses, avoid it at all costs.

Delay the application

Even though it is not compulsory to register your trademark, registering the trademark provides you more protection and stronger rights over your brand. As such, if you have decided on a name for your mark, you should apply for the trade mark as soon as you can as delaying your application could risk another individuals registering your mark in the meantime. Avoiding any delays will enable you to protect your Intellectual Property and potentially save on rebranding entirely.

Following these few important points will be of great help in the long run. In the meantime, if you have any questions regarding the trade mark application process, contact us here at the Trademarkroom today where we would be happy to assist you!

By Sena Tokel