How Trade Marks Attorneys Help Avoid Infringement Headaches with Due Diligence Checks
The word infringement is not something any business owner wants to hear. Unfortunately, many people mistakenly believe that because they have registered a business name, this provides legal rights over it. This is not the case – the only way to have a proprietary right to a name (or logo) is to register it as a trade mark.
While it is, indeed, possible for an individual or company to do this themselves, as with any legal process, there are many potential pitfalls that need to be avoided.
Using a trade marks attorney will help to ensure a smooth process and help avoid any infringement issues further down the line.
The Vital Importance of Pre-Application Checks
In-depth due diligence during the pre-application process is a key element. While somewhat time-intensive, it is far better to take full advantage of a professional service at this point than have the expense and headache of a potential infringement at some point in the future, or find out you cannot register your brand due to conflict with others.
An experienced trade marks attorney will ensure that all the necessary and comprehensive pre-checks are carried out, which include:
- Searching the Australian Trade Marks Register: This is the first step to define if there are any similar or matching registrations that could cause conflict with your chosen name, word or logo.
- Carrying out a ‘common law’ search: This is a further deep dive into business and company names, domain names and other identifying marks that are in use but not registered with IP Australia. This is an area that is commonly overlooked when individuals register their trade marks without a professional service. It is a proactive and necessary element that goes a long way to mitigating potential future legal challenges and the associated financial risk this involves.
- Assessing your proposed name/logo for similarities to others: With trade mark applications in Australia rising by the tens of thousands year on year, this is an essential element of pre-registration. If any similarities are unearthed, your trade marks attorney will use their expertise to carry out a risk assessment of potential future infringements. Fully armed with this information, the company can then make an informed decision on whether to continue with the chosen design/name or to adjust prior to filing an application.
- Creating a solid defence for potential future issues: A trade marks attorney will document all the above steps, providing a solid due diligence defence should any issues arise in the future.
IMPORTANT NOTE:
We cannot emphasise enough the importance of these searches/checks, prior to putting a name or logo to use in Australia. It is (and always has been) expected that traders adopt their brands honestly. In some instances, evidence of honest adoption and honest use is required (for example, responding to an IP Australia report that raises a conflicting trade mark objection). Current practice following some decisions handed down by the Courts, means the failure to have conducted these searches or to have obtained appropriate advice before adopting and using a new trade mark will likely lead to a finding that you have not adopted or used the name/logo honestly. Therefore, this can potentially lead to situations where businesses, years after launching, find they can’t rely on evidence of that use in order to gain approval for their trade marks. This may also play out in an infringement scenario if there was no honest adoption.
Once all of the above steps have been satisfactorily carried out, the trade marks attorney will file the application with IP Australia (including all the necessary classes), and your trade mark can be registered.
However, the expertise and protection of a professional trade mark service does not end there. The importance of ongoing monitoring can’t be over-stressed. This is known as a ‘trade mark watch service’, whereby continual surveillance is ensured for early identification of any potential applications or activities that might cause future issues.
As your trade mark is a vital element of your brand and business, such professional due diligence both prior and after registration is one of the strongest strategies to prevent unnecessary problems further down the line.
Need an Expert Advice and Registration Trade Mark Service?
Contact the team at Mark My Words Trademark Services. We’re here to answer all your questions and provide a professional, seamless journey for all your trade mark registration needs.
Contact us today for more information and let us help ensure your brand has the staunch protection it needs.
