Do I need a lawyer to file a trade mark application?
Using a lawyer or agent to register a trade mark for you isn't a requirement, but it can be a good idea.
The process of filing is relatively straight forward, but there are benefits to getting the advice of a lawyer before you apply.
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.
In fact, many business owners choose to apply for registration on their own. Around one third of all applications are 'self-filed' (where the applicant and address for service are the same).
Read our guide on how to file a trademark application in Australia.
What are the benefits of hiring a lawyer to file my TM application?
There are many potential reasons why you might benefit from getting legal advice from a trademark lawyer before you apply to register your mark.
When you engage a lawyer, you're paying for legal advice on the best strategy to get the best outcome for you - the filing is the easy part!
Trade mark lawyers are experienced in this field and deeply understand the best practices to make sure your application is a success, and your rights are protected.
They can help identify any issues before you apply. This can ultimately prevent you from encountering problems during the process, which can save you time and money.
It can be better to engage a lawyer before you file the application yourself, to understand the issues you might encounter and to ensure your rights are properly protected.
If you apply yourself and you face issues along the way, you can also contact a lawyer during the process to see if they can help.
An expert can also help you to navigate infringement and enforcement issues - which happen more often than you might think.
If you need a hand, we can help with you with the trademark application process.
Should I engage a lawyer?
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 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 TM applications and potential issues.
Contact us if you need a hand with your trademark application.
Do I need a specialised trade mark lawyer?
Trade mark lawyers are admitted lawyers with particular experience in this niche area of law. Not all lawyers have experience with trade marks.
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; and
help you identify infringement or to enforce your trademark rights.
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 you4 brand, for example, if another business is using a similar mark to you, 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 TM lawyers, agents and attorneys?
The term "trademark agent" can include lawyers, but it usually refers to someone who is a registered TM attorney.
A registered TM attorney is not the same as a lawyer. There are educational, knowledge and personal eligibility requirements to become a registered TM attorney.
Registered TM attorneys can call themselves trademark agents, and they can give advice on TMs.
The Trans-Tasman IP Attorneys Board is responsible for managing the registration process and the regulatory regimes for TM attorneys in Australia.
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 main 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. If your application has any issues that you can't fix yourself, you'll need to engage a lawyer or agent to help.
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.
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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.