Do I Need A Lawyer To Register A Trade Mark?

trademark attorney

If you’re starting a business and are considering registering a trade mark – or if you want to add another trade mark to your existing portfolio – you may be thinking that you need a lawyer to manage the process.

In fact, there are various ways in which you can register your trade mark. For example, you can do it yourself through an online registration process with the Trade Marks Office, you can engage the services of a lawyer or you can engage a trade marks attorney to handle your application.

There’s no right or wrong answer when it comes to making a decision on how you go about it, but it is really important to make an informed decision.

Your trade mark is a valuable, tradeable asset and in today’s fiercely competitive – and often cutthroat – environment, it makes sound commercial sense to secure the best possible protection for your assets. Trade mark registration is your best defence against infringement.

The Complex World of Trade Mark Law

At Mark My Words Trademark Services, we understand the complex world of trade mark law and we genuinely want the best decisions to be made when it comes to trade mark registration.  It’s not something to be taken lightly. Nor can the process be rushed.   There are many instances of people doing their own registrations and having their applications rejected because of a simple oversight or error – often because things were done in haste or without proper attention to detail.

Trade mark registration can be a complicated process and mistakes may be costly in terms of time and money.  Some errors or omissions may not even be rectifiable.

Our recommendation is to seek professional advice from an expert in trade mark law.  However, as mentioned earlier, professional advice does not mean you have to consult a lawyer.  You can use a trade marks attorney as they are qualified to handle all aspects of trade mark law and will handle the registration process from start to finish.

However, if you do decide to choose a lawyer to register your trade mark, our advice is to ensure they have appropriate trade mark law experience.  Just as many lawyers and solicitors have specific practice areas (such as family law, consumer law, environmental law, employment law etc), trade marks attorneys specialise in the complex field of trade mark law.

Some Key Points About Trade Marks

It’s worthwhile recapping some key points about trade marks to illustrate just what a valuable business asset they are and why it’s important to get the registration right.

  • A trade mark can be a traditional ‘sign’ like a brand name, logo, catchphrase or slogan (or any combination of these) or a non-traditional ‘sign’ such as a shape, smell, colour or sound.
  • Registration of a trade mark generally gives you exclusive rights to use it for 10 years in Australia – even if you only trade in selected geographical areas.
  • A trade mark can be renewed each 10 years on payment of a fee.
  • A registered trade mark can be sold, bought, assigned and licensed which makes it a valuable business asset.
  • Registering a trade mark clarifies ownership and provides a valuable deterrent to – and defence against – possible infringements.
  • A registered trade mark prevents others, notably your competitors, from using a deceptively similar mark.

A trade marks attorney is specifically trained in the field of trade mark law and is involved with all things to do with trade marks on a daily basis.  It’s their job to know every detail about the registration process and to keep abreast of legislative changes and court proceedings involving trade mark issues so that they can provide qualified, up-to-date advice that is relevant to their clients’ businesses.

Do You Need a Lawyer to Register a Trade Mark?

So, the answer to the question of whether you need a lawyer to register a trade mark is ‘NO’.  You may choose to engage a lawyer, but before you do, we recommend that you ascertain the depth of their experience in trade mark registration and enforcement and whether they have a strong track record in developing solid, long-term brand protection strategies for their clients.

You can just as easily use a trade marks attorney who is highly qualified to provide specialist advice and services such as:

  • Ensuring appropriate brand protection through trade mark registration
  • Opposing or defending oppositions
  • Handling infringement matters
  • Renewing trade mark registration timeously
  • Advising on related intellectual matters, including common law trade mark rights and similar

For a more detailed investigation into the question of how best to proceed with a trade mark registration, you should read our blog ‘Should I register a trademark myself or hire a trademark attorney’.

Should you have any trade mark-related query, we invite you to get in touch with our friendly team at Mark My Words Trademark Services.  We promise to listen, answer your questions (there’s no such thing a silly question either!), explain things in a way that is easy to understand and provide affordable trade mark services, regardless of the size of your business.

Jacqui Pryor

Jacqui is a registered trade marks attorney with the Trans-Tasman IP Attorneys Board and is the founder and owner of Mark My Words Trademark Services Pty Ltd.

After being introduced to the world of trade marks in one of her first jobs after high school, Jacqui discovered she had a deep passion and interest for all things to do with protecting brands and intellectual property. She completed a Graduate Certificate in Trade Mark Law and Practices as well as a Diploma in Business Management and then set up her own business in 2011.

Her motivation for starting Mark My Words was to support SMEs which typically couldn’t afford such a service and while the company has grown in both size and reputation over the years, she has remained true to her founding principles of providing professional, friendly, reliable and affordable trade mark services to all.

Mark My Words now has a client list that spans businesses of all sizes across a range of industries. It provides advice and assistance on all types of complex trade mark registrations, infringements and opposition matters both in Australia as well as overseas.

Jacqui’s wealth of experience, broad range of professional qualifications and her ongoing participation in industry forums and networking platforms keeps her at the forefront of developments in the global trade mark arena. Her expertise in her field has also led to several nominations as a top individual trademark attorney by the World Trademark Review - the world’s leading trademark intelligence platform.

To keep up to date with the latest in the field of trade marks, follow Jacqui and MMW Trademark Services on Facebook.

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