A registered trade mark is essential for any business that wants to protect its brand name or logo.
But should you attempt to register a trademark yourself or get help from an expert?
There are three options for registering a trade mark:
get help from a trademark lawyer or trademark attorney
do it yourself
use an online filing service
The option you choose should depend on your budget and risk appetite.
Getting help from a trademark lawyer or trademark attorney
The best option is to get help from a trademark lawyer. When it comes to the law and trademark registration, they are the experts.
If you need help with strategy, the trademark registration process, enforcing a registered trademark, or any other aspect of intellectual property law - a trademark lawyer will be able to give you advice you need.
If you're running a profitable business, getting help from a trademark lawyer is likely to be within your budget.
Trademark attorneys usually charge a similar amount as lawyers. And there are more benefits to choosing lawyers, such as their ability to advise you on other aspect of intellectual property law and other laws, and their experience with complex legal matters and challenging trademark cases.
DIY - Doing it yourself
If you're starting a brand new business in Australia, you might want to investigate filing an application yourself.
However, unless you're experienced with the trademark process, it's possible you'll make a mistake and won't properly protect your business.
For example - not getting the goods and services specification right can have consequences for your exclusive rights as a trademark owner. If you make the specifications too broad or too narrow, your rights might not be effective.
It will likely be more cost effective to register your trade mark right the first time. If you make mistakes you'll need to fix them in the future. Mistakes can also lead to bigger issues, likely costing you more.
Until those mistakes are fixed, your brand might not be as protected as you think.
If you're a busy business owner, and you want to avoid having to re-register a trademark, you would benefit from getting help from a good lawyer that provides affordable trade mark services.
Using an online filing service
Using an online filing service isn't recommended, as they don't provide much value for the cost beyond filing the application yourself.
Do you need a trademark lawyer to register a trademark?
Using a trademark lawyer isn't a requirement, but it can be a good idea to ensure proper protection.
The process of filing is relatively straightforward, but there are benefits to getting the advice of a lawyer before you apply. They can help you choose the right filing strategy and goods and services specifications to ensure you get the best protection for your brand.
It can be better to engage a lawyer before you file the application yourself, rather than after an issue arises. A lawyer can help you to understand the issues you might encounter and to craft a brand protection strategy to ensure your rights are properly protected.
However, if you apply yourself and you face issues along the way, you can also contact a lawyer during the trade mark registration process. Trade mark lawyers can help at any stage of the registration process. But getting your application right the first time is likely to be more cost effective than getting a lawyer to fix it up later on.
What are the benefits of getting help from lawyer?
The benefits of getting help from a trademark lawyer include their skills and trademark experience. This helps with crafting the best strategy and ultimately improving the outcome.
Trade mark lawyers can help you by:
registering and protecting your brand, guiding you throughout the process
creating a long-term trademark strategy
enforcing your rights
giving you advice if you are concerned about infringement.
If you need a hand, we can help with you with applying for a trade mark.
Trade mark law experience
Trade mark lawyers are experienced in the field of trade mark law and branding. Trade mark lawyers understand the best practices to make sure your application is a success and your rights are protected.
Trade mark search expertise
When you hire a lawyer, they will often conduct searches for you as part of their service.
The purpose of a search is to identify existing marks, ensuring that you are prepared for any potential issues. This can help with avoiding unnecessary costs later in the registration process.
Good trademark strategy can give you peace of mind
When you engage a lawyer, you're paying for trademark advice on the best strategy to get the best outcome for your business.
Trade mark lawyers can help identify any issues before you apply. This can ultimately prevent you from encountering problems during the application process, which can save you time and money.
They can assist with other trademark law or IP issues
A trade mark lawyer can also help you to navigate across a broad range of IP issues, or trademark infringement and enforcement issues if they pop up after your trademark is registered.
Do I need a lawyer that specialises in trademarks?
Trade mark lawyers are admitted lawyers with knowledge and experience in this niche area of law.
Not all lawyers and solicitors have experience with trade marks. Just as you wouldn't hire a trademark lawyer when you need a family lawyer, you need to get right person for the job.
These specialised lawyers can help you to:
identify legal risks and help you manage them
provide legal advice on specific issues
file applications
help you with any issues that arise, including complex legal matters
help you identify infringement or to enforce your trademark rights.
Many lawyers and solicitors, especially those with experience in the business and commercial space, offer trademark services. However, it's better to rely on lawyers who specialise in the area you need.
When should you get help from trade mark lawyers?
Some business owners choose to apply for their application themselves and only use a lawyer if an issue arises. Others use lawyers to give advice before they apply.
If you think you might already have a legal problem on your hands with your brand, it is a good idea to get legal advice sooner rather than later.
Legal issues in this space have a tendency to only to get worse if they are ignored.
At Markster, we are specialised trademark lawyers that can help you with your trademark application.
What is the difference between lawyers and trademark attorneys?
The term "trademark agent" can include lawyers, but it usually refers to someone who is a registered trade marks attorney.
A qualified trade marks attorney is not the same as a lawyer. Registered attorneys can call themselves trademark agents, and they can give advice on trade marks. However, they cannot advise you more broadly.
The Trans-Tasman IP Attorneys Board is responsible for managing the registration process and the regulatory regimes for TM attorneys in Australia.
When you might consider registering a trade mark yourself
Many business owners choose to apply for registration on their own. Around one third of all applications are 'self-filed'.
Large consumer business like supermarkets and retails stores often have internal trademark expertise and account for many of the self-filed registrations. However, many small businesses also choose to self-file.
If you think self-filing is the right approach for your business, read our guide on how to file a trademark application in Australia.
What to consider before self-filing
Whether you apply yourself or get legal advice first is ultimately up to you.
Some things you might consider include:
your risk tolerance;
the value of your brand;
whether you suspect you might face issues (you have a simple, common or descriptive mark, or you're aware there are other traders already using a similar mark);
if you have enough time to learn about trademark registration and potential issues.
When you might feel comfortable
You might feel more comfortable filing yourself if:
your mark is distinctive and unique;
you're not aware of any other businesses using a similar mark for similar goods or services; and
your mark isn't descriptive of the goods and services you provide.
Are online filing services worth it?
Online filing services, such as Trademarks Online, don't provide much value compared with filing an application yourself.
Often the only benefit provided by these services is they give you suggested goods and services. However, this doesn't mean you'll choose the correct goods and services. And if your application has any issues that you can't fix yourself, you'll need to engage a lawyer or agent to help.
You may as well just use IP Australia's picklist and complete the application yourself. IP Australia has a free auto-complete for your goods and services when you file to register a trade mark.
Sticking to IP Australia's pick-list for your goods and services description means the description will be automatically accepted. If you only use the pick-list, the filing fees are lower.
Read our guide on how to choose the goods and services for your trademark application.
Need help with trademark registration?
If you need help with your trademark or have a trademark issue, contact us today.
*Please note, the information in this article is general in nature and is not legal advice. You should seek independent legal advice tailored to you and your circumstances.