IP Australia has a series of useful online resources to help business owners search and apply to register their trade marks in Australia. These online resources make the trade mark process very accessible and enable you to handle the whole registration process yourself.

However a lawyer experienced in trade mark law can help you in a number of critical ways. For example they can conduct a thorough risk assessment.

• Trade mark searching is complex because visual, phonetic and conceptual similarities need to be considered to assess deceptive similarity.
• Each trade mark search is also an assessment of infringement risk because some of the consequences if you get it wrong can be drastic. For example you can be subject to:

• liability for trade mark infringement;
• an account of profits or damages; and
• costs of potential rebranding.

A lawyer can also help with your options and strategies if an objection is raised by the Trade Marks Office.

Specialist trade mark lawyers handle many trade mark applications and have encountered most objections. The Trade Marks Office may present some possible options when it issues a formal examination report for an application. However an experienced trade mark lawyer can assist in determining the full range of options and strategies for best resolving the objections particularly taking into account the commercial considerations such as cost.

A lawyer can help you secure the best registered protection.

• The online registration tools do not provide guidance on whether the trade mark application you have actually filed is best suited to the needs of your business.
• You need to consider questions such as: 

• whether you are producing for example software goods or software as a service;
• whether you should file for:

• a plain word version of a mark;
• a logo; or
• a combination;

• who uses the trade mark; and
• who or what company or trust should own the trade mark application and registration.

A lawyer can assist you with international trade mark registration.

• Trade mark rights are territorial rights and you need to consider registration in each territory in which you might ultimately have a commercial interest.
  • Registration through IP Australia will provide you with a registration covering Australia only. There are various options for protection beyond Australia and the most effective will depend on your business plans and resources. 
  • The work of a trade mark lawyer is very international with most lawyers having a network of trusted foreign associates and experience in the best route for foreign protection.

A lawyer can advise you on the best use of your trade mark.

• Since a trade mark is literally a brand used in the course of trade you need to consider:  

• whether your marketing structure is correct and whether it accords with trade mark principles;
• whether a license should be in place if the mark is not being used by the registered owner;
• whether your trade mark is being used as a trade mark rather than as a descriptive or generic term;
• using your trade mark in a manner that conveys it is well protected and that you strongly protect your intellectual property rights; and
• whether you can expand your current business either in volume or by expanding to new categories by licensing or franchising.

A lawyer can help you assess and handle trade mark conflict.

• Trade mark lawyers are typically very experienced in assessing competing rights and handling resolution of trade mark conflict.
• Conflict can arise in connection with trade marks in many contexts including:

• citation of any earlier mark by the Trade Marks Office in examining an application;
• an opposition to trade mark registration threatened by a third party;
• formal opposition proceedings filed against your trade mark application;
• an opposition that you might consider making against a third party;
• a third party challenge for trade mark infringement of your use of the trade mark;
• passing off and misleading or deceptive conduct; and
• a third party attack on your registration for example removal for non-use.

Engaging a lawyer early in the process of establishing your business can help you make informed decisions regarding trade marks right from the outset as well as further down the track. This is particularly relevant if you for example intend trading under a particular name that you may wish to register both as a business name and as a trade mark. If so you may need to determine whether using that name would infringe against any existing trade mark before you begin to base your business around it.